Description
Encompasses all tangible and intangible products of human mind: ideas, inventions, technologies, artworks, music and literature, that are intangible when first created, but that may become valuable in tangible form as products.
SCIENTIFIC RESEARCH
METHODOLOGIES AND TECHNIQUES
Unit 11: INTELLECTUAL
©L. M. Camarinha-Matos, 2009-2012
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Unit 11: INTELLECTUAL
PROPERTY RIGHTS
Luis M. Camarinha-Matos
[email protected]
PhD PROGRAM IN ELECTRICAL AND COMPUTER ENGINEERING
1. CONCEPTS
©L. M. Camarinha-Matos, 2009-2012
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1. CONCEPTS
Base concepts
Intellectual property: Encompasses all tangible and intangible
products of human mind: ideas, inventions, technologies, artworks,
music and literature, that are intangible when first created, but that may
become valuable in tangible form as products
Intellectual property rights (IPR) - rights granted to creators and owners
Intellectual property refers to creations of the mind: inventions, literary
and artistic works, and symbols, names, images, and designs used in
commerce. WIPO
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These include:
Patent
Utility model
Trademark
Copyright
Design model
Etc.
Intellectual property rights (IPR) - rights granted to creators and owners
of works that are the result of human intellectual creativity. These works
can be in the industrial, scientific, literary or artistic domains, thereby
providing an incentive for the author or inventor to develop and share the
information rather than keep it secret.
A discovery is not a invention.
A discovery is a matter of observation and cognition of nature;
an invention corresponds to something new that has not previously been
provided for in nature.
e.g. H.C. Ørsted discovered the electromagnetic
Discovery vs invention
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e.g. H.C. Ørsted discovered the electromagnetic
field; the electric motor was invented.
Inventions are new solutions to technical problems.
These new solutions are ideas and can be protected as such.
Protection granted to the inventor (e.g. Patent) is protection against any use of
the invention without authorization of the owner.
Copyright protects only the form of expression of ideas, not the ideas
themselves.
• IPRs as financial incentives
• Justified when the creator’s investment is costly and highly risky
• Considered in the developed world as catalysts for economic development
and modernization
• encourage innovation
• economic and cultural enrichment
• Prevention of problems due to piracy and counterfeiting (health sector)
Justification for IPR
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• Prevention of problems due to piracy and counterfeiting (health sector)
• Natural and human right (author’s moral right)
E-commerce raises a number of legal issues regarding the
validity, legal effect and enforceability of transactions, privacy,
security, protection of ideas, brands of goods and services in
an on-line environment etc.
Peer-to-peer communication techniques have made difficult
the definition of what is an on-line private user
? issues of balance between individual liberty
and free non-market exchange values versus
commercial distribution rights
Balance between
incentives to future
production and the
preservation of the
public domain ?
Developed vs
developing
countries?
(Nega, 2005)
2. PROTECTION MECHANISMS
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2. PROTECTION MECHANISMS
Types of IPR
Industrial property:
inventions (patents)
trademarks
industrial designs
geographic indications of source
Duration: generally 20 years
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Copyright (or authors rights):
literary and artistic works such as novels,
poems and plays, films, musical works
artistic works such as drawings, paintings,
photographs and sculptures, and architectural designs.
Duration: life of autor + 50 years (approx.)
Duration: generally 20 years
Patents
Protection of inventions that solved an existing “technical” problem.
New solutions are, in essence, ideas and are protected as such.
Discovering something that already exists in
nature, e.g. a previously unknown plant variety, is
not an invention. The process for extraction of a
new substance from a plant maybe an invention.
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new substance from a plant maybe an invention.
WIPO
Patents are intended to
provide incentives to
individuals, offering them
recognition for their
creativity and material
reward for their marketable
inventions ... if it is
exploited !
Conditions of patentability:
Conditions
are not the
same in
every
country ...
Patents ...
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www.wipo.int/freepublications/en/intproperty/895/wipo_pub_895.pdf
Patents ...
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www.wipo.int/export/sites/www/ipstats/en/statistics/patents/pdf/wipo_pub_931.pdf
Patents ...
Granted per country
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Patents ...
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Total number of patent filings by field of technology
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[Wikipedia]
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EPO
applications
2007
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Relationship to
publications?
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Most cited
publications?
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Contribution to the 10 % most cited
scientific publications as % of total
national publications, 2007
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©L. M. Camarinha-Matos, 2009-2012
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Patents and scientific research?
“Manuel Jalon Corominas is the man who 50
years ago in 1956 patented the wringing
mechanism for a mop. Of course mops had
existed before, the first patent was taken out by
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existed before, the first patent was taken out by
an Afro-American ( he was black & his parents
were slaves ) Thomas Stewart in 1893.
But Stewart had overlooked the problem of
"dirty water". Manuel Jalon Corominas solved
that by inventing the "one piece wringer" which
included a bucket and side attachment to wring
a wet mop and offer whomever did the
mopping an opportunity to change the water.
This revolutionised mopping”.http://www.indymedia.ie/article/77333
Are these mutually exclusive?
Patent AND Publish
Patent or publish?
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BUT ... Get the sequence right!
Patent THEN Publish
Utility models
Utility model – a title for protection of technically less complex
inventions or for inventions that have a short commercial life.
Similar to the patent, but usually has a shorter term (often 6 or 10 years) and
less stringent patentability requirements
… More suited to what may be considered as "incremental inventions"
... Particularly suited for SMEs that make "minor" improvements to, and
adaptations of, existing products.
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adaptations of, existing products.
Examples:
Devices having a short life cycle, embodying a creative
idea applicable to the shape, structure or other
technological aspects of a product, while typically
showing potential for early implementation and
marketing – examples could include an improved device
capable of reducing the amount of water used to flush a
toilet or, a bottle cork remover capable of faster
operation than known devices
Utility models ...
