Protection of Intellectual Property Rights in Computer Software: Copyright or Patent

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Copyright is a protection granted to original literary, musical and artistic works, cinematographic films, sound recordings and broadcasts. It affords the owner of any of the foregoing works the exclusive right to produce, publish, translate, broadcast or adapt such works.

A Patent on the other hand, is an exclusive right to an invention that affords the owner monopoly over the invention and the right to exclude others from its exploitation. It is best for protection of inventions which are new, or are an improvement on a previously patented invention.

Computer software refers to the programs that run on a computer and perform certain functions. (Meriam–Websters Dictionary). Software rights are rights in computer software which are intangible. Computer software serves as the backbone of the computer. This is because it is the encoded information that helps a computer to carry out specific instructions. The maker of a computer software therefore needs to protect his work from unauthorized access, use or duplication. The Law has graciously provided a platform for the protection of the above right as highlighted below.

In the Nigerian Legal System, Intellectual Property Protection for computer software can come under Copyrights or Patent registration. The Copyrights Act CAP C28 LFN 2004 (hereinafter “Copyright Act”) defines literary works to include computer programs. – Section 51 Copyrights Act. It is therefore safe to conclude that computer software is registrable for Copyright protection.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); The Berne Convention; and The World Intellectual Property Organization Copyright Treaty (WIPO) are International treaties on Intellectual Property rights. The TRIPS agreement provides a minimum standard for Intellectual Property protection for member countries of the World Trade Organization. The TRIPS agreement covers both Copyright and Patent. Nigeria is a contracting party to the TRIPS agreement. The Berne Convention, on the other hand, relates only to Copyright. It provides a minimum standard for protection of Copyright works. The WIPO Copyright Treaty is a sub treaty under the Berne Convention which caters for the Copyright protection of digital works.

However, these treaties are not enforceable as Laws in Nigeria until they are domesticated. – Section 12 1999 Constitution (as amended). We will therefore restrict our analysis to relevant statutory provisions, local and foreign; and case laws.

As noted earlier, the Copyright Act defines literary works to include computer programs. All protection afforded literary works by the Copyright Act will therefore apply to computer programs.

There appears to be an argument as to whether or not computer software is an appropriate subject for a Patent grant in Nigeria. To resolve this impasse, we will consider the provisions of the Patents & Designs Act CAP P2 LFN 2004 (hereinafter “Patents & Designs Act”)

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The Patents & Designs Act provides conditions for eligibility of a work for Patent grant. They are:

(i) It must be a new invention

(ii) It must constitute a non obvious improvement on a previously patented invention.

In either case above, it must be capable of industrial application –Section 1 Patents & Designs Act. Once the foregoing conditions are established, a work or invention qualifies for a Patent grant. An application can therefore be made to the Registrar of Patents & Designs.

A Community reading of Sections 1, 3 & 4 of the Patents and Designs Act shows that the Registrar has no discretion in deciding whether or not to award a Patent application.

Once the following conditions are established:

(i) That the invention is new or is a non-obvious improvement on a previously patented invention, both of which must be capable of industrial application;

(ii) The Patent application is not in respect of plant or animal varieties or biological processes for the production of plants or animals;

(iii) The invention sought to be patented is not contrary to public order and morality;

(iv) The application is in respect of only one invention;

(v) The Patent application contains statutorily required details such as:

  • the applicant’s details such as full name and address
  • a description of the relevant invention
  • A claim or claims
  • Evidence of payment of prescribed fees
  • A signed Power of Attorney where the Patent application is made through an agent;

The Registrar ought to grant the Patent application forthwith and without delay. The Patents & Designs Act does not confer on the Registrar of Patents a ‘god’ status. His status is more like that of an umpire who administers the rules fairly. We also state that in administering this function, he is subject to judicial review. Sections 26, 28(5) Patents & Designs Act. 

Computer programs are therefore, as a matter of Law registrable as Patents once the above conditions are satisfied. Going further, the technical character of a computer program; the programming language; the format of data files; and the functionality of the computer program are appropriately subjects of a Patent grant.

It is therefore curious that the Nigerian Patents & Designs Registry does not accept Patent applications for computer software on the ground that

the Patents & Designs Act did not anticipate the registration of software Patents (https://m.facebook.com/ipinstitute.ng). This appears to result from a misunderstanding and misapplication of the Law.

