Protecting Your Software Ideas: to Copyright or to Patent

By David Chang Villacreses, Assistant Director, Digital Innovations

Software-related inventions are becoming increasingly popular due in part through the development of new technologies such as machine learning algorithms, mobile applications, and open source implementations. As a result, technology transfer offices now face the dilemma of how best to protect these inventions – through copyright law or patent law.

For example, computer software is a set of instructions that are executed by a computer. These instructions can incorporate one or more of the following: source code, object code and scripts executed by a computer, each of which is protectable under copyright law. On the other hand, patenting of the software is another option for protection, however, there is significant costs associated with patenting as well as the uncertainty of the patentability and/or enforceability of software patents in light of recent court decisions. In view of the above, using copyrights as the IP protection strategy along with keeping the code proprietary can be cheaper and more practical approach to protecting most types of software.

What is protected under copyrights?

The United States Copyright Office defines copyrights as “a form of protection grounded in the U.S Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.”

There are three criteria needed to obtain a copyright. The subject matter must have: (1) originality; (2) minimal creativity; and (3) fixation in a tangible medium of expression. The “original work of authorship” must be a work that is independently created by a human author and possess a minimum amount of creativity. As stated on the US Copyright Office website, a work is “fixed” when it is “captured (either by or under the authority of an author) in a sufficiently permanent medium such that the work can be perceived, reproduced, or communicated for more than a short time”. A copyright exists at the moment the subject matter is fixed (so long as the other two requirements are met).

Taking the above into account, some examples of copyrightable subject matter include the following:

Literary works (e.g., Books, manuals, medical questionnaires etc.)
Human annotated images
Literal elements of software (e.g., source code, object code, scripts, etc.)
Nonliteral elements of software (e.g., sequence, structure, organization, etc.)
Mobile apps
Application User Interfaces (APIs)
Graphical elements (e.g.: Graphical User Interfaces (GUIs), screen displays, discrete elements thereof)
Photographs
Podcasts and audio recordings
Sound effects
Dance steps and corporal expression
Visual arts
Videos and motion pictures
Videogames and interactive experiences
3D models

On the other hand, the following works would NOT be considered copyrightable material:

Works not having been fixed in a tangible medium (e.g., an oral speech that is not recorded or written down)
Works lacking creativity and/or originality (e.g., a phone book, calendar, height and weight charts, etc.)
Computer-generated code produced without any human input in such code.
Device generated images and scans, which require no human input (for example, the direct output of an MRI scanner).
Artificial Intellegence (AI)-generated text that required no human interaction.
Automatically generated audio or video recordings.

Databases have limited protection under copyright law as a “compilation” or “collective work.” In such cases, the materials (e.g., data) need to have been selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes a new work. Importantly, the copyright extends only to the compilation, not to the underlying materials or data.

Do I or Duke need to register a copyright?

In the US, copyrights a copyright exists the moment a work of authorship having originality and minimal creativity is fixed in a tangible medium. This means no formal registration is needed for the copyright exists. Formal registration with the US Copyright Office is required however to enforce the copyright against an infringing party. The process of registering for a copyright is fairly straightforward requiring a sample of the copyright (e.g., a copy of the book) and payment of a fee.

What is the difference between copyrights and patents?

In a nutshell, copyrights protect the expression of an idea, but not the idea itself, and patents protect inventions (any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof). They are separate forms of protection, but not mutually exclusive.

A software invention, for example, could be protected under copyrights (how human expression authored computer-readable code), patents (a useful, novel, and non-obvious method, device, or system), or both.

Fundamentally, to be patentable, an invention must be novel, non-obvious, and useful (in the case of utility patents) or ornamental (in the case of design patents) over what already in the prior art.

