Intellectual Property Law for Engineers and Scientists

by Rockman, Howard B.

• ISBN13: 9780471449980
• ISBN10: 0471449989
• Format: Hardcover
• Copyright: 2004-06-07
• Publisher: Wiley-IEEE Press

Summary

An excellent text for clients to read before meeting with attorneys so they'll understand the fundamentals of patent, copyright, trade secret, trademark, mask work, and unfair competition laws. This is not a "do-it-yourself" manual but rather a ready reference tool for inventors or creators that will generate maximum efficiencies in obtaining, preserving and enforcing their intellectual property rights. It explains why they need to secure the services of IPR attorneys. Coverage includes employment contracts, including the ability of engineers to take confidential and secret knowledge to a new job, shop rights and information to help an entrepreneur establish a non-conflicting enterprise when leaving their prior employment. Sample forms of contracts, contract clauses, and points to consider before signing employment agreements are included. Coverage of copyright, software protection, and the Digital Millennium Copyright Act (DMCA) as well as the procedural variances in international intellectual property laws and procedures.

Author Biography

HOWARD B. ROCKMAN is a patent attorney currently practicing with Reed Smith in Chicago. He is also an adjunct professor at John Marshall Law School and at the University of Illinois at Chicago, College of Engineering.

Table of Contents

Foreword	xix
Preface	xxi
Acknowledgments	xxv
Top Ten List of Intellectual Property Protection	xxvii
Eli Whitney	1	(8)
Overview of Intellectual Property Law	4	(5)
Defining ``Intellectual Property''	4	(1)
Specific Intellectual Property Vehicles	5	(3)
Patents	5	(1)
Trademarks and Service Marks	6	(1)
Copyrights	7	(1)
Trade Secrets	7	(1)
Mask Works for Semiconductors	8	(1)
Which Form of Intellectual Property Protection to Use?	8	(1)
Cyrus McCormick	9	(22)
The Use of Intellectual Property in Business	12	(19)
Introduction to Intellectual Property Strategies	12	(1)
Objectives of Intellectual Property Management	12	(2)
Sole Inventor in an Alien Field	14	(1)
Strategic Development of Intellectual Property	15	(1)
Disgorging Patentable Inventions	16	(1)
Determining What and What Not to Patent	17	(7)
Search Results	18	(1)
Business Factors Determining Whether to Obtain Patent Protection	19	(5)
Determining Who Would Be an Appropriate Licensee to Exploit Your Invention	24	(1)
Drafting Strategic Patent Claims	24	(1)
Determining Where to Obtain Patents	25	(1)
Determining Other Industries Which May Benefit from a License	26	(1)
Ensuring Your Product Does Not Violate the Patent Rights of Others	26	(1)
Policing the Market for Potential Infringements of Your Patents	27	(1)
The Enforcement of Process Patent Claims Against an Importer of a Product Made Abroad	27	(1)
Trimming the Intellectual Property Tree	27	(1)
Essay on Innovation Management	28	(3)
Charles Goodyear	31	(16)
How to Read and Obtain Information from a Modern U.S. Patent	35	(12)
Information Page	35	(8)
Drawings	43	(1)
Specification	43	(1)
Claims	44	(1)
Warning	44	(3)
George Westinghouse	47	(22)
Introduction to Patents	51	(18)
Brief History of Patent Protection	51	(8)
Early European Patent Custom	51	(2)
British Patent System	53	(2)
The U.S. Constitution and the Development of the Present U.S. Patent Examination System	55	(4)
Types of Patent Coverage	59	(2)
What Is a Patent?	59	(1)
Article or Apparatus Patents	60	(1)
Method or Process Patents	60	(1)
Design Patents	60	(1)
Plant Patents	60	(1)
New Technologies	61	(1)
How to Determine What to Patent and What Not to Patent	61	(2)
Broadly, What Can and Cannot Be Patented Under the Law	61	(1)
