How could your FinTech be protected by intellectual property laws in Hong Kong?
The FinTech industry is a highly competitive one driven by innovative ideas and it is essential to devise a comprehensive strategy to protect the products of your innovation and hard work from an early stage. If your FinTech product or service is rooted in ideas and innovation, have you ever think of – How and what extent could your FinTech be protected by Intellectual Property (“IP”) rights? If your business activities involve FinTech, you may need to consider whether and how your interests can be protected in the realm of IP law.
In this article, we will start with exploring possible IP protection available to your FinTech, in particular patent protection, followed by protection by copyright for those not patentable parts. After which, protection for your company’s name or your FinTech product or service’s name under the trademark regime will be discussed. Finally, we will share some thoughts regarding possible protection for certain confidential information in relation to your trade, consisting of “know-how” and/or “skills”, which is not typically protected under the patent nor copyright regimes.
First of all, you may consider applying for patents for your FinTech product or service, as long as it meets the requirements set by applicable laws. One of the advantages of patenting is that it is a way to prevent others from copying or duplicating your patented technology’s functions despite they may have developed the source code independently. Further, your patented FinTech can be licensed for extending your business/business network and generating more profits.
It is possible to patent computer programs where it can be shown that the underlying invention “is new, involves an inventive step, and is susceptible of industrial application” as required by Article 9A(1) under the Patents Ordinance. In other words, any computer-implemented inventions are patentable provided a further technical effect or contribution has been made, such as an improvement in the working of the computer.
In this connection, it is advisable to engage IP lawyers to prepare a well-drafted patent application. Registration formalities must be followed to obtain protection. Once the application is granted, the patented FinTech will be eligible to enjoy a maximum period of 20-year protection from the date of filing of the application.
Apart from the patent regime, your FinTech software may also be protected under the copyright regime. Under Article 4(1) of the Copyright Ordinance (Cap. 528), a computer program and preparatory design material for a computer program are recognized forms of literary work subject to copyright protection. In fact, since “computer program” and “software” have been interchangeably used, software has generally been regarded as a form of literary work under copyright protection, which begins automatically as soon as the software is created, without registration or other formalities being required.
Under copyright law, you can prohibit others from using, reproducing or distributing your FinTech software. However, unlike patent, while copyright protection extends to software code and certain works within software applications, such as original text and original visual design elements, the idea underlying the software or the function of the software are not eligible for copyright protection. As such, copyright prohibits others from copying or distributing the source code, whereas it does not grant protection against others independently developing their own software code to create a FinTech software delivering the same functionality like yours.
For FinTech companies, branding of your FinTech products and/or services is also an important way to connect with customers and differentiate the product or service, particularly, you will no doubt wish to draw your customers’ attention on your FinTech product and/or services in the market. To distinguish your FinTech with other competitors and build up your own image, a sufficiently distinctive trademark for your FinTech product or service would be required. Thus, branding of FinTech products and services such as the logos, company names and the brand names of your product or service should be considered.
Before making an application for a trademark registration, it is good practice to conduct common law searches so as to ensure that the trade mark you are seeking to register is available in the market.
Trade secrets protection
If there is certain confidential information that you are seeking to protect, which is not typically fitted for protection under the patent nor copyright regimes, it is still possible to utilise the protection of trade secrets under the common law of confidence. In the context of FinTech, a trade secret could be a piece of important code, specifications, calculation or formula, a set of client data or its analytics, a business and pricing plan or even a launch date for a product or service, provided that it has commercial value and meets the required characteristics of trade secrets under Hong Kong law.
FinTech companies have to be vigilant in the treatment of the information, such as segregating confidential information from non-confidential information and restricting access to the former. Also, FinTech companies are encouraged to adopt practical ways to protect their trade secrets, such as the use of confidentiality clauses and non-disclosure agreements with business partners, investors and employees.
In the highly competitive business landscape of FinTech, it is vital to develop an effective and cogent IP strategy since the early stage of the development of any product or service. To protect the product of innovation in a comprehensive manner, all mechanisms available under Hong Kong IP laws, such as patent, copyright, trademark, and trade secrets, should be explored and implemented.
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Important: The law and procedure on this subject are very specialised and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
Published by ONC Lawyers © 2021