ABSTRACT

Intellectual Property (IP) rights exist in various forms in the field of geosciences. Intellectual property, which consists of patents, trademarks copyrights and trade secrets, exists for a variety of new materials, new methods and new software usable in this industry.

Building an IP portfolio is simpler in 2003 and far less expensive than in years past due in part to decisions from the US Supreme Court, such as the Festo case, and in part to legislative decisions that provide for inexpensive "provisional patent applications," which can be utilized to protect ideas, methods, compositions, software, processes, and apparatus that are not yet completely tested.

Intellectual property in 2003 is economically important for the geosciences industry as (1) an asset, (2) a marketing tool, and (3) as a tool to protect market share. Intellectual property can be traded, licensed, and assigned like real property to create income from "outside" traditional thinking. Numerous patents which mention "geoscience" in the text were issued by the United States Patent and Trademark Office in just the past five (5) years.

The following paper will discuss how to identify what is protectable in the geosciences and how to build a cost effective IP portfolio for geoscience technologies.

INTELLECTUAL PROPERTY AND THE GEOSCIENCES--WHAT CAN BE PATENTED?

Patents allow the owner to have a "monopoly" on an idea, an apparatus, method for doing something or a business method. Patents can cover chemical compositions, software programs and many other technologies relevant to the geosciences. Many geologists do not believe their work is patentable. However their work need only be (a) new, (b) useful, and (c) unobvious to one skilled in the art, to be patentable.

Many engineers in the geosciences do not think the software they create for modeling seismic data or other geologic phenomenon is patentable or otherwise protectable. However, combinations of old elements, or modules of old programs, when assembled in a new way with a new result, can lead to a patent on a combination of old known programs. It may be hard to believe, but it is true.

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Hopefully, this paper will encourage scientists to look at their work more closely. They may be inadvertently letting go a valuable asset they would otherwise be entitled to make, use, sell or exploit if it were patented.

Some recent patents issued by the United States Patent and Trademark Office (USPTO) in the geoscience area have been included in the list below. This provides an idea about what is patentable in the geosciences field:

In looking at this list, the question "What do these patents actually cover?" may arise.

It is not always possible to understand the actual scope of a geoscience patent from the title. Instead, the reader must examine the "claims" section of the US patent for the answer. Note U.S. patent 6,490,526, Method for characterization of multi-scale geometric attributes. This patent is an example of a methods patent for a technology relevant to the geoscience industry. Please see Appen

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dix A for a copy of the claims section of this methods-type patent.

Some of the cases on the list relate to apparatuses usable for surveys or testing in the geosciences. See Appendix B for an example of an apparatus patent claims section of an apparatus called Microaltimeter used in the field of geosciences, noted as U.S. Patent 6,343,245.

Methods and apparatus patents are issued in geosciences, as noted in the examples above. System cases also exist which are assemblages of known apparatus forming a system that has a (a) new, (b) useful, and (c) unobvious feature. Still, other patents have been issued in this field for a business method usable in the geosciences. A method case of particular note is that for interactively constructing, editing, rendering and manipulating geoscience models, having U.S. patent number 6,191,787.

In short, patents can be issued for:

1. Methods for doing something, such as interpreting a model;
2. Software programs, such as for modeling seismic data;
3. Methods of doing business, such as offering a "real time" survey service via the internet;
4. Systems, which are assemblages of old known components (which can be a code or an actual apparatus, such as an assemblage of three remote terminal units with some new software reporting features, or such as an automated image fusion system; and
5. Apparatuses, such as a new type of microaltimeter.

Type of Patent Filings - Utility and Provisional Filings

Several of the cases described above are utility filings based on more limited "provisional"application filings. The scope of patent law in the United States has changed, allowing manufacturers and creators to file less complete patent applications than in the past which are only good for one year. These cases are called "provisional patent applications."

Typically, provisional filings are made when an idea is developed to a level where there is description or drawings, but a prototype or model has not been built or the design is not yet completed.

Facing steep competition, manufacturers are attempting to differentiate their technology in ways that are simply more than "new and improved" without getting into the red with legal fees. Filing a provisional patent application enables a developer to obtain a filing date, effectively preserving the date of the invention, so that further development can occur, but with some protection existing for the basic idea.

