Computer |  | by Al Harrison |
Ownership issues probably will continue to permeate the computer industry because current technology implicates multifaceted products and services. While perhaps obvious in the context of multimedia software typically delivered to users on CD-ROM, it is also true for essentially any product which is developed in-house or jointly developed using outsourcing.
The easiest way to establish ownership is to have a written agreement. The agreement does not need to be crafted in "legalese" to be enforceable. Indeed, the more clearly and simply an agreement expresses the contracting parties' meeting of the minds, the more likely the ownership issues will be understood and, hopefully, respected by the parties. Furthermore, an enforceable agreement does not need to be starchy or lengthy to be legally binding. Again, clarity and simplicity will get the job done.
Often recommended is an agreement in the form of a letter which addresses the essential issues. For example, who owns innovative technology, copyrights, trademarks, or otherwise proprietary information? In the context of ownership of copyrightable works, which typically populate a software development scenario, there should be an assignment issue so that copyright interests are completely covered. In the context of inventions, in the absence of a written agreement regarding patent rights, an employer may have no ownership rights but may nevertheless have a so-called "shop right" in an invention. A shop right gives an employer the right to use an invention for its own business. That is, a shop right is granted to an employer if, based upon an evaluation of the total circumstances under which an invention is developed, patented and commercialized, fairness and equity require that the employer's contributions be so rewarded. Otherwise, the employer must obtain a license for such use just like the public at large.
Consider other basic contracting issues. Who is supposed to do what? When? What types of corrective action are contemplated to rectify predictable or perhaps unpredictable aberrations from the letter of the agreement? What happens if and when the relationship is terminated? Whether an agreement is in the form of a formal contract or in the form of a letter, the key is to somehow capture the intentions and spirit of the contracting parties. These various issues should be addressed and resolved preferably prior to commencing software development. Fair enough?
Speaking of ownership issues, has the pervasive reference to "Patent Pending" or to a specific U.S. Patent Number been noticed by the user community at large? While expected for hardware innovations including memory add-ons and hard drives and CD-ROM drives, there is now a plethora of patent or patent pending references relative to software. In fact, there have been an astounding number of patents sought and obtained in the software industry throughout the 1990's. While statistics pertaining to software patents during 1995 are still being compiled, consider some of the numbers for 1994. There were more than 100 patents granted for word processing inventions; more than 200 patents granted for graphical user interface inventions; more than 60 patents granted for character recognition inventions; more than 300 patents granted for graphics inventions; more than 600 patents granted for image processing inventions; more than 150 patents granted for database inventions. While these software patents were obviously granted to many businesses and individuals, six companies received more than 100 patents. Far ahead of the field as usual was IBM followed by Hitachi, DEC, Toshiba, Hewlett-Packard and Xerox. The next tier included such companies as Motorola, Canon, Fujitsu, AT&T, Matsushita, GE and Mitsubishi. Other predictable companies who received several patents, albeit in the range of 10 - 50, included Compaq, Apple, Intel, Schlumberger, Honeywell and Microsoft. Thus, it is clear that software is patentable. To be patentable, an invention must satisfy the statutory requirements of being patentable subject matter, useful, novel and nonobvious. Patentable subject matter includes a process, machine, manufacture or composition of matter. Novelty relates to an invention being new and not previously known to the public via prior knowledge or publication. An invention is nonobvious if its novelty is significantly different from the prior art in the sense that a practitioner of ordinary skill in the relevant art would not find the invention to be obvious in view of common knowledge and practices. During the patent application process, the disclosure and claims in an application receive rigorous examination. If a disclosure contributes to what is presently known in the prior art and the claims are closely tailored to correspond to what the inventor is entitled, then a patent is granted. Prior to the recent incarnation of GATT (General Agreement on Tariff and Trade), the life of a U.S. patent had been 17 years from the grant date. Now, the life of a U.S. patent is 20 years from the filing date of the patent application. GATT introduced a new type of patent application: a provisional patent application. A provisional patent application is a simplified application which is less expensive than a regular (utility) patent application, receiving no examination by the U.S. Patent and Trademark Office. While a provisional application provides an inexpensive means to start the patent procurement process and to ostensibly protect an inventive concept in the U.S., it does not alter certain timing deadlines for filing international applications. A significant benefit of a provisional application is that most patenting costs are deferred about a year, but to establish a reasonable basis for the ultimate patent grant, an adequate disclosure of the invention is essential. Remember, there's no free lunch!
Al Harrison, a HAL-PC member and previous president, is a patent attorney with the Houston firm of Harrison & Egbert.
This page is best viewed using Netscape ver. 2.0b5 or higher. Designed by Meredith Foster. E-mail me at webmaster@hal-pc.org with any comments you have and tell me what you want to see here.
Back to the User Journal Home Page