We are regularly asked to provide advice on how to protect a computer program. This can take several forms, such as new computer game, software for running accountancy functions or what may well be next “big hit” smartphone app.
As well as the software itself, which is strictly the source code and object code of the program, there are other aspects which may also attract protection. For example, the screens which display when a computer program is running known as the graphic user interface (”GUI”) likely contain several protectable elements including the graphics used, any logos, the text and even sound-bites.
This briefing note is intended to give an introduction to the different intellectual property (“IP”) rights that may come into play. We would be delighted to speak in greater detail should you wish to explore protection for your computer program.
In the UK and Europe, an invention is capable of being protected as a patent where it is new, involves an inventive step, is capable of industrial or technical application and does not fall within any of the exclusions provided for by the relevant legislation.
In exchange for disclosing the invention in a patent, the owner is granted what is known as a monopoly right over that invention for a period of 20 years. This means that the owner can prevent all others from making, using or selling that invention without his or her permission including where that third party may have independently created the same technology or advancement.
The challenge for computer program and app inventors is that schemes, rules or methods for playing a game or doing business and programs for a computer (meaning software) are excluded from patent protection “as such”.
The term “as such” has the effect that an invention is not necessarily excluded from patent protection just because it contains an element which cannot be patented. So, for example, if the application of the software contains a technical feature which provides a technical solution to a technical problem, then it may be patentable. Likewise, a technical invention which results in an improvement in business efficacy will not necessarily be excluded as a business method.
Often computer programs include a mix of technical and non-technical aspects. Determining what the technical features of the software are and then establishing how those features provide an inventive step is rarely straightforward.
Take, for example, Apple’s iphone. Apple had to develop a solution which allowed the iphone’s touch-sensitive screen to respond to simultaneous touches. The UK courts recognised that the software designed provided a technical solution to a technical problem and found that it caused the iphone to operate in a new and improved way. So, Apple’s software was not excluded from patent protection. It is also important to give consideration as to where patent protection is sought. The reason for this the approaches taken by different patent offices can vary. For example, the current view is that the UK Intellectual Property Office (IPO) takes a more restrictive approach to granting patents for software than the European Patent Office (EPO). Regardless of where you make your patent application, you can increase your chances of success in carefully framing it to emphasise that the invention is technical and provides a technical solution to a technical problem.
Historically, the US Patent Office (USPO) has been viewed as more favourable. This is attributable to there being no statutory provision excluding software and business methods from patentability. In the US, the courts will allow software to be patented as long as the invention is not “abstract”. However, recent decisions from that jurisdiction point to a trend that it may be moving closer to the more restrictive approach taken in Europe.
On a practical note, it is important to bear in mind that patent protection can be an expensive and lengthy processes, both of which may make it uncommercial to seek. Remember that if you do want to obtain patent protection then it is vital that you do not disclose the invention and keep it confidential. If you do manage to obtain patent protection for your software, it is not always necessary to disclose the underlying software code or object code in the patent.
While it may not provide the monopoly rights which come with patent protection, copyright law can provide a substantial level of protection. Also, copyright protection arises automatically in the UK and the EU for qualifying works with no need to take any additional steps such as having it registered. What is important to bear in mind, however, is that copyright law protects how an idea is expressed but it will not protect an idea itself.
In broad terms, in the UK copyright law operates to protect original literary, dramatic, musical or artistic works and it arises automatically when the “work” has been recorded in some tangible way such as in writing. The threshold for the originality requirement is set fairly low: the author has created the works independently meaning the works are not copied from elsewhere and are the result of the author’s own skill, labour and judgement.
That said, some degree of creativity is required for copyright protection in databases and possibly for software following decisions by the Court of Justice for the European Union. The reason for this is that the test for originality under the relevant EU Directives requires that the work is the expression of the author’s own intellectual creation. This has the effect that where the expression is dictated by the technical function, then copyright protection will not be available as there has been no intellectual creation.
If the work qualifies, copyright law prevents others from copying your work and also how others may deal with your work such as distributing copies of your work, renting or lending copies of your work or making an adaption of your work. Protection lasts for 70 years from the end of the calendar year when the author of the copyright work dies.
To be successful in claim of copyright infringement you first must prove that you own the copyright in the work, the copyright still subsists and that it has been copied. Where there is no direct evidence of copying, it can be inferred from the circumstances. Where only aspects or parts of the copyright work have been reproduced, the courts make a qualitative rather than qualitative assessment to reach a view of whether there has been an infringement of the copyright work.
Original source code and object code are protected in copyright law as a literary work. What is important to remember is that copyright will not protect how software functions, its programming language or the format of the data files since these are not a form of expression of the computer program. So, if a competitor develops software which does the same as your software, unless there has been copying of the underlying code, there will be no infringement. If you want to protect the functionality of your software, then patent protection will be necessary.
