introduction to ip rights
TRANSCRIPT
INTELLECTUAL PROPERTY FOR
START-UPS
Dr. D.M. Karunaratna
Intellectual Property
Intellectual Property (IP) is a set of legally
enforceable rights resulting from intellectual
activity in the industrial, scientific, literary or
artistic fields.
International Arena
World Intellectual Property Organization (WIPO) is a special agency under the United Nations with the mandate of promoting IP in the member states. Administering 24 Int. Instruments on IP
WTO is important as it administers the most
comprehensive single convention on IP – the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement).
Your rights can be protected in the member states whereas the nationals of the member states can protect their IP right in Sri Lanka– under the respective national laws
IP Rights - The Intellectual Property Act No; 36 of 2003
Copyright
Patents
Industrial Designs
Undisclosed Information
Layout Designs of
IC’s
Trade Names
Unfair Competition
Marks
Start -UP
Copyright Copyright covers the rights of the authors literary,
artistic and scientific creations, commonly known as ‘works’. It mainly encompasses protected works, protected rights and management and enforcement of protected rights.
Copyright
Protected Works Protected Rights
Moral Rights Economic Rights
Computer programs are protected as a literary or artistic work.
Copyright - Protected Works
• The works are protected by the sole fact of their creation and irrespective of their mode or form of expression, as well as of their content, quality and purpose.
• The law protects only the expressions of ideas and not the ideas.
Copyrights - Works Not Protected
• Any idea, procedure, system, method of operation, concept, principle, discovery or mere data, even if expressed , described, explained, illustrated or embodied in a work
• Any official text of a legislative, administrative or legal nature, as well as any official translation thereof
• News of the day published, broadcast or publicly communicated by any other means.
Copyrights - Protected Rights
• enable the owner of the rights to derive financial benefits from the work
Economic Rights
• safeguard the honour and reputation of the author
Moral
Rights
Copyrights
• Duration – life time + seventy years after his death
• Ownership – economic rights of a work created by an employee
during the course of employment belong to the employer unless otherwise agreed
– economic rights of a work created on commission belong to the person who commissioned the work unless otherwise agreed.
– economic rights of a work created on commission belong to the person who commissioned the work unless otherwise agreed
Copyrights - Limitations
• Lapse of the protected period of time
• Fair use
Purpose of Copyright
• To ensure the economic and moral rights of the authors/owners of rights and to make sure that society will benefit from the acts of original authorship
Patents
A license granted by the State to the owner of an
invention giving the owner the exclusive rights to
use the invented technology for commercial
purposes for a limited period of time.
It ensures the rights of the inventors of new
technologies thereby encouraging them to further
their inventive activities enhancing technological
advancements and overall economic growth
Patentable Inventions
• An invention is considered new if it is not anticipated by prior art by the date of application or of the convention priority
• An invention involves an inventive step if, having regard to the prior art relevant to the patent application claiming the invention, such inventive step would not have been obvious to a person having ordinary skill in the art
• An invention is industrially applicable if it can be made or used in any kind of industry
Right to a Patent
• Belongs to the inventors
• Any invention during employment is owned by the
employer unless agreed upon
• work created on commission belong to the person who
commissioned the work unless otherwise agreed
Patent…
• Grant of patent
– Intellectual Property Office of Sri Lanka
• Duration of a patent
– 20 years from the date of application for grant
• Rights of the patentee
– exploit the patented invention
– assign or transmit the patent
– conclude license contracts involving the patented invention
Marks
Marks
a tool to reach the consumer, to identify the source of the product or service, to indicate the quality of the
product or service and to commercialize the product or service
Trademarks and
Service marks
Certification marks
Collective marks
Meaning of a Mark
• Trademark - a visible sign serving to distinguish the goods of one enterprise from another
• Service mark - a visible sign serving to distinguish the services of one enterprise
• Collective mark - serves to distinguish the origin or any other common characteristics of goods or services of different enterprises which use the mark under the control of the registered owner.
• Certification mark - indicates that the goods or services in connection with which it is used are certified by the proprietor
Meaning of a Mark
• Constitution - names, slogans, letters, numbers, labels, emblems, prints, combinations or arrangements of colours
• Duration - ten years from the date of application
Unfair Competition
• Any act or practice carried out or engaged in, that is contrary to honest practices, constitutes an act of unfair competition which is unlawful.
Undisclosed Information
• The meaning of undisclosed information
• Examples
Layout Designs of Integrated Circuits
Any composition of lines or colours or any three dimensional form that gives a special appearance to a product. An industrial design attracts the consumers to the product that incorporate the design thereby helping commercialization of the product.
