Embed Size (px)
Citation preview
The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Presenting a live 90-minute webinar with interactive Q&A
IP Protection for Computer Software:
Leveraging Copyright, Trade Secrets,
Trademarks, Design and Utility Patents Evaluating the Protection Options, Weighing the Benefits and Risks
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
TUESDAY, AUGUST 15, 2017
Matthew D. Asbell, Partner, Ladas & Parry, New York
Aaron J. Capron, Partner, Finnegan Henderson Farabow Garrett & Dunner,
Palo Alto, Calif.
David Eramian, IP Counsel, Stripe, San Francisco
Tips for Optimal Quality
Sound Quality
If you are listening via your computer speakers, please note that the quality
of your sound will vary depending on the speed and quality of your internet
connection.
If the sound quality is not satisfactory, you may listen via the phone: dial
1-866-570-7602 and enter your PIN when prompted. Otherwise, please
send us a chat or e-mail [email protected] immediately so we can
address the problem.
If you dialed in and have any difficulties during the call, press *0 for assistance.
Viewing Quality
To maximize your screen, press the F11 key on your keyboard. To exit full screen,
press the F11 key again.
FOR LIVE EVENT ONLY
Continuing Education Credits
In order for us to process your continuing education credit, you must confirm your
participation in this webinar by completing and submitting the Attendance
Affirmation/Evaluation after the webinar.
A link to the Attendance Affirmation/Evaluation will be in the thank you email
that you will receive immediately following the program.
For additional information about continuing education, call us at 1-800-926-7926
ext. 35.
FOR LIVE EVENT ONLY
Program Materials
If you have not printed the conference materials for this program, please
complete the following steps:
• Click on the ^ symbol next to “Conference Materials” in the middle of the left-
hand column on your screen.
• Click on the tab labeled “Handouts” that appears, and there you will see a
PDF of the slides for today's program.
• Double click on the PDF and a separate page will open.
• Print the slides by clicking on the printer icon.
FOR LIVE EVENT ONLY
5
6
Form of IP
Protection
Pros Cons
Utility patent
(20 yrs)
• While abstract ideas are not patentable, there may be
potentially strong protection for inventive applications
of such ideas, compared to other forms of IP.
• In contrast with Trade Secret protection, a utility
patent, if it can be obtained, would allow enforcement
even against independent development by another
party.
• Likely difficult and costly to obtain
under the current state of the law
(though this may soon or
eventually change).
• Scope of protection may be
narrow, making it easier for others
to design around the patent.
• Results in disclosure of the work.
Design patent
(15 yrs)
• Protection covering ornamental features.
• Relatively easy and inexpensive to obtain.
• In contrast with Trade Dress protection, it is not
necessary to develop distinctiveness over time.
• Protection is not as strong as a
utility patent, and does not cover
functionality.
Copyright (life +
70 yrs)
• No need to take additional action for protection to
attach.
• Protection covering original expression.
• Registration allows for enforcement in federal court
and for statutory damages.
• Would not protect the
functionality that a utility patent
would cover.
• Results in disclosure of the work.
Trademark (10
yrs, renewable)
• Protection covering the name (and possibly other
features).
• Relatively easy and inexpensive to register.
• Protection limited to the name or
other source identifying features,
and does not cover functionality.
Trade Dress (10
yrs, renewable)
• Protection covering ornamental features.
• Relatively easy and inexpensive to register.
• Additional protection beyond the name.
• Possibility that there will be a
need to develop distinctiveness
over time before registration can
issue and rights can be enforced.
Form of IP Protection Pros Cons
Trade Secret
(indefinite)
• No registration
involved.
• New U.S. federal law
strengthens
enforceability.
• Requires procedures and protocols to be
in place and enforced to maintain
confidentiality.
• Does not protect against reverse
engineering or independent
development.
• While certain fundamental information
may be protectable in the United States,
it may not be possible to maintain
secrecy (and protection) once the work is
made available to the public.
