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Legal protection of computer software


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Brief introduction to IPR issues related to computer programs. Sample cases include software projects, products, embedded programs, and smart phone applications.

Brief introduction to IPR issues related to computer programs. Sample cases include software projects, products, embedded programs, and smart phone applications.

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  • 1. Legal Protection ofComputer Software Olli Pitkänen D.Sc, LL.M.
  • 2. Intellectual Property Rights (IPR)• Copyright – Automatic international protection for expressions of creative works• Patents – Protects new, useful, nonobvious inventions – Not abstract ideas, but an application needed• Trademarks – Business brands (logo, phrase, graphic symbol, …) that distinguish products or services can be registered or established.• Database protection, trade secrets, design right, … 2 Olli Pitkänen
  • 3. IPR in software• Special problems in applying old regimes to novel areas – Copyright was developed to protect arts and literature, patent was to protect inventions in physical machines, and so on – In 1970’s and early 1980’s, World Intellectual Property Organisation (WIPO) was driving at special kind of (sui generis) protection for computer programs, but failed to get international support – Since then, especially copyright and patent systems have been stretched to cover also software – In the EU especially Directive 91/250/EEC on the legal protection of computer programs • In Finland, implemented in the Copyright Act 3 Olli Pitkänen
  • 4. Sample Cases• Software Project – Software developed for one customer• PC Software Product – Standard product to be sold to numerous customers• Embedded software• Smart Phone Application – Application to be sold through the ecosystem’s market place – complying with standards, rules• Facebook Application – Software as a service to be used within other software 4 Olli Pitkänen
  • 5. Copyright in programs: coverage• Copyright protects original expression of creative works – NOT protecting ideas, algorithms – Threshold to protect computer program is not high, but there must have been significant choices in developing the program • If e.g. due to technical constraints only one solution is possible, not copyrightable • No-one else would have implemented the program in the same way• Copyright protects the whole program and its parts as long as they represent creativity 5 Olli Pitkänen
  • 6. Copyright in programs: exclusive rights• Copyright gives the right holder an exclusive right to copy the work and to make it available to the public• Usually, copyright does not cover the usage of the work – E.g. one may read a book without permission• Installing and running a computer program involves making copies  using a program usually requires permission, a license• Exhaustion: the exclusive rights usually apply only to the first sell, reselling a legal copy does not infringe copyright. However, reselling software requires new copies. Mixed court cases (see e.g. KKO 2003:88) 6 Olli Pitkänen
  • 7. Copyright in programs: limitations• Right to make copies and modifications – Permission not required, if necessary for the intended purpose (including error correction) by the lawful acquirer. – Can be overridden by the license agreement• Right to make back-up copies – Mandatory, cannot be overridden• Right to observe the functioning of the program to determine the underlying ideas and principles which underlie any element of the program – Ideas and principles are not copyrightable – Mandatory, cannot be overridden 7 Olli Pitkänen
  • 8. Copyright in programs: limitations• Decompilation – Ok, if indispensable to obtain the information necessary to achieve the interoperability of an independently created computer program – Requires • a right to use the program, • the information is not readily available – The information may not be used for other goals• Copyright in computer programs and databases is automatically assigned to the employer, if the work is created in an employment relationship – Excl. university researchers and teachers 8 Olli Pitkänen
  • 9. Is Software Patentable?• In Europe, mere computer programs do not qualify for patents – in theory – program as a part of another invention may qualify, e.g embedded software may be patentable – in practice, almost any program can be patentable• In the USA, programs are widely patentable – nowadays also business methods and many other subject matters patentable• Worldwide active ongoing discussion 9 Olli Pitkänen
  • 10. Software patents• Patent protects new, useful, nonobvious inventions• Only rarely a program is an invention as a whole, but a program may include many inventions• A patentable invention is the concrete embodiment of an idea: a device, a product, a process or a method for making something• Computer programs are often patented as an implementation of a method or as a part of a system consisting of devices and software 10 Olli Pitkänen
  • 11. Sample Software Patent 11 Olli Pitkänen