Patents can be seen as an equivalent exchange between the government and the patent owner. The government grants to the patent owner a limited monopoly to commercially exploit the invention by preventing others from making, using, selling, or importing the invention in exchange for releasing the invention to the public at the end of the patent term. Generally, patents are enforceable for 20 years, although there are mechanisms for extending the patent term due to delay in the patent office (Patent Term Adjustment [PTA]) or delays in the regulatory process (most common for therapeutic inventions) (Patent Term Extension [PTE]).

Copyrights, on the other hand, are tied to preserving creativity and authorship. The term of the copyright is the life of the author plus 70 years after the author’s death. For copyrights that have multiple authors, the term lasts for 70 years after the last surviving author’s death. For copyrights that are made for works made for hire or anonymous of pseudonymous works, the term is 95 years from publication or 120 years from date of creation, whichever is shorter.

When are copyrights preferable to patent rights?

As mentioned above, in the cases of software, copyrights are often a preferable form of IP protection over patents. Patents may take years to issue and cost tens of thousands of dollars to prosecute and maintain while copyrights occur immediately and with little cost. In addition, recent court cases have significantly restricted the scope of patentability and/or have held invalid software related inventions effectively making patents covering business methods in software practically unattainable.

For example, a machine learning software using existing algorithms to detect objects in an image is likely not patentable due to lack of novelty and obviousness. However, claims around system, process and/or method incorporating an original and novel AI algorithm may be patentable in some limited cases.

Alternatively, a mobile app, which could include multiple components such as music, videos, images, user interfaces, and source code, is copyrightable. In view of recent court cases, may or may not be patentable.

A manual to help farmers identify a threatening plant disease on the field is suitable for copyright protection.

In the above scenarios, commercialization is feasible through software licensing mechanisms using copyrights as the basis for the IP being licensed. These types of licenses have resulted in unexpected market success allowing for immediate revenue generation without having to be burdened with excessive costs associated with the patent process.

What about software-based inventions?

In the technological realm, there is an ongoing philosophical battle on whether software should be patented or not. The patenting of software has many downsides. First, the patent process is slow. The typical time from filing to (hopeful) issuance of a patent can range from 3-6 years. It is not uncommon for a patent to finally issue to find the software is now obsolete. Second, the patent process is expensive. The average cost of preparing, filing and maintaining a patent in the United States is about $50,000. Third, even if one is successful in obtaining a patent, there is high uncertainty that the patent will be enforceable in a court of law against an infringer.

As a general rule of thumb, unless a digital technology is related to a considerably unconventional and inventive (i.e., novel and non-obvious) transformation or system, using copyrights as an IP strategy and software licensing as a commercialization means are preferable over the traditional patents as an IP strategy and patent licensing route.

Who should be considered software innovators or authors under copyright laws?

Generally, the author of a work is the person (or persons) who created the work. If a person (or persons) contribute material that is not copyrightable, then he/she is not an author.

For example, when drafting a questionnaire, only the writers and editors who had direct interaction with the content’s text, and whose expression ended up in the work, may be considered authors.

Strictly speaking, colleagues who provided feedback, supervisors who provided ideas but not direction, or even team members who did not work directly on such work are generally not considered authors.

How can I bring my copyrightable work to market in a university environment?

Each university’s intellectual property policy is different regarding certain copyrightable material. For example, many universities do not assert rights on pedagogical works like books or lecture slides. So, when in doubt, we recommend reading Duke’s policy on such matters.

If you authored/developed copyrightable material, including software code, content or databases using university resources or funding (internal or external) or as part of your work duties, we also encourage you to contact your university’s licensing office and follow their protocol for submitting the material for consideration of IP protection and commercialization.

If you are part of the Duke community, the Digital Innovations team at the Office of Translation and Commercialization can support you in finding the right protection and commercialization strategies for your copyrightable work.

Resources:

US Copyright Office — Copyright Basics: https://www.copyright.gov/circs/circ01.pdf
https://www.copyright.gov/comp3/chap300/ch300-copyrightable-authorship.pdf
USPTO —Trademark, Patent, or Copyright?: https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright

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