Software: Copyright & Patent Practices – Ong’anya Ombo Advocates

Introduction

Intellectual Property Rights (IPR) is a composition of various overlapping rights such as Copyright, Trademarks, Geographical Designs, Patents et al. Various schools of thought that are pro-intellectual property argue that by offering IPR, it enables people to have an incentive to invent; hence, making life much better. For purposes of this discussion, Copyrighting and Patenting of software’s will be given high regard.

The definition of what results to a copyright and patent will vary from one country to another, and that is due to the diverse approach of the two depending on how the legislators draft the laws, not to mention how the courts interpret the laws. Unlike Copyright that are automatic (irrespective of that, always register), Patents require other sophisticated measures such as providing the detailed information about the subject.

The paper does not focus on what is or types of patents that exist, rather, the focus is on the different approach to registration of software’s or applications. When making an application to have a software registered, one has to be conversant with the State’s legal regime, and that is because some automatically place a software under Copyright while some under Patents. It is likely that States that protect a Software as patent will likely offer Copyright protection (which are realised automatically).

A regime that considers a Software as only falling under Copyright law will likely expose the author to a grave violation of IPR. The WIPO provides as follows:

[C]opyright protection extends only to expressions, and not to ideas, procedures, methods of operation or mathematical concepts as such. Although copyright protects the literal expression of computer programs, it does not protect the ideas underlying the computer program, which often have considerable commercial value.[1]

In Samsung Electronics Co. v. Apple Inc. (supra) there was mention of Design and Utility Patent; the latter is an example of the ideas underlying the computer program that is likely not to be protected under regimes that only register the expression of the software and nothing else. However, not all software inventions are patentable:

Recent developments in the field show an international trend towards patenting of software whose application has a “technical effect.” Software that controls a chemical process in a plant is patentable whereas one which ‘merely’ searches for entries in a database is not.[2]

Software under Copyright and Patent Law

According to World Intellectual Property Organisation (the WIPO), it provides that for the subject to be patentable, it must at least have the following requirements:

  1. The invention must contain a patentable matter
  2. Capable of industrial application
  3. Novelty
  4. Must have an inventive step
  5. The disclosure during registration must meet a certain standard[3]

In Samsung Electronics Co. v. Apple Inc.[4] the Supreme Court of the United States of America (the USA) found that a simple invention entails more than one patent whereby some are Design Patents while others are Utility Patents. Therefore, Samsung Electronics Company had only violated Apples Inc. Design Patent.

A single product might have tens, hundreds or thousands of patents in it. In certain cases, a Patent of a particular source code might come into question despite meeting the above requirements. In Oracle American Inc. v Google Inc.[5] their Justices were confronted with many questions, which included whether it is prudent to protect a procedure that has no whatsoever alternative. Also, other imperative matters of discourse were the use of Free Software (FS) or Open Source Software (OSS) and Proprietary Software (PS). In general, the use of FS/OSS to develop a particular software requires that the same should be accessible under the same terms of use of the original software,[6] which is FS/OSS.

In Kenya, the Copyright Act,[7] a computer program (which is the same as Software or Application) has been categorised as literary works.[8] Also, the piece of legislation provides that a computer program cannot fit for fair use.[9] However, in certain circumstances, software is fit for fair use if it falls within the FS/OSS category but as Alex Gosseries et al. discuss the same, they put it clear that by the mere fact that a Software is free, it does not mean it is a FS/OSS.[10] The Act provides further exceptions under s 26 (4).[11]

The Copyright Act CAP 130 of the Laws of Kenya does not provide expressly if it offers protection of Computer Programs as “Patents”, but it is clear that it can be protected under Copyright law, which is only the expression. For instance, s 2 only recognises that a computer program is a set of instructions expressed through certain means and can achieve certain results; however, reading s 26 (1) (a) together with s 26 (3), (4) it is evident that the Act recognises the need to protect procedures, methods of operation or mathematical concepts as such.[12]

Computer Program developers who have PS, tend to have stringent terms of use or licensing policy, whereby they do not allow any form of modification of the software. However, the Copyright Act invites a wide loophole that can lead to unfair exploitation of a computer program. It provides that no person be required to seek authority from the license holder in the event one needs to modify the program so that it may work concurrently with the rest.[13]

Other useful provisions are the Industrial Property Act[14] and the Science, Technology and Innovation Act[15].

There exists a distinctive nature between the Copyright Act and Industrial Property Act concerning software’s, whereby the former is clearer of what a computer program is and it delves into what is not to fall under the ambit of Copyright; for instance, it protects source codes (Utility Designs). The latter focuses on other IPR, which includes patents, which is the Utility Designs. Hence, that raises confusion not to mention it places those who intend to attain special protection in a perilous rostrum.

Over time, it has been presumed that the only period when Copyright and Patent law come into conflict was through Design Patents, however, it is now clear that Utility Patents can fall under Copyright law. Therefore, the protection of source codes that effect a certain purpose is clearly protected under the Copyright Act of Kenya. Such ‘confusion’ occurred in Oracle American Inc. v Google Inc. (supra).

Application for Registration                                        

One can register a patent or copyright in their respective States. However, it is clear that Patents are territorial rights. That said, one can use patents protected in Kenya in a different country without having violated the same.

Due to such challenges, there are regional offices that save one from making tens or hundreds of applications to each country.

In Africa, African Regional Intellectual Property Organisation (ARIPO) – Applicable to Member States only.

In Europe, European Patent Office – Applicable to Member States only.

International spectrum, Countries that have signed Patent Cooperation Treaty that is under the World Intellectual Property Organisation. Currently, 151 countries have signed the treaty – Applicable to Member States only.


[1] WIPO, ‘Patenting Software’ (Wipo.int) <http://www.wipo.int/sme/en/documents/software_patents_fulltext.html> accessed 12 December 2016.

[2] Andre S. Sequerah, ‘A Patent Mess: Developments In The Legal Protection Of Software.’ (Doc.ic.ac.uk) <http://www.doc.ic.ac.uk/~nd/surprise_95/journal/vol1/ass/article1.html> accessed 12 December 2016.

[3] Ibid n1

[4] [2016] United States Supreme Court

[5] [2014] United States Court of Appeals, Federal Circuit

[6] Axel Gosseries, Alain Marciano and Alain Strowel, Intellectual Property And Theories Of Justice (1st edn, Palgrave Macmillan 2008).

[7] CAP 130 of the Laws of Kenya

[8] s 2 of the Copyright Act

[9] s 26 (3) of the Copyright Act

[10] Ibid n6; See also, s 26 (1) (j) of the Copyright Act

[11] The Copyright Act

[12] Ibid n1

[13] s 26 (5)

[14] CAP 509 of the Laws of Kenya

[15] No. 28 of 2013 of the Laws of Kenya