Smart Phone Apps, Policy Issues and Potential Pitfalls for University Technology Managers

Gregory W. RobinetteAUTM Central Region Meeting 2011

Smart Phone Apps

Policy Issues and

Potential Pitfalls for University Technology Managers


• IP Protection Possibilities• Issues and Potential Pitfalls• Patent Policy• Copyright Policy• Trademark Policy• Issues and Scenarios for Technology

Managers

Agenda


• Utility Patent – Method

• Design Patent – Smart Phone Icons• Copyright – Computer Programs and

Screen Displays• Trademark – Icon

Intellectual Property Protection

Possibilities for Smart Phone Apps


U.S. Patent No. 7,930,283


U.S. Patent No. D628,590


Copyright Registration

Green Rewards & Affinity LLC

• Computer Program (may include a videogame)• Title: iMagnify® - Hospitality Software. • Description of Work :

Software program designed to run on a smartphone … a handy utility to allow people who forget their reading glasses to still read the fine print when traveling, in restaurants, in supermarkets, squinting at stock tables, newsprint, stamps, coins etc. The software controls the built-in camera of the smartphone to magnify the image for easier reading on the screen.


Trademark Registration

• Registered: December 7, 2010 • Owner: Apple Inc.

®


• Evolving Area of Law and Policy• Do Current Policies Address Smart Phone Apps?

– Do They Need To?

• Example 1: IP Policy Applies to "Creators" Defined as "Any Persons Who Create Intellectual Property Using University Resources."

• Example 2: – Patent Policy Dictated by State Law. – Copyright Policy Applies Only to Faculty and Employees.– No Trademark Policy.

Issues and Potential Pitfalls for Technology

Managers


• Does state law direct policy?• Example: in Ohio, ORC 3345.14:

All rights to and interests in discoveries, inventions, or patents which result from research or investigation conducted in any experiment station, bureau, laboratory, research facility, or other facility of any state college or university, or by employees of any state college or university acting within the scope of their employment or with funding, equipment, or infrastructure provided by or through any state college or university, shall be the sole property of that college or university. …[N]o faculty member, employee, or student of such college or university participating in or making such discoveries or inventions, shall have any rights to or interests in such discoveries or inventions…

Patent Policy


• Survey of Policies Reveal Language Broadly Enough Written to Cover Any Patentable Subject Matter.

• Example 1: Patentable Intellectual Property: “Inventions, discoveries, and manufacturing designs that have been reduced to practice, and are novel, useful, and non-obvious, and therefore likely to be subject to protection under United States patent law."

• Example 2: “Discoveries, inventions, or patents that result from research…"

Patent Policy – continued


• Policies Vary With Goals and Objectives of Universities.• Example 1:

– Applies to all persons using University resources.– Original works of authorship that have been fixed in a tangible

medium of expression, including books, articles, artwork, music, software, traditional or electronic correspondence, and on-line instructional materials.

• Example 2: – Specifically excludes students & software from policy.– Copyrightable material includes: employee-authored books,

journal articles, research studies, musical works, syllabi, distance learning courses, workbooks, examinations, tests, lectures, lecture notes and power point slides.

Copyright Policy


• Policies Vary With Goals and Objectives of Universities.– Example 1: University owns all right, title, and

interest in the Trademark.– Example 2: University IP policy does not

address Trademarks.

Trademark Policy


• Do Current Policies Address Smart Phone Apps?– Do They Need To?– Consider:

• Utility Patent – Software• Design Patent – Smart phone icons• Copyright – Computer Programs and Screen

Displays• Trademark – Icon

Issues & Scenarios


• If not Prescribed by State Law, Should Students be Included in the University Patent Policy?

• Should Students be Included in the University Copyright and/or Trademark Policy?

Issues & Scenarios


• Consider Scenarios:– Employee develops Smart Phone App within Scope of

Employment.– Student develops Smart Phone App using University-

owned facilities.– Student develops Smart Phone App without using

University-owned facilities.– Student develops Smart Phone App as a class

assignment– App is created as a joint work by a student and a

faculty member.

Issues & Scenarios


• Infringement Issues– Copyright and/or Trademark infringement of

student and/or faculty developed App/Icon:• Who investigates?

– Does Putative Original App Infringe the Work of Another?• Code, Icons, Screen Images• Who investigates?

• Revenues from Advertising

Issues & Scenarios

Smart Phone Apps, Policy Issues and Potential Pitfalls for University Technology Managers

Business

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