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Intellectual Property: Three Primers for Acquisition Practitioners

Protecting Your Company’s Intellectual Property: A Practical Guide to Trademarks, Copyrights, Patents & Trademarks  Deborah E. Bouchoux; AMACOM, 2001; 261 pages, $29.95 (hardcover); ISBN 0-8144-0601-7

Patent, Copyright & Trademark: An Intellectual Property Desk Reference, 4th ed.  Stephen Elias and Richard Stim; Nolo, 2001; 496 pages, $34.95 (paper); ISBN 0-87337-601-3

Web & Software Development: A Legal Guide, 3d ed.  Stephen Fishman; Nolo, 2002; 400+ pages, $44.95 (paper); ISBN 0-87337-645-5

Reviewed by Vernon J. Edwards

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  Some of the most important and least understood policies in Federal acquisition are the policies about intellectual property. Have you read Federal Acquisition Regulation (FAR) Part 27, Patents, Data, and Copyrights, or the Defense Federal Acquisition Regulation Supplement (DFARS) Part 227 of the same name? Have you read the applicable solicitation provisions and contract clauses? Do you understand what they mean?

Acquisition practitioners face two problems when it comes to intellectual property policies: first, the regulations and associated solicitation provisions and contract clauses are voluminous and complex; second, the regulations, provisions and clauses pertain to matters that are generally not well understood among acquisition practitioners—the law of trade secrets, copyrights, and patents. These laws are embodied in statutes and court decisions that provide different, but related, protections for intellectual property, and that comprise a distinct and important field of highly specialized legal practice.

The intellectual property issues that most frequently confront practitioners have to do with ownership and government rights in inventions, technical data and computer software used or produced under government contracts and delivered to the government. The government has legitimate needs in these regards, but contractors have important economic interests at stake. Current policy is the product of many years of government-industry debate, negotiation and litigation, but the rules are still far from being clear to most people. Even the experts admit that the rules are difficult to decipher and, in some cases, unsettled.

Most acquisition practitioners have neither the time nor the wherewithal to become steeped in intellectual property law or in government policies about patent rights, data rights and copyrights; they must rely on specialists, who are mainly attorneys. But practitioners should understand certain basic concepts of intellectual property law so that they can grasp the issues, ask the right questions, and understand the answers. What they need is an affordable primer about intellectual property, and here are three books that fit that bill: Protecting Your Company’s Intellectual Property: A Practical Guide to Trademarks, Copyrights, Patents & Trade Secrets, by Deborah E. Bouchoux; Patent, Copyright & Trademark: An Intellectual Property Desk Reference, 4th ed., by Stephen Elias and Richard Stim; and Web & Software Development: A Legal Guide, 3d ed., by Stephen Fishman. All three are written for laypersons in plain English and will provide readers with a good foundation in the basics of intellectual property law.

As the title suggests, Protecting Your Company’s Intellectual Property is addressed to the owners and employees of companies that produce intellectual property and that would gain some economic advantage from protecting it. In a brief introduction, the author explains the four types of intellectual property—trademarks, copyrights, patents and trade secrets—and their uses. She then goes on in a series of chapters to discuss each type of property in more detail, explaining what can be protected under each category, the nature of the protection afforded, and what must be done to obtain and maintain the protection. She also explains the concept of unfair competition and general rules about the work products of employees and independent contractors, and discusses the importance of sound intellectual property audit practices and infringement policies. In an appendix, she provides a list of web sites that the reader can visit to obtain more information. This is a good book for those who want only a very basic understanding of intellectual property law. At 243 pages (excluding the appendix and index) it contains a manageable amount of information and is written in a very clear and brisk prose style. If you skip the chapters on trademark law (which is not a big issue in government acquisition), you can easily read the whole think over a single weekend (after the Superbowl).

Patent, Copyright & Trademark: An Intellectual Property Desk Reference, 4th ed., is for those who want more in-depth, but not overly technical, coverage of intellectual property law in the form of a useful desk reference. Organized in four parts, the book discusses each of the four types of intellectual property in three or four chapters. Each of the four parts begins with an overview of the topic, in which the authors explain basics such as: “What makes something a trade secret?” “Who owns a copyright?” and “What types of inventions qualify for a patent?”. At the end of each overview the authors provide references to other books and to web sites. The overview is followed by a chapter of “definitions,” which are actually brief discussions of topics like: “copyright and trade secret law compatibility,” “industrial espionage,” “nondisclosure agreement,” “copies, meaning under copyright law,” “derivative work,” “co-inventors,” “infringement of patent,” “marking of an invention,” and “processes (or methods) as patentable subject matter”. This feature of the book will be very handy when you encounter an unfamiliar intellectual property term or topic in conversation or in written material and need a quick brief on what it means. Each part of the book also includes the text of some of the relevant statutes: the Uniform Trade Secrets Act and the Economic Espionage Act of 1996; the Copyright Act of 1976, as amended; the Patent Act (35 U.S.C. §§ 101-376); and the Lanham Act governing trademarks (15 U.S.C. §§ 1051-1127). And the parts on copyrights, patents and trademarks include sample forms and applications. One unfortunate shortcoming of the book is its lack of an index.

Practitioners who buy or sell information technology services that involve software or Web development may want to look at Web & Software Development: A Legal Guide, 3d ed. Special issues arise in copyrights, patents, trademarks and trade secrets as they pertain to software and Web development, and this book addresses those issues in clear and understandable terms. The exposition is more detailed than in either of the two books discussed above, but is easily understandable to laypersons. Although addressed mainly to producers, it can also help buyers understand how intellectual property laws apply to software and Web development. The chapter on software and website licenses should be especially helpful to buyers.

You will not become an intellectual property expert by reading these books, not even if you read all three of them. However, reading any one of them should make you sufficiently well-informed to ask an expert intelligent questions about intellectual property issues in government contracting. Even after reading them you will still have to struggle with FAR Part 27 or DFARS Part 227, the pertinent provisions and clauses, and other policy documents, such as DOD 5010.12-M and DODD 5230.25, but you will be better prepared to figure out what it all means.

Vernon J. Edwards is a researcher, writer, and teacher of federal contracting.  Copyright © 2002 by Vernon J. Edwards 


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