Software: copyright or patents?

Copyrights and patents differ in the domain of software.

Read time 4min 20sec

In the first part of this series of Industry Insights, I introduced the issue of software and patents. In this Industry Insight, I will consider how copyrights and patents differ in the domain of software.

Computer software is subject matter that can be protected against the unauthorised activities of third-parties by means of two important types of intellectual property (IP), being copyright and patents. The nature and extent of the protection offered by these two forms of IP differ.

Section 11B of the Copyright Act 1978 gives the copyright holder the right to control reproduction or copying of the program, including the making of an adaptation of the program (meaning a version of the program in a different language or code, or on a different medium).

Dean OH (2006) provides that section 11B only protects the final stage of the computer program, that is, a stage where the computer program becomes a set of instructions to be used in a computer. Dean explains that work produced in earlier stages of the development of a computer program, such as flow charts depicting algorithm and other writings made along the way, is capable of being protected as literary works in terms of section 6 of the Copyright Act.

Traditionally, patents for computer software-related inventions and business methods (which are often closely related) were rejected by patent offices.

Chris de Villiers is a partner at Spoor & Fisher.

In both sections copyright is effectively dealing with piracy and outright copying (nauthorized reproduction) of software/algorithm, or where a link can be demonstrated between the original software/algorithm and an alleged adaptation.

However, whether section 6 or section 11B is used for protection, copyright cannot protect the concepts behind the program code, so a person who studies the operation of a particular architectural software package/algorithm, say, and then writes new code to implement the same features as in the original software/the algorithm, but without actually copying the original code/algorithm, will not infringe copyright.

Another practical shortcoming of copyright protection is the fact that copyright in most works does not have to be (and in most countries, cannot be) registered. As a result, it is onerous to prove ownership of an alleged copyrighted work for enforcement purposes.

Background to patents

In terms of patent law, the state rewards the owner of an invention with a 20-year monopoly in exchange for disclosing the invention to the public, so that only the inventor (or someone acquiring the invention from the inventor legitimately) is allowed to exploit the invention and is thereby able to “enjoy the whole profit and advantage” of the invention for that 20-year period.

Traditionally, patents for computer software-related inventions and business methods (which are often closely related) were rejected by patent offices, either because of specific limitations in the definition of patentable subject matter, or due to assumptions about the nature of computer software. It was thought that computer programs were more like books or compilations of data (literary works) than other technological subject matter, such as automobiles, machines and chemical compounds, and ought to be protected by copyright only. (Although copyright does provide some protection, it does not protect the underlying concepts in software-related and business method inventions, and patent protection is potentially much broader.)

However, as the computer age progressed, computers and software took on an increasingly central role in business and industry. Today, computers and software are at the forefront of technology.

Although patent legislation has been slow to adapt in many countries, there have been developments in the law in this area in a number of countries in terms of legislation, patent office policy and court decisions.

By way of example, where the Indian Patent Act was previously silent on computer programs, the Act as amended by Act No 15 of April 4, 2005, s 3(k) now provides that a computer program per se is not an invention. In the US, the Federal Circuit case of State Street Bank and Trust Company v Signature Financial Group Inc [1998] 149 F.3d 1368; 47 U.S.P.Q.2D 1596 found that computer software and business method inventions are subject to the same standard of patentability as any other patentable system or method if the software produces “a useful, concrete and tangible result”.

Recently, the UK Patent Office published a Practice Note after the decision in Astron Clinica Limited and Others v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85 (Pat) Case No: CH/2007/APP/0466.

The practice note clarifies the scope and nature of patentable subject matter with regard to computer software <>. These developments are nearly always in the direction of relaxing restrictions on the patentability of inventions involving software and business methods.

* In the next Industry Insight, I will look at the general requirements for patentability.

* Chris de Villiers is a partner at Spoor & Fisher.

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