1st Edition

Contracts for Engineers Intellectual Property, Standards, and Ethics

By Robert Hunter Copyright 2012
    368 Pages 16 B/W Illustrations
    by CRC Press

    Engineers encounter different types of contracts at nearly every turn in their careers. Contracts for Engineers: Intellectual Property, Standards, and Ethics is a tool to enhance their ability to communicate contractual issues to lawyers—and then better understand the legal advice they receive.

    Building on its exploration of contracts, this book expands discussion to:

    • Patents, copyrights, trademarks, trade secrets, and other intellectual property issues
    • Development of standards and the bodies that govern them, as well as conformity assessment and accreditation
    • Ethics at both the micro and macro levels—a concept under major scrutiny after several major disasters, including the Gulf of Mexico oil spill, the collapse of Boston’s Big Dig, and a coal-mining accident that resulted in many deaths

    With a brief introduction to common law contracts and their underlying principles, including basic examples, the book presents a sample of the Uniform Commercial Code (UCC) regarding the sale of goods. It evaluates elements of the different contracts that engineers commonly encounter, such as employee and associated consulting agreements and contracts involved in construction and government.

    Approaching intellectual property from a contract perspective, this reference focuses on the many different types of patents and their role in commerce. It touches on the application of trademarks and recent developments in the use of copyright as a form of contract and explains the process of obtaining patents, including the rationale for investing in them. Ethical standards receive special attention, which includes a review of several prominent professional codes of ethics and conduct for both organizations and individual engineers, particularly officers and higher-level managers.

    Common Law Contracts

    Definition of Common Law Contract

    Statute of Frauds

    Parties (Natural Persons)

    Parties (Artificial Persons)

    Classification of Contracts

    Purposes (Subject Matter) of Contract


    Promissory Estoppel

    Valid, Void, Voidable, and Unenforceable Contracts

    Contract Formation Process (Offer and Acceptance)



    Time of Contract Creation

    More Complex Negotiated Contracts

    Incomplete Agreements

    Integrated Agreements

    Mistakes, Mutual Mistakes, Fraud, and Duress

    Compact Summary of Case: Austin Instrument v. Loral Corp. Court of Appeals of New York, 1971 (Based on Published Decision)

    Standardized Agreements as Integrated Agreements

    Contents of the Resulting Contract


    Unconscionable Clauses and Contracts

    Breach of Contract

    Contracting on the Web

    Electronic Signatures in Global and National Commerce (ESIGN)


    Additional Reading


    Sales Contracts under the Uniform Commercial Code


    UCC Distinguishes between Agreement and Contract

    Statute of Frauds under the UCC

    Parties to UCC Contracts

    Firm Offers and Acceptance

    Incomplete Agreements

    Integrated Agreements

    Interpretation of Integrated Agreements, including Duress (Coercion)


    Substantial Performance and Excused Performance

    Unconscionable Contract or Clause

    Breach of Contract and Remedies for Breach

    Contracting on the Web

    Compact Summary of Case: ProCD, Inc. v. Zeidenberg, United States Court of Appeals, Seventh Circuit, 1986

    United Nations Convention on Contracts for the International Sale of Goods (CISG)




    Contracts of Special Interest to Engineers


    Employment Agreements

    Private Sector Construction Contracts

    Federal Government Contracts

    Compact Summary of Case: Bonneville Associates, Limited Partnership, et al., Petitioners v. David J. Barram, Administrator, General Services Administration—On Petition for a Writ of Certiorari to the United States Court of Appeals for the Federal Circuit (No. 98-1688 in the Supreme Court of the United States)


    Intellectual Property: Emphasis on Patents


    Patent as Contract

    Patent as a Grant

    Organization and Functions of the U.S. Patent and Trademark Office (PTO) Utility Patents

    Modern Development of Patent Law

    Patent Reform

    Origin of the Court of Appeals for the Federal Circuit

    Patenting of Life Forms

    Computer Programs and Business Methods


    Shop Right

    Anatomy of a U.S. Utility Patent

    Plant Patents

    Design Patents

    Compact Summary of Case: Sears, Roebuck & Co. v. Stiffel Co., 376

    U.S. 225 (1964)

    Patent Clauses in Government Contracts

    Business Reasons for Applying for a Patent


    Additional Reading


    Patent Processes


    Starting the Process

    Making the Decisions to File and How to File

    Prosecution of Application as Contract Negotiation

    Provisional Application for Patent

    Divisional Applications

    Final Rejection

    Continuation or Continuation-in-Part Applications

    Abandonment, Voluntary and Involuntary

    Issue of Patent and Possible Extension of Term

    Reexamination of Patents

    Promotion and Exploitation of a Patent

    Sale of a Patent

    Licensing of a Patent

    Licensing in Patent Pools

    Alternative Dispute Resolution (ADR)






    Copyright as Contract

    Compact Summary of Case: Eric Eldred et al., Petitioners v. John D. Ashcroft, Attorney General (No. 01-618). Argued October 9, 2002; decided January 15, 2000

    Survey of Copyright Law in Title 17 U.S.C

    Additional Notes on Copyright and Computer Programs Collected Algorithms from ACM (Association for Computing Machinery)

    Survey of Noncopyright Law in Title 17

    Federal Acquisition Regulation (FAR) Subpart 27.4—Rights in Data and Copyrights


    Trade Secrets


    Basic Legal Requirements

    Contractual Nature of Trade Secrets

    Historical Overview

    Uniform Trade Secrets Act

    A Departing Employee Action

    Economic Espionage Act

    Public Disclosures of Trade Secrets

    Disclosure by Publication, Other Media, or Speeches, etc.

