The Third Edition

ISBN: 978-0-470-05774-2 (cloth); 978-0-470-05775-9 (paper)

Publication Date: Copyright January 2013

Number of chapters: Nine, plus a Preface and an Index

Number of pages: 256

The Third Edition includes the major features and new strategic considerations brought about by the passage of the United States of America Invents Act. This significant patent law change replaces the “first-to-invent” US patent system with one that grants the patent to the “first-inventor-to-file” for the claimed invention in the patent office. This and other considerations of the Act, such as the new post-grant review, will have a major effect on the acquisition of patents in the United States. This new edition also expands and updates the foundation of patent information that global inventors have found so valuable in earlier editions.

  • No reviews are available at this time.

The Second Edition (Out of print)

ISBN: 0-471-49260-4 (cloth); 0-471-49261-2 (paper)

Publication Date: Copyright 2001; Reprinted December 2001, August 2002, February 2004

Number of chapters: Nine, plus a Preface and an Index

Number of pages: 201

In the Second Edition I provide a review of patent law changes, a new chapter on patent infringement and freedom-to-operate issues, concepts concerning the value of patents, and new strategy techniques not included in the First Edition.

Additionally, I streamlined the intellectual property concepts and eliminated some unintentional repetition. I feel the result is a tighter conceptual presentation and a much better book overall.

  • “it aims to provide technical professionals with the help and advice they require to understand the legal complexities they may encounter before and during a patent application … also discusses the researcher’s responsibilities after patent applications have been filed, and the role the researcher can play in maintaining a global patent estate.”

    Read the full review ($):

  • “This book, with a wider scope than just strategy, introduces researchers to patent applications and patent portfolios … provides the technical professional with help and advice to understand the legal complexities that may be encountered before and during a patent application. It also discusses the responsibilities of the researcher after patent applications have been filed and the role the researcher may play in the maintenance of a global patent estate.”

    This review is not available online at this time.

    World Surface Coatings Abstracts, October 2001
  • “This second edition is well written in a straightforward manner …. This book provides an enlightened approach to a complex subject. It is relatively easy to read and follow, and perhaps more importantly is reasonably priced.”

    This review is not available online at this time.

    Derek Eddowes, Polymers Paint & Colour Journal, September 2001
  • Patent Strategy for Researchers and Research Managers attempts not only to educate the researcher about basic principles of the patent system, but also to provide a guide through the entire process — from deciding whether an invention is patentable, to working with a patent agent, to maintaining patents once they have been issued ….”

    This review is not available online at this time.

    Michael Francisco, Nature, Volume 20, Number 2, Page 115
  • IP Review: ‘Which IP-related book would you recommend to fellow professionals?’ ”

    Bruce Berman: ‘In addition to my own three books, of course, I like Jack Knight’s Patent Strategy for Researchers and Research Managers, which should be required reading at every business school.’ ”

    Read the full review:

  • “This handy book provides the researcher with useful guidance on how to maximise the benefit of their inventiveness …      … the potential value of the guidance given could make this a worthwhile investment to the innovative researcher”

    Read the full review ($):

  • “This is a superbly written reference text that clearly presents the processes involved in applying for patents and developing a patent portfolio. The book’s broad coverage and minimal use of legal jargon makes it essential reading for researchers and research managers, and suitable for students and technical professionals alike.”

    Read the full review ($):

  • “Patent Strategy for Researchers and Research Managers offers the reader an excellent overview on the basic principles of the patent system, and has been written as a guide through the entire process of patenting an invention. The book, which is well written, includes illustrative examples to underline key points, and presupposes no prior knowledge of the patent system.”

    “A theme, which gains in importance during this process, is the teamwork between the researcher and the patent specialist. Decisions to be made on disclosure, foreign filings and responses during the examination of the claims can be crucial, requiring both parties to have a thorough understanding of the invention and related technology fields. Here, the author’s experience of both disciplines is valuable.”

    Read the full review ($):

  • “Overall, the work serves as a useful introduction to intellectual property and brings out many interesting facets likely to be unknown to the researcher or the manager. Knight appears particularly effective when describing the human element, helping researchers understand the attitudes and objectives of patent attorneys, which frequently seem to be at odds with those of the researcher but are usually aligned with the company’s best interests.”

    Read the full review ($):

  • “A basic guide introducing … strategic thinking as applied to patent applications and patent portfolios, and to intellectual property concepts”

    Read the full review ($):

  • “well written in a straightforward manner”

    Read the full review ($):

  • “does a nice job of explaining many aspects of the patent system and patent strategies, with a minimum of jargon and case citations, and lots of talk about the way too many options available in patent prosecution and licensing. … if you work for, or have as a client, technology managers, it is a good book to suggest to them (or yourself if you are one.)”

    Read the full review:

The First Edition (Out of print)

ISBN: 0-471-96095-0 (cloth only)

Publication Date: Copyright 1996; Reprinted August 1996

Number of chapters: Eight, plus a Preface and an Index

Number of pages: 166

This version is now out-of-print but the strategic concepts still remain largely useful.

  • “The chapters about basic intellectual property concepts and global filings are an excellent overview of a constantly changing environment. Basic intellectual concepts including the reason and value patents, the basic requirements for obtaining a patent, the basic parts of a patent, and the existence and meaning of various patent conventions and treaties are described. The overview acknowledges differences among the patent offices and emphasizes the use of patent agents or attorneys to help with these differences.”

    Read the full review ($):

  • “The author has much practical experience of these issues from his work in this field with a major multinational chemical company, and has sought to distil that experience and the vast subject of patenting within a commercial strategic approach into a book that meets that need in a practical and readable manner. In that context, this book succeeds well and should be recommended reading for both researchers and their managers, and those who work with them.”

    Read the full review ($):

  • “He writes fluently and intelligently about basic patent law and its application to real-life situations, and has wisely taken the decision to deal only with patents rather than the whole spectrum of IPR.”

    “The general requirements for a patent specification are described, a useful glossary of technical terms is given, and the provisions of the various international treaties which are available are outlined. This section of the book is very clear and written from a truly international perspective: Mr. Knight avoids the common failing of American authors of assuming that only US patent law matters.”

    “Overall, Mr. Knight’s book fulfills a most useful purpose, is soundly based and discusses patent strategy sensibly. I should like it to be compulsory reading for all newly-appointed research managers.”

    Read the full review ($$):

Selected Articles

From H. Jackson Knight

What They’re
Saying About
Patent Strategy

This website is for informational purposes only and contains no legal advice whatsoever. Its publication does not create any type of relationship with any visitor and is not a solicitation for any sort of consultation. Moreover, this is a personal website and the opinions and ideas expressed are mine and are not those of my employer. No information herein should be used as a substitute for professional patent counsel. I encourage all visitors to obtain reputable and knowledgeable legal representation for their patent and intellectual property activities.