Intellectual Property for Civil Engineers – Part I

Intellectual Property for Civil Engineers – Part I

Arizona Society of Civil Engineers Newsletter, September 2009
By Roger Owers, Ph.D., P.E., J.D.

Cyrus stirred some sugar into his coffee.  He looked across the small table at Angie, his attorney, and smiled.  “You know,” he started, “given this strange economy, things are actually OK with my firm.”

“That’s good to hear, Cyrus.  Do you have enough work?”

“Yes I do.  We also are trying to take advantage of this lull in the market by re-evaluating the services we provide and developing a new marketing strategy.”

Angie replied, “That’s exciting Cyrus.  We should probably take a look at protecting the intellectual property of your firm.”

“What exactly is ‘intellectual property’”?

Angie said, “Intellectual property (or ‘IP’) is a term used to describe four main assets of your firm: servicemarks, trademarks, patents, and copyrights.  Your IP can be of significant value to your firm, from both a marketing perspective and a financial perspective.  Also, because your IP can be bought, sold, traded, lost, and stolen, it is important to protect it.”

Cyrus took a sip of his coffee.  “Now I’ve heard of copyrights, patents, and trademarks, but what is a servicemark?”

“A servicemark is a company’s slogan or statement, such as Ford Motor Company’s ‘Quality is Job 1’.  It is similar to a trademark, which is a brand name, such as ‘Band Aid’”.

“You know,” Cyrus started, “we have been discussing some marketing slogans and logos for our company, especially as we are now expanding the company.  I assume we should get servicemarks and trademarks for these?”

“Absolutely,” Angie said.  “Let’s get those protected.  We want you—and not your competitors—to be able to capitalize off of your new marketing strategy and your goodwill.”

“And what about patents?”  Cyrus asked.  “We have developed some software and design algorithms that are quite valuable.  We have considered licensing those out to other civil engineering firms.”

“Let’s get those patented, Cyrus,” Angie said.  “We don’t want anyone stealing your ideas.”

“So, how I do I get a servicemark, trademark, and patent?”  Asked Cyrus, sipping his coffee again.

“Obtaining a federal servicemark, trademark, and patent will require us to go through an application process with the United States Patent and Trademark Office.  It will take some time and money.”

“I’m not surprised.  And what about copyrights?  I assume I should copyright my design reports, feasibility studies, and design drawings?”

“Yes.  Actually, the law provides automatic copyright protection for the original author of the work, but it can’t hurt to put the copyright symbol on those documents.  However, there are a few other considerations when dealing with copyrights for design drawings and work done by your employees.  They will be handled a bit differently under the law.  Let’s discuss this another time.”

“OK, Angie.”

“And one other thing.  We will need to look at your contracts to make sure we understand how your IP is handled in your agreements with owners and your subconsultants.”

“Fair enough.  We’ll talk about this during our next coffee break.”

This article is intended for general information only.  It should not be construed as legal advice with respect to any particular situation.  Readers should not act upon information contained in this article without first consulting their lawyer.

Roger S. Owers is a commercial real estate professional with Keyser LLC and is a lawyer with the Kaibab Law Offices of Roger S. Owers LLC.  Roger holds a Ph.D. in civil engineering, is a registered professional civil engineer, holds a real estate license, and is a licensed attorney.  He can be reached via e-mail at rowers@kaibabllc.com or www.kaibabllc.com.  He can also be found on LinkedIn at http://www.linkedin.com/in/rogerowers/.

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