Basic Intellectual property rules can help civil and structural engineers understand how it affects the AEC industry.
By Stephen L. Keefe, P.E., Esq.
Intellectual property (IP) impacts every industry, including civil and structural engineering. For example, a Florida general contractor recently slapped a competitor with a patent suit alleging infringement of its concrete slip forming technologies. The case apparently settled in mid-2018 in the U.S. District Court for the Southern District of Florida, showing that the accused infringers may have taken the case seriously enough to nix the lawsuit in its early stages.
As this patent blowup shows, civil engineers and contractors have no more immunity against IP enforcement than any other industry. It also shows how civil engineering enterprises can effectively turn their IP on misbehaving rivals. Further, IP claims pose yet another risk for industry players to consider and allocate, typically via IP indemnification clauses in their contracts.
Some basic IP rules follow below to help civil and structural engineering professionals understand how IP affects their industry. IP comes in four primary categories — patent, copyright, trademark, and trade secret. Each IP type has unique costs, benefits, and disadvantages.
Patents usually cost more money and take more effort to obtain than the other IP categories. Civil and structural engineers, unlike practitioners of more abstract arts such as software and financial methods, have little trouble with patent eligibility for their inventions at the patent office. The crux of patent protection is the right to exclude others from using a patented invention. It typically takes at least two years after filing a patent application to obtain an issued patent — with patent costs totaling several thousand dollars in government fees and attorney costs to cut through the bureaucratic and legal obstacles — to create a robust patent that would-be infringers would hesitate to challenge. Receiving a patent is no sure thing, with the U.S. Patent and Trademark Office (USPTO) ultimately refusing to allow many applications it receives.
A patent owner has a right to bring a lawsuit, normally in federal court, to stop another party from making, using, selling, offering to sell, or importing his or her patented technology. Patent claims signed off on by the USPTO define intellectual property analogously to how a deed defines physical property such as land. In other words, a patent provides a property right. That right typically stays in force for 20 years from application filing.
Patent litigation can sometimes involve enormous damages and consequences for infringers. The high-stakes nature of patent lawsuits tends to make bringing and defending them quite expensive and burdensome, with extensive discovery and depositions of high-ranking corporate officers. Just the threat of litigation by a patent owner can create a strong deterrent to prevent competitors from copying the patentee’s proprietary technology.
The global patent system takes territorial form, with civil and structural engineering inventors having to file and obtain a separate patent in each nation in which the innovator seeks protection. Each national patent system comes with its own costs and nuances, with the U.S., Europe, and China forming the usual first tier of filing for civil engineering. Civil and structural engineers also file in relatively high numbers in Japan, Korea, Canada, and Australia.
Global filing, of course, changes based on business goals, with smaller nations taking priority over larger markets depending on the technology and associated business strategy. Because filing patents in multiple nations easily generates costs in the tens of thousands of U.S. dollars, patentees usually reserve such wide global filing for their best technologies. Each nation that issues a patent will then charge recurring annuities to maintain that patent.
Civil and structural engineering professionals should remember above all what probably amounts to the golden rule of patenting: Avoid publicly disclosing your invention until you file a patent application on that invention. Following this rule of thumb will go a long in way in keeping the inventor out of difficult situations as a patent owner.
Per Article I, Section 8, clause 8 of the U.S. Constitution, patent ownership vests in individual inventors. In the absence of a contract, multiple inventors jointly own their inventions. The freedom to contract then kicks in, with inventors having the option to enter into agreements to license, assign, sell, or otherwise use their patent as they would any piece of property.
Business associations in the U.S. such as corporations typically require their employees to assign all patents to the company as a condition of employment. As many small businesses learn the hard way, a future obligation to assign buried in an employment agreement typically does not equal a legal assignment, meaning that companies should have inventors execute an assignment with each and every patent application.
The U.S. Constitution created copyright law in the same clause as it made patents a part of American jurisprudence. Contrary to relatively expensive patents that require USPTO issuance, copyrights cost much less and come into existence as soon as an author fixes a creative work in tangible form. For example, once an author writes down or draws an original work of authorship, he or she creates a copyrighted work. Although successfully suing for copyright damages typically requires registration with the Copyright Office, the work at least theoretically becomes protected once the words or drawings hit the page.
Copyright law protects primarily expression, which amounts to this IP form’s chief limitation. As an example, imagine that a civil or structural engineer publishes a groundbreaking article on a new technique or a thoroughly researched solution to a longstanding problem in the field. Although patent law may protect the technological innovation itself, copyright law protects merely the way that article’s words express the solution or innovation. So, copyright basically just protects the wording of the article expressing the idea from unauthorized copying and reproduction by an infringer. Unlike patent law, copyright will generally not stop a copyist from using the underlying innovation itself.
