Civil and Structural Engineers: Know Your IP

Published in Civil and Structural Engineer

By Stephen L. Keefe, P.E., Esq.

Intellectual property (IP) impacts every industry, including civil and structural engineering. For example, a Florida general contractor recently slapped a competitor with a patent suit alleging infringement of its concrete slip forming technologies. The case apparently settled in mid-2018 in the U.S. District Court for the Southern District of Florida, showing that the accused infringers may have taken the case seriously enough to nix the lawsuit in its early stages.

As this patent blowup shows, civil engineers and contractors have no more immunity against IP enforcement than any other industry. It also shows how civil engineering enterprises can effectively turn their IP on misbehaving rivals. Further, IP claims pose yet another risk for industry players to consider and allocate, typically via IP indemnification clauses in their contracts.   

Some basic IP rules follow below to help civil and structural engineering professionals understand how IP affects their industry. IP comes in four primary categories — patent, copyright, trademark, and trade secret. Each IP type has unique costs, benefits, and disadvantages.

Patent

Patents usually cost more money and take more effort to obtain than the other IP categories. Civil and structural engineers, unlike practitioners of more abstract arts such as software and financial methods, have little trouble with patent eligibility for their inventions at the patent office. The crux of patent protection is the right to exclude others from using a patented invention. It typically takes at least two years after filing a patent application to obtain an issued patent — with patent costs totaling several thousand dollars in government fees and attorney costs to cut through the bureaucratic and legal obstacles — to create a robust patent that would-be infringers would hesitate to challenge. Receiving a patent is no sure thing, with the U.S. Patent and Trademark Office (USPTO) ultimately refusing to allow many applications it receives.

A patent owner has a right to bring a lawsuit, normally in federal court, to stop another party from making, using, selling, offering to sell, or importing his or her patented technology. Patent claims signed off on by the USPTO define intellectual property analogously to how a deed defines physical property such as land. In other words, a patent provides a property right. That right typically stays in force for 20 years from application filing.

Patent litigation can sometimes involve enormous damages and consequences for infringers. The high-stakes nature of patent lawsuits tends to make bringing and defending them quite expensive and burdensome, with extensive discovery and depositions of high-ranking corporate officers. Just the threat of litigation by a patent owner can create a strong deterrent to prevent competitors from copying the patentee’s proprietary technology.

The global patent system takes territorial form, with civil and structural engineering inventors having to file and obtain a separate patent in each nation in which the innovator seeks protection. Each national patent system comes with its own costs and nuances, with the U.S., Europe, and China forming the usual first tier of filing for civil engineering. Civil and structural engineers also file in relatively high numbers in Japan, Korea, Canada, and Australia.

Global filing, of course, changes based on business goals, with smaller nations taking priority over larger markets depending on the technology and associated business strategy. Because filing patents in multiple nations easily generates costs in the tens of thousands of U.S. dollars, patentees usually reserve such wide global filing for their best technologies. Each nation that issues a patent will then charge recurring annuities to maintain that patent.

Civil and structural engineering professionals should remember above all what probably amounts to the golden rule of patenting: Avoid publicly disclosing your invention until you file a patent application on that invention. Following this rule of thumb will go a long in way in keeping the inventor out of difficult situations as a patent owner.

Per Article I, Section 8, clause 8 of the U.S. Constitution, patent ownership vests in individual inventors. In the absence of a contract, multiple inventors jointly own their inventions. The freedom to contract then kicks in, with inventors having the option to enter into agreements to license, assign, sell, or otherwise use their patent as they would any piece of property.

Business associations in the U.S. such as corporations typically require their employees to assign all patents to the company as a condition of employment. As many small businesses learn the hard way, a future obligation to assign buried in an employment agreement typically does not equal a legal assignment, meaning that companies should have inventors execute an assignment with each and every patent application.    

Copyright

The U.S. Constitution created copyright law in the same clause as it made patents a part of American jurisprudence. Contrary to relatively expensive patents that require USPTO issuance, copyrights cost much less and come into existence as soon as an author fixes a creative work in tangible form. For example, once an author writes down or draws an original work of authorship, he or she creates a copyrighted work. Although successfully suing for copyright damages typically requires registration with the Copyright Office, the work at least theoretically becomes protected once the words or drawings hit the page.

Copyright law protects primarily expression, which amounts to this IP form’s chief limitation. As an example, imagine that a civil or structural engineer publishes a groundbreaking article on a new technique or a thoroughly researched solution to a longstanding problem in the field. Although patent law may protect the technological innovation itself, copyright law protects merely the way that article’s words express the solution or innovation. So, copyright basically just protects the wording of the article expressing the idea from unauthorized copying and reproduction by an infringer. Unlike patent law, copyright will generally not stop a copyist from using the underlying innovation itself.

Although the author’s copyright lawyer may zealously argue in favor of substantial similarity to the copyrighted work to underpin a finding of infringement in court, it typically does not take much rewording and revision by another party to alter expression enough to evade a copyright. This reality may explain why patents, which protect the technical breakthrough itself, cost significantly more money and trouble to obtain than copyrights. A copyright, though, will still stop the many egregious copy-and-paste infringers who infest the civil engineering industry in the internet age.

While copyright protection of literary and graphic works tends to provide straightforward enough protection, copyright law does have some wrinkles for civil and structural engineers. Copyright law protects architectural works but throws some curve balls in which only certain types of structural plans and as-built structures gain legal protection.

Copyright law covers buildings inhabitable by humans such as houses, office towers, hotels, theaters, and other structures meant for human occupation. Copyright leaves other civil engineering works out in the cold, typically denying protection for structures such as bridges and dams. Copyright also encompasses computer code, so copyright may extend to CAD file code for original works of authorship as well.   

Copyright protection typically endures for 70 years from the death of the author. For more straightforward copyright cases, civil and structural engineering authors may use a simple, internet-based website maintained by the U.S. Copyright Office to register their works for about $50. The author may later use the resulting registration, which the Copyright Office typically issues within a few months for original works of authorship, to sue for copyright infringement. Suing for copyright infringement, usually in federal district court, involves significant nuance and procedural hurdles probably best left to a copyright attorney retained by the author to handle the suit.

Trademark

While copyright centers on expression and patent provides a right to exclude, trademark law focuses on the source of goods and services. Trademark guards against actors who would create market confusion regarding a wide variety of marks and brands, including logos, names, sounds, colors, and trade dress. Owners may use their trademarks as a shield against parties that attempt to unfairly use another’s market identity or good will for gain.

For example, if a new retailer tried to use a logo resembling a bullseye, a certain Minneapolis-based retail giant might bring suit to enforce its trademark. The trademark owner may use the law to keep consumers from mistakenly shopping at that new store based on the false assumption that the competitor falls under the established brand.      

Trademark laws vary by state in the U.S. more than copyright law does, and vastly more than patent law, which federal courts almost exclusively shape. Like patents, trademarks involve many nuances that could and do fill books. The U.S. Patent and Trademark Office issues trademarks based on review by government examiners, with acquisition costs typically amounting to less than patents.

Unlike patents, trademark rights may come into legal existence without an issued mark and for an unlimited term. Related rights such as false advertising claims and a right of publicity also exist in the trademark arena. Like patent and copyright law, trademark law varies on a nation-by-nation basis, though international treaties such as the Madrid System exist to streamline international filing.

Trade Secret

Trade secret forms the last primary class of intellectual property, with secrecy underpinning this type of protection. Although American trade secret law varies based on state common law, Congress recently provided a key cause of action in 2016 at the federal level with the Defend Trade Secrets Act. Trade secret basically stands as a polar opposite to patent law. While patent law gives owners a 20-year term to exclude others from using their inventions in exchange for describing their innovation in a patent, trade secret law gives its holders a cause of action against theft of trade secrets without time limit, provided the owners follow requirements under state law to maintain the right.

Coca-Cola’s formula probably stands as the most famous example of this IP type in the U.S. But trade secret comes with an Achilles heel: Once stolen and exposed to the world, the trade secret is destroyed. The law typically leaves the owner with just a trade secret theft claim against the perpetrator, and the owner can no longer stop the world from using the eviscerated secret.     

Conclusion

Armed with at least the very basics of IP, civil and structural engineering professionals can recognize the various benefits, drawbacks, costs, and risks associated with these important legal rights in their industry. Civil engineering innovators can also plan how to optimally employ the various pillars of IP in their respective enterprises, whether as a shield, or if necessary, as a sword.

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

Cutting through the Complexity

Published in Civil and Structural Engineer

By Stephen L. Keefe, P.E., Esq.

Understand basic patent filing rules for civil and structural engineering inventors.

U.S. patent law provides a successful patent applicant with a legal right to exclude others from making, using, selling, offering to sell, or importing his or her claimed invention. Global patent law comprises a patchwork of territorial rights, with almost all nations offering similar exclusive patent rights.

When it comes to pushing a patent application to grant, patent offices worldwide tend to reward inventors who can present their invention’s novelty in terms of tangible structure. Applicants who claim their inventions using well-defined features clearly different from the prior art can look forward to an increased probability for success during patent prosecution. Because civil and structural engineering technologies rest on such clear structure, these disciplines arm their inventors with a natural advantage in obtaining patent protection. In contrast, more abstract fields struggle with patent law’s aversion to vague, intangible features.

First to file

Most of the world has operated on a first-to-file regime for decades. The U.S. came a little late to the first-to-file game with the America Invents Act in 2011, which replaced the old American first-to-invent system. Basically, the first inventor to file a patent application now wins any controversy over inventorship of a given invention. More important, the first-to-file framework offers a less reliable grace period against prior art that predates patent filing, which makes it even more critical for patent applicants to file their applications as soon as possible.

If a civil or structural engineer conceives of a useful invention, filing an application as soon as possible — before any public disclosure — comprises the clear best practice. However, commercial realities often make this best practice easier said than done. Startups and inventors working in accelerators may need to disclose their inventions quickly to potential investors to stay afloat. Sales forces, always notorious sources of public disclosure, will disclose as much novelty as they can as quickly as possible to make sales. Such business pressures can prematurely force public disclosures of inventions to third parties.

Although public disclosure of an invention prior to filing does not always kill patentability, it will in many situations. Public disclosure before filing can create lethal prior art, though patent law does provide some protection. The 2011 America Invents Act provides some cover to inventors relating to public disclosure that they make themselves for up to 12 months following that disclosure. But this limited grace period may not provide ironclad protection, and inventors should think twice before disclosing subject matter prior to filing.

