Patent Protection Vital for Software Inventions

Consider two ground-breaking inventions that helped drive the personal computer industry: the graphical user interface, created by the Xerox Palo Alto Research Center, and the VisiCalc electronic spreadsheet. Both have changed the modern world, yet, amazingly, neither of these "killer app" inventions was initially patented.

Rather, as was early legal practice, the different embodiments of both programs were protected only through the use of copyrights, much as were other creative works such as books and music.

While any creative software program code is copyrightable by the programmer (author), the functional idea embodied in the code is not. This idea does, however, meet all of the formal requirements of a patentable invention.

In 1981, the Supreme Court reinterpreted the law to require the Patent Office to consider any invention, including computer software, so long as it is a "new and useful process, machine, manufacture or composition of matter." A functional idea implemented in a computer program is a "computer-implemented process." This new interpretation of the law finally opened the door to software patents.

In practice, copyrights and patents are used to protect ownership rights to software products. Because there is no meaningful overlap of legal rights in a patent and a copyright, it is important to understand their differences.

A copyright is an automatic grant by the U.S. government of the temporary (lifetime plus 50 years) right to prohibit all others from copying a creative work. It specifically excludes protection of the ideas embodied in a work, extending protection only to "creative expressions in a tangible medium." It is granted only to the author of the work and may be bought and sold or licensed.

A patent, on the other hand, is a negotiated grant by the government of the temporary (20 years from application) right to prohibit others from "practicing a new and useful" idea. This temporary monopoly merely delays the free public use of the idea for the life of the patent. In exchange, the public receives full disclosure of the invention so others can begin improving on it immediately. It's possible to unknowingly violate a patent by independently reinventing or improving the invention after the original inventor has done so.

Today, companies that develop software operating systems and programs are considered manufacturers of physical products, not publishers of creative content. Increasingly, they use patents and copyrights. The patents are typically used defensively in cross-licensing negotiations to avoid paying other licensing fees. Less often, a company may use its patents to generate licensing revenue.

Frequently, copyright protection is also used to protect the code embodied in the most important products, such as operating systems or the larger software office suites.

Today's technological innovators tend not to be individuals, but groups of researchers or programmers working for companies that contract in advance for ownership of resulting inventions in exchange for funding the work.

When a patent is issued to several inventors, each co-inventor individually has the right to license others to practice the invention. Prohibiting others from practicing the invention can be asserted only when all co-inventors act unanimously. Usually, all inventors agree in advance to assign their rights to their employer, which then owns the patent as "assignee." My company, Object Technology Licensing Corp., for example, owns by assignment hundreds of software patents covering many vital aspects of the emerging object-oriented software now used on the Internet, in Java programs and in new forms of distributed computer operating systems.

Patent protection for software is paramount. Patented software inventions are essentially ideas for machine-implemented procedures for moving around data bits to achieve results. Any one of these patented ideas can be implemented via different program listings or works, each of which may be separately copyrighted by the programmer. But no such software may be used or distributed without a license from the patent owner.

Specifically, the patent owner has the right to prohibit use of the patented idea in a coded program, even where the programmer owns a copyright for code that independently reinvents the same idea ? with or without knowledge of the issued patent. A company selling independently developed software, therefore, also needs a license from the patent holder if such a patented idea is embodied in its copyrighted product.

Software, in one form or another, greatly affects how we work, play, learn, transact and interact with one another.

Patent protection of these inventions is both legally correct and now the preferred way of protecting software products without discouraging the continued evolution of these wonderful new inventions.

James Ward is vice president and patent counsel for Object Technology Licensing Corp., Cupertino, Calif.