Intellectual property in software: the good, the bad and the ugly Catarina Maia
INESC TEC
Head of the Technology Licensing Office
SnT – 31/05/2018
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INESC TEC Intellectual Property Rights Copyrights and Open Source Patents Trade secrets Technology and products
INESC TEC Academia Companies
To be an international player in the science and technology arena To be perceived as an important world player, in the domains of Computer Science, Industry and Innovation, Networked Intelligent Systems, and Power and Energy
Economic and social fabric development Contribute to the performance, competitiveness and internationalisation of Portuguese companies and institutions
Bringing academia, companies, public administration and society closer together
Mission
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Vision
Research of excellence International recognition Social relevance
Associates
New model to improve the intervention capacity of the university and the polytechnic
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Partnerships Privileged partners
Special Partnerships
Partnerships with International Universities FCT
Evaluation: Excellent
725 researchers (+350 PhDs) dedicated to R&D and advanced consulting
Hired staff (of which 25 have PhDs) Professors (mean time allocation: 50%)
60 210
Senior Researchers
Researchers
Other Collaborators
270
395
220
Support Services Organisation & Management Business Technical
45 10 20
Postdoctoral researchers Research assistants PhD students
70 180 145
75
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Affiliated Researchers 60
100 105
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External researchers Research trainees Special projects
(mean time allocation: 30%)
Maximising synergies to generate impact
EDP Installation of a smart meter that supports a bidirectional information flow, allowing for an increased efficiency in the operational, technical and commercial management of the electricity distribution network. EXAMPLE OF R&D CONTRACTS
Power and Energy
CLUSTER
Tools for Planning and Operating Grids
Renewable Energy Integration
Smart Grids
Electric Mobility
Forecasting Systems
Power Systems Reliability Evaluation
Computational Intelligent Tools 7
INE
SC
TE
C |
AP
RE
SE
NTA
ÇÃ
O IN
STI
TUC
ION
AL Internal and external
logistics systems for small series, with RFID product identification. Improved operations management.
Business Collaboration Networks
Operations Management and Logistics
Service Design and Engineering
Optimisation and Decision Support Systems
Performance Management
Industrial Robotics
Innovation and Technology
Management
Entrepreneurship
Maximising synergies to generate impact
EXAMPLE OF R&D CONTRACTS
Industry and Innovation
CLUSTER
KYAIA
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Communication Networks
Robotics
Optical Sensors
Real-Time Systems
Medical Applications
Image and Video Technologies
Music Technologies
A. Silva Matos Development of an underwater platform for ocean monitoring and exploration.
Maximising synergies to generate impact
Networked Intelligent Systems
EXAMPLE OF R&D CONTRACTS
CLUSTER
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Computer Graphics & Gamification
Software for Critical Systems
Big Data Processing
IT Security
Porto de Leixões
Maximising synergies to generate impact
Information system to manage port authority processes based on georeferenced information.
Information Management
Mobile and Wearable Computing
Data Mining
Cloud Computing EXAMPLE OF R&D CONTRACTS
Computer Science
CLUSTER
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HASLab High-Assurance Software
LIAAD Artificial Intelligence and Decision Support
CRACS Advanced Computing Systems
CPES Power and Energy Systems
CSIG Information Systems and Computer Graphics
CRAS Robotics and Autonomous Systems
CITE Innovation, Technology and Entrepreneurship
CESE Enterprise Systems Engineering
CEGI Industrial Engineering and Management
CAP Applied Photonics
CTM Telecom. and Multimedia
C-BER Biomedical Engineering
Cluster Power and Energy Coordination
Cluster Networked Intelligent Systems Coordination Cluster Computer Science Coordination
CRIIS Robotics in Industry and Intelligent Systems
Council of R&D Centres Cluster Industry and Innovation Coordination
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R&D Centres organised into Clusters: multidisciplinarity, flexibility, synergies and strategic alignment
Projects build a value chain to turn science into economic value
0% 20% 40% 60% 80% 100%
INESC TEC
Power and Energy
Industry and Innovation
Networked Intelligent Systems
Computer Science
% results
Advanced Training Papers in Scientific Journals Theses
Conference Proceedings Models
Prototypes Demonstrators
Consulting Patents Licensing Spin-offs People
Knowledge Production Applied Research Development Technology Transfer
Integrated value chain
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TRL – Technology readiness levels
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INESC TEC Intellectual Property Rights Copyrights and Open Source Patents Trade secrets Technology and products
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The Good, the Bad, and the Ugly
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Intellectual Property Rights
Source: European IPR Helpdesk
What does IP protection grant?
• The right (but not the obligation)
• To use
• To exploit commercially • To sell • To license
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Different IPRs in a product
Functionality • Patent • Trade secret
Design
Expression • Copyright
Trademark • Differentiation in
the market
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Different IPRs in the same product
PAGERANKTM
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Different IPRs in the same product
PAGERANKTM
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IPRs through time
Patent Copyright Trademark
20 years 70 years Indefinite
No functionality High functionality
Max. validity of IPR
Functionality
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INESC TEC Intellectual Property Rights Copyrights and Open Source Patents Trade secrets Technology and products
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Copyright
“The domain of copyright is the protection of literary and artistic works. These include writings, music, and works of the fine arts, such as paintings and sculptures, and technology-based works such as computer programs“ – WIPO
Protects the creative expression - and not the ideas in it
Registration is not necessary, but possible
- Use
- Distribution
Classical copyright licenses – The Good
• EULA – End User License Agreement • Binary files • Instructions manual • No sublicensing rights • One installation
• Proprietary software licenses • Binary files and/or source code • Code documentation • Code modification/reimplementation may be allowed • With/without sublicensing rights • Control over number of copies and installation
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Free software (open source)
• The freedom to run the program as you wish, for any purpose (freedom 0).
