Michael Leachman
Blair Suire
Jones Walker LLP
Legally Protecting Software:
Benefits, Pitfalls and Misconceptions
COPYRIGHTS
TYPES OF INTELLECTUAL PROPERTY
Copyrights
Patents
Trade Secrets
Trademarks
TYPES OF INTELLECTUAL PROPERTY
Artistic Expression
Inventive
Concepts
Confidential Information
Brands
TYPES OF INTELLECTUAL PROPERTY
Source & Object
Code; Look and Feel
Novel
Process
Implemented
by Code
Source Code
Company
N...
COPYRIGHTS
v  Literary works (books, catalogues, printed advertising, websites,
software)
v  Musical works (music, lyrics, advertis...
REQUIREMENTS FOR COPYRIGHT
Original	
  Work	
  
of	
  Authorship	
  
Fixed	
  in	
  a	
  
tangible	
  
medium	
  
Copyrigh...
Exclusive Copyright Rights
Exclusive Rights to the Owner:
1. To reproduce the work
2. To prepare derivative works
3.  To d...
v  Ideas, concepts, principles, discoveries
v  Method of operations, procedures, processes (distinguished
from explanati...
COPYRIGHTABLE
COPYRIGHTABLE
COPYRIGHTABLE
COPYRIGHTABLE
v  Default Rule: Author is the Owner
v  Exception: “Works Made for Hire”
COPYRIGHT OWNERSHIP
COPYRIGHT OWNERSHIP
Work-Made-for-Hire Definition:
1.  a work prepared by an employee within the scope of his or her
emplo...
Transfer of Copyright
A transfer of copyright ownership is not valid unless an
instrument of conveyance is in writing and ...
Copyrights—Fact or Myth?
Copyrights—Fact or Myth?
I paid for it, so I own the copyright.
X
Copyrights—Fact or Myth?
I can take just a little portion of the work.
Copyrights—Fact or Myth?
I don’t need a license because I’m going to alter the work.
Copyrights—Fact or Myth?
If I change at least 10% of the work, it’s not copyright
infringement.
Copyrights—Fact or Myth?
If I give credit to the copyright owner, it’s not copyright
infringement.
Limitations of Copyright Protection
Limitations of Copyright Protection
COPYRIGHT VS PATENT
v  Copyright – protects expression
v  Patent – protects inventive concepts & ideas
PATENTS
WHAT DO THESE COMPANIES HAVE IN COMMON?
THE WAR OVER SOFTWARE PATENTABILITY
THE WAR OVER SOFTWARE PATENTABILITY
THE WAR OVER SOFTWARE PATENTABILITY
EXCLUDED SUBJECT MATTER
WHY ARE PATENTS VALUABLE?
Ø  A patent prevent others from:
•  making,
•  using, and
•  selling the patented invention
Ø ...
PATENT BASICS
Ø  A patentable invention is any process, machine, manufacture, or
composition of matter that is:
§  Paten...
PATENTABLE SUBJECT MATTER
Ø  Process
Ø  Machine
Ø  Manufacture
Ø  Composition of matter
PATENTABLE SUBJECT MATTER
Ø  Process
Ø  Machine
Ø  Manufacture
Ø  Composition of matter
EXCLUDED SUBJECT MATTER—LAWS OF NATURE
EXCLUDED SUBJECT MATTER-PHYSICAL PHENOMENA
EXCLUDED SUBJECT MATTER
Abstract ideas
CLS BANK V. ALICE CORP
CLS BANK V. ALICE CORP
The Patent
Ø  Various method and system claims to a computerized
currency trading platform used by...
CLS BANK V. ALICE CORP
The District Court Decision
Ø  Summary judgment that the claims were directed to abstract
ideas an...
CLS BANK V. ALICE CORP
Questions before the Federal Circuit
Ø  What is the test for determining if a computer-implemented...
CLS BANK V. ALICE CORP.
Method	
   Media	
   System	
  
