I. Protecting Software Design

Software patent and copyright are the two legal ways to protect a programmer’s source code, idea, or invention. Every programmer has an option to choose between patent or copyright; others chose to have both. To decide which will better protect the design, the developer has to think about what he is trying to protect. Are you protecting the code itself or the software idea and the process? Getting a patent versus getting a copyright are two different processes. Both protects software from theft under the law. However, each one protects different part of the software. Patent protects the idea, while copyright protects the written code. 

 

I.A. Patent

A patent application is a government grant of certain rights to a device or a process or an invention. Patent applications are filed with the United States Patent and Trademark Office (USPTO). USPTO will only grant patents if the invention meets certain criteria. It has to be “novel, useful, and non-obvious.”Patent gives you the rights to make invention or have it made and to use, market, sell, offer for sale, and import it. These monopoly rights will last for 20 years.[1]

Applications for Patent are made to United States Patent and Trademark Office in Washington D.C. (P.T.O.). The P.T.O examines each application to determine whether the claimed invention is novel, non-obvious and useful, and has been fully disclosed in the application. If the P.T.O. finds that these requirements are all satisfied, it issues a patent.

The patent gives the owner the right to exclude others from making, using, offering for sale, or selling the patented invention. This does not give the owner the right to exploit patent, because the patented invention itself be an improvement over a previously patented invention whose patent is still in effect. However, in that case the owner of the original underlying patent could license his own invention to the new patent owner for a royalty fee. 

A patent covers the idea underlying an invention and not just a specific expression or implementation of the concept. A patent can also cover the ideas embedded in software. A patented application should be applied for before any public demonstration of the invention, otherwise patent rights can be lost (such as 12 months after publication in the United States).[2] 

Patenting process can be expensive. Minimum cost for patent application is $4,000 over the life of the patent in the patent office fees, but additional attorney’s fees can add up quickly. A patent applies for 20 years “from the date on which the application for the patent is filed”. This is significantly shorter period of time than the duration of a copyright. A patent from the P.T.O. will apply only in the United States. The United States is one of the few nations that base patents on first-to-invent as opposed to first-to-file principle, though the first person to file obviously has default presumption in his favor.[3]

Disclosure of the idea underlying the invention is a requirement when applying for patent. The disclosure is a tradeoff between the inventor and the government. The inventor’s disclosure promotes progress because other inventors can build something out of his invention. The government offers protection to the inventor so that it can at least potentially benefit monetarily from his/her invention. The disclosure basically outlines on how to make and use the proposed invention.

The road to getting US utility patent application is often long and expensive journey. However, if you want to expedite your US utility application it is worthwhile to determine whether your application is eligible for one of the following options:

  1. Petition to Make Special – The petition fee is low, currently for $140 for non-small entity to none (free). A petition to Make Special may be filed without a petition fee if the basis of the petition is the applicant’s age (65 or older) or health; or that invention will materially enhance the quality of the environment, contribute to the development of conservation of energy resources; or contribute to countering terrorism.[4]
  2. Patent Prosecution Highway (PPH) - PPH is a cooperative program between USPTO and participating foreign patent office to expedite the allowance of application that previously received favorable ruling from another foreign patent office. There is no fee for making the request.

    3. The current list of countries participating in the Global PPH program, and those that do not participate but have other PPH agreements with the USPTO, can be found on the USPTO website. The list currently includes Australia, Brazil, Canada, China, Eurasia, European Patent Office (EPO), Israel, Japan, Korea, Mexico, New Zealand, Russia, Singapore, United Kingdom, among others.[5]

  3. Track One (Prioritized Examination) – Track one requires low attorney effort, but high USPTO fees. Prioritized Examination cost about $4,000. The program expedites the application with a goal to provide a final disposition within 12 months. A Track One request can be filed with an original non-provisional utility or plant application, or with a Request for Continued Examination (RCE), where the term “original application” includes both first filing and continuing applications (continuation, continuation-in-part, and divisional applications).Notably, Track One is not available for design applications.

    4. For original application filings, the Track One request must satisfy the following requirements: [6]

    • Request must be present on the filing of the application.
    • The application must be filed using EFS-Web (if utility) or in paper (if plant).
    • Application must contain, or be amended to contain, no more than 4 independent claims and 30 total claims, and no multiple dependent claims. However, the 4th independent claim and total claims in excess of 20 are subject to excess claims fees.
    • Application must be complete and ready for examination (basic formal requirements satisfied, such as executed oath or declaration and payment of necessary fees).

