2. Introduction to Intellectual Property (IP)
WACQT SUMMER SCHOOL
Introduction to Intellectual Property (IP)
Peter Deakin and Victor Westergård August 2019

3. Agenda Utilisation Why does Intellectual Property (IP) matter?
Example of the use of different types of IP to protect a product
Practical considerations
IP in open networks
Support available for WACQT
(Appendix: Types of IP and ownership, Patents / Knowhow, Copyright, Semiconductor topographies)

4. Utilisation is broader than commercialization

5. Chalmers Innovationskontor
What is utilisation?
”What we do to ensure that our knowledge and results impact society and contribute to a sustainable future.”
11/4/2019
Chalmers Innovationskontor

6. Utilisation. Everyone does it
Utilisation? Everyone does it! We do it daily, perhaps without thinking about it

7. PRACTICES RULES & GOVERNANCE LOGICS & BELIEFS 17 SDG
New products in use New services adopted
New efficient processes implemented Changing organizational culture & practices
Methods & Tools
Thriving start-ups
New or updated:
Standards
Laws & regulations
Policies
Change in:
Perceptions
Attitudes
Beliefs
Theories

8. Why does Intellectual Property (IP) matter?

9. Exclusive rights: Creation of an incentive to improve the world
IP Rights are legal rights for ‘creations of the mind’
Grant exclusive control to decide who can e.g. make / sell a protected product / service
Incentive designed to reward creativity / investment in bringing a product / service to the world
Balance between inventor/owner and society – time-limited exclusivity, then all of society can use the creation freely

10. What would happen to the creator’s motivation / incentive in the case that…
A pharma company brings a new cancer drug to market (cost of ~$2.5 Bn and maybe 10 years work)
Clinical trials, manufacture & scale up, marketing & sales, distribution, etc.
But a competitor can launch a generic equivalent for a fraction of the cost?

11. Imperfect system, but it’s the best we’ve got
Criticisms of the patent system, for example, include:
Different laws in different countries / territories
Slowing / blocking innovation
Poor patent quality – ‘granted too easily’
Patent Trolls – parasitic use of patents
Litigation costs – risk to small companies vs. large
Pharma industry – cost to developing countries
Different industries but one system

12. * *manufacturing, technology and business services
Source: Intellectual property rights intensive industries
and economic performance in the European Union,
Industry-Level Analysis Report, October 2016, Second edition

13. Example of the use of different types of IP to protect a product

14. What product is this? US patent filed in 2005
Abstract: Disclosed herein is a multi-functional hand-held device capable of configuring user inputs based on how the device is to be used. Preferably, the multifunctional hand-held device has at most only a few physical buttons, keys, or switches so that its display size can be substantially increased. Claim 2: A hand-held electronic device as recited in claim 1, wherein said hand­held electronic device includes two or more of the following device functionalities: PDA, mobile phone, music player, camera, video player, game player, handtop, Internet terminal, GPS receiver, and remote control.
WO 2006/ A2

15. Apple iPhone
Source:

16. Examples of other types of IP protecting an iPhone?
Trademarks: Apple, iPhone, FaceTime, iTunes, etc. Copyright: Software/Apps, iOS Patents: control circuitry for LEDs, A system and method of locating “friends” devices on a network, methods of data processing, sensor for detecting force of touch on the screen, etc. Semiconductor chip topology: Apple A12 Bionic (Apple-designed system on a chip, includes implementation of 64-Bit ARM architecture)

17. Types of Intellectual property rights (IPR)
Trademarks: protects ”designation of origin” (identity, reputation)
Patents: protect what something is, how it works or what it can be used for (Utility models also exist, sometimes called ’patent light’)
Designs: protects how something looks
Copyright: protects original creative work (software, literature and art)
Integrated Circuit Design: functional layout (topography) of an IC
Know-how: may be confidential information as Trade secret
Database rights: protect collections of data

18. Practical considerations (for academic researchers)

19. Practical considerations I: Creatorship / ownership
General rule: a creator is someone who has made a creative, intellectual contribution to the IP (as defined by the relevant law)
Consider: important experiments showing a method works vs. creating the method itself
General rule: ownership follows creatorship, unless a contract / other law changes this
Consider: employee of a Swedish company
Consider: software created by an academic researcher in a collaboration with industry where a contract says the company owns the ‘arising IP’
Tip: Always check the contract!

