Protecting Software and Apps – the Legal Do’s and Don’t’s
We are increasingly asked to provide advice on protecting computer programs, whether it is a new computer game, software for running accountancy functions or what may well be the next “big hit” smartphone app.
UK legislation does not provide a clear definition of “computer program”. While it is understood in a technical sense to mean the source code or object code of the program, a software package in practice includes many other elements which can be protected. 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 screen graphics, logos, text and sound effects.
Understanding the different intellectual property (IP) rights that may come into play is complex and we aim here to bring some clarity to them.
We have also identified some steps to help in your planning and decision-making when creating, producing or launching a computer program.
In the UK, you can protect an invention 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 making the invention available in a patent, the owner is granted 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 their permission, including where they may have independently created the same technology or advancement.
The “as such” principle
The challenge for computer program and app inventors is that the legislation states that a computer program is excluded from patent protection to the extent that it relates to the program “as such”.
This does not mean that an invention is necessarily excluded from patent protection simply because software is used to implement it. In recent years the UK Intellectual Property Office (UKIPO) and European Patent Office (EPO) have taken the “as such” principle to mean that software is only patentable if it produces a technical effect or contribution. In other words, software must have a technical purpose to be patentable.
Take 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 caused the iPhone to operate in a new and improved way. Apple’s method of improvement was therefore granted patent protection.
In determining whether an invention had made a technical contribution, the Court of Appeal considered that it was helpful to ask what the invention contributed to what was already known as a matter of practical reality above the fact that it related to a program for a computer: if the only contribution was in excluded matter, it was not patentable. It was also helpful to consider whether the invention could be regarded as solving a problem which was essentially technical, whether the problem was inside or outside the computer, in which case it would not be excluded.
As software and apps become more complex and sophisticated, the number of patent applications for them has increased significantly. However, establishing that the software has a technical effect remains a key hurdle for developers hoping to register patents. For example, in a 2019 case the EPO rejected a patent application for a method of billing individuals based on the amount of content they downloaded on the basis that it was a “straightforward computer implementation”, which did not contribute to the solution of a technical problem. In contrast, a UK court found that an invention for automatically selecting contactless payment cards to avoid card-clash was not excluded from patentability because it eliminated the need for the payer to press a button to select a payment card.
Which patent office?
It is important to consider where to seek patent protection because the approaches of different offices can vary. For example, the UKIPO has been seen as taking a more restrictive approach to granting patents for software than the EPO. However, both the UKIPO and the EPO have now been granting patent claims relating to computer programs for several years.
Historically, the US Patent Office (USPTO) has been viewed as more favourable. This is because there is no statutory provision excluding software and business methods from patentability. In the US, the courts will allow patent protection for software so long as the invention is not “abstract”. However, recent decisions suggest that the US may be moving closer to the more restrictive approach taken in Europe and the UK, and that software without technical or inventive elements is unlikely to succeed in gaining patent protection.
Regardless of where you make your patent application, you can increase your chances of success by carefully demonstrating how the invention is technical and provides a technical solution to a technical problem.
On a practical note, it is important to bear in mind that obtaining patent protection can be an expensive and lengthy process, both of which may make it an uncommercial option. If you do want to obtain patent protection, then it is vital that you do not disclose the invention and that it is kept confidential until an application is filed.
Since a patent application requires owners to make details of their invention public, some owners choose not to apply for a patent purely for confidentiality reasons.
In practice, copyright is often the most important legal protection for software, despite the fact that it does not provide the monopoly rights afforded by patent protection.
However, the relationship between software and copyright is complicated by the fact that software is both a record of information, which is protectable by copyright, and a functioning work which creates, for example, sound effects and screen displays.
When does copyright arise?
Copyright arises automatically in the UK for qualifying works with no need to take additional steps to have it registered. Copyright arises when an original literary, dramatic, musical or artistic work is created and recorded in a tangible way such as in writing or via a sound recording. The threshold for the originality requirement is fairly low; the author must create the works independently meaning that the works are not copied from elsewhere and are the result of the author’s own skill, labour and judgement. UK legislation states that the definition of an original literary work can include a computer program or preparatory design material for a computer program. However, it is worth noting that in a 2010 European Court of Justice case (C-393/09) it was held that a GUI could not be protected by copyright if the expression of its components was dictated by their technical function.
