What Your Professors Might Not Have Told You About IP

by Glenn Tenney, CISSP CISM

Can you imagine receiving an electrical engineering degree and not knowing anything about Ohm’s law? Or of receiving a computer science degree and not having had any computer programming classes? Yet, a basic part of almost every IEEE member’s work often isn’t taught in school. We create works, make inventions, design new chips, produce new consumer products, and write articles, all as part of what we do as engineers — all of these acts relate to intellectual property.

Because a large part of what we do professionally involves intellectual property (IP), it seems logical that learning about IP would be considered an important part of every engineer’s education? But is it?

How much did your engineering program teach you about IP or agreements dealing with IP (e.g. your employment agreement)? Did any of your engineering courses cover IP legal basics?

Let’s see what you know, or think that you know, about basic IP law as it applies to your engineering profession.

True or False: A copyright protects your idea.

False. A copyright only protects the expression of your idea and not the idea itself. A patent offers protection for ideas that are new, useful and not obvious. From the copyright law: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” Generally, only a specific expression of an original work of authorship is protected. Copyrights, however, do afford protection for what’s known as derivative works.

How long does a patent’s protection last?

A patent currently lasts for 20 years from the date of the first application for the patent. A copyright lasts for the author’s life plus 70 years, while a copyright held by a corporation lasts for 95 years from its first publication or 120 years from its creation, whichever is less.

True or False: A copyright is only valid if a copyright notice is affixed to the work.

False. A copyright exists as soon as the work is “fixed in a tangible medium” (e.g. as soon as the work is printed), even if there is no copyright notice. Before 1989, in the United States, a registration was required in most situations. Today, registration is not required for protection, but when a copyright is registered, statutory damages as an alternative can be obtained in the event of a copyright infringement case.

True or False: Your boss should appear on a patent application as one of the inventors, even if he or she was not involved in actually creating the invention.

False. Only the people who actually invented the invention should be listed as inventors on a patent application. Listing other people, such as your boss, if they weren’t actually the inventors could invalidate the entire patent.

True or False: A copyrighted description of a product protects your manufacturing rights.

False. The owner of a copyright has six exclusive rights: the right to reproduce the work, prepare derivative works, distribute copies, perform the work publicly, display the work publicly, and in the case of sound recordings to perform the work publicly by means of a digital audio transmission. Unless the copyrighted work would need to be reproduced, distributed, performed, or displayed as part of the manufacturing, a copyright would not protect manufacturing rights. Instead, a patent or licensing of a trade secret would be used to protect manufacturing rights, although in some circumstances registered trademarks may be useful to protect manufacturing rights.

True or False: The abstract of a patent tells you exactly what is protected.

False. A patent is composed of a title, a description, an abstract, and one or more claims. The claims define the scope of the invention that is being claimed for patent protection. Some people read the abstract and mistakenly believe that that’s what’s being protected. The abstract is usually written as part of the original application and is usually overbroad because it isn’t changed when the claims are amended during patenting process.

True or False: Your employer owns everything you invent.

False. Without an employment agreement, your employer does not own everything you invent, especially when it's outside the scope of your work. With an employment agreement, you can agree that your employer owns much of what you invent, but many states limit such agreements to just the scope of your work or when you use your employer’s resources. IEEE-USA's Intellectual Property Committee produced Intellectual Property and the Employee Engineer, a book detailing employment agreements.

This little quiz only touches on a very few points about IP that engineers who deal daily with IP often misunderstand or don't know. If you didn’t know all of the answers, you’re not alone — but you should consider finding out more about basic IP law, because it affects what you do almost every day.

If you’re a student, seek out a course on the basics of IP law (especially one within your engineering program).

If you’re on the faculty of a university, or if you recently graduated, IEEE-USA's Intellectual Property Committee would like to know if your university’s engineering program includes courses on IP law. Please contact the IP Committee staff liaison Erica Wissolik at e.wissolik@ieee.org and let us know.

Glenn Tenney, CISSP CISM, is a former chair of IEEE-USA's Intellectual Property Committee, and is IEEE-USA's Career Policy editor. Comments may be submitted to todaysengineer@ieee.org.