copyright vs patenting –with reference to computer programs

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COPYRIGHT VS PATENTING –WITH

REFERENCE TO COMPUTER PROGRAMS

VS

P.ILANANGAI

IP CONSULTANT

PATENT DEPARTMENT



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• Software is a computer program with a set of statements or instructions used in computer to bring out a certain result.

• The protection of software can be in various forms. But the most concerns for the protections are copyright and patent.

• Computer programs and their protection tend to focus on 3 elements: Source code - any collection of computer instructions written using some human-readable computer language;

Object code - sequence of statements or instructions in a computer language usually a machine code language; and

Documentation.

INTRODUCTION



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•Since the 1960’s software gradually emerged as a dynamic industry.

•Proprietary software firms rely on copyright.•The 1909 Copyright Act [United States].•The 1976 Copyright Act [United States].•WIPO and UNESCO in 1985.•Article 27(1) of the Agreement on Trade-Related Aspects of

Intellectual Property Protection requires that a ‘patent shall be available . . . in all fields of technology’.

•Article 10(1) states that a ‘computer program, whether in source or object code, shall be protected as literary work under the Berne Convention 1971’.

•Article 10(2) clarifies that databases and other compilations of data or other material shall be protected as such under copyright.

CONCEPT AND BRIEF HISTORY OF SOFTWARE PROTECTION



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• Copyright protects the literal expression of an idea, not the idea itself.

• Algorithms cannot be copyrighted but can certainly copyright a program that embodies those algorithms. The copyrighted work may be literary, audio, video, multimedia, etc.

• PURPOSE

To promote the exchange of information and advancement of

ideas that may benefit society.

The protection of an author's interest in his creative work. • ADVANTAGES Simplicity.

International copyright protection is automatic.

• contd..

COPYRIGHT



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• DISADVANTAGES

Independent development is not protected against.

Reverse engineering is not prohibited.

• Any original work, including software, is legally copyrighted as soon as it is recorded in a medium.

• Under copyright law, software is regarded as a "literary work". Obviously, copying a literary work verbatim is plagiarism ("infringement"), but the courts also view non-literal copying as infringement. If two works are not "substantially similar" in embodiment, then there is no infringement.

• Delrina v. Triolet Systems Inc.

• contd...



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• Oracle wins copyright ruling against Google over Android

• Oracle Corp won a legal victory against Google Inc as a U.S. appeals court decided Oracle could copyright parts of the Java programming language, which Google used to design its Android smart phone operating system.



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COPYRIGHT PROTECTION FOR COMPUTER SOFTWARE IN INDIA

• In India the Copyright Act, 1957 grants protection to original expression and computer software is granted protection as a copyright unless it leads to a technical effect and is not a computer program per se. Software per se is protectable as trade secrets under common law.

• Microsoft Corporation vs. Ms. K. Mayuri and Ors. 2007

• For a copyright protection, computer software needs to be original. a program which only generates multiplication tables or algorithms may not suffice the degree of effort required for protection. the work should be first published in India or if the work is published outside India the author on the date of publication or if the work is published outside India the author on the date of publication or if the author is dead at the time of his death should be a citizen of India.

contd…



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• In case of unpublished work, the author on the date of making of a work should be a citizen of India or domiciled in India. The Government accords the same protection to a foreign copyright author's work which is published in any other country which is a member of Berne Convention

• Section 2(o) defines 'literary work' and includes computer programs, tables and compilations including computer databases.



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PATENTS

• With respect to computer software, PCT Rule 39/67(vi) allows the exclusion of computer programs to the extent that the International Authority is not equipped to search or carry out an examination concerning such programs.

• Additionally, the PCT Preliminary Examination Guidelines state that "a computer program claimed by itself . . . need not be examined. . . . If however the subject matter as claimed makes a technical contribution to the known art, examination should not be denied merely on the ground that a computer program is involved in its implementation."

• contd…



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• Thus, the PCT does not exclude software-related invention from search and examination so far as the relevant authority is equipped to perform the search or examination.

• US:

• Software was not patentable prior to the 1970s.

• In 1946, Gottschalk v. Benson, an algorithm was rendered unpatentable, but only because there was no particular application defined for the algorithm.

• contd…



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• In 1981, in Daimond v. Diehr, the process claim for operating machinery using a computer was upheld as patentable by the US Supreme Court. The algorithm in question was patentable only in the context that it was used in conjunction with all of the other steps of the claimed process.

• With the US setting the precedence by allowing software patenting countries like JP, EU permitted patent protection for software.

• contd…



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• UK:

• UK does not allow stand alone software patents, but permits functional software patents to be protected under its Patents Act 1977.

