Intellectual Property for Computer Scientists

Lisa MurrayThe George Washington University

March 2007

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What is intellectual property? An exclusive property right in intangible products of investment, creative intellect, or labor owned by the creator or by someone who

purchased it from the creator

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Why does it exist?

Incentive to create Ability to recoup investment Control over how a creation is used Recognition for unique ideas

But without unduly restricting competition Limited duration Some public uses are still allowed Disclosure encouraged so others can improve on

the idea

Should intellectual property rights exist?

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Case Study:

Are people who make digital copies criminals who could destroy the entertainment business?

Or are entertainment executives overreacting as they cripple consumers’ ability to copy music or video?

- David Lieberman, Piracy pillages music industry, USA TODAY (Apr. 8, 2002)

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Should intellectual property rights exist? Should Internet users have the right to swap

music from CDs online?

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Should intellectual property rights exist? Should Internet users have the right to swap

music from CDs online?

Should be legal: 43% Should be illegal: 46% Undecided: 11%

- David Lieberman, Piracy pillages music industry, USA TODAY (Apr. 8, 2002)

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Should intellectual property rights exist? Should record companies use technology to

prevent a buyer from making more than a few copies of new CDs?

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Should intellectual property rights exist? Should record companies use technology to

prevent a buyer from making more than a few copies of new CDs?

48% in favor

42% against

- David Lieberman, Piracy pillages music industry, USA TODAY (Apr. 8, 2002)

Forms of Intellectual Property

Copyright Patent Trademark Trade Secret and Unfair Competition

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Trade Secrets and Unfair Competition Trade Secret

Idea or information that derives economic value from the fact that others don’t know about it, and

Is subject to reasonable efforts to maintain secrecy

Unfair Competition False advertisement Commercial disparagement “Passing off” or “misappropriation

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Trade Secrets and Unfair Competition Can be used to protect intangible ideas that

can’t be copyrighted, trademarked, or patented

Anything can be a trade secret as long as It’s worth trading, and It’s a secret.

Remedy is money damages or sometimes an injunction

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Trademark

A word, name, symbol, or device (just about anything), alone or in combination

Used to distinguish the goods of one person from goods made or sold by others

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Trademark

Permits consumers to identify the source of goods or services

Consumers know what they’re getting Businesses can develop goodwill

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Other Kinds of Marks

Service marks: perform the same function for services rather than products

Certification marks: certify that goods or services have certain characteristics

Collective marks: indicate membership in an organization

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Trademarks

Mark must be distinctive Arbitrary or fanciful Suggestive Descriptive only if there is a “secondary meaning” Not deceptive

Registration not required, but . . . US Customs will assist in battle vs. counterfeits Easier to prove mark ownership Ownership enforced over wider territory

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Trademark Infringement

“Likelihood of confusion” test Remedies: money damages, injunctions Sometimes criminal prosecution

Cybersquatting: Registering or using domain name similar to a

trademark With bad-faith intent to profit from the business

goodwill of the mark

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Copyright

A limited economic right in a method of expressing An original work of authorship fixed in tangible form perceivable directly or with the aid of a machine or device

Limited duration Author’s lifetime + 70 years Works for hire: 95 yrs from publication, 120 yrs from creation

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What is copyrightable?

Literary works (including computer programs) Musical works and lyrics Dramatic works Pantomimes and choreographic works Pictorial, graphic, and sculptural works Motion pictures and audiovisual works Sound recordings Architectural works

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What is NOT copyrightable?

