NPPE Intellectual Property in Practice 5 — Questions and Answers
Question 1: An engineering company in the US wants to protect its patented product in Canada and Germany. Which mechanism allows it to file a single international application covering multiple countries?
- The Madrid Protocol
- The Patent Cooperation Treaty (PCT) (Correct answer)
- The Berne Convention
- The Paris Convention's automatic extension clause
Correct answer: The Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) allows inventors to file one international application that can enter the national phase in over 150 member countries.
Question 2: An engineer uses open-source software licensed under the GNU General Public License (GPL) in a proprietary product and distributes that product commercially without releasing the source code. What is the risk?
- No risk, because open-source licenses cannot be enforced commercially
- The engineer may face copyright infringement claims and be required to release the product's source code under GPL terms (Correct answer)
- The engineer must pay a royalty but may keep the source code proprietary
- The GPL only restricts government contractors, not private firms
Correct answer: The engineer may face copyright infringement claims and be required to release the product's source code under GPL terms
The GPL is a 'copyleft' license requiring that any distributed derivative work also be released under the GPL, including disclosure of source code.
Question 3: A prospective client asks an engineering firm to sign a non-disclosure agreement (NDA) before sharing project details. The engineer signs but later discloses confidential specs to a subcontractor without written authorization. What professional and legal consequence may follow?
- None, because subcontractors are implicitly authorized to receive all project information
- Breach of contract and potential trade secret liability, as well as a violation of professional confidentiality obligations (Correct answer)
- Only a professional ethics violation with no legal consequence
- The NDA is void because engineering information cannot be kept confidential
Correct answer: Breach of contract and potential trade secret liability, as well as a violation of professional confidentiality obligations
Unauthorized disclosure under an NDA constitutes breach of contract and can expose the firm to trade secret claims and professional discipline.
Question 4: An engineer discovers that a patent application they are assisting with omits a prior art reference they know to be highly relevant. What is the correct action?
- Ignore it, because the patent examiner is responsible for finding prior art
- Disclose the reference to the patent attorney to ensure it is submitted to the USPTO, fulfilling the duty of candor (Correct answer)
- Withdraw from the project without disclosing the reason
- File the application quickly before the prior art becomes publicly searchable
Correct answer: Disclose the reference to the patent attorney to ensure it is submitted to the USPTO, fulfilling the duty of candor
Applicants and their representatives owe the USPTO a duty of candor and good faith, which requires disclosing known material prior art.
Question 5: A company's logo has been used continuously in commerce for 30 years but was never federally registered. A competitor begins using a nearly identical logo. What protection, if any, does the original company have?
- None, because trademark protection requires federal registration
- Common law trademark rights based on continuous use, which may allow them to stop the competitor in the geographic area where they operate (Correct answer)
- Only state criminal remedies, not civil ones
- Full federal trademark rights automatically after 10 years of use
Correct answer: Common law trademark rights based on continuous use, which may allow them to stop the competitor in the geographic area where they operate
Common law trademark rights arise from actual use in commerce and provide protection in the geographic areas where the mark has been used, even without federal registration.
Question 6: An engineer assigns all IP rights in a design to a client under a written agreement. After the project, the engineer wants to use that same design in their portfolio. Which statement is correct?
- The engineer retains the right to display it because moral rights cannot be assigned
- The engineer must obtain permission from the client, who now owns the IP, before using the design publicly (Correct answer)
- Portfolios are exempt from IP restrictions under fair use doctrine
- The assignment is void if the engineer created the design before signing the contract
Correct answer: The engineer must obtain permission from the client, who now owns the IP, before using the design publicly
Once IP rights are validly assigned, the assignee owns them, and the original creator needs the new owner's permission to publicly display or reproduce the work.
Question 7: A software tool created by an engineering firm qualifies for both patent protection (novel algorithm) and copyright protection (source code). The firm decides to pursue both. Is this permissible?
- No, a work can only be protected under one form of IP law at a time
- Yes, the same work can receive simultaneous protection under multiple IP regimes that cover different aspects (Correct answer)
- No, software is explicitly excluded from both patent and copyright law in the US
- Yes, but only if the firm waives trade secret protection for the same software
Correct answer: Yes, the same work can receive simultaneous protection under multiple IP regimes that cover different aspects
Different IP doctrines protect different aspects of a work—patents protect novel functional methods while copyright protects the expressive code—so they can coexist.
NPPE Intellectual Property in Practice 5
An engineering company in the US wants to protect its patented product in Canada and Germany.
Which mechanism allows it to file a single international application covering multiple countries?