Intellectual properties, and in particular patents, are becoming a primary focus of many high-tech companies. Some companies spend hundreds of thousands of dollars, and more, to secure patent rights, and dedicate whole departments to managing intellectual property. Even during the recent economic downturn, where companies have been forced to be more careful with their economic outlays, the efforts to obtain patents has continued almost unabated.

Many companies have programs that encourage employees to contribute to corporate intellectual property. For example, it is not unusual for employees to receive bonuses when patent applications are filed with the United States Patent & Trademark Office. But except when companies have taken the time to explain the value of intellectual property to employees, high-tech workers do not understand the full significance and importance of intellectual property. Programmers, as a sub-culture, tend to view patents with suspicion, if not outright hostility, sticking to the principle that software should be free for all. While not a bad philosophy in the abstract, the idea that "software should be free" is not entirely practical. In a world where intellectual property rights exist, this belief tends to conflict with ordinary business practice.

I want to discuss some of the more important points relating to patents. To provide some background, I will describe what a patent is and how someone gets a patent. I will discuss what rights a patent confers. I will discuss how a person can use a patent to stop someone from setting on his/her rights, and how a person can try and protect against being accused of infringing someone else's patent.

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Ariel Rogson has been a patent attorney with the firm of Marger Johnson & McCollom, P.C. in Portland, Oregon for the past four and one half years. His focus is drafting patents relating to computer technology, primarily software. Representative clients that he works for include Intel, Novell, and Cisco. Ariel is admitted to practice before the United States Patent and Trademark Office, and he is a member of State Bar of Oregon, State Bar of California, and State Bar of Washington.

Ariel graduated from the University of California, Davis school of law. While attending law school, Ariel served as the senior research editor of the UC Davis Law Review. As a law school extern in 1996, Ariel worked for the Honorable Gregory G. Hollows drafting opinions on civil and criminal calendars, including decisions on summary judgments, discovery motions, criminal evidentiary issues and trial instructions.

Ariel's technical background includes B.S. degrees (with honors) in both Applied Mathematics and Computer Science in 1989 from the University of California, Irvine, and an M.S. in Computer Science in 1992 from University of California Los Angeles. At UCLA, Ariel specialized in Theory with a project in Data Hiding and Cryptography. Before entering law school, Ariel worked at Logicon in San Pedro, California, and at The Aerospace Corporation in El Segundo, California. As a member of their technical staff at Logicon, Ariel supported mission planning with code design, implementation, unit test, and integration test. As a member of the technical staff at The Aerospace Corporation, Ariel provided coding/supporting large programs, including numerical analysis (4th order Runge-Kutta) data interpolation, manipulation, and comparison, and plot generation.

Ariel is a member of AIPLA, the American Bar Association, IEEE, and the Association for Computing Machinery. A member of the Los Angeles chapter of the ACM from 1989-1994, Ariel served as editor of Data-Link from 1992-1994.

The program was "What Every Software Engineer Should Know About Patents" presented by Ariel Rogson of Marger Johnson & McCollom, P.C. This was a regular meeting of the Los Angeles Chapter of ACM.

Ariel explained that his company has been doing software patents before software was generally considered patentable. What is a patent? A patent is the right to exclude others from making, using, importing, etc. your invention. A patent is not the right to make the invention. A patent is a limited-term monopoly, currently in the United States measured as 20 years from the priority date of the application. A monopoly is granted in exchange for teaching others how to make/use the invention. Ariel emphasized that a patent is a right to stop someone from doing something, not the right to do something. You don't need to get a patent, you can depend on keeping the process as a trade secret and if you can maintain the secrecy you can keep control of it forever. However, if someone comes up with the same idea you don't have any control over it.

There are differences between patents and copyrights. At a high level, patents protect ideas; copyrights protect expressions. Only one person can have a patent to a particular invention; any number of different parties can have a copyright of an expression (if independently created). Patents and copyrights can coexist. A particular object can be covered by both copyright law (as an expression) and patent law (as an implementation of an invention). Copyrights offer more narrow protection than patents.

What do you need for a patent? You need patentable subject matter, it can be "process, machine, manufacture, or composition of matter". Basically it is anything that can be made by man. There is one patent for a micro-organism designed to eat petroleum products. The subject must be novel and non-obvious. It must either have been reduced to practice or the patent description must provide a constructive reduction to practice. Constructive reduction doesn't mean you have already made it, but you can make it and teach others to make it. As for utility, how useful is usually not a concern in the U.S. but can be an issue overseas. In answer to a question, Ariel said a machine is defined as something that is actually material and that a "finite state machine" would be regarded as an abstraction, not a machine. Physically it is on paper, but that the paper isn't the construct of the machine.

Is software patentable? In the United States, yes. The rest of the world is more stringent in patenting software, but generally yes. Machines that implement a software method are definitely patentable. Should I bother with a patent? There are two initial, guiding questions: Is the idea different from other available products/services and would someone be willing to pay for it. Make a search and dig through data to determine if the idea is different. If the idea is different and marketable then maybe a patent is a good idea. Notice of a patent pending has no particular legal status but does give notice to others that that patent procedures are in progress.

Who is the real audience to determine whether something is patentable? The real audience is the court, and could be a judge or a jury. This audience is unlikely to have technical expertise so the description needs to be simple. Ideally, the top level concept of the invention should be presented to the audience in one drawing and the drawing included in the patent application.

