Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 13

Preface

THE PROPER PERSPECTIVE—A FABLE

After a long and productive life on earth, an engineer arrived at the gates of heaven. The gatekeeper scanned through the book of expected arrivals, and then advised the engineer that there was a mistake and that he was supposed to go to the “other place.” The engineer was directed by the gatekeeper to a long escalator, and told to take the escalator all the way down, where he would be greeted by someone in a red suit. The engineer did what he was told, and ended up in Hades.

After being in Hades for a short while, the engineer noticed that it was uncomfortably hot. Being that he had been a heating, ventilating, and air conditioning (HVAC) engineer on earth, he began assembling various parts of scrap materials lying around, and, in a matter of 3 weeks, had constructed and was operating an air conditioning system throughout Hades. A week later, he had completed a cold water delivery system. Shortly thereafter, God and the devil were on the phone for their monthly status conference call, and the devil stated: “You wouldn’t believe! We have an engineer down here, of all people. He’s installed air conditioning and cold water down here; he’s done great things. It’s almost livable down here now.” God replied: “You have an engineer down there? That’s a horrible mistake! You have to send him up here right away!”

“No!” said the devil. “He’s doing wonderful things down here, and I love him a lot!”

God said: “You send him up here right away!”

“No!” retorted the devil.

“You send him up here immediately, or I’ll sue you,” responded God.

The devil said: “You’re bluffing.”

“What do you mean, I’m bluffing!” said God.

The devil replied: “Where are you going to get a lawyer?”

OVERTURE

Having thus established the appropriate relationship between technology and the law, the material in this second edition pertains to the protection afforded by the law to the ideas, creations, and inventions of engineers, scientists, entrepreneurs, and others covered by the umbrella term “technology professionals.” With technological advancements moving forward today at what appears to be an exponential rate, the need to transform intangible novel ideas into tangible, protectable assets has increased. Where, in the past, the words “patent” or “copyright” only rarely appeared in the daily newspapers, today the popular press is repeatedly reporting news items regarding the effect of intellectual property protection in our everyday lives. For example, pharmaceuticals and patents have become a global issue. Also, each time you install a new program on your computer, or open the shrink wrap on a package containing software, you must “agree” to respect the intellectual property rights of the creator of the software.

The fields of science and engineering have, and always have had, a direct correlation to the work of intellectual property attorneys and agents throughout the world. In case you are wondering, the term “intellectual property attorney” encompasses all of us who toil in the areas of patent, copyright, trade secret, trademark, and unfair competition law, and their related fields, as included in this text. For example, I have been counseling and working with engineers, scientists, and other creative types for over 50 years, and, throughout this period, I have constantly tread along the interface between technology and the law that, for the most part, defines “intellectual property creation and protection.”

The one thing that has been evident to me throughout my practice is that the engineers and scientists I have worked with have high levels of education and experience in the technology field. However, practically, each time I have advised an inventor or creator of the steps to be taken to protect their new invention or novel creation, I have found myself describing the relevant law to them from the beginning. Since an inventor or creator may actually lose rights in their intellectual property before deciding whether to obtain protection or not, I came to an understanding that technology professionals should at least have a handy resource available to obtain general knowledge about intellectual property law before they complete their inventions and creations, so as to avoid taking steps that would cause the loss of all or mostly all intellectual property rights before they have the opportunity to reap the rewards of their creative work.

As an adjunct faculty professor at the College of Engineering of the University of Illinois at Chicago (UIC), I prepared a course in 2002 entitled “Intellectual Property Law for Engineers and Scientists,” which was, and still is, taught as part of the Master of Engineering degree program offered totally over the Internet. The course comprises 15 weekly lectures of 1–1.5‐hour duration. The lectures are delivered orally to students who enroll in the course as a voiceover to a slide presentation depicting highlights of each lecture. In addition, the entirety of each lecture is posted on our web site, on a week‐by‐week basis, and can be downloaded, printed, and used to follow the audio presentation. My ad libs, some anecdotes, and poor attempts at humor forming the audio broadcast are not included in the written text. From the assignment answers submitted by the students, I can perceive a keen interest in the subjects covered in our course, and enrollment in the course keeps increasing.

Professor George Uslenghi, Associate Dean of the College of Engineering at UIC, suggested that the series of lectures that I prepared, with augmentation, be prepared as a draft manuscript and submitted for publication. Professor Uslenghi determined that a proper background in intellectual property modalities was becoming increasingly important for an engineer and scientist to have an awareness of. To make a long story into a saga, the result of the professor’s suggestion was the first edition of this text, published in 2004.

