On 18 October, we paid a visit to one of our potential clients on schedule. He is a boss of the top-tier software corporation. The corporation’s main activities are services: telecommunications and internet, manufacturing, distributing, and retailing ICT (Information and Communication Technology) products, and software design,… The corporation owns a big portfolio of patent applications filed and patents granted around the world. We could feel his great passion and enthusiasm in his work and, especially he showed his gorgeous determination to invest and contribute to the technology for the sake of the public. One of his concerns is that while some countries grant patents for all types of software, in many countries, in addition to, inter alia, the schemes, rules and methods of performing mental acts, scientific and mathematical theories, the computer programs are expressly excluded from patentable subject matter.
The man elatedly elaborated that application software had become the backbone of every economy, the dominant industry in the era, and that software companies could be classified into:
- Large companies that produce commercial software;
- Smaller companies that produce custom software for other companies;
- Companies that produce software components;
- Companies that produce software as a service (SaaS);
- Companies that provide application services.
In a more detailed perspective view, software development companies, like the corporation of that man, design, develop and maintain applications, frameworks or other software components for businesses or consumers. Meanwhile, computer programs help users use and operate computers flexibly, easily and according to a certain rule and order. Each computer program will be saved as a file, stored right on the computer’s hard drive. Besides mainstream computer programs written to serve human needs, there are also computer programs that are not good for humans and are called “bad” computer programs (malware). This program is written by people who are trying to sabotage another person’s computer, as evidenced by programs written and installed on other people’s computers as spies with a view to stealing certain information from the computer’s hard drive and floppy drive when the computer operates.
In fact, computer programs, including applications, use mathematical algorithms which are considered laws of nature. Unfortunately, laws of nature cannot be patented. However, it’s very possible to protect inventions that are implemented by software using a patent, but this comes with a proviso that the invention solves a technical problem. For software, a patented invention is often a method of calculating something. The copyright protects the actual code itself, but would not stop someone else from creating their own code that implemented the same method.
Overview of Computer Programs
A computer program is defined as a set of instructions expressed in the form of commands, codes, diagrams and other forms which, when incorporated in a computer-readable medium, are capable of enabling such a computer to perform a job or achieve a specific result.
Article 22.1 of the Intellectual Property Law of Vietnam (the “IP Law”) stipulates that “…Computer programs shall be protected the same as literary works, irrespective of whether the computer programs are expressed in the form of source codes or machine codes”. Meanwhile, Article 59 of the IP Law provides for the objects ineligible for protection as inventions:
“1. Scientific discoveries or theories, mathematical methods.
- Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games and doing business; computer programs.
- Presentations of information.
- Solutions of aesthetic characteristics only.
- Plant varieties, animal breeds.
- Processes of plant or animal production which are principally of a biological nature, other than microbiological processes.
- Human and animal disease prevention methods, diagnostic and treatment methods”.
Paragraph 1 of Article 10 of the TRIPS Agreement also provides that computer programs, whether in source or machine code form, must be protected as literary works under the Berne Convention (1971).
Therefore, computer programs, though being industrially applicable, are not protected as inventions but can be protected by copyright in Vietnam. This regulation is quite different from those in some other countries such as the United States, India where computer programs can be granted patents.
Registration of Computer Programs by Copyright
A computer program shall be automatically copyrighted, which means that copyright shall arise for a computer program since the computer program is fixed in a certain physical form without having to carry out any procedure, as stipulated under Article 49.2 of the IP Law and under the Berne Convention. The member states to the Berne Convention (the “Member States”) are bound to respect immediately the copyright of a computer program at the time it is published in one of the Member States. Therefore, the fact that a computer program can be protected as a literary work will be an advantage in the current integration process of the world. For a work, the most important property right is the right to copy the work, so the protection of a computer program as a literary work will be a strong mechanism to prevent illegal copying of the computer program.
Notably, the copyright law protects only the expression of a work, not ideas related thereto. Therefore, the owner of a computer program will suffer economic loss when ideas related to the computer program are stolen. Registration of a computer program by copyright cannot prevent users of a computer program from conducting reverse analysis to decipher the working principle, structure, etc. of the computer programs for the purpose of developing the computer program. The person who conducts a successful reverse analysis is the owner of the new computer program. Reverse analysis of a computer program for developing competitive software is also permitted by the TRIPS Agreement. This provision has great socio-economic significance and is aimed at contributing to accelerating the development of the software industry.
