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How to Protect an Invention or Technology in the Defense Industry?
How to Protect an Invention or Technology in the Defense Industry?
The success of a company or technology in the defense industry heavily depends on the protection of intellectual property rights. Key considerations include copyright, trade secret protection, and patent-related issues, which are explained by technology experts from the law firm RASK, Timo Kullerkupp and Mikk Ilves.
The most critical aspect is understanding what intellectual property issues arise in relation to the product or technology in question and how to protect them. The key focus areas include copyright, trade secret protection, and patents.
The most critical aspect is understanding what intellectual property issues arise in relation to the product or technology in question and how to protect them. The key focus areas include copyright, trade secret protection, and patents.
Copyright
Copyright is established upon the creation of a work, and the author is the individual or individuals who created it. Essentially, this means that whenever something is created, copyright automatically belongs to the person or people who made it. Therefore, it is crucial to regulate copyright matters from the early stages of a company or product. Depending on the development stage of the product, copyright protection may involve one of the following:
1. Regulating Copyright in Employment Contracts
If the product is in its early stages, it may be sufficient to regulate copyright matters by including a detailed provision in employment contracts between employees and the company. This provision should ensure the transfer of economic rights to the employer and grant a license for the execution of the author’s personal rights.
2. Retroactive Transfer of Copyright
If intellectual property issues were not addressed at the right time, it may be necessary to transfer copyrights retroactively. This means that the creator of the work transfers the economic rights to the company or grants a license for personal rights afterward.
It is essential to understand that copyright for works created by employees, founders, or other contributors does not automatically transfer to the company—it must be formally assigned.
1. Regulating Copyright in Employment Contracts
If the product is in its early stages, it may be sufficient to regulate copyright matters by including a detailed provision in employment contracts between employees and the company. This provision should ensure the transfer of economic rights to the employer and grant a license for the execution of the author’s personal rights.
2. Retroactive Transfer of Copyright
If intellectual property issues were not addressed at the right time, it may be necessary to transfer copyrights retroactively. This means that the creator of the work transfers the economic rights to the company or grants a license for personal rights afterward.
It is essential to understand that copyright for works created by employees, founders, or other contributors does not automatically transfer to the company—it must be formally assigned.
Trade Secret Protection
A trade secret is information that is not generally known or easily accessible to individuals who usually deal with such information. Additionally, it must have commercial value due to its secrecy, and the person who legally controls it must take reasonable steps, under the circumstances, to keep it secret.
A company has the right to determine what information qualifies as a trade secret. However, company must also communicate this information to employees in writing.
A company has the right to determine what information qualifies as a trade secret. However, company must also communicate this information to employees in writing.
To protect trade secrets, a company should:
• Map information that could be considered a trade secret. Not all information is a trade secret. According to court practice, publicly available information or data that can be easily obtained from a supplier does not qualify as a trade secret.
• Clearly define trade secrets within the company. It is important to specify trade secrets as precisely as possible since, in the event of a dispute, the employer must prove that the information qualifies as a trade secret.
• Inform employees about trade secrets in writing. Employees should be made aware of trade secrets in writing, and obtaining their signatures as confirmation is advisable. Alternatively, trade secret regulations can be included as an appendix to the employment contract.
• Take measures to keep the trade secret confidential. As mentioned, the employer must have taken measures to keep the trade secret confidential. Such measures include, for example, access restrictions.
It is important to understand that trade secrets and confidential information are not the same. Any information that a company wants to keep private and control should be explicitly defined separately.
• Map information that could be considered a trade secret. Not all information is a trade secret. According to court practice, publicly available information or data that can be easily obtained from a supplier does not qualify as a trade secret.
• Clearly define trade secrets within the company. It is important to specify trade secrets as precisely as possible since, in the event of a dispute, the employer must prove that the information qualifies as a trade secret.
• Inform employees about trade secrets in writing. Employees should be made aware of trade secrets in writing, and obtaining their signatures as confirmation is advisable. Alternatively, trade secret regulations can be included as an appendix to the employment contract.
