NPPE Intellectual Property in Practice 4 — Questions and Answers
Question 1: An engineer employed full-time at a firm develops a novel device at home on weekends using no company resources. The invention is unrelated to the company's business. Who owns the patent rights?
- The employer, because any invention made during employment belongs to them
- The engineer, because they used no company resources and it is unrelated to company business (Correct answer)
- The engineer and employer jointly, as employment creates automatic co-ownership
- The government, because publicly funded research underpins all inventions
Correct answer: The engineer, because they used no company resources and it is unrelated to company business
When an employee invents independently of their job duties using no company resources, they generally retain ownership of the invention.
Question 2: A firm discovers a competitor is using a manufacturing process that was kept as a trade secret. The competitor independently developed the same process through legitimate research. Is this trade secret misappropriation?
- Yes, because using the same process without a license is always misappropriation
- No, because independent development is a recognized defense against trade secret claims (Correct answer)
- Yes, because coincidental development proves the competitor must have accessed the secret
- No, but only if the competitor files for a patent before the original firm does
Correct answer: No, because independent development is a recognized defense against trade secret claims
Independent development is a complete defense to trade secret misappropriation; trade secret law does not prevent others from discovering the same information on their own.
Question 3: Two engineers at a firm contribute to developing a patentable invention. Engineer A conceived the core idea; Engineer B only built and tested the prototype without contributing any new concepts. Who qualifies as an inventor on the patent application?
- Both A and B, because building the prototype is essential to the invention
- Engineer A only, because inventorship is based on conception of the claimed idea, not reduction to practice (Correct answer)
- Engineer B only, because hands-on construction proves inventive contribution
- Neither, because corporate inventions belong to the firm, not individuals
Correct answer: Engineer A only, because inventorship is based on conception of the claimed idea, not reduction to practice
Inventorship is determined by who conceived the subject matter of the claims; merely constructing or testing does not make someone a co-inventor.
Question 4: An engineering firm licenses its patented technology to a manufacturer under an exclusive license. The manufacturer later sublicenses the technology to a third party without the patent holder's consent. What is the likely outcome?
- The sublicense is valid because exclusive licensees have full ownership rights
- The sublicense is invalid unless the original license explicitly permitted sublicensing (Correct answer)
- The patent holder forfeits their rights by granting an exclusive license
- The third party acquires ownership of the patent through sublicensing
Correct answer: The sublicense is invalid unless the original license explicitly permitted sublicensing
An exclusive licensee generally cannot sublicense the technology without express authorization from the patent owner.
Question 5: An engineer copies a substantial portion of technical drawings from a published engineering textbook into a client proposal without permission. Which IP right is most directly implicated?
- Patent infringement, because technical drawings are patentable
- Copyright infringement, because original expression in published works is protected (Correct answer)
- Trade secret misappropriation, because textbooks contain proprietary knowledge
- Trademark infringement, because the publisher's name appears on the drawings
Correct answer: Copyright infringement, because original expression in published works is protected
Technical drawings fixed in a tangible medium are protected by copyright, and reproducing them without permission infringes that right.
Question 6: A patent expires after its full term. A competitor immediately begins manufacturing and selling the previously patented device. Can the original patent holder stop this?
- Yes, because moral rights in an invention last forever
- Yes, by filing for a patent extension within 90 days of expiration
- No, because the invention enters the public domain and may be freely used by anyone (Correct answer)
- No, but only if the competitor files a new patent application first
Correct answer: No, because the invention enters the public domain and may be freely used by anyone
Once a patent expires, the invention enters the public domain and the former patent holder has no legal right to prevent others from using it.
Question 7: During a joint venture, two firms collaborate and produce an invention. Their agreement is silent on IP ownership. Under U.S. patent law, what is the default ownership arrangement?
- The firm that employs the lead inventor owns 100% of the patent
- Each firm owns an equal undivided interest and may independently exploit the patent without the other's consent (Correct answer)
- The government owns jointly funded inventions by default
- The firm with the larger capital contribution owns the majority share
Correct answer: Each firm owns an equal undivided interest and may independently exploit the patent without the other's consent
Under U.S. law, joint patent owners each hold an equal undivided interest and may independently practice or license the patent without accounting to the other co-owner.
NPPE Intellectual Property in Practice 4
An engineer employed full-time at a firm develops a novel device at home on weekends using no company resources.
The invention is unrelated to the company's business.
Who owns the patent rights?