applications for intellectual property international ip protection ip enforcement protecting...
TRANSCRIPT
Applications for Intellectual Property
International IP ProtectionIP EnforcementProtecting Software
JEFFREY L. SNOW, PARTNER NATIONAL SBIR/STTR CONFERENCE
COOPER & DUNHAM JUNE 16, 2015
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International IP Protection
Many types of intellectual property can be protected, both domestically and internationally◦ Patents◦ Designs◦ Trademarks◦ Copyrights◦ Trade dress◦ Trade secrets
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Patents One year period to claim priority to earlier application (e.g., filing date of U.S. provisional or non-provisional application)◦ Direct national filing◦ PCT (Patent Cooperation Treaty) application
Non-extendable deadline
Absolute novelty requirement in most countries
Beware: Without priority claim, your own earlier patent or patent application may become prior art to your later application
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Direct National Filings Direct filing in each country
There are regional patent offices that cover multiple countries◦ European Patent Office (EPO)◦ Eurasian Patent Office◦ African Regional Intellectual Property Organization (ARIPO)
Filing requirements vary by country
Examination varies by country
Different types of foreign patents◦ Utility models (e.g., Germany)◦ Innovation patents (Australia)
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PCT Applications Administered by WIPO (World Intellectual Property Organization)
Placeholder for national applications
File in a “receiving office” and select a national patent office for examination
Search conducted and substantive examination
Deadline to file in individual countries ◦ Usually 30 months or 31 months from earliest claimed priority date◦ Watch out for other deadlines
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Designs Protect the ornamental aspects of a product
◦ Based on drawings
Patents in the United States; registrations in other countries
Similar procedures to utility patents
Six month period to claim priority to earlier application
New procedure for multi-national filing under the Hague Agreement
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Considerations for International IP Protection
Standards vary by country◦ Substantive examination (patentability)◦ Patentable subject matter◦ Prior art
Effect of publication
Expense◦ Filing fees and attorneys’ fees◦ Ongoing maintenance fees and annuities
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IP Enforcement Patent cases in Federal Courts
Infringement actions
Declaratory judgment actions
ITC (International Trade Commission) actions
Patent Office post-grant procedures◦ IPR (inter partes review)◦ PGR (post grant review)
Interplay between post-grant procedures and court actions◦ Preclude further review of issues or prior art◦ Stay of court actions
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Elements of Infringement Actions Infringement claim
◦ Ownership of patent or right to enforce it◦ Patent presumed valid◦ Prove infringement by preponderance of evidence
Defenses◦ Non-infringement◦ Invalidity based on prior art or failure to comply with requirements of patent statute◦ Unenforceability (i.e., inequitable conduct)
Remedies◦ Damages (reasonable royalty or lost profits)◦ Injunction
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Considerations for IP Enforcement Enforcing foreign corresponding patents
Time and expense
Patent reform efforts◦ Courts
◦ Heightened legal standards◦ Fee shifting
◦ Legislative◦ America Invents Act (AIA)◦ Post-grant procedures
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Protecting Software Question: What is patentable?
Patentable subject matter◦ 35 U.S.C. § 101: process, machine, manufacture, composition of
matter◦ Excluded: laws of nature, physical phenomenon, abstract ideas
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Considerations for Protecting Software
Latest Supreme Court case: Alice Corp. v. CLS Bank◦ Test: (a) Is the claim directed to an abstract idea? (b) If so, does the claim contain an
“inventive concept” sufficient to transform the abstract idea into a patent eligible application?
◦ Specific issues for software◦ Reciting a general purpose computer may not add an “inventive concept”◦ Are the claimed functions performed by the computer purely conventional?
May or may not depend on how invention is claimed◦ Method◦ Computer-implemented system◦ Computer-readable medium
Consider copyright protection