In the United Kingdom, the requirements for a Patent grant are essentially the same as that in the Nigerian Patents and Designs Act ; or better put, our Patents and Designs Act is modeled after the Patents Act 1977 of the United Kingdom (hereinafter the UK Patents Act””).

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Section 1 of the UK Patents Act states the conditions for patentability. They are:

(i) The invention is new

(ii) It involves an inventive step

(iii) It is capable of industrial application

(iv) It is not excluded by subsections (2) and (3) below

Section 1(2)(c) however, goes ahead to exclude computer software from works that can be patented.

In practice though, the above exclusion is given a narrow interpretation and only applies to computer programs that do not make any technical contribution to the state of the art. The European Patent Office and the United Kingdom Intellectual Property Organization (UKIPO) therefore considers the novelty of the computer software and the inventive steps involved in determining whether or not to grant a Patent.

The decision of the English High Court in AT&T Knowledge Ventures Application and CVON Innovations Ltd’s Application (2009) EWHC 343 (Pat) set out 5 indicators that may be used to determine whether a computer software qualifies for a Patent grant. They are:

  1. Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
  2. Whether the claimed technical effect operates at the level of the architecture of the computer, that is to say, whether the effect is produced irrespective of the data being processed or the application being run;
  3. Whether the claimed technical effect results in the computer being made to operate in a new way;
  4. Whether there is an increase in the speed or reliability of the computer; and
  5. Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented

(http://www.elklife.com/new-and-views/2016/03/02/software-patents-in-the-uk)

 In the United States, any form of work can be the subject of a Patent grant provided it is a useful process, machine, manufacture, or composition of matter. –Title 35 of the United States Code 101. This tends to open a blanket provision for all sorts of claims to be granted Patent protection. The Courts have however, sought to limit the claims that may be appropriate subjects of a Patent. For example the United States Federal Circuit in Re Bilsiki, 545. F. 3d 943 943, 959-960 laid down the “machine or transformation test” which holds that a process is patentable if:

  1. It is tied to a particular machine or apparatus
  2. It transforms a particular article into a different state or thing

The United States Supreme Court in Bilsiki V Kappos 561 U.S 593 (2010) restated the above test and added that in addition to it, business methods or processes should be analyzed  to determine whether they preempt an abstract idea. Where it is established that they preempt an abstract idea, the Patent grant will be refused. (http:/www.bitlaw.com/software-patent/bilsiki-and-software-patents.html)

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Several factors are relevant in determining whether to register a computer software as a Patent or Copyright. For one, the process of Copyright application for registration is generally simple and convenient; on the other hand, an applicant for a Patent grant has to go through the hurdle of proving novelty and innovation, which is usually technical. In addition, a disclosure must be made to the public which may place the work in the hands of competitors.

Copyright protection also has the advantage of being automatic and has an international flavor. Under the Berne Convention for protection of Literary and Artistic works, to which Nigeria is a signatory, there is no need for the deposit of a work in member countries. The protection is automatic on creation. For Patents, separate applications must be filed in each country because Patent grants are country specific.

Copyright also lasts longer than Patents. Copyrights last for the life of the author, and 70 (seventy) years in Nigeria. In other countries, life of the author and 50 (fifty) years. For Patents, the standard duration is twenty (20) years. This is the duration in Nigeria, the United States, the United Kingdom and India.

The protection granted under Patents extends to the process used to arrive at the invention. Copyright, on the other hand, does not cover the process, but only the result. While Copyright merely protects ideas, Patent protects the invention expressed through a formula which usually has a strong commercial value, and the process used to arrive at the invention which can be duplicated to create multiple units.

A Patent grant therefore affords the owner of a computer software a broader protection. It extends to the functionality of the invention, the programming language and the format of data files which can be exploited by competitors.

We believe the debate on the suitability of computer software for Patent grant is an issue the Nigerian Courts should examine. This is necessary to place Nigeria’s Intellectual Property regime on the same pedestal as those of advanced economies and create a broader framework, and an enabling environment for Intellectual Property, specifically, computer related Patent rights to thrive, with the attendant economic growth and development.

Omonigho Churchill. Esq.

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