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Intellectual Property and Patents in Engineering

Image by Harley L. Schwadron

The protection of Intellectual Property (IP) is critical in maintaining the advantage generated by an engineer’s’ novel design/s or processes. Engineers, fabricators and designers are often involved at the sharp end of innovation, creating new designs and processes as solutions to complex engineering problems. Quite often, their importance is undervalued by those who have created them. Patents form a critical part of ensuring that engineers get just reward for their efforts, but few follow through to actually obtaining one. Engineers are often modest by nature and don’t see the true value in their creations, often failing to submit an application for a patent.

Sometimes the engineer assumes that the potential financial rewards of obtaining a patent do not justify the costs, especially if the demand in the market is unknown. Basically, the question is asked “is it worth all of the effort?”. Patents can typically cost thousands of dollars, mostly in the form of patent lawyers fees, and can take over a year to obtain a patent grant.

If the designer or engineer decides to go through with the patent application, there are still some potential pitfalls which need to be considered. One critical error that engineers often make is to divulge critical aspects of a design to other people in the industry which can mean that it has already made it into the “public domain”. This may jeopardise the patent application. So, what does this mean if you are divulging critical information to a consulting firm while working on a project?

Consulting engineers are bound by nondisclosure agreements as found in a Short-form Model Conditions of Engagement issued by the Institute of Professional Engineers New Zealand (IPENZ). The consulting firm may not use the information for “purposes unrelated to the Services” which includes using novel designs for other similar jobs. So, any Intellectual Property brought in by the client, remains the property of the client. However, any Intellectual Property generated during the course of a job will be jointly owned by the client and the consultant. Either party are allowed to use it free of charge thereafter. This means that the consultancy can use this information for other jobs. Therefore, if an existing novel design, which is intended to be patented, is to have value added by a consultant during a job, it is important to establish an agreement before commencing work.

There are many things that may deter engineers when deciding whether to apply for a patent or not. However, it would be prudent to conduct a bit of research beforehand and make an informed decision before dismissing the option out of hand.