This article is written by Praveen PK. 

Introduction

The fast-paced growth of the software industry has made it essential to protect the intellectual property vested in the software programmes and the machines using such software programmes. Software is a set of instructions that commands the operation of a system to perform a particular task or to achieve a particular result and it is intangible in nature. Unlike traditional products, when the software is sold, the buyer gets a license to use the software along with some specified rights indicating the dos and don’ts for the licensee.  The competitive nature of the software market makes it vulnerable to piracy or being copied. This necessitates the protection of the software under IP Laws. 

IP for software

Copyright and patent are the two things which come to our mind while talking about protecting software. Software is expressed in the form of source and object code and is similar to that of a literary work. Hence Copyright is the preferred method in protecting a software programme. But a patent can also be granted on fulfilment of stringent criteria imposed by Patent Laws. Comparatively, patents offer stronger protection than copyright. This article will provide an insight on when software can be Copyrighted when it can be patented and the level of protection granted under both Copyright and Patent. 

Software and copyright

Copyright is one of the kinds of intellectual property rights which protect original literary, musical, artistic, dramatic works etc. from its unauthorized use. As a basic principle, the copyright law confers protection only to the expression of an idea and not the idea itself. The effect of this being, a single idea can be expressed in many forms and each of such expressions can be protected under the copyright law.  Originality is the basis of copyright protection and so, need for an artistic quality is not necessary for obtaining copyright protection. 

What is protected under Copyright

• “Literary work” which includes any written work like books etc. Software is a kind of literary work.
• “Artistic work” which includes painting, drawing, photography, engravings, sculpture, architectural work etc. 
• Under the “Musical Works”, only the music is copyrighted and not the words or actions done in performing the music. 
• “Sound recording” means a recording of sounds from which sounds may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced. A phonogram and a CD-ROM are sound recordings. 
• “Cinematography” which in its widest sense includes all video clips and visual recordings. 

Registration of Copyright

A copyright comes into existence as soon as the work is created. The law does not say that the registration of a copyright is compulsory. The registration is preferable because the registration certificate issued by the Registrar of Copyrights will act as a prima facie evidence in a Court of law while dealing with cases of infringement. 

Registration – The Procedure

Every copyrightable work falls in any one of the six categories viz. Literary, Musical, Artistic, Cinematography, Sound recording and Computer program.  The Registration can be made both by way of online filing and manual offline filing. The application can be filed either by the author of the work or its owner. If the application is filed by the owner, a no-objection certificate has to be obtained from the author. It is not necessary that the work should be an unpublished one. Even a published work can be copyrighted provided the application is accompanied by necessary documentary evidence as to its publication.

While filing the application, the author/owner is required to give notice to the persons interested in the work to be copyrighted. If the Registrar does not receive any objection from the interested parties within 30 days from date of filing and the Registrar is satisfied with the originality of the work, he will enter the particulars of the work in the Register of Copyrights. A copy of the same will be signed and issued to the applicant.

Term of Protection 

The general term of protection under Copyright Law is a lifetime of author + 60 years.

What will be protected when you copyright a software

A copyright protects original literary works which are expressed in some material form. Computer programmes (software) are considered as literary works as they are expressed by way of source code and object code. The source and object code of software constitutes the literal elements of a computer programme and are protected under the Copyright. However, some appropriate non-literal elements like the overall structure of the programme are also protected under the Copyright. To put it in other words, the visual appearance of the software can also be protected though it is not a literary element per se. Nevertheless, if the source & object code contains any algorithm which is frequently used in computer programming, it is not capable of protection under copyright. 

Internationally, there is a concept of “idea-expression” dichotomy. It means that copyright protection extends only to the expressions of an idea and not the idea itself, procedure, methods of operation, etc. But this dichotomy has not been recognized in Indian Law. Because protecting the expression of ideas related to the visual display of a programme can be of more importance than its expression. Such an idea, though is a non-literal part of the computer programme, can be protected as a part of the overall structure of the computer programme. Nevertheless, the basic idea and the functionality of the software are not protected by copyright law. To put it in other words, owners cannot protect the idea, concept & principle behind the software, its procedure & process, method of its operation, etc. 

Rights of an owner over a copyrighted software

The owner of a copyright has the right to assign or grant a license in respect of his copyrighted work. The agreement for an assignment needs to be in writing and must contain the following details viz. duration, royalty, revision, extension and termination of License. At the end of the license period, all the rights over the software will return to the owner, unless the agreement is renewed. 