  • 12. How to read software patents?• Patent abstracts are often misleadingly broad• Claims are the important part• For example, the previous sample patent application (US2008276313) includes 7 claims that define precisely the scope of the patent – “1. A method for installing an applianced domain name server, the method comprising: forming a software installation package for the domain name server, the software installation package comprising: • a hardened operating system; • a securely pre-configured domain name server software; …”• Description may help to understand the claims 12 Olli Pitkänen
  • 13. Software Patents: Pros• Object of the patent more suitable than the object of copyright – Programs more like machines than literature?• More reasonable expiration time (max 20 years) – yet too long?• Publicity is useful for the industry – Patent system spreads knowledge• More established practice e.g as securities – A start-up company with patents (applications?) gets funding easier than just with copyright 13 Olli Pitkänen
  • 14. Software Patents: Cons• Unnecessary if copyright protects software – Does it?• Laborious, expensive application procedure favors large corporations although small enterprises are often more innovative• Patent system in general questionable – On the societal level, do benefits outweigh the drawbacks?• Favors American companies• Practical problems – the incompetence of patent offices  lots of poor patents esp. in the USA 14 Olli Pitkänen
  • 15. Trademark• It is often a good idea to use brands when marketing computer programs• Trademark protects brands, like the name of the program, a logo, or a graphic symbol – Distinguish a program from competing programs• Trademark does NOT protect the program itself – Trademark does not prevent e.g. unauthorized copying of the program code• Trademark can be established, but because that is uncertain and slow, it is usually advisable to register at least the name of a commercial program 15 Olli Pitkänen
  • 16. IPR Strategy• IPR allows one actor to affect how the others allocate their resources• IPR Strategy: how to get and utilize intellectual property rights and how to monitor and control them – An IPR strategy also includes the organization of costs and responsibilities• IPR Strategy is based on business needs. – Should be a part of business strategy, but in many cases the link is weak – Sometimes written, often just an established policy• Obviously, the meaning of the IPR Strategy can vary a lot in different businesses 16 Olli Pitkänen
  • 17. Copyright Strategy• Because copyright is achieved automatically, a company doesn’t need a strategy to decide when to seek copyright• Instead, a strategy is needed to decide – how the copyright is licensed or assigned, and – how to monitor and enforce the copyright • e.g. how to react if a business partner infringes the copyright 17 Olli Pitkänen
  • 18. Patent Strategy• In principle, a patent protects a certain technological invention• In practice, it is more like a business tool• Patents need to be applied for – It is a significant investment to build a patent portfolio – Have to decide how many and what kind of applications are made, in which countries, …• Also a strategy is needed to decide how to license patents and how to monitor and enforce them• A patent strategy can be active or passive; offensive or defensive 18 Olli Pitkänen
  • 19. Why to patent?• To prevent others from using the invention is just one reason to get a patent• Even an application can be very valuable to ensure the investors to fund a company• Patents may promote marketing• A patent portfolio can be a very valuable tool in negotiations (e.g. Nokia v. Qualcomm)• License fees esp. from Cohen et al, 2002 Olli Pitkänen 19
  • 20. Example• A Finnish SME in software industry• Decides to file about 5 patent applications annually• 1st file in the USA (cost ca $5000-$20000 / application)• Within 12 months PCT application• Within 30 months EPO and some national applications – EPO covers even 30 countries – Costs about 5000 € per country• Patent portfolio is extended actively• Ready to defend and negotiate actively• Will not attack actively 20 Olli Pitkänen
  • 21. Defending IPR• The right-holder must observe possible violations itself – There is no such thing as “IPR Police” that would seek for infringements – However, the right-holders can get help from officials, like the police, customs, courts, etc, when they find violations• IPR violation can be a crime – Usually the punishments (jail, fine) are mild• Compensations can be significant• Costs of litigation as well as coercive measures, like an injunction order during the trial can become truly expensive 21 Olli Pitkänen
  • 22. Defending trademarks• The right-holder must defend trademarks – Give a notice, if others are using the trademark in a confusing way – If you don’t defend your trademark, you may loose it – E.g. Aspirin is no longer a trademark in the USA, but can refer to any painkiller, while in many countries (e.g. in Finland) it is still a registered trademark – In contrast, patents and copyright don’t need to be defended • A patent holder may remain hidden and start to claim royalties after being unnoticed for years (“submarine patents”) 22 Olli Pitkänen
  • 23. Software project• In a software project, one participant (e.g. a consultant company) may develop the concept for a program, another (e.g. a software company) implements the program, and the customer is actively involved in each phase• Expertise, labour, and time is needed from everybody, but they are usually not protected by intellectual property rights – Copyright is gained by originality and creativity, and patent requires inventiveness, it does not matter how much effort and skills somebody has put to produce the program – Database protection being an exception: requires investment 23 Olli Pitkänen
