How do copyrights/patents work in this situation?

[powerx]

What is the name of your state?What is the name of your state? VA

I posted this question on Copyrights & Trademarks, Patents and Computers / Software & Internet Law forums as I was unclear to which forum this topic belongs in and to get a conclusive response. Please pardon me if this cross-posting is inappropriate.

I'm a programmer with no legal knowledge and have these concerns:

If a software is protected by copyrights and patents, is it legal to create a roughly identical-looking software with a different title and not using any of the code used by the original software? Is reference-data protected under copyright/patent laws? For instance, is it legal to use the category/occupation/location... codes used by the original software? Does copyrights/patents apply to only code or lookup-data (reference/dropdowns), too? Are screen layouts, database design protected under copyrights/patents if I use different table/column names in my software? I don't have access to the internal code or the backend database design of the original software but I can figure it out looking at the processes. Is it ok to create a software that is roughly identical in functionality and process as the original one without using any of their titles or code? I'm talking about creating an online jobsite that would roughly look like an existing jobsite. The jobsite has patents for 10 years but there are over 200 other jobsites with similar functionalities as patented by the above jobsite - such as job-posting, resume-base, cover-letters, job-search, resume-search, search-agents... which is quite confusing to me. How could they come up with these similar features if they were already/legally patented by someone else?

If I use a different programming language, different code, different title, different table/column names but with the similar lookup data and similar layouts and more features/processes, does this tantamount to reverse-engineering? How far is it illegal? Any jobsite has to have the basic features such as resume-base, job-base, job-search, resume-search, job-agents... but I got clearly confused when I looked at their patents on USPTO.

Please help!

Thanks much....

 

[divgradcurl]

You need to close or remove your other two postings so as not to confuse everyone.

Basically, the difference between copyrights and patents in the software context is that copyrights protect the actual "code" and patents protect the "functionality."

So, if a piece of software is copyrighted, you could rewrite the software in the same or a different language, and probably avoid copyright infringement, even if the new code has the same functionality as the old code. You can't cut-and-paste -- that would be a clear copyright violation -- but rewriting it in your own way would be fine, because the functionality is not protected by copyright.

Now, if you copied the look-and-feel exactly, that could also be a copyright problem, and maybe a trademark/trade dress problem as well. But copying the functionality is NOT copyright infringement.

Now, if they have patents, that's a whole 'nuther story. If someone patents a piece of software, then they have patented the functionality, and then it doesn't matter HOW you do -- if you do it at all, its patent infringement. Merely rewriting a piece of code is insufficient to get around a patent, because a patent covers the functionality.

Now, if your case, if you don't understand exactly what the patents cover, it's probably a good idea before you spend a lot of time, money and effort to talk with a patent attorney, who can review the patents (and their prosecution history) and determine the probably scope of their patent coverage, and suggest ways to write the software you want to write without infringing on their patents.

As far as "reference data" is concerned, typically data itself (facts) are not copyrightable. Now, the "codes," if they were invented FOR the software, those probably would be copyrighted -- but if the codes were industry-standard, then they might not be.

it ok to create a software that is roughly identical in functionality and process as the original one without using any of their titles or code?

Yes, if all you are worried about is copyright, probably not if there are patents involved as well.

 

[powerx]

Thanks much for the detailed and lucid explanation. I wish there was a rating system here on this freeadvice.com site so I could have reated this reply very highly.

One thing that still bugs me is that how were the other 200 sites able to get around the existing patents when they implemented similar functionalities in their jobsites? Such as the resume base matching with the job base and vice-versa, job agents, resume agents... - are these not protected functionalities under the patents? I'm even getting confused what is covered under a patent as a 'functionality'. If you compare these two patents they have several similarities with respect to functionalities and although the second one was filed years after the first one, it was still granted a patent:


Filed: 1995 Granted: 1998
http://patft.uspto.gov/netacgi/nph-...,832,497.WKU.&OS=PN/5,832,497&RS=PN/5,832,497

Filed: 1999 Granted: 2002
http://patft.uspto.gov/netacgi/nph-...,370,510.WKU.&OS=PN/6,370,510&RS=PN/6,370,510

The above are just examples in addition to several live sites that never filed any patents and never got sued for infringement for implementation of similar functionalities. So what is the purpose of a software patent?

