Protecting DI
How can we protect Digital Innovation?
Digital Innovations can be protected under different types of intellectual property (IP) laws.
In many countries, computer programs (i.e., source code, object code, or scripts), screen materials, and databases can be protected under copyright laws. Two major advantages of copyright protection lie in its simplicity and low cost. There are three requirements for obtaining a copyright: (1) Originality; (2) Minimal creativity; and (3) Fixation in a tangible medium. Copyright protection does not depend on any formalities, such as a formal registration or an examination process, such as with a patent. Importantly, copyright protection begins as soon as a work is created and put into a tangible medium. For example, in the case of software, copyright protection would begin as soon as the author creates an original code and types it into a computer. In addition, a copyright owner enjoys a relatively long period of protection that can last for several decades
Databases, however, may have limited protection under copyright law. Compilations of data and compilations of pre-existing works (or “collective works”) may be copyrightable if the materials are selected, coordinated, or arranged in a way that the resulting work, as a whole, constitutes a new work. Copyright does not exist when content is compiled without creativity. Importantly, copyright laws specifically require that the copyright in a compilation extends only to the compilation itself (i.e. the database), and not to the underlying materials or data.
The limited protection provided to computer programs and databases through copyrights makes it imperative that software and database owners and developers protect their software code, databases, and underlying data through contract law. Through an enforceable contract (e.g. a license to use the software and database), the end user can be prohibited from extracting data from the database or modifying the software for uses other than those intended by the software/database owner.
Are Digital Innovations patentable?
Copyrights protect the literal expression of a creative work (e.g., a computer program). They do not, however, protect the underlying inventive idea or discovery (e.g., the processes, methods of using, etc.) underlying the computer program, which could have considerable commercial value. These ideas and discoveries are protectable under patent law. The patentability of software is a tricky subject as the variations from country to country are less than clear. Northwestern selectively protects IP outside of the United States
United States
In the US, patent-eligible subject matter is defined as “any new and useful process, machine, manufacture, or composition of matter.” Patent ineligible subject matter includes laws of nature, natural phenomena, abstract idea, and other judicial exceptions. Recent developments in US law have limited the scope of eligibility for software patents because they tend to contain abstract ideas (see, e.g., Alice Corp. v. CLS Bank International, 573 US, 134 S. Ct. 2347). In Alice, the Supreme Court established a two-step process. First, to be eligible, the Examiner must decide whether the software contains an abstract idea, and if so, whether the elements individually or in combination transform the claim into a patent-eligible invention. Second, the Examiner must determine whether the patent involves an inventive concept. That is, the patent must add something significantly more than just an abstract idea. The path to obtaining software patents has gotten harder. Since the Alice case in 2014, there has been a significant decrease in the number of patent applications filed for software or computer programs. However, recently, the US Patent and Trademark Office (USPTO) has granted many patents where the applicants have adequately described their invention, how it can be implemented, the problem(s) the invention solves, and the benefits the invention.
Post-Alice, there have been several cases that elaborate on the issue of software and patent eligibility. For example, in the case of OIP Technologies v. Amazon (788 F.3d 1359 (2015)), the patent at issue referred to a method of pricing a product for sale that included generating stats concerning prices, estimating the likely outcomes for potential prices, and selecting the price based on the estimated outcome. The patent was held invalid for ineligible subject matter (i.e., abstract idea) because the process was “… merely conventional computer activities or routing gathering steps.” In the case Intellectual Ventures v. Capital One (850 F.3d 1332 (2017)), the patent at issue referred a computerized price-optimization method that helps vendors automatically reach better pricing decisions through automatic estimation and measurement of actual demand to select prices by (1) testing each price of many prices by sending a first set if electronic messages over a network to device; (2) gathering within a machine-readable medium, statistics generated during the testing about how potential customers responded to the offers; (3) using a computerized system to read the statistics and to automatically determine an estimated outcome of using each of the prices for the product; (4) selecting a price at which to sell the product based on the outcome determined by the computerized system; and (5) sending a second electronic message over the network that includes determined offers to be presented to potential customers. The Court held that simply applying an abstract idea to a computer system does not transform the idea into patentable subject matter.
While the patent landscape for software-related patents has certainly gotten more difficult since the Alice decision, it doesn’t mean that software patenting is not possible. There are certain types of software that, when incorporated in a computer/network or a device or a machine/apparatus for technical purposes functions like control, visualization, monitoring, communications, security etc. may be patent eligible. Such a situation was found in the case of DDR Holdings, LLC v. Hotels.com, L.P. (773 F.3d 1245 (2014), where the Court held that computer-implemented claims were patent eligible. The Court described the invention as being directed to generating a composite web page that combines certain visual elements of a host website with content of a third-party merchant. Specifically, the patent at issue related to an e-commerce outsourcing system that comprised: (a) a data store including a look and feel description associated with a host web page having a link correlated with a commerce object; and (b) a computer processor coupled with the data store and in communication through the internet with the host web page and programmed, upon receiving an indication that the link had been activated by a visitor computer to serve a composite web page to the visitor computer with a look and feel based on the look and description in the data store and with content based on the commerce object associated with the link. The Court held that the claims were not an abstract idea because they did not merely recite the performance of some business practice known from the pre-internet world along with the requirement to perform it on the internet, but instead specifically utilized the computer technology in order to overcome the problem. The Court further reasoned that the additional features in the claims were “more than a drafting effort designed to monopolize the [abstract idea].”
