University of California, Santa Barbara

College of Engineering

Technology and Management Program


The Art of Invention:

An Introduction to Patents and Intellectual Property

ENGR 291G / 251 – Fall 2011

Instructor: Dr. Ilan Ben-Yaacov


Announcements / Assignments

*  11/3/11: Information about the final project for the course can be found here.

*  11/3/11: In class on Nov 16th, Dr. Craig Prater, Chief Technology Officer at Anasys Instruments, will be giving a guest lecture on business/corporate IP strategies.

*  11/1/11:  IMPORTANT: Roger Borovoy talk on IP litigation will be Friday, November 18, from 3:30-5pm in Elings Hall Room 1601, click here for the official announcement.  He will be available at the end of the talk for members of our class to answer individual questions.

*  10/26/11: Note set 5 is posted below or can be found here.

*  10/26/11: Patent Application Template for MSWord is posted below or can be found here.

*  10/20/11: Note set 4 is posted below or can be found here.

*  10/18/11: Note set 3 is posted below or can be found here.

*  10/13/11: Make-up class will be held Monday, Oct 17, in HSSB 1228 from 3:30-4:55pm.

*  10/13/11: Note set 2 is posted below or can be found here.

*  09/29/11: Note set 1 is posted below or can be found here.

*  09/28/11: Please look over sample patent disclosure form, inventorship document, and read the Yoga Patent Final Publication prior to the second lecture.

*  09/22/11: First class meets 9/28/11.  Please read Glossary of Patent and IP-Related Terms and briefly look over the Final Publication of the Yoga Patent prior to the first lecture.

*  09/22/11: Welcome to the course!



Syllabus – Course Details


Lecture:                          Wed 3:30-4:55pm in PHELPS 1508

Instructor:                      Dr. Ilan Ben-Yaacov, ESB room 3221D, ext 5295, ilan@engineering.ucsb.edu

Office Hours:                 Wed 11:30am-1:30pm in ESB Room 3221D



Course Description


This 2-unit course is designed to provide emerging inventors, entrepreneurs, and scientists with a working knowledge of intellectual property (patents, copyrights, trademarks, and trade secrets), with the main focus being on patents.  We will cover the basic functions of patents (what rights a patent gives you), structure of patents (what elements must be included in a patent application), patent prosecution (process for getting a patent issued), obtaining coverage in foreign jurisdictions, and discuss general patenting and IP strategies for businesses, as well as several other topics, including special topics from 1-2 guest lecturers (dates/times TBA).


In addition to weekly lectures, there will be weekly reading assignments, and students will also complete a final project which entails drafting an entire patent application.  Students may optionally choose to file the applications which they draft.  Grades for the course will be determined 35% by attendance and 65% by the final project





Glossary of Patent and IP-Related Terms


Determination of Patent Inventorship         


Sample Patent Disclosure Form


Patent Application Template (MS Word)


ALM Article on Incorporation by Reference by Kim and Tse


Class Notes

Notes 1               Notes from Craig Prater’s Lecture

Notes 2               Notes 6

Notes 3              

Notes 4              

Notes 5


Patent Prosecution Case Study:  Yoga Patent

Original Filing

Non-Final Rejection

Howard Reference from Non-Final Rejection

Response to Non-Final Rejection

Issued Claims (as allowed)

Final Published Patent


Doctrine of Equivalence:

Winans Patent

Festo Article by Jennifer Miller


Patents from Several Santa Barbara Companies:

Sonos, Inc.

Transphorm, Inc.

Wyatt Technology Corporation


Useful References


Patent – Wikipedia Entry:



Trade Secret – Wikipedia Entry:



Trademark – Wikipedia Entry:



Patent Cooperation Treaty (International Filing) – Wikipedia Entry:



JOM Article on U.S. Provisional Patent Applications:



JOM Article on Divisional, Continuation, and CIP Patent Applications:



Summary of What is Included in a Specification (Disclosure):



Patent Claims – Wikipedia Entries:




Difference Between Filing Date and Priority Date:





Useful Links


U.S. Patent and Trademark Office (USPTO) Patent Database


USPTO Patent Application Information Retrieval (PAIR)


Google Patent Search                                    


About the Instructor


Dr. Ben-Yaacov received his PhD in Electrical and Computer Engineering from U.C. Santa Barbara in 2004.  Since 2004, he has served as a lecturer in the ECE Department and in the College of Creative Studies Physics program at UCSB, teaching semiconductor processing, circuits, general physics, EE project design, and IP/patent courses.  Since 2007, he has been operating an independent IP consulting business, primarily focusing on patents, trade secrets, and trademarks.  His IP areas of expertise include general IP strategy, patent drafting and prosecution, IP portfolio advising and management, domestic and foreign filing strategies, establishment of trade secrets, infringement analysis, IP due diligence for investors, and licensing agreements.



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