A Course Outline for Education in Legal and Managerial Aspects of Technology

Abstract

This is the era of technological innovation, and the integration of technology into all sectors of society is a reality. Technology industry has already indicated the need for technology professionals who work and take decisions led not only by their engineering skills, but also by their legal and managerial skills. In this direction, in 2019 we conducted a survey using a questionnaire that was distributed to graduated students of Technology Institutes in Greece, in order to examine their knowhow on Entrepreneurship and on Patent Law in the direction of supporting a potential technological invention. Considering the above mentioned and the conclusion of the survey, in this paper a course is compiled and is proposed to be integrated in undergraduate curriculum of technical universities. The course regards both legal and managerial aspects of technology that concern a professional of technology. Educating new technological scientists to cope with the Technology Industry is a major issue and a qualification that scientific and industrial communities require. This paper serves this purpose; the proposed course is an innovative tool for the new generation technocratic scientists, who will serve the future technological and industrial society.

1. Introduction

Observing the rapid evolution of technology with the corresponding security issues [1,2] that bring about the advancement of technology and the integration of technology into society [3], through business, transactions, sciences [4], products [5], and daily life, as well as observing the requirement of the Industry of Technology to occupy technology professionals who take decisions led by their legal and managerial skills, we realize that the education of computer science students in the legal and entrepreneurial aspects of technology, is generally crucial, see Figure 1.

Specifically, the Patent Law awareness and the knowhow in the management of technology are both of primordial importance, because students are the potential inventors and investors of nowadays Industry of Technology, see Figure 2.

In 2019, for the first time in Europe, we conducted a survey [6] using a questionnaire that was distributed to graduated students of Technology Institutes in Greece, in order to examine their knowhow on Entrepreneurship and on Patent Law, in the direction of supporting a potential technological invention. According to the conclusion [6] of the survey, we found out that technology students are not consciously aware of the Patent Law or have the knowhow to manage technology, and this is verified also by the need of the industry for technology experts with legal and managerial know-how. These findings are due to the fact that Technical Institutes and universities do not support curriculum with legal and managerial aspects of technology and this fact, at the moment, applies to most technical universities in the world.

Therefore, it is vital to apply measures in education for the nextgeneration technical inventors to have the knowhow of managing technology on their own free will. In addition, educating new technological scientists to cope with the technology industry is a great goal to achieve and the qualifications that scientific and industrial community requires are demanding, due to the complex nature of technology. This paper intends to serve the above purposes and contribute to the state of the art, by proposing and compiling a novel course that can be integrated in undergraduate curriculum of technical universities and also fills this industry gap. There exist similar courses that combine technology with other fields such as business or economics, but the uniqueness of this course is that it focuses on the management of technology innovation, which by nature is novel and unique. This course strengthens spherically the technology background, by providing the legal tools to manage and protect an innovation. Furthermore, to the best of the authors’ knowledge, this is the first time such a course is proposed and its uniqueness also stems from the specialized published survey that it bases on and the solution it offers to the industry gap.

This paper is organized as follows; Section 2 presents the literature regarding relevant courses. Section 3 presents the proposed legal and managerial course that can be integrated in the undergraduate curriculum of technical universities, and Section 4 provides the conclusions.

2. Literature

Nowadays, many professionals of technology research, invent, commercialize, and transfer technology. However, they lack the knowhow of understanding Intellectual Property (IP), and they do not know how to protect the paternity of their intangible assets.

In addition, it is claimed in the technical world and indicated in [6] that lawyers even having the legal background and knowhow, lack understanding of the technical aspects, whereas for computer science students it is more feasible to be taught legal issues of technology, because those are based in technology and are explained through technical definitions and methods. Therefore, a computer science student should have the legal background to describe the whole procedure of a technical achievement, considering all legal, and ethical aspects, and with professional responsibility. Then, he will be able to lead and collaborate with a lawyer to undertake all legal procedures, so as to ensure his technical achievement legally, morally, and commercially.

According to [7] students of computer science are not educated in ethics and law as far as what concerns technology, which is unlikely in social and business science where the curriculum of these sciences includes legal courses, as for all sections of society in the first one and it combines business with legal science in the second.

In [8] there is a research that claims that some universities have decided that the world of legal technology belongs in the postgraduate law students, rather than undergraduate students. The authors accept that Masters of Law are generally an opportunity to specialize in a particular area of law. However, they claim that this specialization is restricted only to an academic nature. Furthermore, judging from the industry pressure that requires legal engineering skills, technical universities should offer at least a basic legal course in order to improve the employment prospects of computer graduates, because up to now it is observed that computer students try to fulfill the industry’s demand by preparing themselves with these legal skills on their own. Therefore, the authors conclude that the solution is to offer to students the option to learn more about the implications of legal aspects of technology in university and universities of technology, and law should collaborate in this direction.