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www.wipo.int/ipstats/en/statistics/patents/wipo_pub_931.html#a12
Around 30 countries have laws for utility models.
Industrial designs
Industrial designs – the ornamental or esthetic creations determining
the appearance of industrial products
This right is granted to protect the original,
ornamental and non-functional features of a product
that result from a design activity.
Designs may be protected if:
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Designs may be protected if:
they are novel, that is if no identical design has been
made available to the public;
they have individual character, that is the "informed user“
would find it different from other designs which are
available to the public.
Trademarks
Trademark – a sign, or combination of signs, that distinguishes the
goods or services of one enterprise from those of another
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Copyright
It is not ideas but their expression that are protected by copyright law.
Copyright - a protection related to literary and artistic creations, such
as books, music, paintings and sculptures, films and technology-
based works such as computer programs and electronic databases.
WIPO
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Copyright emerges with the creation of the work;
i.e. no application is needed…
©
Copyright owner: The first owner of copyright
in a work is the person who created the work.
Copyright ...
Works protected by copyright (Berne Convention):
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www.wipo.int/freepublications/en/intproperty/909/wipo_pub_909.pdf
Other works:
Computer Programs
Multimedia productions
Geographical indication
Geographical indication – a sign used on goods that have a specific
geographical origin and possess qualities or a reputation that are due
to that place of origin.
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Roquefort
Trade secrets / Secret formulation
Trade secret - a formula, practice, process, design, instrument, pattern,
or compilation of information which is not generally known or reasonably
ascertainable, by which a business can obtain an economic advantage
over competitors or customers.
In some jurisdictions, such secrets are referred to as "confidential
information" or "classified information". Wikipedia
A company can protect its confidential information
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A company can protect its confidential information
through non-compete and non-disclosure contracts
with its employees (within the constraints of
employment law, including only restraint that is
reasonable in geographic and time scope).
Multiple protection
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[Weir, 2008]
Foreground resulting from the project is
owned by the participant generating it. When
foreground is generated jointly (i.e. where the
separate parts of some result cannot be
attributed to different participants), it will be
Example: EC-funded projects in FP7
IPR in collaborative projects
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ftp://ftp.cordis.lu/pub/fp7/docs/ipr_en.pdf
attributed to different participants), it will be
jointly owned, unless the participants
concerned agree on a different solution
Joint owners must agree among themselves
on the allocation and the terms of exercising
the ownership of the foreground. In the
absence of such an agreement (or pending
its conclusion), a default joint ownership
regime applies.
IPR in collaborative projects ...
Transfers of ownership of foreground are allowed, though the obligations
regarding that foreground must be passed on to the transferee. In principle, as
long as the participant concerned is required to grant access rights, notification
must be given to the other participants, during which time they have the right to
object. However, they may agree in advance that no prior notification is
necessary with regard to a specifically identified third party.
Valuable foreground should be Each participant shall ensure that the
©L. M. Camarinha-Matos, 2009-2012
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Valuable foreground should be
protected. Protection is not
mandatory in all cases, though the
decision not to protect foreground
should preferably be made in
consultation with the other
participants, which may wish to take
ownership. If valuable foreground is
left unprotected, the Commission may
take ownership.
Each participant shall ensure that the
foreground it owns is disseminated as
swiftly as possible. However, any
dissemination (including publications or
on web-pages) should be delayed until a
decision about its possible protection
has been made (through IPR or trade
secrets). The other participants may
object to the dissemination activity if
their legitimate interests.
ftp://ftp.cordis.lu/pub/fp7/docs/ipr_en.pdf
EC FP7 – Notification requirements
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EC FP7 – Access rights
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General = all cooperative projects
FRAs = Frontier research actions
ABSGs = Actions for the benefit of specific groups
IPR on digital content
The “explosion” of availability of digital content has opened a Pandora's box
of issues about intellectual property rights.
New protection schemes
New business models
How to make money from something
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How to make money from something
that is (apparently) available for free?
... There are companies making a lot of
money selling water !
Fair use
Allow certain types of copying and
use with or without owner consent, e.g.,
for critical review, teaching
A debate over access to conference
proceedings from organizations like
IFIP, IFAC, etc
3. RIGHTS IDENTIFICATION
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3. RIGHTS IDENTIFICATION
Ownership
Knowledge resulting from a collaborative R&D project is property
of contributing partners
When a piece of knowledge is the result of several contributions
(joint ownership), it is important to determine the level of
contribution of each partner
Identification of contributions
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In this process it is important to distinguish between the
pre-existing knowledge and the knowledge generated by
the project.
"Foreground“ - means the results,
including information, materials and
knowledge, generated in a given project,
whether or not they can be protected. It
includes IPR, similar forms of protections
and unprotected know-how.
"Background“ - is information and
knowledge (including inventions, databases,
etc.) held by the participants prior to their
accession to the grant agreement, as well as
any IPR which are needed for carrying out
the project or for using foreground.
European Commission /FP7 definitions:
Determine relative
value of each IP
3
PRODNET project approach
[Camarinha-Matos, Afsarmanesh, 2000]
©L. M. Camarinha-Matos, 2009-2012
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Identify list of IPs
Determine partners’
levels of contribution
1
2
IP Title Main partner
1 BASIC INTELLECTUAL PROPERTIES
1.1 “PRODNET” Brand Name &Logo Partner 5
1.2 RTD Project Management Knowledge Partner 5
2 ARCHITECTURES AND MODELS
2.1 PRODNET Basic Architecture Partner 5
2.2 PRODNET Hierarchical Coordination Architecture Partner 5
2.3 PRODNET DBP Management Partner 8
2.4 PRODNET DBP Models Partner 8
Some principles:
The real intellectual value of an R&D
project lies on the original ideas /
architectures / approaches / models
and not only on concrete software
modules.
