The Idea of Software Patent Protections

By Dr. Aunya Singsangob

ABSTRACT

In general, computer software can be protected in various forms under intellectual property laws. However, most countries protect computer software in form of copyright as a literary work.
The difference between copyright and patent laws is that copyright law is usually associated with literary expression whereas patent law deals with processes, machine, composition of matter etc. Still, an idea of software patent protections has become more serious concern as it protects an idea.
Currently, there is no provision of patent laws clearly states that computer software can be obtained as a patent protection. However, there are different viewpoints arguing whether granting software patent protection is the right answer for promoting a computer software industry.

I. INTRODUCTION

The protection of computer software can be in forms of copyright, patent, trade secret, unfair competition, trademark, technical, and sui generis protection. But the most concerns for the protections are copyright and patent.
Under the copyright law, works of literature and science that are original and creative are protected. In regard of computer software, all forms of software can be protected via copyright independently of the medium on which or in which the program is stored.(1) However, the restrictions of copyright protection are not only there is no protection against independently developed software, but the idea or concept itself underlying the program is not protected as well. These drawbacks bring software developer seeking for another protection known as a patent protection.

It is generally recognized that the aim of patent law is to encourage innovation by providing an inventor a time-limited monopoly over commercial exploitation of the inventor's innovation. Comparing with copyright protection, patenting presents the advantage that the concept underlying an invention can be protected, whereas copyright protects only the specific form in which a concept is cast.(2) With this regard, the patent protection is considered as the strongest form of protection relating to the concept of the program to be protected. However, for patent protection, the inventor, in exchange, must disclose his or her invention so that others may utilize his or her knowledge. Under most patent laws, the invention, to be patentable, must be new, useful, and nonobvious.

In light of characteristic of computer software itself, it is the fact that most computer software use algorithms.(3) If the computer software contains significant end-user elements, it may produce screen displays resembling traditional works protected under copyright laws. (4) On the other hand, the computer software producing those user displays is usually composed of a series of algorithms that in machine-readable code are nothing more than binary instructions. Such software resembles industrial applications governed by the patent laws.(5)
Nevertheless, the computer-software patent issue is still unclear. Thus, this article will examine if there is any current provision of intellectual property laws- both international and national levels- that support software patent protections. Besides, the article will also discuss about the trend of software patent protections.

II. CURRENT AND TREND OF PATENT PROTECTIONS

Most key international intellectual-property treaties do not provide any express provision to deal with software patents. But, there have been efforts, particularly in the EU, to construe the relevant provisions in the way that would allow software patents, as well as to adopt software patent protection among member states. The following will briefly discuss whether the treaties consider the computer software as a patentable subject matter.
1. World Intellectual Property Organization (WIPO)

WIPO administers three key treaties concerning patent protections: the Patent Cooperation Treaty (PCT), the Paris Convention for the Protection of Industrial Property, and the Patent Law Treaty (PLT). This topic will discuss only the PCT because it provides a specific rule regarding computer software.

a) Patent Cooperation Treaty (PCT)

The PCT was signed in 1970, amended in 1979, and modified in 1984. The PCT establishes a mechanism for cooperation with regard to filing, searching, and examining applications for patents and for rendering special technical services. (6) The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application can be filed by anyone who is a national or resident of a member state. (7)
The PCT details the formal requirements with which any international application must comply. On the application, the prospective patentee indicates the member states in which he or she wishes his international application to have effect ("designated states"). (8) The effect of the international application in each designated state is the same as if a national patent application had been filed with the national patent office of that member state.

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. (9) 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." (10) 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. (11)

2. World Trade Organization (WTO)

a) Agreement on Trade-Related Aspects of Intellectual Property Protection (TRIPs)

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." At the same time, 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." These provisions indicate that, although TRIPs protects computer programs as literary works, patentability is not precluded if the application of such computer program makes technical contribution in a field of technology.(12) In other words, even if TRIPs does not clearly state that software-related inventions are patentable or exempted from patentability, Article 27 of TRIPs has often construed by patent lawyers to imply that patent claims must be allowed to extend to computer programs as long as they represent an application of a technical character satisfying the requirements of novelty, non obviousness, and utility. (13)

Part 2

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(1) H.W.A.M. HANNEMAN, THE PATENTABILITY OF COMPUTER SOFTWARE 4 (1985).

(2) Id. at 7.

(3) a set of rules or directions for the solution of a problem in a finite number of steps.

(4) DORIS ESTELLE LONG AND ANTHONY D'AMATO, INTERNATIONAL INTELLECTUAL PROPERTY 915 (2000).

(5) Id.

(6) PCT art.1.

(7) WIPO, Patent Cooperation Treaty (1970), at http://www.wipo.org/pct/en (last visited Apr. 15, 2001).

(8) Id.

(9) Regulations of the Patent Corporation Treaty (as in force from Mar. 1, 2000).

(10) PCT Preliminary Examination Guidelines, IV-2.4 (f), (Oct. 1998).

(11) MARKUS NOLFF, TRIPS, PCT AND GLOBAL PATENT PROCUREMENT 64 (2001).

(12) Id. at 65.

(13) Workgroup, The TRIPs Treaty and Software Patents, at http://swpat.ffii.org/analysis/trips/index.en.html. (last visited Apr. 15, 2001).