From a Business Standpoint, What Should Be Patented	61	(2)
Broadly, What Data Goes Into a Patent	63	(1)
Describing the Background and Essential Elements of the Invention	63	(1)
Claiming the Invention	64	(1)
What a Patent Is Not	64	(1)
Inventions Relating to Atomic Weapons	65	(1)
The U.S. Government's Right to Practice Your Patented Invention	66	(3)
John Deere	69	(6)
Patentable Subject Matter and Utility	72	(3)
What Constitutes Patentable Subject Matter	72	(2)
Categories of Patentable Subject Matter	72	(1)
The Invention Must Be Useful and Work for Its Intended Purpose	72	(1)
The Invention Must Be Novel Compared to the Prior Art	73	(1)
The Invention Must Be Non-Obvious Compared to the Prior Art	73	(1)
Brief Commentary on Recent Developments in Categories of Patentable Subject Matter	73	(1)
Utility---The Invention Must Be Useful	74	(1)
Alfred Nobel	75	(12)
Novelty---The Invention Must Be New	81	(6)
Statutory Requirements	81	(3)
Time Limits for Filing a Patent Application	81	(1)
Prior Art Activities of the Inventor and Others That Can Defeat Patent Rights	82	(2)
Prior Publications, U.S. and Foreign, as Prior Art	84	(1)
Protecting Foreign Patent Rights	84	(1)
Experimental Use Versus Actual Use of the Invention	85	(2)
Louis Pasteur	87	(16)
Requirement of Non-Obviousness for Patentability	92	(11)
Development of the Standard of Non-Obviousness	92	(1)
Historical Background	92	(1)
Supreme Court Cases Predating the Section 103 Non-Obviousness Test	93	(4)
Hotchkiss v. Greenwood, Supreme Court, 1850	94	(1)
Atlantic Works v. Brady, Supreme Court, 1882	94	(1)
Goodyear Rubber and Tire Company v. Ray-O-Vac Company, Supreme Court, 1944	95	(1)
Cuno Engineering Corporation v. Automatic Devices Corporation, Supreme Court, 1941	95	(1)
The Great Atlantic and Pacific Tea Company v. Supermarket Equipment Corporation, Supreme Court, 1950	96	(1)
The 1952 Patent Statute and the Case of Graham v. John Deere Company	97	(6)
Alexander Graham Bell	103	(26)
The Patenting Process	112	(17)
Who May Obtain a Patent	112	(3)
Inventorship and Ownership	112	(2)
True Inventors Must Be Named	114	(1)
Proper Documentation of the Invention	115	(2)
Conception	115	(1)
Reduction to Practice	116	(1)
Witnesses	117	(1)
The Invention Disclosure and Invention Disclosure Meeting	117	(12)
Preparation of a Complete Description of the Invention, How the Invention Operates, and What Advantageous Results Are Obtained by the Invention	117	(1)
Dates of First Public Disclosure, If Any, and What Was Disclosed	118	(1)
Advantages of the Invention Over Known Devices/Processes	119	(1)
What Prior Art Is the Inventor Aware of for Disclosure to the Patent Examiner	120	(1)
Additional Matters Discussed During the Invention Disclosure Meeting Between the Inventor and the Patent Attorney	121	(3)
Invention Disclosure Form	124	(5)
Thomas Edison	129	(12)
Novelty, Infringement, and Other Searches	135	(6)
The Novelty Search	135	(1)
Search Parameters	136	(1)
Different Types of Searches	137	(2)
Infringement Search	137	(1)
State-of-the-Art Search	138	(1)
Right to Use Search	138	(1)
Database Searches	139	(2)
U.S. Patent and Trademark Office Patent Classification System	139	(2)
George Eastman	141	(14)
Patent Application	145	(10)
Introduction	145	(1)
Registration System Evolving into an Examination System	145	(1)
Goal of a Properly Prepared Patent Application	146	(1)
Provisional Patent Applications	146	(1)
Regular, Non-Provisional Patent Application	147	(1)
Content of a Regular Patent Application	148	(5)
Title of the Invention	148	(1)
Cross-Reference to Other Applications	148	(1)
Background of the Invention	149	(1)
Brief Summary of the Important Elements of the Invention	150	(1)
Brief Description of the Drawings Which Illustrate the Invention	150	(1)