To some extent, registration of a computer program by copyright is more advantageous, specifically:
First, it is not mandatory to have a computer program registered by copyright at a local competent body, whereas registration of an invention at a local competent body is mandatory so that the owner has exclusive rights over such an invention.
Second, the requirements for patenting an invention are quite strict. Yet, determining the novelty of a computer program in the information technology era is a difficult thing. Every day in the world, many computer programs can be produced. Meanwhile, it may take longer time than it is stipulated by law to consider granting a patent for a computer program, and the life of a computer program is normally short-lived. Therefore, it may make no sense to patent the computer program in this case.
Third, if a computer program is protected by copyright, the owner of the computer program has the right to profit right at the time the computer program is published. Meanwhile, if the computer program is protected as an invention, the owner of the computer program can profit only from the time the computer program is granted a patent.
Fourth, as analyzed above, when a computer program is protected by copyright, all the Member States must immediately respect the copyright of the computer program at the time it is published in one of the Member States. The mechanism of protection of an invention is different, stemming from the principle of independent protection under the provisions of the Paris Convention for the Protection of Industrial Property (the “Paris Convention”). The fact that a computer program patented in a member state of the Paris Convention does not means that all remaining member states thereof must grant patents for the same computer program. Therefore, the rights of the owner of a computer program may not be recognized by many countries, so the commercialization of the computer program in the process of international integration no longer makes sense, which seriously affects the property rights of the owner of the computer program. It should be noted again that the owner of the computer program can profit only from the time the computer program is patented in the territory of the patenting country. Not every owner of an invention may actually be granted a patent in a certain country, because the invention may not meet the local protection criteria.
Fifth, the protection term of copyright is longer than that of a patent. The protection term of copyright is sine die (for moral rights) and the whole life of an author and the next 50 years after the death of the author or the final author (in case of copyright created by co-authors), whereas the protection term of a patent is 20 years from the filing date of a relevant patent application, which cannot be extended.
Registration of Computer Program-Based Inventions
Under the IP Law, an invention must be a technical solution in the form of a product or process that solves a definite problem. A computer program is considered as an algorithm, not a product or process and thus, it is not an invention, or in other words, it cannot be protected as an invention. However, any computer program involved in the creation of a product or a process that fully meets the criteria of novelty, inventive step and industrial applicability can be protected as an invention.
Article 27 of the TRIPS Agreement provides that “Patent must be granted to any invention, whether a product or a process, in any field of technology, provided that such invention must be new, inventive, and industrially applicable”. As such, the TRIPS Agreement does not prevent the Member States from granting patents to computer programs. In fact, some countries, such as the United States or India, have patented computer programs with no conflict with the provisions of the TRIPS Agreement.
The Guidelines for Patent Examination in Vietnam introduce the concept of “a computer-implemented invention” which is an invention involving the use of computers, computer networks, or other programmable apparatuses whereby prima facie one or more of the features of the claimed invention are realised wholly or partly by means of a program or programs. This invention could be patentable if it has “a technical character, and is a technical solution for solving a technical problem by technical means to attain a technical effect”. Accordingly, the styles of computer programs which can be patented in Vietnam are as follows:
- Computer-readable storage media that has stored on it a computer program that, when executed by a computer, allows the computer to perform a method…;
- A storage medium containing a video signal representative of a program…
Meanwhile, the subject matters “computer program”, “computer software”, “signal-carrying program”, “signal structure”, “computer program product” or “software product” are not acceptable. Therefore, patent applications containing these subject matters tend to be refused.
Accordingly, the styles of computer programs which cannot be patented in Vietnam can, for example, be as follows:
- A computer program product consists of computer program instructions which, when executed by the computer, cause the computer to perform the above method of determining the terminal capabilities….;
- A computer program that, when run on a computer, enables the computer to perform the above method of determining terminal capabilities…;
- A video signal representative of a program…;
In short, although a computer program cannot be protected as an invention, the fact that the computer program can be protected by copyright and in an integration into a computer program-based invention confers critical options on its owner/author. In the world, there are actually a number of countries, such as the United States, India, Russia, and China, that have their own laws regulating the protection of computer programs, to which other countries can refer to improve the effectiveness of the protection of computer programs and create more opportunities for computer program owners/authors to have their works legally registered and appropriately commercialized worldwide. On top of that, it is a constructive viewpoint that the emerging countries like Vietnam should have their own law to protect computer programs.