Further, the fee details on USPTO for patents is mind-boggling and I could not successfully learn how much it costs to file a software patent such as the above ones. Do I need an attorney to file a patent? Could you please suggest me one, if possible?

Great day!

 

[divgradcurl]

One thing that still bugs me is that how were the other 200 sites able to get around the existing patents when they implemented similar functionalities in their jobsites?

There could be a lot of reasons why this is the case -- perhaps they have been working with counsel to work around the patents, or maybe they are just hoping they won't get, or maybe they have been approached and they've taken a license. There just isn't anyway to tell without doing a lot of analysis.

Maybe the patent holders simply aren't asserting their patents.

Such as the resume base matching with the job base and vice-versa, job agents, resume agents... - are these not protected functionalities under the patents? I'm even getting confused what is covered under a patent as a 'functionality'. If you compare these two patents they have several similarities with respect to functionalities and although the second one was filed years after the first one, it was still granted a patent:

I agree, it often is quite difficult to determine the actual scope of a patent. Typically patents are written in very broad language, but the actual scope is more limited. Typically, to get a good understanding of the breadth of a patent, you need to examine the claims in the patent in the context of the specification (the "written description" of the patent), and then examine the prosecution history (basically, the correspondence between the applicant and the patent office) for any limitations, and finally read the claims, specification and prosecution history in light of current patent caselaw. Further, you need to see if the patent has been litigated before, and what came out of that litigation. It's usually a lot of work to do such an analysis. But the point being is that you can't just read a patent and make any meaningful statements as to its breadth -- it requires more analysis than that, a lot more.

The above are just examples in addition to several live sites that never filed any patents and never got sued for infringement for implementation of similar functionalities.

Are you sure they haven't at least taken a license? A lot of the time in the software arena, a patent holder only needs to threaten a suit, and then a license agreement is negotiated. This would not usually be on the public record, so it can be tough to determine whether anyone in particular has a license.

But, it may be that nobody has gotten sued either. Sometimes patents are taken for defensive purposes, either to keep anyone from suing them or, in the event they are sued, to have a patent that can be asserted back against the person doing the suing. In such a case, it's possible that the patent holder is not interested in enforcing his patent -- he may only be interested in protecting himself.

Another possibility is that the patent holder simply doesn't have the resources to enforce their patent. Patents do not enforce themselves -- you need to hire lawyer and threaten to sue or actually sue people, and that costs money. Perhaps the patent holder simply cannot afford to enforce the patents like they would like.

Finally, if any of the companies are located in foreign countries, U.S. patents generally cannot be enforced against them.

Further, the fee details on USPTO for patents is mind-boggling and I could not successfully learn how much it costs to file a software patent such as the above ones. Do I need an attorney to file a patent? Could you please suggest me one, if possible?

If you were to try and apply for and prosecute a patent yourself, the USPTO could help you work your way through the fee maze, and every other maze. However, the majority of inventors end up using the services of an attorney or an agent -- agents are licensed by the USPTO to help inventors file for and obtain patents, but are not licensed attorneys. Patent agents are usually (but not always) cheaper than a patent attorney, but they cannot provide legal advice, if that becomes an issue later. Prices for patents vary on geographic location and the complexity of the invention, but you can expect to pay around $5000 or so altogether for an issued patent of reasonable complexity -- but again, prices vary widely, so it pays to shop around.

