Intellectual property and confidentiality

Engineers create things of value that are not physical: designs, drawings, calculations, software, test data, processes and know-how. Intellectual property law decides who owns these creations, what others may do with them, and for how long. Confidentiality law protects valuable information that is never published at all. Engineers need a working knowledge of both, because they constantly create intellectual property for employers and clients, use other people's, and sign agreements that allocate it.

This lesson covers the four main types of intellectual property, patents, copyright, trademarks and industrial designs, then trade secrets and confidential information, and finally the contract terms that decide who owns and may reuse engineering work. As before, nothing here is legal advice; intellectual property is a specialized field, and patent work in particular is done by registered patent agents and attorneys.

Patents

A patent gives its owner the exclusive right to make, use, sell and import an invention, generally for 20 years from the filing date of the application, in exchange for disclosing the invention fully to the public. US patents are granted under Title 35 of the US Code by the US Patent and Trademark Office (USPTO). An invention must be patent-eligible subject matter under section 101 (a process, machine, manufacture or composition of matter), novel under section 102, non-obvious under section 103 to a person having ordinary skill in the art, and useful. Under the Supreme Court's decision in Alice Corp. v. CLS Bank (2014), claims directed to abstract ideas, such as mathematical algorithms or methods of organizing human activity, are ineligible unless they add an inventive concept, which makes many software patents vulnerable.

Since the America Invents Act took effect on March 16, 2013, the United States has been a first-inventor-to-file country: between independent inventors, the first to file generally wins. Novelty is judged against prior art from anywhere in the world, with an exception for the inventor's own disclosures made one year or less before the effective filing date. Inventors can file a provisional application, which is cheaper and less formal, to establish a filing date; a full non-provisional application must follow within 12 months. The one-year grace period is far from universal. Many countries, including those under the European Patent Convention, require absolute novelty, so a public disclosure before filing destroys the right to a patent there.

Patents are territorial: a Canadian patent gives no rights in the United States and vice versa. International agreements make multi-country filing manageable. Under the Paris Convention, an applicant who files in one member country has 12 months to file in others while keeping the first filing date as its priority date. Under the Patent Cooperation Treaty (PCT), a single international application preserves the right to enter national phase in most countries, usually 30 months from the priority date.

Suppose Daniel Ruiz develops a bolted connection for the Westbrook bridge's stringers that is faster to erect than any he can find in the literature, and presents it at a conference before anyone thinks about patents. The program works out the deadlines that follow.

# Filing deadlines after Daniel shows his connection design at a conference.
from datetime import date, timedelta

disclosure = date(2027, 5, 12)   # public presentation of the invention
provisional = date(2027, 9, 1)   # first application filed

def add_months(d, months):
    y, m = divmod(d.month - 1 + months, 12)
    return date(d.year + y, m + 1, min(d.day, 28))

grace_end = add_months(disclosure, 12)
print(f"Public disclosure:            {disclosure}")
print(f"Grace period ends (CA, US):   {grace_end}  (applicant's own disclosure only)")
print(f"Absolute novelty countries:   lost on {disclosure} (for example Europe)")
print(f"First application filed:      {provisional}")
print(f"Priority deadline (12 months): {add_months(provisional, 12)}  (convert or file abroad)")
print(f"PCT national phase (30 mo):   {add_months(provisional, 30)}")
print(f"Patent term ends (20 years):  {add_months(add_months(provisional, 12), 240)}  if filed at priority deadline")

Public disclosure:            2027-05-12
Grace period ends (CA, US):   2028-05-12  (applicant's own disclosure only)
Absolute novelty countries:   lost on 2027-05-12 (for example Europe)
First application filed:      2027-09-01
Priority deadline (12 months): 2028-09-01  (convert or file abroad)
PCT national phase (30 mo):   2030-03-01
Patent term ends (20 years):  2048-09-01  if filed at priority deadline

The output shows why engineers should talk to a patent professional before presenting, publishing or demonstrating anything that might be an invention. Daniel's conference talk has already cost the firm patent rights in absolute-novelty countries; it leaves a year to file at home. Who owns the invention is a separate question: it depends on Daniel's employment agreement and, failing a clear term, on the law of the jurisdiction. Most engineering employers require employees to assign inventions made in the course of employment. Northbridge's agreement with the client may also give the client rights in inventions made on its project.

Using someone else's patent is a separate risk. A design that falls within the claims of an unexpired patent infringes it, even if the designer had never heard of the patent. Engineers specifying proprietary systems usually rely on the supplier's warranty and indemnity against infringement claims; engineers developing new products or processes should have a freedom-to-operate search done before committing to manufacture.

