The first edition of the book Intellectual Property Law for Engineers and Scientists by Howard B. Rockman was adopted as a textbook for an online graduate‐level course that Mr. Rockman has taught for almost two decades in the College of Engineering of the University of Illinois at Chicago. That book proved to be very popular among professionals interested in intellectual property law at the international level.

Mr. Rockman has now updated the material in his book to incorporate changes in patent law that have occurred during the past 15 years. I am sure that this second edition will be as well received as the first one.

A few years ago, I contacted Mr. Howard B. Rockman, a patent attorney, and asked him to develop a graduate‐level course in Engineering Law to be offered on the Internet to all students enrolled in our Master of Engineering web‐based degree program, as well as to senior undergraduates in all fields of engineering. That course was very successful, and a follow‐up course in Intellectual Property Law quickly followed. It soon became clear that no satisfactory textbook existed for this second course, hence I convinced Mr. Rockman to write such a textbook and put him in touch with the publications office of the Institute of Electrical and Electronics Engineers, Inc. (IEEE).

The IEEE Press and John Wiley & Sons decided to publish Mr. Rockman’s manuscript, whose first edition is here presented to all practicing and student engineers and scientists who have an interest in intellectual property. I am convinced that this timely book will be very well received and will be very useful to both technical and legal personnel not only in the United States, but worldwide.

THE PROPER PERSPECTIVE—A FABLE

After a long and productive life on earth, an engineer arrived at the gates of heaven. The gatekeeper scanned through the book of expected arrivals, and then advised the engineer that there was a mistake and that he was supposed to go to the “other place.” The engineer was directed by the gatekeeper to a long escalator, and told to take the escalator all the way down, where he would be greeted by someone in a red suit. The engineer did what he was told, and ended up in Hades.

After being in Hades for a short while, the engineer noticed that it was uncomfortably hot. Being that he had been a heating, ventilating, and air conditioning (HVAC) engineer on earth, he began assembling various parts of scrap materials lying around, and, in a matter of 3 weeks, had constructed and was operating an air conditioning system throughout Hades. A week later, he had completed a cold water delivery system. Shortly thereafter, God and the devil were on the phone for their monthly status conference call, and the devil stated: “You wouldn’t believe! We have an engineer down here, of all people. He’s installed air conditioning and cold water down here; he’s done great things. It’s almost livable down here now.” God replied: “You have an engineer down there? That’s a horrible mistake! You have to send him up here right away!”

“No!” said the devil. “He’s doing wonderful things down here, and I love him a lot!”

God said: “You send him up here right away!”

“No!” retorted the devil.

“You send him up here immediately, or I’ll sue you,” responded God.

The devil said: “You’re bluffing.”

“What do you mean, I’m bluffing!” said God.

The devil replied: “Where are you going to get a lawyer?”

OVERTURE

Having thus established the appropriate relationship between technology and the law, the material in this second edition pertains to the protection afforded by the law to the ideas, creations, and inventions of engineers, scientists, entrepreneurs, and others covered by the umbrella term “technology professionals.” With technological advancements moving forward today at what appears to be an exponential rate, the need to transform intangible novel ideas into tangible, protectable assets has increased. Where, in the past, the words “patent” or “copyright” only rarely appeared in the daily newspapers, today the popular press is repeatedly reporting news items regarding the effect of intellectual property protection in our everyday lives. For example, pharmaceuticals and patents have become a global issue. Also, each time you install a new program on your computer, or open the shrink wrap on a package containing software, you must “agree” to respect the intellectual property rights of the creator of the software.

The fields of science and engineering have, and always have had, a direct correlation to the work of intellectual property attorneys and agents throughout the world. In case you are wondering, the term “intellectual property attorney” encompasses all of us who toil in the areas of patent, copyright, trade secret, trademark, and unfair competition law, and their related fields, as included in this text. For example, I have been counseling and working with engineers, scientists, and other creative types for over 50 years, and, throughout this period, I have constantly tread along the interface between technology and the law that, for the most part, defines “intellectual property creation and protection.”

The one thing that has been evident to me throughout my practice is that the engineers and scientists I have worked with have high levels of education and experience in the technology field. However, practically, each time I have advised an inventor or creator of the steps to be taken to protect their new invention or novel creation, I have found myself describing the relevant law to them from the beginning. Since an inventor or creator may actually lose rights in their intellectual property before deciding whether to obtain protection or not, I came to an understanding that technology professionals should at least have a handy resource available to obtain general knowledge about intellectual property law before they complete their inventions and creations, so as to avoid taking steps that would cause the loss of all or mostly all intellectual property rights before they have the opportunity to reap the rewards of their creative work.

