Current Issues in IP for SoftwareEngineers and Web Developers                   Frisina, LLC  Creating Wealth Through Inte...
Introduction                        Representative Sectors   Our mission is to create wealth for our clients through the  ...
Contents• How to protect software  – Copyright versus patent• Recent Post-Bilski Developments in The Law• Dissecting Paten...
How to Protect Software                                    Copyright v. Patent• Copyright                                 ...
How to Protect Software• Traditional copyright law is a good fall-back position• Digital Millennium Copyright Act (DMCA)  ...
How to Protect Software• Why register a copyright?  – Access to federal courts  – Eligibility for statutory and enhanced d...
How to Protect Software• Copyright protects the expression of an idea  – e.g. source code or object code; GUI layouts; gra...
Recent Developments                  Copyright © 2007-2011 Frisina, LLC
Bilski Redux• Summary:  – Bernard Bilski developed and attempted to patent a method of commodities hedging. He was    reje...
Bilski Redux• Machine or Transformation Test (MOTT):  – “[a] claimed process is surely patent-eligible under § 101 if: (1)...
Bilski ReduxBilski’s Claim 1 reads:A method for managing the consumption risk costs of a commodity sold by a commodityprov...
Bilski Redux• Results of Bilski  – New approach for assessing patentable subject matter (i.e. the    laundry list)  – New ...
Bilski Redux• Is the law settled with regard          Justice                                          Roberts            ...
Bilski Redux• The Take-Home Message:  – Business methods and software are still patentable subject    matter and are likel...
Post-Bilski• USPTO                               • Selected Patents  – New Examination Guidelines          –   7,797,405 (...
Post-Bilski                          USPTO Guidelines Summary• Factors For Eligibility               • Factors Against Eli...
Post-Bilski• Research Corp. Technlgs. v. Microsoft (Fed. Circ. 2010)  – Facts: RCT’s sued Microsoft for infringing six pat...
Post-Bilski• Claim 1 of US Pat. No. 7,797,405 (Intel)  – Method for streaming SOAP encoded messages between and    within ...
Post-Bilski• Claim 1 of US Pat. No. 7,890,730 (SanDisk)  – Method for expanding storage capacity without erasing data  – K...
Post-Bilski• Claim 1 of US Pat. No. 7,895,523 (IBM)  – A method for obscuring only supplemental audio-visual web    conten...
Post-Bilski• Claim 1 of US Pat. No. 7,908,610 (Microsoft)  – A method of enabling a business programming library for use  ...
Thank YouFor Further Information      www.frisinaIP.com           Newsletters           IP Owl Blog           Slide Shows ...
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Current Issues in IP for Software Engineers and Web Developers

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• How to protect software
– Copyright versus patent
• Recent Post-Bilski Developments in The Law
• Dissecting Patentable Subject Matter

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Current Issues in IP for Software Engineers and Web Developers

  1. 1. Current Issues in IP for SoftwareEngineers and Web Developers Frisina, LLC Creating Wealth Through Intellectual Property TM www.frisinaIP.com Copyright © 2007-2011 Frisina, LLC
  2. 2. Introduction Representative Sectors Our mission is to create wealth for our clients through the • Chemicals strategic use of intellectual property. • Polymers • Pharmaceuticals We understand the challenges facing businesses in todays • Biotechnology economic environment, and strive to secure and monetize our • Biomedical clients’ intellectual assets. With nearly 15 years in innovation • Medical Imaging combined as a patent attorney and scientist, I am uniquely • Advanced Materials positioned to guide clients through the legal maze of intellectual • Nanotechnology property strategy facing start-ups and more established ventures.453 South High Street Suite 302 • Semiconductors Akron, OH 44311 • Medical Instruments In addition to legal expertise and an unimpeachable commitment (330)338-0589 direct • Medical Tests to quality, we offer our clients unparalleled value and security.dominic@frisinaIP.com • Liquid Crystals Particularly, we have strategically invested in state-of-the-art www.frisinaIP.com • Power Generation practice and intellectual property (IP) portfolio management • Fuel Cells systems. These systems enable us to intelligently analyze • Software clients’ IP holdings and suggest tactics to exploit strengths, • Internet Law identify and shore-up weaknesses, and generate income. • Business Methods Copyright © 2007-2011 Frisina, LLC