Exceptions to Infringement

As computer software is categorized as literary work, the owner’s rights are limited by ‘fair use’ and ‘reverse engineering’. That is to say, the following acts are not considered as an infringement of copyright in relation to a computer programme. Under the fair use, making of copies or adaptations of the computer programme by the lawful possessor in order to back up for protection against temporary loss and for using it for the purpose for which it is supplied is permissible. And, reverse engineering is permissible for developmental needs. 

Software and Patent

A Patent is a grant of a monopoly over an invention to its inventor. Unlike Copyright, a Patent protects both the idea and its functional aspect. The issuance of a patent creates a legal situation where the patented invention can be exploited only with the consent of the patent holder. 

What is protected under Patent?

In order to qualify for a patent, an invention must satisfy three conditions viz.  

• Novelty i.e. newness. While examining the patent application, the invention must answer the following question to fulfil the criteria of novelty. i.e. what is new at the time of filing the patent application? Or what the inventor has added to the existing human knowledge on the subject.
• Non-Obviousness – The invention must contain an inventive step which has not been anticipated by a person skilled in the art. 
• Capable of industrial application.

Further, the Patent Act provides an exhaustive list of subject matters under section 3 which are not patentable.

Registration

To get a monopoly over the invention, registration is mandatory. The monopoly is granted in exchange for the information about the invention which the inventor is supposed to disclose at the time of registration. The exclusive right to exploit the invention is granted to motivate the inventors for technological advancement. 

Registration – The Procedure

Application for registration of Patent can be made either by the inventor himself or his assignee or his legal representative. The application should be filed at the appropriate Patent Office based on the applicant’s residence and principal place of business. The application should be accompanied by a provisional or complete specification. If the application is filed with provisional specification, the complete specification must be filed within one year from the date of application. After the application is filed, it shall be published to receive opposition.
After filing the application and its publication, a request for examination has to be made within 48 months from the date of filing. The application will be examined by the examiner in respect of the following questions viz.

• Whether the application complies with the requirements of the Patent Act?
• Whether there is any lawful ground for objection to granting of Patent?
• Whether there is the anticipation of the invention by Prior Art? (Patent Search)

The examiner will submit his report to the controller of Patent. If the complete specification is accepted and the application is unopposed, Patent shall be granted to the applicant. The term of protection for a patent is 20 years from the date of filing of an application.

Term of Protection

The patented invention will be protected for a period of 20 years from the date of filing the application. 

What will be protected when you patent a Software

A patent provides more secure protection when compared to copyright. In a patent, the precise boundary of patented software is known due to the very nature of claims laid down by the patentee in the patent document. It can protect both the ideas and the functional aspect of the software. But, under section 3 of the Patent Act, computer programmes “per se” are explicitly excluded from patentability. This, however, is not a blanket exclusion of computer programmes from the ambit of Patent. A computer programme will become patentable when it transcends the “per se” status. It is said to have transcended the status of “per se” when such a computer programme is implemented in hardware to solve a technical problem, provided the hardware component is shown to form an essential part of the invention. Some sort of interdependence must be shown between the software and hardware components to claim protection under Patent.

Examination of patent applications involving computer programmes is the same as that for any other invention. The invention must be “novel”, “non-obvious” i.e. must contain an inventive step, must have “industrial applicability” and there must be “sufficient disclosure of information”. 

While examining patent applications concerning computer programmes, more attention is given to the substance of the claim rather than the form in which it is expressed. The substance of the claim must be analyzed to ascertain the connection between software and hardware components i.e. the means and function. Means corresponds to the computer programme and the function corresponds to structural feature/hardware functioning with the help of the computer programme. 

What needs to be shown is some sort of “interdependence” between the software and hardware components and not “complete dependence” of hardware on the software. That is to say, if the structural feature performs the invention solely by the computer programme, then, in that case, means plus function claims shall be rejected as these means are nothing but computer programmes per se. 

The patent applications involving computer software is widely categorized into three types viz.

• Claims concerning method/process in which the software produces a technical solution are patentable provided it does not contain business methods, mathematical formulae, algorithms, and computer programmes per se.
• Claims concerning apparatus or system are patentable if it satisfies the means+function format as explained above. 
• Claims concerning computer-readable medium or computer programme products are nothing but computer programmes per se and hence not patentable. 

To put it in other words, a computer programme can be patented when it has hardware limitations, implements a technical process and has a technical effect. These considerations help a computer programme surpass the status of “per se” thereby making section 3(k) of the Patent Act inapplicable. 

Conclusion

Depending on the nature of software to be protected, the applicant can either opt for Copyright or Patent. If it is purely a computer programme aimed at performing a particular task or achieving a particular result, it can only be copyrighted. Though the Patent promises more secure protection, the software can qualify for the grant of a patent only if it has a hardware limitation. 

LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. You can click on this link and join: