Applications for Intellectual Property International IP Protection IP Enforcement Protecting Software JEFFREY L. SNOW, PARTNER NATIONAL SBIR/STTR CONFERENCE COOPER & DUNHAM JUNE 16, 2015

International IP Protection Many types of intellectual property can be protected, both domestically and internationally ◦ Patents ◦ Designs ◦ Trademarks ◦ Copyrights ◦ Trade dress ◦ Trade secrets 2

Patents One year period to claim priority to earlier application (e.g., filing date of U.S. provisional or non-provisional application) ◦ Direct national filing ◦ PCT (Patent Cooperation Treaty) application Non-extendable deadline Absolute novelty requirement in most countries Beware: Without priority claim, your own earlier patent or patent application may become prior art to your later application 3

Direct National Filings Direct filing in each country There are regional patent offices that cover multiple countries ◦ European Patent Office (EPO) ◦ Eurasian Patent Office ◦ African Regional Intellectual Property Organization (ARIPO) Filing requirements vary by country Examination varies by country Different types of foreign patents ◦ Utility models (e.g., Germany) ◦ Innovation patents (Australia) 4

PCT Applications Administered by WIPO (World Intellectual Property Organization) Placeholder for national applications File in a “receiving office” and select a national patent office for examination Search conducted and substantive examination Deadline to file in individual countries ◦ Usually 30 months or 31 months from earliest claimed priority date ◦ Watch out for other deadlines 5

Designs Protect the ornamental aspects of a product ◦ Based on drawings Patents in the United States; registrations in other countries Similar procedures to utility patents Six month period to claim priority to earlier application New procedure for multi-national filing under the Hague Agreement 6

Considerations for International IP Protection Standards vary by country ◦ Substantive examination (patentability) ◦ Patentable subject matter ◦ Prior art Effect of publication Expense ◦ Filing fees and attorneys’ fees ◦ Ongoing maintenance fees and annuities 7

IP Enforcement Patent cases in Federal Courts Infringement actions Declaratory judgment actions ITC (International Trade Commission) actions Patent Office post-grant procedures ◦ IPR (inter partes review) ◦ PGR (post grant review) Interplay between post-grant procedures and court actions ◦ Preclude further review of issues or prior art ◦ Stay of court actions 8

Elements of Infringement Actions Infringement claim ◦ Ownership of patent or right to enforce it ◦ Patent presumed valid ◦ Prove infringement by preponderance of evidence Defenses ◦ Non-infringement ◦ Invalidity based on prior art or failure to comply with requirements of patent statute ◦ Unenforceability (i.e., inequitable conduct) Remedies ◦ Damages (reasonable royalty or lost profits) ◦ Injunction 9

Considerations for IP Enforcement Enforcing foreign corresponding patents Time and expense Patent reform efforts ◦ Courts ◦ Heightened legal standards ◦ Fee shifting ◦ Legislative ◦ America Invents Act (AIA) ◦ Post-grant procedures 10

Protecting Software Question: What is patentable? Patentable subject matter ◦ 35 U.S.C. § 101: process, machine, manufacture, composition of matter ◦ Excluded: laws of nature, physical phenomenon, abstract ideas 11

Considerations for Protecting Software Latest Supreme Court case: Alice Corp. v. CLS Bank ◦ Test: (a) Is the claim directed to an abstract idea? (b) If so, does the claim contain an “inventive concept” sufficient to transform the abstract idea into a patent eligible application? ◦ Specific issues for software ◦ Reciting a general purpose computer may not add an “inventive concept” ◦ Are the claimed functions performed by the computer purely conventional? May or may not depend on how invention is claimed ◦ Method ◦ Computer-implemented system ◦ Computer-readable medium Consider copyright protection 12

Questions? Jeffrey L. Snow, Partner Cooper & Dunham 13