  • 24. Who is the creator, inventor in a software project?• Remember, purely abstract ideas are not protected• New, nonobvious inventions can be patentable if they are well described and concrete enough• Original expressions can be copyrightable• In a project many people are often brainstorming and bouncing off ideas – later it can be difficult to find out whose idea was the valuable one – Not a big problem within one company: the employer can usually get the inventions and copyrightable works anyway – Problem, if people are from different organizations – Solution: always make a written contract in advance 24 Olli Pitkänen
  • 25. IPR in Project Outcome• A computer program developed in a project by a vendor for a customer is usually copyrightable• Project agreement should define whether the customer gets the copyright or only a license to use the program• The program may include inventions, but they are seldom patented, because both the vendor and the customer lack interest• Trade secrets can be important to protect especially the customer’s confidential information• Trademarks are less important in relation to customer specific programs that are not for mass markets 25 Olli Pitkänen
  • 26. Software Components • Software that is developed in a project includes three kinds of components, which may involve different IPR: – Customer-specific components • Esp. copyright and trade secrets – Vendor’s library components • Esp. copyright and patents – Third parties’ standard components • Any IPR – Important to take notice of license terms Olli Pitkänen
  • 27. PC Software Products• Software that is not customized, but replicated and sold in large quantities• The program itself does not include customer- specific information, customer’s trade secrets, etc• Copyright is the main protection• Patented inventions may exist• Trademarks are very important to support marketing• End-user license agreements present standard terms and conditions on licensing IPR 27 Olli Pitkänen
  • 28. Embedded software• Program to control devices other than normal computers – Specialized for the particular hardware – Time and memory constraints• Copyrightable like any software – Hardware constraints may reduce choices in developing the program, thus not necessarily creative enough• Program as a part of the embedded system can be easier to patent than inventions in stand-alone software 28 Olli Pitkänen
  • 29. Smart Phone Application• Ecosystems (Apple, Google Android, Microsoft Windows) have their own rules, guidelines and technical constraints, which may limit copyrightability• Standards in mobile industry may also set constraints – Certain functionality needs to be implemented in a standard way to make it interoperable with other systems, which leaves little room for creativity• In general smart phone applications, however, are copyrightable and patentable like any programs• Ecosystems may have their own licensing policies 29 Olli Pitkänen
  • 30. Standards and IPR• Mobile industry relies heavily on standards• To get one’s own patented invention included in a standard, may force others to pay royalties• Standardization bodies have their own IPR rules – Sometimes it is required that all the participants disclose their IPR in advance – Sometimes they are required to license for free – Nowadays, it is typical that taking part in a standard-setting process requires that everyone undertakes to license its IPR (especially essential patents) in fair, reasonable, and non-discriminatory terms (FRAND) 30 Olli Pitkänen
  • 31. Facebook Application• Software as a service (SaaS) on top of the Facebook Platform, which provides the application with Facebook data including users’ social networks• Complying with the environment – The Platform constraints functionality and implementation• Apps are usually copyrightable as any programs• Patents are also possible – E.g. Zynga has applied for patents related to game based incentives for commerce• Trademarks are very important 31 Olli Pitkänen
  • 32. Conclusions: Copyright• Copyright gives a good basic protection for computer programs – Automatic, no need to file applications – Covers the whole program – Limited to a certain implementation, does not protect ideas or inventions • Copyright-holder can object modifications, but if the program is completely rewritten, it doesn’t infringe copyright – Copyright is the basis of end-user licensing and open source licensing 32 Olli Pitkänen
  • 33. Conclusions: Patent• In Europe, it is still somewhat challenging to get a patent for a software related invention since the law forbids patenting computer programs as such• If granted, software patent may provide stronger protection than copyright since patent is not that implementation specific• Patent does not usually cover the whole program like copyright, but merely an invention within the program – One program may include many patentable inventions• For a software business, patents may have significant other benefits, like appreciation among investors 33 Olli Pitkänen
  • 34. Conclusions: Trademarks• Especially in mass markets, brands can be very valuable• It is unwise not to protect brands by trademarks – It is easy and relatively inexpensive to register a trademark – Trademarks need to be defended, however 34 Olli Pitkänen