Similarly, nondisclosure agreements may provide some protection against public disclosure, but only to the extent that contractual obligations may dissuade another party from disclosing information. Inventors relying on nondisclosure agreements must realize that if a third party discloses an invention prior to patent filing in violation of the agreement, the inventor may have only a contract claim against the party that violated the agreement. However, the contract claim stemming from violation of the nondisclosure agreement does not undo the public disclosure itself. The public disclosure by the third party prior to patent filing will probably create patent-destroying prior art, notwithstanding the contractual breach.

The bottom line: Inventors who file patent applications on subject matter prior to disclosing that subject matter publicly put themselves in a favorable position in terms of patent law.

International filings

Filing a patent application as quickly as possible to take advantage of global first-to-file regimes also starts the global filing clock. As a general rule, patent applicants have 12 months from first filing of their invention to initiate global filing. Taking U.S. filers as an example, U.S.-based applicants typically file first at the U.S. Patent and Trademark Office. Either an informal provisional application or a formal nonprovisional patent application starts the 12-month deadline for international filing.

If an inventor wants to pursue patent protection outside of the U.S., he or she should either file an international application or file all desired foreign applications within 12 months. Two key international agreements dictate this deadline — the 19th century Paris Convention and the U.N.-administered Patent Cooperation Treaty (PCT). For almost 150 years, the Paris Convention has given applicants a year to file foreign patent applications claiming priority to their first-filed applications. The PCT opens up further options for applicants, providing additional time if would-be patentees file an international application under the treaty within a year of first filing.

Global patent filing provides wider protection but costs significantly more money to prosecute. Applicants must eventually file an additional patent application claiming priority to their first filing for each nation in which they strive for patent protection. In view of high costs, many applicants settle for either one or a handful of nations. For example, seeking wider patent coverage in 10 nations easily translates into a six-figure patent bill for an innovator. Japan typically costs the most, while Europe offers some cost-savings by offering a single regional patent application covering most of the continent.

The general rule of thumb many applicants follow is to use the Paris Convention to cover three nations or less, while resorting to the PCT for wider global filing efforts. Applicants make Paris Treaty filings on a nation-by-nation basis; PCT filing involves more nuance.      

Patent Cooperation Treaty

Using the PCT costs about US $5,000 and preserves at least an option to file almost everywhere in the world for as many as 30 months from first filing. Whereas the Paris Convention cuts off at one year from a first filing on a given invention, filing a PCT application within one year of first filing gives an applicant a full two and a half years from the first, priority filing to file follow-on applications around the world. Many applicants, particularly corporate filers, often need the extra time to make up their minds on how to spend their intellectual property budget. Corporate research and development, marketing, sales, product managers, and financial controllers all typically hold a stake in intellectual property, so the decision-making cycle can take some time.

Going through a typical filing pattern may help to illustrate why many applicants choose PCT and how they use it. For example, an exemplary applicant follows the best practice of filing an application as soon as possible, prior to any public disclosure. The applicant, if a U.S.-based enterprise, files first in the U.S. Patent & Trademark Office. The applicant values the invention highly and wants to pursue foreign filing, but the stakeholders have not reached consensus on global patent filing strategy within a year of the first application filing. The applicant files a PCT application within 12 months of the first American filing, buying at least another 18 months to pick foreign filing nations.

Many nuances exist within the PCT. Some nations give 30 months from first filing, while others give 31. China has a grace period. Europe offers a regional phase followed by individual national validations. Other regional filing options exist as well. Although all major economies have signed onto the PCT, some smaller nations do not participate in the PCT and only participate in the Paris Convention.

As global patent law remains territorial, nation-specific wrinkles create further complexities for international filing. Some nations require translations, while others do not. Most nations follow European-style as opposed to American-style patent prosecution, notably China.

When pursuing foreign filing, most applicants cover the U.S., the major European nations, and China. Some other common filing nations include Japan, Korea, Canada, Australia, and Brazil, and Russia (in view of recent events, Russia has become untethered from the global patent system and is no longer a reliable filing choice). India’s sclerotic bureaucracy and uneven patent system still discourage many applicants from choosing that nation.

Bottom line takeaways

Although U.S. and international patent acquisition involves a firehose of detail and complexity, following some of the basic rules discussed above can help inventors and innovative enterprises protect their innovation. File as quickly as possible, before making public disclosures, if possible. If pursuing foreign filing, remember the 12-month deadline from first filing. Consider using the Paris Convention for a few direct foreign filings, while keeping the PCT as an option to gain additional time for decision-making.

Finally, patent law naturally favors tangible fields such as civil and structural engineering. Civil and structural engineers should not hesitate in taking their innovations to the patent office.

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

Global Patented Innovation in Structural Engineering

Published in STRUCTURE

By Stephen L. Keefe, P.E., Esq.

Analyzing the economic strength, patent systems, and structural engineering traditions of nations offers one way to evaluate major players in patented structural engineering innovation. In general, the leading nations for patented structural engineering innovation possess relatively strong economies, rich civil engineering traditions, and strong patent systems. The United States, Germany, Japan, South Korea, the United Kingdom, France, China, Italy, Canada, and Australia rank atop the list of patenting nations for civil and structural engineering innovation.

Global Patent Law

The global patent system strives to promote innovation worldwide by bridging between the national patent laws of countries around the world. The World Intellectual Property Organization (WIPO), operating under the auspices of the United Nations, administers the Patent Cooperation Treaty. Using the Patent Cooperation Treaty, WIPO shepherds the patent Applicant, including the structural engineer, through the competing patent laws of almost 200 nations.

Although WIPO and other transnational patent organizations (e.g., the European Patent Office) help to operate the international patent system, the world remains far removed from achieving the globalized dream of a world patent (or nightmare of a world patent, depending on your political stance on globalization). Currently, although WIPO and other international organizations may aid patent applicants in patent acquisition, inventors must ultimately obtain and enforce patents on a nation-by-nation basis. Nations award patents, and their court systems decide patent validity and infringement. For example, if an American structural engineer wants to enforce a patent right in the Ukraine, that U.S. citizen must obtain a Ukrainian patent from the Ukrainian Institute of Industrial Property, and enforce that patent against an accused infringer in Ukraine through the Ukrainian courts. This type of legal action is neither cheap nor certain in outcome. However, depending on the innovation, it might be worth the trouble.

Because the global patent system ultimately distills down to national patent acquisition and enforcement, analyzing nations offers one way to identify innovative leaders and potential players in structural engineering patenting. The categories below reflect one attempt to group the major national players in structural engineering innovation.

One last preliminary note for structural engineers: Civil engineers, in general, patent much less than mechanical engineers, and vastly less than electrical engineers, according to WIPO statistics for total patent applications filed by field of technology. This fact holds true both within the United States and globally. Although the patent system strives to promote innovation by affording legal protection that can often make inventing profitable, civil engineers simply do not patent much, relative to other engineering fields.

Figure 1: Top patenting nations for civil and structural engineering innovations.

1st Tier

United States, Germany, and Japan

Large national economies with strong civil engineering traditions and good patent systems form the patenting top tier (Figures 1 and 2). These players include world powers that have topped civil and structural engineering innovation for decades. Also, not surprisingly, many patent commentators rank the American, European, and Japanese patent systems as the chief bodies of patent law in the world. The United States, Japan, and Germany also lead the world in international filings under the Patent Cooperation Treaty through WIPO.

Despite great advances in Asia, the United States remains the leading democratic economy, and with that, leads the world in civil and structural engineering innovation. The sheer size of the U.S. construction industry, the large number of American civil engineers (over 300,000, including environmental engineers, according to the U.S. Department of Labor), and numerous civil engineering university programs and professional organizations supply America with much potential to innovate. A two-century tradition that produced arguably the largest national infrastructure in the world, with railways and highways built by some of the most famous structural engineers in history, underpins a strong American civil engineering tradition. The vast size of the American market, supported by a large and relatively wealthy urban population, certainly also contributes to American leadership in advancing structural engineering.

Figure 2: Economic and patenting statistics for top civil and structural engineering innovators.

The strong American patent system bolsters innovation in civil engineering. The United States Patent and Trademark Office leads the world in patent filings. A total of over two million U.S. patents remain in force, a half-million more than next-largest nation, Japan, according to WIPO estimates for 2010. Although the United States does not always lead in the total number of individual civil engineering patent applications filed worldwide, which includes large numbers of redundant filings of the same application in numerous countries, American inventors lead in the total number of distinct original civil engineering patent families filed worldwide. Accordingly, the strong tradition of American civil engineering, American economic power, and the strong U.S. patent system transform the over 300,000 American civil engineers active in the U.S. into the leading national powerhouse for patenting innovation in the field.

Although they trail the United States in overall patenting due to their smaller populations and economies, Germany and Japan likely exceed the U.S. in patented civil engineering innovations, pound-for-pound. Per capita, German civil engineers probably out-innovate their American colleagues, while Japanese civil engineers probably out-file Americans at patent offices. Americans, though, simply outnumber the Germans and Japanese by a large enough margin to make up for these shortcomings.

With about only one-quarter of the U.S. population, Germany files over half of the number of distinct civil engineering patent families as the United States. When looking at the total number of civil and structural engineering patent applications filed worldwide, though, that percentage falls to below half of American filings. The world tends to view engineering as a German national strength. This probably explains Germany’s high number of civil engineering patent filings, relative to its population. Germany maintains a strong patent system, buttressed by the German Patent and Trademark Office, German courts well-versed in patent law, and a long patenting tradition rooted in Bismarck’s design of the German Empire and even before to legal rights granted by the medieval German princes. Though somewhat subsumed into the European Union’s patent institutions, the German patent system, particularly its court system, remains largely independent. So, Germany’s civil engineering strength, strong patent system, and strong economic market of 80-plus million people keep the Germans at the patenting forefront of civil and structural engineering.

Before its triple 2011 national tragedies of earthquake, tsunami, and nuclear disaster, Japan’s civil engineering patent resume read much like Germany’s. The 2011 Tohoku earthquake inflicted horrific loss of life and economic damage on the Japanese, and will certainly also strike a blow to the nation’s innovative contributions to civil engineering over the coming decade as it struggles to recover. Japan’s rich civil engineering tradition goes back to at least the Meiji period following the overthrow of the Shoguns, when progressive factions rallied around the Emperor to deliberately replicate advances in the West. The Japanese government brought in top western civil engineers in the late 19th century to give advice on laying the foundation for Japan’s enduring civil engineering legacy. Today, Japan’s large economy and strong patent system globally project its civil engineering innovation. If the 2011 tragedy temporarily knocks Japan out of the innovative 1st tier in the near future, then Japan’s large size, strong patenting tradition, and civil engineering legacy will likely ensure its subsequent return.