1	
   Lourie	
   Not	
  Eligible	
   Not	
  Eligible	
   Not	
  El...
PATENT ELIGIBILITY: BEST PRACTICES
Software qualifies for patent protection when:
Ø  does not preempt an abstract idea
Ø...
PATENT BASICS
Ø  A patentable invention is any process, machine, manufacture, or
composition of matter that is:
§  Paten...
DESCRIPTION REQUIREMENTS
Ø  Application must describe invention and manner of
making and using it
Ø  Description must be...
DESCRIPTION REQUIREMENTS & SOFTWARE
Software patent should describe:
Ø  software details
Ø  algorithms
Ø  software modu...
DESCRIPTION REQUIREMENTS & SOFTWARE
Ø  Not necessary to include code
Ø  Description should enable a programmer to write
...
DESCRIPTION REQUIREMENTS & TIMING
v  Important to file as early as possible, but not at
expense of filing with an inadequ...
PATENT BASICS
v  A patentable invention is any process, machine, manufacture, or
composition of matter that is:
§  Paten...
NOVELTY
Patent not allowed if, before your filing date, your invention was:
Ø  patented
Ø  described in a publication
Ø...
NOVELTY
Patent not allowed if, before your filing date, your invention was:
Ø  described in a patent application naming a...
TIMING
Ø  U.S. Grace Period: In the United States, a patent
application can still be filed within 1 year of your:
§  fir...
EVENTS TRIGGERING ONE-YEAR CLOCK
Ø  Beta tests
Ø  Demonstrations
Ø  Web sites
Ø  Internal use for commercial purpose
PATENT BASICS
Ø  A patentable invention is any process, machine, manufacture, or
composition of matter that is:
§  Paten...
NON-OBVIOUSNESS
Patent not allowed if:
Ø  claimed invention would have been obvious to a
skilled artisan before the effec...
KEY POINTS - COPYRIGHT
Ø Copyright protects expression of an
idea, not the idea itself.
Ø Transfer of copyright ownershi...
KEY POINTS - PATENT
Ø Patent law is unsettled on issue of whether
software qualifies for patent protection.
Ø Not necess...
Questions?
“Legally Protecting Software: Benefits, Pitfalls and Misconceptions”
Presented by:
Michael Leachman(mleachman@j...
Upcoming SlideShare
Loading in …5
×

Legally Protecting Software: Benefits, Pitfalls, and Misconceptions

449 views

Published on

This session was presented by Michael Leachman, Partner at Jones Walker, and Blair Suire, Associate at Jones Walker. Find out more at http://www.joneswalker.com.

Published in: Law
0 Comments
0 Likes
Statistics
Notes
  • Be the first to comment

  • Be the first to like this

No Downloads
Views
Total views
449
On SlideShare
0
From Embeds
0
Number of Embeds
2
Actions
Shares
0
Downloads
5
Comments
0
Likes
0
Embeds 0
No embeds

