by Doan Hong Son, IPMAX Law Firm
With information technology a key factor in the nation's development strategy, it's crucial that the Government provide appropriate incentives to the IT industry. Protection of intellectual property rights is playing an increasingly important role, especially with respect to software. While copyright protection is universally accepted for software, the issue of whether patent protection extends to software remains controversial.
Copyright protects the expression of an idea in a fixed medium and arises automatically upon the creation of the work. In many countries, the prevailing term of copyright protection for software is the life of the author plus 50 years. It is commonly accepted that copyright adheres in software, in both the source code (human-readable form) and object code (machine-readable form), since both exist in a fixed medium (written text). This understanding is reflected in the intellectual property laws of most countries and in international agreements.
For instance, the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), an international agreement administered by the World Trade Organisation, provides that "computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention", which is the convention for copyright protection.
TRIPS does not, however, specifically exclude software from the allowable subject matter of patents.
A patent grants a limited monopoly, usually a term of 20 years, to the patent holder on an invention or idea, e.g., a new device or process that involves an inventive step that is not obvious to others skilled in the same field. While copyright protects the original expression of an idea (such as the source code or object code), patent protects the embodiment of the idea, the functional aspect of the software, independent of the form in which it is expressed. In this context, patent offers stronger protection than copyright because it may prevent others from using software embodying the same concepts, even if the software is independently developed and there is no copying of code.
US law appears to most open to the application of patent protection to computer software. In the case of Gottschalk v. Benson (1972), the US Supreme Court decided that a method for converting binary-coded decimal numerals into pure binary numerals for use by a computer was not eligible for patent protection because it was a mathematical algorithm. However, it did not preclude "a patent for any program serving a computer" and therefore left the door open for software to receive patent protection.
In Diamond v. Diehr (1981), the Supreme Court decided that a process for moulding uncured synthetic rubber involving a programmed computer was patent eligible. In this case and a number of subsequent cases, in order to determine whether a computer software was patentable or not, the court applied a two-pronged test based on (i) whether a mathematical algorithm was recited in the claimed invention, and (ii) if so, whether the algorithm was applied to physical elements or process steps.
In the landmark 1998 case State Street Bank Trust Co v. Signature Financial Group, Inc, the US Court of Appeals for the Federal Circuit held that a computer program for administering mutual funds could be patented because it was a practical application of a mathematical algorithm that produced a "useful, concrete and tangible result". Following this case, many software-related patents have been granted under the same test, i.e., whether the claimed process produces a "useful, concrete and tangible result".
The same court tried to limit this test in Bilski v. Kappos, which decided that a process was eligible for a patent only if it was "tied to a particular machine or apparatus" or if it "transforms a particular article into a different state or thing". However, in June of last year, the Supreme Court rejected the "machine-or-transformation test" in Bilski as a sole test of patentability. This decision has received great attention from software companies as it might dramatically change the system for development and protection of computer software.
In the European Union, meanwhile the European Patent Convention excludes computer software "as such" from patentable subject matters. However, that does not mean that patent protection is not available to computer software that meets the conditions of an invention, i.e., being new, having a potential industrial application, and involving an inventive step.
In the 1984 case of Vicom (T0208/84), the EPO Technical Board of Appeal decided that software-related methods and apparatus for improving digital image processing should not be excluded from patent protection because the claim was directed toward a "technical process". Other patents have been granted to computer software which have elements meeting patent conditions.
In more recent cases, the board has provided more specific guidance for determining whether software is eligible for patent protection, stating that "a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about or is capable of bringing about, a technical effect which goes beyond the normal physical interactions between the program (software) and the computer (hardware) on which it is run".
A reading of Viet Nam's Law on Intellectual Property would suggest that only copyright protection is available to software. Article 14 includes "computer software" as one of the "forms of copyright-protected works", while Article 59 specifically excludes "computer software" from "subject matters" eligible for patent protection.
However, similar to other countries, some computer-related patent applications may still be granted so long as they are presented as a process (implemented via computer software); the process includes a machine, computer or other equipment; and a physical transformation takes place or some tangible/visible results are obtained. In fact, the National Office of Intellectual Property has granted a number of software-related patents, including a patent for "a system for payment by electronic means" and a patent for a software-related system for generating and facilitating the display of high-quality images in a web browser.