2nd through 4th Tiers

South Korea, United Kingdom, France, China, Italy, Canada, and Australia

The 2nd tier nations, including South Korea, the United Kingdom, and France, all have attributes of the 1st tier nations, but on a smaller scale. These nations each possess strong civil engineering traditions that have yielded advanced national infrastructures. Like the United States and Germany, the United Kingdom and France root their civil engineering history back through the Industrial Revolution and into Medieval and Roman engineering achievements, while South Korea has leveraged its own traditions to play a successful game of catch-up with the West similar to the Japanese. The United Kingdom and France have slightly larger economies and richer civil and structural engineering legacies than the South Koreans. The South Koreans, though, surpass their European counterparts by more aggressively and successfully patenting their innovations in terms of overall numbers. Ultimately, their smaller scale, rather than large qualitative differences, puts the South Koreans, British, and French into the 2nd tier of civil and structural engineering patenting.

As an entire civilization masquerading as a nation, China gets the whole 3rd tier. Though some historians argue that parity existed between Western, Indian, and Chinese civilizations around the 14th century AD (or CE if you prefer), the West accelerated beyond China and India, at least technologically, until it dominated the world by the 19th century. Western militarism and civil war (e.g., imperial competition culminating in the World Wars) arguably drained the West, while exporting its advances around the world. Although some interpret the rise of China as the arrival of the next leading nation, it could be part of a larger historical shift, returning China to its historical role as a great civilization. China has had a few slow centuries, but the Middle Kingdom is coming back. Though today’s economic and patenting numbers still relegate it to the 3rd tier, expect China to roar into the 1st tier of civil engineering patenting soon, along with the 1st tier of many national areas. As one facet of civil engineering advance, China’s infrastructure currently advances at a tremendous rate. China today might mirror the United States at the beginning of the 20th century: a great power stepping out of the wings of history, and ready to send its own Great White Fleet around the world to prove it.

Italy, Canada, and Australia form the 4th tier, a sort of mezzanine below South Korea, the United Kingdom, and France for patenting civil engineering innovations. The Italians, Canadians, and Australians pursue slightly fewer civil engineering patent families and generally have smaller economies than the 2nd tier nations, and much smaller economies than China and the 1st tier nations. Although these nations have strong civil engineering institutions and traditions, and good patent systems, they possess them on a smaller scale than the higher-tiered countries. Canada and Australia have relatively small national populations compared to the above nations. Economic sluggishness, particularly in southern Italy, puts a drag on the Italians. Therefore, Italian, Canadian, and Australian contributions to civil and structural engineering patenting rank behind the upper three tiers.

5th and 6th Tiers, and other Concentrations of Innovators

The 5th tier includes the qualitative civil engineering strongholds of the Netherlands, Sweden, Austria, and Switzerland. These smaller European nations have storied civil and structural engineering traditions, but lack the large populations and economies to make as much of an impact as the larger nations above. In view of their smaller size, though, the Dutch, Swedes, Austrians, and Swiss put up large numbers of civil and structural engineering patents, at least on a per capita basis.

Finland rounds out the big national contributors to civil engineering patented innovation, forming a 6th tier. Though arguably not having quite the strength in engineering traditions and patent systems as the higher-ranked nations, they still make noteworthy patented contributions to civil and structural engineering.

Numerous other smaller nations with solid patent systems and civil engineering establishments also make an impact on civil engineering patenting, albeit on an even smaller scale. The European Union (e.g., Denmark, Ireland, and Poland), Asia and the Pacific (e.g., Singapore, New Zealand, and Hong Kong), and South America (e.g., Chile and Peru) tend to have concentrations of these smaller innovators.

Nations Conspicuous by their Absence, and Potential Future Players

India, at about 1.2 billion people, and Brazil, at about 200 million people, have large economies and enormous potential to advance in civil and structural engineering patenting. Indian and Brazilian national policies, though, tend to run counter to establishing robust patent systems at this time, and these nations currently lack concrete evidence of solid patent protection in general. India and Brazil chronically make the United States Trade Representative’s watch list for piracy–not a good thing for any intellectual property ranking. The same general assessment probably applies to Mexico and the Philippines, each with large but troubled 100+ million person economies. The Muslim powers of Indonesia and Pakistan, having large economies near 250 million and 200 million people respectively, lack meaningful intellectual property traditions and also headline piracy watch lists (although global intellectual property advocates both define and persuasively argue to criminalize piracy, some persuasive arguments justifying certain acts of so-called “piracy” also exist, particularly regarding software and business methods patents).

The final category includes relatively large nations that show promise for advancing their economies, patent systems, and structural engineering foundations. Spain and the western-style nations of South Africa, Argentina, and Colombia currently lack significant civil engineering patenting, but have potential to shift toward greater patented innovation. Muslim Turkey and Egypt, both large and often progressive nations, may embrace the secular side of their traditions and move toward greater patenting, including structural engineering. Two other relatively large nations, Vietnam and Ukraine, have been dabbling in patent law and may potentially put up larger future numbers of structural engineering patents.

Trends

The top four tiers combined, including the United States, Germany, Japan, South Korea, the United Kingdom, France, China, Italy, Canada, and Australia, apparently file the vast majority of civil and structural engineering patent applications in the world. So, seven large western nations, along with Japan, South Korea and China, will likely continue to drive patented innovation in civil and structural engineering in the coming years. Considering its enormous economic markets, strong patent system, and vast civil engineering establishment, the United States still currently possesses the greatest potential for structural engineering innovation among the top ten players. American civil and structural engineers therefore have the opportunity to use the global patent system to protect and promote their innovations, and to lead the global civil engineering industry into the future.

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

Patent Eligibility: An Open Field for Civil Engineering

Published in Civil Engineering Magazine

By Stephen L. Keefe, P.E., Esq.

            The American patent system strives to promote progress by legally protecting innovation.  Accordingly, the patent system mirrors civil engineering in contributing to the progress of mankind.  The patent laws offer broad patent eligibility generally, and a particularly open field for the largely mechanical art of civil engineering.  Despite this broad eligibility, only a trickle of civil engineers take their innovations to the Patent Office, as compared with electrical and mechanical engineers.  More civil engineers should use the patent system to promote innovation in their field and, as the American founders hoped, to promote the progress of mankind.       

I.  Trying to Promote Progress

Against the backdrop of the lingering spirit of the Enlightenment and emerging thinking of Romanticism, the American founders included in the United States Constitution a clause tailored to promote progress: The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. This clause forms the core of American concepts of intellectual property, addressing in parallel copyright and patent protection in the United States. Counterintuitively, "science" encompasses copyright in the first part of the parallel structure of the clause: science is promoted by securing for limited times to authors the exclusive right to their writings.  Certain factions in the intellectual property community say that a certain entertainment powerhouse has successfully persuaded Congress and the Supreme Court to take an expansive view of “limited times,” which now amounts to the author’s life plus 70 years.   

The other half of the parallel structure, "useful arts," encompasses patent law: useful arts are promoted by securing for limited times (for patent law, 20 years from filing) to inventors the exclusive right to their discoveries. The Constitution may not be poetry, but it clearly lays the foundation for American intellectual property rights. Incidentally, trademark law, the other major pillar of intellectual property law, emerged out of commercial legal thought in the nineteenth century, not from the Constitution. Although copyright and trademark remain of course relevant to civil engineering enterprises, this article focuses instead on protecting innovations through patent law, and specifically, considering the eligibility of civil engineering innovations for patent protection.

The ideal of mankind's steady progress upward, which underpins patent law, has not enjoyed universal acceptance since a newly independent United States ratified its Constitution.  Nineteenth century thought certainly challenged man as rational and progressive.  Darwinian thinkers sought to use natural selection to justify imperialism, while socialism and capitalism struggled with the brutal realities of the industrial revolution.  Certainly, nationalistic designs that culminated in the horror of the mechanized battlefields of the two World Wars and the deaths of tens of millions of conscripted citizen-soldiers derailed any hope of man's majestic political and technological ascent to a golden age.      

Owning a patented process for efficiently overcoming a problem may give the civil engineering team added leverage in its pitch to the client to distinguish itself from its competitors, because no one except for the patent holder and its licensees may practice that process during the term of the patent.

Though the so-called “irrational” philosophies that followed them might provide truer reflections of man’s nature, the American founders believed in continued progress, and they conceived of a patent system with roots embedded in that optimistic ideal.  Engineering, particularly civil engineering, arguably has similar roots in a goal to better mankind.  Despite the irrational exploration that has populated thought between the ratification of the Constitution and today, the patent system remains intact to attempt to fulfill its promise to promote the progress of useful arts, assuming that humanity itself rises to the task.   

Developing within this philosophical turmoil, American patent law has made a pendulum swing between favor and disfavor over the two-plus centuries of its existence.  Patent examination began with a sort of heroic age following the first Patent Act in 1790, with the Secretary of State, Secretary of War, and the Attorney General personally examining patent applications.  Congress then flip-flopped between a registration system and an examination system as America pushed west toward war with Mexico.  A strong patent system coincided with the tremendously advancing American economy as it moved out of the Civil War, through the turn of the century, and into the unbridled consumerism of the roaring twenties.  During this period, Bell and Edison led the patent booms of the late nineteenth century, followed by the heavily-patented automotive and aviation breakthroughs of the early twentieth century.       

Patents then lost favor for decades starting in the Depression years.  America embraced antitrust and courts regularly struck down patents, which are legal monopolies, along with illegal monopolies and commercial conspiracies.  The pendulum turned back to favor the patent system with the increasingly globalizing markets of the 1970's.  During Reagan’s first term, Congress established the Court of Appeals for the Federal Circuit to consolidate appeals for several areas of federal law.  The Federal Circuit remains the final stop for patent appeals in the United States, except for the relatively rare instances where the U.S. Supreme Court grants certiorari to a patent appeal to sometimes seismically alter patent law and terrorize the patent bar.

