Innovation Asset Blog

Engineers Play Key Role in Intellectual Property Creation

In an article posted on the ASME web site in August 2012, Mark Crawford highlights the key role played by engineers in the creation and early protection of intellectual property rights.

Quoting from the IEEE publication “Intellectual Property and the Employee Engineer,” Crawford underscores that “[e]very schematic, each piece of software code, and every drawing, diagram and prototype has intellectual property rights attached upon creation.” Engineers are therefore “professional innovators who…are often the first involved in creating a proprietary design or invention, says Crawford. He adds, however, that scientists and engineers, focused on the technology itself, “don’t always realize the finer (or more nebulous) points of protecting IP.”

Crawford highlights two particularly important issues, surfaced by Russell Genet, an attorney with the Nixon Peabody firm in Chicago: greater awareness of what qualifies as being potentially patentable, and the perils of premature public disclosure of an idea.

As to potential patentability, some engineers might very well assume that their work “is obvious to others in their field,” and thus not patentable, according to Genet. However, the patent law test for whether something is obvious is more complicated than that, and what might appear “obvious” to an engineer “might not be so obvious under proper patent law analysis.”

As to public disclosure, discussing potentially patentable subject matter in, say, an article or trade show presentation – or even with friends outside the company – “could result in a complete forfeiture of one’s ability to obtain patent protection…” according to Genet. “[A] patent application should be filed before such disclosures occur.”

Crawford suggests that if internal training on IP protection is lacking, there are consultants and even online training courses available. It would behoove the diligent engineer to avail himself or herself of such resources.

Peter Ackerman

Peter Ackerman

Founder & CEO, Innovation Asset Group, Inc.