Detailed Description of the Illustrated Embodiment of the Invention	150	(2)
Claims Distinctly and Precisely Pointing Out the Definition of the Invention	152	(1)
The Abstract	152	(1)
Your Review of Your Patent Application	153	(1)
Execution of Declaration, Power of Attorney, and Assignment When Application Completed	153	(2)
Ottmar Mergenthaler	155	(16)
Claims of a Patent Application	159	(12)
Introduction to Patent Claims	159	(1)
Historical Development of Patent Claims	159	(2)
Court Decisions	159	(1)
1836 Patent Law	160	(1)
What Claims Are	161	(2)
Your Review of the Claims of Your Patent Application	163	(1)
Distinguishing Different Types of Claims	164	(1)
More on Method or Process Claims	165	(1)
Composition of Matter Claims	166	(1)
Design Patent Claim	166	(1)
Dependent Claims	167	(1)
How to Read and Understand Patent Claims Drafted by Your Patent Attorney	167	(4)
Preamble	168	(1)
Transition Phrase	168	(1)
The Body of the Claim	169	(2)
Nicolaus Otto	171	(4)
Rudolf Diesel	175	(18)
Prosecution of a Patent Application	180	(13)
U.S. Patent Examination Process	180	(1)
The Patent Examination System---A Little More History	180	(1)
Filing the Patent Application With the U.S. Patent and Trademark Office	180	(2)
Examination of the Patent Application	182	(1)
Results of the Examination Are Reported in an ``Office Action''	183	(1)
Your and Your Attorney's Response to the Office Action	184	(2)
Further Patent Prosecution	186	(1)
Issuance of the Patent	186	(1)
Infringement During Dependency of the Patent	187	(1)
Additional Probable Patent Prosecution Events	188	(2)
Continuation Patent Applications	188	(1)
Continuation-in-Part Patent Applications	189	(1)
Divisional Patent Applications	189	(1)
Re-Examination By the Applicant, the Infringer, or the Commissioner of Patents	190	(1)
Re-Issue Patents	191	(2)
Nikola Tesla	193	(18)
Design Patents	203	(8)
Coverage of Design Patents	203	(1)
Infringement of a Design Patent	204	(1)
Importance of Design Patents	204	(1)
Examples of Design Patents	205	(1)
Design Patents on Computer Screen Icons	205	(1)
Design Patents Contrasted With Copyrights	206	(5)
Herman Hollerith	211	(44)
Protection of Computer-Related Inventions	215	(40)
Introduction	215	(1)
Torturous Path Through the Courts	215	(6)
Gottschalk v. Benson, 1972	215	(1)
Diamond v. Diehr, 1981	216	(1)
Arrhythmia v. Corazonix, 1992	217	(1)
In re: Alappat, 1994	218	(1)
The Guidelines	218	(1)
The State Street ``Finale''	219	(1)
The ``Mathematical Algorithm'' Exception Analysis of State Street	220	(1)
AT & T v. Excel Communications	220	(1)
Proper Protection of Computer-Related Software	221	(13)
How to Prepare a Proper Patent Application Covering Computer-Related Inventions	221	(9)
Claims	230	(1)
Determination of Whether a Computer-Related Invention Defines Patentable Subject Matter Under the Patent Laws	231	(1)
Functional Descriptive Material: ``Data Structures'' Representing Descriptive Material per se or Computer Programs Representing Computer Listings per se	232	(1)
Non-Functional Descriptive Material	233	(1)
Natural Phenomena Such As Electricity and Magnetism	234	(1)
Statutory Subject Matter	234	(4)
Types of Claimed Subject Matter	234	(1)
Safe Harbors	235	(2)
Computer-Related Processes Limited to a Practical Application in the Technological Arts	237	(1)
Preparing a Patent Application for the Computer-Related Invention	238	(3)
Claims of the Patent Application of a Computer-Related Invention Must Set Forth the Subject Matter the Inventor Considers as the Invention	239	(1)
Computer-Related Patent Application Must Contain an Adequate Written Description and an Enabling Disclosure	239	(2)
The Computer-Related Invention Must Still Be Novel and Non-Obvious	241	(1)
Computer Programming and a Sufficient Disclosure	242	(13)
