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Here is a draft of a plan we can present John Toole tomorrow for
completing work on acquiring Augment IP. Sorry this is late.
Your feedback is appreciated. OVERVIEW We would like to make Augment available for anyone in the community to study and use. Our goal is to put the Augment IP in the public domain. There are potentially four kinds of IP: o Patent o Trademark o Copyright o Trade secret [Patent] It is unlikely there are any patents related to the Augment software system itself, since a work on Augment stopped around 1986 while owned by McDonnell Douglas, and software patents were not generally granted before that time. The US Patent and Trademark Office (USPTO) did not grant patents prior to 1981 if the invention utilized a calculation made by a computer. In 1981 US Supreme Court order the USPTO to grant a patent an invention that utilized a computer program to monitor heating times in a rubber making process. Throughout the 1980's and 1990s, courts applied rules that held a mere algorithm was not patentable, although inventions that used a computer to govern a physical process were. It was not until a 1998 Federal Circuit ruling that pure software inventions that embodied business or technical processes were patentable. *Actions: Kathe Gust will run some preliminary patent searches in attempt to locate patents related to Augment filed by members of the NLS/Augment team.. However, negative results do not constitute proof that no patents on the Augment software system itself exist. We will also verify with Doug Englebart that to the best of his knowledge that no patents were ever filed on the Augment software system. [Trademark] The "Augment" US Trademark, serial number 73256814 is currently listed by the USPTO as "Dead". It was a service mark that was first filed by Tymeshare Inc. in 1980 and registered on September 28, 1982. First use and first use in commerce was listed as June 22, 1978. Its last listed assignee was MCI Communications corporation.. The service mark was cancelled on July 5, 2003. I have attached both the USPTO listing and the assign status pages for "Augment" for the record. The "Augment" service mark was filed for "Educational Services-Namely, Classes and Training in Office Automation". It appears from this that "Augment" was never applied as a trademark for the software system itself. *Actions: None necessary, since the service mark registration has been cancelled, and Augment appears never to have been applied to the software system itself. [Copyright] The copyright status of Doug Englebart's Augment system is unclear. This version of the system was originally created at SRI and principal work was done there in the 1970s. Augment was sold to TymeShare and was marketed commercially by them. It was transferred to McDonnell Douglas around 1985, and the last known work on the commercial system was done around 1986. It is very unlikely either Boeing or British Telecom had access to the code or did any enhancements to Augment. Doug Englebart has retained a full Augment system including all source and documentation, and his Boostrap Consortium has made additional enhancements to portions of Augment. For the part of Augment created and published or registered in unpublished form before 1978, 17 USC 304 provides that copyright extends for 28 years, with a single renewal term of 67 years. Works created on or after 1978, or created prior to 1978 but never registered or published, have a lifetime of 95 years from publication or 120 years from creation, whichever is shorter. Consequently, we will need to seek transfer of ownership from any entity that created parts of the system on or after 1978. Using the trademark records as a guide, this includes Boeing as the successor to Tymeshare and McDonnell Douglas, and British Telecom, who may have acquired the rights to Augment through the sale of a division to it by Boeing around 1995. CHM has had numerous discussions with Boeing, and had a nearly complete transfer of ownership agreement earlier in 2005.. When Boeing discovered that it may have sold the rights to British Telecom, the decided they could not complete the agreement. Sally Abel, an IP attorney at Fenwick & West, who acted for CMH in discussions with Boeing, has suggested approaching Boeing again and asking for a quitclaim to the copyrights in favor of CHM. The advantage of a quitclaim is that it does not require the assignor to warrant having any particular right to the trademarks being assigned. Consequently, Boeing could execute a quitclaim even though it may have sold the rights to Augment to British Telecom. We could use this same form of agreement for British Telecom and the Bootstrap Institute as well. The Augment committee understands that if it acquires rights to Augment through such quitclaims, that it will promptly release all material to the public domain, per the wishes of Doug Englebart and members of the committee. *Actions: 1) Phil Gust will ask Sally Abel to reestablish contact with Boeing and ask them to execute a quitclaim agreement for any copyrights to the Augment system and documentation. 2) Phil Gust will ask Scott Griffin, Boeing's CIO to help us make contact with the right people at British Telecom. Scott strongly supports this project, and offered to do this for us. 3) Phil Gust will contact Mike Cochran of Cyber1 to learn about their interactions with British Telcom with regard to PLATO, and see if they would be willing make an introduction to their contacts. [Trade Secret] It is unclear whether any of the parties holds the source code or documentation to Augment as a trade secret. To the extent that no patents were issued and no copyrights were registered, there is a chance that Augment is being held as a trade secret. A trade secret is any information that derives independent economic value from not being generally known, or readily ascertainable. Trade secret protection is at the state level, and stems from common law. Most state trade secret laws use the Uniform Trade Secrets Act for uniformity from state to state. The Federal government does not create civil remedies for protecting trade secrets or recovering damages, but it has laws (18 USC 1905) that make it a Federal crime to disclose trade secrets Copyright law allows portions of material that are held as a trade secret to be redacted from material submitted for copyright registration. Trade secret rights are transferrable. Actions: Phil will ask Sally Abel to give us an opinion on whether we need to worry about trade secrets once we have quitclaims from Boeing, British Telcom and the Boostrap Foundation. If so, Phil will ask Sally to take this into account in our dealings with Boeing, British Telecom and the Bootstrap Foundation. REPORTING AND APPROVAL The committee recognizes that where legal issues are at stake, it is best to review all actions taken under the auspices of CHM in advance, and keep everyone involved in this effort informed of progress and actions taken. With that in mind, the following ground rules will be observed. 1. Communications about legal issues should be done through the nls-legal@chm.cim3 mailing list. Membership to this list is restricted, and members should treat information posted to this list as confidential. 2. Use of CHM legal resources will be by prior approval of John Toole or a designated representative. John Toole will review and have final approval of any legal legal agreements entered into on behalf of CHM. 3. Members who make new contacts during this effort should post their intention and briefly describe the purpose to the list in advance. If no objection is raised within a reasonably short period, the member may proceed with the contact. 4. A summary of significant discussions with outside parties as well as progress toward specific tasks should be posted to the list. 5. Progress reports posted to wider distributions should be posted to the list first for review. If no objection is raised with a reasonably short period, the progress report can be posted to the wider distribution. TIME FRAME Time is essential since accomplishing certain goals for the current phase and our ability to move to the next phase of the project depends on having Augment be available to a wider audience. The following indicates the time frames we would like to see for accomplishing certain tasks: Nov 11: Complete preliminary Augment patent searches Nov 11: Contact Scott Griffin at Boeing to ask for his help contacting BT Nov 11: Contact Mike Cochran of Cyber1 to discuss their contacts at BT Nov 15: Restart discussions with Boeing with regard to quitclaim Nov 30: Make contact with parties at BT to discuss Augment ownership and quitclaim agreement Dec 16: Complete quitclaim agreement with Boeing Jan 20: Agreement in principal from BT for quitclaim Feb 10: Complete quitclaim agreement with BT While we cannot control how quickly Boeing and BT will act, we would like to move forward as quickly as possible, and do everything possible to keep the process moving on our side. Nouveau Systems, Inc. phone: +1 650 961-7992 fax: +1 520 843-7217 mailto: gust@NouveauSystems.com
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