Although the author’s copyright lawyer may zealously argue in favor of substantial similarity to the copyrighted work to underpin a finding of infringement in court, it typically does not take much rewording and revision by another party to alter expression enough to evade a copyright. This reality may explain why patents, which protect the technical breakthrough itself, cost significantly more money and trouble to obtain than copyrights. A copyright, though, will still stop the many egregious copy-and-paste infringers who infest the civil engineering industry in the internet age.
While copyright protection of literary and graphic works tends to provide straightforward enough protection, copyright law does have some wrinkles for civil and structural engineers. Copyright law protects architectural works but throws some curve balls in which only certain types of structural plans and as-built structures gain legal protection.
Copyright law covers buildings inhabitable by humans such as houses, office towers, hotels, theaters, and other structures meant for human occupation. Copyright leaves other civil engineering works out in the cold, typically denying protection for structures such as bridges and dams. Copyright also encompasses computer code, so copyright may extend to CAD file code for original works of authorship as well.
Copyright protection typically endures for 70 years from the death of the author. For more straightforward copyright cases, civil and structural engineering authors may use a simple, internet-based website maintained by the U.S. Copyright Office to register their works for about $50. The author may later use the resulting registration, which the Copyright Office typically issues within a few months for original works of authorship, to sue for copyright infringement. Suing for copyright infringement, usually in federal district court, involves significant nuance and procedural hurdles probably best left to a copyright attorney retained by the author to handle the suit.
While copyright centers on expression and patent provides a right to exclude, trademark law focuses on the source of goods and services. Trademark guards against actors who would create market confusion regarding a wide variety of marks and brands, including logos, names, sounds, colors, and trade dress. Owners may use their trademarks as a shield against parties that attempt to unfairly use another’s market identity or good will for gain.
For example, if a new retailer tried to use a logo resembling a bullseye, a certain Minneapolis-based retail giant might bring suit to enforce its trademark. The trademark owner may use the law to keep consumers from mistakenly shopping at that new store based on the false assumption that the competitor falls under the established brand.
Trademark laws vary by state in the U.S. more than copyright law does, and vastly more than patent law, which federal courts almost exclusively shape. Like patents, trademarks involve many nuances that could and do fill books. The U.S. Patent and Trademark Office issues trademarks based on review by government examiners, with acquisition costs typically amounting to less than patents.
Unlike patents, trademark rights may come into legal existence without an issued mark and for an unlimited term. Related rights such as false advertising claims and a right of publicity also exist in the trademark arena. Like patent and copyright law, trademark law varies on a nation-by-nation basis, though international treaties such as the Madrid System exist to streamline international filing.
Trade secret forms the last primary class of intellectual property, with secrecy underpinning this type of protection. Although American trade secret law varies based on state common law, Congress recently provided a key cause of action in 2016 at the federal level with the Defend Trade Secrets Act. Trade secret basically stands as a polar opposite to patent law. While patent law gives owners a 20-year term to exclude others from using their inventions in exchange for describing their innovation in a patent, trade secret law gives its holders a cause of action against theft of trade secrets without time limit, provided the owners follow requirements under state law to maintain the right.
Coca-Cola’s formula probably stands as the most famous example of this IP type in the U.S. But trade secret comes with an Achilles heel: Once stolen and exposed to the world, the trade secret is destroyed. The law typically leaves the owner with just a trade secret theft claim against the perpetrator, and the owner can no longer stop the world from using the eviscerated secret.
Armed with at least the very basics of IP, civil and structural engineering professionals can recognize the various benefits, drawbacks, costs, and risks associated with these important legal rights in their industry. Civil engineering innovators can also plan how to optimally employ the various pillars of IP in their respective enterprises, whether as a shield, or if necessary, as a sword.
This article is for general information purposes and is not intended to be and should not be taken as legal advice.
Stephen L. Keefe, P.E., Esq., is a patent attorney with the Sigma Law Group, based in the greater New York City and Philadelphia metropolitan areas. After graduating from West Point with a degree in civil engineering and serving in the U.S. Army, Keefe earned a master’s degree in civil engineering from Columbia University and practiced as a structural engineer in New York City and Virginia for six years. He served as a patent examiner at the U.S. Patent & Trademark Office, received a Juris Doctorate from the George Washington University Law School, and has practiced patent law for more than 10 years at leading IP law firms and as in-house corporate patent counsel. He can be contacted at email@example.com.