Table of Contents
Computer Software - Patentable and/or Copyrightable?
Literature Review on the Current State
WIPO (World Intellectual Property Organization)
EPO (European Patent Office)
Key Points in the Current State in Literature
Copyrightability of Computer Software
Legal Provisions
Copyrightability of Computer Software - Conventional Thinking
Patentability & Copyrightability of Computer Software
Legal Provisions
Process of Software Development. Use of an Inventive Step
Method of Solving a Technical Problem Algorithm
Conversion of the Algorithm to a Computer Program
55
B
8
Conversion of the Computer Program to Executable Code Software
Patentability & Copyrightability of Computer Software Non-conventional Thinking 9
Embedded Software in Products
An Example of a Patented Software
Mathematical Equations in Computer Software
An Example - Patents Claims for Computer Programs
Conclusion
References
Reviews
10
11
11
13
15
17
18
1. Computer Software - Patentable and/or Copyrightable?
Let's begin with the Conclusion.
Computer programs, also known as computer software, are both patentable and copyrightable.
The software can be used in any type of digital device, including mobile and devices.
Copyrightable parts
The executable object code in digital format
The source code written in high-level languages
The algorithms (steps of solving the problem)
Patentable part
The algorithms (or source codes in addition to algorithms)
that are steps of solving the problem which can be used in another process
The processes involving mathematical equations Products and processes that embed computer
programs are patentable.
The reason for starting with the Conclusion is not to prejudice the readers' mind but to keep the
focus on the logic behind the Conclusion in order to comprehend the logic easily.
The following discussion is based on the Intellectual Property Act, No. 36 of 2003 of Sri Lanka
(Referred to as SL IP Act in the discussion). However, these provisions are the same in all the
countries.
2. Literature Review on the Current State
The following are some related background knowledge that gives validity and authority for the
following discussion
Sections 2.1 and 2.2 depict some facts in the literature and Section 2.3 summarizes the key
information to support the facts and arguments in the following discussion.
2.1. WIPO (World Intellectual Property Organization)
Quoted below are some parts from the following webpage
https://www.wipo.int/copyright/en/activities/software.html
"In the 1970s and 1980s, there were extensive discussions on whether the patent system, the
copyright systent, or a sui genens system, should provide protection for computer software
These discussions resulted in the generally accepted prinople that computer programes should
be protected by copyright, whereas apparatus using computer software or software-related
Inventions should be protected by patent."
The law relating to the patentabilily of software es still not harmonized intemationally, but some
countries have embraced the patentability of computer software and others have adopted
approaches that recognize Inventions assisted by computer software."
Quoted below are some parts from the following webpage
https://www.wipo int/wipo_magazine/en/2017/01/article. 0002.html
"Final thoughts on software-related inventions
The aim, surely, is to create conditions that allow innovators and engineers to dedicate
resources to software development to find new ways to help us connect and do business. As
digitization gathers pace in all areas of our lives, the time is nipe for the global community to
re-examine the current atete of play and to weigh up the merits of enhancing patent protection
for computer programs that embody software-related inventions
2.2. EPO (European Patent Office)
"Computer programs are excluded from patentability under Art. 52(2)(c) and (3) if claimed as
such, However, following the generally applicable criteria for Art. 52(2) and (3) (G-II, 2), the
exclusion does not apply to computer programa having a technical character."
"Examples of further technical effects which confer technical character to a computer program
are the control of a technical process or of the internal functioning of the computer itself or its
interfaces"
"Claims directed to a computer-implemented method, a computer-readable storage medium or a
device cannot be objected to under Art. 52(2) and (3) as any method involving the use of
technical means (e.g. a computer) and any technical means itself (e.g. a computer or
computer-readable storage medium) have technical character and thus represent Inventions
within the meaning of Art. 52(1) (T 258/03. T 424/03, G 3/08).
2.3. Key Points in the Current State in Literature
The following three key points in Sections 2.1 and 2.2 help corroborate the arguments
presented in the following sections of patentability as well as copyrightability of computer
software.
In the 1970s and 1980s, lawmakers seriously thought about patentability of computer software
(programs) which were conventionally thought copyrightable only.
Inventions embodying computer programs are considered patentable now.
Computer software (programs) having a further technical character any method involving the
use of technical means (e.g. a computer) and any technical means itself (e.g. a computer or a
computer-readable storage medium) have tochnical character and thus represent inventions
and therefore patentable.
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Intellectual Property Rights of Computer Software
Are they Copyrightahle and/or Patentable?
