Some notes on IP

Here are some notes on Intellectual Property management. These are personal findings, and may be (probably are) incomplete. They have a special focus on  researchers and their host institutions.

Branding

Should you wish to register your brand, you must be aware that doing so is NOT ensuring that the product’s name is somehow protected. The company name is not in any way connected to the product’s name. Quick example: there are lots of coffee shops in Portugal named “Café Central”.

Brands are territorial, meaning that their registry is often restricted to the issuing country. If you wish to protect a specific brand with additional geographic coverage, you should proceed to register it in the different countries you wish to include.

When judging cases related to two companies disputing the same name, courts often analyse the similarity between the two businesses: if a potential user can, for some reason, get confused about the two products/services, then the court will probably find it conflicting. If  otherwise there is a no proximity, the case can be easily discarded and archived.

Copyright

When considering research publications/work, copyright management is pretty much similar to what’s done with literary pieces. This means, for instance, that copying and pasting source code is actually and infringement of the copyrights agreement. The necessary amount of code necessary to be considered infringement is variable and is often debated on court.

GPL does not allow registering patents based on open-source code.

If any compensation (salary for instance) exists, then there is also a bond to the company that restricts the ownership. In the case of research institutions / scholarships, the institution often has a signed agreement stating that the researcher transfers his rights to the host institution.

Design

Registering design only protects the interface. It does not cover interactivity or any other form of communication. This protection lasts up to 25 years, after which the bond is removed.

The design must be new. (this doesn’t happen with brand, for instance)

Patents

Also territorial, patents last up to 20 years (maybe can be adjusted later).

Patents are a negative right – they allow us to prevent others from copying. They do not yield any further rights.

Patents can be used as a market prospection. Having your patent approved means that a qualified person or group hasn’t been able to find any similar project in the market. Otherwise, the patent would not be approved.

Indicators: must be unexpected, innovative, not obvious. This is quite simple, yet poses lots of challenges when dealing with the committee. It is very frequent to find patent requests that were rejected due to a publication stating that “it is simple to apply this procedure”, or “it is easily applied to other scenarios”….

In some countries, not identifying the true author is a quick way to get the patent cancelled. Although it is common for institutions to sign patents based on their researcher’s work, they must also be mentioned.

On the other side, if the researcher submits the patent with his name, he must notify the company of such action. Failing to do so will enable the company to sue the researcher and cancel the patent.

The rule of “whats created at work is for the company, whats created at home is form me” is often misinterpreted. All the work developed under a company’s contract is obviously subjected to the company’s rules on intellectual property. Even if the researcher had the idea outside working hours, at home, some courts may judge in favor of the company. Issues with used material, facilities or knowledge are very arguable.

In the particular case of Portugal, the law states that there must be an appropriate compensation for the researcher’s findings. We will leave that to your judging.

NDA: non disclosure agreements only protect communication, they have no value in the field of patent claiming, or any other issues whatsoever.

References:

Google patents – useful to search along diverse sources

PatentScope

Espacenet: patent search engine

One thought on “Some notes on IP

  1. Cool post Ricardo. This presentation provided me some interesting awareness on the patent and copyright restrictions that we often have to take into account before publishing anything.

Leave a Comment