As an adjunct faculty professor at the College of Engineering of the University of Illinois at Chicago (UIC), I prepared a course in 2002 entitled “Intellectual Property Law for Engineers and Scientists,” which was, and still is, taught as part of the Master of Engineering degree program offered totally over the Internet. The course comprises 15 weekly lectures of 1–1.5‐hour duration. The lectures are delivered orally to students who enroll in the course as a voiceover to a slide presentation depicting highlights of each lecture. In addition, the entirety of each lecture is posted on our web site, on a week‐by‐week basis, and can be downloaded, printed, and used to follow the audio presentation. My ad libs, some anecdotes, and poor attempts at humor forming the audio broadcast are not included in the written text. From the assignment answers submitted by the students, I can perceive a keen interest in the subjects covered in our course, and enrollment in the course keeps increasing.

Professor George Uslenghi, Associate Dean of the College of Engineering at UIC, suggested that the series of lectures that I prepared, with augmentation, be prepared as a draft manuscript and submitted for publication. Professor Uslenghi determined that a proper background in intellectual property modalities was becoming increasingly important for an engineer and scientist to have an awareness of. To make a long story into a saga, the result of the professor’s suggestion was the first edition of this text, published in 2004.

The publisher of this text asked me recently to prepare a second edition to update the information in the first edition, as necessary, to bring newly developed information about intellectual property law to you, the reader. For example, since 2004, U.S. Patent Law has been significantly amended by passage of the American Invents Act (AIA) in 2011, most importantly to grant patent rights to the first to file a patent application, and not the first to invent, when two or more inventors or groups of inventors have nearly simultaneously filed patent applications covering the same or similar inventions. In addition, the applicable law governing the patent eligibility of computer‐related and life science inventions has been modified radically in recent years as a result of court decisions. Several other recent nuances in patent law are also updated and explained in this second edition, such as new procedures allowing others to challenge the issuance of a patent before the U.S. Patent and Trademark Office (USPTO), and thus avoiding litigation in the federal courts.

In addition, the U.S. Congress, in 2016, enacted the Federal Defend Trade Secrets Act, which provides additional remedies for those whose trade secrets or confidential information have been misappropriated by someone else, such as a former employee. This new federal law now runs parallel to the various state statutory and common law trade secret laws protecting trade secrets. Also, this second edition includes expanded materials regarding the commercialization and management of intellectual property assets, technology transfer, and enforcement of intellectual property rights.

This text was not written to be read from cover to cover in one sitting. The table of contents and index have been carefully crafted to allow you, the reader, to go directly to the information you need regarding a specific project in which you are involved. For example, I expect electrical and mechanical engineers to avoid the chapter on biotechnology.

A major purpose of this text is to enable you, as an inventor or creator, to efficiently interface with an intellectual property attorney, for example, and provide him or her with information enabling you to obtain the maximum protection for your invention or creation. On the other side of the coin, the text material will aid you and your intellectual property attorney to take steps to ensure that your invention or creation does not infringe upon the intellectual property rights of others. The last thing in the world you want is to invite a lawsuit when you introduce your new product or process to the world.

Included in this text are patent, copyright, trade secret, mask work, trademark, and cybersquatting legal and procedural principles, as well as how to properly use the new vehicles of intellectual property protection for novel software, biotech, and business method inventions. Also, this text covers trademark protection for domain names, and other ancillary matters that fall within the genre of intellectual property protection.

The material in the pages that follow also provides you with information regarding employment contracts as they relate to an assignment of intellectual property rights to an employer, the concepts of confidentiality of proprietary information, and covenants not to compete following a change in employment. With increasing movement between employment positions, typical covenants not to compete in employment contracts are receiving closer scrutiny by the courts, and by state legislatures.

By no means is this text intended to transform you into an intellectual property attorney, or to do the work of one. The purpose is to provide you with knowledge of a very arcane, but important, adjunct to the technology professions, that of the protection of the technology you develop, and the steps necessary to prevent stepping on the intellectual property “toes” of others.

