What protections can a fintech use in your jurisdiction to protect its intellectual property?
Fintech (2nd edition)
Depending on the specific nature, activities and creations of the fintech concerned, it may rely on various intellectual property rights existing under Belgian law. The most prevalent ones are the following.
Fintechs may protect their trademark under a Benelux or European trademark. Registration is required to benefit from such protection and may only be obtained if the sign is susceptible to graphical representation, has distinctive character, and is permissible and available. By contrast, a fintech’s trade name is protected simply by first use and offers protection only in the geographical area where it is used for the activities that are identical or similar to those engaged in under the trade name.
As most fintechs strongly focus on digital presence, it is important to note that they may register a domain name on the Internet and that their computer programmes (e.g. mobile applications) may be protected by copyright laws provided there is originality, and a precise and objective expression of that originality. If investments are made for building databases, specific protection rights for databases may be relied upon. Furthermore, the technical IT solutions containing a computer programme which constitute an invention may be eligible to patent protection if all conditions thereto are fulfilled.
Finally yet importantly, fintech organisations must organise themselves to keep their (commercial and technical) confidential information and business secrets secret. If they can prove that such an organisation is implemented, they are protected against malicious misappropriation of such information.
Intellectual Property protection in Bermuda is available for trademarks, patents, copyright, and design. The available relief for infringement are injunctions (permanent or emergency), Anton Pillar orders, discovery upon oath, damages, delivery up of infringing article and/or destruction, and enquiry as to damages or an account of profits.
Trademark law in Bermuda is largely based on the United Kingdoms’ (UK), however Bermuda operates an independent trademark register at the Government of Bermuda Intellectual Property Office. The Bermuda Intellectual Property Office currently requires that a national patent application be sent to the UK for search and examination. Additionally, any UK patent or European patent designating the UK can be reregistered in Bermuda within three (3) years of the original grant.
Many multinational and blue chip companies have benefitted from utilising Bermuda strategically to capitalise on particular tax benefits. A typical structure would result in a Bermuda-based companies collecting fees and other revenue associated with their intellectual property and being able to repatriate funds in accordance with Bermuda’s strategic legislative framework.
Industrial property rights in Brazil are specifically governed by Law No. 9.279, of May 15, 1996 (“Industrial Property Law”), and by the Brazilian National Institute of Industrial Property’s (“INPI”) internal rules and regulatory acts.
Pursuant to the Industrial Property Law there are three industrial property rights which acquire legal protection upon registration with government authorities, namely: (i) trademarks, (ii) patents, and (iii) industrial designs. On the other hand, Technology and/or Know-How are not considered industrial property rights per se, and they may only be contractually protected (through confidentiality and non-competition clauses).
Both the industrial property rights (trademark, patent, industrial design) and the technology/know-how may be the subject matter of licensing or transfer agreements, respectively, which are subject to the INPI’s approval.
Once INPI has approved the fintech intellectual property license, the fintech shall be protected by INPI regulatory acts regarding the industrial property rights matters, such as the registration of trademarks and patents, as well as licensing of intellectual property and technology transfer agreements.
In Chile, Fintechs can protect their intellectual and industrial property submitting applications to INAPI (Instituto Nacional de Propiedad Industrial or National Institute of Industrial Property (NIIP)). This allows them to protect, among others, their brands, patents, utility models, vegetal varieties, industrial designs.
Though a Fintech company is not required to register any of the above, it is useful to do so. When registering intellectual and industrial property rights, a Fintech acquires an exclusive right of exploitation in Chile, forbidding third parties to use it without authorization.
Nevertheless, registering will imply that the intellectual or industrial property will be considered a public record.
In case of trademarks, the protection lasts ten years from registration approval, with the ability to renew for the same period for an indefinite number of times. In the case of patents, the requirements are higher than for trademark. The Fintech needs to demonstrate a novel character, an inventive level, and a possibility of industrial application. Regarding patents, the protection issued by INAPI will last twenty years from registration approval, but this period is not renewable. For other property rights, like industrial designs, the protection will last ten years.
