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Intellectual Property Engineering Consulting and Professional Licensure
By Mitch Thornton
The production and protection of
intellectual property (IP) in the electrical and
computer engineering discipline is an area that
often requires detailed experience and
specialized expertise — and can be a lucrative
practice area for engineering consultants.
Because the IP portfolios of many high-tech
businesses represent a significant percentage of
their net worth, the protection of existing IP
and the production of new IP is of paramount
concern. This article provides an overview of
typical tasks and considerations that IP
consulting engineers face in their practice.
IP Production Consulting
In the area of IP production,
clients may have a new technical idea that they
wish to consider adding to their IP collection,
but they require engineering design, evaluation
and/or analyses to determine if the idea is
viable, novel and practical. Frequently, the
company will describe that idea to a consulting
engineer to determine if it can be implemented
as a viable and cost-effective solution. The
consulting engineer may perform initial
prototype specification and design services,
which sometimes result in an actual prototype;
or work with other prototyping service companies
and provide project or systems engineering
responsibilities. The consulting engineer may
also need to develop a tutorial that surveys
existing and competing approaches to the new
idea and explain the technical nuances to the
client. In producing the tutorial, the
consulting engineer will often be required to
survey existing products and may find that the
“new” idea is not as novel as was initially
assumed. This task requires that the consulting
engineer have detailed familiarity with the
business product and the problem being
addressed, including knowledge of competing
solutions and the ability to gather the relevant
technical information and distill it in a form
suitable for presentation to the client.
In this area, the consulting
engineer needs to transform the business idea
into engineering requirements and specifications
in order to perform economic analyses or
manufacturability feasibility studies. Such a
task is essentially the provision of engineering
design services. Depending on the capabilities
of the consulting engineer, this task can
involve implementation in addition to
preliminary design services or it may require
interfacing with the existing business’s design
group or other second-party manufacturing or
laboratory service companies.
IP Protection Consulting
The IP protection type of
consulting engagement can come in many forms.
Because IP can be protected through invention
patents, copyrights, trademarks and trade
secrets, the consulting engineer will work
closely with IP attorneys and may even be
engaged directly by a legal firm. Furthermore,
IP protection consulting can involve the
investigation of a competitor’s alleged
infringement of IP or it can be in the form of a
rebuttal to a competitor’s allegations of
infringement by the client.
In terms of IP protection
consulting engagements with respect to patent
infringement, the consulting IP engineer will
almost certainly be working closely with IP
attorneys. Although most IP attorneys do hold
undergraduate degrees in engineering or the
sciences, they often rely on professional
consulting engineers to assist them in
litigation issues regarding highly technical
patents. In this role, the consulting engineer
may be required to perform a variety of
different tasks, including producing tutorials
and explanations of existing patented IP or
serving as an expert witness in the courts and
testifying.
In the case of rebutting alleged
patent infringement, a consulting engineer may
be asked to evaluate accused products by
examining design documentation, including
specifications, software source code and
electronic schematics, or performing forensic
laboratory testing and evaluation. The forensic
engineering service typically involves reverse
engineering tasks where an accused product is
evaluated in the laboratory to determine if it
utilizes patented ideas and/or to determine how
it is constructed internally. The results of
this analysis can be in the form of informal
reports and presentations or it can be
accomplished through the production of expert
reports that will be used as evidence in court.
Consultants who are designated
as experts by the courts may give deposition
testimony about their opinions and findings and
can appear as testifying witnesses at trial.
This type of work requires a blend of technical
expertise with the ability to describe often
highly technical concepts to laypersons who
serve on the jury. This part of the task
requires excellent communication and teaching
skills. Additionally, some knowledge of patent
law is extremely valuable to the consulting IP
engineer. Prior experience in working with
patent attorneys in the role of an inventor can
also be very valuable.
If a consulting engineer is
working for the defense in a patent infringement
case, typical tasks include evaluation of the
patent at issue and other related patents. The
consultant may be asked to render opinions on
legal issues with the patent such as its
obviousness and the ability for one skilled in
the art to read and comprehend the patent at
issue. If it is suspected that the patent is
invalid, a consultant may be asked to perform
searches of prior art that may have used the
ideas in the patent before it was issued. Prior
art searches require the consultant to examine
the engineering literature and commercial
products for related technology as described in
the patent at issue. Consultants may be
designated as experts in court and be required
to produce expert reports and give testimony at
both a deposition and at trial based on their
findings.
IP Consulting
Engineers and Licensure
Consulting engineers working in
IP protection engineering must adhere to the
strictest set of standards of code and conduct
and provide an objective and unbiased opinion
regardless of which side of the case they are
working on. The credentials of the consulting
IP engineer are often heavily scrutinized, both
by the client and the client’s legal firm that
hires the engineer as well as the opposing side.
Although some states do not
legally require consulting IP engineers be
licensed to serve as a testifying expert, it is
common for them to be licensed. If the
consulting IP engineer does not have a P.E.
license and is not required to hold one to be
designated an expert, the opposing side will
often question why this is the case and may even
use this fact in an attempt to discredit the
reports and testimony provided. Furthermore, in
many jurisdictions, the designation of who is
qualified to serve as an engineering expert is
reserved by the courts. While this means the
consulting engineer may not be required to be
licensed to be designated as a testifying
expert, it can still be the case that the
engineer who performs design services to the
public is required to be licensed. Therefore,
if the testifying engineering expert is relying
on engineering work they performed for the
purpose of the consulting engagement, state law
may still require that person be licensed
regardless of the court’s decision as to who is
designated as an expert. The key factor here is
to determine if engineering services, as defined
in a state’s licensure laws, was performed as a
basis for the testimony of the court-designated
expert.
Final Thoughts
The field of IP production and
protection provides an opportunity for
consulting engineers. IP engineering consulting
should be pursued by individuals with expertise
in specialized areas and, depending on the
prevalence and popularity of a particular
expertise domain, can be a lucrative consulting
opportunity.
IP consulting engineers who are
self-employed should be licensed if their work
entails engineering design and analysis
services, which may fall under the
classification of performing engineering work
for the public by a particular licensing
jurisdiction. This can be confusing because many
courts reserve the right to designate who can
serve as a testifying expert regardless of their
licensure status. Some state engineering
licensure laws require testifying engineering
experts to be licensed while others specifically
state that licensure is not required to serve as
a testifying expert. However, even in the case
where the laws do not require experts to be
licensed, it is still the case that publicly
offered engineering work requires the
supervision of a licensed engineer. If a
non-licensed engineering expert provides
testimony, it will be the responsibility of the
expert to show that they were not providing
engineering services to the public in order to
perform their job should they be investigated by
a state licensing board.
Mitchell A. Thornton, Ph.D.,
P.E., is a professor of computer science and
engineering and a professor of electrical
engineering at Southern Methodist University in
Dallas, Texas. He currently serves as chair of
the electrical and computer engineering
licensure exam development committee and is a
member of IEEE-USA’s Licensure and Registration
Committee.
Comments may be submitted to
todaysengineer@ieee.org.
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