20. Practical considerations II: Teacher´s exemption (Professor’s privilege)
Found in two EU countries: Sweden + Italy
Exemption-like status also exists (Germany, Poland, Oxbridge…)
Ownership of Intellectual Property created during course of employment lies with employer in many countries
Often governed by employment agreement
Swedish law contains two ’exemptions’ for teachers (Interpreted to include researchers)
Rights to employee inventions: Lag (1949:345) om rätten till arbetstagares uppfinningar
Copyright to literary and artistic works, customary exemption: Lag (1960:729) om upphovsrätt till litterära och konstnärliga verk
Tip: Often changed by contract in collaborative projects with industry – always check the contracts!

21. Practical considerations III: Publication and IP
IP is created all the time in research! Have you ever: thought: ‘that’s interesting…’, ‘that’s unexpected..’? written some software? designed something to be produced in a semiconductor? IP isn’t always needed: other forms of utilization There can be a tension between publication and capturing IP A patent application needs to be filed before publication! Tip: There may be (contractual) obligations to collaboration partners – always check the contract!

22. Tip: If in doubt contact your local Innovation Office

23. Open networks – or ‘open’ networks

24. Open invention network - Linux
Code contributed freely to the networks – can be used / modified by the network members BUT Applications / uses of the code are patent protected. Members agree to freely licence their patents to each other AND not to sue anyone CREATES a network that is both OPEN and CONTROLLED

25. Support for WACQT researchers

26. The Innovation Office offers free support…
Identification of assets
Collaboration with external partners
Funding for verification
– at an early stage
Advice on patenting & licensing
Help with applying for research funding
Impact communication
Utilisation strategies
Personal development
… suited to your needs and situation

27. Thanks for listening! Peter Deakin deakin@chalmers.se
(Also available at MC2 coffee every month)
Victor Westergård

28. Appendix

29. Types and ownership of Intellectual Property

30. Types of Intellectual property rights (IPR)
Trademarks: protects ”designation of origin” (identity, reputation)
Patents: protect what something is, how it works or what it can be used for (Utility models also exist, sometimes called ’patent light’)
Designs: protects how something looks
Copyright: protects expressions of ideas
Integrated Circuit Design: functional layout (topography) of an IC
Know-how: may be confidential information as Trade secret
Database rights: protect collections of data

31. IPR protection periods
IC Design 10 years
Patent 20 years
Trademark renewed every 10 years, forever..
Copyright 70 years after death of author
Design 5 x 5 years

32. Ownership of Intellectual Property
Main rule: inventor/creator etc. owns
Exceptions:
The employer
Work for hire
The ownership right may be assigned, as a whole or in part

33. Teacher´s exemption (Professor’s privilege)
Found in two EU countries: Sweden + Italy
Exemption-like status also exists (Germany, Poland, Oxbridge…)
Ownership of Intellectual Property created during course of employment lies with employer in many countries, not in Sweden
Often changed by employment agreement
Swedish law contains two ’exemptions’ for teachers
Interpreted to include researchers too
Rights to employee inventions: Lag (1949:345) om rätten till arbetstagares uppfinningar
Copyright to literary and artistic works, customary exemption: Lag (1960:729) om upphovsrätt till litterära och konstnärliga verk
Often changed by contract in collaborative projects with industry

34. Patents

35. Invention: More likely to be developed + basis for new inventions
Owner:
20 year
monopoly
Society:
Invention
published
Invention: More likely to be developed + basis for new inventions
What is a patent?
Blunt economic instrument
designed to incentivise innovation
11/4/2019
Chalmers Innovationskontor