PRODNET approach: Identification of IPs
©L. M. Camarinha-Matos, 2009-2012
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2.4 PRODNET DBP Models Partner 8
2.5 Workflow-based Services Coordination Partner 5
2.6 Distributed and Federated Information Management Partner 6
2.7 Integration STEP / EDI Partner 2
2.8 PRODNET Communications Infrastructure Architecture Partner 7
2.9 Partners Search and Selection Architecture Partner 5
2.10 Imprecise &Incomplete Orders Management Partner 1
2.11 Socio-organizational recommendations for VE implantation Partner 5
2.12 Edition and configuration of DBP and related ACF Partner 8
3 SOFTWARE MODULES
3.1 PPC Partner 1
3.2 EDI Module Partner 2
3.3 STEP Module Partner 3
3.4 LCM Partner 5
3.5 DIMS Partner 6
3.6 PCI Partner 7
3.7 LCF Partner 5
3.8 DBPMS Partner 8
modules.
Programming a software module is
an activity that can be trivially
pursued once a concept / model is
specified.
The long-term competitive
advantage of companies depends
more on the know-how and ideas,
than on particular software
components that might have a very
short life.
Resources allocated by each partner to the task that produced the IP
are not a good measure of innovation and intellectual contribution !
Produce a description of the IP, clearly identifying what it
SUGGESTED STEPS:
PRODNET approach:
Definition of contributions
©L. M. Camarinha-Matos, 2009-2012
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Produce a description of the IP, clearly identifying what it
includes
Define a list of contributing items that led to the IP and
decide on the relative weight of each of these items
Determine the contributors and the amount (in percentage)
of their contribution to each item
Elaborate a table calculating the level of contribution of each
partner
IP 2.1 – PRODNET Basic Architecture
Description: The basic architecture includes: 1) division of a node (VE member) in two
modules (internal module and PRODNET Cooperation Layer - PCL), 2)
basic decomposition of PCL into several components, 3) identification of
main information and control flows, and 4) identification of classes of VEs
and roles played by each VE component.
Criteria to define levels of contribution:
PRODNET approach: Example 1
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Criteria to define levels of contribution:
1. Initial characterization of the problem area. [15%]
2. Definition of the basic solution approach. [20%]
3. Detailed refinement of the architecture approach. [25%]
4. General contributions to the discussion (mostly in technical meetings). [20%]
5. Technical coordination of the architecture development. [15%]
Table of
contributions:
Partner
1
Partner 5 Partner 2 Partner 6 Partner 7 Partner 4 Partner 8 Partner 9
IP2.1- 1 15% 40% 60%
IP2.1- 2 20% 70% 30%
IP2.1- 3 30% 25% 25% 25% 25%
IP2.1- 4 20% 5% 25% 10% 25% 5% 5% 20% 5%
IP2.1- 5 15% 100%
IP2.1
Level
7.00% 50.50% 2.00% 18.50% 8.50% 1.00% 11.50% 1.00%
IP 2.5 - Workflow-based Services Coordination
Description: This IP refers to the workflow-based approach for coordination of
processes and activities inside PCL. It includes the coordination
architecture, specialized workflow engine architecture, structuring of
services (taxonomies of core and auxiliary services), control flow
mechanisms, services invocation mechanisms, supporting information
models, interfacing rules, and a set of examples of workflow plans
(designed for demonstrators).
PRODNET approach: Example 2
©L. M. Camarinha-Matos, 2009-2012
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Criteria to define levels of contribution:
1. Contribution to the main concepts. [30 %]
2. Services specification. [25 %]
3. Contributions to the interfacing principles. [20 %]
4. Design of example workflows (demonstrators). [10 %]
5. Technical coordination of activity. [15 %]
Table of
contributions:
Partner 1 Partner 5 Partner 2 Partner 6 Partner 7 Partner 4 Partner 8 Partner 9 Partner 3
IP2.5- 1 30% 90% 10%
IP2.5- 2 25% 40% 25% 35%
IP2.5- 3 20% 5% 30% 20% 15% 30%
IP2.5- 4 10% 10% 15% 10% 15% 10% 10% 10% 10% 10%
IP2.5- 5 15% 100%
IP2.5 Level 2.0% 59.5% 11.3% 7.5% 15.8% 1.0% 1.0% 1.0% 1.0%
IP 3.4 – Local Coordination Module
Description: Specification and logical design of the software module for local
coordination (workflow-based), including the implementation approach,
interfacing rules, supporting information models, illustrative examples
(demonstrator-related), assessment of results, and a prototype
implementation.
Criteria to define levels of contribution:
PRODNET approach: Example 3
©L. M. Camarinha-Matos, 2009-2012
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Criteria to define levels of contribution:
1. Software specification and design. [20 %]
2. Interfacing specification. [20 %]
3. Example of workflow plans and assessment. [5 %]
4. Prototype development. [40 %]
5. Technical coordination of activity. [15 %]
Table of
contributions:
Partner 1Partner 5Partner 2Partner 6Partner 7 Partner 4 Partner 8 Partner 9 Partner 3
IP3.4- 1 20% 100%
IP3.4- 2 20% 40% 15% 20% 25%
IP3.4- 3 5% 11% 11% 11% 11% 11% 11% 11% 11% 11%
IP3.4- 4 40% 100%
IP3.4- 5 15% 100%
IP3.4 Level 0.6% 83.6% 3.6% 4.6% 5.6% 0.6% 0.6% 0.6% 0.6%
4. IP EXPLOITATION
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4. IP EXPLOITATION
Although R&D is a very important phase in the innovation process,
the post-research phase of transforming the created knowledge into
products requires considerable efforts and investments
Productization process:
robust re-implementation of components, application of quality
procedures and other regulations, documentation development,
training materials development, systems integration, marketing
PRODNET approach: Exploitation
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training materials development, systems integration, marketing
planning, etc.
