Transcript Protecting Information Technology

Protecting Your Ideas
Information Technology and
Intellectual Property
Copyright 2001, 2002 Brett J. Trout
What is Intellectual Property
• A useful invention
• A brand name
• The expression of an
idea
• A commercially
valuable secret.
Tangible vs. Intangible Property
• Limited use
– Only one person on a
workstation at a time
• Limited life
– Vehicles wear out
• Easy to value
• Protect with padlocks
• Many can use at once
– Microsoft Office
– Licensing
• Unlimited usefulness
– Coke trademark
• Difficult to value
• Protect with procedure
Types of Intellectual Property
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Patents
Trade Secrets
Copyrights
Trademarks
Domain Names
Mask Works
Why Worry About IP?
• Your Company is
Built on Intellectual
Property
• Without Intellectual
Property Development
and Protection, your
Job would not exist
Why Worry About IP?
• Marlboro trademark is
worth $31 billion
• $909 Million patent
infringement judgment
against Kodak
• Formula for Coke
Invaluable
Identifying Intellectual Property
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Inventions (Patents)
Trademarks
Copyrights
Trade Secrets
Patent
• Protects
– New and useful
process
– Machine
– Manufacture
– Composition of matter
– New and useful
improvement thereof.
Patents
• Do not protect
– Ideas
– Obvious combination
of prior art
– Illegal or immoral
matter
– Pure research
– Novelty or curiosity.
Patents
• Advantages
– Covers various
alternatives
– Provides triple
damages
– Covers items subject to
reverse engineering
• Disadvantages
– Expensive $5K-$20K
– Slow 18-48 months
– Does not protect you
from infringement
– Expires 20 years after
filing
Patents
Business Method/Internet Patents
Business Method Patents
• Amazon.Com
– One-Click Shopping
• AskJeeves.com
– Plain English search service
• Lycos
– Spider technology
• Cybergold
– Cash for eyeballs.
Business Method Patents
• 1996-2000
• First Upheld in 1998
• U.S. now files over
50% of European
Business Method
Applications
8000
7000
6000
5000
4000
3000
2000
1000
0
1996
1997
1998
Year
1999
2000
Why the Rush?
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Often the primary asset of an IT company
Delays competitors
Provides potential revenue stream
Marketing advantage
Increases the value of the company
Great bargaining chip in litigation
Identifying “Business Method”
Inventions
• Novel
– Are you aware of it being done before?
• Non-obvious
– Given the problem, would the solution be
obvious to a colleague?
– Not whether colleague understands solution
• Useful
– Typically not an issue.
Patent Do’s and Don’ts
• Do
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Keep accurate records
Determine if method meets patent criteria
Determine if method is worth protecting
Take immediate steps to protect method
Determine all potential alternatives
Give patent attorney ALL of the information
you have
Patent Do’s and Don’ts
• Do Not
– Disclose
• Third parties
• Offer for sale
– Delay
– Make decision not to pursue patent without
input from others in company
Trademarks
Special Concerns with Information
Technology
Trademark
• A word, name, phrase or symbol
used to identify source or origin of
a good or service provided through
commerce.
Types of Trademarks
• Color – Pink for fiberglass
• Sound – NBC chimes
• Scent – Floral scent for yarn.
IT Trademarks
• Domain names - Amazon.Com
– Over 500 pending
• Animated browser icon – Netscape
• “E” “O” and “I” marks – eVideo, oMusic.