     Figure 1

Source:  United States Patent & Trademark Office public statistics

Fortune has favored the patent system since the early 1980’s.  See Figure 1.  American legal thought seems to still agree with Twain's Connecticut Yankee that "for I knew that a country without a patent office and good patent laws was just a crab, and couldn't travel any way but sideways or backways."  Not everyone supports strong patents, particularly some powerful lobbying interests on K Street, backed by Silicon Valley.  After losing several hundred-million dollar patent suits to NPEs (“non-producing entities”), the software industry appears to be doing its best to neuter the patent system.  Though NPEs have their supporters among the patent bar, many view these litigious patent-holding entities as hijackers, i.e., the “patent troll” under the bridge, who extort patent royalties from manufacturers with the threat of an injunction, thereby hurting innovation far more than advancing it.  The real effects of the 2011 patent legislation and non-producing entities on patent strength may take years to assess, but the pendulum may already be arcing back toward disfavoring patents.  For now, though, patents remain strong and valuable.  And when one accepts the premise that patents drive innovation, perhaps optimistically based on the technical achievements accomplished during the booming patent years of the late 1800's and early 1900's, then one can argue that a strong patent system also drives commerce and, possibly, mankind’s progress upward.  Patents and civil engineering then seem to strive toward the same high ground.  As the American Society of Civil Engineers decreed in 1961, civil engineering "is applied with judgment to develop ways to utilize, economically, the materials and forces of nature for the progressive well-being of humanity," which mirrors the hope of the American and global patent systems.  Indeed, civil engineers probably possess an innate belief in progress that initially steered them toward a profession steeped in improving infrastructure.    

II.  Testing Patent Eligibility               

Patent law encompasses civil engineering, because patent law encompasses nearly everything.  Congress provides the statutory baseline for patent eligibility and utility through Section 101 under Title 35 of the United States Code (35 U.S.C. § 101):  Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.  Despite recent judicial and legislative attempts to curb the breadth of patent eligibility, patent law remains breathtakingly broad in reach.  The Federal Circuit has pushed the limits of patent law out from undisputable fields like mechanical and electrical engineering to encompass biotechnology, software, and even business methods.

A machine (concrete thing including parts or devices), manufacture (article transformed from raw materials), and composition of matter (including two or more substances) cause less difficulty in interpreting than the remaining category of processes.  As recently as its 2010 Bilski opinion, the U.S. Supreme Court has rebuffed efforts to limit the expanse of patent eligible processes, opining that although the Federal Circuit’s legal test for a patent eligible process under § 101 (i.e., the process must either be tied to a particular machine or apparatus or that the process must transform a particular article into a different state or thing) was useful, it is not the sole test.  The decision reinforced patent eligibility for relatively abstract subject matter such as software processing and business methods.  Fortunately, most of civil engineering sits securely within the patent eligibility green zone of mechanical and electromechanical engineering, far removed from the abstract border skirmishing of § 101.

In addition to establishing patent eligible categories, § 101 requires utility of the Applicant's invention.  As a practical matter, lack of utility often only plagues abstract or ultra-scientific areas like software and biotechnology.  However, a civil engineering application for an innovative method of drawing a moment diagram would likely evoke a lack of utility rejection under § 101.  

From its Alexandria, Virginia campus, the USPTO (U.S. Patent & Trademark Office) enforces § 101, attempting to balance legal patent monopolies with protecting the public domain.  The USPTO also offers clear guidelines for avoiding § 101 problems.  In applying for a patent on a useful process, machine, manufacture, or composition of matter, an Applicant shall not try to patent a law of nature, a purely natural phenomenon, or an abstract idea, because the Under Secretary of Commerce for Intellectual Property (i.e., the Director of the USPTO) and his or her examining corps will reject it.  For example, the USPTO presents a perpetual motion machine to its Examiners as a classic example of a purely abstract concept violating physical laws and left thereby wanting for utility.    

 Accepting the premise that patents promote innovation, a basic tenet of the patent system, increased patenting activity could further stimulate technical advances in civil engineering.                  

The USPTO rarely rejects a mechanical or electro-mechanical patent application for lack of eligibility or utility under 35 U.S.C. § 101.  Not surprisingly, the Director and his examining legions practically presume utility in civil engineering innovations, and only rarely will a USPTO technocrat try to bounce a civil engineering application under § 101 (e.g., the moment diagram application).  Outside of patent eligibility and utility, legal tests for novelty and obviousness may present civil engineers with additional obstacles, but these areas merit their own articles.

 III.  An Open Field for Civil Engineering          

So, based on the § 101 rules, patent eligibility amounts to a relatively open field for civil engineers.  In fact, this open field includes much more potential matter than merely the prestressing anchors and seismic bearings that may come to an engineer's mind upon considering patents.  The full breadth of a useful process, machine, manufacture, and composition of matter goes much, much further than these few examples.            

Processes come first under 35 U.S.C. § 101.  Civil engineering consultants:  within the process category likely exist your innovations.  Consultant's plans tell contractors what to do, and contractors typically transform a particular article into a different state or thing.  In other words, contractors turn the consultant's innovative techniques on paper into patent eligible processes under § 101 on the construction site.  See Bilski, above.  Fast-forwarding to enforcing that patented process after it issues from the Patent Office, the patent-holding enterprise can target construction contractors who infringe its patented process.  Although patenting processes executed by contractors can raise issues of divided infringement (difficulty in proving infringement because it may involve multiple actors) down the line during enforcement, these processes are still patent eligible under § 101.  Additionally, targeting contractors as infringers raises interesting overlaps between construction disputes and potential patent infringement suits against contractors, such as in probative evidence.  For example, pictures taken by contractors to protect themselves against accusations of delay might also be used to prove infringement of a patented process.  These issues seem to indicate that patenting a process may provide engineering consultants with some leverage against those general contractors accustomed to intimidating engineers with impunity.                  

Just about any conceivable construction process passes § 101 muster for patent eligibility, because construction processes almost by definition transform a particular article into a different state or thing, which the U.S. Supreme Court opined would meet § 101 in the Bilski case.  When concrete cures, it chemically changes from a fluid mixture of aggregate, water, and cement into structural concrete, meeting § 101.  Assembling any other structural material (e.g., steel, pipe, timber), whether by welding, bolting, or some other connecting means, also passes § 101 because the assembled structure provides the "different state."  These examples alone capture much of the physical activity of a construction site.  Therefore, structural construction methods should almost per se qualify as patent eligible applications, whether they involve bridges, buildings, and other land structures; hydrological works such as drainage structures and culverts; foundations and earthmoving; marine engineering structures; or nearly any other type of structure.

Under the legal test of § 101, any process including just one of the above features legally earns patent eligibility.  Again, whether the process involves sufficient innovation to ultimately deserve a patent involves other aspects of patent law.  Just to quickly touch on innovation, an engineer may not even realize when a merely patent eligible construction technique possesses the innovation to break the new ground worthy of a patent.  Innovatively reducing costs, providing elegant solutions to problems, pushing structures higher, and challenging and overcoming barriers presented by geography, for example, may warrant a patent.  New methods of ordering, staging, and utilizing materials and shapes in new combinations could also lead to a breakthrough.  Nearly every big project and many smaller projects present different challenges and opportunities to create innovative processes for overcoming those challenges.  Owning a patented process for efficiently overcoming a problem may give the civil engineering team added leverage in its pitch to the client to distinguish itself from its competitors, because no one except for the patent holder and its licensees may practice that process during the term of the patent.      

The § 101 category of machines encompasses what engineers would probably view as more traditional patent eligible subject matter.  Machines comprise, for example, bearings and other connectors, expansion joints, prestressing devices, sensors, construction equipment, seismic devices, scuppers, seepage devices, and testing apparatuses.  Any civil engineering device including parts should be able to come into the Patent Office under § 101.

The remaining § 101 categories of a manufacture and a composition of matter involve primarily the materials science branch of civil engineering.  These categories comprise new and useful materials, alongside the counterpart process for forming the new material.  Examples include concrete additives and cement, steel, polymers, and wastewater treatment materials. 

Because civil engineering falls squarely within the mechanical arts, § 101 does not present significant hurdles to the field.  Still, some areas of civil engineering approach the problematic frontiers of patent eligibility.  For example, civil engineering processes occurring solely in the design office, such as computer-aided design methods, scheduling, and calculation methods, probably fall short of the § 101 legal test.  Other non-physical processes, such as surveying, could also lead to § 101 trouble at the Patent Office.  But, these potential § 101  problem areas fall well outside of the heart of civil engineering as a mechanical art, and accordingly may only rarely arise as § 101 issues.     

So, for examination, the USPTO admits applications directed to nearly the entire spectrum of civil engineering activity.  Looking back to the roots of the patent system, this broad acceptance of civil engineering by the patent laws should not surprise civil engineers.  The American founders probably thought of the mechanical arts as an important component of the discoveries promoting progress.  Indeed, the founders may have thought first of their civil engineering compatriot Kosciuszko as the inventor discovering the useful arts of patent law, while viewing Franklin's electrical experiments as a copyrightable subject for scientific writing.   

         Figure 2

Source:  World Intellectual Property Organization, “World Intellectual Property Indicators 2010,” available 2007 data

 IV.  Increasing the Intersection of Patents and C.E.

Although the founders likely thought of patenting mechanical arts before electrical arts for patenting two centuries ago, roles reversed over time.  Today, the electrical arts have established primacy at patent offices across the globe.  Of the several thousand Examiners at the USPTO, only a handful examine civil engineering applications, because civil engineers do not appear to patent many of their innovations.  Perhaps this relative lack of patenting activity relates to a possible decline in the status of the civil engineer in American society.  Highly paid and respected throughout much of the nineteenth and twentieth century, many civil engineers today perceive themselves and American infrastructure as sometimes taken for granted by an often thankless public.  Perhaps this perceived drop in prestige relates to a crisis at least in capitalizing on innovation in the profession.  Though civil engineering subject matter is likely even more patent eligible than areas like electrical engineering in the context of § 101, electrical and mechanical engineers go to the Patent Office in enormous numbers, while only a trickle of civil engineers seem to file applications on their innovations.  See Figure 2. 

Accordingly, the intersection of civil engineering and patent law remains volumetrically well below its potential.  Accepting the premise that patents promote innovation, a basic tenet of the patent system, increased patenting activity could further stimulate technical advances in civil engineering.  Civil engineers should keep the generally open patent eligibility for their work in mind when a project seems to break new technical ground.    

