Intellectual Property Law for Engineers and Scientists
June 2004, Wiley-IEEE Press
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.
Top Ten List of Intellectual Property Protection.
1 Overview of Intellectual Property Law.
1.1 Defining “Intellectual Property”.
1.2 Specific Intellectual Property Vehicles.
1.2.2 Trademarks and Service Marks.
1.2.4 Trade Secrets.
1.2.5 Mask Works for Semiconductors.
1.3 Which Form of Intellectual Property Protection to Use?
2 The Use of Intellectual Property in Business.
2.1 Introduction to Intellectual Property Strategies.
2.2 Objectives of Intellectual Property Management.
2.3 Sole Inventor in an Alien Field.
2.4 Strategic Development of Intellectual Property.
2.5 Disgorging Patentable Inventions.
2.6 Determining What and What Not to Patent.
2.6.1 Search Results.
2.6.2 Business Factors Determining Whether to Obtain Patent Protection.
2.7 Determining Who Would Be an Appropriate Licensee to Exploit Your Invention.
2.8 Drafting Strategic Patent Claims.
2.9 Determining Where to Obtain Patents.
2.10 Determining Other Industries Which May Benefit from a License.
2.11 Ensuring Your Product Does Not Violate the Patent Rights of Others.
2.12 Policing the Market for Potential Infringements of Your Patents
2.13 The Enforcement of Process Patent Claims Against an Importer of a Product Made Abroad.
2.14 Trimming the Intellectual Property Tree.
2.15 Essay on Innovation Management.
3 How to Read and Obtain Information from a Modern U.S. Patent.
3.1 Information Page.
4 Introduction to Patents.
4.1 Brief History of Patent Protection.
4.1.1 Early European Patent Custom.
4.1.2 British Patent System.
4.1.3 The U.S. Constitution and the Development of the Present U.S. Patent Examination System.
4.2 Types of Patent Coverage.
4.2.1 What Is a Patent?
4.2.2 Article or Apparatus Patents.
4.2.3 Method or Process Patents.
4.2.4 Design Patents.
4.2.5 Plant Patents.
4.2.6 New Technologies.
4.3 How to Determine What to Patent and What Not to Patent.
4.3.1 Broadly, What Can and Cannot Be Patented Under the Law.
4.3.2 From a Business Standpoint, What Should Be Patented.
4.4 Broadly, What Data Goes Into a Patent.
4.4.1 Describing the Background and Essential Elements of the Invention.
4.4.2 Claiming the Invention.
4.5 What a Patent Is Not.
4.6 Inventions Relating to Atomic Weapons.
4.7 The U.S. Government’s Right to Practice Your Patented Invention.
5 Patentable Subject Matter and Utility.
5.1 What Constitutes Patentable Subject Matter.
5.1.1 Categories of Patentable Subject Matter.
5.1.2 The Invention Must Be Useful and Work for Its Intended Purpose.
5.1.3 The Invention Must Be Novel Compared to the Prior Art.
5.1.4 The Invention Must Be Non-Obvious Compared to the Prior Art.
5.1.5 Brief Commentary on Recent Developments in Categories of Patentable Subject Matter.
5.2 Utility—The Invention Must Be Useful.
6 Novelty—The Invention Must Be New.
6.1 Statutory Requirements.
6.1.1 Time Limits for Filing a Patent Application 81
6.1.2 Prior Art Activities of the Inventor and Others That Can Defeat Patent Rights.
6.1.3 Prior Publications, U.S. and Foreign, as Prior Art.
6.2 Protecting Foreign Patent Rights.
6.3 Experimental Use Versus Actual Use of the Invention.
7 Requirement of Non-Obviousness for Patentability.
7.1 Development of the Standard of Non-Obviousness.
7.2 Historical Background.
7.3 Supreme Court Cases Predating the Section 103 Non-Obviousness Test.
7.3.1 Hotchkiss v. Greenwood, Supreme Court, 1850 94
7.3.2 Atlantic Works v. Brady, Supreme Court, 1882 94
7.3.3 Goodyear Rubber and Tire Company v. Ray-O-Vac Company, Supreme Court, 1944.
7.3.4 Cuno Engineering Corporation v. Automatic Devices Corporation, Supreme Court, 1941.
7.3.5 The Great Atlantic and Pacific Tea Company v. Supermarket Equipment Corporation, Supreme Court, 1950.
7.4 The 1952 Patent Statute and the Case of Graham v. John Deere Company.
Alexander Graham Bell.