Between each of the chapters of this second edition, I have placed essays on famous and noteworthy inventors and their inventions, followed by a copy of the first page of patents resulting from these inventors’ efforts. A complete copy of each patent may be obtained from the USPTO website (http://patft.uspto.gov/netahtml/srchnum.htm). The feedback I received from the first edition included comments that students who used the text for the course work enjoyed the inventor and invention essays interspersed between the chapters of the book. Taking these comments to heart, this second edition includes several additional essays of inventors and inventions I considered interesting. I hope you find these essays both interesting and informative. I found the research devoted to these historical incidents to be fascinating, particularly the differences between those who developed their inventions through diligent periods of trial and error, and others whose inventions resulted from acts of serendipity.

The content of this text does not provide everything there is to know about intellectual property protection. Such a text would be too thick to be mobile. In covering each of the subjects, I have taken you, the reader, to the point where your next step will be to consult with a competent intellectual property law professional to provide you with the detailed information necessary to protect the results of your intellectual endeavors. Keep in mind that neither I nor the publishers of this text are offering or rendering legal advice, or other professional services, to the reader. Also, since the law on any given subject changes constantly, it is important that you seek the advice of a competent intellectual property lawyer or agent to ensure that you receive the most updated advice available.

This text was not prepared to be completely read at one sitting. My purpose is to provide selected information on the several subjects addressed in the following pages that are of interest at any given moment in time, by consulting the index. Most importantly, the information in this text does not constitute legal advice. It is highly recommended that if you need advice as to a specific problem or question that you are facing, a qualified intellectual property law professional should be contacted.

I am greatly indebted to many people and organizations that assisted me in the preparation and production of this second edition. My thanks go out to each, and the order in which their names appear is not indicative of the degree of my appreciation. You were all awesome.

The publishers—IEEE Press and John Wiley & Sons—are to be commended for allowing me to present the intellectual property information in this work to the engineering, scientific, and entrepreneurial community. It is my fervent desire that, by bringing this material to those who generate inventions and creative works, a greater awareness will be created on how the worldwide intellectual property laws work to advance technology, science, and the creative arts, leading to more developments reaching the light of day. To Mary Hatcher, Sarah Keegan, Nicole Hanley, and Peter Mitchell of IEEE Press and John Wiley & Sons, thank you for your guidance throughout the publication process.

A large measure of my appreciation goes to George Uslenghi, PhD, Professor and Associate Dean, College of Engineering, University of Illinois at Chicago (UIC), for creating the online Master of Engineering program at UIC, where my two courses, “Engineering Law” and “Intellectual Property Law for Engineers and Scientists,” are taught to students worldwide over the Internet. It is the latter of these two courses that provided the foundation for the first and second editions of this work, and it was Prof. Uslenghi who initially shepherded this project through the IEEE Publications Committee. My thanks also extend to Carolyn C. Williams, the administrator of the Masters of Engineering program at UIC, who has been of extraordinary assistance in my interface with academia, and who seeks only chocolates as a reward.

My thanks also go out to two fine attorneys who assisted me in the preparation of the biotechnology patent and cybersquatting chapters of this text, Krista Vink Vinegas (krista.vinegas@morganlewis.com) and Peter Berk (pberk@fvldlaw.com). In addition, U.K. patent attorney James Leach (james.leach@mewburn.com), a member of the Mewburn Ellis firm, contributed mightily to the portion of this text on the patent eligibility of computer‐related inventions in Europe. Credit is also due to Richard Gruner (7gruner@jmls.edu), former director, Center for Intellectual Property, John Marshall Law School, Chicago, Illinois, for his contributions to the coverage of international intellectual property creation, protection, and enforcement. My law partner, Mercedes V. O’Connor, deserves the highest accolades for getting me through the computer‐related material included in this text. My having gone through engineering school with only a slide rule, since computers were not available then, her assistance was invaluable.

My thanks also go out to William T. McGrath, an excellent copyright law attorney with the Chicago law firm of Davis and McGrath, who provided guidance to me on the intricacies of copyright law, including the Digital Millennium Copyright Act (DMCA). Bill has taught copyright law at John Marshall Law School for many years, and I have the utmost respect for his wisdom in the mysterious ways of copyright law.

This text could not have been produced without the able assistance of Sharen Lahti and Susan Kilburg. Without them, the pages of this work may have been chiseled on stone tablets.