Understanding of Copyright
Copyright means rights of an organization or individual to works which such organization or individual created or owns.
The subject matters of copyright comprise literary, artistic and scientific works; the subject matter of copyright related rights shall comprise performances, audio and visual fixation, broadcasts and satellite signals carrying coded programs.
Copyright shall arise at the moment a work is created and fixed in a certain material form, irrespective of its content, quality, form, mode and language and irrespective of whether or not such work has been published or registered.
Organizations and individuals with works which are protected by copyright comprise persons who directly create such works and copyright holders
The literary, artistic and scientific works which are protected by copyright comprise:
(a) Literary works, scientific works, textbooks, teaching courses and other works expressed in written language or other characters;
(b) Lectures, addresses and other speeches;
(c) Press works;
(d) Musical works;
(e) Stage works;
(f) Cinematographic works and works created by a process analogous to cinematography (hereinafter all referred to as cinematographic works);
(g) Plastic art works and applied art works;
(h) Photographic works;
(i) Architectural works;
(k) Sketches, plans, maps and drawings related to topography or scientific works;
(l) Folklore and folk art works;
(m) Computer programs and data collections.
The subject matters beyond the categories of copyright protection comprise:
(i) News of the day as mere items of information.
(ii) Legal instruments, administrative and other documents in the judicial domain, and official translations of such documents.
(iii) Processes, systems, operational methods, concepts, principles and data.
Copyright in works shall comprise moral rights and economic rights.
Moral rights [of authors] shall comprise the following rights:
(i) To give titles to their works;
(ii) To attach their real names or pseudonyms to their works; to have their real names or pseudonyms acknowledged when their works are published or used;
(iii) To publish their works or to authorize other persons to publish their works.
(iv) To protect the integrity of their works; and to forbid other persons to modify, edit or distort their works in whatever form, causing harm to the honour and reputation of the author.
The economic rights [of authors] shall comprise the following rights:
(a) To make derivative works;
(b) To display their works to the public;
(c) To reproduce their works;
(d) To distribute or import the original or copies of their works;
(e) To communicate their works to the public by wireless or landline means, electronic information networks or other technical means;
(f) To lease the original or copies of cinematographic works and computer programs.
The conducts constituting infringement of copyright include:
(i) Appropriating copyright in a literary, artistic or scientific work;
(ii) Impersonating an author;
(iii) Publishing or distributing a work without permission from the author;
(iv) Publishing or distributing a work of joint authors without permission from the co-authors;
(v) Modifying, editing or distorting a work in any way which prejudices the honour and reputation of the author;
(vi) Copying a work without permission from the author or copyright holder, except in the cases stipulated in applicable law;
(vii) Making a derivative work without permission from the author or copyright holder of the work used for making such derivative work, except in the case stipulated in applicable law;
(viii) Using a work without permission from the copyright holder and without paying royalties, remuneration or other material benefits in accordance with law, except in the cases stipulated in applicable law;
(ix) Leasing out a work without paying royalties, remuneration or other material benefits to the author or copyright holder;
(x) Duplicating, producing copies of, distributing, displaying or communicating a work to the public via a communications network or digital means without permission from the copyright holder;
(xi) Publishing a work without permission from the copyright holder;
(xii) Deliberately destroying or de-activating the technical solutions applied by the copyright holder to protect copyright in his or her work;
(xiii) Deliberately deleting or modifying electronic information in a work regarding management of the rights to such work.
(xiv) Manufacturing, assembling, transforming, distributing, importing, exporting, selling or leasing out equipment when knowing, or having grounds to know, that such equipment may de-activate technical solutions applied by the copyright holder to protect copyright in his or her work.
(xv) Making and selling a work with a forged signature of the author of such work.
(xvi) Importing, exporting or distributing copies of a work without permission from the copyright holder.
What is the Difference Between a Patent and a Copyright?