How long does protection last?
Copyright protection lasts for 70 years from the end of the calendar year in which the author dies.
Where a work is computer generated (for example, where software code is written by AI), copyright lasts for 50 years from end of the calendar year in which it was created. In these cases, the author of the work is the person who undertook the arrangements necessary for the creation of the work.
When can a copyright infringement claim be brought?
A copyright claim can be brought where a third party copies or adapts the work (or a substantial part of it), or where they distribute, rent, lent, or perform the work (or a substantial part of it) to the public.
To claim successfully for copyright infringement, you first must prove three things:
- You own the copyright in the work.
- The copyright in the work is still subsisting.
- The work has been copied.
A common hurdle in claiming copyright infringement is proving ownership of copyright, so it is always important to keep good records of the circumstances in which works are created.
It is worth noting that once a copy of a copyrighted work is issued to the public in one EEA member state, the owner cannot object to it being circulated somewhere else within the EEA. Post Brexit this remains the case for goods first marketed in the EEA and imported into the UK but not for goods first marketed in the UK and exported to the EEA. This may change in the future.
What does copying software mean?
Unauthorised copying of software can take two forms: literal copying and non-literal copying.
Literal copying involves make an identical copy of all or a substantial part of a computer program and includes translating the code into a different language. Non-literal copying involves copying the structure, operation or appearance of a computer program without accessing its source code or object code. This is much more difficult to establish. There is also a form of copying that straddles literal and non-literal copying where the infringer makes an altered version of the source code. Where there is no direct factual evidence of copying, it can be inferred by reason of the similarities between the works. Where only aspects or parts of the copyright work have been reproduced, the courts make a qualitative rather than quantitative assessment to reach a view of whether there has been an infringement of the copyright work.
It is important to remember 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 job as your software, unless there has been copying of the underlying code, there is unlikely to be infringement. Patent protection will be necessary if you want to protect the functionality of your software. It is also worth noting that there are certain permitted acts such as creating a back-up copy and decompilation in certain circumstances which cannot be restricted by contract.
Copyright protection for other parts of the computer program
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. In a UK case the look and feel of a computer program was not protectable as a literary work but individual elements of the GUI were protectable as artistic works. Soundbites which are played when the program is running could also 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 literary works.
A key feature of some software systems and apps is that they allow users to access information in a convenient way. This information is likely to be stored in a database, which can itself be protected by copyright or a standalone database right.
To qualify for copyright protection of databases, the information must be a collection of independent works, data or other materials, which are both arranged in a systematic or methodological way and individually accessible by electronic or other means. The database will be considered an original work if the selection or arrangement of the information in the database can be deemed the “author’s own intellectual creation”.
A database that does not qualify for copyright protection may still be protected by a standalone database right. Since Brexit, UK entities are no longer entitled to acquire EU database rights but can acquire UK database right. For the right to apply, a substantial investment of human, financial or technical resources must have been made in obtaining, verifying and presenting the contents of the database. Software that is used in the making or operation of a database is specifically excluded from protection as a database, but individual components of a computer program may attract database right protection. The maker of the database is the person who takes the initiative for the obtaining, verifying and presenting of the contents, and who assumes the risk of investing in doing so. The maker is generally the first owner of the database right.
The database right prevents all, or a substantial part, of the contents of the database from being extracted or re-utilised without the owner’s consent. The database right lasts for 15 years from the end of the calendar year in which the database was completed or, if later, during which the database was made to the public. When a substantial new investment is made in the database, the right is refreshed and protection period resets.
3. Registered Design Rights & Design Rights
Registered design rights can protect the appearance of the whole or part of a product. The design must be new and have individual character and protection lasts for 25 years. A third party infringes a registered design if they make articles incorporating the design (there is no need to prove copying). Computer programs are excluded from registered design right protection. However, it should be possible to register certain visible elements of a computer program, such as screen displays and icons.
