Updated: Mar 16, 2021
The question of software intellectual property arises regularly. This article explains the principle and the process. These steps taken will make it possible to approach the transfer efficiently or not.
Intellectual property is a field of law bringing together all the exclusive prerogatives (advantages) enjoyed by those who hold the rights to an intellectual creation. The software, although being an innovative technological object, enjoys copyright protection. This protection, originally intended for artistic creations and although provided with rules specifically adapted for software, requires special attention. This makes the software a unique element in the intangible heritage of the company.
R&D must take care of intellectual property issues from the development of software. It is therefore interesting that all the players involved in scientific software development projects implement a certain number of good practices with the help of the Innovation Manager. These good practices will make it possible, on the one hand, to ensure that the issues related to copyright are well anticipated and that the software can subsequently be distributed without legal blocking, and, on the other hand, to constitute useful tools for managing research projects.
Upstream: best practices in research teams (developers)
Unlike other copyrightable works, software is a constantly evolving creation. It is rare to consider software resulting from an R&D as definitively successful. Developers are therefore advised to follow up on its development, by using a laboratory notebook*. This will not only make it possible to monitor elements relating to intellectual property (contributions by authors, use of external software bricks, etc.) but also to manage the versions of the software within the framework of the scientific project.
If copyright applies from the very start of creation, it is important to determine when the software is considered sufficiently mature in order to make a first inventory of the applicable intellectual property rights. As this maturity is not necessarily easy to establish, researchers are recommended to monitor the appearance of certain events in the "life" of the software (production of a major stable version, departure of an author with a significant contribution, use of the software in a contract, desire for free distribution, etc.) to begin this first assessment which will serve as a basis for its future versions.
Cooperation between development, legal and developers
This inventory is a necessary prerequisite before considering a distribution of the software. It is also a moment of privileged exchanges between researchers, development services and legal services. The good practices put in place by the researchers will make it possible to precisely identify the authors and the holders of the economic rights (these rights belonging in principle to the author of the creation and by exception, for software, automatically devolved to the establishment. employer of the author when they relate to valuable work carried out by the author employed by a company as part of his duties).
This list obtained, the contributions of each in the creation of the software will be able to be established. This step is carried out by the researchers with the support of the services of their respective organizations. The weight of contributions is determined according to several criteria (code development, drafting of documentation, writing of technical specifications, software architecture, scientific value / originality of contributions, etc.) and it is then validated by the various research authors and their employer establishments. Beyond the sharing of the ownership shares between the institutions holding the copyright, the calculation of the contributions is also very important in the case where the use of the software generates royalties and therefore an interest for the research authors.
The means used by researchers to monitor software development must also make it possible to precisely identify the software bricks used. Software is indeed complex objects often using libraries or other pre-existing software components. The integration of these bricks is not without consequences on the future use of the software. When it comes to elements under free or open source distribution, the legal analysis of the licenses will make it possible to verify their compatibility and the possible obligation to subject the distribution of all the software to a specific license. The researcher is involved in this analysis, in particular to understand the technical links established between these pre-existing bricks and the software as a whole, these links being decisive in verifying the application of licenses.
The software development context should also be considered. If the development took place in whole or in part within the framework of a contract, it is necessary to check the applicable clauses and the rights of any contractual partners.
In the event that there are multiple rights holders, an indivision agreement is negotiated in order to regulate the rules of this shared ownership (validation of ownership shares, choice of an agent to deposit the software with '' a specialized third party, develop it and monitor its future developments). In particular, the partners concerned agree to endorse the choice of a license under which the software will be distributed. This choice will be made according to the future use of the software desired by the researchers and the policy of the company.
Downstream: secure software distribution
The management of intellectual property, and more particularly of copyright, is therefore not trivial for the conduct of research projects leading to software developments. It must not only be planned from the start of the project but must also be subject to regular monitoring. It will impact the possible modes of distribution of software and their uses by researchers. It is also necessary to legally secure the company that communicates them and the partners who choose to use them.
Domain IT and data transformation
Valorization and innovation Consultant
Field experience within the devops of innovative SME
*Practise in academic research
Source INRIA, Magali FITZGIBBON/ Luc GRATEAU
November 15, 2020