This session was presented by Michael Leachman, Partner at Jones Walker, and Blair Suire, Associate at Jones Walker. Find out more at http://www.joneswalker.com.

1. Michael Leachman
Blair Suire
Jones Walker LLP
Legally Protecting Software:
Benefits, Pitfalls and Misconceptions

2. COPYRIGHTS

3. TYPES OF INTELLECTUAL PROPERTY
Copyrights
Patents
Trade Secrets
Trademarks

4. TYPES OF INTELLECTUAL PROPERTY
Artistic Expression
Inventive
Concepts
Confidential Information
Brands

5. TYPES OF INTELLECTUAL PROPERTY
Source & Object
Code; Look and Feel
Novel
Process
Implemented
by Code
Source Code
Company
Name; Logos

6. COPYRIGHTS

7. v Literary works (books, catalogues, printed advertising, websites,
software)
v Musical works (music, lyrics, advertising jingles)
v Dramatic works (plays, musicals, operas)
v Pantomimes and choreographic works (ballets, other
choreographed dance works, mime works)
v Pictorial, graphic and sculptural works (photographs, maps,
paintings, stuffed animals, graphic art, cartoon strips)
v Motion pictures and other audiovisual works (movies,
computer games, films, television shows, interactive multimedia)
v Sound recordings (music, sounds, lyrics)
v Architectural works (building design embodied in plans, or building
itself, includes overall form, as well as arrangement of spaces and elements)
COPYRIGHTABLE SUBJECT MATTER

8. REQUIREMENTS FOR COPYRIGHT
Original
Work
of
Authorship
Fixed
in
a
tangible
medium
Copyrightable

9. Exclusive Copyright Rights
Exclusive Rights to the Owner:
1. To reproduce the work
2. To prepare derivative works
3. To distribute copies to the public
4. To perform the work
5. To display the work
6. To perform the work publicly by means of digital audio
transmission (e.g., sound recordings)

10. v Ideas, concepts, principles, discoveries
v Method of operations, procedures, processes (distinguished
from explanation or description)
v Useful articles
v Facts (as opposed from an original expression of factual
matter)
v Titles, names, short phrases (e.g. “March Madness”)
COPYRIGHTABLE

11. COPYRIGHTABLE

12. COPYRIGHTABLE

13. COPYRIGHTABLE

14. COPYRIGHTABLE

15. v Default Rule: Author is the Owner
v Exception: “Works Made for Hire”
COPYRIGHT OWNERSHIP

16. COPYRIGHT OWNERSHIP
Work-Made-for-Hire Definition:
1. a work prepared by an employee within the scope of his or her
employment
or
2. a work specially ordered or commissioned for use:
• as a contribution to a collective work,
• as a part of a motion picture or other audiovisual work,
• as a translation,
• as a supplementary work,
• as a compilation,
• as an instructional text,
• as a test,
• as answer material for a test, or
• as an atlas,
if the parties expressly agree in a written instrument signed by
them that the work shall be considered a work made for hire.

17. Transfer of Copyright
A transfer of copyright ownership is not valid unless an
instrument of conveyance is in writing and signed by the
owner of the rights conveyed.
RULE: GET IT IN WRITING!

18. Copyrights—Fact or Myth?

19. Copyrights—Fact or Myth?
I paid for it, so I own the copyright.
X

20. Copyrights—Fact or Myth?
I can take just a little portion of the work.

21. Copyrights—Fact or Myth?
I don’t need a license because I’m going to alter the work.

22. Copyrights—Fact or Myth?
If I change at least 10% of the work, it’s not copyright
infringement.

23. Copyrights—Fact or Myth?
If I give credit to the copyright owner, it’s not copyright
infringement.

24. Limitations of Copyright Protection

25. Limitations of Copyright Protection

26. COPYRIGHT VS PATENT
v Copyright – protects expression
v Patent – protects inventive concepts & ideas

27. PATENTS

28. WHAT DO THESE COMPANIES HAVE IN COMMON?

29. THE WAR OVER SOFTWARE PATENTABILITY

30. THE WAR OVER SOFTWARE PATENTABILITY

31. THE WAR OVER SOFTWARE PATENTABILITY

32. EXCLUDED SUBJECT MATTER

33. WHY ARE PATENTS VALUABLE?
Ø A patent prevent others from:
• making,
• using, and
• selling the patented invention
Ø Term – 20 years from filing date of patent
application

34. PATENT BASICS
Ø A patentable invention is any process, machine, manufacture, or
composition of matter that is:
§ Patentable subject matter
§ Useful
§ Adequately described
§ New (novel)
§ Non-obvious
Determined by the
application
Determined by the
prior art

35. PATENTABLE SUBJECT MATTER
Ø Process
Ø Machine
Ø Manufacture
Ø Composition of matter

36. PATENTABLE SUBJECT MATTER
Ø Process
Ø Machine
Ø Manufacture
Ø Composition of matter

37. EXCLUDED SUBJECT MATTER—LAWS OF NATURE

38. EXCLUDED SUBJECT MATTER-PHYSICAL PHENOMENA

39. EXCLUDED SUBJECT MATTER
Abstract ideas

40. CLS BANK V. ALICE CORP

41. CLS BANK V. ALICE CORP
The Patent
Ø Various method and system claims to a computerized
currency trading platform used by banks as a low-risk way
to reconcile pending transactions, particularly across
different time zones

