CIVIL ENGINEERING & PATENT LAW  
This website illustrates how Civil Engineers may make greater use of the Global Patent System to Promote Progress in their Field.
The American Founders included Patent Rights in the United States Constitution to Promote Progress.
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Overview of Patent Prosecution in the U.S.
U.S. Patenting
Inventing       

     Every civil engineer is a potential inventor, whether that civil engineer works in the design office or in the field.  Each time engineers produce innovative work, and advance the pace of technological development, then those individuals may qualify as inventors under U.S. patent law.  The patent laws view innovation very broadly.  A civil engineering machine (tangible thing including parts or devices), manufacture (article transformed from raw materials), composition of matter (including two or more substances), or process (methods such as construction methods) can all earn U.S. patents.  Open patent eligibility for civil engineering methods probably provides the greatest surprise to most civil engineers.  Because civil engineering methods deal with tangible materials, they have little problem overcoming the patent eligibility hurdles over which many abstract disciplines (for example, software patents) stumble.       

     So, civil engineers can patent processes such as construction methods and rehabilitation methods.  Civil engineering plans tell contractors what actions to perform in the field, and if the construction steps described in those plans break out of conventional techniques, that construction method may warrant a U.S. patent.  Often, a complex problem having no clear solution may set the stage for possible patenting.  For example, imagine that a design team won a project with a valued client to do a rehabilitation of seismic bearings.  As the designers go to work on the plans, they discover that the complex geometry of the supported structure, maybe compounded by a pronounced skew or curved girder layout, makes the design difficult or seemingly impossible to accomplish within the estimated cost.  Before possibly straining their longstanding relationship with this client with the bad news of increased costs, the design team pulls in some more firm expertise, including some technical heavy-hitters.  Then at a meeting, a team member proposes an innovative series of steps that razes the apparently insurmountable difficulties and makes the job look easy.  This is the type of moment, when the creative solution knocks down the impasse, when the civil engineer may rise to the level of an inventor.               

     For those still skeptical about whether construction methods can amount to patentable processes, consider some of the methods earning patents in other fields.  For example, look at the purported "invention" of US 7,222,078.  Certainly if gathering information with a fax machine qualifies for a patent, innovative civil engineering techniques may also meet patenting criteria.                  

    
The design team should do two things when their work begins to show signs of innovating beyond conventional methods.  First, do NOT tell anyone outside of the enterprise.  Public disclosure before patent filing, in general, threatens patentability.  Second, tell your supervisor.  Hopefully, the civil engineering enterprise has established some sort of process for evaluating engineering work for possible patenting.  If not, key technical experts may use their judgment to determine whether they feel the proposed innovation rises above conventional techniques (although more objective and established criteria would be better than this subjective assessment).  The design team may consider submitting a very brief disclosure of the proposed innovation to the evaluating experts, along with any readily available drawings or material.  Showing the difficulty of the problem itself, before disclosing the method that solved it, may alone convince technical gurus that innovation has occurred.  As a side note, letting others think about the problem itself, before telling them the solution, may avoid making the solution seem easy in hindsight.  Hindsight reasoning, as touched on again below, comprises one of the great cardinal sins of patent law.  Unfortunately, patent examiners, judges, and juries habitually commit this transgression.       

    
After the technical experts evaluate the proposed innovation, the issue should go to enterprise decision makers for a final determination.  Patenting costs money, and business leaders and in-house counsel should weigh the importance of protecting the innovation against the costs of patenting before proceeding.  If the innovation could help the civil engineering enterprise win projects or give leverage to team with other parties on projects, then patenting probably makes sense.  Exclusion provides the real value in patents:  a patent holder has a legal right to exclude all others from making, using, selling, offering to sell, or importing the patented innovation.  So, if others would likely want to use the innovation, it is probably worth patenting.  Also, even if the enterprise may never use the patented method itself (e.g., the method falls outside of the type of work usually performed), the patent may still provide value to the enterprise if some other entity would want to practice the technology.  For example, these other entities provide possible future licensees for the technology.  Common sense probably provides the bottom line here:  the stronger the innovation, the more likely the enterprise should patent it.          

