Co-written by Joanna Mendoza

The value of software is directly related to preventing its non-licensed use. Recent cases are providing additional guidance on how to protect software. In 1998, a federal case held that the mathematical algorithm exception does not apply to software so long as the software produces a useful, concrete and tangible result by transforming data through a series of mathematical calculations. This case established the viability of the patent system as a vehicle to protect software.

However, whether models and designs for software not yet coded are patentable is not as clear. Software can be sufficiently disclosed within the patent framework by merely describing its function rather than the actual source code. This has been confirmed by the courts, in part because writing the code for software once the functions have been disclosed can be done by anyone schooled in the art of writing source code. However, the line between a software model described merely by function and proof that functional source code has been written has not yet been drawn.

The Copyright Act also protects the structure, sequence and organization of computer programs as well as source and object codes. Beyond the protection of program code, the scope of copyright protection in a computer program remains a matter of heated debate among commentators and a matter of extreme confusion in the courts. The distinction between a protectable expression and unprotectable idea, procedure, process, system, method of operation, concept, principle, or discovery has become increasingly important in the analysis of the copyright aspects of computer programs and, in particular, graphical user interfaces. For example, menu command hierarchy cannot be copyrighted.

A copyright typically covers only the expression of the work and does not preclude people from appropriating clever ideas embodied in that work. In contrast, a patent can sometimes be used to stop someone who looks at a copyrighted work, extracts the clever ideas from it, and creates a new system embodying those ideas. As a general rule, if it is the idea that underlies the software that is sought to be protected, a copyright is insufficient.

Recent progress has been made toward providing adequate intellectual property protection for software developments. Nevertheless, careful planning and proactive steps continue to be necessary if one is to derive economic value from unique software products.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.