In [9] it is claimed that it is important to cultivate IP awareness among the engineers and scientists at the universities in order to promote the collaboration between universities and industries. Besides that, awareness in IP could help reduce IP litigation during the commercialization stage.

In [10] it is stated that IP is vital for the global economy. Due to this importance of IP, private firms, universities, and research institutes have emphasized the need for educating computer science students in IP Law. The authors claim that most computer science students become engineers or researchers of private companies and public institutions. Therefore, universities should provide the students with education in IP rights in order to develop innovative technology professionals. The authors state that students also know the importance of IP rights but they do not know how to protect their ideas and products by patents. Eventually, it is necessary to provide IP activities to them through the academic curriculum of university.

According to [11] industry is increasingly calling for IP education at universities, but engineering departments are unable to spend a sufficient amount of time on enriching the curriculum with legal aspects because courses and laboratory courses already insist on a large amount of time. Realizing this in [12] Large Indian Information technology companies implemented knowledge management to foster innovation. In [13] the paper presents the need for preparing the students for technology challenges in the Industry 4.0. In Israel, at the Holon Institute of Technology, the Faculty of Technology Management deals with this subject and upgrades its curriculum. In [14] the authors claim that research institutions try to design more performing socio-technical systems. The article presents management engineering as a new perspective to integrate technological and managerial knowledge. The article indicates that management engineering topics can be used to design global education.

In [15] the authors claim that education in IP is an important part of engineering education because students need to have basic knowledge in ethics and IP issues in order to invent without the risk of infringement.

All in all, the state of the art and the curriculums of technical universities indicate that graduated students of computer science are not educated in ethics and law, as far as what concerns technology, although industry is increasingly calling for IP education at universities. It is important to cultivate IP awareness among the engineers and scientists at the universities in order to promote the collaboration between universities and industries. Besides that, students of technical universities need to have basic knowledge in ethics and IP issues in order to invent without the risk of infringement.

3. Legal and Managerial Course Proposal

It is important to state that the long-term strategy is to develop responsible inventors and scientists in industry of technology, technical universities, and society generally. In this direction, we propose the extension of an undergraduate technical curriculum, in order to consider both legal and managerial aspects that concern a technology inventor. This course will be mandatory and will be taught to students that have acquired the basic technical background, as well as undergraduate students in the last academic year, before they are assigned with the diploma thesis, so as to have the choice to specialize in the course’s aspects through their thesis. This course should be utilized in the education of technology students, in order to prepare the potential technology professionals from every perspective and for every application or transaction of technology. Subsequently, independent creativity will be cultivated through the knowhow of defending an intellectual effort against any infringement, and as a result, the confusion, commonly encountered by technical scientists in legal and business issues, will be overcome and the advancement of the technology community will be facilitated.

In this direction, a course to serve the purpose of educating students in technical universities as for Intellectual Property, legal and managerial issues that concern an inventor are presented below. The basic contents of this type of education, for undergraduate technology students, are shown in

Table 1. The proposed course.

1st Week	2nd, 3rd, 4th, 5th, 6th Week	7th, 8th Week	9th, 10th Week	11th Week	12th, 13th Week	14th 15th Week- Revision
Intellectual Property Law	Patent Law	Technical Invention, Computer Invention, TRIPS COM2000/0412 COM2002/0092-COD/2002/0047	Procedure for granting a technical patent	1. Claim priority	Commercialization of patents (buy/sell), Management of patent portfolio IPR	patent contests, prepare a patent
Intangible Assets	1. National Patent Law, national patents	1. prior art	1. application	2. date of publication	I. Owner/Inventor of a patent	Contests for innovation & start-up companies, prepare a business plan for an invention
1. patent	2. European Patent Law, European patents, EPO	2. novelty, patent search	2. title	3. languages to fill the application	II. Employment contracts	Web-based, e-learning system intends to serve as a supplement material
2. copyright	3. Unitary Patent Law, EPO	3. inventive step,	3. technical field	4. duration of a patent	III. Competition & market
3. industrial design	4. Patent Cooperation Treaty, WIPO	4. industrial applicable	4. specification	5. fees/renewal fees	IV. Commercial prospects of an invention
4. geographical indication			5. claims		V. Exploitation of an invention
			6. description		1. Licensing
			7. drawings		2. Establish a start-up company
					3. collaboration with university/industry
					4. sell a patent

. This course requires 2 h of lectures per week for 15 weeks, which is not time consuming and does not burden an existing compulsory education program. This course also provides a web-based e-learning system that intends to serve as an auxiliary material for the students in addition to the lectures presented in class. To explain further intellectual property law lectures at a university will be video-recorded, and the videos can be uploaded to an e-learning system. The recorded lectures allow students to watch the videos in case of their absence from the class or for the assimilation of lecture after the class. Furthermore, the system provides students with tests in case they want to practice on the presented lectures.

