Beyond the Patent – Other Forms of IP Protection for Tech Innovators

 

I am frequently asked whether other forms of intellectual property protection are available to creators of technology inventions. The answer is YES.

If the invention involves computer code, copyright protection can be secured for the code. Copyright protection would protect the expression (ie, the code itself and not any inventions that it contains) from copying by another. Copyright protection lasts longer than a patent (life of the inventor plus 75 years or 95 years for corporate owned copyrights verses 20 years from the date of filing a patent application). Unlike a patent, independent creation is a defense to copyright infringement. So, if someone created the same code without access or copying the inventor’s code, the second creator cannot be stopped from marketing their code. Copyright registration in the United States is obtained by submitting the code to be protected to the U.S. Copyright Office.

Integrated circuit designs, called “mask works” under the Semiconductor Chip Protection Act of 1984, are two and three dimensional layouts of integrated circuit chips filed as an application for Mask Work Registration with the U.S. Copyright Office. Registration of a mask work protects only the specific topology of the chip, not the functional aspects of the design. A second creator who makes a similarly functioning component using a different design cannot be barred from marketing their component by the registrant of the mask work based upon same functionality. Once registered, the creator of the integrated circuit design has standing to block a copier from making chips using the registered design. The protection is narrower than a copyright however in that the ability to make “derivative works” (chips whose design is a modification of the registered design) is not the exclusive right of the registrant of the mask work. Protection lasts for a period of 10 years.

In many countries other than the United States, a technology invention can be registered as a utility model (or “petty patent”).Utility model applications are similar to patent applications but are not examined; rather the receiving governmental office issues the patent after verifying that the application meets various required formalities. The rights conferred by utility models generally are similar to patents; however, the life of the utility model is typically shorter (6-15 years verses 20 years for a patent).

In the European Union and some other countries, database rights (or compilations) are protected by a sui generis right to prevent unauthorized extraction from, or copying of the compilation. The rights are created automatically and vest in the creator of the database without further action. These rights last 15 years in the EU.

Note that these forms of protection are not necessarily mutually exclusive. One could copyright the code, file a patent application on the inventive aspects implemented using software, as well as hardware, for example.

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So You Have Your Patent… What Happens Now?

First and foremost, congratulations!

But this is not the end of the process, actually just a step along the way. Firstly, instruct your patent attorney to file a continuation application claiming priority from your allowed patent application. This must be done before your patent application issues (a requirement termed “co-pendency”). Discuss with your patent attorney whether to use the continuation application to pursue claims based upon your specification that also cover your competitors’ products (called “targeting”), obtaining claims of broader scope by removing any extraneous limitations not core to the claim’s patentability.

In addition, feel free to discuss your patented work with others to create joint ventures, licensing arrangements, and so forth to commercialize your technology. Your patent gives you a way to protect your technology from others stealing it and using it. You have been waiting to talk about it… now is your chance.

Moreover, consider subscribing to a service that will pay/remind you to pay maintenance fees on your issued patent. It is critical that you pay maintenance fees for US patents on time and that come due at 3, 7 and 11 year intervals after the date of issue of your patent. The last thing you want to happen is to lose your patent because you forgot to pay a fee.

Also, I advise that you maintain a notebook in which you document improvements to your technology. At regular intervals, proactively meet with your patent attorney to discuss additional patent applications protecting your later work and improvements. You cannot assume that your original patent covers any changes or improvements, no matter how seemingly small.

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Your Company’s Transition to Software as a Service; Legal Considerations Regarding Patents, Copyrights and Trademarks (part 2 of 2)

By Paul A. Durdik of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, October 17, 2017.

Your company is adopting a Software as a Service (SaaS) business model. How will you adapt? Your business has been producing and selling a software product successfully for some time. Change has come, however, and you’ve just received news from the CEO that your company will adopt a SaaS

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What are the Options When the Big Bad Wolf Comes Knocking Demanding a Patent License? (1 of 2)

By Paul A. Durdik of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, October 3, 2017.

Your successful startup has caught the attention of an established company brandishing a bunch of patents and asking you to take a license. How will you explain the complexities of this to your company’s leadership?

