Intellectual Property Law for Engineers and Scientists / Edition 1

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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.

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Editorial Reviews

From Barnes & Noble
The Barnes & Noble Review
What you invent is yours to profit from. So says Howard B. Rockman, author of Wiley-Interscience's IIEEE Press offering Intellectual Property Law for Engineers and Scientists. But you may not profit if you don't know how to protect your intellectual property. That's where Rockman's book comes in. He is himself a patent attorney, and his very thorough presentation will show you how to reap the benefits of your creations for years to come. What's more, this outstanding book is very readable!

The author begins with an overview of intellectual property law, defining specific vehicles and which form of protection to use. Next, he discusses the use of intellectual property in business by defining the objectives and strategies to use. Then, the author explains how to read and obtain information (information page, drawings, specification, claims, and warning) from a modern U.S. patent. Next, he gives a brief history of patent protection by disclosing the types of patent coverage. Then, the author presents what constitutes patentable subject matter and utility, followed by a discussion of statutory requirements and the requirement of non-obviousness for patentability. Next, he shows you how the patenting process works and goes on to cover novelty searches, infringement searches, and database searches.

Moving on to the actual mechanics of obtaining a patent, Rickman shows you how to file an application. Then, he introduces you to patent claims and discusses the prosecution of a patent application. After covering the design of patents, he goes on to discuss the protection of computer-related inventions and the patentability of biotechnology inventions. Next, he shows you how to use business method protection and introduces you to foreign patent protection. Then, he explains the enforcement of patent rights are enforced; the ownership and transfer of patent rights; employment contract provisions relating to intellectual property and non-compete restrictions. Next, the author explains ethics and what engineers and scientists do as expert witnesses. Then, he presents a brief history of copyright law and the Digital Millennium Copyright Act of 1998. Finally, he defines the subject matter of mask work protection, trade secrets, trademarks, and cybersquatting.

This excellent book is worth its weight in gold, or more, by virtue of the fact that it will make sure that you continue to profit from your hard work. Furthermore, this can be accomplished with only a few simple requirements: read this book, keep it close at hand, and use it every time you have the great fortune to have something wonderfully new to protect! John R. Vacca

John R. Vacca, the former computer security official (CSO) for NASA's space station program (Freedom), has written nearly 40 books about advanced storage, computer security, and aerospace technology.

From the Publisher
"This book contains sample forms of pertinent documents and helpful points to consider regarding all aspects of intellectual property." (CHOICE, July 2005)

"...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&

"…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, 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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Product Details

  • ISBN-13: 9780471449980
  • Publisher: Wiley
  • Publication date: 5/28/2004
  • Edition description: New Edition
  • Edition number: 1
  • Pages: 544
  • Sales rank: 722,178
  • Product dimensions: 7.00 (w) x 10.00 (h) x 1.20 (d)

Meet the Author

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.

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Read an Excerpt

Intellectual Property Law for Engineers and Scientists

By Howard B. Rockman

John Wiley & Sons

Copyright © 2004 The Institute of Electrical and Electronics Engineers
All right reserved.

ISBN: 0-471-44998-9

Chapter One

Overview of Intellectual Property Law


First, we need to define the core term of our subject: "Intellectual Property." The term Intellectual Property generically describes those intangible property rights-those you usually cannot see or touch-which are initially created by one's intellectual creative efforts. The results of those intellectual efforts, in most cases, are then anointed with these intangible property rights which give their creator or owner the exclusive ability to control, and profit from, the results of this creativity. "Intellectual Property Law" is that field of law which defines those intellectual creations that are entitled to protection as intellectual property, how to obtain (or lose) those intellectual property rights, how to properly use and benefit from those rights, and how to obtain enforcement and compensation when those intellectual property rights are infringed upon by a competitor or other evil person. Intellectual property law also provides guidance to a competitor who desires to produce a new product or use a new process by designing around, and thus avoiding, the proprietary territory defined by your intellectualproperty rights.

Winning or losing out in business and financial opportunities sometimes heavily depends upon whether your creative output, inventions, products and business ideas and services are protected by patents, trademarks, copyrights, trade secret rights, mask work rights, and others. Commercially useful ideas, inventions, products and business services are the foundation of many highly successful businesses. As a result, successful business owners and entrepreneurs typically place a high value on the exclusive rights granted to intellectual property developed by their employees.