• CHINA:

• China, Computer Programs are not patentable, but they considered for patent if they solve a technical problem and use a technical measure to generate effective outcome.

• EU:

• EU allows software patents only when there is a visible technical contribution. EUs intention was to harmonize software protection environment as most software patents were granted to US and JP owners.

• contd..



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• JAPAN:

• Like US, JPO follows the same principle of examination by considering the invention as a whole. In the year 2000, the guidelines were revised, which awards computer-related invention the position of 'statutory invention' and managed as 'invention of a product'.

• AUSTRALIA:• IBM v Commissioner of Patents 22 IPR 417 in 1991• It was held that IBM were entitled to the grant of a patent as the

production of an improved curved image was a “commercially useful effect” in computer graphics.

• CCOM v Jiejing 28 IPR 481 in 1994

• The CCOM case related to the storage, retrieval and display of Chinese characters on a computer screen and the means by which the characters were categorised for selection. The invention was held to be patentable.

• contd…



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• The IBM and CCOM cases have established that in Australia any new and inventive software application, which provides a commercially useful effect is patentable.

• CANADA:

• Software-related inventions have been recognized as patentable in Canada since the decision in Schlumberger Canada Ltd. v. Commissioner of Patents in 1981. Since Schlumberger, the Canadian Patent Appeal Board has allowed the issuing of a number of system software patent applications.

• contd..



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• Motorola (Re Motorola Inc. Patent Application No. 2,085,2283)

• The Board indicated that it was the presence of the ROM hardware which tipped the balance in favour of patentability. The software plus a hardware component yielded a patentable device.

• INDONESIA:• In Indonesia, computer programs are not explicitly prohibited as

patentable subject matter under Article 7 of Indonesia’s Patent Law No. 14 of 2001.

• Direct claims to computer programs that were granted include, for example, “A computer program written in a computer-readable format, so that processing to manage a wireless network is performed on a computer system, comprising……

• contd…



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• THAILAND:• Computer programs are explicitly ineligible to be considered as patentable

inventions under Section 9(3) of the Thai Patent Act B.E. 2522 (1979).• INDIA:• Under the Indian law, as per sec 3(k) a mathematical or business method or a

computer programme per se is not patentable.• a mechanical device or system to which a software is combined so that the

software can produce a functional or technical result and thereby assist in the operation of the device is patentable.

• 1567/DELNP/2003: Refused• “1. A method of communicating information between an author and a

recipient 9 comprising: formatting a document 115 in a code 112 compiling said code into a file of compiled code; disseminating said file through a computer network, 119 either by uploading said file to a server 117 or by making said file available through peer to peer networking; and forwarding said file to a distribution channel for presenting said document on said networked device 118, characterized in that:



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• The Controller: “The claims of the instant application relates in form to an “algorithm” wherein the “characterised” clause defines the computer program and its function. No inventive ingenuity lies in any of the existing hardware. The characterisation of the principal claim reveals existence of a code within a code and compilation of such a code with a necessary element which is again a code used for presentation of information in accordance with description. Therefore, the subject matter of the patent application falls under the excluded category from patentability under Section 3(k) and is of non –patentable nature.“

• contd..



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• 1695/DELNP/2005: Allowed• 1. A device (10) for storing personal profiles and for controlling

the access, from a plurality of remote entities (16, 18, 20) within a telecommunication network supporting a plurality of services, to databases storing said personal profiles, characterised in that said device (10) comprises a first plurality of databases (44, 46, 48) and interfaces (24, 26) for managing and centrally controlling the access

• This claim makes clear reference to devices, and more importantly provides use of each of the devices, when dealing with databases.

• it is not software/computer programme per se by including the necessary transformation of the database. In addition, it satisfies the ‘per se’ test because the desired ‘effect’ is achieved.

• contd…..



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• ADVANTAGES OF PATENTS

• A patent protects competitive advantage derived from your software development.

• A patent can secure a small company a place in the market and generate revenue from licensing or sale. By licensing a software development to a big company, smaller companies can avoid the problem of getting a software product to the market.

• In the event of a dispute with a competitor, it can be cross-licensed bringing you extra income and avoiding litigation costs.



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CONCLUSION

• Every nation attempts to simplify the patent laws towards computer-related inventions based on two factors, "as such" provision and majorly "technical contribution to the art". The conflict of interests between many jurisdictions still exists with regard to patenting computer programs.

• Global patent system for computer programs or software should be harmonized by all jurisdictions in the best interests of inventors, third parties, Patent Offices and majorly for the World economy. This is the best way to fight the problems for granting patents in modern world.



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THANK YOU

copyright vs patenting –with reference to computer programs

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