  3. 3. Contents• How to protect software – Copyright versus patent• Recent Post-Bilski Developments in The Law• Dissecting Patentable Subject Matter Copyright © 2007-2011 Frisina, LLC
  4. 4. How to Protect Software Copyright v. Patent• Copyright • Patent – Protects the expression of an idea – Protects the underlying idea rather than the underlying idea – Exists upon grant by the USPTO after – Exists upon fixation in a tangible substantive examination medium of expression. Registration is – Patent must issue in order for rights to a formality accrue – Protection exists without registration, – Enforceable Life: 20 years from the but registration is necessary to sue in earliest effective filing date. federal court – Enforceable Life: life of the author plus 70 years; or, the earliest of 95 yr from first publication, or 120 yr from creation Copyright © 2007-2011 Frisina, LLC
  5. 5. How to Protect Software• Traditional copyright law is a good fall-back position• Digital Millennium Copyright Act (DMCA) – Passed 1998 – Modernized copyright law accounting for new technology – Offers some additional protections and limits liability of service providers• Patents can be a valuable additional tool Copyright © 2007-2011 Frisina, LLC
  6. 6. How to Protect Software• Why register a copyright? – Access to federal courts – Eligibility for statutory and enhanced damages• What if my work is not registered? – Access to DMCA protections Copyright © 2007-2011 Frisina, LLC
  7. 7. How to Protect Software• Copyright protects the expression of an idea – e.g. source code or object code; GUI layouts; graphic artwork, etc.• Patents protect ideas – The process that the software embodies – This has been the source of much recent case law e.g. Bilski, RCT v. Microsoft, Prometheus Labs, and others Copyright © 2007-2011 Frisina, LLC
  8. 8. Recent Developments Copyright © 2007-2011 Frisina, LLC
  9. 9. Bilski Redux• Summary: – Bernard Bilski developed and attempted to patent a method of commodities hedging. He was rejected by the Examiner on the grounds that his claims were drawn to an abstract idea. The Board of Patent Appeals and Interferences upheld the rejection, as did the Federal Circuit. The Federal Circuit additionally held that the Machine or Transformation Test (MOTT) is the exclusive test for patent eligible subject matter. The Supreme Court found that although Mr. Bilski’s claims are drawn to unpatentable subject matter, the Federal Circuit was wrong to conclude that the MOTT is the exclusive test. In doing so, the Court referred to prior cases setting out other tests which should be regarded as “guideposts.” In effect, the Supreme Court has created test comprising a laundry list of factors. Copyright © 2007-2011 Frisina, LLC
  10. 10. Bilski Redux• Machine or Transformation Test (MOTT): – “[a] claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” In re Bilski, 545 F. 3d 943 (Fed. Cir. Oct. 30, 2008). Copyright © 2007-2011 Frisina, LLC
  11. 11. Bilski ReduxBilski’s Claim 1 reads:A method for managing the consumption risk costs of a commodity sold by a commodityprovider at a fixed price comprising the steps of:(a) initiating a series of transactions between said commodity provider andconsumers of said commodity wherein said consumers purchase said commodity at afixed rate based upon historical averages, said fixed rate corresponding to a risk position ofsaid consumer;(b) identifying market participants for said commodity having a counter-risk position tosaid consumers; and(c) initiating a series of transactions between said commodity provider and saidmarket participants at a second fixed rate such that said series of market participanttransactions balances the risk position of said series of consumer transactions. Copyright © 2007-2011 Frisina, LLC
  12. 12. Bilski Redux• Results of Bilski – New approach for assessing patentable subject matter (i.e. the laundry list) – New §101 guidelines from the USPTO – Software and business method patents are still patentable – Supreme Court is split 5/4 on the patent eligibility of business methods Copyright © 2007-2011 Frisina, LLC