Businesses have succeeded or failed because of their owner's efforts to protect their intellectual property, or their failure to do so. The value of many publicly traded companies has taken huge swings based principally upon whether the company has been successful in obtaining and enforcing its patent rights, for example. There are many common myths and understandings surrounding the need for and the difficulty in obtaining patent, trademark or copyright protection. Understanding the protection process and appreciating the valuable rights which can be acquired ensures that your intellectual property is protected, as well as that of your employer.

"Tangible" property includes things such as land, houses, jewelry, communication system terminals and networks, and even animals-things you can see and feel and physically possess. Intellectual property rights, on the other hand, are "intangible" rights which cannot be seen or touched, but they still exist, or can exist, if the rules laid down by centuries of intellectual property law are understood and followed. Intangible property, to be protectable, must ultimately be described or depicted in some tangible form, such as a description in a patent grant, or a work of art or manuscript of a book covered by a copyright certificate. In each of these two examples, the law describes the intangible rights possessed by the owner and/or creator of a patentable or copyrightable work.

The building blocks of intellectual property law are patents, copyrights, trademarks and service marks, as well as anti-cybersquatting laws, trade secret protection laws, and mask work protection laws. These are all concepts that were created by legal systems in mostly all of the countries of the world, and although they are merely legal devices, they provide powerful instruments of protection for your intellectual creations. These systems of rights were developed to document the existence of intellectual property rights, how they can be protected, and to give the creator the right to exclusively use, own, transfer ownership, or license their rights of intellectual property.

In general terms, each intellectual property law system throughout the world provides a system devised to document enforceable protection for specific types of creative output, and to allow someone to own and transfer ownership in their intellectual property. For example, patents cover novel, useful and non-obvious machines; articles of manufacture; compositions of matter; ornamental designs; plants; manufacturing, electrical and chemical processes; and other methods, including software algorithms and methods of doing business. Patents also cover any improvement made to an article or process falling in any of the above categories. Copyrights cover the creative works of authors, composers, software developers, artists and the like. Trademark and service mark registration laws, as well as the common law, which I shall explain, protect the source identity of a product or service, such as the name and/or logo, and sometimes product configuration, under which one advertises and markets their goods or services to the trade or public. Trade secret protection laws prevent a competitor or another from misappropriation of valuable and confidential information which is not generally known or available to a competitor or to the public, such as a secret chemical formula or a secret process. Mask work protection is a recent intellectual property structural block, which provides exclusive rights in creative mask works used in the manufacture of semiconductors. In all, the specific nature and content of the results of your creative endeavors determines which vehicle or vehicles of the various intellectual property laws are best suited to protect the ultimate output of your efforts.


1.2.1 Patents

A U.S. patent grant covering your invention can only be obtained from the United States government, namely, the United States Patent and Trademark Office, currently located across the river from Washington, D.C. in Arlington, Virginia. In foreign nations, patents are also granted only by the nation's government. Each country's patents are enforceable only in the issuing country and its territories. In the United States, the patent laws are found at Title 35 of the United States Code, a body of laws passed by the U.S. Congress, as mandated by Article 1, Section 8 of the United States Constitution. These U.S. laws define what can and cannot be patented, the conditions and requirements for obtaining a patent grant on patentable subject matter, the rights granted by a patent, the ability of a patent owner to enforce the exclusive rights embedded in the patent grant, and the ability of a patent owner to license or transfer ownership of the intangible rights embedded in the invention and patent grant for monetary consideration.

As mentioned briefly above, patents are granted on "new and useful processes, machines, manufactures or compositions of matter, or any new and useful improvement thereof". (35 U.S.C. §101). Designs of utilitarian articles of manufacture may also be protected by a Design Patent. Recent court decisions in the field of intellectual property law have held that anything "new" falling within the definition of 35 U.S.C. §101, quoted above, can be the subject of a patent. This includes new forms of animal life, for example, the Harvard Mouse, which is particularly susceptible to cancer and therefore valuable in research, and the modified E. coli bacterium, which produces insulin. More recently, novel and unobvious methods of conducting business have also been pronounced to be the subject of patents, as well as software under certain circumstances. By way of comparison, any material which appears naturally in nature cannot be the subject of a patent, since it was not "invented" by the alleged inventor. Pure ideas and concepts that have no "physical" embodiment are not protectable under the patent laws. However, as discussed later, a novel concept embodied in a new and useful device or procedure may come close to being fully protected by effective and creative patent application and claim drafting.