By filing for the idea first, many developers find that disputes over ownership of the idea can be avoided.

One example of a company that is now "filing first" and asking questions later is Microsoft. This year alone, Microsoft has 250 times more patents than it owned twelve years ago.1 Not only does the company recognize that ideas are:

1. assets;
2. marketing tools;
3. sources of licensing income; and
4. tools for protecting their market share;

but by patenting their ideas, they reduce disputes concerning who invented what first with other large companies, like IBM and Apple.2

Clearly, any strategy on identifying and protecting patent rights is useful.

But how much does a strategy cost?

As an example for a 12-month defensive position, which enables an owner of Intellectual Property to cross-license its way out of a dispute, four (4) to six (6) provisional patent applications can be purchased for approximately $26,000 USD. Typically a patent dispute costs about $600,000 USD in attorney fees, not including damage claims or the cost of a trial or the cost of witnesses and experts. As an insurance policy in a crowded market, there is value to owning the position.

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Market share for a geoscience system could be protected with a group of patents pending, like a method case, a system case and perhaps an apparatus case, if the module of the system is new, unobvious and useful.

Also, a position of about ten (10) patents pending; even if they are just provisional patents, can serve to deter a competitor from attempting to enter the marketplace for at least one year.

OTHER INTELLECTUAL PROPERTY

Protection for Geoscience Technology

There are four basic types of protection for geoscience technology: patents, copyrights, trade secrets and trademarks.

Patents

Patents offer protection for functional concepts, methods, apparatuses, or processes that are novel, useful and non-obvious. For a tremendous amount of detail on this subject, see the website of the United States Patent and Trademark Office at www.uspto.gov.

Utility patents, design patents and plant patents are the three basic types of patents. Utility patents require a description of the invention. This means the applicant must reveal enough for a user to make and use the invention. In exchange for this description, the United States government rewards the inventor with a "monopoly", similar to ownership, for a period of time. In the case of utility patents, it is 20 years from filing.

The granted monopoly is actually a right to exclude others from making, using, selling or importing into the United States the system, method, or compositions which is "claimed" in the claims section of the issued patent.

During the first 12 months of a pending provisional or utility case, there may be "no-cost" corresponding pending rights in more than 130 foreign countries depending on certain factors about prior disclosure, offers for sale, and testing.

Patents are obtained through a lengthy, multi-year process. In the U.S. however, the "first-toinvent" system applies. All U.S. patent applications must be filed within one year of the first offer for sale, the first commercial use, or demonstration of the product or method. If the application is not filed within that year, the patent filing will be deemed void.

Generally, a 13-step process is involved in obtaining a patent. See Appendix C for a timeline of this process with typical costs for each step. Interviewing a case before the USPTO in Washington, D.C., will shorten the number of steps on the usual 3-4 year time period required to about 2 years.

Copyrights

Copyrights protect the original expression of an idea in a tangible medium. For extensive information see the website for the Library of Congress, Registrar of Copyrights at www.loc.gov.

Drawings, plans and specifications are all potentially copyrightable if the expression of the original, artistic idea is in a tangible medium. CAD drawings of a building and flow diagrams for monitoring software are considered to be in a tangible medium and are subject to copyright protection. Legal protection attaches instantly when the original copyrightable subject matter is fixed into a tangible medium, such as on paper or in a digital storage form.

Beyond the general legal protection that happens once the subject matter is in a tangible medium, one can obtain further rights and remedies by paying $30 USD to the government and filing the requisite paper.

These federally protected rights and statutory protections are reserved by simply registering the subject matter (i.e., writing, drawings, picture plans, and specifications, etc.) with the Library of Congress at www.loc.gov, paying the required fee, and depositing the appropriate specimens.

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The federal protection obtained by filing with the Library of Congress and paying the nominal fee includes the following three remedies:

1. One to five years (1-5) in jail, if an infringer makes more than 10 copies of the protected work in 180 days and the aggregate value exceeds U.S. $2500;
2. A minimum statutory damage of $25,000 USD if an infringer makes copies, even if the copies are distributed free;
3. Repayment of attorney fees incurred by the owner from the infringer.

