Managing Intellectual Managing Intellectual PropertyProperty

D. F. Costello

ACM Distinguished Lecturer 2006-2007

Computer Science and Engineering

University of Nebraska

Lectures in Taiwan March 2006

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Why Talk and Think About IP

It is a fascinating problem that surrounds modern times.

It is a philosophical, economic, social, ethical, scientific, legal and management problem.

It is local to me and you; it is of interest to our colleges and Universities; it is of interest on a State level and it is of great interest on a world wide level.

Why is property of interest to me.

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Approaches to MIP

Legal Philosophical Ethical Business Computer Science Financial

International National State University Personal Corporate – Large Corporate - Small

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How I came to Think about Property

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Family Property in the Bronx - 1954

My family owned no property. My father and mother rented for 40 years.

We owned no automobile. My father had zero money in the bank. I dreamed of owning a house as the

epitome of the “American good life”.

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My Family’s Admonition & Challenge

No one from my family had gone to college.

I was admonished and disciplines to get good grades in school – to learn all and well – many of you were admonished that same way.

I was told that there wish for me was that “I would have it better than they did”.

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My Primary School Education

I was the only Christian in an all Jewish class in my primary school classes.

I also went to part time religious instruction From my Jewish classmates I adsorbed their

thirst for education and success. From my religious education I learned and

believed that there was more to life than financial success.

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My Secondary School Education

I went to a Christian Brothers Institute down in lower Manhattan in NY City in the USA.

These brother took vows of poverty, chastity and obedience and committed themselves to the teaching of children from the lower income brackets.

From them I received the vocation to be a teacher.

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My Street Education

On my one block were 700 to 1000 people. They were all in the same economic social

class. I saw happy people there who had nothing. I saw and learned what it meant to be a

“hustler”.

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My Air Force Education

I was commissioned on graduation from college and became a USAF Airborne Communications Officer.

I became very familiar with the concept of secrecy and the fact that there were Communist spies out to steal US war secrets.

I had an assignment with a secret organization called FTD whose job it was to be certain that America was never caught unawares of advances in foreign technology. All the major powers had similar organizations.

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My Computing in University Career

I first worked for IBM in 1957, Earlier I had met John Backus and had seen ahead to the future of Computer Languages.

I worked on the development of numerical algorithms.

I later became one of the first to work on IBM’s chess playing program.

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Why Talk and Think about IP? Because I know about it and think it will

effect your working lives, the working lives of my students and the working lives of my family.

Because it is a good framework around which to build a scaffolding for your career.

Because Computer Science Students will be IP Managers.

Because all knowledge professionals, are/will be deeply involved in IP and MIP.

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MIPYou have IPYou will generate IT IPYou manage IP todayYou will manage IT/IP tomorrowYou need to understand this new

economic model for you will work in the Knowledge Economy

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Particular IP/ Your Property

Your Good Name Your Private Data Your Creative Digital Art Your Creative Digital Music Your Creative Digital Course Material Your Creative Algorithm Implementations Your Creative UML Diagrams

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IT/IP

Every Program you write is IT/IP Every Documentation Folder you create is IT/IP Every Test Plan you create is IT/IP Every Data Base you create is IT/IP Every Graphic you create is IT/IP Every Web Page you create is IT/IP Every GUI you create is IT/IP Every UML situation you describe is IT/IP Every XML document you create is IT/IP

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Lets Look at Real Property

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Defining PropertyMany commentators define

property as a bundle of three rights that inure to the owner of a thing. First, the owner has the right to possession of the thing. Second, the owner has the right to use of the thing. Finally, the owner has the right to alienate or otherwise dispose of the thing

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What is my Managerial responsibility for Real property? Be certain of Legal Ownership Plan Investment in Maintenance Plan Investment in Protection Plan Investment in Development All of this involves interaction with other

instruments of society Banking, Insurance, Legal Systems all of who take an interest in my property.

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Software Engineering as Property Management

Many of you have taken several courses in programming and Software engineering.

How many “working programs” have you written? What was the right language to write these programs in?

Who decided? How well did you document these programs? How well did you test these programs? Did you keep all the associated martial with the program

so that is was bundled as one piece of property? Or did you treat it as throw away stuff… If you do web programming, how much do you test –

enough or is it a throw away approach?