    
For mediocre innovations that fall into that gray area between clear value and negligible value, the enterprise can consider other options.  Perhaps the design team should publish an article on the innovation, to at least clearly put the innovation into the public domain, thereby preventing others from patenting the technology.  Also, business leaders can wait to see how the proposed innovation develops before committing resources to patenting it, while still refraining from disclosing the innovation outside of the enterprise.  The enterprise could also decide to keep the innovation as a trade secret, although that often amounts to shaky legal protection.  The problem with trade secrets stems from what happens once the trade secret leaks out and third parties start using the innovation:  trade secret law likely cannot stop that use.  Whereas patents offer strong legal protection, trade secrets offer weak protection, and most patent commentators preach great caution in relying on trade secrets to protect key innovations.  Also, when in doubt, the enterprise can consider initially filing a patent application, to at least keep the option of obtaining a patent open as the enterprise continues to work through its evaluation of the innovation.        

    
Let's assume that the technical gurus look at the seismic bearing rehabilitation work and feel the construction method innovates beyond conventional techniques.  Then, the management and legal teams consider the innovation, and believe it could bring significant leverage for winning projects and teaming with successful contractors, which would likely justify patenting costs.  Accordingly, the enterprise decides to patent the innovation.  As a quick aside, patenting the innovative bearing rehabilitation method in this example may coexist with other innovations.  The bearing materials or the bearing arrangement itself may also amount to patentable inventions, or may even already be patented by others.  And that is okay.  Each patented innovation often relates to or builds upon another patented machine, manufacture, composition of matter, or process.  As long as the proposed innovation does not depend solely on another claimed innovation for its patentability, then the proposed innovation may earn a patent.  For example, although the design team may have initially developed the present method to install a previously patented bearing, the method itself may still achieve patentability if it possesses a unique innovation that is independent of the bearing itself (e.g., you could rehabilitate many types of bearings using this method). 

Preparing the Patent Application       

     Upon deciding to file a patent application, the enterprise should immediately move the matter to its patent attorney.  The patent attorney, whether an in-house lawyer or retained counsel from outside of the enterprise, will docket a desired filing date for the patent application based on the enterprise's instructions.  The enterprise should send any readily-available information regarding the proposed invention to the patent attorney.  Many organizations use invention disclosure forms, which provide a template for helping inventors in describing their innovations.  In general, the disclosure procedure should not burden the inventors.  The inventors should provide readily-available material for use by the patent attorney, along with a concise description of the innovation.  The patent attorney will review the material and contact the inventors for an interview to discuss the invention, subject to the enterprise's guidelines for contacting its employees.  Although patent attorneys may need to ask some follow-up questions after the interview, they should strive to avoid unduly burdening inventors with requirements, as the design team will surely have many other demands on its time.      

    
Under the new patent law, the The Leahy-Smith America Invents Act, the United States will move from a first-to-invent regime to a first-to-file regime in 2013.  Without going into great detail on the new law, which lawmakers enacted in 2012, the civil engineering technology enterprise should file a properly drafted patent application as soon as possible.  For most American inventors, this means filing with the United States Patent and Trademark Office (USPTO), although other options exist such as filing an international application under the Patent Cooperation Treaty (see Patenting Worldwide).        

     Once the patent attorney understands the invention based on the inventors' disclosure and brief discussions with the inventors, drafting the patent application usually proceeds relatively quickly.  For example, once the patent attorney understands the innovation associated with the bearing rehabilitation example given above, that lawyer (if knowledgeable in civil engineering) can quickly fill in conventional knowledge already known in the art that relates to the invention.  Not surprisingly, the best-suited patent attorneys to work on civil engineering inventions are lawyers with strong technical backgrounds in civil engineering.      

     Based on statutory requirements, the USPTO has published hundreds (if not thousands) of pages of guidance for examining patenting applications for use by its corps of Examiners.  Without going into the details of those requirements, the patent application must basically clearly describe the invention.  Patent Applicants must present claims with the patent application prior to examination, which comprise the proposed description of the scope of legal protection desired (the USPTO Examiner may reject these claims).  When a patent is enforced against an accused infringer, a judge or jury will compare the allegedly infringing method or product to one or more claims of the asserted patent, while using the rest of the patent application to interpret those claims.  The rest of the patent application, at least for civil engineering innovations, typically includes a written specification and drawings.  A judge or jury will often interpret patent claims according to the understanding of a person of ordinary skill in the art, which in the case of civil engineering would generally amount to someone familiar with civil engineering principles and terminology.  Therefore, in addition to relying on the plain and ordinary meaning of words, civil engineering patent applications can also utilize terms of art commonly used in the field (e.g., terms such as deflection, curvature, stiffness, moment, shear, necking, and ductility) and having unambiguous and precise meanings that one of ordinary skill in civil engineering would know.  The patent application may also provide brief definitions of terms of art, as a guard against ambiguity that could be cast someday in the future by opposing counsel.  Therefore, because understanding the civil engineering field will clearly help in drafting the patent application, employing a patent attorney with a strong civil engineering background usually optimizes this process.      