In the geosciences, copyright protection would be available for software programs, for manuals on modeling, for animations describing a new process, or methods, photos, graphs or similar "expressions."

Trade Secrets

Trade secrets are defined as secrets that give a business a competitive advantage over another business. These can include techniques,formulations,and business methods to obtain new business.

Trade secrets can protect any technical or business information that has potential economic value. Reasonable efforts must be made to keep the information secret, such as through the use of Non-Disclosure Agreements (NDA) or "Secrecy" Agreements.

Secrecy or non-disclosure agreements have three (3) critical elements:

1. a statement about what the agreement is to cover - such as a modeling system;
2. a statement about the term of nondisclosure - 5 years, 10 years, etc.; and
3. a statement about non-use of the disclosure.

If an inventor is receiving information, then the secrecy agreement should have a short term and a narrow scope. If an inventor is giving information to a third party, then the agreement should have a long term and be wide in scope.

There is no formal filing procedure to register trade secrets to obtain protection.

Trademarks

Trademarks for the geoscience industry can be a company name, such as Bullard Geoscience. It can be a symbol, such as a directional drilling arrow that is affiliated with a service like surveying.

A trademark can be a slogan, such as "We know what's beneath your feet."

A trademark can be a color or color combination, such as royal blue for all microaltimeters produced by the client.

Trademarks can be filed for a sound, like the sound of a Harley Davidson motorcycle engine, which is indicative of the origin of the good or service.

Besides being names, slogans, sounds or colors affiliated with a good or service showing origin of the good or service, a trademark must not be descriptive or generic in order to obtain registration on the primary register. However, the Supplemental Register can be used for certain kinds of marks that may appear to be descriptive of their good or service.

Trademarks afford legal protection for the goodwill associated with the use of a recognized name, symbol, slogan, color, or smell.

Trademarks provide exclusive rights within a region or nation. As long as a trademark is used commercially, it can be renewed. In the United States, an applicant can file for a U.S. federal mark, which covers all 50 states and territories or for individual state marks, such as for the great state of Texas. Users, who have a sale in a county for a mark, obtain common law rights for that use, which are not registerable like the state and federal marks.

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BUILDING AN IP STRATEGY

If inventions are not properly protected, the invention can fall into the public domain and may be used by any party without a license or any payment. A sound IP management strategy is to systematically build an IP portfolio, consisting of different IP rights that cover various aspects of a company's technology and commercial interests.

Most companies protect their company name and major products or services with trademarks. Clever companies protect ideas with patents. Low risk companies protect their trade secrets with secrecy agreements with third parties and with secrecy and assignment agreements with their employees.

Software companies and designers of models typically protect those expressions with copyrights after those ideas are first evaluated for qualification for patent protection.

IP rights protect the commercial interest of a company at the various stages of design, manufacturing, product sale and operation. At the design and development stage, patents can be filed and trade secrets can be immediately enforced. The patenting process for novel apparatuses and methods takes about 3 years and requires only $10,000 to $20,000 USD per invention and can save the patent owner thousands of dollars in resolving disputes. Also, intellectual property rights, if registered, can raise the value of a company from 2 to 11%.

PROTECTABLE INTELLECTUAL PROPERTY IN GEOSCIENCE TECHNOLOGY

CONCLUSION

Intellectual property can be used (1) as an asset, (2) as a marketing tool, (3) as a source of licensing income, and (4) as a tool to protect market share. The cost of developing a strategy is minor compared to the cost savings in resolving disputes over ownership and acquiring new market share.