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Patenting Software In 1965, two employees at IBM, James W. Cooley and John W. Tukey

discovered ( rather rediscovered) the FFT. They published this after the IBM lawyers decided that they didn’t want this discovery to set the patent stage for numerical algorithms.

A central claim of what might be the earliest software patent, Prater-Wei, is in fact matrix inversion. However, the description in the patent application used linear algebra notation similar to that of textbooks published late in the 19th century, rather than more obvious matrix notation that was invented much later. The patent examiner might be excused for being duped.

IBM and Other Companies as History Two employees at IBM Coney and Tukey discovered ( rather rediscovered)

the FFT. They published this in 1962 after the IBM lawyers decided that they didn’t want to set a prescident for patents on numerical algorithms.

Control Data and Honeywell and Iowa State University - another good story I worked as a consultant for the US Patent Office – During debate on

Patenting of Software - Prater versus Wei

Control Data and Honeywell and Iowa State University

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Recent Numerical Analysis Patents

Recent U.S. patents related to Numerical Analysis:

6,373,862: Channel-aided, decision-directed delay-locked loop6,373,071: Real-time prediction of proximity resist heating and correction of raster scan electron beam lithography6,371,916: Acoustic analysis of bone using point-source-like transducers6,370,129: High-speed data services using multiple transmit antennas6,364,837: Contact digital ultrasonic densitometer6,360,175: Generalized modal space drive control system for a vibrating tube process parameter sensor6,360,027: Multiple ultrasound image registration system, method and transducer6,359,693: Double pass double etalon spectrometer6,357,389: Control system for enhancing fish survivability in a hydroelectric power generation installation6,357,041: Data-centric multi-level blocking6,356,693: Semiconductor optical pulse compression waveguide6,354,997: Method and apparatus for frequency control of an ultrasound system

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Japanese and Patents

The MIP is especially interesting when you look at the strategies that countries take.

The early work by Zadev on Fuzzy Logic took place in 196x.

The Japanese began working in the area with a young University Professor named XXXx published a paper and received a patent in the area. The way that the Japanese manage IP in so far as University scholars are concerned is that the University Scholar cannot receive any pay outside his/her University salary.

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Japanese and Patents II XXXX decided to “sell” his “ownership rights to

XXXXX in exchange for them building him a very modern laboratory so that he could continue his work.

From this laboratory and their partnership with XXXXgrew an enormous learmning, discovery, implementation process that benefited all of Japan.

During the 1990’s Japan had received 90% of all the patents issued in the are a od Fuzzy logic.

This national effort will pay enormous dividends for years to come. Someone made a MIP decision

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Japanese and Patents III

Ther is another deeper reson why this decision worked.

It has to do with the mores of a people. We know that after WWII was over that

Japan was rebuilt. The way that it was built was based on the existing mores of the people ands how they worked together and how status was sought and given.

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University of Wisconsin There were many things that happened to me in my life

but the reason I bring up the University of Wisconsin is that I received 2 checks form them – one from the State (the University) and one from WARF – the Wisconsin Alumni Research Foundation.

In 1925 Professor Harry Steenbock set up WARF to help manage a University of Wisconsin-Madison discovery that eventually eliminated the childhood disease rickets They also built up an endowment based on an original patent given to them by a University researcher who discovered homogenized milk.

They have dispensed over $800 M in research funds to University of Wisconsin researchers. They have supported over 50,000 projects and have about 1400 patents.

They knew about and respected IP – and managed its development.

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Other University Related Patents

Synthetic Rubber Seed Varieties Center Pivot Irrigation Dimpled Golf Ball Any number of Pharmaceutical patents Japanese Approach – Coming up… Columbia University – Coming up…

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Other Words and Ideas Related to Generating IP

Vision, Innovation, Genius, Work Ethic,

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Other IP Related Words

Enterprenaurial Licensing Families of Products (Patent Families)

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History of Software Related Patents

http://www.bitlaw.com/software-patent/history.html

http://www.jerf.org/writings/communicationEthics/node6.html

http://www.bitlaw.com/software-patent/history.html

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IBM -2004

“Our company is aligned around a single focused business model – innovation.”