3. Copyrightability of Computer Software
3.1. Legal Provisions
The following is a part of Section 6 of SL IP Act that relates to work that is copyrightable.
6.
(1) The following works shall be protected as literary, artistic or scientific works (hereinafter
referred to as "works) which are original intellectual creations in the literary, artistic and scientific
domain, including and in particular -
(a) books, pamphlets, articles, computer programs and other writings;
(b) speeches, lectures, addresses, sermons and other oral works, (c)
dramatic, dramatic musical works, pantomimes, choreographic works and other works created
for stage productions; (d) stage production of works specified in paragraph (c) and expressions
of folklore that are apt for such productions; (e) musical works, with or without accompanying
words; (f) audiovisual works; (g) works of architecture (h) works of drawing, painting, sculpture,
engraving, lithography, tapestry and other works of fine art: (j) photographic works; (k) works of
applied art: (1) illustrations, maps, plans, sketches and three dimensional works relative to
geography, topography, architecture or science.
3.2. Copyrightability of Computer Software - Conventional Thinking
All literary work falls under the copyrightable category. The simple meaning of copyrightability is
that it is the action of copying some information-writing, aesthetic appearance (arts, sculpture),
digital information from one media to another.
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Intellectual Property Rights of Computer Software
Are they Copyrightabla and/or Patentable?
Digital data, in this way, can be thought of as something that can be copied from one media to
another. In this context, computer programs, in their executable format, are solely copyrightable.
4. Patentability & Copyrightability of Computer Software
4.1. Legal Provisions
The following is a part of Section 62 and Section 63 of SL IP Act that relates to work that is
patentable-62
(1) For the purposes of this Part, "invention" means an idea of an inventor which permits in
practice the solution to a specific problem in the field of technology
(2) An invention may be, or may relate to, a product or process.
(3) The following, notwithstanding they are inventions within the meaning of subsection (1), shall
not be patentable.
(a) discoveries, scientific theories and mathematical methods:
63.
An invention is patentable if it is new, involves an inventive step and is industrially applicable.
Accordingly, if one finds something that is a technical solution to a problem satisfying the legal
criteria in Section 63, there is an Invention and it is patentable.
4.2. Process of Software Development Use of an Inventive Step
If we look at the process of software development carefully, it is very obvious that inside the
computer program, that is a technical solution to a problem which according to the law is
patentable.
Let's briefly analyze the software development process in order to identify patentable and
copyrightable parts.
4.2.1. Method of Solving a Technical Problem Algorithm
The initial step of software development is to identify the problem and write the steps of the
solution in simplified
human-understandable language. The steps can also be converted into a slightly technical
perspective known as a Flow Chart or an Algorithm. In any case, this is a solution to the
technical problem.
These steps can be copied and can be used as a solution or part of the solution to another
problem,
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Intellectual Property Rights of Computer Software
Are they Copyrightable and/or Patentable?
4.2.2. Conversion of the Algorithm to a Computer Program
Thereafter, the algorithm is coded using a desired high-level language.
This is also the solution to the technical problem but represented in a different way, one that a
computer can interpret.
This step can also be copied and can be used as a solution or part of the solution to another
problem.
4.2.3. Conversion of the Computer Program to Executable Code -Software
Finally, the coded solution in a high-level language is converted into machine-readable binary
digits by a process known as compilation. The resultant is stored in a portable and
machine-independent media in binary digital form that can be run on a digital system,
In fact, this is also a technical solution that can be readily executable.
4.3. Patentability & Copyrightability of Computer Software -Non-conventional Thinking
When we carefully look at the arguments in sections 4.2.1, 4.2.2 and 4.2.3, we can make the
following premises and conclusions.
4.2.1 is a technical solution to a problem. It can be copied and used as the solution or part of the
solution to another problem, and thus it is primarily patentable. It can be thought of as
copyrightable if the mere literary work is copied
4.2.2 is also a technical solution to a problem. It can be copied and used as the solution or part
of the solution to another problem, and thus it is primarily patentable. It can be thought of as
copyrightable if the mere literary work is copied.
4.2.3 is also a technical solution to a problem. However, at this point, it is only used for the
intended purpose, and the copying of the contents (0 and 1 s) is solely a copyright issue.
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Intellectual Property Rights of Computer Software
Are they Copyrightable and/or Patentable?
Thus, we can justify that computer programs are both copyrightable and patentable.
In patent legislations, computer programs are classified as copyrightable and there is no need to
change it. The patentable part is the technical solution in the computer program and technical
solutions are patentable under existing legislations.