36. What is a patent? 20 years of exclusive right to prevent others from:
Making
Using
Selling
Importing
an invention disclosed in a granted patent,
in/to the country where the patent was granted (patent rights are national)
Enforceable in a court of law (Expensive to litigate…)

37. Patentability criteria
Novelty – file before publication!
Inventive step – surprising!
Industrial applicability
“Technical solution to a problem”

38. Examples of what can be patented within the electronics area
Material per se
(composition of matter)
e.g. precursor material
New use of material
e.g. new (composition of)
semiconductor material
Process of producing
a material / device
New combination of known
materials (e.g. new device)
Sources US

39. Chalmers Innovationskontor
Patent vs. Trade secret
Example of a trade secret protecting a product since 1891:
Ingredients: Carbonated Water, Sugar, Colour (Caramel E150d), Phosphoric Acid, Natural Flavourings Including Caffeine
vs. 20 years negative right
with recipe disclosed
Utility of trade secrets in
a world of open science?
Chalmers Innovationskontor

40. Patent on ”computer/software implemented inventions”
EU/EPO Computer implemented invention (…that can be patented):
For a patent to be granted for a computer-implemented invention, a technical problem has to be solved in a novel and non-obvious manner.
Software + interaction between hardware and industrial machine or process = TECHNICAL EFFECT

41. Software

42. ”Software” Copyright - Ownership and commercial use
Copyright is a legal right that arises automatically and grants the creator of an original work  exclusive rights for its use and distribution.
Formalities?
No… but registration and © are useful
Copyright law: ownership- right to control use of software
Person creating (copyright in software belongs to researcher unless sponsorship states otherwise)
Employer under employment contract (though teacher’s exemption applies)
Commissioned work – transfer of ownership should be outlined in the agreement
The author / creator always has a moral right to be identified as such
Software copyright can be infringed:
Through literal copying: copy paste
Through non-literal copying: same structures and the same steps, in the same order, to solve the same issue

43. Other means of protecting your ”software”
More specific
More conceptual
PROTECTION
FUNCTIONAL
SYSTEMATIC
SYMBOLIC
OPERATIONAL
DATA
VALUE TO PROTECT
Invention, implementation of an idea
Design / Structure
Works of authorship Source and Binary code
Object Code
Organisation or section of data
MEANS OF PROTECTION
Patents
Trade Secrets
Copyright
Copyright, Licence
Database rights
RESTRICTS
Use, Manufacture, Commercialise, Importing, …
Disclosure
Copying Distributing Modifying
Decompiling, commercialisa-tion, copying, etc.
Access,
extraction,
reuse

44. How to protect data
You (usually) cannot protect raw data (except by trade secrets) nor can you “license” data.
A database is protected by copyright if the selection or arrangement of its content is original (EU Directive 96/9/EC). While the database as a whole can be protected by database rights. SO
You can legally protect and license the protected contents (Content license)
You can protect and license the access to the data/database (Access license) 
You can legally protect and license the extraction and use of the organised data (Database license)

45. Licencing models Proprietary (closed) software Open source software
source = software in source code form
open = freedom to:
view the source code
to run the program for any purpose,
to study and modify the program, and
to freely redistribute copies of either the original or modified program (without royalties, etc.)

46. Software licencing

47. Integrated Circuit Designs

48. What is an IC Design? – An EU perspective
European Council Directive 87/54/EEC is the relevant EU framework: transposed into national law
Implementation varies across EU, some have registration schemes some treat as unregistered design rights
~10 years of exclusive right to prevent others from:
Reproducing a topography
Commercially exploiting a topography
Importing a topography or semiconductor product for commercial exploitation
Research and teaching exemption provided for
If not exploited commercially or registered within 15 years, rights expire.

49. Criteria Creator’s own intellectual effort
Not commonplace in the semiconductor industry
Combinations of commonplace topographies allowed
Registration needs to be done:
Either, within 15 years of first creation if not commercialized, or within 2 years of first commercial exploitation
With exemplification of the topography
With the date of first commercial exploitation stated (if applicable)
Costs: admin fee per country (e.g. NL €79)