Historically, many public sector organisations have not paid sufficient attention to the way in which they create and interact with intellectual property (IP). In recent years, with increased opportunity for the public sector to outsource solutions and to commercialise their activity, the need for the public sector to embrace IP has become even more important.
In this post, we look at some common mistakes which could prohibit an organisation making the most of the goods or services they purchase; capitalising on their investments; or even commercialising their offering.
Be careful of free online tools, platforms and services
With ever decreasing budgets, it can be tempting to use free online tools where possible. From maps, to document exchanges, to data storage, the list of free tools available is ever expanding. However, whilst these tools may be ‘free’ in the sense that you do not have to pay to use them, there are still restrictions and obligations in terms of their use.
The terms and conditions buried on the sites which offer these tools can make for interesting reading. It is not uncommon to see provisions buried in the small print which could cause real headaches for a public sector body.
For example, provisions such as the following are not uncommon:
- That any data upload can be shared;
- That the provider can use any IP you upload, that it can be circulated and used by the site provider and others;
- The provider making no promises as to the security or GDPR compliance of the tool; and
- That any data may be transferred outside the EU.
It is not hard to see how such provisions could put you in breach of your GDPR obligations; breach warranties with any software provider; and upset users.
Organisations are often surprised at how draconian the terms associated with free services can be, so take care to check them carefully. Sometimes the financial saving of using a free tool is not worth the risk and you may need to look at paid solutions.
IP issues when outsourcing
Whatever you are outsourcing, from PR to a software build; from a cloud solution to a new logo; it is almost inevitable that the person you instruct will create IP whilst working on your project.
The risk here is that, when a sub-contractor creates something on your behalf, be it a new logo, software code, or even a database, they will own the copyright in it, unless there is a written agreement to the contrary.
This matters because if you do not own the copyright, you will not have total freedom to use the content. You also will not be able to demonstrate to stakeholders that your investment has generated assets for your organisation; something which stakeholders are increasingly looking for.
This issue is easily sorted by making sure you have written assignments and good protocols in place for recording what IP is generated, by whom and when.
Many public sector organisations neglect to look at their trade mark position. This may be because the term ‘trade mark’ suggests that it only applies if you are ‘trading’ in the traditional sense. Indeed, this used to be the case but some years ago the law changed to allow public sector bodies, charities, and others not ‘trading’ in the traditional sense, to register their trade marks.
This was a positive change as it enabled the public sector to take advantage of the powerful rights offered by trade mark registrations.
Trade mark registrations are useful to the public sector for a range of reasons, including:
- They help you control your reputation, including online;
- They can help offer security to your users as to the quality you provide;
- They can be licensed out efficiently, possibly in ways which can generate remuneration;
- Should a service be commercialised or otherwise spun out, it will be easy to transfer the brand at the same time; and
- Should someone register the same or a similar trade mark before you, you could be forced to go through an expensive rebrand.
The registration process takes around 4-6 months in the UK but by the end of it, if successful, you will have a powerful right which can last forever, provided you pay the renewal fees.
This automatic right protects the effort that goes into creating a database. It enables the rights owner to prevent unauthorised use or extraction of data from the database.
Just like in other walks of life, public sector bodies will interact with databases daily and when they do so, they are interacting with database rights.
There are two angles to consider here: firstly, when you use data from a third party database, you must make sure you have the necessary permissions. Secondly, where you collate data in to a database (and you meet the requisite requirements), you will generate a database right. If carefully managed, this right can enable you to grant permissions to third parties to access that data and perhaps even to commercialise it. Naturally, this needs to be balanced with any statutory duties, not least those connected with data protection.
Just as important, checking that you have the necessary permissions to use data is critical. As the database right is automatic, there are no registrations you can check. It’s important that you do your research before using a dataset (to check you can use if in the way you want) and make sure your contract with the person giving you access sufficiently covers you.
Open source code
This applies whenever you buy in or commission the development of software.
Many developers use open source code (for more on this read our previous article). If they do, it’s important to understand the implications of this. For example, open source software can be less secure (making it harder to meet your GDPR obligations), so you will need to consider the types of data you will want to be using the software with. You’ll also need to consider whether you want to own the software – see point 2 for more on this. If you want to be able to commercialise it, open source can be a blocker.
It is important to understand the implications of using open source and to balance these with any potential cost savings. Be upfront with any developer and make your position clear at the start of any tender process.
To wrap up
The last two decades have seen significant changes in the ways many public sector bodies operate. With this change has come a shift in thinking, as a more corporate mind set positions itself at the fore. As part of this, to ensure public sector bodies do not come unstuck and that they are able to take full advantage of their innovations, it is important that IP runs through all aspects of the organisation’s operations; from procurement, through to commission, from IT, to PR and reputation management; IP has a key role to play.