For those engineers and scientists who have ever had the task of trying to understand patents, this book, written by a practicing patent attorney, is easy to read and informative. Fortunately, it is not written in the style typically found in patents issued today.

Howard B. Rockman offers a “Top ten list of intellectual property protection” (p. xxvii) that should be provided to every graduating engineer, reminding him or herof the need for protecting intellectual property and how to protect it. The steps are simple, but too few new engineers have a clue about intellectual property and its importance to the companies where they will begin their careers.

The hardcover text is divided into 27 chapters, with an extensive bibliography and a complete index. The first two chapters provide the reader with background information on intellectual property and its importance to business success. Given this background information, the reader can then decide which chapter or chapters require more in-depth review or simply plow ahead in sequential fashion—either approach will work.

The next ten chapters delve into the mystery of the patent, starting with a brief review of the generic content one expects to find in each patent, followed by an in-depth discussion of each topic. As an illustration, Chapter 6, “Novelty—The invention must be new”, describes, in detail, the definition prescribed by the US Patent and Trademark Office (USPTO) as a requirement for an idea to be patented. For example, a blue roller-ball pen would fail the test of novelty if a red roller-ball pen had been issued a patent. In contrast, a blue felt-tip marker would probably pass the novelty test, again, if reviewed against the red roller-ball pen patent, since the felt-tip is sufficiently different from the roller-ball. Each chapter offers easy insight into the vagaries of a patent, explaining the purpose, methods, and requirements for each section as identified by the USPTO. Of particular interest is the chapter on claims, as claims delineate the specific boundaries of the patent being issued. Unfortunately, claims are most often difficult to understand because of the stylized form of the statement of limitation.

Chapters 13–16 review more specific types of intellectual property that may be protected by patents, including designs, software applications, biotechnology, and business processes. For many, these particular topics may come as a surprise. The area of patents for software applications was a surprise to me, as software could not be patented when I first began to work with intellectual property, since software was limited to copyright protection only.

The next five chapters relate more to the business aspects of the patent: foreign patents, ownership and transfer of patent rights, employment contracts, noncompetition clauses, and so forth. These chapters have more information for the human resources department than for the engineer, but all should be aware of the needs of the business to protect its intellectual property.

The final five chapters cover aspects of intellectual property that most engineers and scientists never encounter or consider, and may not even be aware of. These topics include copyright protection, the Digital Millennium Copyright Act, mask work protection, trade secrets, trademarks, and service marks. Each needs to be understood by engineers and scientists to enable them to better grasp the extent of the company’s intellectual property—and the need to protect it.

Beyond the wealth of information on intellectual property, the author has inserted short articles covering some of the more easily recognized inventors and inventions in history. In some cases, the inventor, or at least the inventor–invention relationship, is not as well known (for example, the section covering Hedy Lamarr, the movie actress, and the invention of spread spectrum communication—an unlikely match). The articles provide interesting examples of how some inventions were protected and some were not, and of the loss created by the lack of protection.

From my perspective, I wish this book, or at least its contents, would have been available for a senior-level undergraduate course or first-year graduate course when I was attending school. It provides valuable information on a topic that is, at best, poorly understood by most engineers and scientists, even though the information is extremely important to them for success in their careers and to their potential employers. All engineers, regardless of their field of training, need to understand intellectual property and its importance to the business employing them.

Over the years, I have had the opportunity to read and review a number of books. Some have been good, some bad, and some have been excellent—rating a “needs to be on the desk for handy reference” comment. This book moves into that latter rating, but rather than for “handy reference” I would suggest “as a constant reminder” because of the importance of its message concerning intellectual property. I am sure the author will be happy when I say that every engineering library should have a copy, every engineering manager should have a copy, and, if possible, every engineer should have a copy as a constant reminder of the importance of documenting and protecting corporate intellectual property.

REFERENCE:

R. E. Floyd, “Intellectual Property Law for Engineers and Scientists,” in IEEE Transactions on Professional Communication, vol. 48, no. 1, pp. 113-114, March 2005.
doi: 10.1109/TPC.2004.843306
keywords: {Copyrights;intellectual property;patents;trade secrets;trademarks;Application software;Bibliographies;Books;Companies;Copyright protection;Engineering profession;Intellectual property;Sections;Testing;Trademarks},
URL: http://ieeexplore.ieee.org/stamp/stamp.jsp?tp=&arnumber=1397915&isnumber=30404

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