• The freedom to study how the program works, and change it so it does your computing as you wish (freedom 1).
• The freedom to redistribute copies so you can help your neighbor (freedom 2).
• The freedom to distribute copies of your modified versions to others (freedom 3).
Source: https://www.gnu.org/philosophy/free-sw.html
…but rather as in “free bird”.
Not free as in “free beer”…
Copyleft in Software
• Copyright vs Copyleft • Proprietary vs Free • Contain vs Disseminate • Use vs Modify • Control vs Enable
• “Copyleft is a general method for making a program (or other work) free, and requiring all modified and extended versions of the program to be free as well” - https://www.gnu.org/copyleft/copyleft.html
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FOSS licenses – The Good
Source: European IPR Helpdesk
Public domain licenses
• No restrictions
• No attribution needed
• Totally free to do whatever you want
Example: WTFPL
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Academic Licenses
• Very permissive, typically allowing sublicensing under proprietary licenses
• Obligations often aimed at ensuring due attribution of copyright
• These are not Copyleft licenses
Example: MIT, BSD, Apache
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Reciprocal Licenses
• Distribution of the SW requires that it be licensed under the same terms
• Obligations mainly aimed at ensuring that the SW remains free (as a bird)
• These are Copyleft licenses
Example: GNU GPL v2, GNU GPL v3, GNU AGPL
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Contextual Licenses
• Activation of Copyleft clause depends upon the context of use
• Allow keeping the SW free without jeopardizing the confidentiality of the proprietary SW
Example: LGPL v3
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Hybrid Licenses
• Mixes elements of academic and reciprocal licenses
• Allows integration with proprietary software without disclosure but obliges any modifications to be made available as open source
Example: MPL
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Compatibility – the Bad
Source: European IPR Helpdesk
FOSS issues in successful market adoption – the Ugly
• Lack of proper documentation of FOSS included in the code • Provisions regarding the use of FOSS in the contract
• Incompatible licenses
• Static linkage • Code contamination with GPL/LGPL
• Lack of license in GitHub • Full copyright
• Patent provisions in the FOSS license (Apache 2.0, GPL3) • Disclosure can save time
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INESC TEC Intellectual Property Rights Copyrights and Open Source Patents Trade secrets Technology and products
What can be patented? – The Good
• A invention: a new, technical solution to a technical problem • Discoveries
• Disclosure (vs. trade secret)
• Protection up to 20 years
• Geographic right
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What is patentable in software?
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Software patents
Improvements in computer operation
Controlling machines
Interaction with real world Protocols
Data compression
Technical simulations
Patentability criteria – the Bad
• Novelty • Not known to the public at patent application
• Inventive step (non-obviousness) • Should not derive, as a consequence, of the state of the art
• Industrial application (utility) • An invention which can be made/used in some kind of industry
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Common pitfalls – the Ugly
• Premature disclosure
• Unintentional disclosure
• Lack of inventive step
• Open source licenses with anti-patenting clauses
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INESC TEC Intellectual Property Rights Copyrights and Open Source Patents Trade secrets Technology and products
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Trade secrets
• Methods
• Technology
• Algorithms
• Code
• Know-how
• Commercially valuable
• Commercial advantage derives from the secret
• Technical and non-technical measures in place • Different access levels • NDA
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Trade secrets – the Good and the Bad
• No time limit
• No fees
• No geographical restrictions
• Publication is not possible
• Technical measures can be hard to implement
• Non-technical measures can be inefficient
• Expensive to keep
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Secret Patent
Others can build on your
technology
Exclusive right
Appropriation
No advancement of science
The balance between secrets and disclosure – the Ugly
INESC TEC
Intellectual Property Rights
Copyrights and Open Source
Patents
Trade secrets
Technology and products
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What kind of scientist are you?
Stokes (1997) – Pasteur’s Quadrant
People buy products
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The Ugly – how can we reach the market?
When do I have an invention?
Technology
Novelty
Inventive step
"Eureka arkimedi" by Arlindi1999 - Own work. Licensed under CC BY-SA 3.0 via Wikimedia Commons http://commons.wikimedia.org/wiki/File:Eureka_arkimedi.jpg#mediaviewer/File:Eureka_arkimedi.jpg
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The Ugly – how can we reach the market?
When can I publish?
After filing a patent
After validating that your code
- Is protected
- Is not a secret
- Has a proper license in place
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When should I contact the TTO?
Idea
Research Disclosure to the TTO
Lab testing
and validation
Market strategy
Protection strategy Prototype
Marketing Licensing
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The invention disclosure
Patentability analysis
Ownership analysis – coordination with third parties
Conduct initial market assessment
Determines what is the asset we are discussing for valorization
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A few tips…
Premature publication
Unintentional disclosure
IP contamination
FOSS incompatibility
- Patentability
- Incompatibility among licenses
- Incompatibility with the business model
… Patent literature is over 10x larger - conducting patent searches can help you not to reinvent the wheel!
• INESC TEC
• R DR. ROBERTO FRIAS
• 4200-465 PORTO
• PORTUGAL
T +351 222 094 000 F +351 222 094 050 in [email protected] t www. inesctec.p t
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