PROTECT YOUR SOFTWARE RIGHTS
(Trademark / Patent / Copyright)
Software Patent Registration
Creators and inventors of software products have always strived to protect their intellectual property rights and obtain patent registration for software products. The rapid growth of the internet and fast increasing competition has further increased the demand for software patents in India. However, patenting of software was not allowed for a long time in India, due to restrictions in the patent laws of India. But to cope up with the demand, boost innovation and safeguard the rights of inventors, the Indian Patent Office has evolved detailed guidelines for patenting Computer Related Inventions (CRIs). In this article, we look at patentability of software and Computer Related Inventions in detail.
Computer Related Inventions
Computer Related Inventions consists of inventions which involve the use of computers, computer networks or other programmable equipment and include inventions which require computer programme or programmes for operating. Rules for Software Patent Registration in India, Patent Registration in India is governed by The Patents (Amendment) Act 2002 which came into effect on 20th May 2003. In the Patents Amendment Act 2002, the following types of inventions were explicitly excluded from Patent registration:
Mathematical or business method or a computer programme per se or algorithms.
Literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.
Mere scheme or rule or method of performing mental act or method of playing game.
Presentation of information;
Topography of integrated circuits.
Are Software Patents Allowed in India?
Software by itself is not patentable in India. However, software can be patented if it is part of an invention that is both inventive and capable of industrial use.
In the Patents (Amendments) Act 2002, it is mentioned that computer programme per se is not patentable. It is very important to note that only the word computer programme has the words per se attached to it. All other items excluded from patent registration do not have the words per se attached. The general dictionary meaning of “per se” is “by itself” or “in itself” or “as such” or “intrinsically” – to show that you are referring to something on its own, rather than in connection with other things. Hence, software by itself would not be patentable. However, a software that is part of a Computer Related Invention is patentable.
The above view was also expressed by the Joint Parliamentary Committee while introducing Patents (Amendments) Act, 2002:
“In the new proposed clause (k) the words ”per se” have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose.”
How to Get Patent Registration for Software?
Software patents are more complex that patent registration for other inventions. Hence, the first step in securing a patent for a software would be to seek the advice of an experienced professional in the field of software patent registration.
It is well established in the law that while establishing patentability, the focus should be on the underlying substance of the invention and not on the particular form in which it is claimed. Hence, it is important is to judge the substance of claims taking whole of the claim together. If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under an excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent registration should not be denied.
Hence, to obtain patent registration for software, it is important to establish that the patent registration application does not pertain to only a software but to an invention that is applicable for industrial use.
How to get Patent for Software in India
India has one of the most talented fraternity of Information Technology professionals in the world and a large Information Technology industry. Each year thousands of crores are spent on research and development of software products in India and there is tremendous interest in protecting the intellectual property created. In this article, we look at the procedure for protecting the intellectual property behind a software product.
Patent for Software
Most Tech Entrepreneurs who have created a software or app are interested in protecting the intellectual property. “How to get patent for software?” is a frequently asked questions among these Tech Entrepreneurs. The short answer is that software can be patented; but, it might not always be allowed. The patent laws in countries such as United States of America, Singapore and Australia allow and promote patent protection for software. However, India and many European countries do not promote the patenting of software innovations.
However, the Manual of Patent Office Practice and Procedure states that not all computer programs or software innovations fall under Section 3(k) of the Indian Patents Act. Hence, some types of software are patentable in India. To make a successful patent application for software, the key is to not focus on getting patent for the software. The focus of the application should be on getting patent for a product in which the software plays an essential part – making the software’s patent protection a part of the patent of the product.
Copyright for Software
Copyright registration is more frequently used in India to protect software. Computer software and programs can be registered as a literary work as per Section 2(O) of the Copyright Act, 1957. Therefore, copyright protection is more apt for the protection of a software. While applying for copyright registration for a software, the ‘Source Code’ must be submitted along with the application for copyright registration to the Copyright Office.
In addition to patent and copyright, a trademark registration can also be filed to protect the brand name of the software product. A software product may have a number of brand names in-built and these names can be trademarked. For instance, if a software product offers a unique functionality named “Get Here” then the word “Get Here” can be trademarked to prevent competitors from using the same word.
It is however most important to consider a trademark registration for the software product name and brand name. If the software or product name is not trademarked, then a competitor can offer a product with the same name. Therefore, filing of trademark is also an important aspect of protecting the intellectual property behind a software product.
Difference between copyright and patent
When you invent something new, something that is unique it is liable to receive a patent. However, copyright is related to artistic works and intellectual property. A copyright works according to The Copyright Act, 1957. Artistic works that are covered under copyright includes literary, musical, dramatic, cinematography and artistic works of Entertainment industry.
A patent has a validity of 20 years, after which the invention is open to the public. Copyright has a longer validity of a lifetime of the owner and another sixty years after that.
A copyright protects the expression of an idea while a patent protects the idea itself. Patent works more on a design while copyright is another work of an already described design.
Patent works in a very complex way. Its registration and verification are much longer and tedious. Copyright is much easier to get.
