(Editor’s Note. Protecting intellectual property is one of the hottest areas we encounter lately. It is certainly a very broad area with an army of specialists concentrated in the field. We thought it would be a good idea to provide some basic insight for the non-specialist so we selected one key area of intellectual property - patent rights. We used a couple of recent articles in the June 2007 and March 2008 issues of the Briefing Papers as our primary sources, both of which were written by W. Jay DeVecchio of the law firm of Jenner & Block LLP.)
There are various forms of intellectual property and intellectual property rights that may be relevant to government contracts. Developing computer software or hardware may result in trade secrets that are protectable as “restricted rights” for software or “limited rights” in technical data. These software and data are also subject to copyright protection. If the underlying development gives rise to “inventions” then patent rights may result. The categories of intellectual property are distinct from each other under the regulations but they may arise from a common set of events. Though discussing each of these are beyond the scope of any one article, we have decided to discuss patent rights since those are most affected by recent court, even US Supreme Court, decisions.
Broadly speaking, patent laws cover inventions (discoveries) of new, nonobvious and useful things, processes and designs. In the words of the law patentable discoveries include “new and useful process, machine, manufacture or composition of matter or any new and useful improvement” as well as “any new, original and ornamental design for an article of manufacture.” There are some limits on the scope of what is patentable such as laws of nature (e.g. gravity), physical phenomena (ice) and abstract ideas (e.g. trip to the moon). However, application of laws of nature are patentable (anti-gravity machine). Also mathematical algorithms may not be patentable standing alone but may be when incorporated into a process such as a computer program.
When you meet the qualifications for patentability, you then may obtain a patent which in the US provides a legal monopoly on the invention for 20 years. That means, in theory, no one else may make, use, sell or reverse engineer your invention. In practice, the monopoly given is only as good as your ability to police your invention and to sue those who infringe on it, remembering your patent may be a target for others to invent around. This raises the need to decide whether to patent the invention or hold it as a trade secret. Trade secret disclosures and monopolies are largely in your control and the decision should be based on consideration of the following: (1) Is the government the only market? If so, there may be less reason to patent because the government can use the invention or have your competitors do so (2) How easy is it to reverse engineer? If easy, a patent may be best while if not, a trade secret might be better (3) What is your ability to police and litigate patent infringement as opposed to controlling trade secrets?
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