Ensuring intellectual property rights for computer software

The computer software sector is a dynamic and constantly changing space.

However, the patenting of software under copyright law is generally not proving to be adequate protection for the intellectual property, maintains Lance Abramson (pictured right), patent attorney and partner at Spoor & Fisher.

“There is a debate going on regarding whether software should be included under the umbrella of patent law or not,” he says. “One view is software should not be treated differently to other forms of technology and should be fully patentable, as long as it’s new and inventive. Another view is that allowing the patenting of computer software stifles innovation.”

Countries have different laws around software patents. Some allow software to be patented as long as the functionality implemented by the software is new and inventive. This approach reflects the view that software should not be treated differently to any other form of technology.

Others stipulate software can only be patented if the software provides a technical effect or provides a technical solution to a technical problem. For example, “technical effect” software could be software that speeds up data transmission speeds or compresses data for better storage.

The ambiguity is challenging, concedes Abramson. “The High Court of Australia recently issued a split decision on the patenting of a computer software invention. Half the judges found a patent covering a gaming machine including hardware and software was patentable, while the other half found the patent invalid based on the question relating to the patenting of computer software.”

SA’s Patents Act, he says, excludes software from patentability, with the qualifier the exclusion applies only to the extent to which the invention relates to that subject matter.

“There is currently no case law in SA interpreting the meaning of these sections, so it’s debatable what kind of software is patentable.”

Where does that leave software developers? Abramson says the best advice for software developers is to contact a patent attorney with expertise in this field for advice on whether their software is eligible for patenting.

“In SA, patents are not examined at the time of filing and are only examined if the patent is enforced or challenged,” he explains, adding a patent application cannot be filed for software that is already released into the public domain.

“Software developers can’t afford to wait for the first court case to be heard and then decide if they want to file for patent protection for their software. If they want patent protection, they must file a patent application before they disclose their invention. The patent application will then be granted, and the validity will only be determined at some point in the future when the courts issue their first decision.”