By Megha Anand
The debate on the patentability of software has always surrounded inventions in the domain of Information and Communication Technology (ICT) / Computer Implemented Inventions (CII). This uncertainty can be attributed to the fact that the ICT / CII domain was a nascent and evolving technology. Hence, most patent offices did not have definite guidelines for examining inventions in this domain.
Copyright vs Patent Rights
If we look at the Intellectual Property (IP) Laws in Malaysia, we see that there is more than one form of IP right available to protect software, namely copyrights and patent rights. Copyright helps to protect an “expression of an idea” – software per se (aka source code) represented in a tangible form such as a printout or in digital format is deemed equivalent to “expression of an idea” and hence eligible for copyright protection. However, software code is not protected under patent law. This restriction distinguishes the two IP laws and demarks their scope of protection. Patent rights protect the system based on the idea and not the code itself.
Apart from the distinction in the scope of protection, the duration of protection too differs between the two IP rights. Copyright provides protection for a term equivalent to the lifetime of the author plus 50 years, whereas patent rights provide a term of protection of 20 years from the date of filing of a patent application. While some may argue that copyright offers a longer duration of protection and hence must be the obvious choice, others may disagree owing to fact that software technology becomes obsolete within a very short period of time.
The duration of protection makes copyright look lucrative but in terms of enforcement, patent rights get the brownie points. People working in the software domain know that there can be more than one way to solve a problem using programming languages. If another developer using different coding techniques develops a solution to a similar problem as solved by a copyright owner, the developer will not be violating the owner’s copyright. This is because the source code of the copyright owner and the infringer is not an exact copy. But under Patent Law, even if another software developer develops software which is similar or even identical to another software, he can be restrained so long as the features of their software infringe upon the granted patent claims, even if the later software was developed independently without knowledge of the existence of the earlier software.
Having said that, an idea or the functionality being implemented by software may be patentable, but does that mean that all R&D carried out in the software domain is patent eligible?
Is all software patent eligible?
As most of us are already aware, the three main criteria for Patentability are novelty, inventive step and industrial applicability. But when it comes to software, it is common knowledge amongst practitioners in this field that additional underlying requirements apply.
Before we conclude whether every R&D result in the software domain is patent eligible or not, let’s go back in time to trace the evolution of software patents.
In early 2000, the software industry had already reached its adolescence and was facing fierce competition. Hence, the need to protect new research to gain a competitive edge was felt by players in the software industry. This was also when the Agreement on Trade-Related Aspects of IP Rights’ (TRIPS) requirements were implemented in member countries and by virtue of TRIPS stating that inventions in all fields of technology must be protected under patent rights, the foundation for software patents was set. This resulted in a steep increase in the number of filings in the ICT domain. The booming software industry pressed the patent offices to appreciate the R&D in this upcoming field of technology. Hindrances though, were faced due to the intangible or abstract nature of software wherein a specific end-product could not be perceived.
However, changing trends in the software industry, development of more sophisticated software and rise in the number of filings in this domain led many countries including the USA, the UK, Australia, Japan, India and European Union (EU) to define guidelines for examination of software-based inventions.
Recent developments in Patent Law for software inventions
The 2002 revision of the Japanese Patent Law stipulated inventive intangible computer programs as a product invention, wherein the product corresponding to a software-related invention is a combination of multiple functions performed by an invention. The revision also allowed computer program claims which are directed to the software itself to be included in patent applications, in addition to usual apparatus and method claims.
In Australia, a recent Federal Court decision in RPL Central Pty Ltd v Commissioner of Patents established that computer-implemented inventions and business methods may be patentable subject matter in Australia, if the invention is new and inventive, even if it is implemented by software operating on a general purpose computer.
In UK, the landmark cases of Aerotel v Telco and Macrossan’s Application and Symbian Ltd v Comptroller General of Patents changed the landscape of software patent eligibility. As a result, UK grants patents in the ICT domain for software inventions which provide a solution to a technical problem and where the technical contribution that the computer program makes and the mechanism by which that technical contribution is achieved is explained in depth in the patent application.
Like the UK, the EU too grants patents for inventions in many fields of technology in which computer programs make a technical contribution.
As seen in recent cases and/or guidelines issued by EU, UK, Australia and Japan, software-based inventions may be patent eligible if they involve hardware and/or offer a solution to a technical problem in a novel and non-obvious manner. This aspect constitutes the additional underlying requirement which is applied to determine patent eligibility for software inventions.
In light of the above, we see that the guidelines for protecting software inventions are not harmonized yet and thus differ from country to country. Hence, it is always recommended that advice of a patent agent, who is familiar with software patenting, is sought before protecting your invention in any country of your interest. While the US was the most popular country for protecting software-based inventions, the trends now show that the EU has gained more popularity due to its consistency while examining patent applications in the ICT/ CII domain.
Exceptions in software patent eligibility
Moving further, although a software invention involves hardware and may provide a technical solution to a problem in a novel and unobvious manner, it may not be patentable if it falls in any one of the criteria below:
- Software per se, e.g., the source code or mere instructions in a specific programming language
- Mere mathematical methods, e.g., software for calculating daily expenses or profit and loss
- Methods for performing mental acts, e.g., software for accepting consumer feedback
- Methods of doing business, e.g., software for processing claims for an insurance policy
Let’s look at a few examples to understand patent eligibility for software invention. An invention for auctioning goods over the Internet may not be patentable as the invention, though implemented by a general purpose computer (hardware), does not solve a technical problem. On the other hand, an invention for improving control of a car braking system by sensing multiple parameters in the vehicle may be patentable because it solves the technical problem of reducing braking/stopping distance for vehicles.
What does this mean for us?
Currently, the Intellectual Property Corporation of Malaysia (MyIPO) has not issued any guidelines for examining software-based inventions. But as the EU, the UK, Japan and Australia are prescribed countries under the Malaysian Patent Law for expediting the examination of local patent applications, corresponding grants in these countries may result in a grant in Malaysia too. Hence, software invention based guidelines in the aforementioned countries may also apply in Malaysia until definite guidelines are provided by MyIPO to examine this emerging field of technology.
We can thus summarize that computer software can be protected under both copyright and patent rights. Copyright protection only extends to the expression of the idea, it does not protect the idea in the system underlying the expression. Thus, copyright does not give adequate or complete protection to software. Software inventions require a form of rights which protects its system or architecture regardless of the expression, i.e., regardless of the source code. It is patent rights that grant such rights to the system underlying the idea so long as the software invention involves hardware and/or the technical effect or solves a technical problem in a novel and non-obvious manner.
Note: This article is intended only to provide brief information on matters of concern or interest to readers and should not be treated as legal advice.
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