User:Lchanrasmi/sandbox

Team 10 (iParker) Scenarios

IRAC Scenario & Answer
Tiffany, Allan, Alex, and Tammy went to Babson College together. During their years there, they became best friends. Alex just absolutely loved programming. One day he came up with this genius idea to create a mobile platform that allowed different users to communicate where they are parked and when they plan on leaving. He felt this would a great social benefit to the city because it would limit traffic congestion and air pollution. Alex was not the best businessperson though, so he asked his best Babson friends to help him start a company called iParking. Tiffany, Allan and Tammy all love the idea, and the four of them start working on the project post-graduation.

They filed iParking as an LLC, because they remembered Professor Adam saying something about that helping with liability issues down the road. They also assigned each other roles, and signed contracts with iParking. Tiffany would be CEO, Allan would be CFO, Tammy would be head of marketing, and Alex would be CTO (Chief Technical Officer/Programmer). Upon creation of iParking, Alex then used iParking’s startup funds to successfully file a patent for the algorithm. A year later, Alex and his annoying girlfriend Stephanie decide to move to California. While there, Alex meets some tech gurus in Silicon Valley who think his app has a lot of potential, but they think the team is holding him back. Alex decides he is going to leave iParking, take the algorithm he has developed, and start a new company with his connections in Silicon Valley.

Allan, Tiffany and Tammy all sue Allan for taking the algorithm that defined iParking, without their consent or approval.

Issues:
1.     Who owns the company's algorithm patent intellectual property that is filed & developed by a CTO/Programmer & Co-founder?

Rules:
1.     The biggest factor in deciding who owns the intellectual property created on the job by employees is whether or not that employee had a duty to create intellectual property as part of their employment duties.

a.      An employed that creates IP as part of their normal work duties cannot claim ownership of that IP

b.     An employee can claim ownership of IP if that IP is created outside the bounds of his/her contracted employment.

i.     It is worth noting that just because an employee uses his/her works’ resources to create the IP, doesn’t mean that the company then owns the IP

2.     The general rule is that you own patent rights to an invention you create during the course of your employment unless:

a.     There is an employment agreement assigning invention rights

b.     You were specifically hired for you inventing skills or to create the invention

Analysis:
1.     Because there is no explicit explanation in regards to the contracts signed by the four individuals, we don’t know if a invention rights agreement was incorporated in them. For that very reason, we are going to assume that they were not a part of the employment contracts.

2.     Alex was the Chief Technical Officer/Programmer, and thus his duty was to create the algorithm for iParking.

3.     There is also confusion around who owns the patent. Because Alex filed it using iParking’s money, if he was then to use the patent for personal gain, he would be piercing the corporate veil.

Conclusions:
1.     Based on the above analysis, Alex filed the patent under the resources of iParking, and thus make iParking the owner of the IP.

2.     Had Alex filed the patent using his own money, he still wouldn’t own the intellectual property because he was hired by iParking for the main reason of developing the algorithm and thus, even though it was his idea and his creation, iParking owns the IP based on the facts/assumptions of this case.

Neutral-Voiced Summary
An issue with software patent intellectual property rights is typically revolved around deciding whether the company or inventor owns it.

As a matter of law, in the United States, the employee generally owns the IP right unless the employee’s inventing skills or task to create the invention is the main specific hiring reason or a specific clause in the employment agreement assigning invention rights.

In this case, authors mentioned that the invented work would be owned by the company for 120 years from its creation date or 90 years from its publication date whichever comes first. To add on, specifically for software patent protection, it usually only has a limit of 20 years protection and in this case.

Patents in Thailand
A Thai patent law is specified under the Patent Act 1979 (as amended in 1999). There are three types of patents that can be protected, which are (1) invention patents, (2) petty patents, and (3) design patents. Patent protection in Thailand is aimed to support many business investors for both locals and overseas to introduce new proprietary technologies into various business sectors. Moreover, a Patent protection is not only helping the business to gain their competitive advantage, but also helping them to obtain a return on investment, especially in research and development area.

