HKUST Business School2International Patents: General Rules Paris Convention (over 100 countries) “National treatment” assures all patent holders in acountry the same treatment whether they areforeign or domestic patent holders. This does NOT extend rights of patents in onecountry to another country. Patents must be filedin each country separately. Priority of filing in every country considered to besame as initial patent filing; 12 month limitation. Does not require same application process.
HKUST Business School3International Patents: PCT Patent Cooperation Treaty (1970 / 1975) Goal is to save time and money for governmentsand patent applicants by streamlining internationalpatent application processes Allows filing “international patent” with countriesfor which patent is applied selected from list. International central repository receivesapplication and distributes information.International patent search saves time for each countryLooks to see if technology is new and non-obvious
HKUST Business School4International Patents: GATT / WTO Uruguay round of GATT (1986) reachedagreement on intellectual property (TRIPS) Trade-Related Aspects of Intellectual PropertyRights (some similarities to Paris Convention) Most favored nations rights – no special deals. Universal minimum standards for lawsCan not exclude specific technologiesCan not show bias towards any locations of inventionMust provide protections for all patent holders in countryAt least 20 year protections for patent holders
HKUST Business School5International Issues and Differencesin Intellectual Property Law Four types of laws to consider US law UK / EC laws HK laws Rest of World Four areas of IP laws to be addressed Copyright Patent Trademark Other laws and means of protecting innovation
HKUST Business School6Patent International Issues Patent laws increasingly similar worldwide Treaties bringing patent life to same length Treaties under WTO requiring similar treatments However, registration of patent still requiredin every country, unlike with copyrights Registration process different in each country Costs of registration and process of registrationnot same in each country, and may not be thesame for citizens versus non-citizens of country
HKUST Business School7UK / EU Patent Law Differences UK and EC patent law formally prohibits: Patent of computer software Patent of business process or methods Both are allowed as patents in USA However, differences are less than they seem Some patents in UK and EC have been grantedfor software as “part of” a “technical innovation” Some patents for business process innovationswere granted which include “technical innovation”
HKUST Business School8Short Grace Period for Prior Use Patenting an invention in any country startsthe clock as a legal publication that createsprior usage unless patented within short time Must patent in every country where you wantpatent within one year of first patent being filed Some countries apply six months test Some countries have zero tolerance forpublication or patent in other countries prior toapplication Simultaneous applications recommended
HKUST Business School9When Patents Don’t Work Software – often can not qualify for patent Generally protected by a different type of IP Law Copyright, Trade Secret, Trademark Semiconductors – why not patent protection? How long does it take to get a patent? What is required to get patent issued? Small Businesses – can you afford to patent? Cost of getting patent Cost of ENFORCING PATENT
HKUST Business School10Copyright International Issues Laws for copyright are very similar worldwide Some differences in what is allowed “fair use” Some differences in penalties for violation Some differences in criminal code application HK Law versus USA laws Criminal act to sell ANY pirated goods in HK, butnot as easy to be subject to criminal law in USA Criminal act to USE any pirated software in anyform of business in Hong Kong (for firm and user)
HKUST Business School11International Trademark Issues The only international Trademark laws thatexist are EU laws related to EU trademarks Similar in some ways to US federal trademarks Requirements for trademark registration arenot the same from country to country Protections under trademark differ as well Overlap with copyright laws, which areinternationally recognized (to protect brand)
HKUST Business School12Other Laws Worth Considering Personal Privacy Laws Why might these laws affect innovation? Contract laws (especially for eCommerce) eCommerce Registration and Trademarks When is Trademark on internet in commerce? UK requires direct efforts to market to UKconsumers, but US does not have thisrequirement Trade Secret, Moral Rights, Design Rights Passing Off: Reputation, Goodwill, Custom
HKUST Business School13Personal Privacy Laws USA has relatively liberal privacy laws Medical information protected Video rental history protected Not much else is protected under US law Hong Kong has one of the most strictpersonal privacy laws in the world Can not publish list of church members withoutgetting permission in writing of all members EU Privacy laws stronger than US laws
HKUST Business School15Reverse Engineering UnderPatents versus Trade Secrets Patents allows protection of theimplementation of a system or machine. Publication of ideas and processes required Competition from overlapping product not allowed Trade secret protects ideas which are notdisclosed in public from being “stolen” Reverse engineering allowed Introduction of competing product or processallowed, if acquired or developed by legal means
HKUST Business School16Trade Secret ReverseEngineering Trade Secret does not protect companiesfrom having their products broken apart andreverse engineered to replicate their design Patents or copyrights can provide someprotection against reverse engineering, ascan the semiconductor chip act, but there isno protection at all under trade secrets The only protection trade secret provides isagainst using information disclosed illegally
HKUST Business School17What is Reverse Engineering? Discovery of how a product is made byworking backward to find the method bywhich it was developed or could be replicated Product must be acquired by legal means forreverse engineering to be considered legal De-compilation of computer program is legal Patents may be able to stop reverseengineering, but copyright and trade secretwill not stop reverse engineering. Why?
HKUST Business School18Why Permit ReverseEngineering? Most copyrighted works reveal their contentsto anyone seeking to read or view them,which makes reverse engineering irrelevant Software is a special case which couldinvolve using copyright plus trade secret viause of compiled code if decompilation isprohibited to grant protections stronger thanpatent or copyright to functions neverexpected to be protected in current IP lawsworldwide.
HKUST Business School19Reverse Engineering Software Decompilation of source code into assemblylanguage, and then into human readablecode is expensive and time consuming Imperfect results likely Requires making one or more intermediate copies,which might be violation of copyright laws Alternative approach to reverse engineeringis to view code as a black box and watchwhat comes out in response to a variety ofinputs
HKUST Business School20Encryption and Reverse Engineering One of the best ways to legally stop reverseengineering of software is to combineencryption of data and processes withcompiled code distribution of programs. Make simple and fast encryption / decryptionpart of the compiled program code itself. DMCA protections dramatically increaseprotection of compiled code.
HKUST Business School21Microcode and Reverse Engineering Reverse engineering of chips, including codeembedded in chips as microcode, is permittedunder trade secret and copyright law. Patents provide greater protection, but it israre for computer chips to be patented. Why are patents rare for electronic circuit chips? Can you encrypt the microcode on a chip? How could this be done, and why would you wantto do this anyway?