Identification of roles and responsibilities in the full life cycle of the product
Understanding the nature and role of academic institutions vs. industry
organizations
The distribution of benefits has to take into account not only the initial
contribution to the IP, but also the role played in the subsequent phases.
Evolution of IP exploitation
©L. M. Camarinha-Matos, 2009-2012
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[Kamiyama et al. 2006]
Receipts from international licensing
©L. M. Camarinha-Matos, 2009-2012
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[Kamiyama et al. 2006]
Comparison
of the three
main
quantitative
patent
valuation
approach
©L. M. Camarinha-Matos, 2009-2012
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[Kamiyama et al. 2006]
1. By law (e.g. the Patents Act (1977) and the Copyright, Designs and Patents Act
(1988)) the University owns the intellectual property rights (IPR) generated by its
employees, provided that these are developed in the course of their normal duties.
This applies to all employees, and in the case of registered students is covered under
the policy for student IP.
The University has a policy to reward and encourage employees to bring forward new
inventions and developments and to share with them, and the Colleges, the proceeds
IP developed in public institutions
Example: University of Aberdeen, UK
©L. M. Camarinha-Matos, 2009-2012
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inventions and developments and to share with them, and the Colleges, the proceeds
of exploitation. This policy is reflected within this document.
6. Net income from licensing or sale of technology (i.e. after all IP protection and
exploitation costs have been met) is shared 1/3 to the inventor(s) (employees or
students who have assigned their intellectual property rights to the University), 1/3
to the Colleges(s) and 1/3 to be retained centrally for strategic purposes. The
inventor’s share may be taken as a personal reward, in which case it is subject to
income tax and additional National Insurance payments, or it can be put into a
nominated discretionary account according the normal University procedures for
discretionary funds.
Example: University of Ulster, UK
IP developed in public institutions
©L. M. Camarinha-Matos, 2009-2012
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[Weir, 2008]
IP developed in public institutions
Example: University of Porto, PT
The University keeps the ownership of the IP generated by its academic
staff, researchers and other employees
... But rewards them with 60% of the net profits !
©L. M. Camarinha-Matos, 2009-2012
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Industrial Property
In cases where the item of industrial property gives rise to profitable commercial
exploitation, either through the granting of licences for its exploitation or through its
sale, any revenue will, in the first instance, be used to reimburse up to 100% the costs
borne by IST.
Once the above costs have been covered, either the inventor(s) are under an obligation
to disclose or not, 50% of the revenue will go to IST and 50% to the inventor(s).
Example: IST, PT
IP developed in public institutions
Example: New University of Lisbon, PT
The University keeps the ownership of the IP generated by its members in the
context of any research or teaching activity
... Rewards them with 30-55% of the net profits
depending on how profitable it is!
... The amounts can be negotiated between the inventor
and the university
©L. M. Camarinha-Matos, 2009-2012
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and the university
University members must inform the University, within 3 months, of any
invention / creation that can be subject to IPR protection.
Regulation Nº 15 542/2005
28 June 2005 (Rector)
DR Nº 136, 18 July 2005
Author rights (literary, artistic, multimedia, computer programs, ... ) belong to the author.
IP ... FCT-UNL
©L. M. Camarinha-Matos, 2009-2012
53http://sites.fct.unl.pt/tto/pages/inventors
Camarinha-Matos, L.M.; Afsarmanesh, H. (2000). A systematic approach to IPR definition in cooperative
projects. In Proceedings of PRO-VE 2000 – 2nd IFIP Working Conference on Infrastructures for Virtual
Enterprises, Kluwer Academic Publishers, ISBN 0-7923-7205-0, pp.465-476, Florianopolis, Brazil, 4-6 Dec 2000.
Kamiyama, S.; Sheehan, J.; Martinez, C. (2006). VALUATION AND EXPLOITATION OF INTELLECTUAL
PROPERTY STI WORKING PAPER 2006/5 Statistical Analysis of Science, Technology and Industry, OECD,http://www.oecd.org/dataoecd/62/52/37031481.pdf
Nega, E. (2005) - Emerging IPR issues in the information economy. Emerging IPR issues in the information economy.http://www.uneca.org/codi/codi4/ICT/Day2-April26/EskedarNega.ppt
©L. M. Camarinha-Matos, 2009-2012
54http://www.uneca.org/codi/codi4/ICT/Day2-April26/EskedarNega.ppt
WIPO – Understanding Intellectual Propertyhttp://www.wipo.int/freepublications/en/intproperty/895/wipo_pub_895.pdf
WIPO - Understanding Copyright and Related Rightshttp://www.wipo.int/freepublications/en/intproperty/909/wipo_pub_909.pdf
European Commission (2007) - Guide to Intellectual Property Rules for FP7 projects
ftp://ftp.cordis.europa.eu/pub/fp7/docs/ipr_en.pdf
Weir, D. (2008) - Intellectual Property – Protection and exploitation at the University of Ulsterhttp://www.infm.ulst.ac.uk/~ammarb/seminars/IP%20protection%20and%20exploitation%20at%20UU.ppt
doc_716685169.pdf
Encompasses all tangible and intangible products of human mind: ideas, inventions, technologies, artworks, music and literature, that are intangible when first created, but that may become valuable in tangible form as products.
SCIENTIFIC RESEARCH
METHODOLOGIES AND TECHNIQUES
Unit 11: INTELLECTUAL
©L. M. Camarinha-Matos, 2009-2012
1 1
Unit 11: INTELLECTUAL
PROPERTY RIGHTS
Luis M. Camarinha-Matos
[email protected]
PhD PROGRAM IN ELECTRICAL AND COMPUTER ENGINEERING
1. CONCEPTS
©L. M. Camarinha-Matos, 2009-2012
2
1. CONCEPTS
Base concepts
Intellectual property: Encompasses all tangible and intangible
products of human mind: ideas, inventions, technologies, artworks,
music and literature, that are intangible when first created, but that may
become valuable in tangible form as products
Intellectual property rights (IPR) - rights granted to creators and owners
Intellectual property refers to creations of the mind: inventions, literary
and artistic works, and symbols, names, images, and designs used in
commerce. WIPO
©L. M. Camarinha-Matos, 2009-2012
3
These include:
Patent
Utility model
Trademark
Copyright
Design model
Etc.
