1. International Laws
and Reverse Engineering

2. HKUST Business School
2
International Patents: General Rules
 Paris Convention (over 100 countries)
 “National treatment” assures all patent holders in a
country the same treatment whether they are
foreign or domestic patent holders.
 This does NOT extend rights of patents in one
country to another country. Patents must be filed
in each country separately.
 Priority of filing in every country considered to be
same as initial patent filing; 12 month limitation.
 Does not require same application process.

3. HKUST Business School
3
International Patents: PCT
 Patent Cooperation Treaty (1970 / 1975)
 Goal is to save time and money for governments
and patent applicants by streamlining international
patent application processes
 Allows filing “international patent” with countries
for which patent is applied selected from list.
 International central repository receives
application and distributes information.

International patent search saves time for each country

Looks to see if technology is new and non-obvious

4. HKUST Business School
4
International Patents: GATT / WTO
 Uruguay round of GATT (1986) reached
agreement on intellectual property (TRIPS)
 Trade-Related Aspects of Intellectual Property
Rights (some similarities to Paris Convention)
 Most favored nations rights – no special deals.
 Universal minimum standards for laws

Can not exclude specific technologies

Can not show bias towards any locations of invention

Must provide protections for all patent holders in country

At least 20 year protections for patent holders

5. HKUST Business School
5
International Issues and Differences
in Intellectual Property Law
 Four types of laws to consider
 US law
 UK / EC laws
 HK laws
 Rest of World
 Four areas of IP laws to be addressed
 Copyright
 Patent
 Trademark
 Other laws and means of protecting innovation

6. HKUST Business School
6
Patent International Issues
 Patent laws increasingly similar worldwide
 Treaties bringing patent life to same length
 Treaties under WTO requiring similar treatments
 However, registration of patent still required
in every country, unlike with copyrights
 Registration process different in each country
 Costs of registration and process of registration
not same in each country, and may not be the
same for citizens versus non-citizens of country

7. HKUST Business School
7
UK / EU Patent Law Differences
 UK and EC patent law formally prohibits:
 Patent of computer software
 Patent of business process or methods
 Both are allowed as patents in USA
 However, differences are less than they seem
 Some patents in UK and EC have been granted
for software as “part of” a “technical innovation”
 Some patents for business process innovations
were granted which include “technical innovation”

8. HKUST Business School
8
Short Grace Period for Prior Use
 Patenting an invention in any country starts
the clock as a legal publication that creates
prior usage unless patented within short time
 Must patent in every country where you want
patent within one year of first patent being filed
 Some countries apply six months test
 Some countries have zero tolerance for
publication or patent in other countries prior to
application
 Simultaneous applications recommended

9. HKUST Business School
9
When Patents Don’t Work
 Software – often can not qualify for patent
 Generally protected by a different type of IP Law
 Copyright, Trade Secret, Trademark
 Semiconductors – why not patent protection?
 How long does it take to get a patent?
 What is required to get patent issued?
 Small Businesses – can you afford to patent?
 Cost of getting patent
 Cost of ENFORCING PATENT

10. HKUST Business School
10
Copyright International Issues
 Laws for copyright are very similar worldwide
 Some differences in what is allowed “fair use”
 Some differences in penalties for violation
 Some differences in criminal code application
 HK Law versus USA laws
 Criminal act to sell ANY pirated goods in HK, but
not as easy to be subject to criminal law in USA
 Criminal act to USE any pirated software in any
form of business in Hong Kong (for firm and user)

11. HKUST Business School
11
International Trademark Issues
 The only international Trademark laws that
exist are EU laws related to EU trademarks
 Similar in some ways to US federal trademarks
 Requirements for trademark registration are
not the same from country to country
 Protections under trademark differ as well
 Overlap with copyright laws, which are
internationally recognized (to protect brand)

12. HKUST Business School
12
Other Laws Worth Considering
 Personal Privacy Laws
 Why might these laws affect innovation?
 Contract laws (especially for eCommerce)
 eCommerce Registration and Trademarks
 When is Trademark on internet in commerce?
 UK requires direct efforts to market to UK
consumers, but US does not have this
requirement
 Trade Secret, Moral Rights, Design Rights
 Passing Off: Reputation, Goodwill, Custom

13. HKUST Business School
13
Personal Privacy Laws
 USA has relatively liberal privacy laws
 Medical information protected
 Video rental history protected
 Not much else is protected under US law
 Hong Kong has one of the most strict
personal privacy laws in the world
 Can not publish list of church members without
getting permission in writing of all members
 EU Privacy laws stronger than US laws

14. Reverse Engineering
14

15. HKUST Business School
15
Reverse Engineering Under
Patents versus Trade Secrets
 Patents allows protection of the
implementation of a system or machine.
 Publication of ideas and processes required
 Competition from overlapping product not allowed
 Trade secret protects ideas which are not
disclosed in public from being “stolen”
 Reverse engineering allowed
 Introduction of competing product or process
allowed, if acquired or developed by legal means

16. HKUST Business School
16
Trade Secret Reverse
Engineering
 Trade Secret does not protect companies
from having their products broken apart and
reverse engineered to replicate their design
 Patents or copyrights can provide some
protection against reverse engineering, as
can the semiconductor chip act, but there is
no protection at all under trade secrets
 The only protection trade secret provides is
against using information disclosed illegally

17. HKUST Business School
17
What is Reverse Engineering?
 Discovery of how a product is made by
working backward to find the method by
which it was developed or could be replicated
 Product must be acquired by legal means for
reverse engineering to be considered legal
 De-compilation of computer program is legal
 Patents may be able to stop reverse
engineering, but copyright and trade secret
will not stop reverse engineering. Why?

18. HKUST Business School
18
Why Permit Reverse
Engineering?
 Most copyrighted works reveal their contents
to anyone seeking to read or view them,
which makes reverse engineering irrelevant
 Software is a special case which could
involve using copyright plus trade secret via
use of compiled code if decompilation is
prohibited to grant protections stronger than
patent or copyright to functions never
expected to be protected in current IP laws
worldwide.

19. HKUST Business School
19
Reverse Engineering Software
 Decompilation of source code into assembly
language, and then into human readable
code is expensive and time consuming
 Imperfect results likely
 Requires making one or more intermediate copies,
which might be violation of copyright laws
 Alternative approach to reverse engineering
is to view code as a black box and watch
what comes out in response to a variety of
inputs

20. HKUST Business School
20
Encryption and Reverse Engineering
 One of the best ways to legally stop reverse
engineering of software is to combine
encryption of data and processes with
compiled code distribution of programs.
 Make simple and fast encryption / decryption
part of the compiled program code itself.
 DMCA protections dramatically increase
protection of compiled code.

21. HKUST Business School
21
Microcode and Reverse Engineering
 Reverse engineering of chips, including code
embedded in chips as microcode, is permitted
under trade secret and copyright law.
 Patents provide greater protection, but it is
rare for computer chips to be patented.
 Why are patents rare for electronic circuit chips?
 Can you encrypt the microcode on a chip?
 How could this be done, and why would you want
to do this anyway?