The protection of intellectual or industrial property rights does not include their registration, but the possibility to oppose it when being applied by third parties, which can end in a trial at the Industrial Property Tribunal.
If a Fintech wants to protect copyright, then the DIBAM (Direction of Libraries, Archives and Museums) oversees the protection of such rights.
Fintech companies can benefit from comprehensive, layered intellectual property (IP) strategies to protect different aspects of their business operations. By pursuing appropriate applications and registrations, a company can protect its brands and trademarks which differentiate its products and services from those of competitors. Patents can be pursued, and although it is difficult to patent business methods by themselves, patents that focus on technical aspects of implementing a business method (e.g., APIs, security/privacy mechanism, communication protocols) may make it difficult for a competitor to compete effectively. In some circumstances, the fintech may need to employ trade secret policies to protect sensitive business information, such as confidential business processes or back-end code which is not easily discovered or reverse-engineered outside the fintech while attaching copyright protection to other types of work relating to the fintech’s offerings. Such copyrightable works might include underlying programming code, APIs, and various other audio, video or written works embodied in tangible mediums of expression. Fintechs, in particular, should also be mindful of the legal implications relating to the use of open source software, particularly when used in conjunction with other propriety code. In short, a properly implemented and comprehensive IP strategy is not only advisable to complement a fintech’s business offerings but can go a long way to help create a competitive advantage in an already highly competitive market.
Fintech companies rely on innovations, usually implemented through software. These assets are almost exclusively protected by intellectual property (IP). Therefore, IP underpins the value of almost all fintech companies. The UK offers a range of IP rights to protect fintech innovations. Some commonly used IP rights of particular relevance to fintech companies are as follows:
The law of copyright protects the results and expressions of creative ability and extends from art and literary works to more technical works, including computer code. It arises automatically; the UK does not have a copyright registration system, unlike some other jurisdictions, so there is no need to register to benefit from copyright. It endures for the life of the author plus 70 years.
For a fintech company, common copyright protected assets include source code and object code, databases (in terms of their selection and arrangement), pictures, content, sounds/videos, GUI’s and designs/drawings/plans. In order to qualify for copyright protection, the work must be original, and a minimum amount of intellectual creation / labour must have gone into creating the work. Copyright will be owned by the original author unless the author is an employee in which case the employer will own the copyright (providing the work was created by the employee while performing their duties). Where contractors are used, it is important to ensure that assignments of copyright (and other IP rights) are included in their contracts.
Copyright gives the owner the exclusive right to exploit the work in a variety of ways (e.g. copying, adapting, rental/lending, issuing copies to the public and communicating the work to the public); and to prevent others doing those acts in relation to the whole or a substantial part of a copyright work (which can be assessed qualitatively or quantitively. However, in relation to software, copyright does not protect functionality itself. While a company can prevent a third party from copying its source code, copyright law does not prevent a party writing its own code to carry out the same functionality. Further, lawful users of software can (i) observe/study/test it to understand underlying principles and (ii) providing certain conditions are met, can decompile software in order to achieve interoperability.
Databases can be protected either under the law of copyright, or under the EU sui generis database right. A database is “a collection of independent works, data or other materials which are arranged in a systematic or methodical way and are individually accessible by electronic or other means”.
The database right prevents a third party from extracting or reutilising all, or a substantial part, of a database. To qualify, the author must show a substantial effort in the obtaining, verifying or presenting of the contents of the database. Note that this is separate to creating the data itself. While the database right usually lasts for 15 years from creating, or making the database available to the public, a new right arises where there is a substantial change in the contents. Therefore, fintech companies often find their electronic databases have protection on an ongoing basis as those databases continue to grow.
As a separate right to the sui generis database right, database copyright requires that there is some intellectual creation in the selection or arrangement of the contents of a database; for this reason, it can be harder to show. If database copyright subsists, it gives the same rights and endures for the same duration as other forms of copyright.
Designs can be relevant to fintech companies as they can be used to protect user interfaces. Larger tech companies often obtain registered designs of commonly used user and web interfaces which they associate with their brand / technology. This may be useful if a fintech company has a unique app interface. Designs can be registered cheaply, and with a minimal examination process, and can be a useful tool to ward off competitors who might be minded to copy the “look and feel” of an application. Designs can be registered at the UK and (currently) EU level.