Industrial Designs
A layout design is the three dimensional nature of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit
IP Asset management
IP is your asset-exclusive & tradable in market. You must duly manage your IP.
• Creation
• Acquisition
• Use
• Licensing/alienating
• Monitoring
• Enforcement
IP Auditing
• Auditing involves identifying, monitoring and valuing your IP assets, thereby making sure that you use them best.
• It assesses the existing IP & human capital
• For example: simple – no: of marks etc., or sophisticated – how IP has & can contributed to corporate objectives & values & how it happens, etc.,
IP Valuation
• To determine the financial value of IP asset or portfolio of assets
• Important for: licensing, selling, acquiring, investment, etc.,
• Accounting & balance sheet.
• Valuation methodology- market, cost, income
Role of IP
• Promotion of creativity • Technological Information • Transfer of Technology • R & D • Investment • Catalyst of new technology & business • Business &Industrial strategies • Commercialization • Teaching & education • Consumer protection • State revenue • Contribution to the economic growth
Enforcement
IP Rights can be protected through the judicial intervention
• Civil remadies – injunctions and compensation
etc. (Commercial High Court) • Criminal sanctions –punishment-
Fine/imprisonment (Magistrate’s Court) • Customs Control
Jayantha Fernando Attorney - at – Law
LLM ( IT & Telecom Law) - Lond
Director / Legal Advisor, ICTA
Copyrights for Software & Licensing Methods
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SCOPE OF IP PROTECTION FOR SOFTWARE
HOW IS SOFTWARE PROTECTED ?
PATENT
Vs
Copyright
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Patenting Software – is it possible?
Debate in several countries – Patent and copyright sit side by side in some countries
Patent – If Software is part of a innovative process & if its having technical effect
Patent for software having “useful function” -Business method patent – software as a “method of doing business”
State Street Bank vs Signature Financial Services -149 F.3d 1368 (Fed. Cir. 1998)
European Parliament REJECTED patent regime – (6th July 2005)
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Patenting Software – Sri Lanka
No Specific Exclusion. But also not included.
‘Visualization Shopping Portal’ Patent for a business Method granted in Sri Lanka in the year 2010 under the Patent No.15822.
http://www.vizu.lk/vizu.html
Details of the patent shows that the patent application is very descriptive with explanatory diagrams wherever possible – May be considered a ‘Business Method Patent’ granted in Sri Lanka.
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UNIVERSAL Norm for the Protection of Software
Software – as a literary or scientific work ? written in a programming language
Copyright became the norm- Software is an expression of an Idea (1985 joint WG between WIPO and UNESCO)
WTO/ Trips Agreement (1994) requires countries to provide adequate protection under Copyright– Art. 10 “Computer Programs, whether in Source or
object code, shall be protected as literary works under the Berne Convention (1971)”
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IP Act No. 36 of 2003 – Section 5 Software (definition)
“Computer Program” means a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a medium that a computer can read, of causing the computer to perform or achieve a particular task or result.
Definition wide enough to cover Software either in source or object code format
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Software Copyright Protection in Sri Lanka I P Act No. 36 of 2003
Copyright Protection for Software Sec 6(1)
Series of Economic Rights for Owner – Sec 9 (Right to copy, reproduce, adapt, create derivatives, sell & assign etc)
Contractual methods for Distribution - Licensing Under Sec 16(1)
Licensing Scope favourable for license enforcement
Fair Use parameters for Software clearly provided for in Section 11 and 12
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Scope of “fair-use” - Software
Section 11 – making multiple copies of protected works for purposes such as criticism, comment, news, reporting, research and teaching (including multiple copies for classroom use) shall NOT be an infringement of copyright
Factors to be considered – whether purpose is commercial or not, effect on value etc..
Parameters prescribed in Section 12 (1)
Private reproduction in a single copy permitted
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Is copying of Software allowed ? Scope - Section 12 (7) of IP Act
The usual permissions under “fair-use” not applicable to software, except as provided in Section 12(7) – vide Sec 12(2)
Reproduction in a Single Copy or adaptation by the lawful owner of a copy of software is permitted only if such copy is required :-
For use of Software with the Computer for the purpose and extent for which the software was obtained (clarified by license agreement)
For Archival purposes and for replacement of lawfully owned copy (if it is destroyed or rendered unusable)
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ANY ACTIVITY OUTSIDE THOSE PRESCRIBED
ABOVE COULD AMOUNT TO PIRACY
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Enforcement – Options
Criminal and Civil liability
Action before Commercial High Court to recover damages – multiple cases since 2000 – Softsystems Ltd vs Visual Tech
Section 22 - Infringing party may be prohibited by way of an injunction
Criminal prosecution before Magistrates Court – SUMMARY TRIAL - “Any person wilfully infringes any of the copyrights under the Act would be guilty of an Offence”
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Enforcement Contd
Court given Powers to order impounding of copies and appliances used for making copies.
