Legal Issues In Design

By the end of this presentation, you should: Understand what a contract is Understand the issue regarding intellectual

property:

- what a patent is, the criteria for filing one, and the elements that constitute it.

- differences between patents, copyrights, trademarks, and trade secrets. Understand the issue regarding legal liability –

- concepts of negligence and liability as they apply to product design.

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Learning Outcomes

A legally binding agreement between two people or organizations (parties), which involves an exchange of entities that have some value (considerations) to each of the parties

Valid and unchangeable when executed Need a supplemental agreement to change called Engineering change proposal (ECP) Avoid changes by adhering to the detailed

set of specifications for the project

Contracts

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The question here is "Who owns it?" When you show up for the first day of work

at a new company they will likely ask you to sign a contract. ◦ They own all of the intellectual property that you

create while on the payroll.

◦ You may also have to sign a no-compete clause indicating that you will not work for a direct competitor for a given period of time after leaving the company.

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Intellectual Property

According to the World Intellectual Property Organization (www.wipo.int),Intellectual Property refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.

Any work of your intellect which takes on commercial value when incorporated into some physical embodiment

- a new machine or device - a new manufactured product

- a new material - a new process for manufacturing - an improvement to any of these items

What is Intellectual Property?

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• Industrial property: includes inventions (patents), trademarks, industrial designs, and geographic indications of source (Vidalia, Roquefort, Tuscany)

• Copyright: includes literary and artistic works such as novels, poems, plays, films, musical works, drawings, paintings, photographs, sculptures, and architectural designs

IP Categories

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Patent – legal protection for a design or invention.

The Patent Quiz (True or False)

1. If you have a patent on a design and somebody else uses it, the government will find them and penalize them.

2. The first person to file for a patent at the patent office receives the patent.

3. If you have a patent on a technology, you have unlimited right to use it.

4. Filing for a patent is free.

5. You must reduce the idea to practice in order to receive a patent.

6. If you unwittingly infringe upon someone else’s patent, you are not liable.

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Patents

• Utility Patent: new and useful process, machine, article of manufacture, compositions of matter or new useful improvement thereof. Must be novel, non-obvious and useful.

• Design Patent: new, original and ornamental design for an article of manufacture.

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Types of Patents

To get a utility patent, the idea must be:

1. Novel: new and nothing like it existed

2. Non-obvious: another person would not be expected to develop the same idea based upon the existing technology

3. Useful: perform a useful function and be able to be reduced to practice

Who determines this?

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Utility Patent

Filing ProcessThorough Research at www.uspto.gov

Non-Provisional Patent Application Citation of prior art Adequate Description of invention Claimed by inventor in clear and definite terms

Provisional Patent Application (PPA) allows a one-year window to decide no public disclosure if formal application not filed use ‘patent pending’ to publicly disclose invention

Patent Rules• Grants the right to exclude others from

making, using, offering for sale, selling or importing the invention, for 20 years from date of filing.

• Against the law to claim a false patent• A patent only gives the owner a right to sue

others if they infringe upon it, not the government

• “Patent Pending” has no legal ramifications

What Cannot be Patented?

• Laws of nature• Physical phenomena• Abstract ideas• Nonuseful and infeasible devices• Works of art• Any invention that is offensive to public

morality• The Atomic Energy Act of 1954 excludes

the patenting of atomic weapons

In 2011, the United States patent law changed when the Leahy-Smith America Invents Act was signed.

It changed the US patenting system from a first-to-invent to a first-inventor-to-file system (in line with other countries)

Inventors have to only prove that they did actually invent the product, not that they were the first.

The inventor must be the one filing for patent

Warning

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Pressman, D. 2011. Patent it yourself, 15th ed. Berkeley, CA: Nolo Press.

Nolo PPA. 2009. Nolo’s guide to provisional patent application.http://nolonow.nolo.com/noe/popup/provisional_patent_application_guide.pdf

Ma, M.Y. 2011. Fundamentals of patenting and licensing for scientists and engineers. Hackensack, NJ: World Scientific Publishing Co.

References

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Intellectual embodiment such as a device, a process, or a chemical formula

There is little chance of it being reverse-engineered

Question: Is it legal to reverse-engineer another company's product to reveal their trade secrets?

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Trade Secrets

Granted to the physical embodiment in a form of books, poems, musical compositions, works of art, photographs, images, or any combination of these items

Subject to the constraints of Section 107-118 of the copyright law (US Copyright Office)

Copyrights are good for lifetime + 50 years. Protect the physical manifestation, not the

idea of the creative work “Fair Use” exception (section 107)

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Copyrights

Trademarks

• A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others.”

-United States Patent and Trademark Office

• Trademark rights arise from• Actual use of the mark• Registering the mark with the PTO

• Registration is not required to establish rights and begin using a mark but offers legal protection.• Unregistered use may result in injunction and awarding

damages for infringement

Trademark Rules

• Trademark rights last indefinitely, if mark is used.• 10 year registration can be renewed• Evidence of use required during 5th year.

• ™ and SM can be used by anyone claiming ownership of that mark

• ® only for federally registered trademarks• Registering in the US is a prerequisite for

registering in other countries• Protect domestic goods from imported items with

the same trademark

Liability: 1. something that one owes; an obligation; debt.

Tort: Any wrongful act that does not involve a breach of contract and for which civil suit can be brought.

Negligence: not following reasonable rules and standards that apply and committed a wrongful act.

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Legal Liability

An act is defined a legally negligent if the following 4 hold true.

1. The manufacturer had a duty to follow reasonable standards and rules.

2. There was a breach of duty (i.e. failed to include safety devices).

3. The plaintiff was harmed.

4. The breach caused the harm.

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Negligence

An even less stringent standard, known as strict liability, has been adopted. The person/company suing you does not have to prove negligence. You are liable if the following four things hold true.

1. The product was dangerous and/or defective.

2. The defect existed when it left your control.

3. Defect caused harm.

4. The harm is assignable to the defect.

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Strict Liability