There are many advantages for a company to consider registering a patent. Firstly, the parentee will get exclusive rights to protect themselves from others making, using, selling, or distributing the invention or design that is patented without permission. Secondly, a granted patent increases business value. Thirdly, a granted patent is enforceable. The business owner should be mentioned Thailand was operated as an “absolute novelty” and “first to file” patent system. The new invention is strictly required to be kept as confidential until they receive a patent application date.

There are three types of patents eligible in Thailand:

Invention patents
Like a European patent, a Thai patent law, under Section 5 of Patent Act 1979 (as amended in 1992, 1999), is granted to an invention that (1) is non-obvious (involves an inventive step), (2) is novelty, and (3) is capable of industrial application. Under Thai law, an innovation shall be taken to involve an invention step if “it is not obvious to a person ordinary skilled in the art”.

According to the Manual of Patent and Petty Patent Applications Examination, “an invention must provide a benefit or improvement in occurrence of at least one of the following :


 * 1) effect of design/form
 * 2) task
 * 3) selection
 * 4) requirement of a problem and solution
 * 5) effort
 * 6) non-simplification
 * 7) concentration of developmental steps
 * 8) economic success
 * 9) scientific technical research
 * 10) progressive
 * 11) achievements by the invention
 * 12) non-exchangeable compounds
 * 13) surprising results

The examples of the protected invention are new product or process, improvement such as machinery, tools, chemicals, biotechnology, etc.

As compared to petty and design patents, the invention patent offers longer exclusivity period of 20 years from the registered date, while an exclusivity period of design and petty patents is 10 years.

Software patents in Thailand
As like as 52(2) of the European Patent Convention (EPC), section 9 of the Thai Patent Act 1999 states that Thai patent law does not include software (or computer program) from patentability because the computer software is not considered as an “invention”, in which it is not the idea of the product itself. Hence, the software is considered as the manual or instruction that was controlled by users to perform the tasks.

A software patents law in Thailand has been controversial debates among the economists and national developers’ overtime since there were two significant developments in the international patent law; (1) the European Union’s attempt to harmonize national patent laws by the Proposal for a Directive of the European Parliament and Council on the patentability of computer-implemented inventions, and (2) the US court decision to expand patent protection to business methods. The opinions are divided into two sides. Dr. Tangkitvanich, the IT specialist of Thailand Development Research Institute (TDRI), raised his concern that Thailand is not in a good stage for a software patent as there were several flaws in patent rights. For example, the business method prevention has high tendency to hinder the growth in innovations especially for the infant software companies. Moreover, the software patent may cause monopoly and innovation problems. “Monopoly will thwart innovations of new software products, particularly open-source software”, said by a group of Thai Economists. However, Dr. Hirapruk who is the Director of Software Park Thailand, on the other hand,  provides his support on allowing the computer programs to be patentable: “Thailand had to provide a patent-right protection for computer software to ensure foreign high-tech investors that software producers' creativity would be secured from violations in Thailand”. As a result, Mr. Sribhibhadh, president of the Association of Thai Software Industry, emphasized that there will need to be a clear overview of the impact on the local industry if Thailand really had to fully implement the patent right protections.

Petty patents
A petty patent (known as a utility model in other countries) can be granted if an invention does not involve an inventive step and but it is capable of industrial application. Unlike an invention patent, a petty patent has exclusivity term of 10 years with the initial patent validation of 6 years and two possible extensions of two years each.

A petty patent is suitable for new invention which would qualify for an invention patent except that it has no strong, technical innovative step. To be more specific, petty patents have been widely used among Thai companies, especially for manufacturing companies and inventors of less complicated inventions. This is because the petty patent has relatively simple requirements, allowing the patentee to build up a large patent portfolio.

Design patents
A design patent is granted based on ornamental aspects or aesthetics of an article including features pertaining to the shape, configuration or pattern. For example, it may be granted for new qualifying three-dimensional designs or two-dimensional designs. According to the Department of Intellectual Property in Thailand, this patent is granted for 10 years of protection of the registered date. Unlike an invention patent, the main benefit of a design patent is the less requirement of the patent application as it involves only two requirements: novelty and capability of industrial application.

In Thailand, design patents are popular among many types of companies, both Thai and foreign, especially in design-heavy industries. This includes car manufacturer, beverage companies, and furniture designers, etc.