Managing Intellectual
Property
D. F. Costello
ACM Distinguished
Lecturer 2005-2006
Computer Science and
Engineering
Why Talk and Think about IP?
 Because have experience in the theory and
praxis of the field and think it will affect
my and your working lives in different
ways.
 Because it is a good framework around
which to build a scaffolding for your career
as a Knowledge Worker.
 Because IT workers are, or soon will see
themselves as IP Managers.
 Because all knowledge professionals,
are/will be deeply involved in IP and MIP.
"I am not an attorney and this presentation
does not constitute legal advice. Meant for
You and MIP
 You have IP
 You will generate IT IP
 You manage IT/IP today
 You will manage IT/IP tomorrow
 You need to reflect this on this new
economic model for you are working in the
Knowledge Economy where an ever larger
percent of the GNP is attributable to the
development and marketing of IP and in our
case IT/IP.
MIP Copyright and the US
Economy
 U.S. copyright industries have grown at twice the
rate of the rest of the U.S. economy and now
account for about 5 percent of U.S. gross
domestic product The absolute growth rate of
value added to GDP by copyright industries
between 1977 & 1997 was 205%." and in the
April 1998 report, The Emerging Digital
Economy, published by the U.S. Department of
Commerce: "the IT sector ... constitutes an
estimated 8.2 per cent of the gross domestic
product... The IT sector, moreover, accounts for
more than one-quarter of the real economic
growth in the American economy."
MIP Patents per million people
1.Japan994 per million people
2.Korea, South779 per million
people
3.United States289 per million
people
4.Sweden271 per million people
5.Germany235 per million people
6.France205 per million people
7.Luxembourg202 per million
people
8.Netherlands189 per million
people
9.Finland187 per million people
10.Switzerland183 per million people
11.Austria165 per million people
12.Russia131 per million people
13.Ireland106 per million people
14.Slovenia105 per million people
15.New Zealand103 per million
people
16.Norway103 per million people
17.Ukraine84 per million people
18.United Kingdom82 per million
people
 http://www.nationmaster.com/grap
h-T/eco_pat_gra#
MIP IT/IP
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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
Every Learning/Training unit you create is IT/IP
MIP and IT/IP Our Obligation
 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 societies of which
we are apart.
Particular IP/ Your Property
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Your Creative Digital Art
Your Creative Digital Music
Your Creative Digital Course Material
Your Creative Algorithm Implementations
Your Creative UML Diagrams
I assume that the latter five are created outside of
any work environment
How I came to Think about
Property
Family Property in the Bronx  My family owned no property. My father
and mother rented for 40 years.
 We owed no automobile.
 My father had zero money in the bank.
 I dreamed of owning a house in New
Jersey as the epitome of the “good life”.
 Owning Real Property was a childhood
goal.
My Family’s Admonition &
Challenge
 No one from my family had graduated
from college because of depression and
the war.
 I was admonished and disciplined to get
good grades in school – to learn all I could
and learn it well!
 My parents wish for me was that “I would
have it better than they did”. They were US
depression people
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.
 Clothes do not make the man!
My Secondary School Education
 I went to a Christian Brothers Institute down
in lower Manhattan.
 These Brothers took vows of poverty,
chastity and obedience and committed
themselves to the teaching the young from
the lower income brackets. They didn’t own
anything!
 From them I received the vocation to be a
teacher. I wanted to give away the
knowledge that I had and help people
develop to get good jobs.
My Air Force Education
 I was commissioned on graduation from college
and became a Airborne Communications Officer.
 I became very familiar with the concept of
secrecy and the fact that there were Communist
and other varieties of spies out to steal US
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.
 This was a MIP activity.
My IT and University Career
 My first real employer was IBM. 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 student employees
to work on IBM’s chess playing program.
 I soon learned that IBM valued its IP!
 In sitting on University IT Policy Boards I saw
the issues as they began to emerge.
University of Wisconsin
 There were many things that
happened to me in the intervening
years but the reason I bring up the
University of Wisconsin is that I
received 2 checks from them – one
form the State (the University) and
one from WARF – the Wisconsin
Alumni Research Foundation.
