Using IP to Protect IST/SRA Innovations

Prof. John W. Bagbyon 10.31.11 for Prof. Anna Squicciarini

The Assignment

As a consultant of the Data Protection Consulting Co., you have been asked to help a customer protecting its intellectual property. The client is a software company that has developed several types of IP including:– Computer software that helps programmers test their own

programs– A new technique for analyzing software for source code for defects– Business processes that it uses to process orders efficiently

The client company does not know what safeguards should be used to protect its IP. You need to determine whether the client should put patents, trademarks or copyright for each. You also need to advise the client on the advantages and disadvantages of keeping one or more of these pieces as trade secrets. 

What forms of IP Might be Appropriate?

• Copyrights • Trade Secrets• Patents • Unfair Competition (databases, characters) • Trademarks & Trade Dress • Sui Generis Protections:

– Semiconductor chips, asexual plants, designs, petty patents, Databases, boat hull design

Copyright

• Must be an Original Work• Must be Fixed in a tangible medium

of expression• Must be Perceivable directly or

indirectly by humans• Software is Literary Work • Idea vs. Expression Dichotomy

Types of Copyrightable Works

Literary worksLiterary works

Architectural worksArchitectural works

Sound recordingsSound recordings

Motion pictures and A/V works

Motion pictures and A/V works

Pictorials, graphics, and sculptures

Pictorials, graphics, and sculptures

Musical worksMusical works

Dramatic worksDramatic works

Pantomimes and choreography

Pantomimes and choreography

Trade Secrets

• information –formula, pattern, compilation,

program, device, method, technique or process

• derives independent economic value –from secrecy, and

• subject of efforts to maintain secrecy–reasonable under circumstances

Patents

• Patentability– Subject Matter

• Process, Machine, Manufacture, Composition• Business Method Patents

– Novelty– Non-Obviousness

• Patenting– Prosecution Costly & Protracted

• IP Strategy– Trolls, Portfolios, Claims Drafting, Negotiations

Trademarks

• Word, Name Symbol, Device– Recently: color, sound, smell

• Identifies Source of Goods or Services – Distinguishes from competitors

• Promote business ethics– Prevent palming off

• Spectrum of Distinctiveness – a Scale of Decreasing Protectability – Arbitrary or Fanciful – Suggestive – Descriptive – Generic

Software

• Always Copyrightable• Seldom Patentable

– BMP Process– Non-Obviousness & Novelty

• Nearly Always Trade Secrets – NDA, EULA decompiling prohibition

• Commercial Software Trademarked• Technology Transfer Restrictions

– DeCompilation; Works Made for Hire-Author, Licensing, Assignment