Copyright

Copyright protects original expression fixed in a tangible medium: the form in which ideas are expressed, not the ideas themselves. Under the Copyright Act of 1976, engineering drawings, specifications, reports, photographs and software are protected, and since the Architectural Works Copyright Protection Act of 1990, so is the overall design of a building. Copyright arises automatically when the work is created, but registration with the Copyright Office is required before suing for infringement of a US work and is needed to claim statutory damages and attorney's fees for infringements that begin before registration. The general term is the life of the author plus 70 years; for works made for hire it is 95 years from publication or 120 years from creation, whichever ends first.

Ownership is the question engineers most often get wrong. The author is the first owner, with an important exception: a work made for hire, which includes a work prepared by an employee within the scope of employment, belongs to the employer. Work by independent contractors, including consulting firms working for a client, is a work made for hire only if it falls into certain statutory categories and the parties agree so in writing, which rarely applies to engineering drawings. So, absent a contract term, Northbridge (not the city that paid for the design) owns the copyright in the bridge drawings, and the city has an implied license to use them for the purpose they were created for: building, operating and maintaining that bridge. Moral rights in the United States are limited to certain works of visual art and do not usually cover engineering documents.

Copyright does not protect the engineering principles, standard details or functional ideas shown in a drawing; anyone may design a similar bridge using the same principles. It protects against copying the drawings themselves or a substantial part of their expression. Engineers must still be careful when they reuse material from previous employers, from manufacturers' literature or from the internet: copying another firm's drawings or specification text without permission is infringement, and passing them off as your own work is also professional misconduct.

Trademarks and industrial designs

Trademarks protect words, logos and other signs that distinguish one business's goods or services from others'. Engineering firms register their names and logos as trademarks, and engineers encounter trademarks when they specify products by brand name. The usual specification practice is to name a product and add or approved equal, which avoids favoring one manufacturer unfairly and keeps public procurement open, as lesson 5 discussed.

Design patents protect the ornamental design of a manufactured article, such as the appearance of a light fixture or a railing. They last 15 years from grant for applications filed since May 2015. Purely functional features are not protected; they belong to utility patents if anywhere. Trade dress, a branch of trademark law, can also protect the distinctive non-functional appearance of a product or its packaging.

Trade secrets and confidential information

Much valuable engineering knowledge is never patented: a firm's design spreadsheets, cost databases, test results, client lists and hard-won know-how. This is protected as trade secrets. Almost every state has adopted the Uniform Trade Secrets Act, and the federal Defend Trade Secrets Act of 2016 allows owners to sue in federal court. A trade secret is information that derives economic value from not being generally known and that its owner takes reasonable measures to keep secret. Misappropriation, meaning acquisition by improper means or use or disclosure in breach of a duty of confidence, can lead to injunctions, damages and, under the federal act, seizure orders in extreme cases. Theft of trade secrets can also be a federal crime under the Economic Espionage Act.

Trade secret protection lasts as long as the information stays secret, which can be forever, but it vanishes once the information becomes public, and it gives no protection against someone who independently develops or reverse-engineers the same thing. The choice between patenting and keeping something secret is a business decision: patent if competitors could learn the invention from the product, keep it secret if they could not.

Engineers protect confidential information in practical ways: non-disclosure agreements before sharing information with potential partners or suppliers, access controls on project files, confidentiality clauses in employment and services agreements, and marking documents as confidential. When engineers change jobs, they may take their general skill and knowledge with them, but not their former employer's confidential documents or specific confidential information. Downloading project files on the way out the door is one of the most common sources of litigation between engineering firms.

Confidentiality in the codes of ethics

The NSPE Code of Ethics and most state rules require engineers not to reveal facts, data or information without the prior consent of the client or employer, except as authorized or required by law or the code. The duty gives way to the engineer's obligation to hold paramount the safety, health and welfare of the public: the NSPE code expressly directs engineers whose judgment is overruled under circumstances that endanger life or property to notify their employer or client and such other authority as may be appropriate. NSPE Board of Ethical Review opinions repeatedly say that confidentiality does not justify silence about a danger to the public.

Engineers also owe confidentiality to former clients. An engineer who worked for one client on a dispute may not later use that client's confidential information against it for a new client, and conflicts of this kind may prevent the engineer or firm from taking the new work at all.

Who owns the project documents

Standard engineering agreements deal with ownership expressly. EJCDC E-500 and AIA B101 treat the drawings and specifications as instruments of service: the engineer or architect retains ownership and copyright and grants the owner a license to use them for the project. Clients, especially public agencies and developers, often propose instead that they own everything. The issues to negotiate are the same either way: what the client may use the documents for, whether it may modify them, whether it may give them to other consultants, and who carries the risk of reuse.

Reuse is where engineers get hurt. A design prepared for one site, code edition and set of loads may be dangerous elsewhere. Firms should insist that reuse or modification by others is at the client's risk, that the client indemnifies the engineer against claims arising from it, and that anyone who modifies the documents removes the original engineer's seal and takes responsibility for the changes. Digital files make this more urgent, because native CAD and model files are easy to alter; many firms issue sealed PDFs as the record documents and provide native files only under a separate electronic data agreement.