Smart Phone Apps, Policy Issues and Potential Pitfalls for University Technology Managers

Smart Phone Apps
Policy Issues
and
Potential Pitfalls for
University Technology Managers

Agenda
IP Protection Possibilities
Issues and Potential Pitfalls
Patent Policy
Copyright Policy
Trademark Policy
Issues and Scenarios for Technology Managers

Intellectual Property Protection Possibilities for Smart Phone Apps
Utility Patent – Method
Design Patent – Smart Phone Icons
Copyright – Computer Programs and
Screen Displays
Trademark – Icon

U.S. Patent No. 7,930,283

U.S. Patent No. D628,590

Copyright Registration
Green Rewards & Affinity LLC
Computer Program (may include a videogame)
Title: iMagnify® - Hospitality Software.
Description of Work :
Software program designed to run on a smartphone … a handy utility to allow people who forget their reading glasses to still read the fine print when traveling, in restaurants, in supermarkets, squinting at stock tables, newsprint, stamps, coins etc. The software controls the built-in camera of the smartphone to magnify the image for easier reading on the screen.

TrademarkRegistration
®
Registered: December 7, 2010
Owner: Apple Inc.

Issues and Potential Pitfalls for Technology Managers
Evolving Area of Law and Policy
Do Current Policies Address Smart Phone Apps?
Do They Need To?
Example 1: IP Policy Applies to "Creators" Defined as "Any Persons Who Create Intellectual Property Using University Resources."
Example 2:
Patent Policy Dictated by State Law.
Copyright Policy Applies Only to Faculty and Employees.
No Trademark Policy.

Patent Policy
Does state law direct policy?
Example: in Ohio, ORC 3345.14:
All rights to and interests in discoveries, inventions, or patents which result from research or investigation conducted in any experiment station, bureau, laboratory, research facility, or other facility of any state college or university, or by employees of any state college or university acting within the scope of their employment or with funding, equipment, or infrastructure provided by or through any state college or university, shall be the sole property of that college or university. …[N]o faculty member, employee, or student of such college or university participating in or making such discoveries or inventions, shall have any rights to or interests in such discoveries or inventions…

Patent Policy – continued
Survey of Policies Reveal Language Broadly Enough Written to Cover Any Patentable Subject Matter.
Example 1: Patentable Intellectual Property: “Inventions, discoveries, and manufacturing designs that have been reduced to practice, and are novel, useful, and non-obvious, and therefore likely to be subject to protection under United States patent law."
Example 2: “Discoveries, inventions, or patents that result from research…"

Copyright Policy
Policies Vary With Goals and Objectives of Universities.
Example 1:
Applies to all persons using University resources.
Original works of authorship that have been fixed in a tangible medium of expression, including books, articles, artwork, music, software, traditional or electronic correspondence, and on-line instructional materials.
Example 2:
Specifically excludes students & software from policy.
Copyrightable material includes: employee-authored books, journal articles, research studies, musical works, syllabi, distance learning courses, workbooks, examinations, tests, lectures, lecture notes and power point slides.

Trademark Policy
Policies Vary With Goals and Objectives of Universities.
Example 1: University owns all right, title, and interest in the Trademark.
Example 2: University IP policy does not address Trademarks.

Issues & Scenarios
Do Current Policies Address Smart Phone Apps?
Do They Need To?
Consider:
Utility Patent – Software
Design Patent – Smart phone icons
Copyright – Computer Programs and Screen Displays
Trademark – Icon

Issues & Scenarios
If not Prescribed by State Law, Should Students be Included in the University Patent Policy?
Should Students be Included in the University Copyright and/or Trademark Policy?

Issues & Scenarios
Consider Scenarios:
Employee develops Smart Phone App within Scope of Employment.
Student develops Smart Phone App using University-owned facilities.
Student develops Smart Phone App without using University-owned facilities.
Student develops Smart Phone App as a class assignment
App is created as a joint work by a student and a faculty member.

Issues & Scenarios
Infringement Issues
Copyright and/or Trademark infringement of student and/or faculty developed App/Icon:
Who investigates?
Does Putative Original App Infringe the Work of Another?
Code, Icons, Screen Images
Who investigates?
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Smart Phone Apps, Policy Issues and Potential Pitfalls for University Technology Managers

by MacMillan, Sobanski and Todd, LLC. on Aug 12, 2011

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Smart Phone Apps, Policy Issues and Potential Pitfalls for University Technology Managers — Presentation Transcript