8 The Patenting Process.
8.1 Who May Obtain a Patent.
8.1.1 Inventorship and Ownership.
8.1.2 True Inventors Must Be Named.
8.2 Proper Documentation of the Invention.
8.2.2 Reduction to Practice.
8.3 The Invention Disclosure and Invention Disclosure Meeting.
8.3.1 Preparation of a Complete Description of the Invention, How the Invention Operates, and What Advantageous Results Are Obtained by the Invention.
8.3.2 Dates of First Public Disclosure, If Any, and What Was Disclosed.
8.3.3 Advantages of the Invention Over Known Devices/Processes.
8.3.4 What Prior Art Is the Inventor Aware of for Disclosure to the Patent Examiner.
8.3.5 Additional Matters Discussed During the Invention Disclosure Meeting Between the Inventor and the Patent Attorney.
8.3.6 Invention Disclosure Form.
9 Novelty, Infringement, and Other Searches.
9.1 The Novelty Search.
9.2 Search Parameters.
9.3 Different Types of Searches.
9.3.1 Infringement Search.
9.3.2 State-of-the-Art Search.
9.3.3 Right to Use Search.
9.4 Database Searches.
9.4.1 U.S. Patent and Trademark Office Patent Classification System.
10 Patent Application.
10.2 Registration System Evolving into an Examination System.
10.3 Goal of a Properly Prepared Patent Application.
10.4 Provisional Patent Applications.
10.5 Regular, Non-Provisional Patent Application.
10.6 Content of a Regular Patent Application.
10.6.1 Title of the Invention.
10.6.2 Cross-Reference to Other Applications.
10.6.3 Background of the Invention.
10.6.4 Brief Summary of the Important Elements of the Invention.
10.6.5 Brief Description of the Drawings Which Illustrate the Invention.
10.6.6 Detailed Description of the Illustrated Embodiment of the Invention.
10.6.7 Claims Distinctly and Precisely Pointing Out the Definition of the Invention.
10.6.8 The Abstract.
10.7 Your Review of Your Patent Application.
10.8 Execution of Declaration, Power of Attorney, and Assignment When Application Completed.
11 Claims of a Patent Application.
11.1 Introduction to Patent Claims.
11.2 Historical Development of Patent Claims.
11.2.1 Court Decisions.
11.2.2 1836 Patent Law.
11.3 What Claims Are.
11.4 Your Review of the Claims of Your Patent Application.
11.5 Distinguishing Different Types of Claims.
11.6 More on Method or Process Claims.
11.7 Composition of Matter Claims.
11.8 Design Patent Claim.
11.9 Dependent Claims.
11.10 How to Read and Understand Patent Claims Drafted by Your Patent Attorney.
11.10.2 Transition Phrase.
11.10.3 The Body of the Claim.
12 Prosecution of a Patent Application.
12.1 U.S. Patent Examination Process.
12.2 The Patent Examination System—A Little More History.
12.3 Filing the Patent Application With the U.S. Patent and Trademark Office.
12.4 Examination of the Patent Application.
12.5 Results of the Examination Are Reported in an “Office Action”.
12.6 Your and Your Attorney’s Response to the Office Action.
12.7 Further Patent Prosecution.
12.8 Issuance of the Patent.
12.9 Infringement During Dependency of the Patent.
12.10 Additional Probable Patent Prosecution Events.
12.10.1 Continuation Patent Applications.
12.10.2 Continuation-in-Part Patent Applications.
12.10.3 Divisional Patent Applications.
12.11 Re-Examination By the Applicant, the Infringer, or the Commissioner of Patents.
12.12 Re-Issue Patents.
13 Design Patents.
13.1 Coverage of Design Patents.
13.2 Infringement of a Design Patent.
13.3 Importance of Design Patents.
13.4 Examples of Design Patents.
13.5 Design Patents on Computer Screen Icons.
13.6 Design Patents Contrasted With Copyrights.
14 Protection of Computer-Related Inventions.
14.2 Torturous Path Through the Courts.
14.2.1 Gottschalk v. Benson, 1972.
14.2.2 Diamond v. Diehr, 1981.
14.2.3 Arrhythmia v. Corazonix, 1992.
14.2.4 In re: Alappat, 1994.
14.2.5 The Guidelines.
14.2.6 The State Street “Finale”.
14.2.7 The “Mathematical Algorithm” Exception Analysis of State Street.
14.2.8 AT&T v. Excel Communications.
14.3 Proper Protection of Computer-Related Software.
14.3.1 How to Prepare a Proper Patent Application Covering Computer-Related Inventions.
14.3.3 Determination of Whether a Computer-Related Invention Defines Patentable Subject Matter Under the Patent Laws.
14.3.4 Functional Descriptive Material: “Data Structures” Representing Descriptive Material per se or Computer Programs Representing Computer Listings per se.