(we are) helping to evolve the management of IP towards a 21st Century model that balances protection of creators’ rights with encouragement of open collaborative innovation.

We have pledged open access to technology covered by 500 IBM software patents for open source use, a first step towards creating a “patent commons”…

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PUBPAT NEWS > PUBPAT Announces Conference Call Regarding Widely Asserted Computer Card Game Patents

  FOR IMMEDIATE RELEASE February 10, 2004 http://www.pubpat.org/Goldberg_Call.htm

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Patent watch. The purpose of this site is to support a community

interested in monitoring and sharing information about EPO's software patent practice, e.g. to act a kind of patent observatory, providing ready access to viewing and commenting on the patents that are being granted by the EPO. The site in its current state is only a demo, in the future we hope to implement many interactive features such as a wiki for annotating patents, myPatents for notifications e.g. when an application is granted, indices over pending applications, and recently granted patents, and much more.

http://gauss.bacon.su.se/sql/

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IT/IP You and I have an obligation to create functional,

reliable, maintainable IT/IP. Recognizing that the particular IT products we

produce are indeed property, should inspire us to practice our creative and developmental efforts with greater care and concern for the short and long term value of the products we produce.

We have an ethical responsibility to be good IP managers for the sake of the society of which you are apart.

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SE as Property Management You have taken several courses in CSE since you

have been here at UofN or else you wouldn’t be in this class today.

How many “working programs” have you written?

What was the right language to write these programs in? Who decided?

How well did you document these programs? How well did you test these programs? Did you keep all the associated material you

generated with the program so that is was bundled as one piece of property?

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Other University Related Patents

Synthetic Rubber Seed Varieties Center Pivot Irrigation Japanese University Columbia – coming up…

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Japanese and Patents The MIP is especially interesting when you

look at the strategies that countries take. Lotfi Zadeh, a professor at the University of

California at Berkley, and presented a way of processing data by allowing partial set membership rather than crisp set membership or non-membership.

The Japanese began working in the area when a young University Professor published a paper and received a patent in the area. The way that the Japanese manage IP in so far as University scholars are concerned is that the University Scholar cannot receive any pay outside his/her University salary.

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Japanese and Patents II He decided to “sell” his “ownership rights

in exchange for a corporation building him a very modern laboratory so that he could continue his work.

From this laboratory and the corporate partnership grew an enormous learning, discovery, implementation process that benefited all of Japan.

During the 1990’s Japan had received 90% of all the patents issued in the area of Fuzzy logic.

This national effort will pay enormous dividends for years to come. Someone made a MIP decision.

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Japanese and Patents III

There is another deeper reason why this decision worked.

It has to do with the mores of a people. We know that after WWII was over that

Japan was rebuilt. The way that it was built was based on the existing mores of the people and how they worked together and how status was sought and given.

My Austria Experience

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Recent Numerical Analysis Patents

6,373,862: Channel-aided, decision-directed delay-locked loop6,373,071: Real-time prediction of proximity resist heating and correction of raster scan electron beam lithography6,371,916: Acoustic analysis of bone using point-source-like transducers6,370,129: High-speed data services using multiple transmit antennas6,364,837: Contact digital ultrasonic densitometer6,360,175: Generalized modal space drive control system for a vibrating tube process parameter sensor6,360,027: Multiple ultrasound image registration system, method and transducer6,359,693: Double pass double etalon spectrometer6,357,389: Control system for enhancing fish survivability in a hydroelectric power generation installation

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Patent watch. The purpose of this site is to support a

community interested in monitoring and sharing information about EPO's software patent practice, e.g. to act a kind of patent observatory, providing ready access to viewing and commenting on the patents that are being granted by the EPO. The site in its current state is only a demo, in the future we hope to implement many interactive features such as a wiki for annotating patents, myPatents for notifications e.g. when an application is granted, indices over pending applications, and recently granted patents, and much more.

http://gauss.bacon.su.se/sql/

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Computing Game Patents

PUBPAT NEWS > PUBPAT Announces Conference Call Regarding Widely Asserted Computer Card Game Patents

  FOR IMMEDIATE RELEASE February 10, 2004 http://www.pubpat.org/Goldberg_Call.htm

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History of Software Related Patents

http://www.bitlaw.com/software-patent/history.html

http://www.jerf.org/writings/communicationEthics/node6.html

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Words and Ideas Related to Generating IP

Vision, Innovation, Genius, Work Ethic, Entrepreneurial Licensing Families of Products (Patent Families)

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IBM -2004 “Our company is aligned around a single

focused business model – innovation.” (We are) helping to evolve the

management of IP towards a 21st Century model that balances protection of creators’ rights with encouragement of open collaborative innovation.