Hearty thanks also are due to the National Inventors Hall of Fame, whose website provided the starting point for my idea to include brief biographies of inventors and inventions between the chapters of both the first and second editions of this text. I also want to thank all of the authors of the many research materials given attribution in my bibliographies. The hardest part of preparing the inventors and inventions essays was deciding which fascinating facts about these enlightened individuals had to be omitted for the sake of brevity. My thanks also extend to Anthony Loder, son of famed actress/inventor Hedy Lamarr, for furnishing me with first‐hand knowledge about his mother’s invention of what is known today as spread spectrum technology.

For assistance in researching the history of the Wright Brothers, my appreciation is extended to Ronald C. Young, a local historian from Blue Island, Illinois. My essay on Nikola Tesla would not have been possible without the kind cooperation of the wonderful people at the Nikola Tesla Museum, Belgrade, Serbia, and the Antique Wireless Association of the United States. Also, my hand is extended to Paul Schatzkin for furnishing me with invaluable documentation on the Farnsworth–Zworykin patent battle.

Maxwell Rockman deserves a well‐earned thank you for conducting the preliminary research for the inventors and inventions essays in the first edition, while I struggled to keep up with my daytime vocation as an intellectual property attorney. Maxwell, your service was well above and beyond the call of duty.

Debbie Greenberg researched and prepared several of the inventors and inventions essays included in this second edition, and my warmest appreciation extends to her.

JoAnn Rockman, my wife of 34 years, deserves more expressions of appreciation than I am capable of giving. First, she had to tolerate my “lack of attention” while the underlying UIC course materials were developed. Then, she had to stand by and watch while her spouse pored over the papers and research material to prepare 36 chapters of text and the numerous inventors and inventions essays. As a consolation, I now have turned control of the dining room table back to her and the family.

There are several important points regarding the potential loss of intellectual property rights by the actions of an inventor or creator, and other matters, that warrant special and advanced mention. Adherence to these points will help you avoid the unintended loss of rights to your novel technology. Each of these matters is discussed in detail in this text, but I want to prevent the potential loss of intellectual property rights until you get to the appropriate page.

1. Do not publicly disclose your patentable invention to anyone outside your development team until either a provisional or non‐provisional patent application covering your invention has been filed with the USPTO, or your respective home patent office. In the United States, in broad terms, an inventor has 1 year following the public disclosure of an invention to file a patent application. However, public knowledge of your invention anywhere will destroy all patent rights in most countries outside the United States. These countries adhere to the “absolute novelty” rule that requires a patent application to be filed covering an invention in the inventor’s home country before any public disclosure of the invention. Thus, by filing your patent application in your home country before any public disclosure of the invention, you have saved all of your international patent rights. If you must disclose your invention to another before a patent application can be filed, have the recipient of the disclosure sign a confidential non‐disclosure agreement before receiving the information. This makes the disclosure “non‐public,” and saves your patent rights.
2. Even though you obtain a patent on your invention, products or processes incorporating your invention may still infringe the patent rights of someone else. Therefore, my advice is to have a freedom‐to‐use search conducted before you bring your new, and patentable, product to market.
3. Be sure you advise your patent attorney of all prior art relating to your invention that you are aware of before the patent application covering your invention is filed, and during the pendency of your application. It is a strict requirement that all material prior art publications and activities of which you are aware be submitted to the U.S. patent examiner.
4. Since the United States has adopted the “first‐to‐file” system, if you are working in a highly competitive industry, your patent application, provisional or non‐provisional, should be prepared and filed at the earliest practical time.
5. When beginning a new employment, carefully read and fully understand the agreements you sign, particularly the language regarding ownership of inventions made prior to your employment, and those inventions made during your employment. Also make sure you understand any language that may affect your ability to work for a competitor if and when your new employment terminates.
6. If you are adopting a name, trademark, logo, etc., for use in your business, have a search conducted to ensure that someone else in the same or a similar line of business is not already using a confusingly similar name or symbol.
7. When asking a vendor or supplier to provide input to a development project, have the vendor first sign an agreement that any contribution they make toward the development of protectable intellectual property will belong to you or your company, and not to the vendor.
8. If you intend to maintain certain information as trade secrets, fully inform yourself of the steps you legally have to take to prove later that you have in place a strict policy and safeguards for maintaining the secrecy of all confidential information.
9. The copyright law prevents copying. You may set forth a previously written‐about concept or development in your own words, but do not copy the same expression of that concept as used by someone else.
10. Consider initially that any new development you produce may be patentable, or may be covered by one or more of the other intellectual property vehicles. Just as science and technology changes, intellectual property laws also change to protect new forms of innovation.