Despite commonly held views, Europe and the UK allows the patenting of software innovations where there is something of technical effect to protect.
Patents protect the functionality of the innovation itself, regardless of the code implementing the invention. This stops a third party from copying the functionality of software. Having patent protection allows the fintech company to exercise a monopoly over the innovation, permitting only that company to commercialise or license the innovation to third parties.
To obtain a patent, certain criteria must be met. In short, a patent must be novel and involve an inventive step (new and inventive over any invention which has been previously disclosed). An application should be completed as soon as possible and before commercial exploitation or publication / marketing of the product. In the UK and Europe specifically, to patent an invention implemented in software it must also make a “technical contribution” of some kind. For example, software which speeds up trading or allows customers to connect to services in a new way.
Patents last for 20 years and are often seen as valuable by investors. The UK also offers a tax saving on profits generated through patent-protected innovations through its patent box tax system.
Trade Secrets / Confidential Information
Patenting requires disclosing how the invention works; some companies prefer to rely on keeping their innovation confidential.
UK common law provides a law of confidence. In addition, the UK is subject to the EU Trade Secrets Directive and this was implemented into UK law by the Trade Secrets (Enforcement, etc.) Regulations 2018. To class as a trade secret, the information must not be generally known by the public or persons specialising in the fintech company’s area, it must have commercial value, and reasonable steps must be taken in order to keep the information secret. A trade secret owner can take legal action where there has been unauthorised use of the information to the owner’s detriment.
Fintech companies should look to bolster their legal position by entering into NDAs before disclosing any confidential information regarding their product, giving them an additional contractual protection.
Although not specific to fintech companies, the UK has an exhaustive trade mark registration system for the protection of word marks and logos. It is also (currently, until Brexit) part of the EU trade mark system.
The UK offers a world-renowned justice system with a high calibre independent judiciary. As well as the High Court, the UK has a specialist IP court for lower value claims, called the IPEC. This is particularly useful for fintech companies looking to protect their assets at a lower cost, due to its faster outcomes, more limited process, and caps on recovery of legal costs (the usual rule in UK litigation is that the loser pays a proportion of the winner’s costs).
Typical IP protection figures apply in Colombian jurisdiction, including patents, source code, industrial design, circuits design, and trademarks. This provides protection for algorithms and business flows/processes which may be protected by criminal procedures that are the responsibility of both tax and criminal authorities. IP owners are also entitled to file for private enforced litigation forcing violators to open their books and technology to a civil judge to determine whether IP is being used in violation of valid licencing. Databases may also be subject to protection in most cases, if they are constructed by the owner. Several trade agreements are in effect with the US, EU, UK, Canada, and several others, that provide additional protection and procedures for IP.
The protections a fintech can use to protect its intellectual property are the same on UAE Onshore and in the Financial Free Zones. However, implementation measures and procedures undertaken by the authorities differ among the jurisdictions: the DIFC and ADGM are subject to common law procedures, whereas UAE Onshore is subject to civil law procedures.
UAE copyright laws provide legal protection for original computer programs, related software applications and databases.
The most applicable protection for copyrights is under Federal Law No. 7 of 2002 Concerning Copyrights and Neighboring Rights (as amended). The UAE is a member of the Berne Convention for the Protection of Literary and Artistic Works, pursuant to which all member states recognize and protect the copyrights of individuals of other member states. While there is no requirement to register copyrights in order for them to be recognized and enforced against a third party in the UAE, it is advisable, for evidentiary purposes, to register copyrights under the applicable UAE registrar.
Financial rights under a copyright are effective for a period of 50 years from the death of the inventor or, where the identity of the inventor is not identifiable, from the date of publication (or launching) of the copyrighted product.
In the UAE, financial rights of an employee under a copyright are not automatically assigned to his/her employer. A separate agreement must be executed to this effect. Additionally, it is not possible to assign the moral rights to a copyright under UAE law.