You can find a patent agent or attorney in your area here: http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html
or you can use Google to find agents. Some agents post prices on their websites, like this guy (disclaimer: I don't know who this is or what his reputation is, this is just a link from a Google search): http://www.webpatent.com/costs.htm (prices seem a little steep)
Here's another (same disclaimer): http://www.patent-faq.com/fees.htm

 

[powerx]

Thanks, again! That was replete.

In the event of a license agreement, how are the terms negotiated in terms of splits, generally? Who gets what percentage of split in earnings? Generally, how much of the earnings would the patent holder expect to receive from the licensee? For what duration? Do the licensee need to pay the split to the holder even after the 20-year expiration of the patent?

Can the licensee make modifications to his software during the term of the agreement incorporating any other features from the licensor's software or altogether new features - without further repercussions?

Are there any recommended ways of negotiating the agreement or is it usually handled by attorneys?

Great day!

 

[divgradcurl]

In the event of a license agreement, how are the terms negotiated in terms of splits, generally? Who gets what percentage of split in earnings? Generally, how much of the earnings would the patent holder expect to receive from the licensee? For what duration? Do the licensee need to pay the split to the holder even after the 20-year expiration of the patent?

There are really no general rules for licenses -- the two parties simply agree on something that works out for both of them, and that's it. The patent holder wants to get the most money possible out of the license, but has to weigh the license fees against the costs of litigation and the lkelihood of success in the litigation. On the other hand, the alleged infringer wants to get away with paying as little as possible, but again, needs to weigh the fees against the costs of litigation and the likelihood of success. The same patent asserted against two different alleged infringers may result in two very different licensing schemes -- one may pay a higher license fee because the infringement case against them is stronger, for example, and therefore the balance tips in favor of the patent holder. If the infringement case is weaker, however, then the license fees will typically be lower, because the balance favors the alleged infringer. And there are a whole host of other variables that go into determinging the strength of an infringement case that can impact the licensing negotiations.

As far as how exactly payments for the licenses are structured, that to is detyermined in part by the relative strengths of the two parties, and again can vary from case to case, even when it is the same patent.

So, to summarize, there really aren't any general rules -- its a case-by-case basis.

And once the patent expires, the licensee no longer needs to pay license fees to the licensor. In fact, it is illegal for the licensor to continue to demand fees once the patent expires, and the licensor could be sued for damages and penalties if the licensor did continue to require the licensee to pay fees. And this is true even if the patent is no longer enforceable due to things other than the expiration of the patent term -- a judgment of uneforceability in another case, a finding of invalidity in another court case or a USPTO reeaxmination proceeding, or failure by the patent holder to pay maintenance fees on the patent -- if a patent becaome unenforceable due to any of these reasons, the licensor may no longer assert the patent and demand license fees.

Can the licensee make modifications to his software during the term of the agreement incorporating any other features from the licensor's software or altogether new features - without further repercussions?

It depends on the terms of the license, and what modifications are made -- but generally, you can continue to develop and modify your software however you want. When you license a patent, you are getting a license to use the technology that the patent covers. As long as your software does what the patent covers, you need the license. Now, if you modify the software such that it no longers does what the patent covers, then you no longer need the license. But usually licensing agreements don't keep the licensee from continuing to develop their products -- but that's something to think about in the licensing negotiations.

Are there any recommended ways of negotiating the agreement or is it usually handled by attorneys?

Of course you can try and do this yourself, and of course the costs of attorneys needs to be factored in to everything -- but these licensing deals can be very complicated, and if they have attorneys on their side, you'll want one on your side just to avoid getting seriously taken advantage of.

 

[powerx]

Thanks, much! A few last questions...

In this case, is it a good idea to apply for a patent after making the software a bit differently than the patent holder's software - in a sense to assert inventorship? When is it a good time to file for patents after the site goes live? Immediately or within a year (wait-n-see)? Is it also a good idea to display "Patent Pending" on the web-pages or not to state any patent-info until the patents are acquired? In case of my trademarks, I had to display 'TM/SM' even before the mark was acquired but patents seem to be much more complicated than copyrights or trademarks/servicemarks. It seems like it is not a good idea to keep the functionality of a software a trade-secret for patents (as per your earlier replies) alike Coca-Cola (your opinion?).

