Patents and copyrights: protecting intellectual property.
Many people in the microwave industry have worked in the military markets almost exclusively. In this arena, corporate management frequently does not pursue patents or other protection vigorously since the end user is the government, and in many cases the government has paid for the development. As the industry enters the commercial markets, protection of inventions and ideas becomes more important.
When a new idea is conceived, or a new product or method is designed, one of the first thoughts that occurs is: Can I protect this? Can I keep competitors from copying this? This concern deals with the very real and practical reasons for protecting your new idea. Investors are loathe to put money into a venture that cannot establish a unique product niche for itself. Stockholders will challenge a corporation's investment of its resources in a program that can be easily copied once introduced to the market. All the time, effort and money invested in perfecting the idea, as well as advertising and promoting it, can be wasted if imitators can enter the market on your heels with products just like yours. Moreover, the imitators can cut prices because they have not incurred start-up expenses you had to endure to bring the idea from conception to a mass-producible, reliable and appealing product or service.
The things that may be protected include a new product, new method or process, new service, new promotional or merchandising scheme or approach, new packaging or new design.
There are two kinds of patents, utility and design. Utility patents are the kind most commonly referred to when one seeks to protect an invention. They are granted for any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, including new uses of old devices or new combinations of well-known components. Design patents cover only the new design of an object, its ornamental appearance.
Utility patents are viewed in three classes, chemical, electrical and general/mechanical. Chemical inventions include new compounds, new methods of making old or new compounds, new methods of using old or new compounds and combinations of old compounds. Biological materials and methods, drugs, foodstuffs, drug therapy, plastics, petroleum derivatives, synthetic materials, pesticides, fertilizers and feeds are all protectable. General/mechanical inventions include everything from gears and engines to tweezers and propellers. For example, complex textile weaving machines, space capsule locks and seals, and diaper pins are all protected. This area also includes everything from zippers to fur-lined keyhole appliques. Electrical inventions include everything from lasers to light switches, from the smallest circuit details to entire system architectural concepts.
Computer software is patentable in its various forms. Application programs, such as the software that runs in a computer that controls a chemical processing plant or a rubber molding machine, are patentable. Software that runs a cash management account at a brokerage house or bank is also patentable. Even the microcode in a ROM that embodies the entire inventive notion of a new tachometer is patentable. Internal or operations programs that direct the handling of data in the computer's own operations are also patentable.
The basic requirement for obtaining a utility patent is that the idea be new and that it be embodied in a physical form. The physical form may be a thing or a series of steps to perform.
Design patents, too, are awarded for new ideas. Hockey uniforms, ladies' dresses, computer housings, automobile bodies, buildings, shoes and game boards are all protectable with this type of patent. But it covers only the appearance, not the idea or underlying concept. What you see is what you get. Design patents are generally less expensive than utility patents and in some cases are all the protection needed or obtainable.
There are more than one thousand utility and a few hundred design patents issued each week. Summaries of each patent are published each week in the Official Gazette of the Patent and Trademark Office. Copies of every issued patent are obtainable from the Patent and Trademark Office.
Copyright covers all manner of writings, and the word writings is very broadly interpreted. It includes books, advertisements, brochures, spec sheets, catalogs, manuals, parts lists, promotional material, packaging and decorative graphics, fabric designs, photographs, pictures, film and video presentations, audio recordings, architectural designs, and even software and data bases. Software and data bases are protected not only in written form but also as stored in electronic memory.
It is said that copyright does not protect a mere idea; it protects the form of the expression of the idea. But this is broadly interpreted. For example, one can infringe a book without copying every word. The theme is protected even though upon successive generalization the theme will devolve to one of seven non-protectable basic plots. This is apparent in the software area, where using the teachings of a book to write a program has resulted in copyright infringement of the book by the computer program. In another case a program was infringed by another program even though the second program was written in an entirely different language and for an entirely different computer. The form of the expression protected was not merely the actual writing or the coding, but the underlying concept or algorithm, the flow chart. Copyright is a very strong and readily achievable source of protection.