    For RCE, the Track One request must satisfy the following requirements:[7]

    • Only a single request associated with an RCE can be granted in a single application.
    • Request must be filed before an Office Action responsive to the RCE.
    • The request must be filed using EFS-Web (if utility) or in paper (if plant).

    Further, the granted special status terminates when the following occurs:[8]

    • Filing of a petition for extension of time to extend the time period for filing a reply.
    • Filing of an amendment such that the application no longer meets the prescribed claim number limitation.
    • Filing of an RCE, a notice of appeal, or a request for suspension of action.
    • A notice of allowance or a final office action is issued by the USPTO.

    Finally, there is a 10,000 granted requests quota per fiscal year, so it is recommended that applicants check the number of granted requests (available from the USPTO website) before deciding to file a Track One request.

  4. Accelerated Examination (AE) – The AE is similar to Track One application in many ways. Like Track One, the goal for AE is final disposition within 12 months, and the basic formal requirement for putting an application on file is similar. However, unlike Track One which has three months to respond to an office action, AE only has two months to respond. 

    5. AE application is considerably cheaper compared to Track One application which is only $140.00. However, the lower application fee has some drawback. The AE application must be filed with Accelerated Examination Support Document (AESD) which requires applicants to conduct their own prior art search and explain on record how their claims are allowable over known related art. Preparation for AED requires significant legal work upfront which can result to excessive attorney’s fees.[9]

    Nonetheless, one major advantage of an AE application compared to Track One application is that there is no quota for the number of applications admitted for each fiscal year.

Getting a software patent can be difficult especially if you do not have experience with software patent applications. The 2010 case of Bilski v. Kappos, the court set up the “machine or transformation test,” which means that software or processes has to be tied to a machine or turn one thing into another. It also means that your invention shouldn’t simply be for use with machine. “More than insignificant extra-solution activity” should be involved. This means that the software or process should play an important part in achieving a goal. 

Software patent is a highly debated topic. Some people feel that software should not be patentable. Many believe that it is a threat to innovation. This is because new programs often rely on older, patented programs to work well. Patents can interfere with developers’ ability to put existing programs to use.

Another discouraging topic about software patent is that you do not need a source code to apply for patent. This is because, legally speaking a code is a language. Patent is the software’s design and architecture, which are road maps for what the program is going to do. Many companies race to patent software before the software is fully developed. This is expensive and discourages innovation.

 

I.B. Copyright

The U.S. Copyright Act details protection works as to follows:

  • Make copies
  • Distribute the work (selling)
  • Make “derivative works” (translations or abridgement)
  • Share or perform the work in public.

Specifically, it is unlawful for anyone other than the owner to have the right to run, copy, modify or distribute the program except with the permission of the rights from the owner. It is also important to note that the original software is automatically copyrighted under International Law. There is no registration, copyright notice, or other such formality is needed to establish copyright.Copyright is automatic. However, there are numerous benefits to registration and it is highly recommended, if feasible.[10] Among these benefits are:

  1. Bringing an Action for Infringement. In order to file a lawsuit to enforce copyright laws in the federal court an application of registration has to be filed even if the infringement has already occurred.
  2. Evidence of Validity. It is your evidence that your copyright is valid. This could be important if a copyright infringement case is brought involving the work. It is important to file your registration before or within five (5) years of publishing your work to help you in the event that you need to bring a copyright infringement lawsuit in court. Your registration will satisfy a basic level of proof for the court of the validity of your copyright. This does not mean that your claim of copyright ownership is guaranteed. However, instead of having to prove that you are the actual copyright owner or that your work is protected by copyright, the other party will have to prove that you are not the owner or that your work is not copyrightable. While this may not seem like much of a distinction, you are in a stronger position in court if the presumption of copyright ownership is on your side.
  3. Creates Public Record. It puts others on notice that you work is protected by copyright and that you are the copyright owner.
  4. Satisfy Deposit Requirements. Subject to some exceptions, the Copyright Act requires that copyright owner deposits two copies of their work with the Library of Congress within three months after the work has been published. This is commonly referred to as mandatory deposit.
  5. Statutory Damages and Attorneys’ Fees: Enables the copyright owner to claim for attorney’s fees and statutory damages in case of a lawsuit.

Copyright last for the lifetime of the author, plus 50 years in many countries, and 70 years in others, including the United States. 

Copyright protection for a computer program extends to all of the copyrightable expression embodied in the program. It does not, however, protect the functional aspects of the computer program, such as program’s algorithm, formatting, functions, logic, or system design. It only protects the “expression” of the work.