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Your Company’s Transition to Software as a Service; Legal Considerations Regarding Customer Agreements (part 1 of 2)

By Paul A. Durdik of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, September 19, 2017.

Your company is adopting a Software as a Service (SaaS) business model. How will you adapt? Your business has been producing and selling a software product successfully for some time. Change has come, however, and you’ve just received news from the CEO that your company will adopt a SaaS

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Estimating an IP Budget Based on Business Goals

Establishing an IP budget for an enterprise is an important task for decision makers to undertake. In the article, “Rethinking the Annual Patent Application Filing Target,” recently published by IPWatchdog (http://www.ipwatchdog.com/2017/04/11/rethinking-the-annual-patent-application-filing-target/id=81911/), Raymond Millien & Stephen Glazier discuss considerations for establishing an IP budget for an enterprise.

Typically, the number of patent applications to be filed in the next year is estimated, and the budget is based on the cost of filing the estimated number of applications.

A common way to establish patent application filing targets is to start with the number of patents filed during the previous year, and adjust that number based on the current health and financial success of the company. The article provides these example adjustments:

Is has been a ______ year financially for the company.

A. Good (add 5%)

B. Great (add 10%)

C. Bad (subtract 5%)

D. Really Bad (subtract 15%)

The benefit of this approach is that it is generates a number, as is often required by a “C-suite executive,” that is grounded based on historical information. However, drawbacks of this approach include the:

· Level of innovation during the previous year might not be a good predictor of the future level of innovation

· Generated number of patent applications will guide employee behavior even though the number is arbitrary and derived without considering business goals.

Employees who are measured based on the target will be rewarded to innovate to the level of the target even when such behavior is not beneficial to the enterprise. Filing fewer patent applications than the targeted number may result in losing a bonus or having the following year’s budget cut. If actual innovation is less than predicted, an employee is likely to submit “junk” invention disclosures. Conversely, if the actual innovation is more than predicted, some important inventions will not be pursued for lack of funding.

The article suggests estimating the patent application filing target more accurately by tying the target estimate to business goals and metrics and provides ideas and examples to use. For example, the amount of the IP budget may be tied to the amount of investment in R&D. Tying the estimated budget to business goals leads to more strategic targeting of patent application filings.

For large enterprises, specific metrics are proposed that include benchmarking IP portfolios against competitors and other companies of similar size and industry. Two specific suggestions include benchmarking the number of PCT applications filed and the number of U.S./European patent application filings per $1M in domestic R&D expenditure. Goals regarding the desired position in the ranking can indicate the number of patent applications needed, and that number can be factored into the target.

Enterprises of any size can consider the percentage of an enterprise’s sales or profits that are actually covered by one or more issued patents and increasing the percentage of coverage using targeted brainstorm or patent harvesting. Similarly, the percentage of new product (or technology) introduction projects that are covered by patent applications or a patent can identify areas where IP investment can be targeted.

In conclusion, we like Millien & Glazier’s framework for establishing budgets. While practices differ greatly among organizations, this approach serves as a reasonable starting point.

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Responding to Statutory Double Patenting Rejections

By Andrew Dunlap of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, August 22, 2017.

When was the last time you received a rejection of patent claims from the U.S. Patent Office that left you scratching your head… so much so, that you had to look up some law to figure out how to handle it? Recently, I had to respond to a

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Best Practice Tip: Who Should Be Named as the “Applicant” for Incoming Foreign-Originated Applications?

By Warren Wolfeld of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, August 8, 2017.

35 USC 119(a) is the statute that allows one (an individual, entity, etc.) to claim priority to an earlier “priority” application in another country. However, this statute appears to have been written for the pre-AIA regime in which US

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Top 5 Tips for Young Lawyers in Private Practice Today

By James F. Hann of Haynes Beffel & Wolfeld LLP posted in patent law  on Thursday, July 27, 2017.

Recently, we sat down with Jim Hann, one of HBW’s most senior and experienced intellectual property lawyers, to discuss what it takes for young associates to succeed within the commercial law firm environment today.

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