When students log in to the system through the login page, the system will show the home page of the course. When students select the learning content, the system will show the contents on screen, from which students can access lecture videos of every week, PDF files with homework that will be given during the lectures, and the pages with tests. The system will allow students to fast-forward and rewind lecture videos. Furthermore, lecturers can view the results of the class evaluation. The system also will include a variety of test practice problems. A system that supports study will be developed using legal articles. For example, if the student answers a question correctly, the system will display the relevant explanation, and if the student answers incorrectly the system will display the right answer and the explanation of it.

The basic course outline for the education in legal and managerial aspects of technology bases on patent law and commercial law follows the procedures indicated by the Patent Offices and they regard management and protection of inventions. Below the course is presented in weeks during which different thematic units are taught.

In the first week, a 2 h presentation on intellectual property [16], which is broader than patent law [17] will be introduced and a definition will be given of the substance of intellectual property rights, and the powers and obligations that arise from them will be also defined. The meaning and the special purpose of patents, copyrights [18], industrial designs [19] and geographical indications [20] will be explained to the students and their differences in the legal protection that they provide will be clarified.

In the second and third week, the institution of patent law will be developed in detail, by explaining the benefits for the inventor who grants a patent for his invention as for the priority he obtains in paternity of his intellectual asset, the right in exclusive commercial exploitation and disposal, the patented recognition of the inventor’s contribution to society, and the protection of the invention against any financial and moral infringement or imitation. In addition, the lecture will include the explanation of the ethical and financial obligations incurred by the inventor of the patented invention in maintaining the patented invention and also the legal model of cooperation between an inventor and an industrial company in the form of subordinate or independent work as prescribed by law.

In the fourth and fifth week, the most important patent offices will be mentioned; European Patent Office [21], United States Patent Office [22], Japan Patent Office [23], and the presentation will focus on national patent and will specify the national geographical protection it provides for patenting an invention and commercializing its idea. The national fees of applying for and maintaining a patent that are clearly less than any other form of broader patent will be mentioned, too. Then, the presentation will focus on European patent Law that provides the European patent, which is a set of national patents with the corresponding national route to follow and fees to be paid for providing protection to European countries chosen by the inventor. Furthermore the Unitary Patent System [24], which is ready to apply, will be presented; since 2015 the preparations for the unitary patent, which will be granted by the EPO, were in progress and be valid for at least 13 to 26 European countries. Participating member states found a solution to simplify procedures for patent protection in Europe, reduce the costs and renewal fees as they are stated under the classical European patent route, while increasing legal certainty due to the introduction of a central European patent court.

In the sixth week the presentation will focus on the World Intellectual Property Organization WIPO [25] and the Patent Cooperation Treaty PCT [26] which was concluded by the contracting states due to the need to fulfill the gaps in legislation, to simplify the procedures and reduce the fees for obtaining an international protection. The PCT is an international treaty that provides, with one patent application, protection to more than 150 contracting states, instead of filling separate national patent applications. However, the decision for granting a patent is under the jurisdiction of the national patent offices and this part is called the “national phase” of the PCT route.

In the seventh and eighth week, the presentation will focus on technical inventions [27] which will be defined, and computer related inventions [28]. According to European Patent Law, the idea and the results are patented and the code is not patented. A reference will be made to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) [29] Agreement, the only international agreement that introduces for computer programs to be protected through patents, which is contrary to the Munich Convention. It is an international legal agreement between all the member nations of the World Trade Organization (WTO), which led the European Commission to the Proposal for a Council Regulation on the Community patent COM/2000/0412, 2000 [30], which adapts the prohibitive provisions of the Munich Convention, so that the issuance of patents for computer programs is feasible; the new proposal for the directive on the patenting of computer-implemented inventions achieves the simultaneous application of intellectual property law and patent law. Copyrights protect the source code of the program and patent law protects the ideas and principles of the program, as they are stated in the claims. This is the most efficient combination for the better protection of the inventor’s interests. According to the Proposal for the Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions, COM/2002/0092 final-COD 2002/0047, 2002, [31] which was filed at the European Parliament in 2002, it concerned the patenting of computer programs. This proposal clarified that it is not intended to replace the existing national patent law, but to extend it with appropriate adaptations that apply to computer programs. This proposal defines an invention as a product or a method, the use of which, whether it is a product or a method is carried out with the aid of a computer or a network and the running software produces new results that are innovative for the current state of the art. The program itself cannot be granted with a patent as such, however, as a whole along with the computer that brings about the innovative changes, it is protected. Extending the issue of patenting to computer programs, it is stated that the computer program should be an invention that solves a technical problem. Eventually, the presentation should clarify and explain that before the inventor applies for a patent for his innovative technical idea, he should be sure that if searching in prior art of the technical field of his idea, there exists no such patented invention and therefore his idea is novel, compared to what is stated in prior art. Further, the inventor should check whether his idea has an inventive step. That is to say that his idea contributes to the technical field it belongs and evolves prior art. Lastly, the potential invention should be industrially applicable. After the presentation the students should have the knowhow to search in prior art and understand whether an invention;