14.3.5 Non-Functional Descriptive Material.
14.3.6 Natural Phenomena Such As Electricity and Magnetism.
14.4 Statutory Subject Matter.
14.4.1 Types of Claimed Subject Matter.
14.4.2 Safe Harbors.
14.4.3 Computer-Related Processes Limited to a Practical Application in the Technological Arts.
14.5 Preparing a Patent Application for the Computer-Related Invention.
14.5.1 Claims of the Patent Application of a Computer-Related.
Invention Must Set Forth the Subject Matter the Inventor Considers as the Invention.
14.5.2 Computer-Related Patent Application Must Contain an Adequate Written Description and an Enabling Disclosure.
14.6 The Computer-Related Invention Must Still Be Novel and Non-Obvious.
14.7 Computer Programming and a Sufficient Disclosure.
14.7.1 What Constitutes an Adequate Disclosure in Computer Programming Patent Applications.
14.7.2 Affidavit or Declaration Practice.
14.7.3 Referencing Prior Art Documents.
15 Patentability of Biotechnology Inventions.
15.1 Development of Biotechnology.
15.2 The Supreme Court, the U.S. Patent Office, and Biotechnology Inventions.
15.4 Science, Religion, and Living Organism Patents.
15.5 Examples of Biotechnology Patent Claims.
15.6 Enablement and Written Description Requirements in Biotechnology Patent Applications.
15.7 Biotechnology Industry and Patents.
15.8 Medical Procedures.
Rosalind Franklin, James Watson, Francis Crick, and Maurice Wilkins.
16 Business Method Protection.
16.1 Business Methods Constitute Patentable Subject Matter.
16.2 Foreign Business Method and Software Patents.
16.3 Preparing a Proper Business Method Patent Application.
Wilbur and Orville Wright.
17 Foreign Patent Protection.
17.2 Traditional System of Obtaining Foreign Patents.
17.3 Patent Cooperation Treaty (PCT).
17.4 Broad Provisions of the Patent Cooperation Treaty.
17.5 National Patent Laws and the PCT: Differences and Alterations.
17.6 European Patent Convention (EPC).
17.7 Communications to Foreign Non-Attorney Patent Agent.
18 Enforcement of the Patent Right.
18.1 Patent Clearance Process.
18.1.1 Infringement Search and the Non-Infringement Opinion Letter.
18.1.2 “Right-to-Use” or “Knock-Out” Search.
18.2 Attempt to Design Around a Patent; Most Infringers Do Not Slavishly Copy the Patented Invention.
18.3 Literal Infringement of a Patent Claim.
18.4 “Doctrine of Equivalents,” Where the Claim Is Not Literally Infringed.
