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05.08
Intellectual Property for Engineers
By David W. Rouille,
Esq.
Most property is
tangible, such as real estate, vehicles,
clothing and even cash. In contrast,
intellectual property is property that is
intangible in character, having been created by
the mind or intellect in such a manner that it
has value, even though you can't hold it or
touch it. The most common types of intellectual
property are trademarks, trade dress, trade
secrets, copyrights and patents.
Trademarks
A trademark is a
name, symbol, logo or phrase that identifies
one product as being distinct from any other
product. A trademark may be registered with the
United States Patent and Trademark Office, or
with a state trademark office. A trademark that
is not registered may still be protected to some
extent under common law. A trademark cannot be
merely descriptive or generic; it must have an
element of creativity. It cannot be primarily
geographically descriptive or primarily a
surname. It cannot be confusingly similar to
another mark. Examples of trademarks include
Coke for soft drinks, Ford for motor vehicles
and Huggies for disposable diapers.
A service mark is
the same thing as a trademark, except the
service mark identifies a service rather than a
product. A registered trademark or service mark
gives you the right to exclusive use of the mark
in the same or similar industries. Examples of
service marks include Jiffy-Lube for oil change
services, Hilton for hotel services, and
McDonald's for restaurant services.
Trademark law is one of the tools used to protect against
unfair competition. The idea is to protect the
consumer from being confused as to the origin or
source of a particular product or service, and
to protect the goodwill a company develops in
its marks. While periodic renewal of a trademark
registration is required, a trademark generally
continues to be valid so long as it is used, and
it continues to have a distinctive meaning.
Trade Dress
Trade dress refers
to the overall appearance or packaging of a
product. It may include colors, shapes and
overall design. The trade dress must be
nonfunctional (i.e., not necessary to make the
product work), and must have acquired a secondary
meaning. Secondary meaning refers to the
connection in the public's mind between the
appearance of the packaging or product in
question and the specific producer of the
product. The packaging eligible for trade dress
protection could range from a small box to the
design of a building, or the design of the
product itself. To enforce a trade dress claim,
a likelihood of confusion between the two
products on the public's part must be proved.
Trade Secrets
Trade secrets are
unique business ideas that are not protected by
a patent, but nonetheless are valuable. Trade
secrets are protected by contract, and by taking
measures to maintain their confidentiality.
Copyrights
A copyright
protects works of authorship or expression,
including written expression, visual expression
(paintings, sculpture, movies, plays,
choreography) and audio expression (sound
recordings, music). Copyright is one of the most
commonly used means for protecting computer
programs, including the text of the code itself,
as well as the visual presentation on the
screen. The copyright protects only the
expression itself. It does not protect the idea.
In order to be copyrightable, an expression must
have at least a spark of creativity. A
compilation of information in a logical order,
such as a telephone book, has been held not to
be eligible for copyright protection.
A copyright gives
you the right to prevent anyone else from
copying your work without your consent. Someone
else may independently create a similar work
without violating your copyright. Someone may
also use the ideas expressed in your work
without violating your copyright. The act of
creating the work automatically gives you the
copyright. However, to file a lawsuit to enforce
a copyright, you must first register the
copyright with the United States Copyright
Office. It is also recommended that a copyright
legend be printed on the work, to give you
greater protection. The legend consists of the
word "copyright" or "©," the year of first
publication, and the name of the owner of the
copyright. For works created after 1 January
1978, the copyright is good for the life of the
author, plus 70 years.
Patents
A patent is the
exclusive right to make, use or sell an
invention. Patents are granted by countries, and
regulate the invention within the country's
territory. A United States patent is granted by
the United States Patent and Trademark office.
An invention must be novel, useful and
non-obvious to be eligible for a patent. There
are two primary types of patents. A utility
patent covers a useful process, machine,
manufactured article or composition of matter
(or any useful improvements of these). A design
patent covers the appearance of a manufactured
article. All patent applications must be
reviewed by an examiner at the United States
Patent and Trademark Office to determine whether
the legal criteria have been met. A utility
patent is good for 20 years from the date the
patent was applied for. However, an extension
may be permitted when the patent issuance is
delayed or regulatory review is required. For
utility patents granted or applied for before
8 June 1995, the patent will last for at least
17 years. A design patent lasts for 14 years
from the date of grant. Once the term of the
patent expires, anyone who wants to can copy and
commercialize the invention. Typically,
competitors begin to offer comparable products
at lower prices. A typical example is the
"generic" drug of the pharmaceutical industry.
The patent laws
were enacted to encourage the investment of
time, money and creativity required to develop
new inventions. A company that has taken the
risk of investing in research and development
should be able to recoup its costs and receive a
financial reward before others can piggyback on
the inventing company's efforts.
David W. Rouille, Esq., is
partner at Chapin Intellectual Property Law,
LLC, in Westborough, Mass., where he practices
in all areas of intellectual property law
related to computer software systems and
applications, electrical engineering
technologies, data communications systems,
microprocessor and computer architecture,
business methods and instrumentation. He has a
Juris Doctorate degree and a B.S. in electrical
Engineering.
This article is for
informational purposes only and should not be
construed as a legal opinion or counsel.
Comments may
be submitted to todaysengineer@ieee.org.
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