While software is automatically afforded copyright protection at the time of creation without the need for any special procedures, copyright protection protects the specific expression of an idea, not simply the idea itself. This can be problematic as no protection is available via copyright with regard to imitation software where the same idea may be expressed in a different way.
There is currently no means to protect software resulting from a developer’s original idea in a manner equivalent to patent protection. Though there have been continued attempts to amend patent law to include protection for software per se, such attempts have failed due to concerns raised by private groups that doing so would excessively expand the range of infringing articles and lead to the shrinking of related industries.
According to current examination guidelines, protection is available for software only when embodied in a “tangible medium”, with no adequate protection available for software distributed online — a situation out of sorts with the reality of the modern world where the distribution of software increasingly revolves around online channels.
Protection for software is available via process patents by specifying a series of processing steps. However, Article 2 of the current Patent Act distinguishes between acts of practicing process and product inventions as follows:
Product: Manufacturing, using, assigning, leasing, or importing the product or offering to assign or lease the product (including displaying the product for the purpose of assigning or lease; hereinafter the same shall apply)
Process: Using the process
As a result, if software infringing a process patent (by way of example, a method of adjusting audio volume automatically in relation to vehicle speed) were to be distributed online for the purpose of sale, this would not be regarded as infringement of the patent. The reason for this is because the act of distributing software online for the purpose of sale is not itself regarded as practicing the patented method (i.e. using the method of adjusting audio volume automatically in relation to vehicle speed).
According to an amendment passed on December 10, 2019 and due to come into effect from March 11, 2020 (Law No. 16804), the above-mentioned Article 2 of the Patent Act will be amended to bring the act of “offering the use of the process” within the definition of practicing an invention, in addition to the current “using the process”. This will mean that acts of selling patent-infringing software online, etc. will be regarded as practicing a patented invention.
Nonetheless, online transmission of patent-containing software will not be deemed patent-infringing in all cases as the amendment contains a requirement that the offering of use of a patented process be intentional (specifically, offered in the knowledge that use of the method would infringe patent rights) in order for patent rights to be effective against the would-be offender.
This limits offenders to sellers who illegally distribute software knowing that patent rights are being infringed. Accordingly, as infringement is not acknowledged if the seller is unaware of the infringement, it will be necessary for patent right-holders to first deliver warnings (cease-and-desist) to sellers illegally distributing software which infringes their patent.
Following the amendment, adequate protection will be available not only against offline sales of patent-infringing software, but also online sales of the same. Offline sales of patent-infringing software may be protected against via patent claims relating to software embodied in a tangible medium (product claims), while online sales may be protected against via patent claims relating to a series of processing steps (process claims).