The screen displays or other elements visible to the user, such as any logos, when a computer program is running may be protectable as works of artistic or graphic copyright. This could consist of the GUI or elements of it. Also, sound-bites which are played when the program is running could attract protection as musical or sound recording copyright works. On-screen text which is displayed may be protected as a literary work. It is also worth remembering that any instruction manuals which accompany your software may attract copyright protection as a literary work.
Registered design rights and design rights
A UK or a Community registered design will protect the design of a product which is new and has individual character. The definition of a product under the relevant design legislation is such as it could include several aspects of the appearance of what the user sees on the screen when the program is running to include the typographical type-face used, the “look and feel” or “get up” of the design, and any graphic symbols which, again, could include any logos used.
Registration is cheap and relatively quick as the registries do not subject the design application to any substantive examination. Once registered, the owner of the registered design is granted a monopoly right which is infringed whether or not there has been copying and the protection lasts for a maximum of 25 years. Of course, the validity of that registration may well be challenged in the event that the owner seeks to rely upon it in any infringement proceedings.
It is also possible to rely on Community Design Right (CDR) for those same aspects and which provides unregistered design protection for a period of three years from the date of creation or first marketing in the EC. Like copyright, the protection arises automatically but copying must be established in order to succeed in an infringement claim.
Registering any distinctive elements of your products branding is another important part of the overall protection of your computer program or app. For example, the brand name, logos and slogans could all well be registered as trade marks. Ideally, this should happen before the product is launched.
In the UK, you may be able to bring an action in passing off to protect unregistered elements of branding and the “look and feel” or “get up” of your product where you have established that you have the necessary goodwill in your product through trading. However, the evidential burden in establishing a passing off claim is high and such actions therefore tend to be expensive.
As part of your development of your product, it is important to carry out a brand clearance exercise to reduce the risk of an infringement of any third party’s trade mark rights.
When developing any new product, whether it is software related or not, it is important to maintain confidentiality prior to product launch. You should take steps to keep confidential the initial idea and the concept as it develops into its final form. While the common law of confidentiality may arise to give you protection in the UK against disclosure, using confidentiality agreements or non-disclosure agreements when dealing with any third parties such as external developers or designers will provide you with a contractual remedy and put those parties on notice that the subject matter is confidential and needs to be maintained as such.
Do also bear in mind that the EU Trade Secrets Directive is due to be implemented before the UK leaves the EU. For more information on this Directive, please see our article here.
• Identify your intellectual property, keep records of creation and use notices It may seem obvious but it is important to take time to identify all of the “things” which have been created and which may be protected by one or more type of intellectual property. This may require you to educate your business at all levels on the existence, importance and relevance of IP rights.
For materials that may be protected by copyright or design right, it is particularly important to create an audit trail of when those works were created and by whom such as by having the author sign and date the works.
While it is not necessary to affix any particular notice, using copyright, design right or unregistered trade mark notices will put any would-be infringer on notice that IP protection is claimed in respect of that thing. In the case of copyright and UK design right infringement, the use of notices also may help you to obtain damages in an infringement action
Make sure the right entity owns or is entitled to use the IP: get assignments or appropriate licences
In the UK, the general rule is that the first owner of any IP right is the person who created it. Where that person was an employee and the IP work was created in the course of his employment, the employer will be the owner.
When dealing with tech start-ups, it is not uncommon for some of the underlying IP to have been developed by individuals who then went on to create a company and further develop that IP into a product. While those individuals and the newly created company may be one and the same, it is important to assign the ownership of that underlying IP into the commercial entity so as to avoid complexities down the line.
If using contractors or an external agency to create any aspect of your computer program or app, it is therefore very important to deal with the ownership of the IP created. The reason for this is that intellectual property which has been created on commission will belong to the person who created it rather than the commissioner with the exception of UK registered designs and UK design right where the ownership passes automatically to the commissioner.
If an assignment is not provided for and the creator of the works will not agree to an assignment retrospectively, the courts may be willing to find that there is an implied licence that the commissioner can use the commissioned works. However, the terms of that implied licence may not be broad enough to actually allow you to do what you want to do with the work such as alter or adapt it or obtain registered rights in that work, such as having a logo mark designed by an external agency registered a trade mark in your name. Also, any implied licence may not give you exclusive rights to the commissioned works meaning the creator could use those works for other purposes including in fulfilling a subsequent commission by one of your competitors.
It is also important to identify any IP which was created before a company was established and is subsequently being used or developed by that company as an assignment from that creator, who may well be the sole director and employee of that new entity, will be required.
The earlier you seek advice in the development of your computer program or app, the better prepared you will be to identify and secure IP rights. With Brexit looming, it is particularly important to ensure that you have adequate protection in place so that your creation does not fall into a legal lacuna bearing in mind that it is as yet an unknown to what extent, if at all, the unitary Community rights in relation to trade marks and designs will be enforceable in the UK.