The so-called software patents or computer-implemented inventions are simply the traditional physical inventions that include software in their operation, in the case of applications for invention patents that include computers, computer networks or other programmable devices.
There are multiple definitions of software, in general terms, the concept of software is broader than a computer program, it can be said that:
- Software, refers to instructions that tell a computer what to do. Software, includes the complete set of programs, procedures, classes, objects, methods, functions, routines, etc., associated with the operation of a computer, a computer network or any other programmable device, where data is the common denominator of all those elements.
In addition, software is any sequence of instructions intended to be used directly or indirectly, in a computer system to perform a function or a task to obtain a specific result, whatever its form of expression or fixation.
A computer program or computer program is a sequence of instructions, written to perform a specific task on a computer.
Protection of software as Intellectual Property. Copyright.
By means of Copyright, computer programs are protected as if they were a literary work and from them are protected: the program in source code, the preparatory documentation, the technical documentation and the user manuals.
Requirement that is evaluated for registration.
For the protection of the software, the originality of the program is taken into account, in the sense of origin of the intellectual creation that the work supposes, that is, that the computer program that the author intends to protect is his work, regardless of whether it exists or not in the state of the art and regardless of whether the program works properly from a technical point of view. The mere creation of the work by its author, in this case, the coding of the program, is the necessary and sufficient condition to obtain the protection granted by the right.
The main advantage of copyright protection is its flexibility; There is no need for registration because the rights are born with the creation of the computer program, the period of validity depends on each State and in most, it is valid until after the death of the author.
In Cuba, any type of software receives protection through Copyright and only when it meets certain conditions can it be analyzed as a patentable invention.
Protection through Industrial Property. Invention Patents.
A patent is an exclusive right granted on an invention. In general terms, a patent empowers its owner to decide whether the invention can be used by third parties and, if so, in what way, for a limited period of time. As a counterpart of this right, in the published patent document, the patent owner makes the technical information related to the invention available to the public in a clear and concise manner.
Computer programs or inventions involving software may be patentable if they are technical in nature.
The technical nature is an implicit requirement for it to be considered a patentable invention. It is an intrinsic characteristic of the object or matter whose protection it is desired to claim.
The technical character is evaluated without taking into account the prior art, that is, it is not a measure of the contribution of the invention to said prior art. Technical character and technical contribution are distinct characteristics of an invention.
For example, a computer program designed to allow faster communication between mobile phones with a better quality of voice transmission or a computer program designed for safer operation of a car's brakes.
In contrast, a computer program to encourage loyal buyers by giving a discount for future purchases is not patentable.
A computer program viewed as a set of lines of code does not produce any technical effect and is therefore excluded from patentability. However, a computer program whose execution allows the control of a certain parameter produces a technical result and, consequently, is capable of protection.
Exclusion of the principle of patentability
The TRIPS Agreement. Article 27.1:
- Patents can be obtained for all inventions, be they product or process, in all fields of technology, provided they are new, involve inventive activity and are capable of industrial application. Patents can be obtained and rights can be enjoyed, without discrimination due to the place of the invention, the field of technology, or the fact that the products are imported or produced in the country.
Derived from the TRIPS Agreement, most patent laws exclude pure computer programs from protection and a gray area is created between computer programs and the ways of presenting information.
What happens in some laws:
The United States Patent Office (USPTO) does not require particular requirements for computer programs, only those that any other invention must meet, recognizing: novelty, inventive step, and utility.
If the program is useful for some specific activity, then the invention is capable of being patented. The invention is not required to be of a technical nature.
On the other hand, in Europe, both the European Patent Office and the Spanish Patent and Trademark Office only exclude from the field of patentability computer programs "as such" and admit the patentability of "computer-implemented inventions" when they are incorporated in a machine or process that meets the requirements of patentability (novelty, inventive step and industrial applicability) and therefore the resulting system or process that makes a computer work can be protected by a patent.
Consequently, the Chamber of Resources of the EPO decides that computer programs themselves can, in fact, be the subject of a patent under certain conditions.
- The determination of the technical contribution that an invention achieves with respect to the state of the art is more appropriate for the purposes of the examination of novelty and inventive step than to decide on the technical nature of the intended invention. A computer program is not excluded from patentability according to the Chamber of Resources of the EPO if, when running on a computer, there is a technical effect that goes beyond the normal physical interaction between the program (software) and the computer (hardware).
Regarding the first point, the Chamber of Appeals of the EPO rejects that in order to determine whether or not an alleged invention has a technical nature, the criterion of technical contribution is applied, that is, to analyze the differences of the claimed matter with respect to the state of the art and examine whether these differences are obvious to the person skilled in the art and therefore the Chamber finds that this is more appropriate for the purposes of examining the novelty and inventive step requirements than to decide on the possible exclusion from patentability.
In the second point, it is declared that the requirement of technical character to inventions eligible for protection by patent law is beyond any doubt or discussion.
However, in the field of computer-implemented inventions, the technical effect necessary to guarantee patentability cannot be derived solely from the fact that a properly programmed computer is used, in the same way, the physical interactions usually present in the execution of all the programs are not sufficient to confer the required technical character and thus avoid the exclusion of the programs.
There needs to be a technical effect beyond these usual interactions, there must be an additional technical effect that is the direct consequence of the influence exerted by the program on the internal functioning of the computer. Thus, inventions are patentable not only when there is a technical effect in an industrial process or a machine controlled by the software, but also when the program is the only means of obtaining that additional technical effect.
In Cuba, no invention involving software can be patented?
Cuban legislation on Inventions and Industrial Designs Decree Law-290 in its article 21.1 does not give a definition of inventions, but it does stipulate that an invention is understood to be capable of being protected through any technical solution in any field. of technology, which has novelty, inventive activity and industrial applicability.
In article 21.3, it lists in a non-exhaustive way cases that are not considered inventions, i) Computer programs, scientific, artistic and literary works and aesthetic creations;
Assessment of the technical effect of the invention:
Protectable matter must have a technical effect (technical nature).
The technical effect does not refer to the internal electrical changes of the computer produced by the execution of the program, on the contrary, the technical nature is deduced from the effect derived from the instructions given in its application.
If there is no technical effect, then a computer program is considered as such or what is the same as pure software.
A computer program is considered to have a technical effect when:
- It affects the physical or technical operation of a device, It processes data that are operational parameters of a device and the result of which depends on the technical operation of said device, If it solves a technical problem.
General considerations
Defining software protection is a complex issue, without automatic rules applicable to 100% of cases, which allows you to quickly know if you meet the conditions or not. In many cases, after analysis, it is clear when an invention has technical characteristics and is patentable, but in another it is not possible, so the technical nature must be assessed on a case-by-case basis.
In addition to the technical nature, for the invention to be granted, the novelty and inventive step must be evaluated against the state of the art
Although there are still many “border” cases where the patentability of a computer-implemented invention (its technical nature or not) is not so clear and is a matter of discussion. The decision is made by the Patent Office conducting the examination, through its Examiner and applying the corresponding national law and practice.
Bibliography
- Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Marrakech, Morocco, April 15, 1994. Decree-Law No. 290, “On Inventions and Industrial Designs”, dated April 20, 1994. November 2011. Information on the draft Community Directive on the patentability of computer-implemented inventions (European Commission).