An issued patent grant describes and illustrates the covered invention, and its advantages over the "prior art," and also includes specifically worded "claims" which define the metes and bounds of the protection afforded by the patent grant. If a competing device or process falls within the definition set forth in a patent's claim or claims, or comprises equivalent structure, the competing device infringes the patent. But, I'm getting ahead of myself-the topic of patent infringement will be covered later.

1.2.2 Trademarks and Service Marks

Trademarks, services marks, collective membership marks, trade dress or product configuration, trade names and the like are directed toward the protection of the reputation and goodwill of the manufacturer of a product or a provider of services who uses a mark or symbol distinguishing the source of origin of its products or services from those of another manufacturer or service provider. These marks comprise a name, logo, symbol, product shape, container shape, or other distinctive and non-functional feature of a product or service which indicates that a certain supplier or group is the sole source for that particular brand of product of service, and the supplier or group stands behind the quality and reputation of the particular product or service. Rights in the mark are protected to avoid the likelihood of consumer confusion in the marketplace as to the source of the goods or services they purchase, thereby protecting the public against fraud by the second user of a mark.

A trademark or service mark registration application must be submitted to the government for Federal Registration, and sets forth both the identifying mark and those goods or services with which the mark is, or is intended to be, used. A trademark never stands alone. A trademark or service mark is always considered as an adjective, modifying the goods or services to which it pertains. Thus, Scotch tape is proper usage, as long as the Scotch is followed by the identifying word "tape." When used, a trademark or service mark should always be followed by the descriptive term of the associated goods or services.

Trademarks and service marks may also be protected in the U.S. and certain other common law countries without registration, if long usage and advertising of the mark has advised the public that the name or symbol has been adopted as a distinctive mark by its owner.

1.2.3 Copyrights

A copyright protects the expression of the authorship or artistic rendition of the author or creator, but does not protect the idea or concept upon which the expression is based. A concept for doing something cannot be protected by copyright, but the fixation or expression of that concept can be protected. For example, the concept of writing a book about tornado hunters is not protectable. However, a book or film about tornado hunters is a "fixation" of the author's expression, and is protectable under the copyright statutes.

Copyright protection is normally easier and less expensive to obtain than either patent or trademark protection. Under existing law, the creator of a copyrightable work obtains an intangible copyright in the work upon the fixation of the work in a tangible medium of expression. To obtain a registration of that copyright, which provides tangible evidence of the existence of the copyright, a form setting forth among other things, the author's name, the identity of the work to be protected, and its date of creation are submitted on an appropriate form to the Register of Copyrights, along with a deposit sample of the work. The Register of Copyrights works under the aegis of the U.S. Library of Congress. The application is subjected to an examination procedure, which is much quicker than the examination of patent or trademark applications, because there is no examination for novelty or likelihood of confusion compared to existing copyrighted works. The copyright application must indicate which portions of the work are original and which are not. This permits the public to ascertain which portions are protected and which remain in the public domain. Copyrights are used to protect books, films, videos, works of art, sculptures, and more recently choreography and software.

It is possible to overlap protection between the copyright and patent laws. For example, a novel, useful and non-obvious computer program may be protectable under both the patent laws and the copyright laws. The expression of an algorithm or formula can be protected as a literary work under copyrightable law. In addition, a novel method for controlling a machine by use of an algorithm may qualify for patent protection.

1.2.4 Trade Secrets

As discussed later in this text, patents and copyrights expire after a term of years, while trade secrets do not. As long as the information covered by a trade secret umbrella remains secret, that information is protected from improper discovery or use by others, unless it is independently discovered, as by reverse engineering, or otherwise made public by someone else. Where the secret is very difficult to discover and the owner is willing to maintain security to ensure it's secrecy, trade secret protection is a valuable option and has no endpoint.