The civil engineer clears only the first patent hurdle with the generally open eligibility of civil engineering for patenting.  The patent applicant must also demonstrate the novelty and nonobviousness of his invention, along with other requirements such as clarity of the patent application, to depart the Patent Office with an issued patent.  Even then, the patent holder must often prove the worth of the patented innovation through enforcement or threatened enforcement in the courts.  The engineer must also think globally, considering patent filings and enforcement worldwide.  The civil engineer faces a long road to the enforceable patent right capable of generating injunctions, royalties, and damages against competitors and overreaching contractors.  But using innovation as a touchstone, engineers may individually attain valuable patent rights for their innovations.  In the aggregate, engineers can use patents to advance the profession's technical accomplishments and to help restore technically-trained civil engineers to the greater prestige they once enjoyed in the public eye.

The innovative engineer fuels the progress of useful arts hoped for by the American founders when they empowered Congress to create a patent system at the dawn of the Republic.  Perhaps, a more robust intersection between the patent system and the civil engineering industry can help to promote the progress of mankind to the brighter future imagined by the minds of a more optimistic age.   

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

Evolving Patent Laws

Published in CE News (now Civil and Structural Engineer)

By Stephen L. Keefe, P.E., Esq.

The 2011 Leahy-Smith America Invents Act made fundamental changes to American patent law, including harmonizing U.S. law with global trends. This evolution opens up U.S. patent applications to rejection based on an increased pool of available worldwide prior art. Using this global pool of prior art, the Patent Office rejects civil engineering patent applications that claim identical subject matter as a prior art reference, or that are obvious over one or more prior art references. Patent Office examiners, courtroom judges, and juries often slip into hindsight thinking when determining obviousness, because they have the benefit of reading patent applications prepared by inventors, making inventions seem easy after the fact. Though obviousness poses an intimidating obstacle to the civil engineering inventor, innovation remains the touchstone for overcoming this guardian of the public domain.

I. Evolving Patent Laws

The invention occurred in a kitchen in Queens, New York, on the eve of World War II. Working with chemicals on the family stove, and somewhat by accident, Bert N. Adams broke through a century and a half of conventional battery design. Adams's battery included a magnesium electrode and a cuprous chloride electrode. Once he added water, Adams found that his battery produced electricity steadily, for a very long time.

Adams filed an application with the Patent Office eleven days after the Empire of Japan attacked Pearl Harbor, and received United States Patent 2,322,210 during the summer of 1943, as Axis armies began to stall against Allied resistance. As the War turned, so began the inventor's own campaign, which extended twenty years past VE and VJ day, and would ultimately pit Bert Adams against the United States Government in the Supreme Court.

The largely mechanical innovations of civil engineering warrant equal, if not even greater, patent eligibility than Adams's battery technology. Indeed, the globalizing United States patent system offers an open field for civil engineers. But, patent eligibility is the easy part. Defining an invention over the "prior art" presents the real challenge to any inventor, including civil engineers. The patent bar uses the term "prior art" to describe everything in the public domain available to patent examiners to use in rejecting a patent application.

Enacted on September 16, 2011, the Leahy-Smith America Invents Act unleashed the most significant overhaul of American patent law since 1952. The new law strives to harmonize the U.S. patent system with prevailing trends in the patent laws of most other countries. The deepest change transforms the U.S. from a "first to invent" system to a "first to file" system, in line with virtually every other nation, on March 16, 2013. Under current "first to invent" American patent law, inventors may, with some limitation, provide evidence to defeat an earlier-filed rival patent application by showing that they invented before that earlier-filing rival. With the switch to "first to file," the probability of defeating an earlier-filing rival applicant vastly decreases as compared with the old "first to invent" system. Under "first to file," the first inventor to file with the Patent Office will likely win over later-filing rivals.

Central to the transition to a "first to file" system, Congress re-defined the prior art available to the United States Patent & Trademark Office (USPTO) for rejecting patent applications under Section 102 of Title 35 of the United States Code (35 U.S.C. § 102). As with many other effects of globalization, an increasingly globalized U.S. patent system presents a mixed blessing to Americans, particularly American inventors desiring a U.S. patent. Though international legal streamlining likely helps Americans in international commerce, much additional foreign-generated prior art becomes ammunition in the hands of bureaucrats charged with protecting the public domain. Under the old "first to invent" U.S. patent system, some foreign patent applications and foreign public uses of inventive subject matter fail to qualify as prior art until they are filed or made public in the United States.

Starting on March 16, 2013, some of these same foreign sources become prior art for use in USPTO and U.S. judicial proceedings as of their foreign availability date, so long as that foreign availability date pre-dates an applicant's filing date at the USPTO. So, generally, anything that went public anywhere in the world before an inventor's filing date morphs into weapons aimed at the desired patent claims, with some exceptions for an inventor’s own public disclosures. All applicants for an American patent, whether U.S. or foreign citizens, must negotiate this increased pool of prior art to show that their invention deserves a patent under the new law. For civil engineers, the increased amount of foreign prior art available against each patent application under the new law provides an even greater impetus to file patent applications as soon as possible on technical innovations. Bottom line: file an application on your invention, whether it is a rebar improvement, a new concrete admixture, or a new pile-driving technique, with the Patent Office as soon as possible.

Bottom line: file an application on your invention, whether it is a rebar improvement, a new concrete admixture, or a new pile-driving technique, with the Patent Office as soon as possible.

Although Bert Adams did not face prior art on the same global scale as the 21st century, he did contend with a legal environment generally hostile toward patenting. As Adams made his breakthrough in battery design, the balance of legal thought still tipped heavily in favor of antitrust in the wake of the scandalous monopolies of the turn of the century, casting suspicion on the legal monopolies of patent law. In 1949, after returning from duty as the chief U.S. prosecutor at Nuremberg, Supreme Court Justice Robert H. Jackson wrote: "The only valid patent is one which this Court has not been able to get its hands on." Only decades later, in the 1970's, did legal balance eventually tilt back to patent law's favor.

Adams pitched his invention to the U.S. Army even as World War II raged, believing his battery technology offered significant military value. Army experts scoffed at the invention, deriding it as unworkable. The Army then covertly manufactured a million infringing batteries based on the inventor's work. Perhaps the anti-patent trends in the courts and the crisis of the War led the Army to ignore Adams's patent claims. In the early fifties, the Army patented slight improvements on the design, but refused to recognize Adams as the inventor.

II. Anticipating Prior Art

By the time the Army patents issued at the end of the Korean War, Congress had enacted its sweeping 1952 Patent Act. The 1952 legislation laid out prior art under 35 U.S.C. § 102, which the 2011 Patent Act subsequently revised to harmonize U.S. prior art rules with other nations. 35 U.S.C. § 102 sets forth "anticipation," the first of two primary prior art hurdles that successful patent applicants must overcome. If a single prior art reference, such as a previously issued patent or a journal article, includes each and every element as set forth in a patent claim, that prior art reference "anticipates" the claim. When a reference anticipates a patent claim, the Patent Office automatically rejects that claim.

Each patent application under examination at the Patent Office includes at least one patent claim, and the patent claims basically describe an applicant's invention by reciting a list of elements of the invention (the next paragraph gives an example of a patent claim). Down the road in patent litigation, the patent owner wins the patent infringement case when the owner proves in court that an accused device or method includes each and every element of a patent claim of a valid patent. So, it follows that to actually obtain a patent with valid patent claims, the applicant must show that each and every element of the patent claim does not already exist in an earlier prior art reference.

As a civil engineering example of a patent claim, a patent applicant claims: "An expansive additive for controlling shrinkage in a cementitious mixture, comprising: [1.] calcium aluminate particles where at least 75% by mass of said particles are hydrates of C3AH6, CAH10 or a mixture thereof ... , [2.] said mass of said particles being fully hydrated; [3.] an expansion effecting sulfate containing compound for effecting expansion in said mixture; and [4.] calcium hydroxide," as was claimed in U.S. Patent Number 6,447,597. To have rejected this patent application by anticipation under 35 U.S.C. § 102, the patent examiner would have had to find a single anticipating reference including elements [1.] through [4.] above. If a single reference, for example, has every feature, except that in the reference only 70% by mass of said particles in [1.] are hydrates, then it would fail to anticipate, because the single reference failed to include every feature. The probability of finding a single reference having all of these elements, and having an availability date predating the patent application filing date, and that meets a few additional requirements to qualify as prior art, approaches zero. Even if the examiner found a reference meeting all of these requirements, which did not happen in this case because the patent issued in 2002, the applicant would have needed only to amend the patent claim to change one existing element or add one new element, and the prior art reference would have again failed to anticipate. Additionally, at least under the pre-2013 law, applicants may file affidavits to attempt to push their effective invention date even earlier than their filing date, further narrowing the pool of potentially anticipatory references. So, patent examiners often face an uphill battle in finding a single anticipating publication that includes each and every element of realistic patent claims drafted based on good knowledge of existing prior art.

Not surprisingly, anticipation presents a low bar for applicants to overcome. Typically, anticipation occurs when an applicant claims an unrealistic amount of subject matter. For example, if an applicant broadly claims "An expansive additive comprising calcium aluminate particles," then good luck to the applicant. The patent examiner will probably destroy this haughty claim with a dozen anticipatory references. In fact, patent examiners often will reject unrealistic claims with numerous anticipating references, if only to send the applicant the message that "you're not even close to a patent right now."

III. Obviousness Attacks

Because applicants routinely sidestep § 102 anticipation rejections with minor claim amendments, anticipation often presents an easily-eliminated obstacle, assuming the applicant claims a reasonable scope of subject matter. The real threat emerges when patent examiners roll prior art under 35 U.S.C. § 102 into obviousness rejections. § 102 prior art sometimes morphs into an insurmountable barrier to patentability under the specter of 35 U.S.C. § 103 obviousness. Under § 103, an examiner asserts that the claimed invention would have been obvious to a person having ordinary skill in the art. The examiner may take the imperfect reference that falls short of anticipation and roll it into an obviousness rejection, effectively telling the applicant that "this reference isn't perfect, but it's close enough to make your would-be invention obvious." Obviousness is the patent applicant's most formidable enemy.

The Army likely felt confident that § 103 obviousness could wipe out Bert Adams's battery patent, if necessary, and ignored the inventor's patent claims through the 1950s. In 1960, rumored to have an anonymous financial backer, Bert Adams sued the Army for patent infringement. Adams beat the Army in the U.S. Court of Claims, but the government appealed to the U.S. Supreme Court, intending to show the invention's obviousness to the Justices. Before the Supreme Court, the Army highlighted how known elements formed every part of Adams's battery.