We have pledged open access to technology covered by 500 IBM software patents for open source use, a first step towards creating a “patent commons”…

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How much Money is Involved? For example, by proactively managing their

intellectual property estate, IBM now collects $1 billion in annual revenue. That’s MIP!

How much do Universities as a whole generate form IP?

How much do all 50 States generate form IP? Does the Federal Government hold patents?

How much money do other countries generate from patents?

Do all countries have the same IP laws? Who is WIPO?

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Functions of Management Planning Organizing Leading Controlling How do these related to MIP? You have to take time and gain experience

to see how to arrive at a philosophy to proceed.

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The Intellect What is it? What part of the intellect is associated with

creativity? What is its relationship to thought? How is it distinguished from mind? What other function does it serve? How is it distinguished from will? What is its relationship to innovation? What is its relationship to art? In what sense does it generate property?

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I am the generator of IP IP is not generated by the Corporation IP is not generated by the State IP is not generated by the University IP is not created by anyone but an

individual and it is owned by me until I pass it on to someone else through some legal instrument.

Of course the “I” becomes we in certain work arrangements and the organization begins to accumulate IP.

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What is the difference between real

(tangible) and intangible property? Intangible property has a different

economic basis. Real property in being divided reduces

(fractionates) the value of each element. Most forms of intangible property on being

divided maintains much of the original value in each element.

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The systems that developed my IP I needed gifted and talented teachers to be able to

select and transfer the basic IP of the past to me. Gifted teachers had to decide what was “worth”

teaching. I needed a library to locate stored IP. I need laboratories to participate in the

experiential component of using IP. I need the University, State and Corporation

(unless I am independently wealthy or very entrepreneurial) to continue idea development and distribution and sales– AND they need me.

I need the web to… I need KMS…

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You inherited and you invest in your IP

You have inherited (“free of charge”) much of the original intellectual capability with which you began school.

Since the initial investment to develop your basic thinking skills, you have invested $$$$ in particular varieties of higher education to develop the IP you possess today.

You have invested time and work to develop your inherited intellect until it becomes what it is today.

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You invest in your IP today Every time you registered for a course , you

have made an investment decision. The ROI may not just be IP that will return

monetary value: it may return psychic value…Don’t minimize this!

In the IT field it is essential that you choose the right courses, books, organizations, teachers, training, professional organizations etc, if you are to arrive at a point that you can successfully and ethically develop IT products – IT/IP products.

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Your Management of Your IP You invest in Legal Ownership of your IP – the

degree Invest in Maintenance- Continuing Education Invest in Protection – Patents etc, (There is much

more to say here) Invest in Development – Pursue advanced degrees,

invest your time and money or an organizations time and money to Develop IP.

You will do this just like you would do if you had real property until the day you die and I salute you for committing to doing so whether you do it for the State or yourself.

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Managing Intellectual Property Do you begin to see a bigger view of what I mean

by MIP? Do you begin to see the intangible nature of the

IP you acquire? Can you imagine estimating the half-life of the

material you are learning today? In the future who will manage the development

of this IP? You? Your Company? Your Government?

I believe that shared management is essential if both your handler, you and society are to prosper?

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Managing Intellectual Property What People and Organizations currently Own IP in

Lincoln ? Nebraska? China? How much revenue comes from IP in this city? State?

Country? How many pieces of IP produce zero revenue and thus

produce a net loss when you count the cost to protect? How many pieces of IP does the University of

Nebraska own? TKU? NTU? Is the University committed to MIP – above and

beyond the regulatory approach…Do they understand what MIP means?