    Reverse Engineering

    Policy and Management Issues in Trade Secrets

    Options for Selecting Trade Secret versus Other Forms of IP


    Use and Abuse of Nondisclosure Agreements (NDAs)

    Compact Summary of Case: Smith v. Dravo Corp., No. 10683, United States Court of Appeals Seventh Circuit, April 10, 1953





    Definitions of the Marks (15 U.S.C. 1127)

    Selection and Use of Mark

    Registration and Use of Marks

    Confusing Similarity

    Examination of Marks in the PTO

    Infringement of Mark

    Maintenance and Policing of Marks

    Secondary Meaning and Trade Dress

    Compact Summary of Case: Two Pesos, Inc. v. Taco Cabana, Inc., Supreme Court of the United States, 505 U.S. 763 (1992)

    Cybersquatting on Internet Domain Names

    Foreign Country Trademarks

    Practical Trademark Issues in the European Union


    Standards, Codes, and Regulations


    Aims of Standards

    Types of Standards

    Quality of Standards

    International Standards

    Regional Standards

    National Standards

    Company Standards

    Typical Format of a Standard

    Access to Standards




    Standards Bodies and Their Products


    Overview of International Standards Bodies

    Apex International Standards Bodies (ISO, IEC, ITU)

    Regional Standards Bodies

    Council for Harmonization of Electrotechnical Standards of the Nations of the Americas (CANENA)

    National Standards Bodies

    Traditional Standards Developing Organizations (SDOs)

    Consortia Standards Bodies




    Development of Standards, Codes, and Regulations


    Development of Standards by Conventional Bodies (SDOs)

    Compact Summary of Case: Allied Tube and Conduit Corp. v. Indian Head, Inc.

    Due Process in Standard Setting

    ISO/IEC Standards Development Rules

    Standards Process in the International Telecommunications Union (ITU)

    Common Patent Policy for ISO/IEC/ITU

    Consortia Methods of Standard Setting

    Development of Codes

    Development of Federal Regulations in the United States

    Development of Regional Regulations in the European Union (EU)


    Conformity Assessment


    Conformity Assessment Technology and Skills

    Private Sector Conformity Assessment Bodies in the United States

    Compact Summary of Case: American Society of Mechanical Engineers v. Hydrolevel, Inc. 456 U.S. 556 (1982)

    Federal Conformity Assessment in the United States

    Conformity Assessment in International Trade

    Regional Approaches to Conformity Assessment





    Federal Accreditation Systems in the United States

    Nationally Recognized Testing Laboratory (NRTL) Program

    National Voluntary Laboratory Accreditation Program (NVLAP)

    National Voluntary Conformity Assessment Systems Evaluation (NVCASE)

    Private Accreditation Bodies in the United States

    ANSI and the ANSI−ASQ National Accreditation Board (ANAB)

    American Association for Laboratory Accreditation (A2LA)

    International Accreditation Bodies

    Regional Accreditation Bodies



    Ethics for Individual Engineers


    IEEE Code of Ethics

    National Society of Professional Engineers: Code of Ethics for Engineers

    Texas Engineering Practice Act and Rules (Effective June 13, 2010)

    Subchapter C: Professional Conduct and Rules

    Compact Summary of Case: Expert Witness Appears in Court of Another Jurisdiction

    Standards Engineering Society (SES) Code of Ethics

    Underwriters Laboratories (UL) Code of Ethics for UL Standards Technical Panel (STP) Members

    Institute of Electrical and Electronics Engineers (IEEE) and Association for Computing Machinery (ACM) Software

    Engineering Code of Ethics and Professional Practice


    Applications of the IEEE/ACM Code of Ethics and Professional Practice


    Other Resources on Ethics


    Ethics for Organizations


    The Foreign Corrupt Practices Act of 1977 (as Amended)

    Compact Summary of Case: Kirkpatrick Co. v. Environmental Tectonics Corp., 493 U.S. 400 (1990), Certiorari to the United States Court of Appeals for the Third Circuit No. 87-2066


    BP/Deepwater Horizon Blowout in the Gulf of Mexico

    BP’s Role in the Accident

    Transocean’s Role

    Halliburton’s Role

    Role of Cameron International

    Role of the Regulator: The Minerals Management Service (MMS)

    Summary of the Deepwater Horizon Accident

    Excerpts from the National Oil Spill Commission Report

    Organizational Ethics for Government Contractors


    Additional Reading


    Appendix 1: United Nations Convention on Contracts for the International Sale of Goods

    Appendix 2: The Associated General Contractors of America (AGC of America) Summaries of American Council of Engineering Companies (ACEC) and the Engineering Joint Contracts Documents Committee (EJCDC) Standardized Contracts for Engineering Projects

    Appendix 3: Title 48, Code of Federal Regulations—Federal Acquisition Regulations System

    Appendix 4: Outline of the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

    Appendix 5: ACM Code of Ethics and Professional Conduct


    Robert D. (Bob) Hunter, PE, lives in Austin, Texas. For more than 30 years, he has been involved in standards, conformity assessment, and accreditation as a company employee and as a consultant to several technical and computer companies. A recipient of the IEEE Centennial Medal, Bob served on standards committees at both national and international levels. He has written and lectured on standards-related subjects and in his major fields of interest, including regulatory compliance, intellectual property, electromagnetic compatibility, product safety, and other technical subjects. Hunter served on the Industrial Advisory Committee (IAC) of Underwriters Laboratories (UL), which developed one of the first national standards (UL 1950) based on an International Standard (IEC 60950). Bob obtained B.S. and M.S. degrees in electrical engineering from Drexel University in 1959 and 1962, respectively, and taught electrical engineering subjects at Drexel Evening College. He served as a quality control engineer and as a patent engineering specialist before becoming involved in regulatory compliance engineering.