1-1§ 1.01 Introduction§ 1.02 BACKGROUND[A] Current Non-Patent Protection Regimes for Software Technology[1] Copyright[2] Trademark[3] Trade Secret[B] Patents - Current Patent Claim Formats for Protection of SoftwareInventions§ 1.03 LIMITATION OF CURRENT CLAIM FORMATS FOR PROTECTINGEMERGING SOFTWARE BUSINESS MODELS[A] Downloadable Software Store[B] Application Service Providers[C] Distributed Computing Environments[D] Importation Generally§ 1.04 EMERGING PATENT CLAIM FORMATS FOR PROTECTION OFSOFTWARE INVENTIONS[A] Propagated Signal Claims[1] Format[2] Strategic Advantages[B] Product-By-Process Claims[1] Format[2] Strategic Advantages§1.05 ENFORCEMENT ISSUES[A] Legal Enforcement[1] Best Case Scenario[a] Jurisdiction[b] Traceable Pattern of Infringement[c] Deep Pockets[2] Worst Case Scenario[a] Jurisdiction[b] Untraceable Pattern of Infringement[c] Judgment Proof[B] Equitable Enforcement[1] Enforcing Injunctive Remedies[a] Domain Name Transfer[i] Responses - VOTEAUCTION.COM[b] Site Blocking[i] Responses - Radikal and XS4ALL§ 1.06 Potential Regulatory Responses[A] Potential Parties[B] Potential Scope of Liability for Patent Infringement[C] Proposed Statutory Revisions§ 1.07 Conclusion1-2EMERGING CLAIM FORMATS FOR SOFTWARE INVENTIONS:VIRTUALLY EXTRATERRITORIAL REACH FOR U.S. PATENTS COVERINGINTERNET-BASED INVENTIONS OR VIRTUALLY WORTHLESS?§ 1.01 IntroductionThis article will focus on emerging claim formats for software inventions. First,the article will provide a background describing commonly used intellectual propertyprotection for software inventions, including copyright, trademark, trade secret and patentprotection, including method, system, apparatus, Beauregard, and Lowry claim formats.The article will then focus on two emerging claim formats for software inventions: thepropagated signal claim format and the product-by-process claim format. The article willthen discuss the availability of these emerging claim formats as a means to protectsoftware inventions in view of the U.S. Patent and Trademark Office's ExaminationGuidelines for Computer-Related Inventions, published opinions, and publishedcommentary.Second, the article will focus on practical issues that should be considered whenutilizing these claim formats. For instance, the article will discuss the possibility thatallowed claims in these emerging formats could be utilized to prohibit the "import" ofdata from Web sites located outside the U.S. via the Internet in a format covered by apropagated signal claim or a product-by-process claim. The article will also discuss thetechnical difficulties surrounding the enforcement of such claims (i.e., "how do youprohibit the 'import' of data on the Internet?"). Finally, the article will reach a conclusionas to whether the emerging claim formats will provide valuable protection thatsupplements the current commonly-used claim formats, or whether the legal and practicaldifficulties associated with the emerging claim formats outweigh their potential benefits.2-3§ 1.02 Background[A] Current Non-Patent Protection Regimes for Software Technology[1] CopyrightCopyright is a form of intellectual property that gives the creator of a work of artor literature, or a work that conveys information or ideas, the right to control how thatwork is used. Although referred to in the singular, U.S. copyright law actually givescreators (or their assignees and licensees) a number of rights over their works, includingthe right to reproduce, distribute, adapt or perform them.To qualify for copyright protection, a work must be "fixed in a tangible mediumof expression." Almost any form of expression will qualify as a tangible medium,including a floppy disk, random access memory, printed paper, oil painting or a recordingof a radio broadcast.Copyright shelters only the expression of creativity, not the ideas upon which theexpression is based. Copyright may protect a Web page with a "one click" purchaseoption shown on the page, but it will not protect the idea of one-click purchases. Patentand trade secret intellectual property rights are used to protect the idea upon which theexpression is based.As copyright addresses the expression of the creative work, it has usually beenapplied to protecting the source code or the user interface of particular software products.Unfortunately, it is fairly straightforward for experienced software designers to developsoftware that does not infringe a copyright in either the appearance or the source code ofanother software product. As such, inventors of significantly novel and unobvious2-4software products prefer to use the more robust protection of patents, which are able toprotect not only the program as a whole, but the underlying concepts as well.[2] TrademarkPatents allow those who create inventions to keep others from makingcommercial use of the inventions without the creator's permission. Trademark law, onthe other hand, is not concerned with how a new technology is used. Rather, it applies tothe names, logos and other devices that are used to identify the source of goods orservices and distinguish them from their competition.Patents and trademarks generally do not overlap. However, in the online worldwhere the identity of the source of goods may be the main way to access a patentedsoftware product (e.g., the domain name for a Web site), then a trademark may play avaluable role as a nexus to target for preventing or at least delaying infringing activities.If, as is often the case, the patent holder also has a registered trademark that issubstantially the same as the infringing domain name, they may be able to take legalaction against the infringing domain name or Web site, to prevent or at least frustrate anyinfringing activities. A likely scenario would be to use the trademark action to shut downor even transfer the domain name in which a patent infringer hosted a Web site withinfringing patent material. Of course, seizing a domain name may only delay patentinfringing activity until the infringer finds a new domain to host their infringing activity,but at the fast pace of the Internet, a delay is sometimes all that is needed to recapture themarket.[3] Trade Secret2-5Unlike copyright, federal trademarks and patents, trade secrets are state-basedintellectual property rights. A trade secret generally is any formula, pattern, device, idea,process, compilation or information that both: provides the owner of the informationwith a competitive
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