As for copyrights, how far is it wise to file claiming trade-secrets - not disclosing all the first 25 and last 25 pages of the source-code? Is it ideal to file the final HTML output (is it called object-code in copyright terminology?) that the end-user sees in the browser (menu: View->Source) instead of the actual server-side appication scripts that generated the final HTML to keep it from prying eyes because copyright protects only the 'actual' code and not derivative/imitative code, anyway? What do they mean by blocked out code? Is it blank pages? I own a small consulting firm and have an existing 'in-house' software for over 12 years now (never applied for copyright registration) that is barebones and similar in functionality (it seems like whoever first applied for the patent is the inventor!) that I wish to improvise for this purpose. Is it ok to file for copyrights effective 1993 to get all the copyright protection or should it be in the last 5 years or current? Or it is going to conflict with my 'future' patent application that is supposed to be filed within 1 year of its invention - calling for filing copyright and patent applications simultaneously effective around the same time. I'm only trying to do things correctly instead of going by my half-baked knowlege and incur any losses - intellectually or financially.

I guess existing patents do not cover any subsequent enhancements made to the software later by the patent holder unless they revise their patents. In such a case, we don't need to license those enhancements if they are not included in/covered by the patents. Unlike trademarks, do patents require use of the functionality in commerce? I guess not.

Are new patents granted to applicants by USPTO even if there are conflicts with similar patents granted earlier? I applied for two trademarks and got only one registered because the other one had a conflict with an existing trademark. But in case of the two 'patents' mentioned above, the second one was granted after the first one so patent applications seem to work differently but I'm unclear with this.

However, I couldn't find the prosecution history, correspondence, litigation sections/links on the patent pages above. The only sections I could find are Abstract, References, Other References, Claims and Description. Is this info available to only privileged folks?

Oops! I found the rating dropdown at the bottom. Thank, God!

Great day!!

 

[powerx]

Please see the above message.

I could not delete the other two threads in Patents and Computers / Software & Internet Law forums. It bombs saying I do not have sufficient privileges. So, I simply emptied their message bodies.

 

[divgradcurl]

When is it a good time to file for patents after the site goes live? Immediately or within a year (wait-n-see)?

You must file within a year of your first public disclosure of the patent. There doesn't seem to be much point in waiting -- if you wait, you run the risk of someone else filing a patent before you (then you have to go through an interference proceeding, which adds considerably to the cost) or publically disclosing your invention before you, which will bar you getting a patent.

It seems like it is not a good idea to keep the functionality of a software a trade-secret for patents (as per your earlier replies) alike Coca-Cola (your opinion?).

I'm not sure where you are going here -- patents and trade secrets are fundamentally different. In a patent, you MUST disclose your invention to the public -- that's the price of obtaining a patent. With a trade secret, you only have protections for as long as you keep something secret. The flip side, of course, is that patents are only valid for 20 years, while trade secrets can be protected as long as they can be kept secret.

As for copyrights, how far is it wise to file claiming trade-secrets - not disclosing all the first 25 and last 25 pages of the source-code?

It doesn't cost anything more to register a copyright for something you want to keep secret, so if you are at all worried about someone viewing your code, then keep it secret.

Is it ideal to file the final HTML output (is it called object-code in copyright terminology?) that the end-user sees in the browser (menu: View->Source) instead of the actual server-side appication scripts that generated the final HTML to keep it from prying eyes because copyright protects only the 'actual' code and not derivative/imitative code, anyway?

You deliver source code to the copyright office, not object code.

What do they mean by blocked out code?

