transgenic plants and animals be protected by patents worldwide? Is patent protection for the human genome consistent with future advances in biotechnology? Can traditional trademark rights be accommodated in assigning Internet domain names? Can traditional copyright protection be enforced in an era of instantaneous and worldwide publication via the Internet? Will the new Federal Economic Espionage Act adequately protect privately owned trade secrets targeted by post-Cold War foreign espionage? Given U.S. leadership in the global economy, will the current national systems of intellectual property protection mature into effective multinational systems? Answers to these and similar questions are emerging in the recent developments outlined in this discussion. Engineers and business executives have a large stake in shaping the future policy and legal decisions, which — at the end of the day — must be tailored to serve them and their needs.
This discussion is focused under six headings: patents, copyrights, trademarks and service marks, trade secrets, intellectual property and the Internet, and international protection of intellectual property.
PART I
PATENTS
. . . the clear trend in modem times has been to increase patent protection . . . and make it more effective.
HISTORY
The United States patent system was established by the first U.S. Congress in 1790 under a specific grant of authority in the U.S. Constitution, specifically Article I, Section 8. That section states that “Congress shall have the power ... to promote the progress of . . .useful arts, by securing for limited times to . . .inventors the exclusive right to their . . .discoveries.” The U.S. Patent Office — now the U .S. Patent and Trademark Office or PTO — is one of the oldest of federal agencies, having been established in 1836 to provide an orderly and systematic examination of patent applications by professional examiners, all of whom are either engineers or scientists, and many of whom in addition have legal education and experience. The U.S. PTO is a key agency of the U.S. Department of Commerce employing more than 2500 examiners. Each of those, in turn, is assigned to examining patent applications in a very narrow area of technology. This organization permits each examiner to become an expert very quickly in his or her specific area of technology.
WHAT IS A PATENT?
A U.S. patent is a formal legal grant by the federal government that gives the inventor a legally enforceable right to exclude others from practicing the invention described and claimed in the patent. The federal government grants this right, for a term ending 20 years from the date of filing of an application for a patent, to encourage the public disclosure of technical advances and as an incentive for investing in research and development and commercializing the results. Thus, the overall progress of technical innovation is favored, while at the same time inventors are rewarded for their specific contributions. Like other forms of property, the rights symbolized by a patent can be inherited, sold, assigned, licensed or rented, mortgaged, and even taxed. Patents are national in character. Thus, a U.S. patent is enforceable only in the United States and its territories. If a company wants to practice an invention in foreign countries, separate applications must be filed in those countries or in regional patent offices that serve specific foreign countries. As pointed out later in the section on International Protection of Intellectual Property, the United States is a member of international treaties that facilitate the filing of patent applications in foreign countries.
WHAT, CONDITIONS MUST BE MET?
Congress has specified that a patent will be granted if the inventor files a timely application that adequately describes a new, useful, and unobvious invention of proper subject matter. The following conditions must be met.
✓ To be timely, an application must be filed within one year of certain acts, by the inventor or others, which place the invention in the hands of the public, i.e., patented or published anywhere in the world, on sale or in public use in this country.’1 This one-year grace period, however, is not available in most foreign countries. A U.S. inventor who wants to obtain corresponding foreign patents must first file an application in the U.S. before any disclosure, whether in written or oral form, of the invention to the public.
✓ The description of the invention in the application must be complete enough to enable others to practice the invention (“enablement”). Moreover, the application must describe the best manner (“best mode”) known to the inventor of carrying out the invention.
✓ The described invention must be new, i.e., not invented first by another or identically known or used by others in this country or patented or published anywhere in the world before the actual invention date (not the application filing date). \Z\ The invention also must be useful, i.e., serve some disclosed or generally known purpose.
✓ Finally the invention must be unobvious, i.e., the differences between the invention and the prior public knowledge in its technical field (known as “prior art”) must be such that a person having ordinary skill in this field would not have found the invention obvious at the time it was made.
The proper subject matter of a patent is very broad — in the words of the Congress and the U.S. Supreme Court, “anything under the sun that is made by man.”2 Specifically included is any product, process, apparatus, or composition, including living matter such as genetically engineered bacteria, plants, or animals. Special provisions also permit patents directed to certain distinct and new varieties of plants (Plant Patents) and new original and ornamental designs for articles of manufacture (Design Patents). A recent decision of the Court of Appeals for the Federal Circuit, the court that hears all appeals in patent-related cases, specifically held that business methods implemented by computers constituted patentable subject matter.3
WHY OBTAIN A PATENT
Most inventors seek a patent to obtain the actual or potential commercial advantages that go along with the right to exclude others. Given the high cost of research and development, the opportunity to recoup these costs through commercial exploitation of the invention often is the primary justification for undertaking research in the first place. Patent rights can be commercially exploited in two basic ways:
directly, by the inventor’s practice of the invention to obtain an exclusive marketplace advantage (where the patented technology results in a better product or produces an old product less expensively); and/or
indirectly, by receiving income from the sale or licensing of the patent.
THE NATURE OF PATENT RIGHTS
It is important to note that a patent (i.e., the right to exclude others) does not give the inventor the right to practice the invention. The inventor can practice