Registration is cheap and relatively quick as the novelty and individual character of the design application is not subject to substantive examination. Once registered, the owner is granted a monopoly right. However, 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 should be noted that a design which is solely dictated by its technical function will not be valid.
Unregistered design rights
UK unregistered design rights arise automatically but only protect the shape and configuration of new three-dimensional designs. As such they are unlikely to afford protection to computer programs and apps. Protection ends 15 years after creation, or 10 years after the design was first communicated to the public, whichever occurs first. A third party infringes a registered design if they intentionally copy it.
Of more potential relevance is the new Supplementary Unregistered Design that was introduced in in the UK post Brexit to compensate for the loss of protection through Unregistered Community Designs. This short term right (three years) includes two-dimensional surface decoration, which UK unregistered design right does not. As such it may afford protection to visible elements of a computer program. Unlike registered designs it is necessary to show copying to succeed in an infringement claim. It should also be noted that there are certain issues surrounding the possibility of claiming unregistered design right protection in the UK and EU simultaneously.
4. Trade Marks and Passing Off
Registering any distinctive elements of your product’s 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 be registered as trade marks. When applying for a trade mark, you will need to specify the types of goods and services that you want your mark to protect. This could include broad categories such as ‘computer software’, more narrowly defined elements such as specific types of software, and other goods and services that will be associated with your product, such as merchandise. Ideally, this should happen before the product is launched.
In the UK, you may be able to bring an action for 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. Download numbers, for instance, could form part of the evidence needed to prove the existence of this goodwill. However, passing off actions are time-consuming and therefore tend to be expensive. Recent case law has also demonstrated that passing off claims are rarely successful, because of how difficult it is to prove that the public has been, or is likely to be, deceived. The sheer number of apps that use similar get ups to provide similar services can make it very difficult to prove consumer deception.
As part of the development of your product, it is important to carry out a brand clearance exercise to reduce the risk of an infringement by you of any third party’s trade mark rights. Where you intend to use anything that might suggest an individual or character, you should also bear in mind that their image rights can be protected by passing off.
5. Action Points
- Keep it confidential
- Get organised
- Clarity of ownership
- Seek specialist advice
Keep it confidential
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 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 if required. They will put those parties on notice that the subject matter is confidential and confidentiality needs to be maintained.
Taking reasonable steps to keep information secret can also help you to access the protection available to trade secrets through the EU’s Trade Secrets Directive. This provided for a minimum level of protection for trade secrets throughout the EU, including in the UK, where it came into force through the Trade Secrets Regulations in 2018. These regulations remain in force post-Brexit and operate in parallel with the common law of confidentiality. A software company may well wish to take steps to protect source code as a trade secret.
Get organised - Identify your intellectual property, keep records of creation, use notices and conduct reviews
It may seem obvious, but it is important to take time to identify all “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. It is good practice to undertake regular reviews of your intellectual property as the business develops.
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, for example, 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. Examples are © (company name) 2020, or the use of ™ to indicate that a name or trade mark is perceived by the owner as protected as an unregistered trade mark through the law of passing off. Note that ® should not be used unless a trade mark is registered.
Clarity of ownership - 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 their 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 to avoid complexities down the line.
If using contractors or an external agency to create any aspect of your computer program or app, including branding, it is 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.
If an assignment provision is not included in the contract with the creator of the works 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” to enable the commissioner to use the commissioned works. However, the terms of that implied licence may not be broad enough to allow you to do what you want to do with the work. For example, you may not be entitled to alter or adapt the work or obtain registered rights in that work. Additionally, any implied licence may not give you exclusive rights to the commissioned works, which means the creator could use those works for other purposes including the fulfilment of a subsequent commission by one of your competitors.
It is also important to identify any IP which was created before a company was established but which is intended to be used or developed by that company going forward, as an assignment from the creator (who may well be the sole director and employee of the new company) will be required to transfer ownership to the company.
When to seek specialist advice
It is important to ensure that you have adequate IP protection in place so that your creation does not fall into a series of legal pitfalls.
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.
We would be happy to assist you with any IP queries you have.
If you have any queries, please contact Mary Bagnall.