UAE patent laws may provide certain protection to computer programs, provided, among other conditions, that such programs be suitably tied to hardware and presented as a technical solution to a technical problem.
With respect to patents, protection is provided under Federal Law No. 17 of 2002 on Regulation and Protection of Industrial Property of Patents, Industrial Drawings and Designs (as amended) for a limited period of 20 years from the date of filing of the protection application with the Ministry of Finance and Industry.
Other intellectual and industrial property rights
The UAE is also a member of the Paris Convention for the Protection of Industrial Property. The Paris Convention for the Protection of Industrial Property requires, inter alia, that all member states recognize and protect the intellectual property rights of individuals of other member states. Additionally, the UAE is a member of the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), a minimum standards agreement for the protection of intellectual property rights.
There are also general intellectual property protections applicable to all businesses, for instance with respect to logos, slogans and names. These intellectual property protections are implemented under Federal Law No. 37 of 1992 on Trademarks (as amended), upon registration with the Trademark Office of the Ministry of Economy. Registration with the Trademark Office results in protection for a period of 10 years, renewable upon application.
Under Taiwan law, the software developed in relation to fintech can be protected by intellectual property rights such as patent, copyright or trade secret. For patent, the subject of a patent right is 'invention' and an invention means the creation of technical ideas, and utilizing the laws of nature. An inventor may file an application with Taiwan’s Intellectual Property Office, and the patent right will be obtained once the application is approved. For copyrights and trade secrets, there are no such registration or filing requirements in order to be protected by law. However, a copyright or trade secret is subject to certain features and qualifications; such as, 'originality' and 'expression' for copyright, and 'economic valuable' and 'adoption of reasonable protection measures' for trade secrets.
Switzerland is a research and innovation centre. Fintech innovations are protectable primarily under copyright and patent laws. Software is usually protected under copyright law as computer programs are not deemed technical solutions per se. A patent may, however, be available if the computer-implemented innovation solves a technical problem. Copyright protection does not extend to ideas but only protects the individual format and not the content. Algorithms are not subject to copyright protection.
Additional protection may be available by design and trademark registrations which can both protect two or three-dimensional forms.
Fintech innovations may also be protected as manufacturing or trade secrets, the breach of which e.g. by employees or mandatees is subject to criminal sanctions. Non-disclosure agreements are frequently used in particular in the initial phase of a fintech project, when the underlying ideas are presented to investors.
Regarding inventions, that most likely result from innovations (as it is the case for most fintech players), the protection can be made through different paths.
Patents are valid for 20 years and prevent the use from anyone other than the owner of the patent (or someone authorised by the owner).
Utility models are also very common, offering protection for 10 years and are usually easier to obtain than a patent.
Trade secrets are now covered under the new Law 1/2019, of 21 February, on Business Secrets, which transposes the European Directive (2016/943) on Trade Secrets, and business secrets are considered a subjective right of an economic nature. Unlike the formerly mentioned industrial property rights, this is not an exclusive right and are generally defined as something that is secret, it has commercial value and it has been subject to reasonable steps, under the circumstances, taken by the person lawfully in control of the information, to keep it secret.
Lastly, software would be considered copyright and therefore protected under the Spanish Copyright Law.
With regard to registered intellectual property rights (IPR) the most relevant are trademark registrations, to secure brands or the labelling of products, websites, apps etc. Trademark rights are granted on a ‚first come first serve‘ basis and they protect the owner against the identical or very similar use of its trademark by a competitor.
Patent registrations would not very likely be in the focus of a fintech. Under the German Patent Act (Patentgesetz), software programs as such are expressly excluded from patent protection. Also, processes and business models as such are not patentable in Germany.
Fintechs may rely on copyright protection under the German Copyright Act (Urheberrechtsgesetz) as an unregistered IPR. It protects intellectual creativity, e.g. source code of software or – to certain extent – also the way graphics, images or texts are designed and displayed to a consumer.
A database can obtain copyright protection if it is original with a certain level of intellectual creativity. Non-original databases as an organized collection of data, generally stored and accessed electronically from a computer system can also be protected if the investment in obtaining, verifying and presenting the data was substantial. This protection is known as the ‘sui generis’ right, i.e. a specific property right for databases that is unrelated to other forms of IPRs.