4.4. Embedded Software in Products
Most of the products nowadays are digitally controlled. They can either be microprocessor
controlled or run on a predetermined digital logic. In both cases, there is some computer
software that operates the system. The programs are loaded into a RAM or ROM memory.
Such program-controlled devices have electro-mechanical parts controlled by the computer
program.
In systems like this, the whole product is patentable. The Algorithms and Source Codes could
also be copyrightable. The executable program in binary format is solely copyrightable.
4.5. An Example of a Patented Software
The first United States software patent was issued in 1968 for a sorting. system, which is a
computer software.
A part of the main claim of the patent (A Sorting System US 3,380,029, 1968) is depicted below.
What is claimed is not a computer program or a software but a method of solving a problem.
This is how computer software products are claimed as a patentable right.
1. In a data processing system including a plurality of magnetic tape units for serially storing
data signal combinations and having means for reading and writing signals during reeling
thereof in a forward direction, and means for rewinding to an initial position, a memory, and
control and arithmetic units including means for transferring data signals between said tape
units and said memory and between said arithmetic unit and said memory, and means for
performing sort operations on groups of said data signal combinations via said mernory to form
strings thereof and for performing merge operations on said signal strings via said memory to
form longer strings;
a control system for directing the operation of said data processing system to process a body of
said data signal combinations of a sorted sequerice on one of said tape units, said control
system comprising
(a) a first iterative control loop means having means for initiating operation of said sort
performing means to sort sets of said date signal combinations into sorted strings of a first
order, means for initiating writing by said writing means of said strings on said tape units, and
5. Mathematical Equations in Computer Software
In patent legislations (see Section 63 of SL IP Act in Section 3.3), mathematical methods
(equations) are not patentable among other non-patentable ones).
However, when we look at some issued patents, it can be observed that a process involving a
mathematical equation can be patented. The following is an example of how mathematical
equations incorporated in data encryption and decryption are patented. What is patented is not
the mathematical equation per se but the process (Algorithm) that incorporates the
mathematical equation.
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Intellectual Property Rights of Computer Software
Are they Copyrightable and/or Patentable?
RSA Algorithm: US 4405829 Cryptographic communications system and method
1. A cryptographic communications system comprising
A. a communications channel,
B. an encoding means coupled to said channel and adapted for transforming a transmit
message word signal M to a ciphertext word signal C and for transmitting C on said channel,
where M corresponds to a number representative of a message and OSMSin-1 where n is a
composite number of the form n-p-q where p and q are prime numbers, and where C
corresponds to a number representative of an enciphered form of said message and
corresponds to CM.sup.e (mod n) where e is a number relatively prime to 1 cm(p 1,0-1), and
C. a decoding means coupled to said channel and adapted for receiving C from said channel
and for transforming C to a receive message word signal M' where M' corresponds to a number
representative of a deciphered form of C and corresponds to MC.sup.d (mod n) where d is a
multiplicative inverse of e(mod(1 cm((p-1),(0-1)))).
One might argue that it is an equation that is patented and that argument is also true. There are
some exceptional and controversial rare cases which can be argued in both ways. Another such
example is the patentability of animals which is not allowed in law. However, a genetically
modified mouse- Harvard Mouse-has been patented in the US despite the fact that animals are
not patentable according to legislation. In some countries, of course, the product claim (mouse)
was rejected and only the process claim (process of genetic modification) was allowed. The
countries that allowed the product argued that if not for the genetic modification, such a product
would not have resulted while the countries that rejected the product argued that even if the
genetic modification is an invention, the subsequent growth of the animal was natural. Both
arguments are right. A judgment remains until it is overruled by a subsequent superior
judgement, and rejected the product argued that even if the genetic modification is an invention,
the subsequent growth of the animal was natural. Both arguments are right. A judgment remains
until it is overruled by a subsequent superior judgement, and the superior judgment may be
based on the other side of the argument which was earlier rejected.
6. An Example - Patents Claims for Computer Programs
The following are some tips that can be used when drafting patent claims so that the claim
appears as a patentable claim and not a mere copyrightable computer. program.
Write the claim as the steps of solving the problem.
Do not use the words Algorithm, Software etc.
If mathematical equations are used, embed the equations in the process.
Let's look at an overly simplified system and overly simplified claims to understand the art.
Example Product:
An ice cream vending machine that produces an instant customized ice cream by:
Getting some input of your choice (flavor, proportion, etc.) from a keypad, and
Looking at the customer's previous choices (stored in a memory)
And combining the present choice and previous choices according to a new algorithm ABC and
using a mathematical equation PQR.
The Main Claim (Not recommended way)
A process of making customized ice cream wherein the said process is controlled by a computer
program.
