IP In IT – Protecting Computer Software

Contributed by Mr Ng Kim Tean, Managing Partner, Alain A. Johns Partnership

Generally, the various modes of protection for intellectual property rights associated to information technology or IT can be classified broadly into four main categories namely: copyright protection, patent protection, the law of confidence and the law of contract.

Copyright

Copyright is generally applicable and offers protection to computer programs which exist either in the form of source codes or after compilation in the form of machine or object codes.

Both source codes and object codes are now accorded protection under the Copyright Act as original literary works, although in the early 1980s it was argued whether the non-readable “0s” and “1s” of the object codes could ever be considered as original literary works. It has since been established under section 7A(1) of the Copyright Act which states, among other things, that literary work includes a compilation in any form and a computer program, is broad enough to cover object code, a table or compilation expressed in words, figures or symbols.

One must understand that copyright does not protect ideas but protects only the expression of such ideas. To illustrate this concept, if someone who is not the owner copies the source codes or object codes substantially in qualitative sense, the owner may sue that person for infringement of copyright.

However, if that person does not copy the source codes or object codes but uses a different programming language to achieve the same functions which the original computer program could perform by way of similar if not the same steps and methods, the owner will have no recourse under the law of copyright against that person.

In the light of the above, it is often considered that copyright offers a weaker mode of protection for computer programs or IT related technologies compared to patent protection.

Patent

Patent may offer better protection for computer programs compared to copyright protection. Often, a computer program is written by software programmers to provide a functional application. Therefore, the end-users of the computer application are often only concerned with the computer application’s user-friendliness and robustness. And such desired computer application can only be achieved if the computer program is well thought-out and carefully structured, usually written by skilled and experienced computer programmers.

In our daily use of computer applications, one is hardly or never concerned with the actual computer program coding, instead the functions of the computer program are of utmost importance to the end-users. As discussed in the preceding paragraphs above, the appropriate form of intellectual property protection for computer program coding should be copyright protection. As for the functions of the computer program, the appropriate form of protection should be patent protection.

When the Patents Act came into force, one key confusion that arose in relation to whether copyright or patent protection was the better mode for protecting computer programs was section 13(2) of the Patents Act which, among other things, stated that a scheme, rule or method for performing a mentor act, playing a game or doing business or a program for a computer, were all not inventions for the purposes of the Patents Act. As a result of section 13(2), a computer program could not be a patentable subject matter. This explicit exclusion of a computer program has since been repealed by the Patents (Amendment) Act 1995 in conformity with the Agreement on Trade-related Aspects of Intellectual Property Rights (“TRIPS”). However, with section 13(2) repealed, one should not conclude that all computer programs are patentable, any issue of patentability is still subject to the requirements of novelty, inventive step and industrial application.

To further elaborate on patent protection as the preferred mode of protecting computer programs, one needs to understand that computer programs can be written in different computer programming languages such as FORTRAN, C++ or Perl yet achieving the same functions and desired outcome.

Therefore, one could easily achieve the functions of a computer program by using a different computer programming language without infringing the copyright of such computer program and the owner of such computer program has literally no recourse against the person copying his “computer application”. It is in this context that one can better appreciate the stronger protection offers by patent protection.

Different from copyright protection, patent protects the functions of a computer program regardless of the types of computer programming language being used. To illustrate, if a patent claims that a computer program can calculate the fluctuating price of gold by taking into consideration certain specific parameters and steps, it does not matter in what computer programming language this computer program is written, so long as someone copies the claimed steps, parameters or functions, he or she will potentially be infringing the patent of the computer program which allows the owner to sue for patent infringement.

Law of Confidence

Another mode of protection available for computer program is the law of confidence. The law of confidence primarily seeks to protect information, in this case, computer program, given by one party to another party in confidence from being disclosed to third party(ies) and in order for one party to commence legal action against another under the law of confidence, three conditions must be satisfied.

First, the computer program being disclosed must be confidential, that is, such computer program is not part of public knowledge or in the public domain. Hence, open-source software readily available online would not be qualified for protection under the law of confidence. Second, the computer program is disclosed in circumstances that impose an obligation of confidence on the part of the recipient. It is likely to be construed by the courts that such obligation of confidence is imposed on the recipient when computer program passes hands or is being discussed in project meetings by employees of a company. Third, there must be unauthorised use of the computer program by the recipient.

It is noteworthy that law of confidence is a common law doctrine and this branch of legal protection is derived principally from English common law principles, hence, English cases and authorities are commonly cited and referred to by the Singapore courts when one sues under the law of confidence.


Law of Contract

It is a common business practice that before one party discloses his or her proprietary computer programs or related technologies to a third party (may be a vendor, manufacturer, customer or agent), he or she may require the recipient to enter into a contract of non-disclosure or confidentiality. In this manner, any disclosure of the proprietary computer programs continues to be protected by the contract of non-disclosure or confidentiality, and any breach of such contractual obligations by the recipient allows the disclosing party to sue for damages or obtain court injunction against the former.