Howard B. Rockman - Intellectual Property Law for Engineers, Scientists, and Entrepreneurs

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Library of Congress Cataloging‐in‐Publication Data is available.

Hardback: 9781119381976

“Ingenuity should receive a liberal encouragement.”

Thomas Jefferson

( V Writings of Thomas Jefferson , pp. 75–76)

“The first thing we do, let’s kill all the lawyers.”

William Shakespeare

(2 Henry VI, Act IV, Scene II)

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.

Piegiorgio L. E. Uslenghi, Ph.D.

Distinguished Professor Emeritus

College of Engineering

University of Illinois at Chicago

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.

Piergiorgio L. E. Uslenghi, Ph.D.

Professor and Associate Dean

College of Engineering

University of Illinois at Chicago

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?”

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.