1. Legal Issues In Design

2. Learning Outcomes 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.

3. Contracts
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

4. Intellectual Property
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.

5. What is Intellectual Property?
According to the World Intellectual Property Organization (
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

6. IP Categories
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

7. Patents Patent – legal protection for a design or invention.
The Patent Quiz (True or False)
If you have a patent on a design and somebody else uses it, the government will find them and penalize them.
The first person to file for a patent at the patent office receives the patent.
If you have a patent on a technology, you have unlimited right to use it.
Filing for a patent is free.
You must reduce the idea to practice in order to receive a patent.
If you unwittingly infringe upon someone else’s patent, you are not liable.
Patent: Other’s cannot use design/idea with out permission (compensation) of the owner.
Copyright: Protects published works: books, articles, music, software.
Trademark: Protect registered symbols/design.

8. Types of 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.
A utility patent is for anyone who discovers new and useful process, machine, article of manufacture, composition of matter, or useful improvements thereof.
Design focuses aesthetics.

9. Utility Patent To get a utility patent, the idea must be:
Novel: new and nothing like it existed
Non-obvious: another person would not be expected to develop the same idea based upon the existing technology
Useful: perform a useful function and be able to be reduced to practice
Who determines this?
Novel = New – nothing like it exists.
Non-obvious = no expectation that another person would be able to develop it based upon current technology.
Useful = must perform something useful and be able to reduce it to practice (current case – the guy who invented e-business).
Transporter example.

10. Filing Process Thorough 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

11. 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

12. 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

13. Warning
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

14. References
Pressman, D Patent it yourself, 15th ed. Berkeley, CA: Nolo Press.
Nolo PPA Nolo’s guide to provisional patent application.
guide.pdf
Ma, M.Y Fundamentals of patenting and licensing for scientists and engineers. Hackensack, NJ: World Scientific Publishing Co.

15. Trade Secrets
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?

16. Copyrights
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 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)

17. Trademarks Trademark rights arise from
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

18. 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

19. Legal Liability
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.

20. Negligence
An act is defined a legally negligent if the following 4 hold true.
The manufacturer had a duty to follow reasonable standards and rules.
There was a breach of duty (i.e. failed to include safety devices).
The plaintiff was harmed.
The breach caused the harm.

21. Strict Liability
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.
The product was dangerous and/or defective.
The defect existed when it left your control.
Defect caused harm.
The harm is assignable to the defect.