42. CLS BANK V. ALICE CORP
The District Court Decision
Ø Summary judgment that the claims were directed to abstract
ideas and thus ineligible for patent protection under 35
U.S.C. §101

43. CLS BANK V. ALICE CORP
Questions before the Federal Circuit
Ø What is the test for determining if a computer-implemented
invention is a patent-ineligible abstract idea?
Ø When, if ever, can a computer in a claim lend patent
eligibility to an otherwise ineligible idea?
Ø Should it matter to patent eligibility that the computer
implemented invention is claimed as a method, system, or
storage device?
Ø Should such claims be considered equivalent for
determining patent eligibility?

44. CLS BANK V. ALICE CORP.
Method
Media
System
1
Lourie
Not
Eligible
Not
Eligible
Not
Eligible
2
Dyk
Not
Eligible
Not
Eligible
Not
Eligible
3
Prost
Not
Eligible
Not
Eligible
Not
Eligible
4
Reyna
Not
Eligible
Not
Eligible
Not
Eligible
5
Wallach
Not
Eligible
Not
Eligible
Not
Eligible
6
Rader
Not
Eligible
Not
Eligible
Eligible
7
Linn
Eligible
Eligible
Eligible
8
Moore
Not
Eligible
Not
Eligible
Eligible
9
O’Malley
Eligible
Eligible
Eligible
10
Newman
Eligible
Eligible
Eligible

45. PATENT ELIGIBILITY: BEST PRACTICES
Software qualifies for patent protection when:
Ø does not preempt an abstract idea
Ø involves a human contribution that adds additional
limitations narrowing the claims to cover
significantly less than the full abstract idea

46. PATENT BASICS
Ø A patentable invention is any process, machine, manufacture, or
composition of matter that is:
§ Patentable subject matter
§ Useful
§ Adequately described
§ New (novel)
§ Non-obvious
Determined by the
application
Determined by the
prior art

47. DESCRIPTION REQUIREMENTS
Ø Application must describe invention and manner of
making and using it
Ø Description must be sufficiently specific and clear
that it enables a programmer to make and use it

48. DESCRIPTION REQUIREMENTS & SOFTWARE
Software patent should describe:
Ø software details
Ø algorithms
Ø software module to execute each step
Ø data passed between modules
Ø flowcharts
Ø hardware

49. DESCRIPTION REQUIREMENTS & SOFTWARE
Ø Not necessary to include code
Ø Description should enable a programmer to write
code

50. DESCRIPTION REQUIREMENTS & TIMING
v Important to file as early as possible, but not at
expense of filing with an inadequate disclosure
v Once filed, no new matter may be added

51. PATENT BASICS
v A patentable invention is any process, machine, manufacture, or
composition of matter that is:
§ Patentable subject matter
§ Useful
§ Adequately described
§ New (novel)
§ Non-obvious
Determined by the
application
Determined by the
prior art

52. NOVELTY
Patent not allowed if, before your filing date, your invention was:
Ø patented
Ø described in a publication
Ø in public use, on sale, or otherwise available
Exceptions: Disclosures made 1 year or less before your filing date
are not prior art if:
Ø your disclosure
Ø disclosure was after your public disclosure

53. NOVELTY
Patent not allowed if, before your filing date, your invention was:
Ø described in a patent application naming another inventor that
has an earlier filing date
Unless:
Ø the other inventor’s application is not published and no patent
issues from it
Ø information was obtained from you
Ø you publicly disclosed the same information before the other
inventor’s application was filed
Ø your invention and the disclosed information were owned by the
same person not later than your filing date

54. TIMING
Ø U.S. Grace Period: In the United States, a patent
application can still be filed within 1 year of your:
§ first publication
§ first offer for sale, or
§ first public use of the invention
Ø In most foreign countries, public
disclosure=forfeiture of patent rights

55. EVENTS TRIGGERING ONE-YEAR CLOCK
Ø Beta tests
Ø Demonstrations
Ø Web sites
Ø Internal use for commercial purpose

56. PATENT BASICS
Ø A patentable invention is any process, machine, manufacture, or
composition of matter that is:
§ Patentable subject matter
§ Useful
§ Adequately described
§ New (novel)
§ Non-obvious
Determined by the
application
Determined by the
prior art

57. NON-OBVIOUSNESS
Patent not allowed if:
Ø claimed invention would have been obvious to a
skilled artisan before the effective filing date

58. KEY POINTS - COPYRIGHT
Ø Copyright protects expression of an
idea, not the idea itself.
Ø Transfer of copyright ownership must
be in writing.

59. KEY POINTS - PATENT
Ø Patent law is unsettled on issue of whether
software qualifies for patent protection.
Ø Not necessary to include code in a software
patent application, but the application should
enable a programmer to write the code.
Ø Patent application should be filed before
public disclosure of the invention.

60. Questions?
“Legally Protecting Software: Benefits, Pitfalls and Misconceptions”
Presented by:
Michael Leachman(mleachman@joneswalker.com)
Blair Suire(bsuire@joneswalker.com)
Jones Walker LLP