NOTES

1 D. Kline, "Net Patent Fights May Yield Surprises," Upside, January 2000, pp. 175-178

2 http://www.uspto.gov/web/menu/search.html

APPENDIX A

CLAIMS SECTION FOR PATENT 6,490,526

Title: Method for characterization of multi-scale geometric attributes ISSUED: December 3, 2002

This patent claims:

A method for detecting structural and stratigraphic discontinuities in a volume of seismic data samples, comprising the steps of:

1. Selecting a plurality of directions in the volume in a sequential order;
2. defining a series of sequentially less restrictive thresholds; and
3. performing the following steps for each data sample until the sample has a value stored at a corresponding sample location in an output discontinuity volume:
   1. calculating one-dimensional, two-race discontinuity values for the data sample sequentially along the directions and storing in the output discontinuity volume the first of the calculated discontinuity values that satisfies the first threshold; and

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2. repeating the following steps for the data sample until the sample has a value stored at the corresponding sample location in the output discontinuity volume: (i) selecting the next less restrictive threshold in the series of thresholds; and (ii) comparing the discontinuity values calculated along the directions sequentially to the selected threshold and storing in the output discontinuity volume the first of the discontinuity values that satisfies the selected threshold.

APPENDIX B

CLAIMS SECTION FOR PATENT 6,369,755

Title: Integrated SATPS total survey station ISSUED: April 9, 2002

This patent claims:

• Apparatus for improved accuracy in measuring survey parameters, the apparatus comprising: a first station comprising: a first Satellite Positioning System (SATPS) antenna and first SATPS receiver/processor, connected together, for receiving SATPS signals from two or more in-view SATPS satellites, for measuring at least one of a pseudo range value and a carrier phase value of the first station relative to each of the in-view satellites from the SATPS signals received from each selected in-view satellite, and for determining location of the first station from the SATPS signals received; and an electronic distance meter, whose spatial orientation can be varied arbitrarily, connected to the first SATPS receiver/processor, for transmitting electromagnetic waves having at least one selected wavelength and for determining the distance from the first station to a selected object that is spaced apart from the first station by receipt of a return electromagnetic signal from the object, for determining the elevation difference between the first station and the object, and for determining an angular displacement between a line extending between the first station and the object and a selected reference line lying in a plane containing the first station; and
• a second station, spaced apart from the first station and comprising: a second SATPS antenna and second SATPS receiver/processor, connected together, for receiving SATPS signals from the in-view satellites, and for measuring at least one of a pseudo range value and a carrier phase value of the second station relative to each selected satellite; and an electronic distance meter responder with at least one electromagnetic wave retro-reflector that receives an incident electromagnetic wave from the first station and returns a return electromagnetic wave toward the first station in a direction approximately parallel to the direction from which the incident wave was received from the first station; where at least one of the first station and the second station has a vertical axis sensing mechanism for sensing the direction of a substantially locally vertical axis, to assist in determining the elevation difference; where at least one of the first station and the second station has a supplementary communications mechanism for transmitting the at least one pseudorange value or carrier phase value measured at the first station or at the second station, respectively; and
• a third station, acting as a reference measurement unit for the survey, where the third station is provided with at least one of a known pseudorange value and a known carrier phase value of the third station relative to each in-view satellite, the third station comprising: a third SATPS antenna and third SATPS receiver / processor, connected together, for receiving SATPS signals from the in-view SATPS satellites, for measuring at least one of a pseudorange value and a carrier phase value of the third station relative to each in-view satellite, and for computing at least one of (1) a pseudorange difference between the measured pseudorange value and the known pseudorange value for each selected satellite and (2) a carrier phase difference between the measured carrier phase value and the known carrier phase value for each selected satellite; and

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• a third station communications mechanism, connected to the third SATPS receiver/processor, for receiving the at least one of the pseudorange value and the carrier phase value transmitted by the at least one of the first station and the second station, and for Using the received at least one pseudorange value and carrier phase value, together with the at least one pseudorange difference and carrier phase difference for a corresponding selected satellite, to compute at least one of a corrected pseudorange value and a corrected carrier phase value for the at least one of the first station and the second station, wherein said third station and at least one of said first station and said second station have at least two in-view SATPS satellites in common, and said third station determines at least one of a corrected first station location and a corrected second station location, Using said at least one of pseudorange value and carrier phase value received from at least one of said first station and said second station.

This verbose and lengthy claim states it is for a 3 station apparatus. Claims could have been written in the case on the method for using the 3 station apparatus as well.

APPENDIX C

Table. Patent Timeline

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