    
Once the patent attorney finishes drafting the patent application, the lawyer sends the draft to the inventors for review.  To maximize efficiency in the review, inventors should focus their review on the technical correctness of the patent application.  Because case law has created countless nuances in interpreting claims and their supporting patent applications, many aspects of patent application drafting will likely appear unusual to the reviewing inventor.  Many of these unusual aspects of patent drafting focus on preventing courts from interpreting inventions very narrowly and thus ruling against the patent owner.  To sidestep tangential discussions over the tangled legal jurisprudence behind patent drafting, inventors should focus on making sure the patent application describes the technical concept correctly, instead of spending effort on non-technical details.  The patent attorney then revises the application based on any revisions from the inventors, and typically asks that the inventors sign a declaration and an assignment prior to filing the application and signed papers with the USPTO. 

Prosecuting the Patent Application      

    
Of the thousands of Patent Examiners working at the USPTO, only about twenty or so probably spend the majority of their time evaluating civil engineering patent applications.  The relatively small number of filed civil engineering technology applications naturally accounts for the low amount of Examiners dedicated to this field.  Although backlog varies, civil engineering inventors should expect to wait about two years for an Examiner to pick up their application for review.  Inventors should also expect to be at least initially rejected by the USPTO as well.      

     USPTO Examiners typically communicate with Applicants or their representatives through Office Actions, which include detailed consideration of the claims presented by Applicants in their applications.  Examiners cite prior art, often including prior issued patents and published patent applications, to show that aspects of the claimed invention already exist in the public domain (the term "prior art" generally encompasses everything that is already known in a given field).  For example, in the case of the bearing rehabilitation method, the Examiner might cite references describing construction methods for bridge bearings as prior art for rejecting that patent application.  The relatively small amount of civil engineering patenting activity, though, at least offers civil engineering inventors the advantage of facing a relatively small amount of prior art in most areas of their field.  For more on overcoming prior art rejections, please see Evolving Patent Laws (CE News, June 2012)       

    
The Applicant then responds to the Office Action by arguing against the rejection or by amending the claims to avoid the cited prior art, or both.  Often, when Applicants narrow the scope of their claims (e.g., be more specific in their claims), they avoid prior art that previously rendered their claims unpatentable.  For example, for the bearing rehabilitation method, the Applicant may narrow the claims to further clarify and add additional shoring and jacking steps that solved the initial design problem and that were not specified in the prior art.  Amending the claimed invention in view of the prior art also helps to balance protecting the Applicant's invention with the USPTO Examiner's mission to protect the public domain from junk patents.      

    
A few iterations of Examiner's Office Actions and Applicant's arguments and amendments usually culminates in either the Examiner issuing a Notice of Allowance, or the Applicant appealing the Examiner's decision to an appeals board internal to the USPTO.  Patent law also offers further appeal to federal courts to the dissatisfied Applicant.  Because the USPTO appeals process offers a long wait (as long as five or more years) and an often negative result to Applicants, Applicants should strive to use claim amendments to work their way to allowance, while still preserving valuable claim scope for their inventions.      

    
Upon receiving a Notice of Allowance, the Applicant then pays an issue fee to the USPTO, and the agency will issue the patent.  The USPTO actually recoups all of its operating expenses through its fees, which total at least several thousand dollars per patent.  Although the USPTO hosts further proceedings, for example for correcting or challenging issued patents, issue usually marks the end of patent acquisition and puts the patent into force in the United States (for patenting elsewhere in the world, please see Patenting Worldwide). 

     Although grounds for invalidation may threaten a United States patent, a patent grants its owner at least a strong presumption of a legal right to exclude others from practicing the patented invention in United States territory.  The civil engineering technology enterprise may then use the patent as leverage, for example, to win projects or to be invited onto winning design teams based on its exclusive right to its patented innovation.  The enterprise may also derive revenue from the patent by licensing or even assigning the patent, if such demand exists in the marketplace and if such transfer serves the interests of the enterprise.  The enterprise may also assert the patent in U.S. federal courts for monetary damages or an injunction against an accused infringer, if circumstances warrant this risky and expensive exertion of rights.

 

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