Civil engineers should resort to the patent system each time they cross paths with innovation that could accelerate the technological progress of the industry.

The U.S. Supreme Court decided the Adams case in 1966, as a companion case to another controversy it decided the same day, between inventor William T. Graham and the John Deere Company. In Graham v. John Deere, the Court interpreted just what it thought Congress meant when it enacted 35 U.S.C. § 103. Graham remains a seminal obviousness case, and to this day still demands by precedent that lower courts systematically determine the breadth of existing prior art, the differences between the invention and the prior art, and the level of skill possessed by a person having ordinary skill in that art. Although litigators bicker endlessly about how much "one of ordinary skill" knows, for civil engineering this legal fiction could boil down to a junior engineer. Using the answers to these inquiries, courts then determine if the differences between the subject matter and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art. Basically, a patent examiner, judge, or jury wades into the quicksand of theoretical legal thought, and tries to determine whether one of ordinary skill looking at the existing prior art at the time of invention (old law) or before filing (new law) of the application would have deemed that the invention amounts to an obvious step forward. Globally, though differing in form, most nations employ an analog to § 103 obviousness.

Although technically an objective determination, obviousness under 35 U.S.C. § 103 tends to quickly devolve into a slippery subjective affair, in which hindsight from the patent at issue often creeps into the legal manifestation of the person of ordinary skill in the art. Even before a patent, if ever, enters a court, patent examiners charged with making § 103 inquiries distort obviousness in their inquiries. Worse yet, patent examiners and Courts may combine any number of existing prior art references to cobble together hideous Frankensteins of "obvious" combinations that one of ordinary skill in the art would have "obviously" constructed. Although court opinions consistently rail against determining obviousness based on hindsight in light of the patent itself, hindsight relentlessly creeps into the minds of examiners, judges, and juries to skew their judgment. When the inventor's specification and drawings are in front of an examiner or Court, which explain all of the details of an innovation, arriving at the invention may seem deceptively easy. In response to these hindsight-infected analyses, many inventors would surely like to tell a Patent Office bureaucrat: Here's just the prior art and the problem I solved--why don't you try coming up with my invention on your own, without getting to see my patent application, and see if it's a little less "obvious" than when my application is sitting in front of you. Unfortunately for patent applicants, the law provides no such scenarios. But, as Bert N. Adams found, the pure innovation at the core of a good patent offers the best antidote to creeping hindsight and skewed obviousness inquiries.

Enter the U.S. Supreme Court's 2007 KSR Int'l Co. v. Teleflex, Inc. case, which maintained a high bar for obviousness, in response to some lower court decisions that may have made obviousness challenges easier for applicants to overcome. KSR sets forth a fictional person of ordinary skill who possesses creativity and common sense, and through these attributes, gives leverage to the Patent Office and patent challengers to prove a patent application or issued patent conveys merely obvious material. Many in the patent bar perceived KSR as reining in a growing proliferation of "junk patents." Some patent commentators criticized these low-quality junk patents as obstructing innovation and cluttering up the public domain, instead of constructively advancing technology. The 2011 patent reform did not directly address the junk patent problem, maybe partly due to the Supreme Court having weighed in with KSR. By increasing the pool of available prior art, though, Congress did supply more ammunition with the 2011 Act to the fictional person of ordinary skill in the art to consider in striking down patents for obviousness. In the end, the applicant often faces an inevitably hindsight-plagued analysis featuring a person of ordinary skill who has a significant capability to construct obviousness monstrosities out of an expanded global pool of prior art. On top of this, patent examiners tend to stubbornly stand by obviousness rejections, with the statement “Applicant's arguments have been fully considered but they are not persuasive” often appearing on examiner’s actions. Also, would-be patent infringers often supply some very good prior art to the courts and the Patent Office to use against applicants.

IV. Innovation as Touchstone

Though obviousness poses a daunting obstacle in the post-KSR days of patent law, innovation remains the touchstone for overcoming this guardian of the public domain. Aspdin's portland cement technology, Bessemer's steel process, Hennebique's reinforced concrete construction methods, and Freyssinet's prestressing innovations tremendously advanced civil engineering. Patent law recognized and protected the innovations embedded in each of these breakthroughs, helping to transform civil engineering. With almost 300,000 civil engineers and another over 50,000 environmental engineers located in the U.S. alone, civil engineering employs over one-fifth of the estimated 1.6 million engineers working in America (see Figure above). On an individual level, when civil engineers make real advances in methods or apparatuses, that innovation will help to push a patent to issue and into a valuable commercial asset in the engineering world. Civil engineers should resort to the patent system each time they cross paths with innovation that could accelerate the technological progress of the industry. If your innovation is significant, and truly presents a sizable jump from the expected rate of "obvious" development in civil engineering, the Patent Office will usually grant your patent readily and challengers will have difficulty invalidating it.

In oral argument before the United States Supreme Court, Bert Adams's attorney, John Reilly of New York City, casually poured water into a transparent container holding one of the inventor's batteries. After a few minutes, as the attorney argued the inventor's case, the battery sprang into electric life. The Justices eyes reportedly stayed fixed on the glow of electricity burning in water in the middle of the courtroom for the rest of the proceeding.

Though many innovations do not provide the dramatic visual effect that Adams and his counsel displayed in court, innovation provides the real value of any good patent. In general, a given patent's value rises proportionally to the strength of the innovation it promotes. Like the Justices watching the invention's submerged light, civil engineering patent applicants should strive to keep all eyes on the innovation driving their patent through prosecution at the Patent Office and, if necessary, enforcement in the courts.

Mankind benefits when civil engineers innovate prolifically. Before the sirens of the first responders approach the sites of the natural (and sadly, manmade) disasters of our time, civil engineers have already established defenses for the people depending on their works. Earthquakes, hurricanes, floods, and terrorists must first breach the works provided to society by civil engineers.

By providing legal protection to investments in innovation, patents can incentivize research and development in any of the pillars of civil engineering, such as the structural, geotechnical, environmental, hydrological, and transportation branches of the industry. As the post-WWII constellations of the Cold War and the Pax Americana recede into the mists of history, mankind faces the challenges of a new era. Whether designing defenses against earthquakes, terrorism, extreme weather's winds and floods, or population's pressure on traffic and water resources, difficult challenges mount against civil engineers. The American and global patent systems can promote and protect the innovative potential of future products, construction methods, and engineering materials, to meet the infrastructure challenges of dynamically changing times. Perhaps advances in civil engineering may someday even surpass the infrastructure only imagined in television and film.

Unfortunately, relative to mechanical and particularly electrical engineers, civil engineers do not significantly patent their innovations overall as a profession (see Figure below) . This pessimistic reality, though, grants civil engineers the possible advantage of having less prior art to overcome at the Patent Office. Civil engineers may then have an easier time prosecuting patents to issue through the thicket of prior art, at least in the near future, than their mechanical and electrical engineering counterparts. In at least one bright spot for American civil engineering, though, the U.S. leads the world as the original filing country for civil engineering patents, followed in order by Germany, Japan, France, the United Kingdom, and Italy (according to World Intellectual Property Organization statistics for 2003-2007).

Returning to Adams, he beat the best prior art the Army could marshal together, and won in the U.S. Supreme Court, a quarter century after the invention in his kitchen. In March, 1966, TIME magazine ran an article on the inventor's victory, entitled "The Supreme Court: How Bert Beat the Bureaucrats."

Even during argument before the Supreme Court, Adams and his attorney must have felt the tide turning in their favor when the Justices maintained their gaze on the burning light of the inventor's submerged battery. In patenting the many innovations waiting in the wings of their industry, civil engineers should strive to similarly keep the eyes of Patent Office examiners and courtroom fact-finders on the true technological advancement at the heart of each good civil engineering patent application. These advances can break through the prior art found by the Patent Office and future challengers, provide valuable intellectual property to a civil engineering enterprise, and contribute to the technical progress of the civil engineering industry as a whole.

As the Romans said, if you want peace, prepare for war. A patent application built around a solid technical innovation provides the best preparation for a civil engineering patent's inevitable war against the obviousness attacks from a world of prior art.

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

U.S. Universities:  Untapped Potential for Patenting Civil Engineering Innovation

By Stephen L. Keefe, P.E., Esq.

Despite generally open patent eligibility for their innovations, civil engineers, whether working in the private sector, universities, or government, take relatively few of their inventions to the patent office.  The American founding fathers designed the patent system to spur innovation by rewarding inventors exclusive legal rights to protect their discoveries.  Civil engineering subject matter likely ranked highly among patentable innovations envisioned by the founders, particularly for a young Republic struggling to build a new national infrastructure.  Today's electrical engineers, though, out-file civil engineers by an estimated ratio of at least 8-to-1, per capita per year.     

Probably the most striking examples of overlooked patent potential in civil engineering lay in a leading fountainhead of research and development--American research universities.  Over 50 U.S. universities operate major civil engineering research facilities, most having thousands of square feet of testing space.  See Fig. 1 for a map displaying exemplary U.S. universities having leading testing laboratories.  The nation's public research universities operate a conspicuous share of this group of top testing facilities.  Taken collectively, the civil engineering testing facilities of U.S. universities apparently dwarf the research capabilities of their private sector and federal government counterparts.  The concentration of testing resources at American universities in civil engineering likely stems from deliberate national strategy.  Beginning with the Truman Administration, and using the lessons learned from research and development efforts during World War II (e.g., the Manhattan Project), Congress established the National Science Foundation to promote scientific research.  The National Science Foundation provides funds primarily to the nation's research universities and research institutes.  This funding scheme reflects a national strategy of funding scientific research through the nation's schools and research institutes, as opposed to trying to directly fund research at government agencies or in the private sector.  This general national research strategy has seemingly led to U.S. research universities amassing vast civil engineering testing resources.

But when looking at patenting numbers for civil engineering, the private sector surprisingly outdoes universities, despite the universities apparently having the lion's share of testing resources in the country.  One clear possible inference emerges from all of these trends:  relatively little patenting goes on in civil engineering as a whole because the nation's civil engineering departments, which operate most of the testing resources, stay away from the patent office.  Although non-patented university research still contributes to the civil engineering industry's development, a rift in technology transfer can, in general, open up when an industry neglects patenting.  Viewing these hypotheses in light of the 1980 Bayh-Dole Act, highlighted toward the end of this article, may further illuminate the issue of subdued patenting activity in American civil engineering.

