Intellectual property : a workshop for engineers

80 Pages·2002·4.04 MB·English

by  Darville, Brian, Mossinghoff, Gerald J., Oman, Ralph

INTELLECTUAL PROPERTY:
A GUIDE FOR ENGINEERS
A PROJECT FOR THE
COMMITTEE ON ISSUES IDENTIFICATION,
AMERICAN SOCIETY OF MECHANICAL ENGINEERS
BY THE
COMMITTEE ON PUBLIC INFORMATION,
SECTION ON INTELLECTUAL PROPERTY LAW
AMERICAN BAR ASSOCIATION
ASME PRESS • NEW YORK • 2001
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FOREWORD
Intellectual property, the product of creative and hard working
people, needs to be protected in ways that allow creative people
to benefit from their efforts. Engineers create and use intellectual
property and manage knowledge to their own benefit, as well as
to the benefit of their company and society at large. To help engi­
neers understand intellectual property issues, the Committee on
Issues Identification of the Council on Public Affairs of ASME
International collaborated with the Committee on Public
Information of the Section of Intellectual Property Law of the
American Bar Association (ABA) to create an intellectual property
guide for engineers.
The guide is designed to provide a basic understanding of intel­
lectual property issues, specifically those related to patents, trade­
marks, copyrights, and trade secrets. The guide is not meant to be
a comprehensive statement of the law, and legal advice is always
recommended when making a business decision.
As Chair of the Committee on Issues Identification, I would
most like to thank the Honorable Gerald J. Mossinghoff, Senior
Counsel, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., and
Chair of the ABA Committee, for his outstanding contribution to
this guide and for his interest, inspiration, generosity, and patience
throughout the project. He is the primary author and an expert in
intellectual property issues.
I would also like to thank fellow members of the Committee on
Issues Identification for their thoughtful contributions, particularly
in reviewing and commenting on the drafts of the guide: Guy
Arlotto, retired; George Flowers, Auburn University; William
Hutzel, Purdue University; Dena Sue Potestio, National
Conference of State Legislatures; Arnold Rothstein, Facilities
Services Company; William Weiblen, retired; and Dave Wieland,
John Deere Waterloo Works.
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iv FOREWORD
The contributions of the following people are also greatly
appreciated: Sonya Engle, ASME Public Affairs Program Manager,
for her efforts in coordinating the overall project; John Paul, Chair,
ASME Technology & Society Division; Gloria C. Phares, Patterson,
Belknap, Webb & Tyler; Phil Hamilton, Managing Director, Public
Affairs; Chor Tan, Managing Director, Education; Harry Armen,
immediate past Senior Vice President, Public Affairs; Yogi
Goswami, Senior Vice President, Public Affairs; and Steven Lustig,
past Leadership Development Initiative intern, Public Affairs.
Marc Goldsmith
Chair, Committee on Issues Identification
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FOREWORD
INTRODUCTION
Part I PATENTS
History
What Is a Patent?
What Conditions Must Be Met?
Why Obtain a Patent
The Nature of Patent Rights
How to Obtain a Patent
The Employed Engineer as Inventor
Enforcement of a Patent
Trends in Patents
Patent Issues
PART II COPYRIGHTS
History
What Does a Copyright Protect?
How Is Copyright Acquired?
Who Owns the Copyright in a Work an
How Is It Transferred?
How Long Does a Copyright Last?
What Copyright Can Do for You
Registration and Copyright Notice
PART III TRADEMARKS AND SERVICE MARKS
What Is a Trademark?
The Importance of Registering a Mark
Obtaining a Federal Registration
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vi CONTENTS
The Examination Process — 36
Searching for Conflicts
Types of Registrable and Non-Registrable Marks 37
The Supplemental Register 40
Term of Federal Registrations 41
Protecting Trademarks 42
PART IV TRADE SECRETS 43
State Trade Secret Law 45
Economic Espionage Act 49
PART IV INTELLECTUAL PROPERTY AND THE INTERNET 51
Patents 53
Copyrights 54
Trademarks and Internet Domain Names 55
Electronic Databases 58
PART VI INTERNATIONAL PROTECTION OF 61
INTELLECTUAL PROPERTY
Patents 63
Copyrights 66
Trademarks 67
Trade-Related Aspects of Intellectual 70
Property Rights (TRIPS)
CONCLUSION 73
REFERENCE 73
MAJOR INTELLECTUAL PROPERTY INTERNET SITES 74
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I N T R O D U C T I ON
In 1 776, the philosopher/economist Adam Smith taught us that
the wealth of any nation rested on three pillars: Labor, Capital and
Natural Resources.' Our generation has added a fourth pillar —
Intellectual Property in all of its forms. Patents protect new tech­
nology. Copyrights protect literary and artistic works, as well as
computer software. Trademarks assure orderly commercial devel­
opment and consumer protection. Trade Secrets provide compet­
itive advantage to creative companies. Intellectual property pro­
vides important incentives in the burgeoning use of the Internet for
e-commerce.2 It is also an indispensable part of effective knowl­
edge management — so critical in today's business and educa­
tional environment.
Because of their inherent role as creators and managers of new
technology, engineers should have a basic understanding of the
various forms of intellectual property and their underlying laws
and governing principles. The purpose of this guide is to provide
a summary of these forms of intellectual property and to point
those seeking broader knowledge to the many sources of addi­
tional information, much of which is now on the Internet.
The United States patent system and copyright laws are as old
as The Republic, having been established by the first U.S.
Congress. Yet, each of these forms of intellectual property —
together with the protection of trademarks and trade secrets — is
directly and fundamentally involved in the accelerating pace of
new developments in our new millennium both nationally and
'Adam Smith, The Wealth of Nations: An Inquiry Into the Nature and Causes
(Modern Library 1994), 1776.
2Because of its importance and currency, a separate section of this discussion on
Intellectual Property and the Internet is provided.
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2 INTRODUCTION
internationally. What should the scope of patent protection be for
new software and business methods in e-commerce? Should
transgenic plants and animals be protected by patents worldwide?
Is patent protection for the human genome consistent with future
advances in biotechnology? Can traditional trademark rights be
accommodated in assigning Internet domain names? Can tradi­
tional copyright protection be enforced in an era of instantaneous
and worldwide publication via the Internet? Will the new Federal
Economic Espionage Act adequately protect privately owned trade
secrets targeted by post-Cold War foreign espionage? Given U.S.
leadership in the global economy, will the current national sys­
tems of intellectual property protection mature into effective
multinational systems? Answers to these and similar questions are
emerging in the recent developments outlined in this discussion.
Engineers and business executives have a large stake in shaping
the future policy and legal decisions, which — at the end of the
day — must be tailored to serve them and their needs.
This discussion is focused under six headings: patents, copy­
rights, trademarks and service marks, trade secrets, intellectual
property and the Internet, and international protection of intellec­
tual property.
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I
PART
PATENTS
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