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Others want/need your IP/IT capabilities

Thieves Will there (or is there) IP wars? Corporations Universities Your family – you may be the bread winner If you have “rich” IT/IP, you are perceived as

having value. Is that all there is? Should your value as a human

being be measured by your ability to generate IP. What does “cultivate virtue” mean? (NTU)

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IP and Privacy & Confidentiality Your personal information is your IP Your Personal information is worth

keeping confidential - to the degree you wish it so.

Your personal information is worth keeping private to the degree you wish it so.

Others have responsibility to protect your private information.

Personal Identity theft is an MIP issue

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The Idea Factory Did Edison Invent the Light Bulb? NO!! Why does he get all the credit? You’ll need to know the History of the

making of GE – the interlocking directory of creative IP – the entire electric system- light sockets, safety fuses, generators, wiring and MARKETING.

He (they) developed a Systems View of MIP. Is the College or University an Idea Factory ? Should it be?

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Edison’s Patents

Edison executed the first of his 1,093 successful U.S. patent applications on 13 October 1868, at the age of 21. He filed an estimated 500–600 unsuccessful or abandoned applications as well.

Batteries (147)Cement (49)Electric Light & Power (424)Mining & Ore Milling (53)Miscellany (50)Motion Pictures (9)Phonographs & Sound Recording (199)Telegraphy & Telephony (186)

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More on University IP

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Columbia University When a key patent on combining genetic

material to create human drugs expired 3 years ago, a spigot that had sent $200 million in royalty payments to Columbia University was suddenly turned off.

Columbia turned to a strategy the drug industry has turned to high art -- winning another patent for the same invention -- & began demanding payments anew.

Now biotechnology titan Genentech Inc. is suing the school, claiming the invention was already in the public domain. The dispute highlights the thorny issue of university patents, many of which stem from research paid for -- as in the Columbia case -- with public funds.

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University Patent Warnings Publications and other forms of public disclosure

relating to patentable inventions should be avoided until the University has actually filed a patent application or otherwise protected the invention.

Unique biological or other materials which have commercial value should not be transferred outside of the University (e.g., to industrial or academic scientists) without a Material Transfer Agreement (MTA) signed by the recipient scientist and an authorized representative of his or her organization.

All computer software must be reported to the University for an evaluation of patentability and commercial potential of the subject matter.

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IPM University Examples

http://www.research.uh.edu/otm/techmanage.html

http://bolt.lakeheadu.ca/~techtx/

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E-Patent Strategies I

Patent Due Diligence for Organizations Financing Technology Companies

Due Diligence over IP is becoming increasingly important in mergers, acquisitions, venture capitol, IPO’s and other financial dealings involving technology companies.

In these cases patient due diligence can make or break a deal or radically alter the true worth of the transaction.

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E-Patent Strategies II

Factor 1 – Market capitalization of technology companies includes IP, particularly patents, as critical to market share and profit margins.

Factor 2 -M&A activity in the entertainment industry , where copyright of content and trademarks, are core to valuation have forced due diligence in M&A.

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E-Patent Strategies III

Factor III- software developments are clearly now patentable and old line companies are now in the swim. Patented software enabled financial services and telecom service providers are active players in the software patent world

E.g. Citibank, Merrill Lynch, State Street Bank and Trust

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E-Patent Strategies IV

Due Diligence as Industrial Espionage The Big Fish Company is interested in

buying Mullet and Company etc. Stac Electronics vs. Microsoft Priceline.com vs. Microsoft Amazon.com vs. Barnes and Noble Trilogy vs. Carsdirect Yahoo.com litigation

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E-Patent Strategies V

“Own it Before you sell it “Godzilla Corp who forgot to have employee assign the patent.

“Buying the Defendants seat” – Strip co. “Patent what you Sell, Sell What you

Patent” Needles Co.

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Three Practical Tips I

Competitive Advantage – A competitive advantage can be had in the financing of technology companies by those who obtain access to patent professionals who can add value to a financial transaction.

An Epidemic – Basic title problems are everywhere in the patent world

Budget ; Sixteen items to consider

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Sixteen Minimum Checks I Properly identify all patents in the

key transaction contracts and use words of conveyance for them.

Verify recorded assignments from all inventors.

Review all Patent Office filings for clouds on title.

