Understanding software intellectual property protection

Software including digital products and applications can be protected using various types of intellectual property (also known as IP).

When it comes to intellectual property and software, there is a lot of conflicting and bad advice floating around. The main types of intellectual property relevant to software and its different aspect are:

• Patents – The way things work
• Copyright – Code, images, text, videos, music, for example
• Trade secrets – The way things are built and the way they work
• Trademarks – Brands – words, logos, slogans, jingles, colours
• Designs – The way things look
• Database rights – Structure of databases

As you can see, there can be overlap between several different types of intellectual property that can be used to protect software. In this article, we explain what each type of IP covers, to help you properly protect your assets.

Intellectual property and software in the UK

A software company should have a comprehensive intellectual property strategy. Some intellectual property rights arise automatically and have no acquisition cost. For example, trade secrets, copyrights, and database rights do not require registration, at least in the United Kingdom.

In contrast, patents, trademarks, and registered designs must be lodged with the intellectual property office of the relevant country where protection is required. There are costs associated with preparing and filing applications for such intellectual property rights.

Patent protection for computer software

When we talk about intellectual property protection for computer software, the conversation tends to be biased towards patent protection.

Patent protection is very much possible for computer software. Still, there are several restrictions on what can and cannot be protected by patents, particularly in the United Kingdom and Europe.

The starting position taken by the intellectual property offices in the United Kingdom and Europe is that computer software per se is not patentable. However, if it can be demonstrated that the software provides what is known as a technical effect, then the exclusion from patentability can be obviated.

It is generally accepted within the intellectual property community that patent protection for computer software is slightly more straightforward to obtain via the European patent office than in the United Kingdom.

Having the right strategy in place lets you have two bites of the cherry.

First, file your patent application in the United Kingdom and follow the examination process. If you are unsuccessful in the UK, is still the possibility of filing a European patent application that can be validated to cover the United Kingdom if granted.

Therefore, even if your patent application is refused, there is still a chance of having a patent granted via the European patent office. A European patent validated to cover the United Kingdom is equivalent to a standard United Kingdom patent.

Patents outside of the UK

Many computer software companies realise that their largest markets can be outside of the e United Kingdom.

Patent rules in different countries can vary. For example, it is generally recognised that the United States Patent and Trademark Office is more friendly towards software patterns than the European Patent Office or the UK Intellectual Property Office.

Of course, this is a slight generalisation, and it is still necessary for a patent applicant to demonstrate the novelty and non-obviousness of their product in the patent application.

It is important to note that patents are not the be-all and end-all for software. Many highly successful software companies have generated significant revenues from their software products without patent protection.

Keep safe your trade secrets

Trade secrets need to be considered in conjunction with patents.

You should consider that by filing a patent application, you agree to the content of the patent application being published approximately 18 months after filing the first application for an invention.

Filing the first application for an invention comes with its challenges: for a patent to be granted, it must be sufficiently described and disclosed. This should enable what is called a person skilled in the art to work on the invention once the patent is refused or has expired.

This can create difficulties, as there will be processes that are not visible to customers and other software users you may wish to keep confidential.

By having the right intellectual property strategy in place, you should be able to file patents that cover aspects of your computer software but do not disclose the crown jewels that you may wish to keep as a trade secret.

To protect certain information, i.e., algorithms and code, there are specific steps that you need to take, particularly within the United Kingdom and European Union, to protect your information as trade secrets.

Trade secrets policy

It is recommended to have a Trade Secrets Policy in place at a very high level. This policy will be binding on your employees and consultants. Also, you should train and inform them on what information within your business is a trade secret and how it may or may not be used.  Holding exit interviews to remind your employees and consultants that such information cannot be used outside of your business in the future can help you in this process.

Non-disclosure Agreements

You must update your Non-disclosure Agreements (NDAs) to ensure that there are suitable carve-outs of trade secret protection and ensure that only those who genuinely need access to a trade secret can have access. If you need support with the is LawBite has a free NDA Template to get you started and an NDA review service, if you wish for an expert to review your agreement.

If you do not have adequate steps in place to protect your trade secrets internally, a court may not enable you to enforce your trade secrets against an ex-employee or ex-consultant.

Why you should maintain a record of your copyrights

Aligned with trade secrets is copyright protection. Your code may be considered a trade secret, but it will also be protected by copyright as the code would qualify as a literary work.

Copyright in code can l exists for a period of 70 years. This is, of course, far longer than any software code requires to be protected, given the rate of technological development.

While copyright does arise automatically, and there were no registration requirements, it is still prudent to keep a record of all your copyright-protected works.

This will help set out when the material was created, who it was created by, their title, and a comprehensive log of versions.

This record is helpful if you ever need to enforce your copyright to demonstrate that the work was created on a specific date and that you have the relevant ownership or licence to enforce it against an infringer.

It is also worth noting that copyright can be protected in several countries, notably the United States and China, where registration can be helpful to recover more serious damages if there is an infringement.

Often, the brand is the most vital intellectual property protection for any product, including computer software.

Suppose you have a strong brand that generates reputation and goodwill and is policed properly to avoid dilution by infringers and copycats. In that case, your brand can act as a clear differentiator and identifier of the source of your software product.

Use trademarks to protect your brand

When purchasing computer software, especially software with a high acquisition cost, most consumers and businesses will do so based upon reviews and word-of-mouth.

With this in mind, you must make sure your brand is adequately protected across all your primary markets. The best way of doing this is through trademark protection and acquiring all relevant domain names.

As a UK business, you should first apply for a UK trademark, you can then file trademark applications in other countries at any time. It is recommended to file a trademark in key countries within six months of the filing date of the UK trade mark application. This is to ensure that you can benefit from what is known as the priority period.

The priority period is used to file trademarks in other countries while spreading the cost of those applications and enabling you to effectively take priority over any intervening trademark applications filed by third parties within the filing date of your UK application.

It is strongly recommended that you protect your brand as soon as possible through trademark applications for the wording used in the name and any distinctive logo. You may also wish to consider trademark applications for any highly unique slogans.

Designs and protecting the visual assets of your software

Designs are often considered most relevant for physical products. However, you may also obtain design protection for visual assets of computer software. You may also benefit from registered design protection as this can provide a deterrent against the direct copying of your design assets.

Don’t forget to take into account your database rights

Finally, database rights are never right that arise automatically. While copyright protects individual entries into a database in terms of their text or images, database rights preserve the structure of the database within which those copyright entries are situated.

Wrapping up

By implementing strategies and steps to benefit from each of the intellectual property types discussed above, you can provide suitable protection for your software, product or application. Intellectual property is a complex area of law, and it is highly recommended that you speak to an intellectual property lawyer to understand the best way to protect your computer software.

Kevin Hanson is an expert intellectual property lawyer at LawBite. Kevin has over 10 years experience of working in patent/trade mark registration, enforcement and monetisation, and general intellectual property and commercial law.