• While rights may be enforced against a
party that misappropriates the protected
information, it may be difficult to
maintain secrecy (and protection) once
that party uses/discloses said
information. 7
Utility Patent and Trade Secret Protection
for Software
Aaron J. Capron
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9
Utility Patents
Patent Office Attitudes Towards Software Patents
Recent Developments in the United States
Drafting and Prosecution Strategies
Other IP Strategies
9
10
Patent Office Attitudes Towards Software Patents
SW with new HW is patentable
India
EPO
Brazil Russia China
USA
South Korea
SW per se is
patentable
Japan
10
11
Recent Developments in the USA
AIA Proceedings
§101 Jurisprudence and evolving USPTO Guidelines
Legislative Discussions regarding §101
11
12
§101 - Two-Part Alice Framework
Step 1: Is claim directed towards …
• Abstract Idea?
• Law of Nature?
• Natural Phenomena?
Step 2: If so, does claim contain an “inventive concept”?
• i.e., does the claim in practice amount to “significantly more” than a patent upon the ineligible concept?
12
13
What Is Abstract?
13
14
What is an “Abstract Idea”?
• USPTO instructs examiners to “identify the abstract idea as it is recited
(i.e., set forth or described) in the claim, and explain why it corresponds
to a concept that the courts have identified as an abstract idea.”
• “Examiners should not go beyond those concepts that are similar to
what the courts have identified as abstract ideas.”
14
15
§101 Rejections at USPTO
Source: aipla.org – ECCL Newsletter (1,000,000 office actions and notices of allowance sampled from 2012 - 2015).
Workgroups in TC 3600
Technology Centers at USPTO
Art Units in Workgroups 3620, 3680, 3690
15
16
Proposed Changes by IPO
101(a) ELIGIBLE SUBJECT MATTER
Whoever invents or discovers, and claims as an invention, any new and useful
process, machine, manufacture, or composition of matter, or any new and useful
improvement thereto, may obtain shall be entitled to a patent for a claimed
invention thereof, subject only to the exceptions, conditions, and requirements of
set forth in this Title.
101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY
A claimed invention is ineligible under subsection (a) if and only if the claimed
invention as a whole, as understood by a person having ordinary skill in the art to
which the claimed invention pertains, exists in nature independently of and prior to
any human activity, or exists solely in the human mind.
101(c) SOLE ELIGIBILITY STANDARD
The eligibility of a claimed invention under subsections (a) and (b) shall be
determined without regard as to the requirements or conditions of sections 102,
103, and 112 of this Title, the manner in which the claimed invention was made or
discovered, or the claimed invention’s inventive concept.
16
17
Trade Secrets
Federal Defend Trade Secret Act
Coexists with state trade secret law but likely to cause a shift
of trade secret litigation to federal
court (similar to patent, copyright, and trademark litigation)
Greater uniformity than previous state
law protection
Recent Waymo v. Uber case was filed
under the DTSA.
17
18
Tips for Avoiding § 101 Issues
#1: Focus Specification on Technical Aspects of Invention
– Describe, in detail, technical aspects and embodiments of the invention; include high level of detail on technical implementation, in description and figures; include specific language which is ready to be incorporated into claims for clarifying technical features
– Explain the technical problem and the technical solution; question inventors to fully explore what technical problem(s) has been addressed and what the technical solution(s) is
– Consider identifying the abstract idea in the background, with the goal of describing and claiming something that does not preempt the abstract idea
– Use extra care when invention is susceptible to being assigned to Technology Center 3600
18
19
#2: Claims Rooted In Technology – Avoid terminology that reads on mental thoughts:
– Recite more than conventional computer processing steps or functions
– Incorporate computer implementation
– Consider having system and CRM claims that differ in scope as
compared to method claims
– Consider “means-plus-function” claims. e.g., as Fed. Cir. said in
Enfish
OK Better
“determining a crash
occurrence”
“determining whether the
received sensor value exceeds
a crash threshold”
Tips for Avoiding § 101 Issues
19
20
#3: Proactive Prosecution
• Apply USPTO Guidance/Examples and hold examiner to requirements
– Alleged “abstract idea” must be consistent with court decisions
• Show invention is patentable over prior art
– Use those novel features to argue:
i. Claims directed to “significantly more”; and
ii. Claims do not “preempt” the alleged abstract concept
• Conduct interviews when possible
Tips for Avoiding § 101 Issues
20
21
Trade Secret Considerations
Establish internal policies regarding trade secrets
Set up trade secret committees
• In conjunction with Patent Committees?