Include all foreign patents of interest

Review all licenses, partnership agreements, employment agreements, and other relevant contracts. Watch out for ownership “leaks” especially “after developed “ inventions

Do you need an opinion letter for the patent from your patent counsel?

Ascertain if the target's patents fall within the scope of their patents.

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Sixteen Minimum Checks I How secure are the targets trade secrets? Review

its “confidentiality program”. Has the target patented its software orb its

services? Review all the target’s attorney opinion letters

regarding IP. Review all the “cease and desist” letters

regarding infringement sent and received. Query if laches has arisen, Is Infringement willful? Is the target about to be sued?

Investigate the Competitions patent portfolio. Get your pat advisor to characterize the forest, not just the trees, Where is the industry going? Where does the target fit in? Can the target protect its new products and services with patents?

Get representations and warrantees from the target and its patent counsel on all of the above.

Once above done, step back and decide what else should be done with this schedule and budget? E.g. Can the target “invent around” its competitions patents> Can the target “invent on demand” or “just-in-time”?

Remember you an always change the price; set up escrows; offsets; warrantees and ultimately you can just not close. Avoid litigation?

Verify ownership of any overlapping, related, necessary, or convenient patents copyrights or trade secrets embodies in any proprietary software or other products or services,

Remember “validity” opinions are rarely done in patent due diligence because of large expense.

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Patents Business Method Patents – (UML)

Methods of doing business are patentable (see State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. Jul. 23, 1998).

Business method patents are being filed at breakneck pace.

Many patents have been filed on methods of delivering on-line courses.

Danger of infringement liability, can force you into licensing or abandoning your software.

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New Patent System

Some argue the need for a new patent system. My letter to the Financial Times in June 2005 Some want to cut the number of patents

issued by 90% In 2004 the Office of Patents and Copyrights

in the USA issued 165,000 patents The press says that “no wonder the Chinese

don’t want to adopt our system.”

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Electronic Frontier Foundation

http://www.eff.org/about/ Here is another view of how to manage IP They are for a more open approach to

managing intellectual property.

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Idea Theft I

After 1989 and before 9/11, the CIA reinvented itself to protect US business from “IP Theft”.

The rest of the world has little regard for the IP that is invented and distributed in the US.

You can buy the latest versions of US software on the streets of the big cities in Asia at half-pennies on the dollar. Books copyrighted by international authors are freely copied on these same streets.

Is this right? What is your ethical opinion and on what

framework does that ethical opinion sit?

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Idea Theft II India’s current laws governing electronic

commerce, copyright protection and patents are not stringent enough to prevent idea theft and other cyber crimes.

The US is urging India to protect the privacy of personal and financial data as more American Companies rely on Indians to handle their web and other data based electronic transactions.

Why might outsourcing to India be a poor MIP decision?

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What are the Legal Forms of Protecting IP?

– Patent– Copyright– Trade Mark– Trade Secret

How does one choose? What is licensing? We are at the beginnings of the legal

dimension to the MIP activity

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Trademarks Definition & Considerations

Trademarks are defined as any word, name, symbol, device, or any combination thereof, used to identify the origin of goods and/or services in commerce.

Example: XEROX, Coca Cola, Huskers, etc... Can protect both words and designs, as well as sounds, colors.

Descriptive words incapable of trademark protection. Be sure to search any names that are not completely

descriptive that you are using in relation to your courses, both individually and as a package.

Trademark rights accrue through use, not merely registration, so search thoroughly PRIOR to your use.

Potential large liability for infringement.

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Internet Law Considerations

Domain names can infringe trademarks, so be careful when choosing your address.

Anti-Cybersquatting Consumer Protection Act of 1999.

Be careful of using the trademarks of others in any metatags on your website.

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Trade Secrets Definition & Considerations

A trade secret is confidential information not generally known by the public that is valuable to a business.

Becomes a concern when outside personnel, either from another University or the private sector, are brought in to help on a project.

Cannot use secrets from another University or company.

Likewise, third parties cannot use your trade secrets if protected properly.

You may sign a non-compete clause when you leave employment or another similar instrument…

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Intellectual Property ManagementWelcome to the IP Rights Center, the

homepage of the intellectual property group of Obermayer Rebmann Maxwell & Hippel LLP.