Utilitarian objects cannot be the subject of copyright; a hypodermic needle, a hammer, a lamp base. Yet stained glass windows, software, piggy banks and a sculpture useful as a lamp are granted copyright protection.
Copyright has a term of the life of the author plus 50 years. For corporate authors or works made for hire, the period is 75 years from the first publication or 100 years from creation, whichever is shorter. During the life of the copyright the owner has the right to reproduce, perform and display the work and exclude all others from those rights.
Once it is determined that a new idea, product or method is protectable with one or more forms of protection, including patents, trade secrets, trademarks or copyrights, those rights should be secured as quickly as possible. Each of those forms of protection is obtained in a different manner and provides a different set of rights.
Utility patents, which are the most commonly referred to, cover all sorts of things and methods of making and using things, such as computers, software, circuits, chemicals, biogenetic advances, machines, clothing and much, much more.
Patent protection is established only upon the issue of a patent on the invention. From the date of issue forward for 17 years, the owner of the patent has the right to exclude others from making, using and selling the patented invention. Prior to issue there are no rights under a patent.
The effort begins when an inventor or inventors conceive the invention. They, or a registered patent attorney on their behalf, will prepare a patent application and file it in the US Patent and Trademark Office. On the date that the application is filed there is a patent pending, but this confers no rights and no protection. Protection only occurs if and when the Patent Office agrees that the invention is patentable and issues the patent.
The patent application must contain a complete and understandable explanation of the invention. It does not have to be a nuts and bolts instruction manual. It is enough if the explanation conveys the inventive concept so that a person skilled in the art to which the invention relates can make and use the invention without undue experimentation. Further, the explanation must contain a full description of the best mode known by the inventor for carrying out the invention. The inventor cannot, for example, use the second best embodiment of the invention as an illustration for the patent application disclosure and keep secret the best embodiment. That will make the resulting patent invalid.
The filing timing of the patent application is critical. It must be filed within one year of the first public disclosure, public use, sale or offer for sale of the invention, or the filing will be barred and the opportunity to obtain a patent forever lost. This is known as the one-year period of grace.
A description of the invention in a printed publication is such a public disclosure. A mere announcement is not sufficient, unless it contains an explanation of the invention too. It does not matter that only a few copies of the publication were made available so long as it was an unrestricted distribution.
Market testing, exhibitions, even use by the inventor himself is a public use sufficient to start the one-year period running. This test as to whether a public use was an excused experimental use is rigorous. The inventor must show that it was the operation and function of the invention that was being tested, not the appeal or marketability of the product containing the invention. Further, some evidence of the testing should be established. For example, if samples were sent to potential customers for evaluation, it would be well to show that the customers returned filled out evaluation forms and that the inventor considered and even made changes based on those evaluations.
A sale will bar a patent even if the invention is so deep inside a larger system that it could not be easily or ever discovered. If the device containing the invention is sold, that is enough. The notion is that an inventor should be given only one year in which to file his patent application after he has begun to exploit commercially or attempt to exploit commercially his invention. Thus, the one-year period for filing a patent application begins to run against an invention embodied in a production machine installed in a locked, secure room from the first time a device produced by that machine is sold, even though the machine may never be known or seen by anyone other than the inventor. And it is not just a sale that triggers the running of the one-year period. An offer for sale is enough, even if the sale is never consummated.
A patent application contains three basic parts, drawings showing an embodiment of the invention; a written description of the embodiment referring to the drawings; and one or more claims. The definition of the patented invention, the protected property, is not what is disclosed in the drawings and specification portion of the application, since they are only the description of a specific embodiment. The coverage of the patent is defined by the third part of the application, the claims.
In order to receive a patent, the claims must be novel and unobvious. Novelty is a relatively easy standard to understand, either a single earlier patent, publication, or product shows the entire invention or the invention is novel. Obviousness is somewhat more difficult to grasp. Even though an invention may be novel it may nevertheless be obvious and therefore unpatentable. The test for obviousness is more subjective. If the differences between the invention and all prior knowledge, including patents, publications and products, were such that the invention would have been obvious to a person having ordinary skill in the art to which the invention pertains when the invention was made, then the invention is not patentable, even if it is novel.
