Monday, 2 February 2009

Software Driven Analytical Technology

This is a plane language outline of a suggested Intellectual Property (IP) protection strategy that is appropriate for a typical financial services company's R&D position, one which provides flexibility to react to future challenges to such a company's proprietary IP assets.

In highly competitive fields, especially those driven by for more detail go to: "bleeding-edge" technologies, such as the Investment & Financial Analysis field, the question of how to appropriately protect an especially advantageous advancement is a difficult question to answer. This difficulty is compounded if the advancement is software driven or relates to other art fields where the post-release product life-cycle can be relatively short, i.e., five to ten years.

Generally, in the US, where software based technologies are routinely protected under existing intellectual property (IP) laws, there are two sets of laws under which a protective strategy can be formulated: Trade Secret law and Patent law [1]. Although these two bodies of law are separate and distinct, they are not mutually exclusive for the purpose of developing and implementing an IP protection strategy in a situation where the protection of a highly sensitive proprietary technology is desired for an indefinite but relatively short period of years - as compared to the term (20 years) of an issued US patent.

The purpose of this Memorandum is to suggest an IP protection strategy for a Highly Sensitive, Short Life-Cycle, Software Driven Analytical Technology, which strategy concurrently combines aspects of both Trade Secret law and Patent law: (1) to preferentially keep the technology secret, but (2) which has the flexibility to respond to the technology being copied by others in the market place upon the loss of secrecy (due to theft, reverse engineering or independent discovery). For more detail go to: Alternatively, if the company should envision a substantial licensing opportunity, it can be very beneficial to have a patent application available on the technology to facilitate exploiting the opportunity.

Establish and implement a Trade Secret policy within the company and in other business-to-business interactions. As we understand it, a Trade Secret policy is to be addressed by another firm. Nevertheless, we include a few notes on the protection of Trade Secrets applicable to the US. The specifics of this policy should include: development & use of standard non-disclosure/confidentiality agreements for inclusion in an employment manual, and for presentation to vendors; modularizing software development; etc.).

Establish and implement a Patent protection policy. It is this aspect of the IP protection strategy that we are to address here in at least a general way. Our suggestion is that the company's IP protection strategy should include implementation of the following steps:

The above suggested Patent protection strategy is intended to assure that as long as there is a US patent application pending on the technology, if the trade secret aspect of protection is breached or otherwise overcome, then the company will still have the possibility of protecting the technology, after it has become known to the public. Further, another purpose is to better ensure that the company can continue to practice the invention, despite being informed of third party patent rights (cross-licensing or foreclosing competitor's entry into the market).

The above patent protection strategy can be thought of as a variation on the old "submarine" patent strategy [2]. A "submarine patent" is an old, informal term used to describe a patent application that is kept secret for a long period of time, and is not published before it is granted - a relatively long time after the initial application was filed. The term is used as an analogy to a submarine, the presence of which is unknown to the public so long as it stays under water (i.e., remains unpublished). Once the technology becomes generally used in the field, the hidden application is then allowed to issue into a "submarine patent" and to "torpedo" the competition, catching them off guard. Abusive aspects of this practice were previously possible under the US patent law, but were largely eliminated when the US signed the GATT/TRIPS agreement (administered by the WTO) which limited patent terms to 20 years measured from the original filing or priority date.

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