Intellectual Property
(ref: Engineering by Design by Gerard Voland)
Types of Property
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real
– tangible and usually not movable (houses and land)
– ownership is legally indicated by a deed
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personal
– tangible and usually movable (clothing, furniture, automobile)
– ownership is legally indicated by a sales receipt

intellectual
– intangible (ideas or concepts such as inventions, works of art,
music, product names, recipes)
– ownership can be legally indicated via trade secrets, trademarks,
copyrights, or patents
Trade Secrets
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legal protection provided by the government of the United
States that allows an individual or company to maintain the
secrecy of a particular process or product (formula for CocaCola is a trade secret)
advantages
– no time limit
– property remains a secret known only to owner(s)
– provides legal protection against others attempting to learn the
secret
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disadvantages
– belongs to owner only if they can keep it a secret; may be legally
reverse engineered
Trademarks
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protects product names, logos, and other identifiable and
commercially valuable property (brand names and brand
marks, i.e. Coke, Band-aids, Kleenex)
advantages
– renewable every five years
– unlimited time limit (simply renew)
– provides legal protection

disadvantages
– belongs to owner only if it does not become used generically to
identify the product "type" (aspirin, nylon, formica, linoleum,
shredded wheat)
Copyrights
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protects intellectual forms of expression such as artwork, books,
music
only the form of the expression is protected, not the idea or concept
itself (although there are many books that present the theory and
applications of calculus, each author or publisher can receive
protection for the particular expression of these ideas)
advantages
– renewable
– very long lasting legal protection (for copyrights issued since 1977 this
protection extends until 50 years after the death of the author)

disadvantages
– time limit (although lengthy) is finite, after the copyright protection
expires the work enters the public domain
– only protects the specific form of expression, not the idea or concept
itself
Patents
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the United States patenting system is based upon the principle of
quid pro quo (something for something)
in exchange for publicizing the invention, a utility patent gives the
awardee the right to exclude others from making, selling, or using
the invention in the United States for a period of twenty years from
the date of application (prior to 1995 for seventeen years)
the potential of financial (and other) rewards acts as an incentive to
invent
Types of patents
– utility patents - protect functional products or concepts (of most interest
to engineers)
– design patents - protect the form or shape of an object, do not protect
the functional capabilities of a design, only the appearance
– plant patents - protect asexually produced plants (produced through
grafting, budding, cutting, layering, or division)
Utility Patents

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Section 101 of the Patent Act "Whoever invents or discovers
any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title."
Criteria for utility patents - patent examiners are particularly
concerned with three criteria in determining if an applicant
should be granted a utility patent: novelty, usefulness, and
nonobviousness
Novelty
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the invention must be demonstrably different from the "prior art" (all
work in the field of the invention is "prior art"; an inventor is
expected to be familiar with this prior art material)
in the United States the person/s recognized as the first to invent (as
opposed to the first to file) is/are granted the patent for an invention
the inventor must demonstrate both of the following two conditions
hold
– the earliest date of conception of the invention
– diligence in reducing the invention to practice without any period of
abandonment

it is imperative that the inventor keep complete records during the
period of development before filing the patent application
– records should be kept in a bound laboratory notebook with numbered
pages
– obtain competent witnesses of the recording

disclosure before filing a patent application should be avoided - once
disclosed the inventor has one year from the date of disclosure in
which to apply for patent protection
Usefulness
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desired objective(s) must be achieved by the invention - there
must be some practical utility associated with the invention
that is specific, demonstrable, and substantial.
Nonobviousness
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the invention must be deemed to have required more than
ordinary skill to design or the mere addition/duplication of
components found in previously patented inventions
nonobviousness focuses upon the differences between the
invention and the prior art and the level of skill necessary in
creating such differences
secondary considerations used to help evaluate
nonobviousness
– satisfying an unmet need (inventions that meet long-standing
unmet needs might be assumed to be nonobvious)
– enjoying unexpected levels of commercial success (such products
may not have been obvious or they would have been developed
sooner)
– the level of effort exerted by others in (unsuccessfully) solving
the problem
Patent Disclosures
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the application to receive patent protection for an invention
claims
–
–
–
–
should describe the real advantages of the invention
determine the legal coverage to be provided
ordered from the most general to the most specific
strive to generate as many claims as possible for an invention in
order to maximize the legal protection provided by a patent (two
conflicting goals: claims must be sufficiently narrow and precise,
as required by patent law; however, they also should be broad
enough to protect all appropriate aspects of the inventor's
intellectual property)
USPTO Patent Fees (2009)
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see USPTO current fee schedule
filing fee: utility $330, design $220, plant $220
issue fee: utility $1,510, design $860, plant $1,190
maintenance fees must be paid on a utility patent in order to
prevent the patent from expiring (due at 3.5 years $980, at
7.5 years $2,480, and at 11.5 years $4,110)
fees are reduced by 50% for applicants who are "small
entities" such as individuals, small business concerns, or
nonprofit organizations
Conducting a Patent Search
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www.uspto.gov