Intellectual property rights (IPR) - rights granted to creators and owners
of works that are the result of human intellectual creativity. These works
can be in the industrial, scientific, literary or artistic domains, thereby
providing an incentive for the author or inventor to develop and share the
information rather than keep it secret.
A discovery is not a invention.
A discovery is a matter of observation and cognition of nature;
an invention corresponds to something new that has not previously been
provided for in nature.
e.g. H.C. Ørsted discovered the electromagnetic
Discovery vs invention
©L. M. Camarinha-Matos, 2009-2012
4
e.g. H.C. Ørsted discovered the electromagnetic
field; the electric motor was invented.
Inventions are new solutions to technical problems.
These new solutions are ideas and can be protected as such.
Protection granted to the inventor (e.g. Patent) is protection against any use of
the invention without authorization of the owner.
Copyright protects only the form of expression of ideas, not the ideas
themselves.
• IPRs as financial incentives
• Justified when the creator’s investment is costly and highly risky
• Considered in the developed world as catalysts for economic development
and modernization
• encourage innovation
• economic and cultural enrichment
• Prevention of problems due to piracy and counterfeiting (health sector)
Justification for IPR
©L. M. Camarinha-Matos, 2009-2012
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• Prevention of problems due to piracy and counterfeiting (health sector)
• Natural and human right (author’s moral right)
E-commerce raises a number of legal issues regarding the
validity, legal effect and enforceability of transactions, privacy,
security, protection of ideas, brands of goods and services in
an on-line environment etc.
Peer-to-peer communication techniques have made difficult
the definition of what is an on-line private user
? issues of balance between individual liberty
and free non-market exchange values versus
commercial distribution rights
Balance between
incentives to future
production and the
preservation of the
public domain ?
Developed vs
developing
countries?
(Nega, 2005)
2. PROTECTION MECHANISMS
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2. PROTECTION MECHANISMS
Types of IPR
Industrial property:
inventions (patents)
trademarks
industrial designs
geographic indications of source
Duration: generally 20 years
©L. M. Camarinha-Matos, 2009-2012
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Copyright (or authors rights):
literary and artistic works such as novels,
poems and plays, films, musical works
artistic works such as drawings, paintings,
photographs and sculptures, and architectural designs.
Duration: life of autor + 50 years (approx.)
Duration: generally 20 years
Patents
Protection of inventions that solved an existing “technical” problem.
New solutions are, in essence, ideas and are protected as such.
Discovering something that already exists in
nature, e.g. a previously unknown plant variety, is
not an invention. The process for extraction of a
new substance from a plant maybe an invention.
©L. M. Camarinha-Matos, 2009-2012
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new substance from a plant maybe an invention.
WIPO
Patents are intended to
provide incentives to
individuals, offering them
recognition for their
creativity and material
reward for their marketable
inventions ... if it is
exploited !
Conditions of patentability:
Conditions
are not the
same in
every
country ...
Patents ...
©L. M. Camarinha-Matos, 2009-2012
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www.wipo.int/freepublications/en/intproperty/895/wipo_pub_895.pdf
Patents ...
©L. M. Camarinha-Matos, 2009-2012
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www.wipo.int/export/sites/www/ipstats/en/statistics/patents/pdf/wipo_pub_931.pdf
Patents ...
Granted per country
©L. M. Camarinha-Matos, 2009-2012
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Patents ...
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Total number of patent filings by field of technology
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[Wikipedia]
©L. M. Camarinha-Matos, 2009-2012
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EPO
applications
2007
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Relationship to
publications?
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Most cited
publications?
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Contribution to the 10 % most cited
scientific publications as % of total
national publications, 2007
©L. M. Camarinha-Matos, 2009-2012
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©L. M. Camarinha-Matos, 2009-2012
19http://www.wipo.int/export/sites/www/ipstats/en/statistics/patents/pdf/941_2010.pdf
Patents and scientific research?
“Manuel Jalon Corominas is the man who 50
years ago in 1956 patented the wringing
mechanism for a mop. Of course mops had
existed before, the first patent was taken out by
©L. M. Camarinha-Matos, 2009-2012
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existed before, the first patent was taken out by
an Afro-American ( he was black & his parents
were slaves ) Thomas Stewart in 1893.
But Stewart had overlooked the problem of
"dirty water". Manuel Jalon Corominas solved
that by inventing the "one piece wringer" which
included a bucket and side attachment to wring
a wet mop and offer whomever did the
mopping an opportunity to change the water.
This revolutionised mopping”.http://www.indymedia.ie/article/77333
Are these mutually exclusive?
Patent AND Publish
Patent or publish?
©L. M. Camarinha-Matos, 2009-2012
21
BUT ... Get the sequence right!
Patent THEN Publish
Utility models
Utility model – a title for protection of technically less complex
inventions or for inventions that have a short commercial life.
Similar to the patent, but usually has a shorter term (often 6 or 10 years) and
less stringent patentability requirements
… More suited to what may be considered as "incremental inventions"
... Particularly suited for SMEs that make "minor" improvements to, and
adaptations of, existing products.
©L. M. Camarinha-Matos, 2009-2012
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adaptations of, existing products.
Examples:
Devices having a short life cycle, embodying a creative
idea applicable to the shape, structure or other
technological aspects of a product, while typically
showing potential for early implementation and
marketing – examples could include an improved device
capable of reducing the amount of water used to flush a
toilet or, a bottle cork remover capable of faster
operation than known devices
Utility models ...
