Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
on the other hand, are “intangible” rights which cannot be seen or touched, but they still exist, or can exist, if the rules laid down by centuries of Intellectual Property Law are understood and followed. Intangible property, to be protectable, must ultimately be described or depicted in some tangible form, such as a description in a patent grant, or a work of art or manuscript of a book covered by a copyright certificate. In each of these two examples, the law describes the intangible exclusive rights possessed by the owner and/or creator of a patentable or copyrightable work.
The building blocks of intellectual property law are patents, copyrights, trademarks and service marks, as well as anti‐cybersquatting laws, unfair competition laws, trade secret protection laws, and mask work protection laws. These are all concepts that were created by legal systems in most of the countries of the world, and, although they are merely legal devices, they provide powerful instruments of protection for your intellectual creations. These systems of rights were developed to document the existence of intellectual property rights and how they can be protected, and to give the creators the right to exclusively use, own, transfer ownership, or license their exclusive intellectual property rights.
In general terms, each Intellectual Property Law system throughout the world is devised to document enforceable protection for specific types of creative and innovative output, and to allow people and business entities to own and transfer ownership in the exclusive rights in their intellectual property. For example, patents cover novel, useful, and non‐obvious machines; articles of manufacture; compositions of matter; ornamental designs; plants; manufacturing, electrical, and chemical processes; and other methods, including software algorithms and methods of doing business. Patents also cover any improvement made to an article or process falling in any of the preceding categories. Copyrights cover the creative works of authors, composers, software developers, artists and the like. Trademark and service mark registration laws, as well as the common law, which I shall explain, protect the source identity of a product or service, such as the name and/or logo, and sometimes product configuration, under which goods or services are advertised and marketed to the trade or public, and that differentiates such goods and services from those of others. Trade secret protection laws prevent a competitor or another from misappropriation of valuable and confidential information that is not generally known or available to a competitor or to the public, such as a secret chemical formula or a secret process. Mask work protection is a recent intellectual property structural block that provides exclusive rights in creative mask works used in the manufacture of semiconductors. In all, the specific nature and content of the results of your creative endeavors determines which vehicle or vehicles of the various intellectual property laws are best suited to protect the ultimate output of your efforts.
1.2 SPECIFIC INTELLECTUAL PROPERTY VEHICLES
1.2.1 Patents
A U.S. patent grant covering your invention can only be obtained from the U.S. government, namely, the United States Patent and Trademark Office (USPTO), currently located across the river from Washington, D.C. in Alexandria, Virginia. Most of the business of the USPTO is conducted electronically, and patent and trademark applications can be filed, examined, and prosecuted online. In foreign nations too, patents are granted only by the nation’s government. Each country’s patents are enforceable only in the issuing country and its territories. There are also a few regional patent systems—such as the one controlled by the European Patent Office (EPO), which issues patents enforceable in each country of the European Union. In the United States, the Patent Law is found at Title 35 of the United States Code, a body of laws periodically enacted and amended from 1790 to the present by the U.S. Congress, as mandated by Article 1, Section 8, of the U.S. Constitution. These U.S. laws define what can and cannot be patented, the conditions and requirements for obtaining a patent grant on patentable subject matter, the rights granted by a patent, the ability of a patent owner to enforce the exclusive rights embedded in the patent grant, and the ability of a patent owner to license or transfer ownership of the intangible rights embedded in the invention and patent grant for monetary consideration.
As mentioned briefly in the preceding text, patents are granted on “new and useful processes, machines, manufactures or compositions of matter, or any new and useful improvement thereof” (35 U.S.C. §101). Designs of utilitarian articles of manufacture may also be protected by a Design Patent. Recent court decisions have held that anything “new” made by man or woman falling within the definition of 35 U.S.C. §101, quoted earlier, can be the subject of a patent. This includes new forms of animal life, for example, the Harvard Mouse, which is particularly susceptible to cancer and therefore valuable in research, and the modified E. coli bacterium, which produces insulin. Also, more recently, novel and unobvious methods of conducting business have also been pronounced to be the subject of patents, as well as software under certain circumstances, as discussed in detail later in this text. By way of comparison, any material that appears naturally in nature cannot be the subject of a patent, since it was not “invented” by the alleged inventor. Also, pure abstract ideas and concepts that have no “physical” embodiment are not protectable under the patent laws. However, as discussed later, a novel concept embodied in a new and useful device or procedure may come close to being fully protected by effective and creative patent application and claim drafting.
An issued patent grant describes and illustrates the covered invention, and its advantages over the “prior art,” and also includes specifically worded “claims” that define the metes and bounds of the protection afforded by the patent grant. If a competing device or process falls within the definition set forth in a patent’s claim or claims, or comprises equivalent structure, the competing device infringes the patent. However, I am getting ahead of myself—the topic of patent infringement will be covered later.
1.2.2 Trademarks and Service Marks
Trademarks, services marks, collective membership marks, trade dress or product configuration, trade names and the like are indicia of origin of one’s products or services. These indicia are directed toward the protection of the reputation and goodwill of the manufacturer of a product or a provider of services, who uses a mark or symbol distinguishing the source of origin of its products or services from those of another manufacturer or service provider. These marks may comprise a name, logo, symbol, product shape, container shape, or other distinctive and non‐functional feature of a product or service which indicates that a certain supplier or group is the sole source for that particular brand of product or service, and the supplier or group stands behind the quality and reputation of the particular product or service. Rights in the exclusive use of the mark are protected to avoid the likelihood of consumer confusion in the marketplace as to the source of the goods or services they purchase, thereby protecting the public against fraud by the second user of a confusingly similar mark.
A trademark or service mark registration application must be submitted to the government (the USPTO in the United States) to obtain federal registration, and sets forth both the identifying mark and those goods or services with which the mark is, or is intended to be, used. A trademark never stands alone. A trademark or service mark is always considered as an adjective, modifying the goods or services to which it pertains. Thus, “Scotch tape” is proper usage, as long as the “Scotch” is followed by the identifying word “tape.” When used, a trademark or service mark should always be followed by the descriptive term of the associated goods or services.
Trademarks and service marks may also be protected in the United States and certain other common law countries without registration, if long usage and advertising of the mark has advised the public that the name or symbol has been adopted as a distinctive mark by its owner. As discussed later, each state of the United States has a trademark/service mark registration system directed to marks for goods and services that do not travel across state lines, such as a dental office, for example.
1.2.3 Copyrights
A copyright is a form of intellectual property that protects the expression of authorship or artistic rendition of the author or creator, but does not protect the idea or concept upon which the expression is based. A concept for doing something cannot be protected by copyright, but