How can you patent your software?

October 19, 2021
If your startup deals with software, read the second part of our guide to protecting the intellectual property of your work.

Resource created by TORO Legal Hub

Software consists of a sequence of instructions in a specific language which control the orderly execution of certain activities when they are loaded into a computer. These instructions can be expressed in a language that can be understood by man (source code) or only by the machine that receives, interprets and executes them (object code). 

Historically, the need to protect software arose with the advent of Home Computer and the Internet, as well as with the exponential growth of computer products and the spread of tools that make it extremely easy to reproduce them illegally. 

In this context, the need of powerful and exclusive software protection has become more and more apparent. 

In addition to copyright protection, software can also be delighted by a patent exclusivity, providing those certain requirements and conditions are met. 

First, it must be considered that compared to copyright protection, which covers the aesthetic and creative aspects of the work, the patent allows the functionality of the software object of the invention to be monopolised for a specific period - twenty years from the filing of the application. In this way, the inventor would obtain a right to exclude from the market any third party wishing to market an invention identical and/or similar to the one claimed by the patent. 

It is important to emphasise that the two types of protection, which are copyright and patent protection, are not mutually exclusive but rather cumulative on the same object covering different areas and aspects, the aesthetic, artistic and design aspects for copyright protection and the functional aspects for patent protection. In addition, these protections do not exclude other forms of software protection, such as competition protection, industrial secrecy and know-how. 

Let us now go into detail on the protectability of software through patents. 

According to the definition adopted by the European Union, a software patent refers to a patent applied to an "invention made by means of a computer". An invention is understood to be the overcoming of a technical problem through new and original elements with respect to the technical field of reference. 

Patent protection for software is applicable only to programs that meet the requirements of patentable inventions: industriality, novelty and inventive step. For a computer-implemented invention to be considered to involve an inventive step, it must involve a creative contribution. The latter is assessed by considering the difference between the subject matter of the patent claim as a whole whose elements may include technical and non-technical features and the state of the art. 

In addition, the new and non-obvious technical contribution may result from the problem at the origin of the claimed invention and solved by it; from the means, i.e. the technical features constituting the solution of the problem at issue; from the effects obtained in solving the problem at issue; and finally from the need for technical considerations to arrive at the computer-implemented invention. 

Therefore, if a software invention represents a technical contribution to the state of the art, such software invention is patentable at the European Patent Office and also in Italy.

Consequently, if, for example, the development of a business method requires technical considerations relating, inter alia, to the computerisation of this method and the design of an algorithm to make this computerisation faster and safer, and if the above considerations lead to new solutions which are not obvious in the state of the art, the technical aspect of the software is also attributable to the specific solutions adopted for the computerisation of this procedure in which the inventive activity can be recognised. The invention in this case is patentable. 

Italy has acceded to the European Patent Convention (EPC) and the Italian Inventions Law and its interpretation are substantially harmonised with the EPC and the orientation of the European Patent Office. 

In accordance with Art. 52 of the EPC, the Italian legislator with Art. 45 of the Industrial Property Code establishes that computer programs, considered as such, are not considered inventions. 

According to this provision, the prohibition of patenting is limited to the software as it is, detached from the solution algorithm, since its realisation is the result of a purely applicative work. Therefore, it is necessary to distinguish within the software the set of sequentially ordered instructions that apply, i.e. interpret and carry out an algorithm from the algorithm itself. From this perspective, it is possible to patent a computer algorithm that is the result of an invention. 

This is the case, for example, with inventive software that implements a process for operating a computer by optimising its resource management or that controls a production process or implements an automation process or that implements a method for processing data representing physical entities. An Invention Patent protects the algorithms and/or logic underlying the software, regardless of its specific implementation.