Do not use the words Algorithm, Software etc.
If mathematical equations are used, embed the equations in the process.
Let's look at an overly simplified system and overly simplified claims to understand the art.
Example Product:
An ice cream vending machine that produces an instant customized ice cream by:
Getting some input of your choice (flavor, proportion, etc.) from a keypad, and
Looking at the customer's previous choices (stored in a memory)
And combining the present choice and previous choices according to a new algorithm ABC and
using a mathematical equation PQR.
The Main Claim (Not recommended way)
A process of making customized ice cream wherein the said process is controlled by a computer
program.
A customized ice cream vending machine comprising a software.
The Main/ Sub Claims (Recommended way)
Process claims
1. A process of making a customized ice cream comprising the steps of: obtaining an input of
customer's present choice and
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Intellectual Property Rights of Computer Software
Are they Copyrightable and/or Patentable?
combining the customer's present choice and previous choices stored in a memory.
2. The process claimed in claim 1 wherein the said combining is done by (include the steps in
the Algorithm ABC) and using the mathematical function PQR.
Product claim
1. A customized ice cream vending machine comprising a unit for getting the input of customer's
choice and a memory for storing customer's previous choices.
As a more realistic example, let's have a look at the patent of the Google Search Engine. All of
us know very well it is a software program that is inside the search engine, so in the
conventional thinking, Google Search Engine is only copyrightable. But a patent was granted for
the Google Search Engine in 1998 for the method of doing the search, which is the algorithm or
the steps involved in the search. The Abstract and the first claim of the patent is depicted below.
Abstract
The present invention provides for a method of updating an intemet search engine databease
with the results of a user's selection of specific web page listings from the general web page
listing provided to the user as a result of his initial keyword search entry. By updating the
database with the selections of many different users, the database can be updated to prioritize
those weib listings that have been selected the mant with respect to a given keyword, and
thereby presenting first the most popular web page listings in a subsequent search using the
same keyword search entry.
Clairas
1. In a computer network having a plurality of user sites, a method of weighting the relative
importance of a plurality of data items stored in a database on a server computer comprising the
steps of receiving at said server computer one or more keywards from user sites, generating at
said server computer a plurality of listings corresponding to said keyword, each listing also
corresponding to one of said data items, transmitting from said server computer to one of said
user sites said plurality of listings; detecting at said server computer which ones of said plurality
of date items are selected by said user site, sald user site being transmitted each selected one
of said data items upon selection of
Are they Copyrightable and/or Patentable?
said corresponding listing by said user site, updating said database to weight said selected ones
of said data items as relatively more important than unselected ones of said data items with
respect to said keyword, wherein said step of detecting only detects each keyword one time
from each user site during a determined interval of time, and wherein said step of generating
uses a history factor associated with each keyword in determining seid plurality of stings,
wherein said history factor is a number less than or equal to 1 and greater than or equal to D.
7. Conclusion
It is now clear that computer programs and products that embed computer programs have
intellectual property rights that are both patentable and copyrightable.
The following table summarizes the conclusions and the logic behind the arguments.
Type of Creative Wark
Copyrightable
Yes
Yes
Patentable
Argument
Executable Object Code
Pure literary work
Algorithm/ Source Code
Literary Work and a Method of Solving a Problem
Digitally Controlled Systems (Executable Object Code)
Pure literary work
Digitally Controlled Systerns (Algorithm/Source Code)
*Literary Work and a Method of Solving a Problem
Digitally Controlled Systems
Method/Device of Solving a Problem
Yes
Yes
Yes
Yes
Yes
*The mere source code cannot be patented unless the algorithm is written as a claim
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Intellectual Property Rights of Computer Software
Are they Copyrightabila and/or Patentabile?
Care should be taken, when drafting the patent claims, to make the software solution appear as
the method of solving a technical problem. The detailed description of the Algorithm and the
related Flow Charts should be in the Description.
Once the patent document is drafted accordingly, it should be submitted, along with the patent
application, to the National Intellectual Property Office to acquire the right after an examination.
Since copyright is obtained by virtue of developing the literary work, in case of the executable
code, it is not necessary to register it in the National Intellectual Property Office to obtain the
copyright. However, it is recommended that the registration is done, in the local office, or in a
foreign office if there is no copyright registration available in the local office, in order to
safeguard the right easily in case of a dispute.
Copyright registration can be done in the United States Copyright Office at
https://www.copyright.gov/. Anybody, including foreigners can do so and the cost is between
35-55 USD. Once the registration is done, the Copyright Registration Certificate will be mailed
within a few months.