Our group brings over 70 years of collective experience in aggressively acquiring and enforcing IP rights. We represent a variety of clients in federal and state courts throughout the United States who often face infringement or misappropriation by larger and well funded defendants in patent, trademark, copyright and trade secret cases. A particular specialty area of our group is in Internet and New Media Law.

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IP Management Obermayer Rebmann Maxwell & Hippel LLP

(cont.) The IP Rights Group, as a valuable public

service, operates comprehensive intellectual property and technology resources at IPTOOLBAR and TECHTOOLBAR, a joint collaboration with the New Jersey Technology Council.

We recognize that Intellectual Property rights are frequently the most valuable asset a company may have. Because we frequently represent the small parties in David versus Goliath struggles, we offer creative and innovative litigation and billing strategies, frequently involving contingency fee arrangements.

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The Cost of Ideas

The number of software patents filed is soaring

Microsoft expects to file 3,000 in fiscal 2005 – up 50% from 2004

MS’s Director of Business Development refers to patents as the “currency of exchange” between vendors looking to license each others technology.

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The Cost of Ideas

SCO filed a $3B against IBM last year claiming IBM violated its trade secrets by submitting SCO’s UNIX code for inclusion in IBM’s LINUX OS. IBM has countersued.

Microsoft is locked up in a large number of defensive and offensive law suits involving IP

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The Cost of Ideas – Getting them Patented

PO Drowning in Ideas Patent Office is in crisis mode PO has a backlog of 500,000 applications Wait time 27 months Number of patents filed doubled in last ten

years European and Japanese patent offices

publish 90% of the Worlds Patents

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The Cost of Ideas and Idea Theft and Protection

Sun and Eastman Kodak settled their 2 year old patent infringement suit in early October 2004 for $92 million.

It was based on some early IP concerning OOP that Kodak acquired when it bought defunct Wang for $360M in 1997. Kodak was looking for $1.06 M but there are potential patent infringers not covered by the agreement that Kodak may be able to go after,

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Dr. Gary Michelson

http://www.highbeam.com/library/doc0.asp?docid=1G1:123131782&refid=ink_tptd_np&skeyword=&teaser=

Medtronic to pay Inventor $159 Million Violating license agreements for his Spinal

surgical devices He has more than 400 patents with 250 patents

pending. He needs help, beyond legal help, in MIP!

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The University as an IP Factory Conceived of the University (at least in one

dimension), as an organization that identifies, organizes, re-organizes and delivers IP to:

1) Individuals intent on developing their own IP

2) Organizations willing to support the development and transmission of this IP 3) Citizens & Companies who need to

understand the role of relevant IP in their enterprises.

4) Understanding the ethics and discipline of making money off property invented in a public institution.

5) City of Intellect – TKU

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Managing Intellectual Property What other artifacts fall under the

heading IP?– Books– Songs– Films– Sculpture– Art– Digitized Images of Art– Digital Books – More War stories

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Managing Intellectual Property What other artifacts fall under the heading

IP ( cont)?– Software– Patents– CAI– BioTechnical patents– Process Patents– Other Forms of IP– Trade Secrets– New Digital Forms– Other

Each needs a special approach if MIP is to be effective.

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War Stories

Iowa State University – Who was John Attanasoff

• I meet him in Bulgaria

• I meet the people at Iowa State who shed tears about JA’s inventions.

– Stanford– Harvard– Others

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Need for a new perspective on IP and MIP in a University

There is a crying need for students, faculty and administrators who think of themselves as Knowledge Workers who work to clarify, explain and qualify the who, what, when, where and how of IP and MIP.

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MIP and Responsibility– Assumption 1– We are dealing with an

artifact that has value.– Assumption 2– We are dealing with an

artifact that requires investment to protect and make marketable.

– Workers Responsibility– Programmer responsibility– Manager Responsibility– Corporate Responsibility– Ethical Implications

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How Should I manage my IP?

Philosophical should… Ethical should… Professional should… Managerial should… Entrepreneurial should…

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Organizational Views of IP• Small Companies

• Companies

• Large Companies

• International Companies

• What does the Global Economy Mean in this Regards?

