IP infringement risks in agile software development: New research project at the MIPLM
Due to the 4th industrial revolution, companies increasingly change their way of innovating new products and services. In an effort to master the digital transformation, companies are shifting from the traditional waterfall-driven development process to a more agile one, to better solve customer-focused problems in order to create efficient and value-added innovations, in response to an often complex environment.
However, through the increasing digital character of newly developed innovations, companies must face and manage new and upcoming infringement risks due to intellectual property (IP) of third parties to approach a freedom to operate (FtO) status. Thereby the agile development process of digital innovations, based on its short development cycles and quick sprints with individual teams, makes the organization and integration of the assessment of IP infringement risks in development projects challenging.
The aim of this thesis is to contribute to an understanding of the management of IP infringement risks for software and digital innovations in an agile development environment. In that context, a first concept on how to manage and coordinate FtO activities in an agile development process was developed.
Three conditions are described to organize the IP management in an agile development environment. The integration of the IP management into the agile team, a full set of IP tasks and the dynamic adjustment of these IP tasks must be considered to adapt the IP management to an agile development process. For companies with a traditional business and a small but rapidly evolving digital business, a complete transformation from a traditional IP organization into individually-acting agile IP teams would be quite time-consuming and unproductive. By an ambidextrous organization of the IP management, fast-moving and digital embedded IP teams could be acting independently alongside with the current traditional IP organization. As the patent landscape for digital and computer-implemented inventions continues to evolve, FtO approaches for software and digital innovations are likely to become much more complex and different mitigation strategies will be required for different components and features of software and digital innovations. Companies will need to have a greater awareness of the patent landscape in technology sectors outside their traditional business and a willingness to adopt new strategies is needed to deal with the challenges they present.
FtO should be established along the lifetime of a development project and can not only be checked just before commercialization activities get started. The FtO process must therefore continuously be developed, expanded, and modified, also beyond the commercialization of the software or digital innovation. Furthermore, companies should shift from a freedom to operate to a freedom to action approach, to minimize their exposure to IP infringement risks as far as possible. By that, it should be the aim to balance between clearing IP infringement risks and becoming comfortable enough with IP infringement risks which cannot be eliminated.
Digital and computer-implemented patents differ in its definition from physical patents. It is important to know, which kind of patent types can be applicable to digital and software-implemented products or services. In that context, FtO searches for digital products and services are more complex, laborious, and time-consuming than searches of a traditional FtO of physical products.
Components and features of a software or digital innovation can be considered as individual bundles of IP rights and a prediction regarding their IP infringement risks must be made. In this context, bundles of IP rights can be evaluated in a layer-by-layer approach. A first base layer represents free state of the art and patent documents which are published and provide no risk for infringement. A second stack of risk layers consider for example risks due to computer-implemented and digital patents, standard essential patents, supplier components, and the IP risk when using free and open-source software. A final creative scope layer takes care of white spaces and patentable components and features.
To coordinate and manage the FtO process for software and digital innovations in an agile development environment, a FtO backlog can be created based on the elements and features of the product backlog. In this context, before, during and after the development project, IP infringement risks can be detected and mitigated. The FtO backlog is consequently integral part of the IP risk assessment and serves as the base for the further sprints during the entire agile development process and beyond.
The research project was conducted by MIPLM graduate Tobias Lipp and supervised by Prof. Dr. Alexander Wurzer and Dr. Thibaud Lelong both CEIPI.
After his professional activity as a Radiologic Technologist, Tobias successfully completed his studies in Patent Engineering at the Amberg-Weiden University of Applied Sciences in Germany. During his studies and in the course of his work, he has been able to realize and implement a variety of challenging projects in the field of intellectual property and innovation management. After successfully building up an innovation
department for a Spanish enterprise-university foundation in 2019, he decided to work as an independent IP consultant and patent engineer, in order to support companies, IP attorneys and strategic consultancies through multidimensional analysis and interdisciplinary consulting.
In 2021, Tobias undertook the Master of Intellectual Property Law and Management at CEIPI, University of Strasbourg.
Here is a description of the research project: