eye on washington

Patent Reform, Fair Use and Inventors Rights

By Erica Wissolik

The 109th Congress is considering bipartisan legislation that includes the most sweeping changes to patent law since the 1952 Patent Act. The 2005 Patent Reform Act (H.R. 2795) includes language that could affect IEEE members, including a change to a first-to-file system; elimination of the best mode requirement; and limits on damages to the inventive contribution, rather than calculating on the selling price of an entire product. The House heard testimony last Fall from industry interests, such as PhRMA, and general public interests, such as the Public Patent Foundation. The legislation appears to be on hold until a companion bill is introduced in the Senate, but is expected to move very quickly once that happens. IEEE-USA's Intellectual Property Committee (IPC) is monitoring and responding to this legislation to ensure that IEEE member interests are protected.

Congress is also considering legislation on the "broadcast flag" — bits sent in the data stream of a TV show, intended to prevent copyright infringement. In 2004, the Federal Communications Commission (FCC) ruled that all hardware must "actively thwart piracy," and new TV receivers were to incorporate flag technology by 1 July 2005. In 2005, the U.S. Appeals Court said the FCC had exceeded its authority, and struck down the rule. Now, the threat of the broadcast flag is back in the form of a Senate bill, the 2006 Digital Content Protection Act. This bill not only creates flags for all digital radio and television, but grants the FCC oversight of all new digital media technologies, including iPods, PSPs, TVs and DVD recorders.

The entertainment industry has lobbied hard for legislation to reinstate the flag. Consumers' groups oppose broadcast flags because they interfere with the public's fair use rights. IEEE-USA believes federal agencies should not regulate the manufacture of technologies by imposing digital rights management in the absence of concrete evidence. IEEE-USA's IPC will encourage Congress to investigate the problem before approving what technologists regard as a conceptually flawed approach to TV content protection.

At the state level, IEEE-USA is engaged in an ambitious effort to pass legislation protecting inventors rights. When a company hires you, how much of your creativity does your employer own? Do you forfeit any rights to your ideas when you accept a paycheck?

The answer will depend on the state you work in. State law differs on what employers may demand in return for a paycheck. The assumption is that all intellectual property (IP) developed while working will belong to the company, not the employee who invented it.

But what about IP created outside of work, on your own dime? In most cases the law is silent, meaning companies can use employment contracts to claim ownership of everything their employees produce, even inventions that have nothing to do with the company and its business. IEEE-USA's IPC acknowledges that employers may have a right to IP you develop during the course of employment, but believes they should not have a right to everything you do and think.

Currently, eight states have enacted laws codifying these criteria: California, Delaware, Illinois, Kansas, Minnesota, North Carolina, Utah and Washington. Because contract law is generally a state issue, IEEE-USA is proposing model inventors rights legislation that would establish limits for employment agreements, in all 50 states. Help from individual IEEE members will be crucial. State legislators respond best to their voting constituents asking for help. If you are an inventor, and you have a story of how you lost your IP rights while working under an employer's contract, please contact us. For more information, please visit www.ieeeusa.org/policy/issues/inventorrights.

Erica Wissolik is IEEE-USA's program manager for government activities. She is also the editor of the biweekly What's New @ IEEE-USA Eye on Washington e-mail update. Comments may be submitted to todaysengineer@ieee.org.