• Governments

• Governmental Organizations

• Colleges

• Universities– Colleges

– Departments

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Give me some More Examples

Attanasoff & Berry Homogenized Milk Synthetic Rubber Center Pivot Irrigation Dimpled Golf Balls Software Courseware Assessments (Questions and Answers and their

processing)

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Patent Cases Rising

2000 2,484 2001 2,520 2002 2,700 2003 2,814 2004 3,075

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BlackBerry

BlackBurry vs. NTP Popular e-mail service may be shut down Under US Law a company can be guilty of

infringement even if it didn’t know about the patent

Patent-trools – Companies that troll for big companies to sue.

Claims are often too broad

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Synder Forgent Networks

30 person firm sued 15 companies including Time-Warner and Direct TV on a patent relating to digital video recording

Forgent claims they own the patent for part of jpeg digital photo format.

Took in $105 Million through licensing deals and settlements with more than 50 companies.

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Microsoft & Forgent

Scheduling software maker Forgent has filed suit against Microsoft for allegedly infringing on its patent that covers the technology behind JPEG image compression. But Microsoft has already made the first strike, filing its own lawsuit last week that asks the courts to nullify Forgent's patent.

Forgent says it was in talks with Microsoft over licensing the patent when Redmond made the first legal move. Forgent's lawsuit was filed in the U.S. District Court in the Eastern District of Texas by the company's Compression Labs subsidiary.

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Eolas Technologies

Michael Doyle Awarded a $521M settlement against Microsoft –

under appeal Patent the way web browsers automatically

summon programs over the internet. Eolas' cryptographic timestamp innovations solve

previously intractable problems created by the new national HIPAA and Sarbanes-Oxley

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Dow Chemical Capitalizes IP I

Gordon Petrash elevated to position of Global IP Asset Manager.

Came through strategic effort to manage IP assets.

Heightened Value of its Assets by 400% and saved $50M in related tax obligations over ten years.

Dow’s vision is to maximize the business value of its existing IP assets and help to create new ones.

By Britton Manasco

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Dow Chemical Capitalizes IP II

Dow sells 2000 products Org into 15 major businesses 40 Joint Ventures Half of revenue from International markets Considers itself technology driven Employs 4000 R&D people Spends $30M maintaining and supporting

its patent portfolio

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Dow Chemical Capitalizes IP III

Had disorganized portfolio of 28,000 patents

Reengineered its systems and processes to create more value.

Petrash got $3M to create new process of IA Management.

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What Attitude Should I take towards IP I?

Depends on Philosophy Consider choosing to work at a College or

University.– All Intellectual Property belongs to University– No IP belongs to University– Some IP Belongs to University

Consider the Union Worker

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What Attitude Should I take towards IP?

Replace University by:– College– Private University– Public University– University in another Country– Corporation– Government

Replace Union worker by– Corporate Employee– State Employee– Small Business Employee– Entrepreneur

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What Attitude Should I take towards IP ?

Replace University by:– College– Private University– Public University– University in another Country– Corporation– Government– YOU

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What Attitude Should I take towards IP in a company I go to

work for? What are you doing at a Company from an

IP point of View?– Using IP that the Company Owns– Using IP that the Company Licenses– Generating IP– How the company treats you new ideas.– Is idea production an explicit or implicit

component of your employment agreement?

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Protecting my IP in a University

Register your copyrights If the work is sponsored, you have to contact

University IP office. Check what your grants say. Negotiate Review University Policy Review University Procedures Understand the process of promotion and

tenure

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Protecting the IP Belonging to Others

Fair Use– A limited legal exception to the prohibition

against copying protected works.– Four factor test to ensure Fair Use applies– Don’t infringe patents– Don’t disclose Trade Secrets– Be confidential– Be prudent

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A New and Important Variety of IP

Called Learning Objects. They can be thought of course snippets. They may be very creative or Dull, poorly

done and worthless. Up to now there has been little market for

these BUT now…

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Definition of Learning ObjectAny entity, digital or non-digital,

which can be used, reused or referenced during technology supported learning.

Examples – multimedia content, instructional content, learning objectives, instructional software, software tools and persons, organizations or events referenced during technology supported learning .

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More about this Tommorrow.