The expectation is that you will redact (or "black out") the secret parts of the code, or the parts that you want to keep secret. As a practical matter, it is usually sufficient to simply redact half of each page. I've been succesful in taping a piece of paper to a copy machine screen diagonally, so that each page has a triangle of white that hides a big chunk of the code on that page, but has some of the code visible. You can't hide everything -- the copyright office needs to see something.

Is it blank pages?

How is the copyright office supposed to register a stack of blank pages?

I own a small consulting firm and have an existing 'in-house' software for over 12 years now (never applied for copyright registration) that is barebones and similar in functionality (it seems like whoever first applied for the patent is the inventor!)

Patents in the U.S. are not "first to file," but rather are "first to invent." However, an inventor who does NOT file for a patent in a timely manner may lose the right to patent his invention, even if he or she is the first inventor, if a later, more dilligent, inventor comes along and patents their invention soon after they invent it. The patent office does not reward "sitting on" your invention -- they tend to view it as an attempt to prolong patent protection beyong the statutory period.

Is it ok to file for copyrights effective 1993 to get all the copyright protection or should it be in the last 5 years or current?

Yes. You apply for your copyright stating the dates of creation and publication. However, you cannot assert certain copyright rights against an infringer who began infringing prior to your registration.

Or it is going to conflict with my 'future' patent application that is supposed to be filed within 1 year of its invention - calling for filing copyright and patent applications simultaneously effective around the same time. I'm only trying to do things correctly instead of going by my half-baked knowlege and incur any losses - intellectually or financially.

You need to file your patent within a year of the first public disclosure of your invention. If your patentet invention has been out in public for more than a year, you are not going to be able to get a patent anyway, copyright or not.

I guess existing patents do not cover any subsequent enhancements made to the software later by the patent holder unless they revise their patents. In such a case, we don't need to license those enhancements if they are not included in/covered by the patents.

That is correct.

Unlike trademarks, do patents require use of the functionality in commerce? I guess not.

Patents require that the invention have "utility" -- that is, be useful. Patents do not care whether or not the invention can be sold or used in commerce. Trademarks, on the other hand, don't care if something is useful or not -- trademark is only concerned with use in commerce.

Are new patents granted to applicants by USPTO even if there are conflicts with similar patents granted earlier? I

No. There can be only one patent per invention. Now, a patent may be granted on a new invention that builds upon an older invention, or is an improvement on an older invention -- that's perfectly acceptable, as long as the "new" stuff meets all of the requirements for patentability (utility, novelty, non-obviousness). It is not possible to find an invention that has an expired patent, and "re-patent" the invention. Also, it is not possible to have more than one patent for the same invention -- even if two inventors, working sepearately, came up with the same invention at the same time and both filed for patents, only one of the two -- whoever was adjudged to be the "first" inventor -- would be granted a patent.

But in case of the two 'patents' mentioned above, the second one was granted after the first one so patent applications seem to work differently but I'm unclear with this.

The patent system in the U.S. is pretty complex. Although I noted that you can't have two patents for the same invention, it can often appear that there are -- you can have what are called "continuation" or "divisional" patents, there are patents that derive from an earlier patent, have the same specification (the "written description"), but they claim different stuff. Maybe this is why you think you see two patents for the same invention. Continuation practice is complicated, but its a common practice in the U.S.

However, I couldn't find the prosecution history, correspondence, litigation sections/links on the patent pages above. The only sections I could find are Abstract, References, Other References, Claims and Description. Is this info available to only privileged folks?

Prosecution history is public record, so anyone can view it. Some patents have their prosecution histories on line -- you can search here to see if the patents you are interested have their histories available online: http://portal.uspto.gov/external/portal/pair

If the prosecution history is not available online, then you will need to order a copy from the USPTO. It's usually easier to order through a company that can prepare the file history for you -- here's one that does a good job: http://www.metropatent.com/

Finally, you might also want to consider discussing all of your questions and concerns about patents with a local patent agent or attorney.