Otherwise, the protection of business and trade secrets as well as know-how until recently had been only barely and fragmentarily regulated in the three different areas of torts, unfair competition and criminal law in Germany, each area only covering its respective specific scope while lacking a comprehensive protection. This has changed to a significant extent when the new Trade Secrets Act (Gesetz zum Schutz von Geschäftsgeheimnissen) came into effect in April 2019. This law now provides a universal approach on the protection of know-how and business information (trade secrets) against unlawful acquisition, use and disclosure.
While there is no special IP law that applies specifically to Fintech, IP protection is provided via other existing laws such as the Patent Law in the case of patentable invention, Copyright Act for creative products, and Unfair Competition Prevention and Trade Secret Protection Act for trade secrets.
Fintech intellectual property is subject to the same protection as generally applies to intellectual property in Iceland, i.e. through copyrights, patents and registration of trademarks. Iceland is a party to international conventions on the protection of intellectual property.
Infringements of intellectual property rights can be enforced through injunctive relief as well as compensatory damages can be sought through Icelandic courts for the infringement of intellectual property rights.
Under the Danish Copyright Act (In Danish: Lov nr. 144 af 23. oktober 2014, om ophavsret) (The Danish Copyright Act), the source code and object code of software can be protected by copyright. Furthermore, text (manuals etc.), GUI (graphical user interfaces) and specific design elements can be protected by copyright by itself. For the item to be protected by copyright the criterion on originality under EU law must be met.
As a fintech-company, where software is a valuable part and plays a key role, it is important to secure the rights to software. Under the Danish Copyright Act, who is granted the copyright to software depends under which circumstances the software is developed.
If employees of a company develop the software, the rights will automatically be granted to the company. Opposite, if a software developer develops the software under a separate agreement with the company, the rights vests with the developer per default, even though the buyer has planned some of the functionality of the software.Hence, it is important to manage the rights to such software (e.g. a full transfer or specific licensing terms) in the contract under which the software is developed.
It is likewise possible to protect databases either through a copyright protection if the selection or arrangement of the databases content is original. Alternatively, through the sui generis right, if there has been a substantial investment in either obtaining, the verification or the presentation of the data.
Design elements can also be protected as either a national or EU-community right; the right can be registered or unregistered. The design must be deemed novel and with an individual character to enjoy the protection, c.f. the Danish Design Law (In Danish: Lov nr. 89 af 29. januar 2019 med senere ændringer, designloven,).
Software related inventions cannot be patented as such under the Danish Patent Act (In Danish: Lov nr. 90 af 29. januar 2019, patentloven (in accordance with the European patent convention)). Software can however be patented if the invention has a further technical effect which goes beyond the basic software/hardware interaction, or if the invention in some way is combined with hardware, assumed that the general requirements for patent protection is fulfilled.
Protection of fintech technology can take place by various means. The protection of software seems to be the most relevant, as fintech technology usually translates into computer systems and applications. Software is protected in Portugal under the same legal rules that apply to copyright protection (according to Decree-Law no. 252/94, of 20 October, as amended). Copyright does not require a registry to exist, but this can be done in the General-Inspection for Cultural Activities (IGAC). Software per se cannot be protected by a patent, unless it meets the criteria to be considered a computer implemented invention, which is an invention whose implementation involves the use of a computer, computer network or other programmable apparatus. In addition, computer-implemented business models can also be patented, to the extent that they are claimed as a technical solution for a technical problem (for instance, automating a response considering the data collected) and involving technical considerations (e. g., the reading of the database). Otherwise, business models are not patentable. All in all, a case-by-case analysis is necessary to determine if protection by patent is feasible.
