I am a Latvian computer science engineer and for the past few years I developed software prototypes in different research organisations and universities in several EU countries. My research area has market relevance and I wanted to take advantage of that. I am eager to start my own software application business in Latvia. I would like to reuse the results and ideas that I developed whilst working for universities and research institutions. I want to know if I can commercialise my past ideas and research results for my own business. What are my rights regarding my work and ideas?
For the sake of clarity, I spent 3 years at a university in France as a PhD student, with a paid fellowship. I was never asked to sign any contract. During the next 2 years I was employed by the same university while I finished my PhD. My employment contract stated that the results of my research “shall belong to” the university. Later I continued my research and created an innovative software package in a publicly-funded research institute in Rome. This time, my contract included no IP clauses at all.
To determine your rights we will present the treatment of your ideas and results separately: first we will look at the IP rights around your research results.
Firstly, information concerning the ownership of the results of your research activities can be concluded directly from the agreements that were signed between you and the respective university and research institution: their purpose was to regulate your reciprocal relationships, rights and obligations. The ownership of the software developed derives from what was agreed between the parties in those agreements. But if this agreement remains silent on the attribution of ownership, or if no such agreement exists, as was initially your case at the University in France, the default provisions of the respective national law and the university’s internal IP policy (if any) determine your specific rights in the research results.
In many member states of the European Union the results of research are considered as owned by the institution in which they were developed. In other words, if your research was done in the course of an employment relationship, and within the scope of an employee’s duties, then the ownership of the results will often belong to the university or to the research institution and not to you as a researcher.
Bearing this in mind, it may be that the work you developed during your time as a PhD student, during the first 3-year period at the technical university in France, belongs to the University – this would need to be checked with a specialist of French IP law. Furthermore, your last two years at the French university were carried out under an employment contract which clarified the ownership of your work – by signing this contract, you agreed to the ownership of your work being vested in the university. Thus, offering such works as your own and commercialising them is likely to result in an infringement of the university’s intellectual property rights.
As you can see, there is so far no global harmonisation in Europe as to the ownership of inventions developed in the course of work or research. However, small areas of law have been partially harmonised already. In the field of software, a European directive (2009/24/EC) provides that, when software is created by an employee in the execution of his duties or following the instructions given by his employer, the employer is exclusively entitled to exercise the economic rights in the program created, unless the employment contract provides otherwise. This rule seems relevant to us with regard to the work carried out in Italy: as far as we understand, you were employed by a research institution in Rome for the purpose of developing software, but your contract included no IP provisions at all. Since your contract was silent on this point, the relevant national law – as harmonised by the directive – applies, which means that the Italian research institution probably has the exclusive right to exploit the software which you created while you were there. This would again need to be checked with a legal professional specialising in Italian IP law, who will be able to explain how Italian law deals with such cases.
Although the issue of reusing results of the research you conducted whilst at the university and later research institution seems relatively clear, there still remains a problem of reusing the ideas behind the results you created.
As you may know, copyright law protects only the expression of ideas (e.g. here it is expressed in the form of source code). Ideas are considered as being part of the public domain and therefore no one can legally have a monopoly on an idea. Thus, the ideas of a programmer, implemented in a computer program, are not copyrightable. It is the software code, i.e. the expression, that is protected by copyright.
There are, however, some things that fall somewhere in between the mere idea and its introduction into a final software product, such as the structure of a program, the programming language, and the format of data files used in a computer program in order to exploit certain of its functions, etc. It seems that in some of these cases it is quite difficult to draw a clear line between a programmer’s activity infringing copyright and the lawful activity of a skilled programmer. On the one hand, there have been cases in which the software product’s structure has been considered by courts to be copyrightable. On the other hand, in one of its last decisions the European Court of Justice ruled that “neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program and, as such, are not protected by copyright in computer programs.” The Court stated that there is no copyright infringement when a company does not have access to the code of the computer program but “merely studied, observed and tested” that program in order to reproduce its functionality in a subsequent program.
It seems that the position of a programmer who changes job or who changes from being employed to self-employed is especially difficult: how to develop your own business without infringing the copyright of the previous institutions you had worked for? Even if you do not directly reuse research results owned by your previous employers, but only follow the ideas behind them and implement them in the software packages created in your own company, it is not clear whether infringement occurs or not. Indeed, some cases of copyright infringement have proven subconscious copying from memory – copying without being consciously aware of copying. If it comes to litigation, a judge would have experts compare the previous work with the new software created by the same author to assess the similarity between the software, with the purpose of judging any copyrightable element having been copied. Obviously, the result would depend on the applicable law and the specificities of the individual case.