No notes for slide

Legally Protecting Software: Benefits, Pitfalls, and Misconceptions

  1. 1. Michael Leachman Blair Suire Jones Walker LLP Legally Protecting Software: Benefits, Pitfalls and Misconceptions
  2. 2. COPYRIGHTS
  3. 3. TYPES OF INTELLECTUAL PROPERTY Copyrights Patents Trade Secrets Trademarks
  4. 4. TYPES OF INTELLECTUAL PROPERTY Artistic Expression Inventive Concepts Confidential Information Brands
  5. 5. TYPES OF INTELLECTUAL PROPERTY Source & Object Code; Look and Feel Novel Process Implemented by Code Source Code Company Name; Logos
  6. 6. COPYRIGHTS
  7. 7. v  Literary works (books, catalogues, printed advertising, websites, software) v  Musical works (music, lyrics, advertising jingles) v  Dramatic works (plays, musicals, operas) v  Pantomimes and choreographic works (ballets, other choreographed dance works, mime works) v  Pictorial, graphic and sculptural works (photographs, maps, paintings, stuffed animals, graphic art, cartoon strips) v  Motion pictures and other audiovisual works (movies, computer games, films, television shows, interactive multimedia) v  Sound recordings (music, sounds, lyrics) v  Architectural works (building design embodied in plans, or building itself, includes overall form, as well as arrangement of spaces and elements) COPYRIGHTABLE SUBJECT MATTER
  8. 8. REQUIREMENTS FOR COPYRIGHT Original  Work   of  Authorship   Fixed  in  a   tangible   medium   Copyrightable  
  9. 9. Exclusive Copyright Rights Exclusive Rights to the Owner: 1. To reproduce the work 2. To prepare derivative works 3.  To distribute copies to the public 4.  To perform the work 5.  To display the work 6. To perform the work publicly by means of digital audio transmission (e.g., sound recordings)
  10. 10. v  Ideas, concepts, principles, discoveries v  Method of operations, procedures, processes (distinguished from explanation or description) v  Useful articles v  Facts (as opposed from an original expression of factual matter) v  Titles, names, short phrases (e.g. “March Madness”) COPYRIGHTABLE
  11. 11. COPYRIGHTABLE
  12. 12. COPYRIGHTABLE
  13. 13. COPYRIGHTABLE
  14. 14. COPYRIGHTABLE
  15. 15. v  Default Rule: Author is the Owner v  Exception: “Works Made for Hire” COPYRIGHT OWNERSHIP
  16. 16. COPYRIGHT OWNERSHIP Work-Made-for-Hire Definition: 1.  a work prepared by an employee within the scope of his or her employment or 2.  a work specially ordered or commissioned for use: •  as a contribution to a collective work, •  as a part of a motion picture or other audiovisual work, •  as a translation, •  as a supplementary work, •  as a compilation, •  as an instructional text, •  as a test, •  as answer material for a test, or •  as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
  17. 17. Transfer of Copyright A transfer of copyright ownership is not valid unless an instrument of conveyance is in writing and signed by the owner of the rights conveyed. RULE: GET IT IN WRITING!
  18. 18. Copyrights—Fact or Myth?
  19. 19. Copyrights—Fact or Myth? I paid for it, so I own the copyright. X
  20. 20. Copyrights—Fact or Myth? I can take just a little portion of the work.
  21. 21. Copyrights—Fact or Myth? I don’t need a license because I’m going to alter the work.
  22. 22. Copyrights—Fact or Myth? If I change at least 10% of the work, it’s not copyright infringement.
  23. 23. Copyrights—Fact or Myth? If I give credit to the copyright owner, it’s not copyright infringement.
  24. 24. Limitations of Copyright Protection
  25. 25. Limitations of Copyright Protection
  26. 26. COPYRIGHT VS PATENT v  Copyright – protects expression v  Patent – protects inventive concepts & ideas
  27. 27. PATENTS
  28. 28. WHAT DO THESE COMPANIES HAVE IN COMMON?
  29. 29. THE WAR OVER SOFTWARE PATENTABILITY
  30. 30. THE WAR OVER SOFTWARE PATENTABILITY
  31. 31. THE WAR OVER SOFTWARE PATENTABILITY
  32. 32. EXCLUDED SUBJECT MATTER
  33. 33. WHY ARE PATENTS VALUABLE? Ø  A patent prevent others from: •  making, •  using, and •  selling the patented invention Ø  Term – 20 years from filing date of patent application
  34. 34. PATENT BASICS Ø  A patentable invention is any process, machine, manufacture, or composition of matter that is: §  Patentable subject matter §  Useful §  Adequately described §  New (novel) §  Non-obvious Determined by the application Determined by the prior art
  35. 35. PATENTABLE SUBJECT MATTER Ø  Process Ø  Machine Ø  Manufacture Ø  Composition of matter
  36. 36. PATENTABLE SUBJECT MATTER Ø  Process Ø  Machine Ø  Manufacture Ø  Composition of matter
  37. 37. EXCLUDED SUBJECT MATTER—LAWS OF NATURE
  38. 38. EXCLUDED SUBJECT MATTER-PHYSICAL PHENOMENA
  39. 39. EXCLUDED SUBJECT MATTER Abstract ideas
  40. 40. CLS BANK V. ALICE CORP
  41. 41. CLS BANK V. ALICE CORP The Patent Ø  Various method and system claims to a computerized currency trading platform used by banks as a low-risk way to reconcile pending transactions, particularly across different time zones
  42. 42. CLS BANK V. ALICE CORP The District Court Decision Ø  Summary judgment that the claims were directed to abstract ideas and thus ineligible for patent protection under 35 U.S.C. §101