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www.wipo.int/ipstats/en/statistics/patents/wipo_pub_931.html#a12
Around 30 countries have laws for utility models.
Industrial designs
Industrial designs – the ornamental or esthetic creations determining
the appearance of industrial products
This right is granted to protect the original,
ornamental and non-functional features of a product
that result from a design activity.
Designs may be protected if:
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Designs may be protected if:
they are novel, that is if no identical design has been
made available to the public;
they have individual character, that is the "informed user“
would find it different from other designs which are
available to the public.
Trademarks
Trademark – a sign, or combination of signs, that distinguishes the
goods or services of one enterprise from those of another
©L. M. Camarinha-Matos, 2009-2012
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Copyright
It is not ideas but their expression that are protected by copyright law.
Copyright - a protection related to literary and artistic creations, such
as books, music, paintings and sculptures, films and technology-
based works such as computer programs and electronic databases.
WIPO
©L. M. Camarinha-Matos, 2009-2012
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Copyright emerges with the creation of the work;
i.e. no application is needed…
©
Copyright owner: The first owner of copyright
in a work is the person who created the work.
Copyright ...
Works protected by copyright (Berne Convention):
©L. M. Camarinha-Matos, 2009-2012
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www.wipo.int/freepublications/en/intproperty/909/wipo_pub_909.pdf
Other works:
Computer Programs
Multimedia productions
Geographical indication
Geographical indication – a sign used on goods that have a specific
geographical origin and possess qualities or a reputation that are due
to that place of origin.
©L. M. Camarinha-Matos, 2009-2012
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Roquefort
Trade secrets / Secret formulation
Trade secret - a formula, practice, process, design, instrument, pattern,
or compilation of information which is not generally known or reasonably
ascertainable, by which a business can obtain an economic advantage
over competitors or customers.
In some jurisdictions, such secrets are referred to as "confidential
information" or "classified information". Wikipedia
A company can protect its confidential information
©L. M. Camarinha-Matos, 2009-2012
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A company can protect its confidential information
through non-compete and non-disclosure contracts
with its employees (within the constraints of
employment law, including only restraint that is
reasonable in geographic and time scope).
Multiple protection
©L. M. Camarinha-Matos, 2009-2012
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[Weir, 2008]
Foreground resulting from the project is
owned by the participant generating it. When
foreground is generated jointly (i.e. where the
separate parts of some result cannot be
attributed to different participants), it will be
Example: EC-funded projects in FP7
IPR in collaborative projects
©L. M. Camarinha-Matos, 2009-2012
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ftp://ftp.cordis.lu/pub/fp7/docs/ipr_en.pdf
attributed to different participants), it will be
jointly owned, unless the participants
concerned agree on a different solution
Joint owners must agree among themselves
on the allocation and the terms of exercising
the ownership of the foreground. In the
absence of such an agreement (or pending
its conclusion), a default joint ownership
regime applies.
IPR in collaborative projects ...
Transfers of ownership of foreground are allowed, though the obligations
regarding that foreground must be passed on to the transferee. In principle, as
long as the participant concerned is required to grant access rights, notification
must be given to the other participants, during which time they have the right to
object. However, they may agree in advance that no prior notification is
necessary with regard to a specifically identified third party.
Valuable foreground should be Each participant shall ensure that the
©L. M. Camarinha-Matos, 2009-2012
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Valuable foreground should be
protected. Protection is not
mandatory in all cases, though the
decision not to protect foreground
should preferably be made in
consultation with the other
participants, which may wish to take
ownership. If valuable foreground is
left unprotected, the Commission may
take ownership.
Each participant shall ensure that the
foreground it owns is disseminated as
swiftly as possible. However, any
dissemination (including publications or
on web-pages) should be delayed until a
decision about its possible protection
has been made (through IPR or trade
secrets). The other participants may
object to the dissemination activity if
their legitimate interests.
ftp://ftp.cordis.lu/pub/fp7/docs/ipr_en.pdf
EC FP7 – Notification requirements
©L. M. Camarinha-Matos, 2009-2012
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EC FP7 – Access rights
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General = all cooperative projects
FRAs = Frontier research actions
ABSGs = Actions for the benefit of specific groups
IPR on digital content
The “explosion” of availability of digital content has opened a Pandora's box
of issues about intellectual property rights.
New protection schemes
New business models
How to make money from something
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How to make money from something
that is (apparently) available for free?
... There are companies making a lot of
money selling water !
Fair use
Allow certain types of copying and
use with or without owner consent, e.g.,
for critical review, teaching
A debate over access to conference
proceedings from organizations like
IFIP, IFAC, etc
3. RIGHTS IDENTIFICATION
©L. M. Camarinha-Matos, 2009-2012
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3. RIGHTS IDENTIFICATION
Ownership
Knowledge resulting from a collaborative R&D project is property
of contributing partners
When a piece of knowledge is the result of several contributions
(joint ownership), it is important to determine the level of
contribution of each partner
Identification of contributions
©L. M. Camarinha-Matos, 2009-2012
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In this process it is important to distinguish between the
pre-existing knowledge and the knowledge generated by
the project.
"Foreground“ - means the results,
including information, materials and
knowledge, generated in a given project,
whether or not they can be protected. It
includes IPR, similar forms of protections
and unprotected know-how.
"Background“ - is information and
knowledge (including inventions, databases,
etc.) held by the participants prior to their
accession to the grant agreement, as well as
any IPR which are needed for carrying out
the project or for using foreground.