Both patents and copyrights essentially prove that you are the creator of the item or idea and declare that no one can take it from you. However, there are certain differences between them.
A patent does not apply to the idea until it transforms into a materialistic form that offers solutions to a problem. In general, a patent protects inventions and new processes. A patent protects the technical enhancement, which adheres to novelty and uniqueness. A patentable product can be defined as a new invention which involves an inventive step and which is susceptible of industrial applications. Patents grant exclusive rights to creators and protect their work from exploitation. The patent system can be viewed as a reward arrangement to those who discover things that will be useful to the nation.
The term copyright refers to the right to make copies of a work. Copyright is granted automatically to an eligible work, and therefore, there is no need to register for a copyright, as is the case with trademarks and patents. Copyright protects original works of authorship and artistic works in a tangible form. Published and unpublished original works qualify for copyright protection. A valid copyright is an inexpensive legal vehicle for preventing others from copying a creative work. The consumer pays for the work because they want to enjoy its content and find it valuable. Copyright has a limited scope of applicability as it can’t be applied to all sorts of work. It is typically applied on artistry work, music, film, artwork, and photography. Copyright protection is automatic and begins from the instant a work is created.
Like a patent holder, the copyright owner has exclusive rights. These rights include the right to reproduce, make derivatives, distribute copies, display the work in public, or perform the work in public. A copyrighted work that is infringed upon can award the holder damages in a lawsuit for misuse.
In some cases, an applicant obtains both a copyright and a patent. Overlap can occur between a design patent and copyright in circumstances where the ornamental design qualifies both for a patent and as a work of art subject to copyright protection.
Copyrights and patents provide legal grounds for ownership and the right to pursue legal recourse if someone infringes on your idea. Otherwise, people can go around stealing ideas and creations and selling them as their own. It’s hard to prove that one person had an idea over another, which is why most artists and businesses apply for protection the second they create something new.
Advantages of Copyright
Legal ownership: Copyright registration serves as a legal shield granted to authors of “original works of authorship”. Copyrighting provides a person with legal evidence and public notice of ownership. A person can be sued in a court for infringement of copyright provided one has the papers in place.
Protection of creative works: Copyrights legally secures the original works of authors, artists, musicians, and creators. It grants them exclusive rights over their works, including the rights of reproduction, distribution, display, performance, and creation of derivative works.
Moral and economic benefits: It gives the creator to the rights to publish or copy or publish any substantial part of a book comes under economic rights. Right to integrity of work, listed authors come under moral rights. The creator is able to license the work to others, sell, or utilize it for generating income. This provides economic incentives for future creative endeavors.
Advantages of Patent
Legal ownership: Patents provide a basis for owners to take legal action against people who are using the patented invention without permission.
Promoting innovation: Patents have a positive effect on society because they promote innovation and help develop new products.
Economic benefits: Patents allow the owner to get protection for a pre-determined period, allowing the owner to keep competitors at bay. They also allow the owner the best opportunity to profit from the invention by preventing others from copying it. Patents provide a basis for owners to negotiate with potential investors or other business partners while preserving their intellectual property rights and license someone else to manufacture the invention on agreed terms.
If someone is infringing on a work that is not yet registered, the rightful owner can file for “special handling” in filing an application, which provides for expedited review for registration with the copyright office. This option requires there be an imminent need for registration as well as a significantly increased filing fees, but it speeds up the registration process allowing an author to file a lawsuit quickly.
How to Register Copyright for a Software Application
It is vital to initiate registration of software to protect the authors’ legal rights and benefits. Registering copyright creates a public record of ownership as well as a presumption of ownership in court. In a lawsuit, a party claiming ownership over the work must prove ownership. Proving ownership can be difficult in some cases. Registration creates a public record recognized in court as proof of ownership. Having a registration also means that a court will presume ownership of the work with no further evidence required. In cases where a quick injunction is being sought, showing registration can save time and lead to a quicker result in the courts.
There are three important steps to do this kind of work:
(i) Determining the type of work to be registered;
(ii) Completing a copyright application; and
(iii) Paying the associated fees.
Should you wonder whether your works can be copyrighted, or if you need any advice on related registration procedures, please do not hesitate to contact us for our free assistance.