Additional US patent eligibility cases can be found at this site: https://www.fenwick.com/post-alice. Patent eligibility for digital innovations is a complex fact-dependent inquiry. At Northwestern, INVO will work with outside counsel to evaluate disclosed digital innovations on a case-by-case basis.
China
On April 1, 2017, the State Intellectual Property Office (SIPO) revised their software patent guidelines. The revised rules include patent eligibility for computer software and business method patents. For example, software claims relating to “a machine-readable medium”, “a computer program product”, and “an apparatus comprising a processor configured to execute instructions on a computer-readable medium to perform steps” are now considered patent eligible. Claiming business methods are no longer excluded if they contain technical features.
Europe
Europe allows for the patenting of certain kinds of software so long as they meet certain requirements. The software must have novelty, inventive step, and industrial application. Under the EPC, a computer program per se is not a patentable invention. However, should the patent be a technical problem in a novel and non-obvious manner, then it may be patent eligible.
Hence, the patent eligibility of computer programs is a very complex issue due to which the costs for obtaining and enforcing a patent may be costly. These requirements can be legally and technically complex, and their compliance often requires a legal counsel’s assistance.
Do I have to register with the U.S. Copyright Office in order to be protected?
A work that meets the criteria for a copyright is copyright protected the moment it is created and fixed in a tangible form that is perceptible either directly or with the aid of a machine or device. In general, copyright registration is voluntary and relatively inexpensive. For more details on copyright registration, visit the US Copyright Office website. In order to bring a lawsuit for infringement of a US work, registration of the copyright is required. Registration offers several advantages, such as the possible recovery of statutory damages and attorney’s fees in successful litigation.
How do I use a copyright notice with my digital innovation?
A copyright notice is an identifier placed on copies of the work to inform the world of copyright ownership. The copyright notice generally consists of the symbol “©” or word “copyright,” the name of the copyright owner, and the year of first publication. For example:
©2018, Northwestern University. All Rights Reserved
A copyright notice is NOT required for copyright protection to be in effect, however Northwestern recommends that creators use a notice. It does not require advance permission from or registration with the US Copyright Office.
Are Digital Innovations only protectable under Copyrights and potentially Patent Rights?
In addition to Copyright and Utility Patent protection, Digital Innovations may be protectable under other forms of IP rights including:
- Software: Trade Secret law
- Databases: Trade Secret law and, in Europe, EU Database Rights
- Screen Materials (e.g., GUIs): Design Patents and, in limited circumstances, Trade dress
- Spreadsheets: Data rights enforceable through contracts
Can we protect Digital Innovation as Trade Secrets?
Digital Innovations such as software and databases are protectable under trade secret law. A trade secret is any non-public information that is treated as a secret and that provides a person or entity with a competitive advantage. Unlike copyrights, patents and other forms of intellectual property protection, trade secrets do not have an expiration date.
A trade secret may survive for as long as it remains secret. However, unlike private corporations, universities generally do not hold or possess trade secrets given the mission of promoting the free and public dissemination of knowledge. Trade secrets can also conflict with federal funding agencies mandates to broadly disseminate the results, data, and information that arise from the work performed utilizing federal funds. Thus, using trade secret laws to exclusively protect digital innovation in universities may not be feasible.
Can we protect Trademarks associated with Digital Innovations?
A trademark grants the owner the exclusive use of a “mark” which may be a word, name, or symbol to describe a product and distinguish it from other products in the marketplace. While trademarks are driven by state law, one can apply to have their mark registered through the USPTO. The application process involves having your trademark reviewed by an Examiner in the USPTO. If the Examiner determines the mark is unique, a formal trademark with will be granted. The trademark stays in effect provided the owner continues to use the tHA in commerce and complies with renewal requirements (e.g., pays all required fees).
Trademarks can protect the software brands, including the company name, its products and taglines, and prevent competitors from using similar names. However, they do not protect software, code, database, or underlying data. To claim a trademark, add a superscript “TM” or “SM” after the proposed brand name depending on whether it is a product or service. It is advised to search the trademark database to ensure that nobody is currently using your mark. If the trademark registration application is allowed by the USPTO, the “TM” may be replaced with an “®”.
Northwestern University can provide limited support with trademarks associated with digital innovations if they have been disclosed to INVO and are being commercialized. For trademarks associated with specific university programs or initiatives, please contact the Northwestern University Office of General Counsel or the Office for Global Marketing.