What are intellectual property rights in relation to software? We explore how IPR is defined and the legal frameworks IT practitioners need to know about.
This article sets out to answer: what are intellectual property right? We’ll explore related topics such as: non-disclosure agreements, a brief overview regarding ownership of IP and options if commercialising your intellectual property (IP) is not possible.
Intellectual property rights’ meaning
To being with, intellectual property rights (IPR) is a term that is applied to the legal protection afforded to innovative and creative work. The intention is to allow the owner of IPR to gain from the use of their idea to encourage innovation.
It is important to note, improving on an idea that already exists, altering a piece of work, or having an idea that is not transformed into something tangible (e.g. a design or photograph), is most likely not protected by IP. For something to be protected by IPR it must be original, something new.
Since intellectual property (IP) is an abstract concept, the best way to think about IPR is thinking about it as property that can be bought or sold. Owning IPR gives the owner certain ownership rights for a period.
Lastly, IPR legislation has evolved over many years and each country has their own IP law - this article only covers the United Kingdom. Furthermore, since IP legislation continues to evolve, this article is meant as an introduction to IP and it is not meant to be a substitute for legal advice.
The essential categories of IPR are:
- Design rights
In addition, there are other forms of intellectual property rights protection including:
- Database rights
- Internet domain names.
First step: Non-Disclosure Agreement
Before you discuss your IP with anyone, it is important that you have them sign a non-disclosure agreement or sometimes called a confidentiality agreement. This will protect you from them developing the same IP and beating you to market with it.
Copyright and an overview of intellectual property rights
UK intellectual property law recognises copyright covers original creative material in many forms including written, music, art, and photographs. Other non-original works such as sound recordings, films and broadcasts may also be covered.
Copyright is automatically conferred at the time of creation and is not registered in the UK and regardless of the medium, a copyright covers the expression of an idea, not the idea itself.
Typically, © with the name of the owner and year created is usually sufficient to notify work is copyrighted. Generally speaking, a copyright lasts for the lifetime of the creator plus 50 years, or 25 years for a photograph.
With reference to software, the act of holding a piece of software on a computer will generally require that the software be copied - perhaps from the machine on which it was created or from some storage medium.
This requires the consent of the copyright holder. Executing software on a computer may imply that it is copied onto the machine. The consent of the copyright holder is also required.
Typically, these permissions are conferred in a licence agreement between the copyright owner and the user of the software. But if someone obtains a pirated copy of software then transferring it on to a computer may breach copyright.
A patent applies to an invention and confers on the patent holder a monopoly of the exploitation of the invention for a limited period. Obtaining a patent can require a substantial investment of time and money. Before pursuing a patent, it is advised to speak with an intellectual property rights expert, who can advise and of course, before you discuss anything make sure a non-disclosure agreement is signed.
For a patent, the invention must be new and inventive, that is it must involve a step of creativity not obvious from current knowledge. The invention must also have industrial application.
Under current legislation computer programs are not patentable (see Patent Act 1977 section 1(2)(c)). A program can only be patented if, when running, it produces a 'technical effect more than would necessarily follow merely from the running of any program on a computer'.
For example, a new machine tool should be patentable but a non-technological invention such as grammar checking software for a word processor should not be.' The government also indicates that 'the law is not clear enough' and that 'urgent European action to clarify is needed'.
In the view of the author, the decisive factor is the role played by the software. In the machine tool we can presume that software is an intrinsic part of the operation without which the equipment would be non-functional.
Thus a real-time control system that enables an invention to operate and therefore forms a part of that invention would seem to be potentially patentable. We await clarification.
Where a patent is possible it must be applied for and approved by the Patent Office. Ownership is similar to copyright in that the patent is granted to the inventor unless it was discovered in the normal course of employment in which case it is granted to the employer.
A patent may be assigned or licensed to others by the owner.
Design rights may be unregistered or registered. An unregistered design right prohibits others from reproducing or copying the design of a product for a period of time varying from 3-15 years. The reproduction does not have to be exact.
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Registered designs are those where the appearance of the product is registered with the Patent Office. The owner of the right then has a monopoly of the use of the design and can legally prevent others from infringing it.
The design essentially refers to the physical characteristics of the product, which would seem to rule out application to software alone but to a device of which software forms a part.
A trademark is a sign or image that identifies the brand or products of one organisation from those of another. The trademark is a badge. It must be registered and must be distinctive. Protection applies to the trademark rather than the goods or services to which it applies.
Database rights are like a copyright on the contents and arrangement of a database. As such, the database may be a literary work and copyright rules would apply to making extracts from it.
Commercial use should not be made without the approval of the copyright owner.
Internet domain names
An emergent problem with the increasing commercial reliance on the internet is the speculative registration of the trademarks and trade names of others as internet domain names.
This is termed 'cybersquatting' and has been used in attempts to extort money from legitimate businesses.
The domain name system is administered by the Internet Corporation for Assigned Names and Numbers (ICANN). In January 2000 a Universal Domain Name Dispute Resolution Procedure (UDRP) was introduced to combat cybersquatting.
Under this, a complaint may be made by the owner of a trademark against a domain name that is confusingly similar, where they can show the domain name owner has no rights or legitimate interests in the trademark and has registered the domain name in bad faith.
Where the complaint is upheld by a dispute resolution service the offending domain name may be transferred to the complainer.
Ownership of IPR
The default position is that ownership resides with the individual who created the IP. If you are a photographer for example, it is the person who took the photo. However, this is not an absolute position.
Typically, if you produce IP while in the course of your employment then ownership is likely to belong to your employer. If your employer has an IP policy then please consult it regarding ownership and consult your employment contract. Sometimes, if you are working under contract then the contract may specify who the IP owner is.
Commercialising your IP
Sometimes, the cost to commercialise your IP may be cost prohibitive and below is a list, not an exhaustive list, of some options you could use to market your IP.
Licensing: When you buy software, like internet security, you are essentially buying a license to use the software subject to the terms of the licensing agreement. In the same way you buy software you can license your software. Usually, licensing requires someone knowledgeable about the licensing option and potential risks involved to help you draft a licensing agreement.
Franchising: This will require consultation with someone knowledgeable about Franchising but if you are developing a method or a technique then franchising offers an option.
Workshop / Training
Again, this will require consultation with someone knowledgeable. Running workshops or classes using your IP is possible.
The above provides a brief introduction to IP and IPR rights. Since IPR and IP are not static and the above is only meant as a guide, if you need more advice then it is important to speak with someone knowledgeable in IP who can further advise you.
About the authors
Richard Platts MBCS in 2006 presented a layperson’s view of those aspects of intellectual property rights that have relevance to the software industry. This, the most current version was updated, in part, by Brian Berry in 2022.