Fig. 1:

Leading Testing Laboratories at U.S. Universities

The thousands of professors at civil engineering departments across the U.S., then, could feasibly emerge as potential civil engineering inventors, because they have the majority of civil engineering testing resources in the country at their disposal.  The research interests of individual professors across the United States, when taken together, cover about every facet of civil engineering, from pile foundations and seismic protection to geosynthetic reinforced soil and nanoporous materials.  As a mechanical art, this civil engineering subject matter generally qualifies easily for patent eligibility.  Even more importantly, backed by university resources, a wealth of empirical test data often underpins professorial work.  As Thomas Edison famously said, "Genius is one percent inspiration, ninety-nine percent perspiration."  In the civil engineering context, testing resources help supply the hard work that optimizes novel concepts into practical inventions.  For example, using testing facilities to optimize a structural design (e.g., a bearing, a connection, a blast-resistant material, or a method of using a new concrete admixture) and proving the superiority of that design with empirical data can produce a valuable patented invention.  University professors stand poised to do just this, and engineering students stand ready to help.

Trying to name every U.S. university faculty that could produce valuable patents would generate a list of over a hundred schools.  The leading civil engineering schools with the largest testing laboratories, though, deserve mention:  UC Berkeley, Illinois at Urbana-Champaign, UT Austin, Georgia Tech, Purdue, the University of Michigan, Texas A&M, and UCSD.  Some of the largest civil engineering testing facilities in the United States, and the world, operate under the banners of these schools.  Take Georgia Tech's Structures and Materials Laboratory, for example.  Numerous universal testing machines with capacities of hundreds of thousands of pounds, an L-shaped reaction wall, and additional testing resources including infrared thermography as well as other technologies bolster research by Georgia Tech's faculty.  UC Berkeley's facilities, the Newmark Structural Engineering Laboratory at Illinois, UT Austin's Ferguson Structural Engineering Laboratory, Purdue's Bowen Laboratory, and UCSD's Charles Lee Powell Laboratories provide additional examples of heavy-hitting testing centers.  Large testing laboratories of this stature provide fertile ground for patenting.  Slightly smaller facilities, such as the University of Wisconsin's Structures and Materials Testing Laboratory likewise possess significant patenting potential.  But, despite significant potential, many university civil engineering departments decline to transform their civil engineering research into intellectual property. 

In the landmark 1980 Bayh-Dole Act, Congress addressed this disconnect in university patenting for all research, including civil engineering.  Recognizing that patenting helps to bring innovation into the marketplace and promote economic growth, Congress enacted the Bayh-Dole Act to encourage universities to patent their discoveries and to use their patents to partner with private enterprise.  Bayh-Dole allows universities to retain title to inventions, even if the university used federal funding in making the discovery (e.g., National Science Foundation grants).  Although the Act requires the universities to furnish the federal government with certain information about each invention and generally reserves the government's right to practice the invention itself, the university ultimately owns each patented invention, if desired.  Also, Bayh-Dole requires the university to share a portion of revenue gained from a patent with individual inventors.  Congress also further encouraged university patenting in the 2011 Leahy-Smith America Invents Act, specifically giving universities a discount in patent filing fees.  With Bayh-Dole and Leahy-Smith, Congress apparently intended to encourage all university faculties to patent their inventions, including civil engineering departments.  The federal government essentially offers to give universities title to patented inventions made using federal funds, based on the premise that universities will license the invention into the private sector to spur innovation in the marketplace and promote economic growth. 

As an exemplary case, work done by the Advanced Civil Engineering Materials Research Laboratory (ACE - MERL) at the University of Michigan demonstrates the spirit of the Bayh-Dole Act.  Michigan's ACE - MERL develops advances in materials technology, including notable breakthroughs in engineered cementitious composites such as self-healing concrete.  The University of Michigan holds numerous patents based on the ACE - MERL's work, including the work on self-healing concrete, and offers the patented technology to the commercial sector for licensing through the University's Office of Technology Transfer.  In describing the technology, ACE - MERL resources suggest that using the patented technology commercially would reduce maintenance problems, which could help reduce the high costs of maintaining infrastructure and accordingly benefit society economically.  Under Bayh-Dole, the University of Michigan could even offer ACE - MERL's technology under an exclusive license to a single company, providing that enterprise with a unique competitive edge in the marketplace.  Bayh-Dole would also generally require that some licensing revenue paid to the University of Michigan for a given ACE - MERL invention go to the corresponding inventor or inventors at the ACE - MERL, further incentivizing those professors and researchers to continue to develop advanced technologies.  Linking patented technology to economic advancement, as Michigan's ACE - MERL strives to achieve, provides a working example of the types of economic effects Congress hoped to bring about with Bayh-Dole.                

With so many research tools in the hands of U.S. universities, Bayh-Dole builds upon the patent rights enshrined in the U.S. Constitution by establishing a means to transform advanced university research into valuable patented technology.  Universities may license their technology out to the civil engineering industry, either nonexclusively to several companies or exclusively to a single enterprise, possibly increasing the volume of patent licensing in civil engineering toward the higher levels experienced in such disciplines as mechanical and electrical engineering.  Widespread application of this licensing activity could infuse a significant amount of new technology into the civil engineering industry, leading to more economic efficiency, reduced infrastructure costs, and substantial royalties paid to university researchers to incentivize further advances.  In the true spirit of capitalism, an array of new partnerships between university faculties and private companies could arise, as players compete to secure the most promising technologies for producing the highest quality work at the lowest price.  Overall, potentially higher densities of technological advancement from competing university-industry blocs could promote economic development and cause the civil engineering industry as a whole to advance to meet the rapidly approaching infrastructure challenges of the future.         

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

Deciding Where in the World to File Civil Engineering Technology Patent Applications

By Stephen L. Keefe, P.E., Esq.

Civil engineering technology enterprises may resort to the global patent system to protect innovations on a nation-by-nation basis.  In selecting nations for patent filing, the patenting enterprise may look to national economic and infrastructure qualities and patent system strengths, in addition to its own business strategies.  Based on these factors, the top candidate nations for filing civil engineering technology applications include the U.S., Japan, Germany, China, the U.K., France, South Korea, Canada, and Australia.  Other nations may also qualify as good candidates depending on a given invention and the enterprise's business strategy for that invention.  Global patenting may yield a significant and valuable patent portfolio protecting the enterprise's key innovations.      

The Global Patent System

In today's competitive marketplace, civil engineering technology enterprises should seek legal protection of their key innovations through patenting.  Patenting in the United States, though, marks only the beginning of legal protection for the civil engineering technology enterprise.  The enterprise should consider protection abroad when it seeks to patent its inventions. 

Because civil engineering technology inventions almost always involve tangible materials, civil engineering patent applications generally breeze through patent eligibility requirements based on subject matter, whether in the United States or abroad.  In contrast, patent eligibility rules often trip up more abstract disciplines like computer engineering and biopharmaceuticals.  So, civil engineering technology runs into little trouble asserting its patent eligibility as a process, machine, manufacture, or composition of matter, which comprise the patentable subject matter mandated by United States law and similarly mandated by other nations across the globe.  The real battles with patent offices around the world, though, occur over novelty and obviousness.  To just briefly touch on novelty and obviousness, inventors must rely on the strength of their proposed invention to persuade patent offices that their innovations overcome these guardians of patentability, and their analogues across the world.

No world patent exists.  WIPO (the World Intellectual Property Organization), operating under the flag of the United Nations, helps patent applicants cross international borders by administering the Patent Cooperation Treaty.  Ultimately, though, inventors must obtain and enforce a separate national patent in each desired nation for each desired invention.  In addition to WIPO and the Patent Cooperation Treaty, regional patent offices like the European Patent Office and patenting agreements between various nations further lessen the costs and complexity of acquiring patents internationally.  American inventors often file first with the United States Patent and Trademark Office, and then pursue patents abroad using the Patent Cooperation Treaty and direct filing in other nations, claiming priority for invention back to their first filing date with the patent office in America.  The clock for a somewhat complex array of deadlines for priority starts ticking after the first patent filing for a given invention.  Although these involved priority rules defy broad generalizations, applicants usually only get up to a year from their first filing to file internationally.  Despite immense streamlining from the Patent Cooperation Treaty, international filing remains costly.  Particularly, translation costs, filing fees, and legal costs associated with coordinating parallel patent applications simultaneously in numerous nations drive global patenting costs up.  Because of these substantial costs, enterprise decision-makers tend to instinctively reserve broad global patent filing for their most promising technologies.

Deciding Where in the World to Patent

But where in the world should a civil engineering technology enterprise patent?  Naturally, business strategy should dictate patent strategy.  But in attempting to divine patent strategy from business strategy, the big picture for civil engineering technology patenting worldwide at least provides a good starting point for deciding where to patent innovations.  Because deciding where to patent civil engineering technologies ultimately comes down to deciding which national patents to acquire, enterprises can look to each prospective nation's economic growth, infrastructure qualities, and patent system strength.  Looking about twenty years into the future probably makes sense because the U.S. patent term nominally extends for twenty years from filing, and many other nations have comparable patent protection windows.  So, projecting the state of a given nation's economy, infrastructure, and patent system over the next twenty years likely provides a good method to evaluate and compare the value of patenting civil engineering technologies in different parts of the world.

Some major economic and infrastructure considerations driving patent planning include urban population growth, present and projected national gross domestic product, and the pace of technological advancement of a nation's infrastructure.  As far as patent system strength goes, helpful indicators include the number of patent applications that a nation receives, the number of granted patents that a nation maintains in force, the strength of a nation's court system for providing relief to patent owners against patent infringement, and corruption and piracy concerns.  These indicators of patent system strength should help point to whether or not the value of a given nation's granted patent will exceed (or even come close to) the cost of obtaining and maintaining that patent right.    

"Must Have" Nations for Patenting Civil Engineering Technology (U.S., Japan, Germany, and China)

For any potentially valuable civil engineering invention, the three nations that make safe bets for patent filing include the United States (U.S.), Japan, and Germany.  These three nations, looking forward over the next couple of decades, possess all of the attributes promising good civil engineering technology patent rights.  The U.S., Japan (despite the 2011 tragedies), and Germany each have vast and advanced infrastructures, large and relatively wealthy urban populations, and huge gross domestic products.  These three nations also operate robust patent systems, having an enormous amount of granted patents in force and judiciaries that reliably interpret highly developed bodies of patenting jurisprudence.  It's tough to go wrong in deciding to file patent applications on good civil engineering technology inventions with the Americans, Japanese, or Germans.