Set up internal trade secret database
21
22
Disclaimer
These materials have been prepared solely for educational and
entertainment purposes to contribute to the understanding of U.S. and
European intellectual property law. These materials reflect only the
personal views of the authors and are not individualized legal advice. It
is understood that each case is fact specific, and that the appropriate
solution in any case will vary. Therefore, these materials may or may
not be relevant to any particular situation. Thus, the authors, Finnegan,
Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan
Europe LLP, and Fei Han Foreign Legal Affairs Law Firm) cannot be
bound either philosophically or as representatives of their various
present and future clients to the comments expressed in these
materials. The presentation of these materials does not establish any
form of attorney-client relationship with these authors. While every
attempt was made to ensure that these materials are accurate, errors
or omissions may be contained therein, for which any liability is
disclaimed.
22
24
Design Patents vs. Utility Patents
Utility Patent Design Patent
Each gives a time-limited right to exclude others from practicing your invention within the jurisdiction.
24
25
Design Patents vs. Utility Patents
Design: Whoever invents any new, original and ornamental design for an article of
manufacture may obtain a patent therefor, subject to the conditions and requirements of this
title. (35 USC §171)
Utility: Whoever invents or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title. (35 USC §101)
25
26
What’s the ‘article of manufacture’ when considering software?
Computer-generated icons, such as full screen displays and individual icons, are 2-dimensional images
which alone are surface ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int.
1992) (computer-generated icon alone is merely surface ornamentation). The USPTO considers designs for
computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for
design patent protection under 35 U.S.C. 171. Thus, if an application claims a computer-generated icon
shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies
with the “article of manufacture” requirement of 35 U.S.C. 171. Since a patentable design is
inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface
ornamentation, a computer-generated icon must be embodied in a computer screen, monitor, other display
panel, or portion thereof, to satisfy 35 U.S.C. 171. See MPEP § 1502.
MPEP 1504.01(A):
So, don’t forget your broken lines!
26
27
Design Patents vs. Utility Patents
Design Claim*:
The ornamental design for a display screen or portion thereof with graphical user interface, as shown and
described.
Utility Claim (1 of many):
1. A method, comprising:
receiving an indication of a desire to identify a playlist at a computing platform, wherein the indication
includes one or more search criteria; and
searching a playlist storage utilizing a processor of the computing platform to identify a desired playlist
result set comprising one or more user-published playlists, the one or more user-published playlists
individually comprising user-provided text describing a user's understanding, perception, and feelings
toward the playlist, wherein said searching the playlist storage comprises searching the user-provided text
according to the one or more search criteria.
*A design patent application may only have a single claim (37 CFR §1.153)
27
28
Design Patent Examples
The ornamental design for a graphical user interface for a display screen or portion
thereof, as shown and described.
28
29
Design Patent Examples
The ornamental design for a display screen or portion thereof with graphical user
interface, as shown and described.
29
30
Design Patent Examples
The ornamental design for a display screen or portion thereof with graphical user
interface, as shown and described.
30
31
Design Patent Examples
The ornamental design for a display screen or portion thereof with animated
graphical user interface, as shown and described.
31
Design Patent Examples
The ornamental design for a type font, as shown and described.
32
Key USPTO stats
Adapted from USPTO Patents Dashboard, 8/5/17
13.2 Months First Office Action
Pendency
18.9 Months Total Pendency
4 Months Rocket Docket, First
Office Action Pendency
42,712 Apps Current Unexamined
Application Backlog
The allowance rate is calculated by dividing the number of
design applications allowed by the number of design
applications disposed of in the current fiscal year. It includes
the abandonments for requests for continued prosecution
application (CPAs) in the disposals.
84% Allowance Rate
33
Parts of a design patent application
• Preamble, stating name of the applicant, title of the design, and a brief description of the nature
and intended use of the article in which the design is embodied;
• Cross-reference to related applications (unless included in an application data sheet);
• Statement regarding federally sponsored research or development;
• Description of the figure(s) of the drawing;
• Feature description;
• A single claim;
• Drawings or photographs; and
• Executed oath or declaration.
