Cooperative IP
I
am developing ideas and prototypes in the new field of airborne wind
energy devices. These "kites" which make power promise to reduce the
cost of manufacturing electricity and do it in an environmentally
friendly way.
My designs are simple elegant kite structures. And I freely share my ideas under with creative commons licensing.
I
don't believe in the legality of patents, I believe that all knowledge
should be shared. Even though it was an inventive step to create my
designs, they work in the natural phenomenon of wind energy and with
the standard historical knowledge of kite motions.... they are just
configured in a novel more useful way.
I
would like my designs to be freely available for small community groups
and societies to use. I do not like the idea of anyone who holds
patents using my designs solely for their own benefit.
Is there a recognised way of licensing to ensure that anyone using my designs has the interests of their community at heart?
16 January 2012
Private & Confidential
Dear
Licensing intellectual property rights in airborne wind energy devices
Thank
you for your query concerning licensing your airborne wind energy
("kite") designs to small community groups and societies. You
have asked me to advise on:
From
your query I understand that you design kite structures, which you have
configured in a novel way to use kite motion and wind energy to
manufacture electricity in a cheaper and more environmentally friendly
way. You believe that knowledge should be shared and do not want
anyone to profit individually from your designs. You are
currently licensing your designs under Creative Commons licensing.
I have based my advice on these facts.
The law
The relevant intellectual property rights
Various intellectual property rights, including copyright and patent, may subsist in your kite designs.
a) Copyright
Copyright
is an intellectual property right that is owned by an author of an
original (i.e. one that has not been copied) literary, dramatic,
musical or artistic work. Whether or not a work qualifies for
protection can depend on whether the work is purely artistic or is also
functional. Copyright arises automatically on creation and ownership of
copyright in a work allows an author to prevent others from doing
certain things with the work.
It
is important to appreciate that copyright law is intended to prevent
copying but does not provide a monopoly; as such it does not matter if
a similar or identical work already exists before the creation of the
author's work or if someone independently creates the same work. The
other key point about copyright is that it seeks to protect the form of
expression of ideas and not the ideas themselves.
b) Unregistered design rights
A
UK Unregistered design right can protect the 3D shape of a design where
it is functional or artistic. This right exists automatically in the
design if the design is original. It lasts for 15 years from the end of
the calendar year in which the design was first created, or 10 years
from the design being made available for sale or hire. Note that this
right is only available to European nationals or those who market a
product using the design in the EU first.
Designs
may also be protected for a period of three years from first marketing
in the EU by an unregistered community design right. This right arises
automatically provided that the same criteria as that for registered
designs are satisfied (as discussed below).
Like
copyright unregistered design rights are only infringed where a design
is copied rather than being developed independently. They are not
monopoly rights.
c) Registered design rights
This
right relates to the visible, external appearance and shape of the
whole kite or part of the kite structure. This right may exist in
your design if the appearance of the design is new (i.e. has not been
created before) and has individual character as a result of its
features, and as long as the design features do not relate solely to
technical function. This right must be granted by the UK
Intellectual Property Office (UK IPO) to exist. On payment of a fee the
Office would check that the design satisfies the necessary criteria and
if so register the design. Once granted the right can exist for a
maximum of 25 years. There is also the option to have a European wide
design right by application to the Office for Harmonisation in the
Internal Market (OHIM).
Unlike
Unregistered design rights, this right offers monopoly protection such
that others cannot create products of similar design during this period
irrespective of whether they copied the registered design or came up
with the design independently. However, similarly to copyright and
unregistered rights the right cannot protect the technical idea behind
the design.
d) Patents
If
a process is new, inventive (i.e. not obvious) and capable of
industrial application, it can be protected by a patent. This
right must be registered at the UK IPO for a fee in order to offer
protection. A patent generally gives the owner a monopoly right
to use an invention for 20 years.
The intellectual property rights in your kite design
It
is likely that the design documents, such as the drawing or blueprint
of your kite design and the surface design of the kites would
automatically be protected by copyright. The lifetime of the copyright
in the design drawings would be 70 years following the death of the
author and in that of the surface designs 25 years from creation.
Whether or not copyright subsists in the 3D form of the designs will
depend on whether their purpose is artistic or functional. From your
description it seems that the design is functional rather than artistic
and therefore this would not be protected by copyright. In light of
this it is important to recognise that copyright would only be
infringed where the drawings themselves or surface designs were copied.
If someone uses your design drawings to create a 3D kite structure then
this will not be an infringement of copyright and so this could be done
without any licence. Design rights could protect the 3D structure of
the kite. Unregistered UK and EU design rights will probably exist
automatically provided the criteria discussed above are satisfied. If
someone copied the kite design this would then mean that they had
infringed this right.
The
most important point to recognise is that none of the intellectual
property rights which may currently exist in your design protect the
inventive idea behind your kite designs. To protect the inventive idea
a patent would be required.
Licensing the intellectual property rights in your kite design
In
order to use the intellectual property rights in your designs without
infringing a person would need your permission. This permission can be
granted in the form of a licence and you can state in the licence
particular terms of use. One term of use that you could include could
be that the licensee must only use the intellectual property rights for
the "interests of the community". However, in order to make sure
that the licence is enforceable it would be important to make sure that
this requirement is clearly defined. This could be done, for example,
by listing the type of things that would be considered to be
appropriate. In addition, you could consider a term which expressly
prohibits use of the intellectual property for personal commercial use
or financial profit.
Given
the nature of the intellectual property rights that subsist in your
designs, it is important to recognise the limitation of any such
licence. Firstly, because you only have intellectual property rights in
the design and NOT the inventive idea behind the kite design, the
inventive idea could be reproduced by someone without seeking your
permission and therefore without the need to be bound by a licence.
Secondly, because all of the rights that are in your design are
currently non-monopoly rights you cannot prevent someone who
independently comes up with the same design from using it.
Advice
You
mentioned that you are currently using a creative commons licence.
These licences generally only cover copyright. If this is the case then
anyone who uses your design drawings to create the 3D structures could
be infringing your design. To resolve this issue you should check if
the licence you are using currently includes a licence to use design
rights and if not extend it appropriately.
Based
on the details provided above you may wish to apply for a registered
design right to enhance the protection of your design.
In
order to prevent others from using the inventive idea behind your
designs outside your terms you would have to apply for patent
protection and then grant a patent licence on terms of use that you are
happy with. The problem is that you may not now be able to get patent
protection.
It
seems from your description that the inventive idea in the design has
already been publically disclosed. If this is the case then there will
no longer be the option to patent the invention because one of the
criteria to get patent protection is that an invention must be new. If
the idea has been made available to the public it will no longer be
deemed new. However, note that for the same reasons this also means
that nobody else should be able to patent the idea. It is advisable to
keep a record of when/ where the idea was first disclosed, since this
could be used to challenge the validity of any patent applied for over
the same idea by someone else. Such a challenge may incur legal costs,
but could be an important deterrent to prevent anyone who did manage to
get a patent covering the idea from trying to get licence fees from you
or those who use your design.
I
hope this information is useful. If you have any queries, or you
would like help on any other matter, please feel free to get in touch
with Own-it again.
Yours sincerely
The Own-it team
College of Law Disclaimer
This
one-off advice is prepared by the College of Law by volunteer students
supervised by solicitors/teaching staff. It is not a substitute
for legal advice provided by a specialist solicitor on a continuing
basis.