Correct Usage
• Use ® only for federally registered
trademarks
• Use TM or SM for all non-registered marks
• ALWAYS use trademark as adjective
– Correct “Hand me that Firewire cable”
– Incorrect “Hand me that Firewire”
Incorrect Usage
• Incorrect Usage destroys valuable TMs
– thermos- King Seely
– escalator- Otis Elevator
– cellophane- E.I. Du Pont
– yo-yo- F. Duncan
• Xerox spends over $100,000/yr making sure
people do not say “Xerox this for me”
Trademark Do’s and Don’ts
• Do
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Choose unique trademarks
Investigate domain name availability
Report all infringements
Use all trademarks as adjectives
Trademark Do’s and Don’ts
• Do Not
– Allow unauthorized use of trademarks
• Even as metatags
– Use trademarks of others without permission
– Use a trademark similar to that of a competitor
– Use trademarks as nouns
Copyright
Special Concerns with Information
Technology
Copyright Protects
• Original works of authorship
• Works fixed in a tangible medium
• Expression
– Not functionality
– Not ideas
Copyright Protects
• Software
– Source code, not the functionality
– Graphics
– Other unique expression
Copyright Does Not Protect
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Ideas
Procedures
Processes
Systems
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Methods of operation
Concepts
Principles
Public Domain.
Copyright Does Not Protect
• Certain aspects of software
– Items dictated by efficiency
– Aspects required by external factors
• Scenes a faire
• Industry demands, etc.
– Items taken from the public domain.
Copyright Rights
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Reproduce work
Make derivative works
Distribute copies
Perform work publicly
Display work publicly.
Copyright
• Advantages
– Registration not
required
– Inexpensive
– Protection
automatically attaches
• Disadvantages
– Registration required
to bring suit
– Does not protect
functionality
– Requires specific
assignment for transfer
Avoiding Copyright Infringement
• Clean Room
– Programmers have no access
• Copyrighted program
• Public Domain
– OK to use
– Avoid Open Source and Freeware
• Unless you are absolutely sure
• Could have been taken from protectable material
ALWAYS Obtain Assignment of
Copyright
• Paying contractor for project
– Not sufficient to transfer copyright
• Get assignment from “author”
– Custom software
– Website design
– Logo or graphic art
• Get assignment up front.
Fair Use
• Very rarely applicable
• Do Not rely on fair
use protection
• Rarely upheld in
commercial context
unless
– Parody
– News
– Critical Commentary
Software Infringement Analysis
• Abstract
– Source code protectable
– Idea not protectable
• Filter
– Non-protectable elements
• Compare
– Substantial Similarity
Copyright Notice
• Copyright Notice
– © or Copyright
• Year of first publication
– Include all years new material published
• 2001
• 1997, 1998, 2001
• 1997-2001
• Copyright Owner
Copyright Notice
• © 2002 ABC Corp., Inc.
• Apply to all
– Original works of authorship
• Software
• Documentation
• Graphics
– Created by your company, its employees or
copyrighted work assigned to your company
Trade Secrets
Special Concerns with Information
Technology
Trade Secret
• Information
– formula, pattern, compilation, program, device, method, technique
or process
• Derives economic value from not being known to others
– Actual or potential
– Not easily ascertainable by proper means
– Persons who can obtain economic value from TS
• Subject of efforts that are reasonable under circumstances
to maintain secrecy.
Uniform Trade Secrets Act
• 40 states modeled law on UTSA
• Iowa law based upon UTSA
Trade Secrets
• Advantages
– Lasts forever
– Inexpensive
– Covers Ideas
• Disadvantages
– Could be gone
tomorrow
– Not applicable if you
can reverse engineer
– Must take precautions
to prevent disclosure
Trade Secrets and Software
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Customer Lists
Vendor Information
Anticipated Return on Investment
Software Architecture
Functional Specifications
Module Interactivity
Alpha/Beta/Full Releases
Trade Secrets Dos and Don’ts
• Do
– Maintain secrecy
– Follow all security protocols
– Appropriately mark all trade secret material
Trade Secrets Dos and Don’ts
• Don’t
– Disclose Trade Secrets to anyone who has not
signed a confidentiality agreement
– Attempt to extract trade secrets from others
under confidentiality agreement with third party
– Misappropriate Trade Secrets
• Criminal penalties
• Punitive damages
• Attorney Fees
Take Home
• Identify and protect inventions immediately
• Develop and protect unique trademarks
• Do not use copyrightable material without a
written license or assignment
• Maintain the strict confidentiality of all
Trade Secret information.
Thank You