Claiming proprietary rights for new software

• The patentability of software varies from country to country depending on their laws
• Patent rights are 'stronger' than copyright; patent rights and copyrights in software can co-exist, each protecting a different aspect

IF you have developed new software, how do you ensure that you can enforce any legal rights against those who copy your software? What types of intellectual property rights are available to protect computer software?

It is commonly said and believed that computer software cannot be patented. Is that true? How can a software developer claim proprietary rights to new software that is developed?

Generally new software can be claimed as copyright under Copyright Law, provided the software created (i) is original, in that it is not copied from another piece of work; and (ii) sufficient skill and effort was expended in the development of the software.

The concept of originality in copyright is different from the concept of “novelty” required under patent law. The law requires originality regardless of the quality of the work. The software must be expressed in a tangible medium.

What is protected is the expression of the software in a medium. The idea or concept behind the software is not protectable by copyright. So, two pieces of software, though similar in looks and expression, may enjoy separate copyright provided one was not copied from the other.

For example, two accounting software programs may look similar and yet each enjoy separate copyright protection so long as one software was not copied from the other.

So for copying to take place, the author of the second software must have had access to the first software and would have copied the expression in the first software. Merely adopting the concept or architecture of the first software does not generally amount to copyright infringement.

On the other hand, to obtain patent rights, a patent applicant has to show that the claimed features of his/ her invention (i) is novel (new); (ii) has an inventive step; and (iii) is industrially applicable.

There is no novelty if the claimed features of the invention had been published or disclosed to the public before the first filing date of the patent application; the novelty-destroying publication can include the inventor’s own publication, or his own act disclosing the features of the invention to a member of the public who is under no legal obligation to keep the disclosure confidential.

Even though the new software may meet the three criteria for patentability, the Patents Act may specifically prohibit the grant of patent rights for computer software per se on grounds of government policy.

The Malaysian Patents Act specifically excludes the granting of patents for performing purely mental acts, mathematical methods and methods for doing business. However, under US law, the US Supreme Court has declared that anything made by man under the sun is eligible for patent rights.

Hence, the difference in view on the ‘patentability’ of computer software. Although software invention may qualify for patent rights in the United States, it would not be patentable subject matter in Malaysia and in many other countries.

Having said that, it must be realized that for a system incorporating software where the software is only a small part or is incidental, the system/ invention may be patentable. Thus telecommunication systems such as software embedded in smartphones may be patentable even under the Malaysian Patents Act so long as the patent claims claim a system and not the software per se.

The patentability or otherwise of computer software varies from country to country, depending on the laws of each country. So software developers are advised to seek professional guidance from experienced IP practitioners, and to not take a simplistic view that software is not patentable.

Why emphasize patent rights for software when software is already protectable under Copyright Law?

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.

Secondly, patent law can be used to protect the architecture or structure of the software, whereas copyright law only protects the expression of the software in a tangible medium.

Hence the clamor to obtain patent rights. Patent rights are “stronger” than copyright. Patent rights and copyrights in software can co-exist, each protecting a different aspect of the software.

In brief, software developers who are involved in developing systems (e.g. telecommunication systems, transactions over the Internet, etc.) are advised to seek patent rights where possible and not rely on copyright protection alone.

Software developers who develop software per se, such as accounting software, HR (human resource) software, and so on, without any technical effect may have to rely on copyright law alone. Seek professional advice when seeking proprietary rights for software.
 
Important Notice:

This area of proprietary rights for software is complex and varies according to the type of software developed and the countries in which protection is sought. This article is brief and does not address all the issues in detail. This is not legal advice, and is presented merely to highlight the complexity in seeking proprietary rights for software.

Software developers are strongly advised to seek professional advice from qualified consultants in this field and should not totally rely on this article. The author and the publisher do not accept any responsibility or liability whatsoever to any person who acts or fails to act in reliance on this article.
 
P. Kandiah is the founder and director of KASS International Sdn Bhd, an established intellectual property firm with offices in Malaysia, Singapore and Indonesia. He also specializes in identifying patentable inventions, designing around patented technology, and advising on the commercialization of IP rights, franchising and licensing strategies. For more information, visit http://www.kass.com.my/ or drop an e-mail to [email protected].