Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
that concept, can be protected. For example, the concept of writing a book about tornado hunters is not protectable. However, a book or film about tornado hunters is a “fixation” of the author’s expression, and the expression, but not the concept, is protectable under the copyright statutes.
Copyright protection is normally easier and less expensive to obtain than either patent or trademark protection. Under existing law, the creator of a copyrightable work obtains an intangible copyright in the work immediately upon the fixation of the work in a tangible medium of expression. To obtain a U.S. registration of that copyright, which provides tangible evidence of the existence of the copyright, an application setting forth, among other things, the author’s name, the identity of the work to be protected, and its date of creation are submitted on an appropriate form to the Register of Copyrights, along with a deposit sample of the work. The Register of Copyrights works under the aegis of the U.S. Library of Congress. The application is subjected to an examination procedure, which is much quicker than the examination of patent or trademark applications, because there is no examination for novelty or likelihood of confusion as compared to existing copyrighted works. The copyright application must indicate which portions of the work are original and which are not. This permits the public to ascertain which portions are protected and which remain in the public domain. Copyrights are used to protect books, films, videos, works of art, sculptures, and, more recently, choreography and software.
It is possible to overlap protection between the copyright and patent laws. For example, a novel, useful and non‐obvious computer program may be protectable under both patent laws and the copyright laws. The expression of an algorithm or formula can be protected as a literary work under the copyright law. In addition, a novel method for controlling a machine by use of an algorithm may qualify for patent protection.
1.2.4 Trade Secrets
As discussed later in this text, patents and copyrights expire after a term of years, while trade secret protection does not. As long as the information covered by a trade secret umbrella remains secret, that information is protected from improper discovery or use by others, unless the secret is independently discovered, as by reverse engineering, or otherwise lawfully made public by someone else. Where the secret is very difficult to discover and the owner is willing to maintain security to ensure its secrecy, trade secret protection is a valuable option and has no endpoint.
However, once the trade secret becomes known, there is no way to restore secret status. If the secret is discoverable upon reviewing the articles in which the secret is used, trade secret protection is useless. In such cases, patent or copyright protection should be considered instead. Unlike patents and copyrights and trademarks, until recently, there was no federal law regulating trade secret protection in the United States. However, in 2016, the U.S. Congress enacted a federal law to protect trade secrets, which is discussed in Chapter 27 of this text. Each state has its own trade secret protection law, and if it is determined that the best way to protect your intellectual property is through the trade secret law, an attorney familiar with this area of your state law should be consulted in the state or states in which you are operating. In the State of Illinois, where I practice, the state legislature has enacted the Illinois Trade Secrets Act, which is currently in effect. This Act sets forth what types of subject matter are considered as trade secrets, such as secret processes, formulas, customer lists, confidential future business plans, etc., and how they are protected. Even if a particular state has not enacted a statute granting trade secret protection, the common law may be available in that state to enforce trade secret rights against misappropriation once the secret is created.
1.2.5 Mask Works for Semiconductors
In 1984, the U.S. Congress enacted a law to protect mask works used in creating semiconductor microprocessor chips. This law became part of the Federal Copyright Statute. Chapter 26 of this text describes in detail how mask work protection can be obtained for semiconductor chips.
1.3 WHICH FORM OF INTELLECTUAL PROPERTY PROTECTION TO USE?
Depending on the nature of the technological project you are engaged in, one or several of the vehicles of intellectual property may be advisable to use. In some situations, you may not have any choice. If the subject matter of protection is a book or manuscript, patent or trademark protection cannot be obtained. For example, book titles other than periodical titles cannot be the subject of trademark registration, since each book title is descriptive of the precise book sold under that title. In some situations, multiple forms of protection will be available. In the case of a novel form of packaging, both article and design patent protection may be available, covering a novel construction embedded in the packaging, as well as the aesthetic outward design of the package. Also, the name of the product on the packaging would be susceptible to trademark protection, while the graphics used on the packaging label could be protected under copyright laws.
Which protection to be used is a business decision that must be arrived at by the owner of the invention or originator of the creative work. This decision should be made with the assistance of an attorney with experience in the intellectual property law field, and after the creator or owner has a full understanding as to the best vehicle or vehicles to be used for protection.
INVENTORS AND INVENTIONS
Frank J. Sprague
THE ELECTRIC STREETCAR
Frank J. Sprague, born in 1857, is known as the father of electric traction vehicles. Sprague studied at the Naval Academy in Annapolis, Maryland, which offered what was, at that time, probably the best training in the country for an electrical engineer. He graduated the Naval Academy in 1878 with high honors. In 1883, Edward H. Johnson, who was a business associate of Thomas Edison, persuaded Sprague to resign his naval commission to work for Thomas Edison. One of his contributions to the Menlo Park Edison laboratory in New Jersey was the introduction of mathematical methods in the work performed at the laboratory. Before he arrived, Edison’s team conducted several costly trial‐and‐error experiments. Sprague’s approach was to use mathematics to calculate the optimum parameters, thus saving much needless tinkering. Sprague also developed a mathematical determination of electrical distribution useful in planning and balancing the distribution circuits of Edison’s central electricity plants. However, in 1884, Sprague decided that his interests in the exploitation of electricity should be directed more towards power generation elsewhere, and he left Edison to found the Sprague Electric Railway and Motor Company. By 1886, Sprague’s company perfected two important inventions. The first was a constant‐speed non‐sparking motor with fixed brushes. The second was a regenerative braking system that uses the drive motor to return power to the main supply system. His motor was the first to maintain constant speed under varying load, and was ultimately endorsed by Edison as the only practical electric motor available. His regenerative braking system was important in the development of electric trains and electric elevators.
Most importantly, Sprague’s inventions included improvements to designs for electric streetcar systems that collected electricity from overhead lines. An electric street car is a vehicle that runs on track laid in the streets, operated usually in single units and most usually driven by an electric motor. A streetcar is of lighter weight as compared to conventional trains and is designed for the transportation primarily of passengers, but occasionally can be used to carry freight. Streetcars operate within, close to, or between nearby towns and/or cities on tracks running primarily on the streets.
The first mass transportation vehicle in the United States was called an “omnibus.” Pulled by horses, it had the appearance of a stagecoach. The first omnibus operated in America up and down Broadway in New York City in 1827. The first important improvement