MSc in Computing (Information Technology)
The exclusion from patent of computer programs reflects international trends. However, is this a bar to software patents? Discuss.
Problems of information technology to the law are a source of unremitting interest to lawyers since the early 70s of last century. The task of this article is merely an indication of some of the characteristics of compound and computer programs, and more legal protection of these programs.
I would like to start a report with a discussion of the concept of legal protection of computer programs, which clarified themselves in the last three decades of the last century.
Lawyers distinguish between three concepts of the legal protection of computer programs: protected by copyrights, protection with a special legal regime - only for a specific computer programs (so-called protection of the sui generis), and the protection of patent law.
The first concept, where computer programs receive a protection as literary works, is an idea which is recognized internationally and was adopted in most acts of international law concerning the protection of intellectual property. This concept has become widely applicable.
1.1 Sui generis
This system has the following features:
- Existing creators/owners of software would be entitled to register in order to obtain full legal protection of every aspect of their software - from initial design algorithms, through code listings to all functional characteristics.
- Registration might be available to all creators/owners who could demonstrate that their software was substantially their own intellectual creation. No further account would be taken of such issues as novelty, inventiveness or industrial application.
- The duration of legal protection would be appropriate to the useful life of a computer program - say a maximum of five years, renewable annually.
- During the period of protection, other, would-be creators could decompile the software for the limited purpose of understanding the concepts, processes and techniques used.
- During the period of protection, would-be creators could obtain a license of right in respect of part or all of the protected software. The fee for such a license would then be agreed by the parties or, in default, by a suitable independent body.
According to the concept of sui generis protection, computer programs should be protected by a special legal regime, which is between the protection by copyright and patent. The authors of this concept argue that, none of the currently exist intellectual property protection systems do not match the specific nature of the protection order, which is a computer program. The protection resulting from copyright, it is insufficient, because copyright protects is an only form of the work, leaving contents outside the protection; it is an idea for a specific solution of the problem underlying the program. At the same time, the form is one of the essential elements of a computer program, and developer mainly focused to create the most optimal code of instructions for a computer in order to perform the intended task in a precise manner. That optimization of computer program obliges a big restriction on the developer. Supporters of this theory would be against protecting computer software using patents because it would cause such a strong protection for long-term exclusive rights to specific solutions, while leaving any other solution outside the protection. On one hand, arise, the exclusive use of certain proprietary solutions, on the other programs were not eligible for a patent, and would not be protected in any way.
1.2 Patent Protection
Many countries in the world that allowance patents permit the patenting of software-related inventions, at least to some degree. There is a worldwide trend of adopting patent protection for software. This innovation is made the adoption in 1994 and provides patent protection for inventions in all fields of technology, but which stops short of mandatory patent protection for software per se.
The most usually doctrine governing the scope of patent protection for software-related inventions is the "technical effects" doctrine that was first promulgated by the European Patent Office (EPO). This doctrine generally holds that software is patentable if the application of the software has a "technical effect." Thus, for example, software that controls the timing of an electronic engine is patentable under this doctrine, whereas software that detects and corrects contextual homophone errors (e.g., "there" to "their") may not be patentable.
The EPO law regarding patentability of software tends to be somewhat more liberal than the individual laws of some of the EPO member countries that conduct substantive examinations of applications on the merits. Thus, one desiring to patent a software-related invention in Europe may choose to file an EPO application designating the EPO countries in which protection is sought, rather than filing separate patent applications in individual EPO countries. An EPO application, after allowance, is then granted in force within the selected countries.
For each country, the exact nature of software patentability is a complicated question. Even in countries that are liberal in granting patents on computer software, certain limitations apply. For example, in the United States and Japan, software that affects a physical process may be patentable. If the software pre-empts a mathematical algorithm, however, it is not patentable.
Obtaining patent protection for any invention, including software, is relatively expensive. For each country in which patent protection is sought, the cost is typically several thousands of dollars in attorney fees, patent draftsman charges, and governmental fees. Why, then, would one seek patent protection for software rather than rely upon copyright protection? First, a patent is valid against everyone in that country that makes uses or sells the patented invention, even if the infringer invented it independently. In the United States, a provisional patent application may be filed on a software-related invention to preserve priority of invention that may then be perfected as domestic and international patent rights. Second, while copyright law protects only the expression of an idea, patent law protects the underlying idea, provided the idea is within the statutory categories of patentable subject matter and is not so fundamental that it constitutes a law of nature. Thus, for example, under U.S. patent law a mathematical algorithm is not patentable if the patent claim pre-empt the entire algorithm, but may be patentable if it applies the algorithm to accomplish a specific technical purpose. Finally, because many software products are mass-marketed without a signed license agreement, the strong protection provided by patent laws is increasingly important.