China falls short of qualifying as a safe bet on numerous grounds, but still likely constitutes a "must have" nation for patenting.  Explosive--perhaps too explosive--growth marks China's infrastructure, economy, and urban population.  Although commentators vary widely on their views of the Chinese patent system, characterizing Chinese patent protection for foreigners as anything better than shaky would amount to an overly optimistic assessment.  But the expansive Chinese market possesses such great potential that civil engineering technology enterprises simply must file there, despite uncertainty and unevenness in China's treatment of foreign patent holders as compared to Chinese patentees.

Solid, But Not Quite "Must Have" Nations (U.K., France, South Korea, Canada, and Australia)

As a given invention's estimated value grows, civil engineering technology enterprises may consider expanding the number of patent filings associated with that invention from covering the four "must have" nations to including five additional and slightly smaller economies.  These five additional prospective nations, including the United Kingdom (U.K.), France, South Korea, Canada, and Australia, have attributes similar to the U.S., Germany, and Japan, but on a smaller scale.  Accordingly, these five additional nations may not offer quite as broad economic coverage, per patent filing, as the "must have" group.  In expanding coverage to include some or all of the U.K., France, South Korea, Canada, and Australia, patent enterprises can use the European Patent Convention (EPC) to streamline costs among selected European countries (i.e., Germany, the U.K., and France).  By using the EPC, patent applicants can at least defer some patent filing costs for some time, while leaving the option of patenting open in European markets.  For relatively important inventions, expanding the global patent filing net to include the relatively strong markets and patent systems of the U.K., France, South Korea, Canada, and Australia is probably desirable. 

At this point, spreading the patenting net even wider entails filing in either riskier markets or even smaller nations having solid patent systems.

 Fairly Solid, But More Risk (Spain and Italy)

Although Spain and Italy weigh in as similarly sized nations relative to the U.K. and France, fallout from the 2008 recession exposed significant weaknesses already suspected in the Spanish and Italian economies.  So, Spain and Italy rest on shakier financial footing than their northern European counterparts.  Spain and Italy, though, still have significant gross domestic products, large urban populations, relatively advanced infrastructures, and overall effective patent systems.  Also, applicants can resort to the European Patent Convention to streamline filing and defer filing costs in these two additional European countries.  Accordingly, for potentially valuable inventions, applicants should consider obtaining patent rights in these two relatively large and wealthy European nations.

Large but Riskier Markets (Brazil, India, Russia,* and Mexico)        

Brazil, India, Russia,* and Mexico present much uncertainty for patenting to the civil engineering technology enterprise. (*In view of recent events, Russia has become untethered from the global patent system and is no longer a reliable filing choice.)  Brazil may be the brightest spot of this group for patenting potential in the coming decades.  Brazil seems to have much promise for infrastructure growth, in addition to the nation's vast energy resources.  Brazil has a large urban population heading toward 200 million people, and a significant gross domestic product.  But the Brazilian patent system appears to have a low number of total patents in force for such a large nation, and its patent system overall is struggling with growing pains. 

Patent value in India and Mexico takes a serious hit due to transparency problems and corruption concerns.  With well over a billion people and an advancing economy, India rests upon enormous economic potential.  Mexico, with over one hundred million people and a large economy, also possesses significant potential.  Its current patent numbers, though, tell a generally lackluster story about patent strength.     

Ultimately, civil engineering technology enterprises probably should always patent their crown jewel inventions in these four riskier markets.  Brazil probably gives the best odds of a good return on patent investment of this group.  For less important inventions, particularly in India and Mexico, these nation's shaky patent systems reduce the chances of obtaining robust intellectual property rights to justify patent prosecution and maintenance costs.  Although Brazil, and probably to a lesser extent India and Mexico, may leap into the upper echelons of global patenting in the coming years, they will more likely remain large but riskier markets for patenting civil engineering technology for the next decade or two.

Solid, But Smaller

Many good, smaller patent systems remain for potential patent filing, but applicants must pay patent prosecution costs for each smaller country selected for patent acquisition.  Whereas a single German patent gets an applicant a first world economy of about 80 million people, it can easily take 10 or 15 separate smaller national patents to cover a comparably sized aggregate market.  So, patenting costs per gained amount of market coverage tend to skyrocket when applicants start filing in smaller nations.  Depending on the business goals for the civil engineering technology invention, though, filing in some or perhaps all of these smaller nations may more than justify the costs.

Europe contains most of these smaller nations with steady economies, advanced infrastructures, and reliable patent systems, including:  the Netherlands (pop. ~17 million), Sweden (pop. ~9 million), Switzerland (pop. ~8 million), Austria (pop. ~8 million), Norway (pop. ~5 million), Finland (pop. ~5 million), and Ireland (pop. ~5 million).  Outside of Europe, some other worthy candidates include Israel (pop. ~8 million), Hong Kong (pop. ~7 million), Singapore (pop. ~5 million), and New Zealand (pop. ~4 million).  Also, civil engineering technology enterprises may always find additional smaller national candidates, depending on business goals.

For their size, these nations possess advanced infrastructures, significant urban populations, and large gross domestic products.  These smaller countries also claim developed patent systems and overall effective enforcement of patent rights.  The small size of these countries, though, furnishes the primary obstacle to would-be patentees.  The 11 advanced nations highlighted above total a population of about 80 million people living under patent systems well-equipped to promote civil engineering technology inventions.  Still, it takes 11 separately prosecuted and coordinated patent applications to cover similar ground as a single German patent.  Having to fund numerous different patent acquisition efforts to obtain an array of separate national patents drives patenting costs well above the cost of obtaining a single patent in a larger nation like Germany.  But, depending on the invention and an enterprise's business goals, patenting in small nations sometimes pays large dividends, despite the increased costs of navigating numerous sovereign patent systems in parallel.             

Midsize Candidates for Key Innovations and Important Business Goals (Poland, Greece, Argentina, South Africa, Taiwan, Chile, Malaysia, Thailand, Colombia, Ukraine, the Philippines, and Vietnam)

Patenting innovations in these midsize nations could start raising a few eyebrows in the civil engineering technology enterprise.  These countries probably pose as much or more risk as some of the larger, riskier nations above, while likely offering less return on patenting investment due to their developing economies and patent systems.  These nations arguably possess less advanced infrastructures than the above-listed nations.  Further, these nations' patent laws, to varying extents, have not yet fully made it out of patent dry-dock, having promising but not fully developed patent systems.  Also, most of these nations have more serious transparency, corruption, and economic problems than the higher-ranked countries.

Nations in this grouping may offer fertile ground for civil engineering technology patent applications covering critical innovations and promoting important business goals.  Of this grouping, Poland and Chile appear particularly poised to advance their patent systems, economies, and infrastructures in the near future.  But before committing resources to patenting inventions among this group, the civil engineering technology enterprise should scrutinize the economic, infrastructure, and patent system qualities of these nations in light of proposed business strategies. 

 Small or Developing Patent Systems for Special Situations

Although somewhat far flung from the typical choices for patent filing, business goals may drive civil engineering technology enterprises to consider pursuing a patent in one or more of this group of small and/or developing nations.  Though extremely small nations, Monaco and Luxembourg operate robust patent systems and advanced infrastructures that may offer valuable patent rights for civil engineering technology inventions, if business goals require such rights.  The Czech Republic, likely a fast-tracking nation for patent potential, possesses a significant patent system and a relatively advanced infrastructure if business goals require patent protection of a civil engineering technology innovation with the Czechs. 

Numerous additional nations have either miniscule or developing patent systems that civil engineering technology enterprises may use to pursue patent rights, if business goals require protection of an invention in these small markets.  Denmark, Portugal, and Malta have small but relatively developed infrastructures and patent systems.  Large developing patent nations include Turkey and Egypt, followed by Peru, Uzbekistan, and Romania.  Hungary, Belarus, Bulgaria, Slovakia, Serbia, Croatia, Georgia, and Moldova, along with tiny Slovenia and Estonia, number among the small developing patent nations of Eastern Europe.  Though a tiny nation, Latvia is a standout possessing a developing but relatively large patent system. 

Because they cover small markets, or root themselves in developing bodies of intellectual property law, these national patents would likely only create significant business value in select situations.            

 Significant Omitted Nations

The above groupings of nations leave out some significant nations of the world:  populous Indonesia, Bangladesh, and Nigeria; highly urbanized Venezuela; the military powers of Pakistan, Saudi Arabia, Algeria, and Kazakhstan; and the rogue nations of Iran and Syria.  These nations lack strong intellectual property traditions, and accordingly do not offer patent rights worth obtaining in most situations.  The most likely subset of this group to improve in the coming years probably includes Indonesia and Venezuela.        

Building the Global Patent Portfolio

Filing patent applications globally on just one good civil engineering invention, in nations having the economic productivity, infrastructure, and patent systems appropriate for the nature of that invention and its associated business strategies, may yield a valuable patent portfolio.  As patents issue from applications in more and more nations, and the patenting enterprise files additional national patent applications to fully claim all patentable features of a single invention, substantial intellectual property may emerge on the enterprise's balance sheet.  If the patentee filed in nations granting valuable patent rights aligned with the enterprise's business goals, then the value of the patent portfolio may significantly exceed the costs associated with procuring and maintaining the patents in force in those nations.  Adding more inventions will naturally increase the size of the enterprise's global patent portfolio. 

To translate the value of its patent portfolio into currency, i.e., "monetizing" the patent portfolio (to use the favored patent buzzword), the civil engineering technology enterprise can combine using the patented technology itself to lead the market, excluding some or all other enterprises from using its patented technology, licensing or assigning its patents to other parties, and enforcing its patents in national courts for injunctions or damages.  Although significant costs usually accompany these activities, particularly with enforcing patent rights around the world, asserting the enterprise's patent portfolio may make sense based on the invention, national forum, and business goals supported by the given patents.  Through these actions, the civil engineering technology enterprise may legally protect its cutting edge technology where desired around the world, possibly yield licensing revenue from across the global civil engineering industry, and perhaps turn a profit for the enterprise's coffers.  Also, taken together, the accumulated patented inventions of enterprises across the industry may technologically advance efforts in civil engineering design and construction worldwide.           

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

© 2011-2023 Stephen L. Keefe