With software inventions eligible for protection under patent or copyright laws, Espie Angelica A. de Leon highlights key considerations, advantages and limitations of patents and copyrights in safeguarding software developments. 

Software innovations may generally be protected by patent or copyright. Understanding the essentials and parameters of both patent protection and copyright protection for software is therefore essential to deciding whether to apply for a patent or copyright.  

In some jurisdictions like the United States, the software program itself can be patented. 

In others such as the Philippines, software per se cannot be patented. “However, if the software provides a technical contribution, such as a software-controlled manufacturing process, then there can be patent protection,” said Jose Eduardo Genilo, a partner at Angara Abello Concepcion Regala & Cruz (ACCRALaw) in Manila. “However, the software itself is not the one given protection but rather the combined elements of the invention.”  

More specifically, patents protect the technical features and processes inherent in the software as well as the high-level function it performs. “Patents protect novel and non-obvious inventions. The software must demonstrate a new and inventive step beyond what is already known,” added Nancy Qu, a partner at Chang Tsi & Partners in Beijing. 

Copyright protects the specific expression of ideas in the software. Hence, it protects the software code that enables the program to perform its function, including the object code, the overall structure, sequence and organization of the code. 

Under Philippine laws, intellectual property protection for software falls only under copyright. “A benefit of this is that there is no need to register the software in order to obtain copyright protection as protection starts from the creation of the software. Further, the copyright lasts longer than patent protection,” said Genilo. 

According to Qu, the term of patent protection for a software invention is 20 years from the filing date. Whereas for copyright, the terms of protection are author’s lifetime plus 50 years for individual work, and 50 years for a corporation.  

Qu enumerated the other differences between patent and copyright under China’s IP laws: (1) For a software innovation to be granted a patent, it has to be novel, inventive and practically applicable. On the other hand, the requirements for copyright are originality and fixation in tangible form. (2) Since copyright protection is automatic upon completion of the work, in this case, software, enforcement of the copyright does not require registration. Meanwhile, the patent must be granted by the IP or patent office in the jurisdiction for it to be enforced. (3) The strength of protection is also different. “Patents of software is the strongest IP right in China. It can prevent others from making, selling, offering for sale and importing the products implementing the technical solutions of the granted patent,” Qu explained. “Copyright of software is relatively weaker. It can prevent others from copying the expression of the software. Conditions for determining copyright infringement are access to the copyright and substantial similarity.”  

“Patent protection is always much stronger and impactful owing to the overall protection it offers in terms of functionality/structure of the software [other than] the expressions that may be used for implementing the software,” said Tarun Khurana, a partner at Khurana & Khurana in New Delhi. “In the Indian context, in view of Section 3k of the Patents Act, one should contemplate to file a patent application for software only in cases where the problem being solved by the invention is technical in nature and the solution is technical too, such as for network security, encryption, modulation, image processing technique, processor time related, memory latency or management related among others. However, subject matters that focus on solving a business, management or non-technical problem won’t be held patent-eligible in India.” 

Madeleine Kelly, a partner at FB Rice in Melbourne, agrees. “Patents tend to offer better protection as it is often broader and there is no requirement to prove access or copying in order to enforce a patent. And while the duration of copyright protection is longer – 70 years after the death of the author as opposed to 20 years – most software code tends to be obsolete by the 20-year patent term,” she noted. 

Patent and copyright each have their own pros and cons, according to Genilo. “A disadvantage of copyright protection for software is that others who independently create similar software would not be liable for copyright infringement. Thus, it is possible that two similar software programs can validly co-exist if they were independently created by their respective authors. For patents, the benefit is that one can prevent others from using the same invention which has a software component, even if the other invention was created independently from the patented invention,” he said. 

Copyright does offer an advantage, however. Qu explained: “The protection term for patents is only 20 years from the date of filing. In the first 20 years after the technical solutions of software are created, patent protection is the best IP right for protection. The copyright of software can only protect the specific expression of the software. But the protection period is much longer – 50 years for a corporation’s work, a lifetime plus 50 years for individual work. After the 20-year patent protection term expires, copyright would be the ideal IP basis to enforce rights.” 

As China adopts the first-to-file policy for patents, Qu advises applicants to file their patent applications for software early and at the right time, that is, once the technical solutions are mature and before opening to the public. 

Though copyright protection is automatic and registration is not required, Qu and her firm also recommend copyright owners who wish to register to file for copyright protection as early as possible once the software is created and obtain a certificate of registration. This will preliminarily prove copyright ownership and thus better safeguard the owner’s rights, as compared to merely relying on automatic protection. 

In China, copyright filings for software are more common than patent filings for software. Two factors account for this: One, the copyright registration process only takes one to two months. Two, not all software is patentable. However, the applicant may simultaneously file copyright and patent applications for patentable software with potential commercial value. 

Major cases of copyright infringement in the software realm in China involve internal personnel or a third party who illegally obtained the source code and then copied it to come up with another software identical or similar to the original program which they sell in the market.  

According to Genilo, lawyers see more patents with software elements in the Philippines. But this is only because patent registration is required for protection, unlike copyright protection, where registration, called a copyright deposit, is only optional. “However, this does not mean that copyrighted software is not valued,” he pointed out. “Many software owners actually enforce their copyright. Enforcement of software can be done through search and seizure warrants, as well as civil, criminal or administrative complaints.” Similar remedies are also available for patents. However, a search and seizure warrant in connection to a patent has more requirements. In addition, a criminal case cannot, as a general rule, be filed for patents.  

It is the same in Australia. “As there is no formal registration process for copyright, there are no copyright filings, but all original software code in a fixed tangible medium attracts copyright protection so this would be more common. That being said, many applicants file patent applications for software inventions in Australia,” said Kelly. 

Patents and copyright are not the only options available when looking to protect a software program and its innovations. Genilo said that applicants may also go for industrial design protection if the innovation relates to a graphic user interface, computer icons or other visual designs.