Ariel presented an example of a patent and explained it. The patent application includes background (what is the problem), summary (in short, what is the invention?), detailed description (how does the invention solve the problem?), claims (what are the elements of the invention?), and drawings (what does the invention look like?). Ariel presented a number of sample drawings that were simple block diagrams. The specification must enable someone skilled in the art to implement the invention. The question is "Could your colleague, not knowing the invention, implement the invention from the Specifications and Drawings of the patent?".

There are deadlines for patenting. In the United States a patent must be filed within one year of first public use, public description, or offer for sale. Even a secret use or secret offer for sale starts the U.S. clock for the deadline. In the rest of the world, the rule is before the first public use or public description. Offer for sale may or may not be a factor. The inventor must disclose any "material prior art" that he knows about that might apply to his idea. What qualifies as "material" and "prior art" requires careful determination. It depends on the type of publication, date if publication, etc. and you are advised to consult an attorney. Can I do this myself? Maybe, the specification and drawings can typically be done by anyone, but the claims require care in drafting. How do I draft a specification? Provide a description of the problem and a high-level overview of the art in which the invention lies. Provide a detailed description of the invention including the components that make up the invention, how they fit together, and how the invention operates. Should source code be included? Since a patent protects an idea, typically source code is not needed, but if source code explains something better than a description would, then source code might be useful to include. It is usually preferable to avoid source code. You might inadvertently limit the scope of the patent by including it.

What is the effect of open source software on intellectual property? They coexist. One can patent software if it is developed without using anyone else's source code/software. If someone else's source code/software is used, check the attached license to determine rights. You may have the philosophical belief that software should be free, but not everyone agrees with that concept. IBM has topped the list of companies that patent software for the last 10 years. Except for Matsushita, Sony, General Electric and Mitsubishi, all of the top 15 patenting companies in 2002 are computer related, and all of the top 15 patenting companies are high-tech companies.

What is infringement? Infringement occurs if you make/use/import a patented invention of someone else without permission. Ignorance is no excuse, you can do it inadvertently. If someone says that you infringe consult an attorney. It is a bad idea to ignore a warning letter. Ariel gave as an example a company that ignored a charge of infringement and an offer by the patent owner to sell them a license. The company refused the licensing offer, a jury decided they were guilty of infringement, and $23.1 million in damages were awarded. How do you infringe? If you make or import (an object) or implement (a method) a claim of a patent, you infringe. However, the patent must be valid, it must have been issued and still be in force. One defense against claims of infringement is that the patent is invalid because the Examiner failed to consider some prior art that would have prevented the patent from issuing. Another is that you are not infringing the patent because it does not apply to your object or method. One problem is that the burden of proof is on you because the Examiner is assumed to have given the patent application a thorough review before approving it. The Patent Office has provided a new defense based on prior use. If you reduced to practice the invention at least one year before the effective filing date of the patent, and commercially used the subject matter before the effective filing date of the patent, this defense can apply.

Dates are very important, keep accurate notes on when ideas were conceived. Dates can determine whether you can get a patent, and whether you can defend against a claim of infringement. Once an idea is conceived, document the invention. Include a low-level description of the invention and a high-level explanation of the art and how the invention fits into the art. Keep a paper trail, including records about prior art. Start thinking about patenting, even before the inventions is complete. Later improvements might be separately patentable and waiting until the invention is "complete" might be a risky delay. Public disclosure of any kind starts the clock ticking on the deadline to file the patent application, and can foreclose international protection. Public use includes use, white papers, symposia demonstrations, etc. Drafts of white papers can be used for provisional patent applications, if enabling information is included. An offer to sell could be considered public disclosure.

If you have many inventions, think about setting up a patenting committee to review inventions for the most likely patents. Develop a standard from for disclosing inventions to the patenting committee. There are certain pieces of information a patent attorney always needs: inventor's names, addresses and citizenship. Reward employees for participating in the patent process. It takes time to write up the invention disclosure, to talk with patent attorney (if using one), and to review draft applications. When the employee is working on a patent, he is not doing his regular work (and he might prefer his regular work to working on a patent).

Establish a document retention policy and follow it carefully. If the possibility of infringement suddenly arises, don't suddenly begin destroying evidence, this could be considered bad faith. If documents are routinely destroyed per policy, document destruction is not generally in bad faith. However, if documents might be important to the case, maybe they should be retained even contrary to policy. The usual retention time is 5-7 years, but if the material is important it should be kept longer. Email should be treated the same way as a letter, and sometimes people treat it too informally.

Filing multiple patents in other countries can become very expensive.

You may contact Ariel Rogson at: ariel@techlaw.com

This was a very interesting presentation. Some us remember Ariel back when he was a bright young Computer Science graduate who seemed headed toward a career of developing complex software in the aerospace industry. Indeed, that is exactly what he did at Logicon and the Aerospace Corporation before entering law school. He was also active in LA ACM affairs and was editor of DATA-LINK for three years. His biography (see the details in the May DATA-LINK) shows his ability to excel in multiple fields.

This was the ninth meeting of the LA Chapter year and was attended by about 25 persons.
Mike Walsh, LA ACM Secretary