  13. 13. Bilski Redux• Is the law settled with regard Justice Roberts Birth Year 1955 Age 56 Pro-BMP Y to patent-eligibility of software Scalia 1936 75 Y and business methods? Kennedy 1936 75 Y – Yes… most likely. Thomas 1948 63 Y – Ginsberg is the most likely to retire due to age and illness, but Alito 1950 61 Y a Ginsberg retirement is likely to Ginsburg 1933 78 N be irrelevant Breyer 1938 73 N – None of the pro-BMP justices Sotomyor 1954 57 N are likely to retire during an Kagan 1960 51 N Obama term Copyright © 2007-2011 Frisina, LLC
  14. 14. Bilski Redux• The Take-Home Message: – Business methods and software are still patentable subject matter and are likely to continue to be so for the foreseeable future. – Drafting an allowable software and/or business method patent is a still-developing area of the law Copyright © 2007-2011 Frisina, LLC
  15. 15. Post-Bilski• USPTO • Selected Patents – New Examination Guidelines – 7,797,405 (Intel)• Case Law – 7,890,730 (SanDisk) – Research Corporation – 7,895,523 (IBM) Technologies v. Microsoft (Fed. – 7,908,610 (Microsoft) Circ. 2010) Copyright © 2007-2011 Frisina, LLC
  16. 16. Post-Bilski USPTO Guidelines Summary• Factors For Eligibility • Factors Against Eligibility – Satisfying the Machine or – Involvement of M or T is nominal, Transformation Test (MOTT) insignificant, or tangentially related to • Machine implements the process the process steps • Particularity of M or T • E.g. data gathering, reciting a field • Meaningful limitation of steps – Machine is generic – Law of nature practically applied – Machine is merely an object on which – A particular solution to a problem the process operates – Tangible implementation – Monopoly of a natural law – Observable and verifiable – Monopoly of a general concept Copyright © 2007-2011 Frisina, LLC
  17. 17. Post-Bilski• Research Corp. Technlgs. v. Microsoft (Fed. Circ. 2010) – Facts: RCT’s sued Microsoft for infringing six patents drawn to halftoning technology. Claim 1: A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non- deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images. US Pat. No. 5,111,310. – Issue: Are the claims unpatentable abstractions? – Answer: No. “The invention presents functional and palpable applications in the field of computer technology. These inventions address ‘a need in the art for a method of and apparatus for the halftone rendering of gray scale images in which a digital data processor is utilized in a simple and precise manner to accomplish the halftone rendering.’” Copyright © 2007-2011 Frisina, LLC
  18. 18. Post-Bilski• Claim 1 of US Pat. No. 7,797,405 (Intel) – Method for streaming SOAP encoded messages between and within networks – Key recitations establishing statutory subject matter • Step One: packets, a first server, data message, control message, a first HTTP module • Step Two: decoder module • Step Three: storing (implies structural elements) • Steps Four and Five: a first business logic module Copyright © 2007-2011 Frisina, LLC
  19. 19. Post-Bilski• Claim 1 of US Pat. No. 7,890,730 (SanDisk) – Method for expanding storage capacity without erasing data – Key recitations establishing statutory subject matter • Step One: partition, storage memory, storage device • Step Two: reserved-storage area, enabled-storage area • Step Three: file allocation table • Step Four: sectors (of a storage area) • Step Five: memory-management area Copyright © 2007-2011 Frisina, LLC
  20. 20. Post-Bilski• Claim 1 of US Pat. No. 7,895,523 (IBM) – A method for obscuring only supplemental audio-visual web content on a web page – Key recitations establishing statutory subject matter – Step One: detecting a reference to supplemental web content – Step Two: specifying a full-quality version, specifying a reduction in the audio-visual quality – Step Three: original layout of the requested web page is preserved – Step Four: restoring the full-quality version, removing animation Copyright © 2007-2011 Frisina, LLC
  21. 21. Post-Bilski• Claim 1 of US Pat. No. 7,908,610 (Microsoft) – A method of enabling a business programming library for use by an enterprise resource planning system – Contains numerous clauses preventing it from being an abstraction – The overall claiming strategy was extremely narrow Copyright © 2007-2011 Frisina, LLC
  22. 22. Thank YouFor Further Information www.frisinaIP.com Newsletters IP Owl Blog Slide Shows Contact Me (330)338-0589 Direct dominic@frisinaIP.com Copyright © 2007-2011 Frisina, LLC

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