Power of the Magistrate to destroy (or deliver to the owner) all copies of the Copyrighted work and all implements used for infringement.
Search and seizure orders
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Implications from Computer Crimes Act
Penalties under the Computer Crimes Act No. 24 of 2007
Section 4 – Any person who does any act to in order to secure for himself or any other person, access to (a) any Computer; or (b) any information held in any Computer,
Knowing or having reason to believe that he has no lawful authority to secure such access and with the intention of committing an offence under this Act or any other law.....
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Implications from Computer Crimes Act
Section 9 – Any person without lawful authority produces, sells, procures for use, imports, exports, distributes or otherwise makes available Any device... Including computer program
A computer password, access code or similar information by which the whole or any part of a computer could be accessed
With the intent that it be used by any person for the purpose of committing an offence ....
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Government Policy ICT Usage in Govt – eGovernment Policy
Formulated by ICTA
Stake-holder Dialog / consultations – Finalised 15th October 2008
Soon to be endorsed by the Cabinet of Ministers
Conformity Requirements
Section 020402
Licensing: Government organizations should
use only licensed software... Use of
Software without a valid license would be
contrary to the I P Act No. 36 of 2003
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Software Copyright Protection “idea-expression dichotomy”
• Copyright does NOT give monopoly in ideas.
• Safeguards “expression of ideas” and prevents copying or using the expression of ideas – Prevents literal copying
• Software Copyright protection challenged in series of cases in US
• Ideas and interface components copied to produce competing Software (eg: Computer Associates vs Altai – (1992) 20 USPQ 2d 1641
• Lotus Development Corp vs Borland (Menu command hierarchy in Lotus 123 is an idea)
• Copyright does not protect non-literal copying
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Regime for protection of Information under IP Act of 2003
• Law of Confidentiality • disclosure and acquisition of undisclosed
information without the consent of “rightful holder” would constitute an act of “unfair competition”
• Section 160(6)(b) Disclosure and acquisition may result from Breach of contract, industrial espionage etc
• Statutory protection for NDAs under the IP Act • Introduces English Common law principles
relating to Law of Confidence • Sevenseas Computer (Lanka) Ltd vs Qsoft Ltd
– Enjoining order Software details as Trade Secret
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Role of Software in the Digital Economy & Licensing
Intellectual & Economic Value (nearly USD 450 Million in Sri Lanka – 5th largest exporter) – Total turnover estimated at 60 Billion (ICT Industry Survey - 2010)
Software – An essential tool for use of ICTs, use of Internet and even to create Content
Software generally not sold but mostly licensed (ownership retained by creator or owner)
LICENSE is a contractual method which regulates the terms and conditions of use
Method of Licensing exclusive and non-exclusive
Types of Licenses- End-user, Shrink-wrap, Source Code License (Often downloadable)
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Licensing Methods
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Bespoke Application Software
• Software developed to meet the requirements of a Customer
• Transfer of ownership depends on the business arrangement between the Customer and the Developer
• Could be licensed (exclusive of non-exclusive) or ownership transferred
• Source Code ESCROW • See e-Gov Policy – Section 0205
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Retail Software
• Software purchased from store. Copyright owner is the publisher
• Usually Accompanied by a “Shrink Wrap” License.
• Purchase required before use and if the seal is broken cannot return
• The moment seal is broken, purchaser is governed by the License Agreement.
• All such License Agreements assume you have read the license and by opening the sealed envelope, you agree to the terms & conditions
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Shareware Software
• Can try out the Software before outright purchase or license
• Author will allow reasonable period of use, after which the right to use and duration will depend on the amount paid.
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Open Source Software
• Author has NOT abandoned IP right but waived some of his exclusive rights
• Can modify, distribute and make any number of copies (license condition)
• Conditions of use imposed by License – Eg General Public License
• Release of the Object code as well the Source Code for free use.
• Can re-distribute subject to the same conditions in GPL
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Open Source Issues
• Open Source refers to “Software program made available in Source Code form for Use, Modification and re-distribution under license with few conditions”
• Common belief that Open Source Software is NOT subject to copyright is not correct
• Prevents Open Source becoming proprietary
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Open Source Issues
• “Copyleft uses copyright Law, but flips it over to serve the opposite of its usual purpose; preventing Open Source Software being turned into proprietary software”
– Richard Stallman
• This is ensure by conditions imposed under GPL or other OSI licenses
Thank You
Questions & Clarifications
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