European Commission /FP7 definitions:
Determine relative
value of each IP
3
PRODNET project approach
[Camarinha-Matos, Afsarmanesh, 2000]
©L. M. Camarinha-Matos, 2009-2012
38
Identify list of IPs
Determine partners’
levels of contribution
1
2
IP Title Main partner
1 BASIC INTELLECTUAL PROPERTIES
1.1 “PRODNET” Brand Name &Logo Partner 5
1.2 RTD Project Management Knowledge Partner 5
2 ARCHITECTURES AND MODELS
2.1 PRODNET Basic Architecture Partner 5
2.2 PRODNET Hierarchical Coordination Architecture Partner 5
2.3 PRODNET DBP Management Partner 8
2.4 PRODNET DBP Models Partner 8
Some principles:
The real intellectual value of an R&D
project lies on the original ideas /
architectures / approaches / models
and not only on concrete software
modules.
PRODNET approach: Identification of IPs
©L. M. Camarinha-Matos, 2009-2012
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2.4 PRODNET DBP Models Partner 8
2.5 Workflow-based Services Coordination Partner 5
2.6 Distributed and Federated Information Management Partner 6
2.7 Integration STEP / EDI Partner 2
2.8 PRODNET Communications Infrastructure Architecture Partner 7
2.9 Partners Search and Selection Architecture Partner 5
2.10 Imprecise &Incomplete Orders Management Partner 1
2.11 Socio-organizational recommendations for VE implantation Partner 5
2.12 Edition and configuration of DBP and related ACF Partner 8
3 SOFTWARE MODULES
3.1 PPC Partner 1
3.2 EDI Module Partner 2
3.3 STEP Module Partner 3
3.4 LCM Partner 5
3.5 DIMS Partner 6
3.6 PCI Partner 7
3.7 LCF Partner 5
3.8 DBPMS Partner 8
modules.
Programming a software module is
an activity that can be trivially
pursued once a concept / model is
specified.
The long-term competitive
advantage of companies depends
more on the know-how and ideas,
than on particular software
components that might have a very
short life.
Resources allocated by each partner to the task that produced the IP
are not a good measure of innovation and intellectual contribution !
Produce a description of the IP, clearly identifying what it
SUGGESTED STEPS:
PRODNET approach:
Definition of contributions
©L. M. Camarinha-Matos, 2009-2012
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Produce a description of the IP, clearly identifying what it
includes
Define a list of contributing items that led to the IP and
decide on the relative weight of each of these items
Determine the contributors and the amount (in percentage)
of their contribution to each item
Elaborate a table calculating the level of contribution of each
partner
IP 2.1 – PRODNET Basic Architecture
Description: The basic architecture includes: 1) division of a node (VE member) in two
modules (internal module and PRODNET Cooperation Layer - PCL), 2)
basic decomposition of PCL into several components, 3) identification of
main information and control flows, and 4) identification of classes of VEs
and roles played by each VE component.
Criteria to define levels of contribution:
PRODNET approach: Example 1
©L. M. Camarinha-Matos, 2009-2012
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Criteria to define levels of contribution:
1. Initial characterization of the problem area. [15%]
2. Definition of the basic solution approach. [20%]
3. Detailed refinement of the architecture approach. [25%]
4. General contributions to the discussion (mostly in technical meetings). [20%]
5. Technical coordination of the architecture development. [15%]
Table of
contributions:
Partner
1
Partner 5 Partner 2 Partner 6 Partner 7 Partner 4 Partner 8 Partner 9
IP2.1- 1 15% 40% 60%
IP2.1- 2 20% 70% 30%
IP2.1- 3 30% 25% 25% 25% 25%
IP2.1- 4 20% 5% 25% 10% 25% 5% 5% 20% 5%
IP2.1- 5 15% 100%
IP2.1
Level
7.00% 50.50% 2.00% 18.50% 8.50% 1.00% 11.50% 1.00%
IP 2.5 - Workflow-based Services Coordination
Description: This IP refers to the workflow-based approach for coordination of
processes and activities inside PCL. It includes the coordination
architecture, specialized workflow engine architecture, structuring of
services (taxonomies of core and auxiliary services), control flow
mechanisms, services invocation mechanisms, supporting information
models, interfacing rules, and a set of examples of workflow plans
(designed for demonstrators).
PRODNET approach: Example 2
©L. M. Camarinha-Matos, 2009-2012
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Criteria to define levels of contribution:
1. Contribution to the main concepts. [30 %]
2. Services specification. [25 %]
3. Contributions to the interfacing principles. [20 %]
4. Design of example workflows (demonstrators). [10 %]
5. Technical coordination of activity. [15 %]
Table of
contributions:
Partner 1 Partner 5 Partner 2 Partner 6 Partner 7 Partner 4 Partner 8 Partner 9 Partner 3
IP2.5- 1 30% 90% 10%
IP2.5- 2 25% 40% 25% 35%
IP2.5- 3 20% 5% 30% 20% 15% 30%
IP2.5- 4 10% 10% 15% 10% 15% 10% 10% 10% 10% 10%
IP2.5- 5 15% 100%
IP2.5 Level 2.0% 59.5% 11.3% 7.5% 15.8% 1.0% 1.0% 1.0% 1.0%
IP 3.4 – Local Coordination Module
Description: Specification and logical design of the software module for local
coordination (workflow-based), including the implementation approach,
interfacing rules, supporting information models, illustrative examples
(demonstrator-related), assessment of results, and a prototype
implementation.