  43. 43. CLS BANK V. ALICE CORP Questions before the Federal Circuit Ø  What is the test for determining if a computer-implemented invention is a patent-ineligible abstract idea? Ø  When, if ever, can a computer in a claim lend patent eligibility to an otherwise ineligible idea? Ø  Should it matter to patent eligibility that the computer implemented invention is claimed as a method, system, or storage device? Ø  Should such claims be considered equivalent for determining patent eligibility?
  44. 44. CLS BANK V. ALICE CORP. Method   Media   System   1   Lourie   Not  Eligible   Not  Eligible   Not  Eligible   2   Dyk   Not  Eligible   Not  Eligible   Not  Eligible   3   Prost   Not  Eligible   Not  Eligible   Not  Eligible   4   Reyna   Not  Eligible   Not  Eligible   Not  Eligible   5   Wallach   Not  Eligible   Not  Eligible   Not  Eligible   6   Rader   Not  Eligible   Not  Eligible   Eligible   7   Linn   Eligible   Eligible   Eligible   8   Moore   Not  Eligible   Not  Eligible   Eligible   9   O’Malley   Eligible   Eligible   Eligible   10   Newman   Eligible   Eligible   Eligible  
  45. 45. PATENT ELIGIBILITY: BEST PRACTICES Software qualifies for patent protection when: Ø  does not preempt an abstract idea Ø  involves a human contribution that adds additional limitations narrowing the claims to cover significantly less than the full abstract idea
  46. 46. PATENT BASICS Ø  A patentable invention is any process, machine, manufacture, or composition of matter that is: §  Patentable subject matter §  Useful §  Adequately described §  New (novel) §  Non-obvious Determined by the application Determined by the prior art
  47. 47. DESCRIPTION REQUIREMENTS Ø  Application must describe invention and manner of making and using it Ø  Description must be sufficiently specific and clear that it enables a programmer to make and use it
  48. 48. DESCRIPTION REQUIREMENTS & SOFTWARE Software patent should describe: Ø  software details Ø  algorithms Ø  software module to execute each step Ø  data passed between modules Ø  flowcharts Ø  hardware
  49. 49. DESCRIPTION REQUIREMENTS & SOFTWARE Ø  Not necessary to include code Ø  Description should enable a programmer to write code
  50. 50. DESCRIPTION REQUIREMENTS & TIMING v  Important to file as early as possible, but not at expense of filing with an inadequate disclosure v  Once filed, no new matter may be added
  51. 51. PATENT BASICS v  A patentable invention is any process, machine, manufacture, or composition of matter that is: §  Patentable subject matter §  Useful §  Adequately described §  New (novel) §  Non-obvious Determined by the application Determined by the prior art
  52. 52. NOVELTY Patent not allowed if, before your filing date, your invention was: Ø  patented Ø  described in a publication Ø  in public use, on sale, or otherwise available Exceptions: Disclosures made 1 year or less before your filing date are not prior art if: Ø  your disclosure Ø  disclosure was after your public disclosure
  53. 53. NOVELTY Patent not allowed if, before your filing date, your invention was: Ø  described in a patent application naming another inventor that has an earlier filing date Unless: Ø  the other inventor’s application is not published and no patent issues from it Ø  information was obtained from you Ø  you publicly disclosed the same information before the other inventor’s application was filed Ø  your invention and the disclosed information were owned by the same person not later than your filing date
  54. 54. TIMING Ø  U.S. Grace Period: In the United States, a patent application can still be filed within 1 year of your: §  first publication §  first offer for sale, or §  first public use of the invention Ø  In most foreign countries, public disclosure=forfeiture of patent rights
  55. 55. EVENTS TRIGGERING ONE-YEAR CLOCK Ø  Beta tests Ø  Demonstrations Ø  Web sites Ø  Internal use for commercial purpose
  56. 56. PATENT BASICS Ø  A patentable invention is any process, machine, manufacture, or composition of matter that is: §  Patentable subject matter §  Useful §  Adequately described §  New (novel) §  Non-obvious Determined by the application Determined by the prior art
  57. 57. NON-OBVIOUSNESS Patent not allowed if: Ø  claimed invention would have been obvious to a skilled artisan before the effective filing date
  58. 58. KEY POINTS - COPYRIGHT Ø Copyright protects expression of an idea, not the idea itself. Ø Transfer of copyright ownership must be in writing.
  59. 59. KEY POINTS - PATENT Ø Patent law is unsettled on issue of whether software qualifies for patent protection. Ø Not necessary to include code in a software patent application, but the application should enable a programmer to write the code. Ø Patent application should be filed before public disclosure of the invention.
  60. 60. Questions? “Legally Protecting Software: Benefits, Pitfalls and Misconceptions” Presented by: Michael Leachman(mleachman@joneswalker.com) Blair Suire(bsuire@joneswalker.com) Jones Walker LLP  

×