 They had built up an endowment
based on an original patent given to
them by a University researcher who
discovered homogenized milk.
 http://www.news.wisc.edu/story.php?id=3289
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
Number of IBM Patents over last
12 Years
2004
3248
2003
3415
2002
3288
2001
3411
2000
2886
1999
2756
1998
2658
1997
1724
1996
1867
1995
1383
1994
1298
1993
1087
Software Engineering as Property
Management
 Many of you have taken courses at a University
in Software Engineering.
 How many “working programs” have you
written while you took these courses?
 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?
 When you do your IT work today are you
employing the best principles of SE as modified
or enlightened by an MIP point of view?
University Related Patents
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Synthetic Rubber
Seed Varieties
Dimples on a Golf Ball
Numerical Analysis Patents
Genetic Engineering
Center Pivot Irrigation
Japanese University
Columbia – coming up…
Impact of Patents on an
Industry
 "Genetic Engineering":
13187 US patents issued since
1976.
 SeedsofchangeJan1,2003
by
Kurt
Lawton
Little did anyone know 20-some years ago that the birth
of plant-based genetic engineering would downsize the
seed-chemical agribusiness complex by billions of
dollars. Its impact goes far beyond the companies
involved. The entire supply chain — from co-ops and
dealerships to distributors, along with related
agribusinesses — is feeling margin-draining heat.
Meanwhile farmers benefit from reduced input costs but
despair about limited choices. The confluence of seedbased herbicide/insecticide resistance and the patent loss
of glyphosate not only changed the crop protection
business forever, it short-circuited revenue sources that
funded some biotech seed businesses. All major players
were forced to drop prices and concede great value in
their crop protection portfolio in order to compete.
Impact of Patents on a Country
 THIRUVANANTHAPURAM, India, (Nov. 14) IPS - One
of the 18 biodiversity "hot spots" of the world, the state of
Kerala is developing strategies to shield its rare plant and
animal species from corporate exploitation. Kerala's
mountain forests are home to some 2,800 species of
flowering plants, of which 900 are used in India's
centuries-old medicinal system known as Ayurveda. The
rich variety of plant species found on the state's farms and
the coastal mangroves also have commercial value. State
authorities have decided that the best way to prevent
outsiders from staking claim to this traditional knowledge
is to assert the legal rights of the people of Kerala over it
first. "This would enable us to declare our full ownership
of the bio-resource. Nobody can make a patent claim on
these resources," say government officials in the state
capital Thiruvananthapuram. Concern for biodiversity
protection has grown dramatically in the state following
disclosures in the media of the export of medicinal plant
materials to Glaxo-Wellcome laboratory in Singapore and
to the Royal School of Pharmacy in Denmark, three years
ago.
University Patents (from US PO)
 http://www.uspto.gov/patft/index.html
 University Assignee : 41880 patents since 1976.
 (ICN/(DD OR DE) AND AN/UNIVERSITY):
341 patents.
 This may not be complete or correct as my search
techniques on this DB need to be improved.
 Synthesis of oligosilazane-containing compounds for the production of
a ceramic-like material
 Abstract
 The invention concerns a synthesis method for an oligosilazanecontaining condensation product comprising the following step:
conversion of oligosilazane composition with an average molecular
weight of no more than 1000 g/mol, with a dialk(en)ylamino compound
of the following formula (I) A[N(R.sup.4).sub.2 ].sub.m (I) in which A
is at least one element chosen from B, Al, Ti, Zr, and Hf, R.sup.4 is an
alkyl group or alkenyl group and m is the valence of element A, in
which the reaction is run so that an average of 1.6-2.2 mol
HN(R.sup.4).sub.2 per mol of dialk(en)ylamino compound of formula
(I) is split off; an oligosilazane-containing condensation product
obtained according to this method; a method for production of a
substrate coated or infiltrated with a ceramic-like material, comprising
the following steps: coating or infiltration of the substrate with a
solution of the aforementioned oligosilazane-containing condensation
product, evaporation of the product and curing of the oligosilazanecontaining condensation product, as well as a coated or infiltrated
substrate obtained according to this method.
 Inventors: Motz; Gunter (Bayreuth, DE); Stenzel; Frauke (Buchen,
DE); Ziegler; Gunter (Eckersdorf, DE) Assignee: The Federal State
of Bavaria, Germany as represented by The University of
(Bayreuth, DE)
Impact of IT Patents on a
 Consider the strategies
that countries take:
Country-Japan
 As many of you know Lotfi Zadeh, a professor
at the University of California at Berkley,
presented a way of processing data by
allowing partial set membership rather than
crisp set membership or non-membership and
invented fuzzy logic.