Criteria to define levels of contribution:
PRODNET approach: Example 3
©L. M. Camarinha-Matos, 2009-2012
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Criteria to define levels of contribution:
1. Software specification and design. [20 %]
2. Interfacing specification. [20 %]
3. Example of workflow plans and assessment. [5 %]
4. Prototype development. [40 %]
5. Technical coordination of activity. [15 %]
Table of
contributions:
Partner 1Partner 5Partner 2Partner 6Partner 7 Partner 4 Partner 8 Partner 9 Partner 3
IP3.4- 1 20% 100%
IP3.4- 2 20% 40% 15% 20% 25%
IP3.4- 3 5% 11% 11% 11% 11% 11% 11% 11% 11% 11%
IP3.4- 4 40% 100%
IP3.4- 5 15% 100%
IP3.4 Level 0.6% 83.6% 3.6% 4.6% 5.6% 0.6% 0.6% 0.6% 0.6%
4. IP EXPLOITATION
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4. IP EXPLOITATION
Although R&D is a very important phase in the innovation process,
the post-research phase of transforming the created knowledge into
products requires considerable efforts and investments
Productization process:
robust re-implementation of components, application of quality
procedures and other regulations, documentation development,
training materials development, systems integration, marketing
PRODNET approach: Exploitation
©L. M. Camarinha-Matos, 2009-2012
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training materials development, systems integration, marketing
planning, etc.
Identification of roles and responsibilities in the full life cycle of the product
Understanding the nature and role of academic institutions vs. industry
organizations
The distribution of benefits has to take into account not only the initial
contribution to the IP, but also the role played in the subsequent phases.
Evolution of IP exploitation
©L. M. Camarinha-Matos, 2009-2012
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[Kamiyama et al. 2006]
Receipts from international licensing
©L. M. Camarinha-Matos, 2009-2012
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[Kamiyama et al. 2006]
Comparison
of the three
main
quantitative
patent
valuation
approach
©L. M. Camarinha-Matos, 2009-2012
48
[Kamiyama et al. 2006]
1. By law (e.g. the Patents Act (1977) and the Copyright, Designs and Patents Act
(1988)) the University owns the intellectual property rights (IPR) generated by its
employees, provided that these are developed in the course of their normal duties.
This applies to all employees, and in the case of registered students is covered under
the policy for student IP.
The University has a policy to reward and encourage employees to bring forward new
inventions and developments and to share with them, and the Colleges, the proceeds
IP developed in public institutions
Example: University of Aberdeen, UK
©L. M. Camarinha-Matos, 2009-2012
49
inventions and developments and to share with them, and the Colleges, the proceeds
of exploitation. This policy is reflected within this document.
6. Net income from licensing or sale of technology (i.e. after all IP protection and
exploitation costs have been met) is shared 1/3 to the inventor(s) (employees or
students who have assigned their intellectual property rights to the University), 1/3
to the Colleges(s) and 1/3 to be retained centrally for strategic purposes. The
inventor’s share may be taken as a personal reward, in which case it is subject to
income tax and additional National Insurance payments, or it can be put into a
nominated discretionary account according the normal University procedures for
discretionary funds.
Example: University of Ulster, UK
IP developed in public institutions
©L. M. Camarinha-Matos, 2009-2012
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[Weir, 2008]
IP developed in public institutions
Example: University of Porto, PT
The University keeps the ownership of the IP generated by its academic
staff, researchers and other employees
... But rewards them with 60% of the net profits !
©L. M. Camarinha-Matos, 2009-2012
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Industrial Property
In cases where the item of industrial property gives rise to profitable commercial
exploitation, either through the granting of licences for its exploitation or through its
sale, any revenue will, in the first instance, be used to reimburse up to 100% the costs
borne by IST.
Once the above costs have been covered, either the inventor(s) are under an obligation
to disclose or not, 50% of the revenue will go to IST and 50% to the inventor(s).
Example: IST, PT
IP developed in public institutions
Example: New University of Lisbon, PT
The University keeps the ownership of the IP generated by its members in the
context of any research or teaching activity
... Rewards them with 30-55% of the net profits
depending on how profitable it is!
... The amounts can be negotiated between the inventor
and the university
©L. M. Camarinha-Matos, 2009-2012
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and the university
University members must inform the University, within 3 months, of any
invention / creation that can be subject to IPR protection.
Regulation Nº 15 542/2005
28 June 2005 (Rector)
DR Nº 136, 18 July 2005
Author rights (literary, artistic, multimedia, computer programs, ... ) belong to the author.
IP ... FCT-UNL
©L. M. Camarinha-Matos, 2009-2012
53http://sites.fct.unl.pt/tto/pages/inventors
Camarinha-Matos, L.M.; Afsarmanesh, H. (2000). A systematic approach to IPR definition in cooperative
projects. In Proceedings of PRO-VE 2000 – 2nd IFIP Working Conference on Infrastructures for Virtual
Enterprises, Kluwer Academic Publishers, ISBN 0-7923-7205-0, pp.465-476, Florianopolis, Brazil, 4-6 Dec 2000.
Kamiyama, S.; Sheehan, J.; Martinez, C. (2006). VALUATION AND EXPLOITATION OF INTELLECTUAL
PROPERTY STI WORKING PAPER 2006/5 Statistical Analysis of Science, Technology and Industry, OECD,http://www.oecd.org/dataoecd/62/52/37031481.pdf
Nega, E. (2005) - Emerging IPR issues in the information economy. Emerging IPR issues in the information economy.http://www.uneca.org/codi/codi4/ICT/Day2-April26/EskedarNega.ppt
©L. M. Camarinha-Matos, 2009-2012
54http://www.uneca.org/codi/codi4/ICT/Day2-April26/EskedarNega.ppt
WIPO – Understanding Intellectual Propertyhttp://www.wipo.int/freepublications/en/intproperty/895/wipo_pub_895.pdf
WIPO - Understanding Copyright and Related Rightshttp://www.wipo.int/freepublications/en/intproperty/909/wipo_pub_909.pdf
European Commission (2007) - Guide to Intellectual Property Rules for FP7 projects
ftp://ftp.cordis.europa.eu/pub/fp7/docs/ipr_en.pdf
Weir, D. (2008) - Intellectual Property – Protection and exploitation at the University of Ulsterhttp://www.infm.ulst.ac.uk/~ammarb/seminars/IP%20protection%20and%20exploitation%20at%20UU.ppt
doc_716685169.pdf