It is the claims that the US Patent and Trademark Office examiner analyzes and accepts or rejects in considering the issuance of the patent. It is the claims that must be looked at to see if someone infringes a patent. It is the claims that define the patent property.
It is important to note that in the US a patent must be filed by the inventor and no one else. The inventor is the originator of the inventive concept. A project leader is not by his supervisory position alone an inventor. Neither is a technician or engineer who may have built the entire first working model. The inventor may have sold or assigned the patent application to someone else, including his employer, a partner in some enterprise, a company he has newly formed; or one inventor may sell his interest to the other. Thus, the inventor or inventors may not be the owners of the patent, but nevertheless it must still be filed in their names.
Design patents have a life of only 14 years, but are otherwise generally subject to the same rules as other patents. That is, the new and original ornamental design sought to be patented must be novel and unobvious, and must be filed within one year of the first public use, publication, sale or offer for sale.
Protection for computer software has been the subject of debate for many years. At one time there was strong opposition to the awarding of patents for inventions embodied in or involving software. That is no longer the case; now software is commonly patented. Copyright protection had been considered only for the coding. That, too, has changed; now it is clear that copyright protection covers not only the coding, the literal aspects of a computer program, but also the nonliteral aspects, such as the sequence and flow, organization and structure of the software, the user interface, menus and the like. Trade secret protection was available, but only if you kept the software secret, which made it awkward to embrace copyright. Now the Copyright Office has a procedure whereby software copyrights can be registered yet trade secrets contained in the software can be specifically preserved. There is then no excuse for releasing software without some sort of protection. Indeed, more than one form of protection can be acquired on the same software.
Broad patent protection is available for software. The scope of patent protection extends beyond merely the coding or routines, beyond the structure and organization, beyond the user interface and menus of the program to the broad underlying concept or algorithm.
All manner of software is protectable by patent regardless of how it is perceived; for example, as controlling industrial equipment or processors; as affecting data processing; or as operating the computer itself.
Software that controls industrial equipment or processes is patentable. A system for automatically operating a rubber molding device used a computer, which was well known, to run a molding device, which was also well known. The computer was programmed in accordance with a very well-known mathematical expression. The only thing that was new was the software, which controlled the whole system and opened the mold when the rubber part was properly cured. The software was the heart of the invention that for the first time automated that particular rubber molding device. Therefore, the software was patentable. A software method of operating entire systems of cooperating manufacturing plants was held patentable too. There is nothing suprising about this. A patentable system implemented in hardware should be no less patentable because it was also alternatively implemented in software.
Software that effects data processing is patentable, too, even though no machines or processes are involved. It makes no difference that the resulting output, reports and documents of the software are not themselves patentable or that the activity that the software replaces is not itself patentable. For example, software implementation of steps normally performed mentally may be patentable subject manner. Thus, while a method of doing business is not patentable subject matter, the software for operation of a computer to effect a business activity may be; for example, the software implementation of a system that automatically transferred a customer's funds among a brokerage security account, several money funds and a Visa/checking account upon occurrence of preset conditions was held to be patentable subject matter.
A software method of translating from one language to another (Russian to English), and a software method of preparing architectural specifications that describe the various materials and techniques used in the construction of a building were held patentable.
Many patents have been issued on data processing software; for a system used to register attendees at trade shows and conventions; for a securities brokerage cash management system; for an automated securities trading system; for funding a future liability by means of an insurance investment program; for managing an auto loan; for optimization of industrial resource allocation; for automatically determining and isolating differences between text files (word processing); for returning to a specified point in a document (word processing); and for determining premiums for insurance against specific weather conditions.
Software that operates the computer itself is patentable too. A data structure for allowing the portions of the system base of a computer stored in scratch pad registers to be altered or repositioned without completely reloading the system base or using special software was held patentable. The structure employed a firmware module that directed the data transfer between the scratch pad registers and a system base located in main memory. Parents have been issued on software for converting a source program into an object program; for programs that translate from one programming language to another; for a cursor control for a pull-down menu bar; for displaying images in windows on the video display; and for a computer display with window capability.