• Is novel
• Has an inventive step
• Is industrial applicable

In ninth and tenth week, the whole procedure for granting a technical patent should be developed and explained to the students. Issued computer patents and other technical patents that exist in the online database of patent Offices’ [32] can be used in the class as case studies. After these two presentations, the students should be able to fill in a patent application

• decide the title of an invention
• specify the technical field of an invention
• write the specification, which is a summary of the invention
• write the claims that define the requested protection through the patent
• write in every detail the description of the invention, by leading a person skilled in the art to understand and undertake the described procedure step by step and reach the desirable result or solve a specific problem.
• knowhow of using the drawings to illustrate, if needed, the functionality of the invention.

During the eleventh week the presentation will focus on the conditions that must be satisfied for a valid claim to priority, the inventor should regard according guidelines for examination of the EPO [33]. The students should also be informed that the application for a patent is published 18 months after the filing date. This date will act as prior art against any future patent applications from other inventors [34]. The most important thing is that after the patent is granted, the inventor may claim damages for infringements starting from the date of the publication of the application. The fees [35] that an inventor should pay in order to grant a patent and the renewal fees for maintain a patent should be presented and a reference to the duration of a patent should be underlined; a European patent lasts [36] for 20 years from the date of its filing, though it may lapse if annual renewal fees are not paid. Eventually, a patent application can be filled in one of the official languages [36] of the EPO: English, French, German. If an inventor files a European patent application in another language, then in a period of 2 months a translation of the application should be sent in one of the official languages.

In the twelfth thirteenth weeks the presentation should focus on defining the owner of a patent. Initially, the inventor is the person who conceives and implements the idea whereas a person who passively follows instructions, performs routine tasks, or executes results testing is not an inventor [37]. Patent law protects inventorship and copyright law protects authorship. Inventors and authors are natural persons; owners can be organizations. The relationship among them is employment where the organization is the employer that owns the inventors’ or authors’ intellectual property due to assignment arrangements of employment. Therefore, a patent in fact can only be granted to its inventor or to the person who claims ownership to the inventor; an organization wants to ensure through employment contracts that the intellectual property created by employees in the course of their job duties belong to the organization. Then, in the course, the employment requirement for the assignment of the invention is defined in the following cases: the inventor has a managerial or other key role within the organization, the inventor uses material put at their disposal by the organization, the inventor works on their own invention during working hours, and the inventor is hired for that purpose. According to art 60 of the EPC [38], a European patent belongs to the inventor or his successor in title. In case the inventor is an employee, then the right to a European patent is determined by the law of the State in which the employee is employed. In case more than one person is included in an invention independent from the other, the owner of the European patent is the person who first filed a European application that was then published.

A significant issue that should be presented is competition and market. A potential inventor should recognize the market of his idea and how he will cope with competition. The inventor should know what does the available market currently use to cover the need that his new idea will offer to the market. The students should be familiar with the procedure of defining competition and market. The steps of the procedure are presented below:

• define competitors
• search industry journals and published patents to define prior art
• Get informed by people who work in this industry about products and methods they use/not use and why (without disclosing the invention.)
• Evaluate the threat of competitors
• Observe the value of relevant products
• Observe how often relevant products are overcome
• Observe the market share of the competitors
• Observe where relevant products are requested and distributed
• Decide whether the potential idea can survive through competition
• Judge whether the potential invention is a business opportunity for a company or investor

As far as what concerns commercial prospects of an invention, the students should be informed that most companies look for:

• An idea that ensures them a monopoly position in the industry, through IP.
• A product that consumers prefer the most.
• An idea or a product that values to invest on.

