Intellectual Technology: How Smart Companies Protect What They Build

A software or algorithm invention must satisfy the patentable subject matter requirements of Section 101 as interpreted by the Alice and Mayo decisions, which require that the claimed invention do more than simply apply an abstract idea on a general-purpose computer, and software patent law counsel advising on patent prosecution must evaluate whether the claimed invention can be characterized as improving the functioning of a computer or network system and whether the specification includes sufficient technical detail to support claims that emphasize the concrete technical improvement.

A company that incorporates open source software into its commercial products must comply with the license terms applicable to each open source component, which may include the obligation to publish the company's own source code if the product is distributed under a copyleft license, and open source software counsel conducting a compliance audit must evaluate whether the company's software bill of materials accurately identifies all open source components and whether the applicable license terms are compatible with each other and with the company's distribution model.

A technology transfer agreement between a university and a commercial licensee, or between two companies collaborating on a joint development project, must clearly define which party owns improvements and derivative works created during the collaboration, and technology transfer counsel must evaluate whether the agreement's IP ownership provisions correctly allocate ownership of each category of intellectual property created during the project.

A software-as-a-service agreement must allocate the risk of service outages, security incidents, and data breaches between the vendor and customer, and technology licensing and IP transactions counsel advising on a SaaS agreement must evaluate whether the service level commitments and associated remedies are commercially realistic and whether the data security obligations imposed on the vendor satisfy the customer's regulatory requirements.

An AI governance program must address the legal risks associated with training data collection, potential biases in the model's outputs, and the allocation of liability when AI-generated decisions cause harm, and artificial intelligence counsel advising on AI governance must evaluate whether the training data was collected with adequate consent and in compliance with applicable data protection laws.

A smart contract that automatically executes when specified conditions are met may or may not satisfy the offer, acceptance, and consideration requirements for a legally enforceable contract under applicable state law, and blockchain counsel advising on a smart contract deployment must evaluate whether the smart contract code accurately implements the business terms the parties intend.

A technology company that receives a patent infringement complaint must quickly evaluate whether the asserted patent is valid and whether its products actually infringe any valid claim, and technology patent law counsel managing a patent infringement defense must evaluate whether an inter partes review petition challenging the patent's validity at the Patent Trial and Appeal Board offers a more efficient invalidity defense than litigating in district court.

A company that discovers that a former employee or competitor has misappropriated its trade secrets must act immediately to preserve evidence and seek preliminary injunctive relief before the misappropriated information is disclosed to third parties or incorporated into a competing product, and trade secrets litigation counsel must evaluate whether the company can demonstrate a reasonable likelihood of success on its trade secret claim.