The European Patent Organisation (EPO) has granted many patents on inventions based at least partly on software since the European Patent Convention came into force in the 1970s. Article 52 of the Convention, as mentioned, explicitly excludes computer programs from patentability (paragraph 2), understood as computer programs as such (paragraph 3). The interpretation given to the article is that a new technical solution which solves a technical problem in an inventive (i.e. non-obvious) way can be patentable. In the case of inventions implemented through the use of a computer, expressed in terms of steps, in order to meet the patentability requirements there must necessarily be an Additional Technical Effect beyond the normal interaction of the software with the hardware elements and devices.

The lack of a Technical Problem often makes it possible to distinguish between "software" as an end in itself (i.e. a program for a computer as such) and a program capable of providing a Technical Solution capable of solving a Technical Problem in a new and inventive way with respect to the State of the Art. The State of the Art is everything that is known and accessible to the public by means of any disclosure, written or oral, up to the day before the filing date of a patent application. 

For example, a program that processes images is not patentable. On the other hand, a new algorithm that makes it possible, in a new and inventive way, to process images from a telescope, thus making it possible to increase the resolution and quality of the telescope's images, is patentable. A computer-based invention that only solves a business problem and not a technical problem is not considered patentable. However, the fact that an invention is useful in the commercial sector does not automatically mean that it is not patentable.

Finally, it is worth briefly mentioning that the content of software patent protection also extends to the activities of reproducing and decompiling the invention which are permitted by law (under Article 68 of the Intellectual Property Code) solely for experimental purposes. In fact, reverse engineering involves the reproduction and/or processing of the software code and its decompilation and must be considered lawful only to the extent that it complies with the conditions set out in Articles 64 ter and 64 quater of the Copyright Law (LDA), which are set out below for convenience: 

64 ter LDA 

"1. Unless otherwise agreed, the activities referred to in Article 64bis (a) and (b) shall not be subject to authorisation by the rightholder where such activities are necessary for the use of the computer program in accordance with its intended purpose by the lawful acquirer, including the correction of errors.

2. The person who has the right to use a copy of the computer program shall not be prevented by contract from making a back-up copy of the program where such a copy is necessary for its use.

3. The person who has the right to use a copy of the computer program may, without the authorisation of the rightholder, observe, study or test the functioning of the program with a view to determining the ideas and principles which underlie any element of the program, if he performs such acts during the loading, display, execution, transmission or storage of the program which he has the right to execute. Contract terms agreed in breach of this paragraph and of paragraph 2 shall be null and void."

64c of the LDA 

"The authorisation of the rightholder shall not be required where the reproduction of the computer program code and the translation of its form pursuant to Article 64a (a) and (b), carried out for the purpose of changing the form of the code, are indispensable for obtaining the information necessary to achieve the interoperability, with other programs, of an independently created computer program provided that the following conditions are met

a) those activities are carried out by the licensee or by others having the right to use a copy of the program or, on their behalf, by those authorised to do so;

b) the information necessary to achieve interoperability is not already readily accessible to the parties referred to in point (a);

c) these activities are restricted to those parts of the original programme which are necessary to achieve interoperability.

2. The provisions referred to in paragraph 1 shall not allow information obtained by virtue of their application

a) to be used for purposes other than achieving interoperability of the independently created program;

b) to be communicated to third parties, without prejudice to the need to achieve interoperability of the independently created programme;

c) are used for the development, production or marketing of a computer program substantially similar in its form of expression, or for any other activity which infringes copyright.

3. Contract terms agreed in breach of paragraphs 1 and 2 shall be null and void.

4. In accordance with the Berne Convention for the Protection of Literary and Artistic Works ratified and made enforceable by Act No 399 of 20 June 1978, the provisions of this Article shall not be interpreted in such a way as to allow their application to be unduly prejudicial to the legitimate interests of the rightholder or to conflict with a normal exploitation of the program."

The reverse engineering is a very delicate and topical issue that deserves an ad hoc in-depth study and to which we shall return. 

Nowadays, software and new technologies are the driving force of our society and it is an exponentially growing sector. For this reason, obtaining patent protection would guarantee the owner to acquire a fundamental asset at company level, giving an important competitive and competitive advantage.

Author

Valerio Capasso
Founder TORO Legal Hub

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