Technology developed in the context of a fintech business can also be protected as a trade secret. Trade secrecy protects against any act of someone that assesses, appropriates or copies (or any other conduct which, under the circumstances, is considered contrary to honest commercial practices), without consent, information that is secret, which has a commercial value due to that fact and which has been subject to reasonable steps, by the person lawfully in control of the information, to keep it secret (for instance, the execution of non-disclosure agreements). Note that current national legal provisions on trade secrecy, which are included in the Industrial Property Code – approved by Decree-Law no. 110/2018, of 10 December –, have been subject to considerable revision and expansion, which is mostly related to the transposition of Directive (EU) 2016/943 of 8 June 2016, on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. The Directive brought substantial changes to the trade secrecy regime, notably on the protection criteria and the enforcement regime, which is expected to become clearer and more effective with the mentioned legislative change.
Note that a computer platform usually also comprises a set of data, as well as visual interfaces. The data may also be protected as a database if the requirements set in law (Decree-Law No. 122/2000, which transposed Directive No. 96/9/CE, as amended, on the protection of databases) are met. Interfaces can further be protected by copyright under the Copyright Code (approved by Decree-Law No. 63/85, as amended) in their look and feel, screen display and individual visual elements, if they all meet the criteria to be protected (mainly, are ‘creative’). Copyright protection, in this case, belongs to the employer or the person that orders the creation, if so established or if the name of the creator is not referred to in the work. In this case, the creator may require a special compensation if the creation exceeds the performance of the task or when the creation is used or brings benefits not included or foreseen in the creator’s remuneration.
Under Indian law, computer programs and software codes are generally protected by copyright whereas brands, logos, sounds, colours and 3D shapes are protected by trademark. Typically FinTech companies enter into non-disclosure and confidentiality agreements to protect their intellectual property. However, there is no common law protection for such confidentiality agreements and parties typically resort to damages and contractual breach as remedy. Several companies have also filed patent applications with the patent office in India for patenting blockchain based technology that provides financial solutions.
Intellectual property comprises both industrial property and copyright; they are protected in a different way. Industrial property rights are protected since their registration at INDECOPI (Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual), this means that the registry is constitutive of rights in this case. Industrial property rights include patents, utility models and industrial designs, trademarks, and geographical indications. The copyrights, referring to the rights of the authors in their literary and artistic works, are protected since their first use.
It is important to mention that for the ownership of intellectual property rights, registration is required in order to be opposable against third parties, and it must be registered under the competent authority. The registration grants an exclusive right (for a period of time) to economically exploit that invention. The right of exclusivity has two aspects of protection: to grant intellectual property rights; and to avoid third-party use of the invention without permission.
A FinTech can protect its intellectual property through the registration of distinctive signs (e.g. trademark) at INDECOPI. Trademarks are governed by the principle of territoriality which means the protection applies only in Peruvian territory. The owner of a trademark has the exclusive right to use it in accordance with his interests: license the trademark to others; constitute guarantees; and transfer their rights to a third party. Moreover, the owner may object to the registration of distinctive signs which he considers affect his rights and to file complaints in case of use of identical or similar signs by third parties.
All common intellectual property protections exist in the western world apply in Israel as well: Patent registration, copyrights etc. Israel is a member of the Patent Cooperation Treaty (PCT) and various other IP treaties and offer the same level of IP protection as in any other western countries. There is also protection for copyrights and designs.
We believe that the protection offered to intellectual property in Israel is similar to the one provided in other OECD countries.
Protection of innovation in the fintech space is relatively difficult. Generally, innovative ideas can be protected by IP rights such as patents, design rights, trade secrets and copyright.
Software source code and the graphic interfaces of apps are generally protected by copyright by operation of law. Copyright need not be registered, although it is recommended to register an early-stage fintech innovation with the i-DEPOT of the Benelux IP Bureau (www.boip.int/en/entrepreneurs/ideas) in order to be able to evidence the ownership thereof. Design rights and trademarks can protect the name or logo of a fintech innovation, such as an app.
A more secure way to protect fintech innovations is to obtain a patent which protects the technical product or process. The functioning of an algorithm, for example, is not protected by copyright, but may be eligible for a patent under certain circumstances. A Dutch patent can be requested from Octrooicentrum Nederland, subject to compliance with the requirements laid down in the Dutch Patent Law.
It is also possible to obtain a European patent via the European Patent Office (EPO), if the innovation is novel, inventive and susceptible of industrial application. If the EPO approves the request, the applicant must register the patent in the European country in which it wishes to protect the innovative ideas.