1. 3 Copyright protection
When the issue of intellectual property protection for software first emerged as one of crucial importance, the dominant intellectual property mindset was exclusionary. New technologies were to be protected either by the copyright family or by the industrial property family. It followed naturally from this stance that computer programs could be protected either as aesthetic creations or as industrial property, but not both. Which, then, was the more appropriate type of protection? With only two possible options, it is not surprising that there were two main schools of though. The first school favoured protecting software as an aesthetic work by means of copyright. The second school, by contrast, preferred protecting software as a type of industrial property. From the outset, it seems to have been taken for granted by this second school that the right approach would be to protect software as a patentable invention.
Over time, the copyright family began to emerge as the preferred means of protection in Europe.
Why should this be so? Here are five suggested reasons:
- When clients represented software to lawyers, they tended to show it in symbolic rather than functional mode. This coloured lawyers' understanding of the concept of software.
- Copyright was already a mature, effective and widely-understood regime with a well-established jurisprudence.
- Generally, copyright protection required no registration. Thus, there would be no need to develop or adapt an examination system in order to subject software to demanding, high-threshold tests for registration.
- Copyright had long before become a conceptual dustbin for new technological forms of representation as they were created.
- Copyright had developed a high degree of global harmonisation at an early stage. Software was clearly from the outset an international phenomenon. From this point of view, the two seemed made for each other.
On this basis, it appeared logical to classify source code - i.e. the symbolic representation of software in human-readable form - as an aesthetic creation. Object code - i.e. the symbolic representation of computer programs in machine-readable form - created more difficult conceptual problems. Insofar as object code could be seen as a translation of source code into another language, however, the fact that copyright readily protected translations from e.g. English into French seemed to provide a sufficiently close analogy to allow an machine-readable version of a computer program to be protected in the same way that the human-readable version.
If the European solution to the either/or conundrum was to be protection by means of copyright, it followed that the other leading contender - patent protection - should be excluded as a possibility. This was effectively achieved at continental level by means of the European Patent Convention 1973 (The Convention) - a provision designed to harmonise patent law in much of Europe and to facilitate the acquisition of a bundle of European national patents by means of a single application. By virtue of article 52(2) of the Convention, computer programs were deemed not to be inventions and therefore unpatentable. As states that were signatories to the Convention were required to ensure that their domestic law was in step with the terms of the Convention, this exclusion percolated down into national laws.
The rationale that was adopted for excluding software from the patent regime can perhaps be gleaned from the company that it keeps in the Convention and the Act. In both instances, computer programs are lumped together with `schemes, rules and methods for performing mental acts, playing games or doing business' all of which are also deemed to be unpatentable. Why should this be so? The exclusions appear to be based on the notion that all the methods in question are abstract, intellectual constructs rather than `down-to-earth' technical products or processes. As Gall argues: The reason for the exclusion of programs for computers as such is that, like discoveries, scientific theories, mathematical methods and presentations of information, they are not of a technical nature.
Patentability requires a specific technical application.
While such abstract constructs might well qualify for copyright protection once set down and recorded in some way, they were deemed to be unpatentable. Interestingly, though, the exclusions from patentability that we have just looked at were not absolute. Article 52(3) provided a loophole. It declared that the exclusion from patentability applied only to software as such. So, for example, provided that a patent application was for something more, than - or different from - a computer program as such, the application would be considered in the normal way. Unfortunately, though, the key expression as such was not further explained in the Convention.
The creators of computer programs are protected by copyright, although an increasing part of their work, they can also be protected in patent law and that despite of the legal exemption for computers programs from the scope of patented inventions. Copyright law protects the form of code, in this case a computer program, but will not protect its content, that is, solutions to specific problems, and also the general idea underlying the creation of the program. Patent protection can be specified as the solution of a technical nature, which is part of a computer program. This approach is consistent with the interpretation of the Convention on the Grant of European Patents, presented by the EPO and by the patent offices of other EU member states. The choice between these two forms of protection is not easy. Copyright law protects computer programs as a work without having to register it or even reporting. Protection of legal and author, however, has weaknesses. In particular, the lack of registration results in uncertainty in determining the point at which the protection is started. Also, to prove that somebody abuse the author right of a computer program, can be problematic.
However, I want to add that the granted patent for an invention realized by a computer, does not remove the protection by copyright for computer program contained in the present invention. A patent is granted for an invention, which may be part of a computer program (protected by copyright). Patent protection is much stronger, by the facilitate evidence related to the patent document, which provides evidence of the grant of patent protection, and indicates the beginning of the period of protection. However, obtain patent protection could takes a long time (the procedures in the Patent Office can extend up to several years), it is related to the cost (the registration fee and need to use the services of a patent attorney to the construction of the notification and also to check a context of art), and this is not absolutely sure that the patented invention will not infringe rights. This can takes much more time than expected and makes cost of litigation much bigger. In addition, there is a risk that the Patent Office finds a solution for the reported computer programs "as such", and refuses to grant a patent. In practice, where it is possible, a patent will not be necessary to take advantage of most of the programs created by developers. Copyright law allows the granting licenses to use the program, as well as the transfer of economic rights to another entity. Obtaining a patent would make sense when the risk of infringement of the creator of the program by a third party will be occurring.