intellectual property in software: the good, the bad and

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

6

Affiliated Researchers 60

100 105

15

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 fo@inesctec.p t www. inesctec.p t