18.4.1 How the Doctrine of Equivalents Works.
18.4.2 Limits on the Doctrine of Equivalents.
18.5 Defenses to a Charge of Infringement.
18.5.2 Patent Invalidity.
18.5.3 Unenforceability of the Patent.
18.6 Penalties and Damages For Patent Infringement.
18.7 Marking the Patented Product with the Patent Number.
19 Ownership and Transfer of Patent Rights.
19.1 Inventorship, Ownership, and Assignment of Patent Rights.
19.1.1 Patent Right as an Asset.
19.1.2 Initial Ownership of the Patent Right.
19.1.3 Shop Rights.
19.2 Patent Licensing.
19.2.1 Difference Between a Patent Assignment and License.
19.2.2 When to Think “License”.
19.2.3 Developing a Relationship With a Licensee.
19.2.4 Selection of an Appropriate Licensee.
19.2.5 Primary License Negotiation and Agreement Considerations.
19.2.6 Additional License Considerations.
19.2.7 Acts Causing Termination of the License.
19.2.8 Grant Back Clauses.
20 Employment Contracts and Non-Compete Restrictions.
20.1 Employment Contract Provisions Relating to Intellectual Property.
20.2 Ownership of Intellectual Property.
20.2.2 Copyrightable Works of Creative Authorship.
20.3 Confidentiality Agreements and Provisions.
20.4 Outside Information Received by the Employee or Employer.
20.5 Non-Compete Provisions.
20.6 Enforceability of a Non-Compete Agreement.
20.7 Inevitable Disclosure.
20.8 Form Agreements.
21 The Engineer and Scientist as Expert Witness; and Ethics.
21.1 The Engineer and Scientist as Expert Witness.
21.1.1 Need for Experts.
21.1.2 Expert Assistance by Engineers and Scientists in Complex Litigation.
21.1.3 Expert Depositions.
21.1.4 Deciding Whether You Can Provide the Requisite Expert Assistance.
21.1.5 Expert Witness Fees.
21.2.1 Professional Societies.
21.2.2 Code of Ethics.
21.2.3 Brief Comments Regarding the National Society of Professional Engineers (NSPE) Code of Ethics for Engineers.
21.2.4 Comparing the Law and Ethics.
21.2.5 Recruiting Practices.
22 Copyrights as a Vehicle for Technology Protection.
22.1 Brief History of Copyright Law.
22.1.1 Pre-U.S. Constitution English Law.
22.1.2 U.S. Constitution and Statutes.
22.2 Nature of Copyrights.
22.2.1 What a Copyright Is, and Is Not.
22.2.2 Intangible Rights in a Work Embodied in a Tangible Medium.
22.2.3 Moral Rights.
22.2.4 Protecting the Balance Between the Public and the Author.
22.2.5 Requirements of Copyrightable Subject Matter.
22.3 Exclusive Rights.
22.4 Fair Use.
22.7 Registration and Its Importance.
22.8 The Duration of Intangible Rights of Copyright.
22.9 Works For Hire.
22.10 Copyright Registration for Computer Programs.
22.10.1 Protecting Computer Programs That Do Not Contain Trade Secrets.
22.10.2 Computer Programs Containing Trade Secrets.
22.10.3 Screen Displays.
22.10.4 Patent, Copyright, and Trade Secret Protection in Computer Software.
22.10.5 Contracts and “Shrink-Wrap” Licenses.
22.11 Copyright Registration for Automated Databases.
22.12 Copyright Registration for Online Works.
22.12.1 Revisions and Updates.
22.12.3 Serials and Newsletters.
22.13 Architectural Works.
John Bardeen,Walter Brattain, and William Shockley.
23 The Digital Millennium Copyright Act of 1998 (DMCA)—An Overview.
23.1 Purpose of the DMCA.
23.2 Circumvention of Technological Protection Measures.
23.2.1 General Approach.
23.2.2 Exceptions to the Prohibitions.
23.3 Copyright Management Information.
23.5 Additional Provisions of the DMCA.
23.6 Example of Potential Conflict.
Jack Kilby and Robert Noyce.
24 Mask Work Protection.
24.2 The Semiconductor Chip Protection Act of 1984.
24.3 Mask Works Generally.
24.4 Subject Matter of Mask Work Protection.
24.5 Ownership, Transfer, and Licensing of the Mask Work.
24.6 Duration of Protection.
24.7 Rights of Ownership in a Mask Work.
24.8 Limitations on Exclusive Rights, Reverse Engineering, and First Sale.
24.9 Mask Work Notice.
24.10 Infringement of Mask Work Protection Rights.
24.11 General Comments About Mask Work Protection.
Federico Faggin, Marcian Hoff, and Stanley Mazor.
25 Trade Secrets.
25.1 Introduction to Trade Secrets.
25.2 Development of Trade Secret Law.
25.3 Nature of a Trade Secret.
25.4 Definition of a “Trade Secret”.
25.5 Establishment of an Enforceable Trade Secret Right.
25.6 Even Threatened Trade Secret Theft Can Be Stopped.
25.7 Creating a Meaningful Trade Secret Protection Program.
25.8 Damages and Injunctions.
26.1 Origin of the Protection of Trademarks and Service Marks.
26.2 Trademark Adoption and Selection Process.
26.2.1 Creating a Trademark.
26.2.2 Screening or Narrowing Step.
26.2.3 Clearance Process for Determining the Availability of a Trademark for Your Use.
26.3 Filing For Registration of Your Trademark.
26.4 Protecting and Maintaining Your Trademark Registration.
26.5 Trademark Protection Outside of the United States.
26.6 Overview of the Madrid Protocol—The “International” Trademark.
27.1 Trademark Venturi Caused by the Internet.
27.2 Internet Corporation for Assigned Names and Numbers (ICANN).
27.3 ICANN’s Uniform Dispute Resolution Policy.
"...informative, interesting, and fun...highly recommended for any library that counts inventors amongst its clientele…" (E-STREAMS, November 2004)
"…this outstanding book is very readable….this excellent book is worth its weight in gold, or more, by virtue of the fact that it will make sure you continue to profit from your hard work.” (Barnes& Noble.com)
"…take[s] the reader to the point where the next step will be to consult with a component intellectual property law professional, to provide detailed information necessary to protect the results of intellectual endeavor." (Computing Reviews.com, October 5, 2004)
"…whatever your position in the intellectual property food chain, this a book you must read. I may have learned more valuable information from this book than from any other that I have read. It is definitely on my best books of the year list.” (Journal of Object Technology, Sept-Oct 2004)
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