It matters not that the software is composed of old routines if they are assembled in a different way and produce a different result, for it is well established in patent law that a combination of old parts is patentable when the resulting whole is new. Indeed, most inventions are a new assembly of well-known parts or steps.
To determine patentability of a new piece of software, one need only consider the underlying concept or algorithm and compare it to existing competitive software. This can be done by reducing the software to a flow chart that illustrates the innovative notion embodied in the software. If this flow chart differs from similar illustrations for competitive systems, then there is the possibility that patent protection may be available. If this new software product is an important one, then the possibility of patent protection should be investigated.
Design patents, too, have been used to protect software. Design patents have been issued for visual features that are produced on the screen by the computer software, such as various screen display icons, for example, an icon for a telephone display.
A software patent must contain a written description of the software in such full and clear terms as to enable a person skilled in the art to which the software pertains to create and use the invention. Without a sufficient disclosure, the patent will be held invalid and all remedies against infringers will be lost.
To avoid such problems, those patenting computer software should provide complete flow charts of the system; actual coding or instructions for coding where the coding is not routine; and a clear explanation of the preferred hardware and how the hardware operates with the software to produce the desired results.
Copyright protection for software, while not as broad as patent protection, is nevertheless quite broad. Copyright protect just against the copying of the coding, but also against the copying of the organization and structure. That is what look and feel is all about; if, subsequently, a developer creates software that looks and feels like earlier copyrighted software, there is infringement, whether or not the coding of the two ae similar. Thus, it appeared to some that the very idea of a program could be protected.
Some in the industry were in favor of such strong protection, as it would do away with the need for licensing every piece of software to every customer, such as by the use of shrink wrap licenses. The industry could rely solely on copyright protection the way the recording and film industries do. Others felt that such broad protection would completely stifle creation and development of new software products because once a basic product, such as a spreadsheet or word processor, was launched, all others would be foreclosed.
But look and feel really embraces neither extreme. Copyright does not protect the idea behind the software; it protects only the form of the expression of the idea. For example, a copyright on a book that teaches how to turn lead into gold cannot prevent a leader from applying the teachings of the book to make gold from lead; that's the idea. However, if the reader places the book on a photocopier and makes copies of the pages, then the copyright is infringed; that is the form of the expression. But that does not mean that infringement can be avoided simply by rewriting the book in different words. And the copyright in software cannot be defeated simply by avoiding copying the code line for line. What the look and feel theory really does is make clear that copyright protection for software prevents against copying of nonliteral as well as literal elements.
The literal aspects of a program, the source code, object code and flow chart, are copyrightable. The nonliteral elements that include the overall organization of a program, the structure of its command system and the presentation of information on the screen also are protected by copyright.
This paper has presented a very elementary look at patents, copyrights and protection of intellectual property. What has been presented is only the tip of the iceberg that can sink your commercial endeavour.
Joseph S. Iandiorio is the founder of Iandiorio and Dingman, Waltham, MA. Iandiorio has over 25 years of experience, including a period as an examiner in the US Patent and Trademark Office. He is actively involved in fostering the creation and growth of small businesses and high technology companies. He serves as Director of the Massachusetts Technology Development Corporation, a venture capital fund; Director of the Smaller Business Association of New England; and a member of the Massachusetts Small Business Advisory Council and the Massachusetts Science and Technology Advisory Board. He has published many articles and delivers numerous lectures each year on topics in intellectual property law. He is a member of the Advisory Board on Intellectual Property at the Franklin Pierce Law School and the Steering Committee, and is a sponsor of the Worcester Polytechnic Institute Venture Forum. Iandiorio publishes his own newsletter, "Decision & Developments," which reports recent court decisions and new laws affecting intellectual property.
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|Author:||Iandiorio, Joseph S.|
|Date:||Apr 1, 1991|
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