It is expected that in the relatively near future, applicants will be able to opt for a unitary patent – a unilateral instrument that will be valid in almost all EU member states.
There are no specific Intellectual property regulatory provisions applicable solely to fintech businesses. Such businesses are protected under the Patent Act, the Trademark Act, the Copyright Act, the Design Act and the Unfair Competition Prevention Act.
A fintech who is a proprietor of a patent, design or trademark can register these in Jersey. The Jersey patents, designs and trademarks registers are a secondary register to the United Kingdom register of patents, designs and trademarks, meaning that proprietors must first register their rights in the United Kingdom before doing the same in Jersey.
Jersey is seeking to reform the laws governing registered intellectual property rights to enable Jersey to promote new business including those linked to e-commerce. The development of intellectual property law is thus a priority for economic development.
Fintech companies in Liechtenstein can use inter alia the following to protect their intellectual property:
Copyrights: Copyright in Liechtenstein needs no registration. A work is protected, until 70 years after the death of the originator, by copyright from the moment of its creation, and does not have to be recorded on a medium.
Trademarks: In Liechtenstein trademarks have to be registered with the Office of Economic Affairs. The protection period for a trademark is ten years and can be extended for a further ten years for an unlimited number of times. Please note that Liechtenstein, in contrast to other states, does not provide for opposition proceedings regarding new trademarks. One requires a final judgment or arbitration award to cancel a registered Liechtenstein trademark.
For the registration of a trademark with protection in all member states of the EU (Union Trademark) the trademark must be registered with the European Union Intellectual Property Office (EUIPO).
International trademarks, registered with the World Intellectual Property Organization (WIPO) have the same effect as a national registration in Liechtenstein.
Patents: In Liechtenstein inventions can only be patented if they are new and not obvious and are capable of being commercially exploited. Due to the patent protection treaty between Liechtenstein and Switzerland, patent always applies to the entire protective territory of both countries and Liechtenstein patents are issued by the Swiss Federal Institute of Intellectual Property (IGE). Patented inventions may be exploited within a defined territory for a period of up to 20 years exclusively with the approval of the patent holder.
In accordance with the ‘Ley de la Propiedad Industrial ‘Mexican Industrial Property Law’, invention, industrial designs, utility-models and processes are patentable. The titleholder of a patent (the assign or licensee thereof) holds the right to exploit such intellectual property. The right to secure a patent corresponds to the inventor or designer of the underlying property.
Any such patent will have a validity of 20 non-extendable years, starting from the date on which the filing for the patent took place (payment of an analysis fee is necessary); the registration of the utility models thereupon will be in effect for 10 non-extendable years, and the registration of the industrial designs will have a validity of 5 years. Computer programs are also subject to copyright registration. In addition to local provisions, Mexico is subject to the provisions of the Paris Convention for the Protection of Industrial Property and other relevant international treaties.
There is certainly a focus on copyright protected software as the exploitation of such software can benefit from a favourable tax regime. Patent protection is also possible in several situations and in 2019 Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure has been implemented in Luxembourg law, which confers efficient enforcement options to FinTech holding trade secrets.
Fintech business and solutions are subject to the same intellectual property (‘IP’) laws applicable to any other business in Malta. There is no tailored IP framework targeting fintechs. In this regard, Malta as an EU state upholds European standards of IP protection, and complies with a plethora of international treaties and harmonisation measures, thereby ensuring that it offers the most advantageous position to prospective IP rights holders. The Patents and Designs Act (Chapter 417) governs the protection of patents and designs while the Trademark Act (Chapter 416) regulates trademarks. Copyright owners enjoy automatic protection in terms of the Copyright Act (Chapter 415) without the need of any formal registration. IP rights in general are also subject to the Intellectual Property Rights (Cross-Border Measures) Act (Chapter 414) and the Enforcement of Intellectual Property Rights (Regulation) Act (Chapter 488).