However, once the trade secret becomes known, there is no way to restore secret status. If the secret is discoverable upon reviewing the articles in which the secret is used, trade secret protection is useless. In such case, patent or copyright protection should be considered instead. Unlike patents and copyrights and trademarks, there is no Federal law regulating trade secret protection in the United States. Each state has its own trade secret protection law, and if it is determined that the best way to protect your intellectual property is through the trade secret law, an attorney familiar with this area of your state law should be consulted in the state or states in which you are operating. In the State of Illinois, where I practice, the State Legislature has enacted the Illinois Trade Secrets Act, which is currently in effect. This Act sets forth what types of subject matter are considered as trade secrets, such as secret processes, formulas, customer lists, etc., and how they are protected. Even if a particular state has not enacted a statute granting trade secret protection, the common law may be available in that state to enforce trade secret rights once they are created against misappropriation.

1.2.5 Mask Works for Semiconductors

In 1984, the Federal Congress created a law to protect mask works used in creating semiconductor microprocessor chips. This law became part of the Federal Copyright Statute. In one of the later chapters of this text, I describe in detail how mask work protection can be obtained for semiconductor chips.



Excerpted from Intellectual Property Law for Engineers and Scientists by Howard B. Rockman Copyright © 2004 by The Institute of Electrical and Electronics Engineers. Excerpted by permission.
All rights reserved. No part of this excerpt may be reproduced or reprinted without permission in writing from the publisher.
Excerpts are provided by Dial-A-Book Inc. solely for the personal use of visitors to this web site.

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Table of Contents




Top Ten List of Intellectual Property Protection.

Eli Whitney.

1 Overview of Intellectual Property Law.

1.1 Defining “Intellectual Property”.

1.2 Specific Intellectual Property Vehicles.

1.2.1 Patents.

1.2.2 Trademarks and Service Marks.

1.2.3 Copyrights.

1.2.4 Trade Secrets.

1.2.5 Mask Works for Semiconductors.

1.3 Which Form of Intellectual Property Protection to Use?

Cyrus McCormick.

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.

Charles Goodyear.

3 How to Read and Obtain Information from a Modern U.S. Patent.

3.1 Information Page.

3.2 Drawings.

3.3 Specification.

3.4 Claims.

3.5 Warning.

George Westinghouse.

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.

John Deere.

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.

Alfred Nobel.

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.

Louis Pasteur.

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.

8.2.1 Conception.

8.2.2 Reduction to Practice.

8.2.3 Witnesses.

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.

Thomas Edison.

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.

George Eastman.

10 Patent Application.

10.1 Introduction.

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.

Ottmar Mergenthaler.

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.

11.10.1 Preamble.

11.10.2 Transition Phrase.

11.10.3 The Body of the Claim.

Nicolaus Otto.

Rudolf Diesel.

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.

Nikola Tesla.

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.

Herman Hollerith.

14 Protection of Computer-Related Inventions.

14.1 Introduction.

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.

14.3.2 Claims.

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.

Hedy Lamarr.

15 Patentability of Biotechnology Inventions.

15.1 Development of Biotechnology.

15.2 The Supreme Court, the U.S. Patent Office, and Biotechnology Inventions.

15.3 DNA.

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.

17.1 Introduction.

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.

Robert Goddard.

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.

18.5.1 Non-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.

Charles Kettering.

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.

19.3 Conclusion.

Philo Farnsworth.

20 Employment Contracts and Non-Compete Restrictions.

20.1 Employment Contract Provisions Relating to Intellectual Property.

20.2 Ownership of Intellectual Property.

20.2.1 Inventions.

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.

20.9 Consultants.

William Lear.

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 Ethics.

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.

Luther Burbank.

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.

22.5 Infringement.

22.6 Notice.

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.

23.4 Remedies.

23.5 Additional Provisions of the DMCA.

23.6 Example of Potential Conflict.

Jack Kilby and Robert Noyce.

24 Mask Work Protection.

24.1 Introduction.

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.

25.9 Confidence.

Stephen Wozniak.

26 Trademarks.

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.

Percy Julian.

27 Cybersquatting.

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.

Current Events.



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