 The Country of Japan took an intertest in that
theory after a young Japanese 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
Japanese and Patents II
 Professor decided to “sell” his “ownership
rights” in exchange for a corporation building
him a very modern laboratory to continue his
work.
 From this laboratory & corporate partnership
grew an enormous learning, discovery,
implementation process that benefited all of
Japan.
 During the 1990’s Japan received 90% of all
the patents issued in the area of Fuzzy logic.
 This effort has & will pay enormous
dividends for years to come. A National MIP
decision.
 Results of Search in 1976 to present db for
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
Words and Ideas Related to
Generating IP
 Vision, Innovation, Genius, Work Ethic
 Entrepreneurial
 Licensing
 Families of Products (Patent Families)
 Not all of these are respected values in a
University environment.
 They do not lead to tenure.
History of Software Related Patents
 http://www.bitlaw.com/softwarepatent/history.html
 http://www.jerf.org/writings/communicatio
nEthics/node6.html
 There is a different history of Software
Patents in Germany
US IBM -2004 and MIP
 “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”…
 Big reaction in Europe…
How much Money is Involved?
 For example, by proactively managing their
intellectual property estate, IBM earned $1
billion in annual revenue in 2004. That’s MIP!
 How much do Universities as a whole generate
from IP? How much do they pay for IP?
 How much do each of the US 50 States generate
from IP?
 Does the Federal Government hold patents?
 How much money does Germany generate from
patents? How much comes from Universities,
Institutes and Corporations?
 Do all countries have the same IP laws?
 Who is WIPO?
Recent Numerical Analysis Patents
6,373,862: Channel-aided, decision-directed delay-locked
loop
6,373,071: Real-time prediction of proximity resist
heating and correction of raster scan electron beam
lithography
6,371,916: Acoustic analysis of bone using point-sourcelike transducers
6,370,129: High-speed data services using multiple
transmit antennas
6,364,837: Contact digital ultrasonic densitometer
6,360,175: Generalized modal space drive control system
for a vibrating tube process parameter sensor
6,360,027: Multiple ultrasound image registration system,
method and transducer
6,359,693: Double pass double etalon spectrometer
6,357,389: Control system for enhancing fish
survivability in a hydroelectric power generation
installation
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
MIP – A Patent watch in Europe.
 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 way to annotate patents.
 http://gauss.bacon.su.se/sql/
Who generates 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 an individual and it is
owned by that individual 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.
What is my Managerial
responsibility for Real property?
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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: University
Administration, Corporate Administration,
Banking, Insurance, Legal Systems all of who
take an interest in my property.
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 maintain much of the original
value in each element.
Functions of Management
 Planning
 Organizing
 Leading
 Controlling
 How should these four activities of
management be applied to MIP?
 You have to take time to think and reflect
and gain experience to see how to arrive at
a philosophy and a praxis on how to
proceed.
Existing systems 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 continue to 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 WWW to…But…
 I need KMS…
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.
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, (more later)
 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.
Managing Intellectual Property
 Do you begin to see a bigger view of what I
mean by MIP?
 Do you begin to see the intangible but real
nature of the IP you invent or 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?
 Do you see how shared management is essential
if both your handler, you and society are to
prosper?
Managing Intellectual Property
 What People and Organizations currently Own IP
in Bremen? Germany?
 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 do the German
Universities and Special Laboratories own?
 Is the University ( Company…) committed to
MIP – above and beyond the regulatory
approach…
Others want/need your IP/IT
capabilities
 White Collar Thieves
 Corporations
 Universities
 Your family – you may be the bread
winner
 If you have “rich” IT/IP, you are perceived
as having value.
 Is this natural, desirable?
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 having
legal consequences.
Privacy Certificates
 In the US when a company or college or
university collects information on individuals
through surveys etc., anyone who has access to
that personal data must have filed a privacy
certificate with the research office stating their
understanding of their privacy responsibility.
 CFR – Code of Federal Regulations
 HIPPA - ( Security and Privacy) Legislation
 Banking (Security and Privacy) Legislation
 I know that the EU has strong privacy protection
laws but thieves are international.
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 ?
 Does your University (company) have an Idea
Factory unit?
