National Smartcard Project Work Package 8 – Intellectual Property Report

Format of the Report Executive Summary Introduction Body of Report Appendix – GNU General Public Licence Intellectual Property Report

Executive Summary The Executive Summary sets out: what is considered in the Intellectual Property Report, including: the Intellectual Property Rights (“IPR”) issues associated with a Smartcard Scheme including copyright, trade marks and patents; some associated legal and commercial issues, such as joint ownership of IPR and the status of Crown Copyright; and the use of Open Source technology solutions in a Smartcard Scheme. a summary of the conclusions reached in each section of the Intellectual Property Report.

Introduction The Introduction provides a background to the nature and use of IPR generally It also introduces the Baker Report, which details the importance of properly managing IPR within areas of the Public Sector

The sections The report considers: Copyright Trade marks Patents Joint ownership of IPR Crown Copyright Open Source Software

Copyright Copyright is an unregistered IPR and arises automatically in any relevant work Copyright is crucial to technology projects, as it is often the only IPR which protects software Copyright is likely to be the most prevalent and most widely used IPR in a Smartcard Scheme As an unregistered right copyright offers relatively weak protection

Copyright Copyright protection initially extends to the “author” of the work – usually the person creating it. However, another party may become the “owner” of the IPR. In employment situations the employer is often the first owner of any work created by an employee. Ownership of copyright can be transferred by assignment, or a right to use can be licensed.

Copyright Copyright will arise in a variety of works in a Smartcard Scheme, including: Software (bespoke and ‘packaged’) Supplier documents (manuals, guides) Technical documents (drawings, schemes) Commercial documents (specifications, reports) The Card Issuer must ensure that it protects its interests in copyright which it owns, and obtains appropriate rights in third party copyright which it requires.

Trade marks A trade mark is a sign or symbol (may include words) which can be represented graphically It distinguishes the goods and services of one supplier from those of another It must be distinctive and non-descriptive It is a registrable right, offering reasonably strong protection Trade marks can be assigned and licensed

Trade marks Trade marks fulfil an essential role in brand protection They are key to creating brand recognition and loyalty Strong trade marks enhance product and corporate image

Trade marks Trade marks may arise in a Smartcard Scheme in a variety of ways: For brand concepts designed to promote individual Schemes (logos, names) For brand concepts designed to promote Schemes nationally (logos, names) In respect of third party goods and services incorporated in the Scheme The Card Issuer should ensure that trade mark protection is sought early in brand development, and that it has a licence to use any appropriate third party trade marks.

Patents A patent is a monopoly right in a new invention which is: Novel Involves an inventive step Is capable of industrial application, and Is not excluded from patentability by relevant laws It is a registrable right with strong protection Patents can be assigned and licensed

Patents Patents may arise in a Smartcard Scheme in the following areas: Where Technology Suppliers develop new systems Where any other party develops a patentable invention Where any technology used incorporates a third party patent Card Issuers should ensure that they obtain relevant rights in all patents developed and used in a Scheme, protecting their right to exploit patents in future wherever relevant.

Joint ownership of IPR It is possible that in the course of developing Schemes a number of parties to a Scheme will jointly own IPR Parties may jointly develop something in which IPR exists Parties may require to jointly own IPR in something which is developed Parties may require to jointly own IPR in something which is incorporated into the Scheme Joint owners of IPR by default hold their rights as tenants in common, not joint tenants

Joint Ownership of IPR There are limits on the way in which joint owners can exploit IPR They may have to seek the consent of other owners before copying, distributing or using the IPR They may be restricted in the way in which they protect and dispose of the IPR

Joint Ownership of IPR Joint ownership may also arise between different Card Issuers developing different Schemes Card Issuers may wish to pool their resources and share developments This should create uniformity and interoperability between Schemes, increasing the overall benefit of each The group will have to agree how they manage and exploit any joint IPR

Crown Copyright The Crown in the UK owns preferential rights in copyright of works created by employees This is not likely to extend to Local Authorities, although the position should be reviewed with the Controller of HMSO However, Card Issuers should ensure that they have appropriate licences to use anything which in which Crown Copyright exists

Open Source Software Open Source Software requires licensors of software to make the human-readable source code available to others Open Source software is often considered ‘free’ However this is freedom only in terms of access to the source code, and developers can charge money for the software

Open Source Software The OGC has adopted a policy that promotes Open Source Software alongside proprietary software Therefore Card Issuers should consider using Open Source software in terms of best value It is important to consider the licences which are used for Open Source software, tracking these to ensure that you have appropriate rights to use the software

Open Source Software The use of Open Source software is currently attracting attention because of the case of SCO –v- IBM (and others) Certain users of software, who considered themselves free to use the software, are facing claims from SCO that they have infringed copyright in the software Therefore, Open Source software is not entirely risk free