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A question that I have also posed to lawyers, but never heard a clear answer: What does "invention" here mean? Is it limited to things that meet patentability

• dctoedt 12y ago
  > What does "invention" here mean? Is it limited to things that meet patentability criteria? I can't think of a case citation offhand, but my guess is that most (U.S.) judges would apply essentially the same principles to unpatentable "inventions" -- defined in 35 USC 101 as any "process, machine, manufacture, or composition of matter, ... [or] improvement thereof" [1] --- that qualified as confidential information of the employer. (If an invention is unpatentable AND is public information, then normally it's fair game for anyone to use, at least in the U.S. --- EXCEPT that that (A) an employee has an implied duty not to compete with his employer while still employed there, and (B) the employee might be bound by a contractual covenant not to compete for a limited time after leaving employment, which might or might not be enforceable depending on the jurisdiction [California being a well-known case in point].) ---------- > is there a chart for other types of intellectual property like copyrights (most applicable to software, and hardware too) I can't think of how copyright might apply to hardware, at least not to functional aspects of it. I suppose that aesthetic-design features of hardware might qualify as a "sculpture," which under 17 USC 102 (a)(5) would be eligible for copyright protection [2] But under 17 USC 102(b), that protection wouldn't cover functional aspects: "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." [2] As to software, that depends on (A) whether the software counts as a "work made for hire," which in this context means that it was created by an employee within the scope of employment [3], and (B) if not, whether the employee signed an agreement giving the employer rights to the copyrighted work. [4] ---------- > ... trademarks, etc. In the U.S., trademark rights arise from use of the mark in providing goods or services. (You can file an application to register a mark in the USPTO based on a bona fide intent to use the mark "in commerce that may lawfully be regulated by Congress," but the registration won't be issued unless and until the applicant shows that he / she /it has actually begun using the mark in Congress.) That's not to say that an employer might not try to claim that a confidential idea for a particularly-good trademark belonged to the employer, e.g., because the employee who came up with the idea was working on a company project when she did so. [1] http://www.law.cornell.edu/uscode/text/35/101 http://www.law.cornell.edu/uscode/text/35/101 [2] http://www.law.cornell.edu/uscode/text/17/102 http://www.law.cornell.edu/uscode/text/17/102 [3] http://www.copyright.gov/circs/circ09.pdf http://www.copyright.gov/circs/circ09.pdf (scroll down to "Agency Law") [4] http://www.law.cornell.edu/uscode/text/17/201 http://www.law.cornell.edu/uscode/text/17/201
  • alok-g 12y ago
    Thanks for a detailed reply. I read it a few times, and still have a few follow-up comments/questions: A. [1] Defines inventions as '(a) The term "invention" means invention or discovery.', which means the normal English meaning applies. That clearly means for example that exceptions like California section 2870 [2] do not help employees for software side-projects (since software is subject to copyrights, not necessarily inventions unless some invention is involved in the developed software). This clearly means an employment agreement could make all software belong to the employer if developed while being employed, even if the clauses applicable to inventions in [2] like "developed in employee's own time" are satisfied. And that means that people with software side-projects while being employed elsewhere most likely in a software company may be having an issue since majority sign employment contracts without reading (and are surprised when I tell them about these things). I have commonly seen employment contracts stating "any invention, whether patentable or not, ... works of authorship, whether copyrightable or not, ... developed during the course of the employment ... are a property of the employer ... with the exceptions noted California code 2870 ..." (which as I now know, does not cover software by itself). Please let me know if my understanding above is not correct. :-) B. Hardware copyrights: Hardware, as you would know, has extensive design documents and blueprints that include circuit schematics, layouts, digital logic specified in hardware description languages (just like software), all of which involve creative expression. These then result in the actual hardware embodying these design blueprints that I guess would be a "tangible medium of expression" [3]. Integrated circuit layouts for example carry a nearly verbatim copy of the layout of the design, just like a printout of the same layout would. I now understand that "functional" aspects would not be copyrightable. I am surprised to see "system" listed in [3] though, which I thought could be considered a tangible medium of expression. From a scientific standpoint, a CD-ROM for example can readily be described as a "system". So would be a piece of paper. As I am reading [3], a CD-ROM carrying a software would not be subject to copyrights if the CD-ROM could be considered to be a system. I am wondering now if there is a formal definition of that is a "system". :-) I understand the remarks you made about trademarks fully. Thanks for noting the specific details there too! C. What does "compete" with the employer mean? :-) If someone is developing an iPad app (software) while working for a company that makes enterprise software and does not have any current or anticipated line of business making mobile apps, would that be competing? I am guessing 'yes'. Now what happens if a company is making CR-ROMs for a software they sell. Would someone making music CDs and selling those be in competition? I have been guessing that if the employee's business is within the same trademark code of the employer's current or anticipated line of business, that could be considered competing. If and only if so, all computer/electronics related stuff seems to fall in the same trademark code [4], which means clear trouble for all the people having technology side-projects. [1] http://www.law.cornell.edu/uscode/text/35/100 http://www.law.cornell.edu/uscode/text/35/100 [2] http://law.onecle.com/california/labor/2870.html http://law.onecle.com/california/labor/2870.html [3] http://www.law.cornell.edu/uscode/text/17/102 http://www.law.cornell.edu/uscode/text/17/102 [4] http://www.tmweb.com/trademark_classes.asp#9 http://www.tmweb.com/trademark_classes.asp#9