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)
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 using 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
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.
IPM University Example Policy
 http://www.research.uh.edu/otm/techmana
ge.html
 http://bolt.lakeheadu.ca/~techtx/
MIP Another View - Electronic
Frontier Foundation
 http://www.eff.org/about/
 Here is another view of how to manage IP
 They are for a more open systems approach to
managing intellectual property.
 There are many people who are uncomfortable
with the way ideas are managed and protected.
 Thay and others put forward the Open Systems
approach.
International IP Theft I
 After 1989 and before 9/11, the CIA reinvented
itself to protect US business from “IP Theft”.
 The some parts of the world have little regard for
the ownership value of IP developed in any part
of the world.
 You can buy the latest versions of US/EU
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 ethics sit?
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 be a poor MIP
decision?
Defining Property
Many 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
We know the Legal Forms of
Protecting IP.
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Patent
Copyright
Trade Mark
Trade Secret
 How does one choose?
 Even after legal protection there is need for understanding
licensing?
 We are at the beginnings of the legal dimension to the
MIP activity
 It is almost absolutely necessary to have a lawyer
involved.
Newer Types of 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.
 ABST/(BUSINESS AND PROCESS): 225
patents.
 Many patents have been filed on methods of
delivering on-line courses.
 Danger of infringement liability, can force
you into licensing or abandoning your
Turan P. Odabasi, J.D.
software.
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™, IBM™, 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 web sites.
 Trademark rights accrue through use, not merely
registration, so search thoroughly PRIOR to your use.
 Potential large liability for infringement.
Turan P. Odabasi, J.D.
Internet Law
Considerations
 Domain names can infringe trademarks, so
be careful when choosing your address.
 In the US there is an Anti-Cybersquatting
Consumer Protection Act of 1999.
 Be careful of using the trademarks of
others in any metatags on your website.
Trade Secrets
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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
to keep certain ideas and processes secret…
Lawyers and MIP
Welcome 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.
Lawyers and MIP II
 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
struggles, we offer creative and
innovative litigation and billing
strategies, frequently involving
The Growth in IT Patents as a
MIP Strategy
 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.
The Cost of IP Infringement
 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
The General Growth in IP being
Patented
 The US 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
The Cost of Idea Theft Infringement
 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
infringements not covered by the agreement that
Kodak may be able to go after,
Modern Edisons Dr. Gary
Michelson
 http://www.highbeam.com/library/doc0.asp?doci
d=1G1:123131782&refid=ink_tptd_np&skeywor
d=&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!
Managing Intellectual Property
 What other artifacts fall under the
heading IT/IP?
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Books
Songs
Films
Sculpture
Art
Digitized Images of Art
Digital Books
More War stories
Managing Intellectual Property
 What other artifacts fall under the heading
IP ( cont)?
– Cartoons
– Posters
– CAI
– Bio Technology - bioinformatics
– Process Patents
– Other Forms of IP
– Trade Secrets
– Other
 Each needs a special approach if MIP is to
be effective.
Managing Intellectual Property
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Do I use much IP??
Do I have any IP that is my own?
Can I develop any IP?
Should I spend time thinking about IP?
How will MIP affect my employment?
How will my handling of MIP affect my career ?
How do I manage my IP today?
Will I be in a situation involving controversy
regarding IP in my lifetime?
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
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 in a college
and University setting.
 Corporate concerns are as important
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
How Should I manage my IP?
 Philosophical should…
 Ethical should…
 Professional should…
 Managerial should…
 Entrepreneurial should…
Organizational Views of IP
• Small Companies
• Companies
• Large Companies
• International Companies
• What does the Global Economy
Mean in this Regards?
Give me some More Examples
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Attanasoff & Berry
Homogenized Milk
Synthetic Rubber
Center Pivot Irrigation
Dimpled Golf Balls
Software
Courseware
Assessments (Questions and Answers and their
processing)
What Attitude Should I take
towards IP I?
 Depends on Philosophy and the Mores of
your Culture
 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
What Attitude Should I take towards IP?
 Replace University by:
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College
Private University
Public University
University in another Country
Corporation
Government
 Replace Union worker by
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Corporate Employee
State Employee
Small Business Employee
Entrepreneur
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 your new ideas.
– Is idea production an explicit or implicit
component of your employment agreement?