• Take measures to keep the trade secret confidential. As mentioned, the employer must have taken measures to keep the trade secret confidential. Such measures include, for example, access restrictions.
It is important to understand that trade secrets and confidential information are not the same. Any information that a company wants to keep private and control should be explicitly defined separately.
Patent
Applying for a patent is considered when the product is a device, method, substance or a combination thereof, and it is new, involves an inventive step and is industrially applicable. In such a case, the author and their legal successor has the right to apply for a patent. This essentially means that the patent description of the product or invention is made publicly available, but no one may use it without the patent owner's permission during the validity of the patent. In other words, the patent owner receives legal protection.
To apply for a patent, the author of the product must:
• Keep the invention secret before filing a patent application. A product can only be patented if it is new and inventive.
• Prepare the documents necessary for filing a patent application. A patent application must include, for example, a clear, precise and concise verbal expression of the nature of the invention (patent claims) and a description of the invention, in which the nature of the invention is disclosed so precisely and clearly that a person skilled in the art can carry out the invention. The application must also include a drawing or other illustrative material referred to in the description of the invention or the patent claims. It is important to note that, among other things, the referenced documents determine the content and scope of the patent protection. Therefore, they must be drafted extremely thoroughly.
• Submit a patent application to the Patent Office. This can be done in person, electronically or by mail.
• Pay the state fee at the rate provided by law.
• Act fast. Since the invention cannot be publicly used before filing the patent application, it is advisable to submit the application as soon as possible to obtain protection and begin commercialization. Additionally, there is a risk that someone else may file a similar application first, which could result in the loss of rights to the product.
To apply for a patent, the author of the product must:
• Keep the invention secret before filing a patent application. A product can only be patented if it is new and inventive.
• Prepare the documents necessary for filing a patent application. A patent application must include, for example, a clear, precise and concise verbal expression of the nature of the invention (patent claims) and a description of the invention, in which the nature of the invention is disclosed so precisely and clearly that a person skilled in the art can carry out the invention. The application must also include a drawing or other illustrative material referred to in the description of the invention or the patent claims. It is important to note that, among other things, the referenced documents determine the content and scope of the patent protection. Therefore, they must be drafted extremely thoroughly.
• Submit a patent application to the Patent Office. This can be done in person, electronically or by mail.
• Pay the state fee at the rate provided by law.
• Act fast. Since the invention cannot be publicly used before filing the patent application, it is advisable to submit the application as soon as possible to obtain protection and begin commercialization. Additionally, there is a risk that someone else may file a similar application first, which could result in the loss of rights to the product.
Classified Patent
Unlike other products or inventions, defense industry products may, under certain criteria, be classified as inventions of national security significance. In such cases, the Patent Office may classify the invention as secret, meaning that its patent description will not be publicly available. Additionally, the patent holder’s ability to use and monetize the product may be restricted.
The period of classification of an invention depends on its importance to national defense. On the positive side, the law provides for the right of patent owners and authors to receive compensation for the restrictions associated with the classification of an invention. The amount of the compensation depends on the expected use of the invention while classified and the commercial benefit that the author or patent owner would expect to receive from the use of the invention if the invention were not classified.
Therefore, it is crucial not to commercialize an invention before filing a patent application, as doing so may eliminate legal protection. However, a patent may not always be the most important way to monetize inventions, especially in defense technology. If third-party services are used for manufacturing, confidentiality agreements can be an alternative way to prevent information from leaking.
The period of classification of an invention depends on its importance to national defense. On the positive side, the law provides for the right of patent owners and authors to receive compensation for the restrictions associated with the classification of an invention. The amount of the compensation depends on the expected use of the invention while classified and the commercial benefit that the author or patent owner would expect to receive from the use of the invention if the invention were not classified.
Therefore, it is crucial not to commercialize an invention before filing a patent application, as doing so may eliminate legal protection. However, a patent may not always be the most important way to monetize inventions, especially in defense technology. If third-party services are used for manufacturing, confidentiality agreements can be an alternative way to prevent information from leaking.