What Constitutes an Adequate Disclosure in Computer Programming Patent Applications	242	(3)
Affidavit or Declaration Practice	245	(1)
Referencing Prior Art Documents	245	(10)
Hedy Lamarr	255	(18)
Patentability of Biotechnology Inventions	259	(14)
Development of Biotechnology	259	(1)
The Supreme Court, the U.S. Patent Office, and Biotechnology Inventions	260	(3)
DNA	263	(1)
Science, Religion, and Living Organism Patents	264	(1)
Examples of Biotechnology Patent Claims	265	(2)
Enablement and Written Description Requirements in Biotechnology Patent Applications	267	(1)
Biotechnology Industry and Patents	268	(1)
Medical Procedures	269	(4)
Rosalind Franklin, James Watson, Francis Crick, and Maurice Wilkins	273	(14)
Business Method Protection	278	(9)
Business Methods Constitute Patentable Subject Matter	278	(2)
Foreign Business Method and Software Patents	280	(2)
Preparing a Proper Business Method Patent Application	282	(5)
Wilbur and Orville Wright	287	(14)
Foreign Patent Protection	294	(7)
Introduction	294	(1)
Traditional System of Obtaining Foreign Patents	295	(1)
Patent Cooperation Treaty (PCT)	296	(1)
Broad Provisions of the Patent Cooperation Treaty	296	(2)
National Patent Laws and the PCT: Differences and Alterations	298	(1)
European Patent Convention (EPC)	299	(1)
Communications to Foreign Non-Attorney Patent Agent	300	(1)
Robert Goddard	301	(16)
Enforcement of the Patent Right	306	(11)
Patent Clearance Process	306	(3)
Infringement Search and the Non-Infringement Opinion Letter	306	(3)
``Right-to-Use'' or ``Knock-Out'' Search	309	(1)
Attempt to Design Around a Patent; Most Infringers Do Not Slavishly Copy the Patented Invention	309	(1)
Literal Infringement of a Patent Claim	310	(1)
``Doctrine of Equivalents,'' Where the Claim Is Not Literally Infringed	311	(2)
How the Doctrine of Equivalents Works	311	(1)
Limits on the Doctrine of Equivalents	312	(1)
Defenses to a Charge of Infringement	313	(2)
Non-Infringement	313	(1)
Patent Invalidity	313	(1)
Unenforceability of the Patent	314	(1)
Penalties and Damages For Patent Infringement	315	(1)
Marking the Patented Product with the Patent Number	316	(1)
Charles Kettering	317	(20)
Ownership and Transfer of Patent Rights	322	(15)
Inventorship, Ownership, and Assignment of Patent Rights	322	(2)
Patent Right as an Asset	322	(1)
Initial Ownership of the Patent Right	323	(1)
Shop Rights	324	(1)
Patent Licensing	324	(12)
Difference Between a Patent Assignment and License	324	(1)
When to Think ``License''	325	(2)
Developing a Relationship With a Licensee	327	(1)
Selection of an Appropriate Licensee	328	(1)
Primary License Negotiation and Agreement Considerations	329	(3)
Additional License Considerations	332	(3)
Acts Causing Termination of the License	335	(1)
Grant Back Clauses	335	(1)
Conclusion	336	(1)
Philo Farnsworth	337	(32)
Employment Contracts and Non-Compete Restrictions	350	(19)
Employment Contract Provisions Relating to Intellectual Property	350	(1)
Ownership of Intellectual Property	351	(2)
Inventions	351	(1)
Copyrightable Works of Creative Authorship	352	(1)
Confidentiality Agreements and Provisions	353	(2)
Outside Information Received by the Employee or Employer	355	(1)
Non-Compete Provisions	356	(1)
Enforceability of a Non-Compete Agreement	356	(3)
Inevitable Disclosure	359	(1)
Form Agreements	359	(1)
Consultants	359	(10)
William Lear	369	(14)
The Engineer and Scientist as Expert Witness; and Ethics	372	(11)
The Engineer and Scientist as Expert Witness	372	(5)
Need for Experts	373	(1)
Expert Assistance by Engineers and Scientists in Complex Litigation	373	(3)
Expert Depositions	376	(1)
Deciding Whether You Can Provide the Requisite Expert Assistance	376	(1)
Expert Witness Fees	376	(1)