 

I.C. Patent versus Copyright

Patent protects the idea, while copyright protects the written code. The advantages and disadvantages of both goes beyond simple legal protection. A software patent is difficult to get; while copyright on the other hand is easier, however it may not protect your software the way you need.[11]

Some Software includes patented process or patented inventions. However, usually – End User and Distributors generally do not need a Patent License for Software. A Copyright License will grant all the necessary protections. That is why most Software contracts rarely address patent rights.

The difference between copyright and patent is an old conversation. The Supreme Court has been dealing with this issue since 1879. In the leading case of Baker v. Selden,[12] the issue was the copyrightability of accounting book, a controversy that allowed the Supreme Court to set boundaries between patent and copyright law and between utilitarian and aesthetic works. The analysis of the Court in the case of Baker has been integrated into our recent copyright law through Section 102(b) of the Copyright Act of 1976, which excludes methods, systems, and processes from copyright protection. Throughout this evolution, courts have attempted to keep the distinctions made originally in Baker alive while recognizing the market realities of creative process through judicious application of the case’s holding.[13] Extending the doctrinal development of Section 102(b) is the evolution of copyrightable subject matter, including functional and utilitarian items including among others, computer software and databases. There were two modest changes to the 1976 Act: (1) adding a definition for computer programs – “A ‘computer program’ is a set of statements or instructions to be used directly or indirectly in a computer in order to bring a certain result”; and (2) expressly immunizing “the rightful possessor of a copy of a computer program” from infringement liability for running and making a backup copy of the program.[14] In 1976, the House Committee on the Judiciary wrote a report that went with the Copyright Act passed in the same year. In the same report the committee said that copyright doesn’t prevent people from using the ideas of the copyrighted work. This includes the process that results from using computer code.

“The ‘idea-expression identity’ exception provides that copyrighted language may be copied without infringing when there is but a limited number of ways to express a given idea. This rule is the logical extension of the fundamental principle that copyright cannot protect ideas. In the computer context this means that when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to an infringement.[15]”

While recognizing the important limitation on copyright protection for computer software, Congress intended that software programmers would garner protection to their program design and coding choices to the extent that the expression was separable from the underlying ideas. In short, the general programming ideas and unoriginal programming choices remain free for others to use while creative effort in particularized programming choices and compilations, especially in complex programs, gains protection against copyists. For example, a software manufacturer can observe the operation of a competitor’s copyrighted program and then create a program that accomplishes the same result and performs the same manner. To prove infringement, the copyright holder must show a striking resemblance between its software and the new software that could be explained by copying. However, if the new software’s manufacturer can establish that it developed the program on its own, without any knowledge of the existing program, there is no infringement. Two software manufacturers could conceivably develop separate buy nearly identical programs for a simple game without the other’s copyright.[16]

 

References:

[1] Patent law is governed by the Patent Act, 35 U.S.C. The same act governs design patens: protection for new, original, ornamental designs on manufactured goods.

[2] Deek, Fadi P. and McHugh, James A., Open Source: Technology and Policy, (New York, Cambridge University Press, 2007), page 228.

[3] Ibid, page 229.

[4] USPTO, “708 Order of Examination [R-11.2013],”https://www.uspto.gov/web/offices/pac/mpep/s708.html, (Accessed on 6/28/2019).

[5] Ibid.

[6] Norris McLaughlin, P.A., “Need a Patent Quickly? USPTO Programs for Expediting Prosecution,”https://norrismclaughlin.com/tap/2018/01/25/need-patent-quickly-uspto-programs-expediting-prosecution/, (Accessed on 6/28/19).

[7] Ibid.

[8] Ibid.

[9] USPTO, “708 Order of Examination [R-11.2013],”https://www.uspto.gov/web/offices/pac/mpep/s708.html, (Accessed on 6/28/2019).

[10] “Copyright Registration” Copyright Alliance, https://copyrightalliance.org/ca_faq_post/copyright-protection-ata/, Accessed on 5/13/2019.

[11] “Software Patent or Copyright: Everything You Need to Know,” UpCounsel, https://www.upcounsel.com/software-patent-or-copyright, Accessed on 5/8/2019.

[12] 101 U.S. 99 (1879).

[13] Ghosh, Shubha “Patenting Games: Baker v. Selden Revisited.” Vanderbilt Journal of Entertainment and Technology Law, 2009/07/01, Vol: 11, p871.

[14] Mennell, Peter S. “Rise of API Copyright Dead?: An Updated Epitaph for Copyright Protection of Network and Functional Features of Computer Software,” Harvard Journal of Law & Technology; Spring2018, Vol. 31 Issue 2, p305-490, 186p.

[15] Ibid, page 317.

[16] Reynolds, George W., “Ethics in Information Technology,” Cengage Learning 2015, page 223.

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