Out-Law / Your Daily Need-To-Know

IP should not be a hackathon afterthought

Out-Law Analysis | 20 May 2020 | 12:17 pm | 3 min. read

Participating in 'hackathons' will allow businesses to identify technological and procedural solutions to urgent challenges for their benefit and often for the benefit of wider society. How their involvement will impact on their rights to any intellectual property (IP) which is developed should however be considered at the outset.

The fast paced nature of these events can mean that the usual measures which companies put in place to identify, register and otherwise protect their IP – including their valuable confidential information and know-how – are not appropriate; but there are steps hackathon innovators can take to clarify issues of IP ownership and the rights to ongoing use and development of the innovations resulting from the hackathon.

What is a hackathon?

A hackathon is an event which typically spans several days, where a number of individuals meet to explore procedural, practical and technological fixes to problems, often those which are immediate and urgent or which are ongoing and remain unsolved in a particular area. It brings together innovators from different organisations to collaborate and concentrate their efforts, which inherently involves the sharing of ideas.

The concept of a hackathon has evolved in recent times from what may once have involved a mass of people coding for 72 hours straight with three day old pizzas and square eyes. Hackathons are gaining in popularity, and these events are often hosted virtually with participants from around the world and include specialists outside of the field of computer programming, including individuals concerned with developing solutions for issues ranging from those relating to products and services, to legal, social and economic problems.

A recent example was 'the legal access challenge' run by the Solicitors Regulation Authority (SRA) in England and Wales. This involved a competition to develop technological solutions to address problems with access to justice.

In the current crisis, a hackathon is an ideal vehicle to find immediate solutions to urgent problems which might typically have taken a company working in isolation years to develop on its own.

The coronavirus crisis has increased the popularity of hackathon events to address the many challenges the virus has created. The European Commission's Innovation Council (EIC), in collaboration with EU member states, and separately the Financial Times, have used the format of a hackathon to provide a forum to develop innovative solutions during the current pandemic. 

The EIC-led #EUvsVirus hackathon spawned 117 winning solutions, including a 3D visualisation technology that allows clinicians to analyse 3D diagnostic data hands-free and in line with safe social distancing rules. Among the other winning solutions were a remote queue-handling technology for retail stores and a virtual solution for experiential learning, allowing people to create their own virtual "villages" and share these with family, friends, teachers and peers.

These solutions demonstrate that, in the current crisis, a hackathon is an ideal vehicle to find immediate solutions to urgent problems which might typically have taken a company working in isolation years to develop on its own.

Two teams at Pinsent Masons, the law firm behind Out-Law, have been involved in projects as part of the virtual hackathon organised by the Financial Times: The Financial Times Innovative Lawyers – Global Legal Hackathon Challenge. One of Pinsent Masons' teams created a challenge for participants as part of the hackathon to develop solutions to the unprecedented disruption on global supply chains caused by Covid-19, by considering collaboration within supply chains and behavioural contracting.

Hackathons, IP and legal support

Participants may come to the hackathon armed with fully developed ideas but many will develop ideas as the event unfolds. Solutions that are new and original may be eligible for IP protection, so knowing at the outset who will own the IP created at a hackathon and have user rights is therefore fundamental.

Traditional legal processes and documents usually put in place by companies and individuals to identify and protect their valuable information, creations, inventions and know-how, are not usually appropriate for hackathons, which by their nature are urgent and spontaneous – particularly those taking place in the middle of a public health emergency. Some traditional legal mechanisms – such as confidentiality and non-disclosure agreements – may even dissuade people and organisations from participating.

To address this, the organisers of hackathons often include brief terms relating to IP ownership and user rights, and sometimes the liability position for participants and organisers, in the terms and conditions for the hackathon. Some hackathons now have legal experts on hand as advisers for participants, and some are designed with the legal community as participants themselves, with the aim of solving legal problems as referred to above.

Innovators who participate in hackathons and other similar events should make sure they at least understand at the outset and, as appropriate, secure the rights to use and further develop the solutions created at such events. Solutions developed in the current crisis could be vital in combatting health, social, economic, legal and financial problems in the future. Without clarity as to rights of use and adequate protections, these solutions could be open to misuse by those not involved in the original development who may aim to commercialise in bad faith, exploiting gaps in protection.

It is equally important after a hackathon for participants to collaborate to consider the steps they should take when further developing their solutions and partnering with investors and end users, to make sure the solutions and related IP are properly protected for the benefit of all of the parties involved.

Co-written by Bella Phillips of Pinsent Masons, the law firm behind Out-Law.