For a long time now, there is considerable resistance by Patent Offices and the Courts all over the world to recognize computer programs as patentable inventions. There is also considerable debate on whether a computer program meets the industrial applicability or the manner of manufacture tests.Patent Offices as well as Courts still insist on a computer program or a computer implemented invention to demonstrate a physical change in a component of or information in a computer. If the actual contribution made by the program lies solely within the program, then even if the computer program satisfies the test of novelty, it will not be patentable. The program, therefore, must cause physical change outside of the program. This physical change may lie outside of the computer or may affect the computer in which it is loaded, but it should not be dependent on the type of data being processed or the application being used. This is commonly referred to as the technical effect. Alternatively, to qualify as an invention, a program or software must –

1. Be part of a useful art of economic endeavor.
2. It must produce an artificially created state of affairs i.e. there must be some technical advance or an economic significance; and
3. The effect of the created state of affairs must be tangible, concrete, physical and observable.

In view of the above difficulties of obtaining patent protection for software, protection under the Copyright Act is a viable alternative.

Patents Vs. Copyright

• Automatic Right- A copyright existsregardless of registration or other formalities whereas patent rights only exist if the patent in respect of an invention is granted by a Patent Office.
• Jurisdiction- A copyright in a literary work (which includes software) is recognized automatically in about 165 countries (which are members of the Berne convention) without any formalities such as registration. A patent on the other hand has only territorial jurisdiction i.e. the patent of one country would not be recognized in another.
• Speed- obtaining a patent in India or the USA takes upwards of 5 years. Having ones copyright registered in the USA takes 3-4 months.
• Duration- the term of patent is 20 years. Protection under copyright law is for a much longer time period.
• Rights and Examination- Patents protect the idea whereas copyright protects the expression in the work. For the purposes of grant of a patent, requirements such as novelty, inventive step and technological advancement need to be satisfied, however in the case of a copyright there are no such requirements. In case of a copyright, the work has only to be original.

Why file for registration at all?

Filing an application for registration of copyright in respect of software is not mandatory. But registering a copyright in a work with a Government Authority acts as a notice to the world of the date of the work and as an assertion ofthe author and the owner of the work.

In court proceedings for infringement of copyright, the registration certificate will have evidentiary value for the author and the owner of the software.

Most countries do not have provisions for registration of a copyright. However, India, China, Canada and the USA are some countries that do have statutory provisions for registering copyright.

In certain jurisdictions such as the USA, the available reliefs in cases of infringement may be restricted in case the copyright in the work is not registered.

Advantages of Registration of a Copyright in the US

In adherence to the Berne Convention, in the US, Copyright protection is given to software works irrespective of the nationality and domicile of the author. Thus, even an Indian author who has published software in India would enjoy copyright protection in the US.

The US law provides certain advantages to encourage copyright owners to register the copyright in their software. These advantages¹ as laid down are:

• Public Record: A public record or registration certificate is obtained on registration of the copyright in the Software.
• Fast Registration: In the US, the registration process of a copyright takes an average of 3 to 6 months depending on whether the application is filed electronically or filled physically at the Copyright Office.
• Prima Facie Evidence: The registration certificate acts as prima facie evidence in court validating the copyright if the registration is made before or within five years of publication of the software.
• Statutory Damages: Statutory damages, which in some cases can be significantly more than the actual damages or profits and attorney’s fees, are only available for copyrighted software that hasbeen registered with the Copyright Office prior to infringement. Otherwise,claiming actual damages and profits is the only remedy available to the copyright owner.
• Protection Against Importation: Registration permits the owner of the software to record the registration with the US Customs Service for protection against importation of infringing copies ² .

Requirements for Registration

The application for registration of the source code (the basic claim i.e. a single work)under “literary works” must include a complete application form and the filing fee (non-refundable). Along with the application, a portion of the source code is also required to be submitted to the Copyright Office.

The Application form shall include the following:

1. Title of work and any previous or alternative title
2. Name of Author(s) -in the case of software/computer program the person who arranged to get the program written is considered as the author
3. Nationality and domicile of author(s)
4. Author’s contribution to the work
5. Year of completion of work
6. Date and nation of publication
7. Name and complete address of applicant
8. Whether the work is a Derivative or a Compilation
9. Whether it is a work for hire or is it an arrangement where the authors were either employed with or engaged as consultant by the applicant
10. User manual if any
11. User interface screen
12. Language
13. The Source Code: thefirst 25 pages and last 25 pages of the Source code need to be submitted- If there are no first and last 25 pages, the applicant may submit 2 sets of consecutive 25 pages of the code as the first and last 25 pages.

Conclusion

Though the existing machinery may not recognize Intellectual Property in software, there are other measures which can be taken by owners of software. How one wishes to protect IP in software would depend upon factors such as the cost of protection and time taken as well as the sheer novelty and originality of the software. Though a patent may be filed in respect of software, filing for copyright registration in respect of software is a quicker and cheaper option withprotection which lasts longer and is less controversial to obtain.

¹ Title 17 U.S.C § 410 , Registration of claim and issuance of certificate

² Title 17 U.S.C. § 602