34
Drafting and prosecution considerations
• The drawing disclosure is the most important part of the application. Drawings
or photographs must be clear and complete, with nothing regarding the design
sought to be patented left to conjecture. Get them right the first time!
• Be mindful of the number of patentably distinct designs. Restrictions are
common, driving up costs. Designs are considered distinct if they have different
shapes and appearances, even though they are related articles.
• Plan ahead. Prosecution actions and deadlines are generally quicker than those for
utility patents.
35
What’s the appropriate scope for your application?
• A design patent is infringed if the following test is met:
• “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are
substantially the same, if the resemblance is such as to deceive such an observer, inducing him to
purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham Co. v.
White, 14 Wall. 511, 528, 20 L.Ed. 731 (1872).
• Post Samsung v. Apple, an applicant may want to consider filing for multiple design
patents, of varying scope.
See 137 S.Ct. 429 (2016)
36
Claiming priority from a foreign application
The Hague Agreement: mechanism for acquiring, maintaining and managing design
rights in countries and intergovernmental organizations that are members of the Hague
Union through a single international application.
• Results in a single international registration with individual effect in each of the
designated Contracting Parties, and
• Saves time and money.
International Route National Route
37
Possible advantages of design patents over other forms of protection
• Presumption of validity.
• Able to mark your products.
• Less expensive and generally easier to obtain, relative to utility patents.
• Do not publish, unlike most utility patents.
• No maintenance fees, unlike utility patents.
• Protect aspects of software that don’t qualify for trademark protection.
• There’s no creativity requirement, unlike copyright.
• Different measure for infringement relative to copyright and trademark.
• Damages*
38
NEW YORK • CHICAGO • LOS ANGELES • WASHINGTON, DC AREA • LONDON • MUNICH
Matthew D. Asbell
Partner
Software Trademarks
Summary
• Trademark as a “catchall” for the good will in a
brand, much of it possibly generated from other
forms of IP protection in the software
• What aspects of software can be the subject of a
trademark?
• Distinctiveness in software names, mobile app
store rules
• Scope of protection / coverage / jurisdictional
issues
40
Trademark as Catchall
41
Aspects of Software that can
be protected as Trademarks
• Name (& foreign equivalents)
• Logo
• Slogan or tagline
• Icon(s)
• GUI, colors, trade dress
• Sounds
• Virtual representations of products
42
SPECTRUM OF DISTINCTIVENESS
Less distinctive More distinctive
Distinctiveness in the U.S. ≠ Distinctiveness in other jurisdictions 43
Distinctiveness of Software
Marks • Trend toward genericness and
descriptiveness
• Mobile Store App Rules
• Acquiring distinctiveness
44
Distinctiveness
Less distinctive More distinctive
Serial No. 85746575 (October 16, 2014) Mere descriptiveness refusal for "Downloadable software applications for mobile telecommunications devices and handheld computing devices for organizing personal relationships and dating…“ Application refused as descriptive and laudatory; abandoned after appeal affirmed
Examples for App names for TIP CALCULATOR:
45
Scope of Coverage
• Software as a good versus
• Software as a service versus
• Service provided by/through software
• Specificity of purpose and field
– Likelihood of confusion analysis in the U.S.
vs. elsewhere
• Software as a component, including
hardware, documentation, etc.
