19th December, 2018
When hackathon cooperation gives birth to a marvellous new solution, who owns the associated intellectual property rights? And can someone in the audience grab the new ideas in their own name? Taking IP into consideration from the start of the innovation contest to the debriefing is in every party’s interest.
The wide variety of innovation contests ranges from think tanks to huge mass gatherings providing unique opportunities - but also a number of risks easy to forget. It is a good idea for both the organisers and participants of the events to be aware of all the IP dimensions relating to the contest.
During hackathons, living labs, and other innovation contests, inventions and ideas spring up, and it is worth one’s while to anticipate the significance of protecting them and concluding the right kind of agreements, as well as the cooperation and commercialization taking place after the contest.
“The variety of innovation contests has grown, and they often result in major new solutions for the business operations of both the organizers as well as participants When a joint project has several parties and no written agreement exist, interests may come into conflict. The parties may have a differing view on where and for whom immaterial rights rightfully belong to, and what sort of compensation should be paid for them,” says Kolster’s European Patent Attorney, Sini-Maaria Mikkilä.
Mikkilä and Kolster’s Councel lawyer Hannes Kankaanpää give three pieces of advice to organizers and participants of open innovation contests. These guarantee that the contests provide the best possible benefits in a safe manner.
Innovations contests are usually entered with full of fire. It is, however, common to forget to give any closer thought to what the participation entails, what its goals are, and how the results will in the future be utilized.
One of the purposes of innovation contests is to use the results they produce commercially, following possible further development projects. It is often sufficient enough that the organizers draft the contest rules well and the participants familiarize themselves with them before making the decision to enter the contest. In particular, it must be made sure that the contest rules and the participant’s expectations are a good match. It is good to keep in mind that in different contests the rights of the results may be associated with very different rules.
In addition, in many cases it is important to draft clear agreements in writing in advance, if, for example, the participating team consists of employees from several organizations. The agreements need to consider, for example, whether existing information and IP are brought to the contest, such as patented inventions or software, and what access rights are granted to them and who owns the rights to ideas taking shape during the contest and the related IP,” says Hannes Kankaanpää.
If you take part in a contest during working hours, contracts of employment and employee invention guidelines are typically enough to cover innovation contest activities of employees. The agreements also need to take the future into account - that is, how to take IP into consideration, if you start to negotiate or implement further projects, pilots, or licensing with the organizing party.
The employer of a participant may also gain rights in connection with innovation contests. If your company or organization ofter participates innovation contests, it is worthwhile to consider drafting company-internal instructions.
“For example, they may set the guidelines for the situations when a company can and cannot take part in the contests. The instructions should also include details on the use of the employer’s property, tools, premises or software in the contests,” says Kankaanpää.
In a country the size of Finland cooperation is important, because bringing together different actors produces fresh ideas and huge potential for success. It is therefore possible to get at ideas which would not necessarily see the light of day within one company at all.
“On the other hand, in a global environment you must not be too naive. Before, during, or after contests, IP rights may be created such as inventions or materials of different kinds. When ideas or even concrete solutions are shared in a large event and publicly to an audience of a thousand people, the benefit from the results of ideas by others may end up somewhere else altogether than what the original plan was,” says Sini-Maaria Mikkilä.
Even though the participants of the event have an understanding of the rights, do not forget the protection of ideas and inventions. The contests may have a public closing event, or information may be published online, for example.
“It is therefore important to remember that if the rights have not been protected, any spectator or listener external to the contest may try as much as to protect the inventions,” says Mikkilä.
When the participating team has private individuals or representatives of several companies, very detailed agreement needs may surface. It extends from access rights relating to the results to utilizing existing material.
“More and more often the participants have immaterial rights that are introduced to the contest. So, the starting point is very rarely a completely blank slate,” say Mikkilä and Kankaanpää. As the idea of the contest is to develop rather a significant solution to a problem in a short period of time, it may prove to be inevitable to use them for implementing the solution.
When the contestants can also take part in the implementation of the inventions after ideation, new types of cooperation types emerge - and all participants have to see to the watertightness of their own agreements. The diverse interaction and cooperation have to be remembered in the agreements even before the contest starts.
For example, a main team taking part in a contest may mostly consist of employees of the same company, but they want an expert employed by another employer to join the team. In such a case, the employer companies must among themselves agree on taking part in the contest and the distribution of rights in the output of the participants, obviously taking the contest rules into consideration. If nothing has been agreed on, disputes will easily arise on who has done what and to whom the rights belong,” says Kankaanpää.
“It is important to reach clarity and balance where the parties benefit as much as possible from the contest, but the risks do not become too high for anyone,” Mikkilä says.
Innovation contests are facilitated events in which the participating teams gather for a short time, typically 1 to 3 days, to solve challenges relating to, for example, product development, operating models, or social problems. The contests may be free for anyone, the participants may be screened, or companies or specialists in a specific field, only, may be invited.
The participants range from private individuals to start-up companies, schools, educational institutes, other organisations and large companies. The contests relate to all sectors, and at best they are international mass gatherings for an audience of thousands of people.
One of the best known forms of innovation contests is the hackathon, in which actor in the technology sector develop and pitch their ideas. The biggest hackathon event in Europe, the Junction, gathered last year more than 1 500 coders and designers from more than 80 countries. The goal was to develop 350 project or prototypes for the partners of the event over the weekend.
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