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
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
MIP and Security
 Certainly a big issue that fits into the MIP
framework.
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 with the development of elearning they become of especial interest to
colleges and universities.
Definition of Learning Object
 Any 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
To make a LO reusable it has to
follow standards
Wrap it in a nice Package
What’s “nice”- Includes
Metatags.
Standard Packaging – IMS
and SCORM and other
Standards must be followed.
Where do I find Standards?
 W3C IEEE
 IMS Content Packaging Spec
 IMS Meta-Data Spec
 ADL SCORM Spec
 ALL CAN BE FOUND ON THE WEB
OK I understand Packaging – sort of What’s all this metatag stuff?
 If the property is to have value it must be
findable.
 You cant effectively put a book in a
Library without some descriptors.
 You cant put a LO out in a repository without
some metadata entries… data about the LO
 What to do next to improve the reuse of these
assets – enter SCORM
SCO
 Sharable Content Object (SCO). A
learning asset wrapped in specific
meta data. ( Basis of SCORM)
 A Sharable Content Object (SCO)
represents a collection of one or more
Assets that include a specific
launchable asset that utilizes the
SCORM Run-Time Environment to
communicate
with
Learning
Management Systems (LMS's)-the
ultimate user of the LO.
Content Aggregation
This is a map that is used to
aggregate learning resources into
a cohesive unit of instruction (e.g.
course, chapter, module, etc.).
 Content aggregation can reference
Content Aggregation Metadata to
allow for search and discovery
within online repositories.
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SCORM Meta-Data – 9 Categories
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General category
Lifecycle category
Meta-metadata category
Technical category
 Educational
category
 Rights category
 Relation category
 Annotation
category
 Classification
category
Switching Gears beyond
Learning Objects and DRM a
SCO Metatag
 An Example from LO – the LO repository.
 Digital Rights Management
 Need for a DOI.
 Need for way to have the relationship
between the owner of the LO and the
customer for the LO spelled out,
contractual agreed to and EASILY
delivered.
DRM
 We need to have a way of embedding the
contractual clauses we need right in the
metatags associated with the LO.
 We need to have it done in a way that
protects everyone's rights and insures
everyone's responsibilities are met.
 We need a Digital Signature.
 We may need Digital Watermarking
DRM
 Two major approaches being put forward
about how rights of this variety need to be
managed.
 XrML
 Digital Rights Language
 The development in these two areas will
effect the economics of Higher Education
for years to come.
LO and DRM Characterize
Tomorrow's MIP Future
 The LO is only one example of the many
IT/IP objects that will need to be managed
and metatagged in the WWW of tomorrow.
 Each of these objects will require effort to
decide upon the right technical, marketing
and legal protections that will be required
in this world.
 You will be a part of this world!
Copyright & Universities
 There are numerous copyright issues that
will have to be faced by Universities.
 Traditionally, in the US, the royalties from
books produced by a faculty member
belonged to the faculty member.
 The high cost of scientific publication may
force some journals to go completely to the
web for publishing.
 The University may take an interest in
courses based on LO.
 Fair use may be subject to refinement as
an operating principle in the classroom.
Copyright and Universities
 “Higher education is now moving between
two paradigms for scholarly
communication, one based on print and the
other conducted electronically. While
predictions …vary, there is little
disagreement about the epochal and
transformational quality of the change now
taking place.”
 Association of Research Libraries 2002
A word about Mores
 When a group or sub-group of people
communicate with each other more than with
their environment a group set of mores arises.
 To members of that group, they see a self-evident
way of thinking about 1) what has to be
done;2)what is done; 3) what will be done;4)
what ought to be done;5) attaching value to what
is; 6) attaching value to what is done;7) attaching
value to what will be done ;8) attaching emotions
to what is deemed relevant
When do Mores change?
 When they meet a known or unknown
primordial need in a new way.
 When understanding is absorbed into a
new understanding.
When do Mores not change?
 When someone attempts to impose them.
 When there is no room for adaption
 When there is no capacity for dynamic
participation
 When the past and the future are not in any way
connected.
 With mores everything has personal relevance.
 Without mores nothing has personal relevance.
Can a group establish a Mores
relative to IP?
 Different groups may have different mores.
 A group (say a Research University)
would be able to communicate with
everyone inside the group.
 The group would be able to make
assessments of other groups mores and
whether or not they can be accommodated.