I received the following post on Techno-L[_at_]sricom, a maillist for tech transfer people. Thank you very much for your quick help and response to my request for info on circuit board protection. I am very impressed with the quality of the CNI maillist. How do you find the time??!
Martha Luehrmann
Lawrence Berkeley National Lab
MRLuehrmann[_at_]LBL.gov
I noticed the discussion below relative to how to protect printed circuit board designs. This is not a difficult question.
Either the printed circuit board design can be protected as a trade secret or it cannot. If it cannot, then a patent is the only realistic prospect. If it cannot be kept secret and is not sufficiently non-obvious to be patented, then it is probably not protectible at all and as a matter of public policy should not be.
The problem with trying to keep circuit designs secret is that reverse engineering techniques are probably sophisticated enough to reverse engineer the circuit. Trade secrecy is a reasonable approach up until the time the board goes into large scale use or is placed in the possession of someone not under an enforceable duty to keep it secret. Once the circuit board goes into production, you had better be seeking other means of protection.
The problem with patenting is the cost involved, particularly if you go overseas (which may be insignificant if you have a really important circuit design and which can be delayed by use of the PCT), and the necessity of disclosing the invention and the lack of morality of would be manufacturers who are only too willing to steal the design and take the risk of being caught. However, just as it is difficult to keep a new design secret, so is it difficult to keep an infringing circuit board design secret, particularly if the board performs any unique functions that would red flag the board as a possible infringer. In addition, a patent might cover the process being performed by the circuit in addition to the circuit and thus cover board designs that are different yet which perform the same function in a similar manner. On balance, I think patenting is clearly the preferable route, not trade secrecy, and to that extent I disagree with Prof. Dratler.
One closing note, trade secrets can last forever while patents last for a finite time (in the USA that is 20 years from first filing.) On boards 20 years is probably more than the commercial life, and it will be reverse engineered well before 20 years if it is an important board design.
Bruce Burdick, JD
BURDICK & ASSOCIATES
ALTON, IL
The above is in reply to the following:
> On Tue, 16 Apr 1996, "James R. (Jim) Palmer" <pmr[_at_]ornl.gov> wrote:
>
>> Is it possible to copyright the layout for a printed circuit board and
>> charge royalties for each circuit board manufactured?
>
> and cited:
>
>> "Intellecutal Property Law: Commercial, Creative and Industrial Property,"
>> (Law Journal Seminars - Press, New York), Jay Dratler, Jr.
>
> I shared the message with Dr. Dratler of the University of Hawaii's William
> S. Richardson School of Law and got this response:
>
>> Your correspondent is essentially right. Although the circuit
>> boards' plans are probably protected by copyright, the copyright is weak,
>> because the boards are useful articles under section 101, and copyright
>> does not protect industrial design. Even if the plans are protected,
>> they are protected only in their aesthetic aspects, and then only to
>> the extent that their aesthetic aspects are separable from their
>> utilitarian aspects (see section 101's definition of "pictorial, graphic,
>> and sculptural works"). Since the boards' layouts are probably dictated
>> solely by function, and not by aesthetics, copyright protection is likely
>> to be weak or nonexistent. Unlike architecture (before the 1990 Act),
>> circuit boards are not designed for aesthetic viewing.
>>
>> In a case of egregious copying involving the plans, a court might be
>> tempted to award damages, but I doubt it. Injunctive relief is unlikely
>> in the extreme. This is essentially the reason why a new statute was
>> required in 1984 to protect semiconductor chips. The best way to
>> protect circuit boards is through trade secrecy (if you can "pot" them
>> with expoxy that cannot be removed without destroying the boards) or
>> patent. Otherwise, you must cast them in silicon and seek protection
>> under the Chip Act.
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