Ethics	377	(6)
Professional Societies	378	(1)
Code of Ethics	378	(1)
Brief Comments Regarding the National Society of Professional Engineers (NSPE) Code of Ethics for Engineers	378	(2)
Comparing the Law and Ethics	380	(1)
Recruiting Practices	381	(2)
Luther Burbank	383	(22)
Copyrights as a Vehicle for Technology Protection	386	(19)
Brief History of Copyright Law	386	(3)
Pre-U.S. Constitution English Law	386	(1)
U.S. Constitution and Statutes	387	(2)
Nature of Copyrights	389	(3)
What a Copyright Is, and Is Not	389	(1)
Intangible Rights in a Work Embodied in a Tangible Medium	389	(1)
Moral Rights	390	(1)
Protecting the Balance Between the Public and the Author	390	(1)
Requirements of Copyrightable Subject Matter	391	(1)
Exclusive Rights	392	(1)
Fair Use	393	(1)
Infringement	394	(1)
Notice	394	(1)
Registration and Its Importance	395	(1)
The Duration of Intangible Rights of Copyright	395	(1)
Works For Hire	396	(2)
Copyright Registration for Computer Programs	398	(3)
Protecting Computer Programs That Do Not Contain Trade Secrets	398	(1)
Computer Programs Containing Trade Secrets	399	(1)
Screen Displays	399	(1)
Patent, Copyright, and Trade Secret Protection in Computer Software	400	(1)
Contracts and ``Shrink-Wrap'' Licenses	400	(1)
Copyright Registration for Automated Databases	401	(1)
Copyright Registration for Online Works	402	(1)
Revisions and Updates	402	(1)
Databases	402	(1)
Serials and Newsletters	402	(1)
Architectural Works	403	(2)
John Bardeen, Walter Brattain, and William Shockley	405	(14)
The Digital Millennium Copyright Act of 1998 (DMCA)---An Overview	412	(7)
Purpose of the DMCA	412	(1)
Circumvention of Technological Protection Measures	413	(2)
General Approach	413	(1)
Exceptions to the Prohibitions	414	(1)
Copyright Management Information	415	(1)
Remedies	415	(1)
Additional Provisions of the DMCA	416	(1)
Example of Potential Conflict	416	(3)
Jack Kilby and Robert Noyce	419	(10)
Mask Work Protection	425	(4)
Introduction	425	(1)
The Semiconductor Chip Protection Act of 1984	425	(1)
Mask Works Generally	426	(1)
Subject Matter of Mask Work Protection	426	(1)
Ownership, Transfer, and Licensing of the Mask Work	427	(1)
Duration of Protection	427	(1)
Rights of Ownership in a Mask Work	427	(1)
Limitations on Exclusive Rights, Reverse Engineering, and First Sale	427	(1)
Mask Work Notice	428	(1)
Infringement of Mask Work Protection Rights	428	(1)
General Comments About Mask Work Protection	428	(1)
Federico Faggin, Marcian Hoff, and Stanley Mazor	429	(14)
Trade Secrets	432	(11)
Introduction to Trade Secrets	432	(1)
Development of Trade Secret Law	432	(1)
Nature of a Trade Secret	433	(1)
Definition of a ``Trade Secret''	434	(1)
Establishment of an Enforceable Trade Secret Right	434	(2)
Even Threatened Trade Secret Theft Can Be Stopped	436	(1)
Creating a Meaningful Trade Secret Protection Program	437	(3)
Damages and Injunctions	440	(1)
Confidence	440	(3)
Stephen Wozniak	443	(14)
Trademarks	447	(10)
Origin of the Protection of Trademarks and Service Marks	447	(2)
Trademark Adoption and Selection Process	449	(3)
Creating a Trademark	450	(1)
Screening or Narrowing Step	450	(1)
Clearance Process for Determining the Availability of a Trademark for Your Use	451	(1)
Filing For Registration of Your Trademark	452	(1)
Protecting and Maintaining Your Trademark Registration	453	(1)
Trademark Protection Outside of the United States	454	(1)
Overview of the Madrid Protocol---The ``International'' Trademark	455	(2)
Percy Julian	457	(10)
Cybersquatting	461	(6)
Trademark Venturi Caused by the Internet	461	(1)
Internet Corporation for Assigned Names and Numbers (ICANN)	462	(1)
ICANN's Uniform Dispute Resolution Policy	463	(4)
Current Events	467	(8)
Bibliography	475	(20)
Index	495