Your Subtitle text

Software Patents | TR&R | Software Copyrights

Even though the Supreme Court held in 1981 that software for controlling the operation of a manufacturing machine was patentable, it has taken many subsequent court cases and many years for the United States Patent and Trademark Office (PTO) to be convinced that software is actually subject matter eligible for patent protection. Even after software became eligible for patent protection, software applications were often denied a patent. It was unclear what made software inventions patentable.

Since patent protection was denied to computer programs for a long time, copyrights became an increasingly important and sometimes the only way to protect computer programs. Its major drawback is that copyright protects only the original expression of an idea, while a patent protects the idea itself. But in terms of software, copyright was expanded by some courts to protect others from copying not only a program's source code but also a program's "structure, sequence and organization", and even the general look and feel, which could include computer displays and menus. This is closer to protecting the idea rather than just its expression.

For a long time, it was hard to argue with choosing copyright protection over patents for software: copyright protection is automatic, and registration with the Copyright Office, which gives the registrant additional rights and remedies, is fast and inexpensive. In addition, a copyright application is not subject to the somewhat rigorous examination given a patent, which can take years to issue. The increasingly strong and broad protection the courts gave to copyrights for computer programs only increased its preference.

However, the decision by the Supreme Court in Lotus Development Corp. v. Borland International Inc. shifts the balance to patents over copyrights for intellectual property protection for software. In that decision, the court let stand a court of appeals ruling that denied copyright protection for menu commands in the Lotus spreadsheet program. Lotus had sued Borland for copyright infringement because Borland included a copy of the Lotus menu hierarchy in its spread sheet as an option for its users. It is important to note that although it replicated the menu, Borland did not copy any of Lotus' underlying code to implement the menu hierarchy commands. The appeals court held that the menu hierarchy was not protected by copyright because it was a "method of operation" which is not protected under traditional copyright law. The court also implied, but did say, that the menu hierarchy with its commands could also be considered to be a system, process or procedure which are also specifically excluded from copyright protection.

Influencing the Lotus decision was that the expanding protection given to copyrights during the eighties and early nineties appears to come too close to patent protection. Since computer programs have a practical application, they are eligible for patents. By giving broad copyright protection to computer programs beyond the original source code, it is possible to limit the ability of others to perform a task in the best or most efficient manner. This broad copyright protection borders on protecting the idea, which is the domain of patents, rather than just protecting the expression of the idea, which is principally the domain of copyrights. Since copyright protection lasts much longer than patent protection, the court was concerned about giving this patent-like protection to software without its meeting the standards and undergoing the rigorous examination required for patents.

While these copyright developments were occurring, the PTO faced an increasing number of software patent applications. It was still unclear what made software patentable. As a result, software applications were often denied or granted inconsistently.

To resolve the situation, the PTO published software guidelines together with more detailed examiner training materials for the PTO examiners, the persons who actually review the patent application to determine if it meets the requirements to become a patent. While the guidelines are not law, they are given deference by the courts. The software guidelines, together with the examiner training materials, provide detailed examples and checklists that can be used by the patent attorney in preparing the software application in a form so that meets the PTO criteria. This may make it easier to prosecute the application but does not make the task of preparing an application faster. In fact, to follow the guidelines it is necessary to provide lots of details about the program, its uses and practical applications, and even details about what is happening outside the computer itself, both before and after the program runs. Although following the guidelines may require some interpretation and lots of attention to detail, they at least provide a road map for the patent attorney in writing the application, and equally as important, for the examiner to follow in processing the software patent application through the PTO until it ultimately is granted.

This combination of the narrowing of copyright protection for computer programs together with the adoption of detailed software guidelines by the PTO shifts the balance to patents over copyrights for new and novel computer programs. A patent protects the idea, and not simply its expression, and therefore provides broader protection for computer programs.