To find and approach companies is also a significant issue to analyze to the students. According to the European Patent Office’s “Inventor’s handbook” [39], large and reputable companies are not easily approachable because most of them find it inefficient to collaborate with individuals or small companies. The majority of them evolve their own research and development department and they would rather not to deal with individual inventors, because turnover means for them hundreds of millions of Euros and the gain of an individual’s inventor product may not be sufficiently profitable or may lead them to litigation from inventor who accuses them of intellectual property infringement. In addition, most large companies are collaborating with smaller companies that are more approachable and maybe this is a safe path to success and an easier route to approach a large company.

Small and medium sized companies (SME) [39] are easily adjustable. They innovate quickly and are easier to approach. A small company that specializes in the technology field of a potential invention also has the resources to support the inventor. A partnership with a small company may also give to the inventor accessibility to all procedures regarding the invention even if progress is slow. On the other hand, collaboration with a smaller company may not be that profitable or may be not feasible to fund the invention the same way, as the inventor on his own.

The most significant question follows:

• Is it possible for an inventor to convince companies or investors that his idea is a strong patent to negotiate?

On the other hand, there is always the possibility that the idea may only succeed if the inventor becomes the entrepreneur. In order to conclude this decision and establish a start-up company based on an invention, the inventor should be certain that his idea is novel; has a commercial prospective; and the inventor is ready to invest time and money and undertake all procedures and obligations that stem from leading a business [39]. After applying for a patent, the questions that a potential inventor should consider in order to take the risk of establishing a company are:

• Does the industry need this product?
• How healthy is the chosen industry?
• What is the appropriate price for the product?
• Should the product follow standards of safety or performance before been sold?

To summarize, the exploitation of an invention is very important to be presented to the students, in order to deeply understand the options they have as an inventor in commercializing an invention [40].

The first option is licensing; the inventor and one or more companies enter into a licensing agreement that provides them the right to use the inventor’s IP regarding a payment. This method rewards the inventor for providing the use of his IP and rewards the licensee with a technological advantage against competitors. Licensing includes legal action against any infringement.

A start-up business is an another option for an inventor in case he wants to be also an entrepreneur, or in case a licensing agreement is not feasible, due to the lack of interest from companies.

Another option is a joint venture with a company or a university which is a method of starting up a business, too; a joint venture with a university is where you can exploit resources with an exchange of a better idea of the invention’s potential.

Eventually, an outright sale is an option according to which a company may buy the IP of an invention by offering an amount of money.

In the fourteenth and fifteenth week, it is recommended for the students to participate by preparing a patent or a business plan for a technical invention to patent contests or contests for innovation and startup companies. Many patent contests are organized nowadays from private and public institutions of every country, with a view to promote innovation and technology. To prepare a patent, the students should be guided to define first of all the novelty of their idea. The students should:

• List the novel features of their idea
• Find all published patents relevant to the idea’s technical field
• Check the claims of the published patents for similarities to their idea
• When a novel feature of their idea is already claimed in a published patent this is prior art so erase this feature
• The novel features of their idea that are not found should be investigated for whether they are worth of patenting.

To prepare a business plan, the students should first understand that the most significant way to transform an invention into a commercial product is by developing the business plan of the invention. The presentation of a business plan, although it is the tool an inventor can use to attract investors and convince them to support the invention, also means revealing of the innovative idea. Therefore, an inventor should ensure protection of his innovative idea through a patent application before presenting his invention’s business plan.

The course is completed with the access in the web-based e-learning system, in order for the students to assimilate what they have been taught and evaluate the knowledge they gained from the course through quizzes and tests.

4. Conclusions

In the broader curriculum of technical universities, it is very important to incorporate a course that includes the training of technology students on issues related also to the legal status of technology. It is vital, as the technology industry indicates it too, to educate them on the legalization of their own technological-intellectual properties for the exclusive commercialization and exploitation of them and on their contribution to society regarding their involvement into technological industry, either by setting up a start-up company of a technology scope, or by partnering with an existing technological company. In addition, they need to know how to make their potential invention profitable and support it against the competition and how to protect themselves as inventors and entrepreneurs against infringement through patent law.

The proposal of this course is not intended to burden the already existing curriculum, as it only lasts 2 h per week. It intends to create integrated technocrats scientists who will have an overall view of the legitimate technology possibilities and who will have the knowhow to serve a world that is motivated by technology and is driven by economics, but is bounded by the laws. The future purpose of this research is the conduction of the course, for the first time, in a technical university of Greece and the analysis of the course’s results during the semester, through tests and after the end of it, through a survey that will be applied to the students. The survey will research the knowhow of the students and their point of view in technological, legal, and managerial aspects of industry. A comparative analysis will follow regarding the students that have just been taught the course and those of the previous academic year that had not been taught the specific course.