The idea being expressed Facts cited Information already in the public domain The general idea or opinion expressed

The author’s identity The author’s reputation

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Only the copyright holder can: Reproduce the copyrighted work Prepare derivative works Distribute copies to the public Publicly perform the work Publicly display the work For sound recordings: perform the work

publicly through digital audio transmission (Moral rights in visual art works)

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Copyright infringement

Registration not required to create a copyright, but generally needed to fight infringement

Remedies Money damages and injunctions Destruction of infringing products Prohibition on imports to the US

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Patent

The right to exclude others from: Making Using Selling or offering to sell, or Importing an invention

Disclosure: to get a patent, the inventor must disclose how to make the invention

Limited duration: Utility patents last 20 years from the date the patent application is filed

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What kinds of patents are there? Unlike copyright, a patent protects the

underlying idea, not just a particular embodiment

Three kinds of patents: Utility: the most common type Design: 14 year’s monopoly on the ornamental

appearance of an article of manufacture Plant: for new varieties of discovered or invented

plants that are asexually reproduced

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What qualifies for a utility patent? Novel Useful

Functional Tangible

Not obvious Patentable subject matter

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What is patentable subject matter? A machine

Mechanical device that performs some function

A computer A bicycle A digital camera

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What is patentable subject matter? An article of manufacture

Something man-made by transforming raw or prepared materials

a very broad category A bike helmet A three-ring notebook A waterproof hiking boot

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What is patentable subject matter? A composition of matter

Chemical compound Viagra

Mixture of multiple substances A shampoo An axle lubricant

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What is patentable subject matter? A process . . .

A method of making, using, or doing something A method for synchronizing clocks over a network A method for monitoring the temperature of a furnace

An improvement of an existing process A better method for synchronizing clocks over a network

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What is patentable subject matter? A process

A new use for an existing product A cold medicine that cures cancer

A business method (sort of) virtual shopping cart

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What is NOT patentable?

An abstract idea A software algorithm Vaporware A mathematical formula

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What is NOT patentable?

Laws of nature Mathematical observations of the universe Anything “discovered” rather than “invented”

Physical phenomena Electrical properties of atoms Organisms found in nature

rather than genetically engineered

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What is NOT patentable?

Certain “icky” inventions Illegal items (crack) Inventions “embracing” a human being (cloning) Atomic weaponry Medical procedures are patentable . . .

but cannot be enforced against a medical practitioner

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Getting a patent

PTO application process “He who represents himself has a fool for a client.”

– Abraham Lincoln

Timeframe varies, especially in computer field

Time limits apply by one year from date printed, published,

used, sold or offered for sale Shhh!

Deal or no deal?

Special Issues in Protecting Computer Software

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How can I copyright my software? Copyright Act of 1976 expressly allows

copyrighting of computer code Both source code and object code are

protected Extends to code embedded in chips Protects both operating systems and

applications

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How can I copyright my software? Structure of the computer program

Copyright for literary works ordinarily includes protection for underlying structure and organization of the work

Courts struggle when applying this to computer code – structure necessary to accomplish the program’s purpose is functional, and thus not protected. Other structure is protected

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What about user interfaces?

A user interface that is a “method of operation” is functional, and not protected Lotus 1-2-3 menus

But an expression embodied in a method of operation is protectible Mitel, Inc.: 4-digit command codes used to access

telecom hardware Bottom line: who knows?

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History of software patentability 1972: software is an unpatentable algorithm

Algorithm for converting from binary decimal to binary form 1978: an improved method of calculation is still

unpatentable subject matter Method for calculating changing alarm limits in a

manufacturing process 1981: process including computer calculations

patentable because limited to particular use of calculations Computer program for measuring temperature in rubber

manufacturing process

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Federal Circuit interpretations of Supreme Court opinions Various additional qualifications considered:

Process must have physical application Process must have steps in addition to algorithm

1994: oscilloscope data conversion circuitry patentable as a “specific machine”

1998: data processing system for implementing mutual fund investment strategy patentable as producing “useful, concrete and tangible result”

1999: method for manipulating numbers in billing system held patentable for same reason

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Next Step: Microsoft v. AT&T

Supreme Court is currently reconsidering this issue in the context of transnational patent law

A decision will issue this year

No one has any real idea what the Court will decide

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So how can I patent my software? Patent the computer program as a “process.”

Patent the combination of a computer program loaded onto a general-purpose computer as a “machine.”

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How can I patent my software? Patent the program as recorded on a data

storage device as an “article of manufacture.”

Note: A propagated electrical signal can be an “article of manufacture”, even if it only lasts for a moment.

Case Study: The Golden Disk

Case Study: The Next Great Widget