FinTech companies will likely hold several types of IP that they can and should seek to protect. Trade marks, for example, provide vital security and protection for a company’s name and branding. In terms of protecting innovation itself, if it’s software-based one option is copyright for the relevant code. However, copyright is limited in that it only protects the specific expression of code that underpins a concept and creates an effect; it does nothing to prevent a competitor achieving the same effect using code that has been developed independently. Ultimately, if your innovation is based on a new technology or process, a patent is the best option for providing strong protection of innovation. With a lifetime of 20 years, it allows a company to safeguard their entire invention for the long-term while they gain a foothold in the market.
Innovations and inventions are protectable under the patent, copyright and industrial design laws as well as confidential information under the common law in Malaysia. In relation to IP related protections that fintech’s are able to use in Malaysia, listed below are the available IP operations that are in effect in the jurisdiction:
Under the Copyright Act 1987, the copyright shall vest initially in the author of the copyrighted work except (subject to any contrary agreement):
a. where the work is commissioned by a person who is not the author’s employer, copyright is deemed to be transferred to the person who commissions the work; and
b. where the work is made in the course of the author’s employment, the copyright is deemed to be transferred to the author’s employers,
*Where the work is made by or under the direction or control of the Government, Government organisation or international body, the copyright shall initially vest in them*
II. Trade Marks
Under the Trade Marks Act 1976, any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply to the Registrar for the registration of that mark. While the proprietor of a registered trade mark is the person whose name appears on the Register as the owner, the concept of proprietorship for the purposes of an application for registration depends on who is entitled to the exclusive use of the trade mark, i.e. the first person to use the mark in the course of trade and to develop business goodwill in relation to that mark.
Under the Patents Act 1983, the right to a patent belongs to the inventor unless the invention is made by an employee (including Government employees, employees of Government Organisation or enterprise) or pursuant to a commission in which case the right to the invention will be deemed to accrue to the employer or the person who commissioned the work, subject to any contrary agreement.
IV. Industrial Designs
Under the Industrial Designs Act 1996, the author of the industrial design is entitled to make an application for registration except for (subject to any contrary agreement):
a. industrial designs created pursuant to a commission or money or money’s worth, the person who commissioned the work is the original owner; and
b. industrial designs created by an employee in the course of employment, the employer is the original owner,
Except for copyright where registration is voluntary, one must have a patent, trade mark or industrial design registration in Malaysia to enjoy protection of these rights in Malaysia.
IP Rights may be protected in a number of ways under Singapore law. Patents, trade marks and copyright in Singapore are protected under both statute and common law.
Trade secrets / confidential information also receive protection under the law of confidence in Singapore. Trade secrets / confidential information may receive protection if (1) the information has the necessary quality of confidence about it; (2) the information is imparted in circumstances imposing an obligation of confidence; and (3) there has been an unauthorised use of the information to the detriment of the party communicating it.
To this end, contractual agreements are usually entered into when there is a transfer of trade secrets / confidential information, to enhance the protection available for such trade secrets / confidential information.
China is creating a more and more favourable IP environment, in not only administrative examination but also judicial protection. There are various protections from myriad intellectual property laws and regulations in the PRC, such as the PRC Patent Law, PRC Copyright Law and PRC Anti-Unfair Competition Law (which covers trade secrets, including know-how and source code). Furthermore, applicants are able to obtain IP rights faster and faster and at lower and lower costs. China has also established specialist intellectual property courts in Shanghai, Beijing and Guangzhou where most intellectual property cases are now tried, and an intellectual property tribunal was formed as a new subdivision in the Supreme People’s Courts on 1 January 2019.
Fintech may be able to obtain protection on some of their inventions and creations as well as branding. Source code, databases and relevant data therein, for example, may be deemed trade secrets that can be protected under the PRC Anti-Unfair Competition Law. And fintech firms now have specialist courts in which to seek protection and redress, including recourse to China’s highest court. Finally, as programmatic documents specifically for IP reform, such as the Opinions on Several Issues Concerning Strengthening Reform and Innovation in Intellectual Property Trials, are issued by major government players (in the aforementioned case, by the ‘Two Offices’ at China’s highest levels of government), it may not be long until fintech IP is specifically addressed in a similar way.