• Evidence of use in the United States 46
Goods and services
related to mobile apps • IC 009 - Downloadable software in the nature of a mobile application for
{specify the function of the programs, e.g., for use in database
management, for use as a spreadsheet, for word processing, etc. and, if
software is content- or field-specific, the content or field of use}
• IC 042 - Providing temporary use of on-line non-downloadable cloud
computing software for {specify the function of the programs, e.g., use in
database management, use in electronic storage of data, etc. and, if
software is content- or field-specific, the field of use} [this does not
include providing on-line computer games that are played on-line]
• IC 042 – Computer software design and development
• IC 041 – non-downloadable publications and game software
• IC 038 - Transmission of sound, video and information from web cams,
video cameras or mobile phones, all featuring live or recorded materials
• IC 036 - Banking services; financial services, namely, providing
financial analysis, consultation, planning and management. 47
Global reach of
digital goods/services • Instantly available globally v. Expansion
over time
• Global trademark registration costs
• First to register vs. First to use
• Proactively registration reserves ability to
use and reduce free-riding
• Not seeking registration creates a risk of
hijacking
• Monitoring and enforcement 48
Use Requirements
• Use as a prerequisite to U.S. registration
– Goods (Classes 1-34)
• On product or packaging, labels, tags
• A screenshot of the splash screen or interface showing the mark
• On point-of-sale display associated with goods
• Screenshot of page where app can be downloaded
– Services (Classes 35-45)
• On advertising or marketing materials
• In course of providing the services
• Use after registration
– Maintenance and renewal
– Non-use cancellation
– Changes in distinctiveness
– Non-Trademark Use, Misuse and Genericide
49
Online Display
Associated with Goods
• Show the mark prominently
• In close proximity to a picture or description of
the goods
• Provide a means of immediate
purchase/download
• Other relevant factors in evaluating specimen
– Content and layout of the web page
• Presence of other marks
• Intervening text and unrelated material
– Overall impression the web page creates
– Description of the specimen 50
USE AS A TRADEMARK
51 51
Use as a Service Mark
52 52
Mark:
Services: Online social
networking services, in Class
45. • “Screenshot of applicant’s software".
• Services are indicated by the following:
• A highlighted "People" tab appears at the
top of the screen, as does a search bar
containing the wording "Search for
people."
• The wording "People I Follow (41)"
indicates that the user follows 41 people
and the screen shows a list of people
being followed, each specifying the
number of "people in common."
• Mark-services association is present because
the mark appears on the screen of an
electronic device via which the online services
are accessed, rendered, and experienced.
Additionally, the mark is displayed on the
screen below indicia implying the services as
well as showing the services as they are
accessed and rendered via the device.
53
USE AS A TRADEMARK
54
Software Domains
• Sample (new) gTLDs relevant to software
.software
.computer .systems
.app
.data .codes
.dev
.tech .mobi
.bot
.technology .mobile
.web
.webs .website
55
Software Copyrights
• Source code
– Including APIs
– See Google v Oracle
• Expressive content presented in the
software
• Artificial Intelligence
– See Naruto v. Slater
56
57
Form of IP
Protection
Sample Considerations Timing
Utility patent
(20 yrs)
• What does the software accomplish? Problem it
solves?
• What prior art in the space has been disclosed?
• How is the law regarding patentability of
software changing?
• Does a “rolling provisional” make sense?
• How might it integrate with hardware?
• Search immediately
• Apply prior to launch or offer to
sell or public disclosure for a
U.S. provisional patent
• Possibly defer filing in the
United States by up to one year
after disclosure, but many
foreign countries do not have
grace period
Design patent
(15 yrs)
• What constitutes an Article of Manufacture?
• What features are ornamental?
• Apply preferably prior to launch
or offer for sale or public
disclosure
• Possibly defer filing in the
United States by up to one year
from public disclosure, but many
foreign countries do not have
grace period
Copyright (life +
70 yrs)
• How readily accessible is the software code?
• What other expressive works are shown?
• Does it qualify as a work for hire?
• Is any of the work copied or derived from a third
party?
• What aspects are likely to be copied or modified
by others?
• No immediate action for
registration
• (Pre)Register at time of
anticipated or actual
infringement
57
Form of IP Protection Sample Considerations Timing
Trademark (10
yrs, renewable)
• Distinctiveness
• Prior Third Party
Marks that are
registered and/or
used
• Immediate search
• Narrow multiple options
• Apply to register well
before launch
Trade Dress (10
yrs, renewable)
• Functionality
• Distinctiveness
• Typically defer without
substantial investment in
building distinctiveness
• Revisit when
distinctiveness evident
Trade Secret
(indefinite)
• Ability to limit access
• non-disclosure and
non-compete
agreements
• Immediate efforts to
maintain as secret
58
THANK YOU. QUESTIONS?
David Eramian
Stripe, Inc. [email protected]
Aaron Capron
Finnegan, Henderson,
Farabow, Garrett &
Dunner, LLP [email protected]
Matthew Asbell
Ladas & Parry LLP [email protected]
59