The publisher of this text asked me recently to prepare a second edition to update the information in the first edition, as necessary, to bring newly developed information about intellectual property law to you, the reader. For example, since 2004, U.S. Patent Law has been significantly amended by passage of the American Invents Act (AIA) in 2011, most importantly to grant patent rights to the first to file a patent application, and not the first to invent, when two or more inventors or groups of inventors have nearly simultaneously filed patent applications covering the same or similar inventions. In addition, the applicable law governing the patent eligibility of computer‐related and life science inventions has been modified radically in recent years as a result of court decisions. Several other recent nuances in patent law are also updated and explained in this second edition, such as new procedures allowing others to challenge the issuance of a patent before the U.S. Patent and Trademark Office (USPTO), and thus avoiding litigation in the federal courts.

In addition, the U.S. Congress, in 2016, enacted the Federal Defend Trade Secrets Act, which provides additional remedies for those whose trade secrets or confidential information have been misappropriated by someone else, such as a former employee. This new federal law now runs parallel to the various state statutory and common law trade secret laws protecting trade secrets. Also, this second edition includes expanded materials regarding the commercialization and management of intellectual property assets, technology transfer, and enforcement of intellectual property rights.

This text was not written to be read from cover to cover in one sitting. The table of contents and index have been carefully crafted to allow you, the reader, to go directly to the information you need regarding a specific project in which you are involved. For example, I expect electrical and mechanical engineers to avoid the chapter on biotechnology.

A major purpose of this text is to enable you, as an inventor or creator, to efficiently interface with an intellectual property attorney, for example, and provide him or her with information enabling you to obtain the maximum protection for your invention or creation. On the other side of the coin, the text material will aid you and your intellectual property attorney to take steps to ensure that your invention or creation does not infringe upon the intellectual property rights of others. The last thing in the world you want is to invite a lawsuit when you introduce your new product or process to the world.

Included in this text are patent, copyright, trade secret, mask work, trademark, and cybersquatting legal and procedural principles, as well as how to properly use the new vehicles of intellectual property protection for novel software, biotech, and business method inventions. Also, this text covers trademark protection for domain names, and other ancillary matters that fall within the genre of intellectual property protection.

The material in the pages that follow also provides you with information regarding employment contracts as they relate to an assignment of intellectual property rights to an employer, the concepts of confidentiality of proprietary information, and covenants not to compete following a change in employment. With increasing movement between employment positions, typical covenants not to compete in employment contracts are receiving closer scrutiny by the courts, and by state legislatures.

By no means is this text intended to transform you into an intellectual property attorney, or to do the work of one. The purpose is to provide you with knowledge of a very arcane, but important, adjunct to the technology professions, that of the protection of the technology you develop, and the steps necessary to prevent stepping on the intellectual property “toes” of others.

Between each of the chapters of this second edition, I have placed essays on famous and noteworthy inventors and their inventions, followed by a copy of the first page of patents resulting from these inventors’ efforts. A complete copy of each patent may be obtained from the USPTO website (http://patft.uspto.gov/netahtml/srchnum.htm). The feedback I received from the first edition included comments that students who used the text for the course work enjoyed the inventor and invention essays interspersed between the chapters of the book. Taking these comments to heart, this second edition includes several additional essays of inventors and inventions I considered interesting. I hope you find these essays both interesting and informative. I found the research devoted to these historical incidents to be fascinating, particularly the differences between those who developed their inventions through diligent periods of trial and error, and others whose inventions resulted from acts of serendipity.

The content of this text does not provide everything there is to know about intellectual property protection. Such a text would be too thick to be mobile. In covering each of the subjects, I have taken you, the reader, to the point where your next step will be to consult with a competent intellectual property law professional to provide you with the detailed information necessary to protect the results of your intellectual endeavors. Keep in mind that neither I nor the publishers of this text are offering or rendering legal advice, or other professional services, to the reader. Also, since the law on any given subject changes constantly, it is important that you seek the advice of a competent intellectual property lawyer or agent to ensure that you receive the most updated advice available.

This text was not prepared to be completely read at one sitting. My purpose is to provide selected information on the several subjects addressed in the following pages that are of interest at any given moment in time, by consulting the index. Most importantly, the information in this text does not constitute legal advice. It is highly recommended that if you need advice as to a specific problem or question that you are facing, a qualified intellectual property law professional should be contacted.

Howard B. Rockman

rockman@rvoiplaw.com