Generally following questions arise in mind:
Ques. 1: A book has a standard design, It can be colorful or can be typically sophisticated. It can contain pictures or can be completed using only text. An author who writes the book has the liberty to choose what goes in the book and what doesn’t.The book can have a copyright but not a patent. why?
Solution 1: The book is not an invention, anyone can write a book. The content of the book is unique but the book is a major idea. So, here protection cannot be given to the idea because it is not the property of the author. Here, protection can be provided to the expression of an idea, the content of the book. This protection comes under copyright. The same goes for any movie or sound clip.
Ques. 2: A machine is patentable or not?
Solution 2: A machine is patentable only when it’s unique and not obvious. A patent works in a much more complex way. The invention is different and not something you see every day. A particular machine is not seen everyday i.e. why it is patentable. It is a machine that has a unique manufacturing.
In India, the Intellectual Property Rights (IPR) of computer software is covered under the Copyright Law. Accordingly, the copyright of computer software is protected under the provisions of Indian Copyright Act 1957.
Computer program are literary works under the definition in the Copyright Act. A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. Copyright for computer programs prohibits copying of program structure and design. The graphics, sounds, and appearance of a computer program also may be protected as an audiovisual work; as a result, a program can infringe even if no code was copied.
Just as a copyright came into being when the original lines of source code were written by the programmer, so another copyright comes into being for each addition or modification to the source code that shows sufficient originality. Because of this, a computer program generally is protected not by a single copyright but by a series of copyrights starting when it is first written and continuing through the last modification.
A software license agreement is a contract between the licensor and purchaser of the right to use software. Many form contracts are only contained in digital form, and only presented to a user as a click-through where the user must "accept". As the user may not see the agreement until after he or she has already purchased the software, these documents may be contracts of adhesion. These documents often call themselves end-user licensing agreements (EULA).
Source Code and Object Code
Although copyright comes into being with the writing of the source code, it is the object code which gives the actual instructions that control the computer when the program is being executed which is generally protected by copyright. In most instances, the source code is never revealed to the public, and thus remains protected as a trade secret even though millions and millions of copies of the program are distributed as object code.
The source code contained information that made it easier for a programmer to write or understand the program
Even though source code and object code are distinct, it is still useful to maintain the concept that the source code and the object code are just different forms of the same copyrighted work. The Copyright Office regards the source code and object code as equivalent for purposes of registration
Infringement of Copyrighted Software
Infringement of copyrighted software is called Software piracy. Software piracy is the reproduction, distribution or use of a software product without the expressed permission of its author. Software piracy is theft - stealing someone else's original idea and product. It comes in the following common forms:
End user piracy: End users (both home and corporate users) who are utilizing unlicensed software on their systems, or who have installed more copies than they are entitled to under their license agreements, e.g. a company with only one license installing the software on five PCs. This form of end user piracy is called under-licensing and is of grave concern to the Business Software Alliance (BSA).
Hard disk loading: Computer dealers pre-installing illegal copies of software onto PCs prior to sale. Some dealers use one legally acquired copy but install it on many machines. These PCs are usually sold without any form of licensing documentation or disks.
Software counterfeiting: The illegal duplication and sale of software in a form that is almost identical to the genuine product.
Internet piracy: The latest and fastest growing form of software piracy. Software programs are placed by third parties on the Internet for downloads free of charge or for a fee. Pirates tend also to use the Internet as a means of advertising to solicit sales.
Protection of Copyright Software
Generally, copyright laws protect the form of expression of an idea, but not the idea itself. With respect to software, this typically means that the computer program, in both human-readable i.e. Source Code and machine-executable form i.e. Object Code, and the related manuals are eligible for copyright protection, but the methods and algorithms within a program are not protected expression. Source code and object code are protected against literal copying.
Copyright subsists in all original published or unpublished literary works; 'literary work' includes computer programs, tables and compilations including computer databases in any tangible form. Therefore, work has to be recorded into program on some tangible medium to get copyright protection. Copyright protection, is automatic from the moment the work is embodied in some medium like ROM, Magnetic Tape, diskette
Remedies for Infringement of Copyright Software
1. Temporary and permanent injunctions
2. Impounding and destruction of all infringing copies, including masters
3. Actual monetary damages plus the infringers' profits
4. Statutory damages
5. Court costs and reasonable attorneys' fees
Copyright restrictions also apply to works created or published in a foreign country. This protection is a result of international treaty obligations, under which signatory nations have agreed to give citizens of other member countries the same level of copyright protection that they give to their own citizens.
Some of these conventions which protect the Copyright work are as follow:
Each nation that signs the Berne Convention, 1886 agreement must guarantee to authors of other member countries the same rights of copyright protection that it grants to its own nationals. It also requires that signatory nations must enact copyright laws that adhere to certain uniform standards, particularly in matters concerning copyright durations, the kinds of works that are protected, the moral rights of authors, along with the abandonment of requirements for registrations, deposits, and the attachment of copyright notices.
Universal Copyright Convention
It was developed by the United Nations at Geneva in 1952 as an alternative to the Berne Convention. The UCC (Universal Copyright Convention) was much less stringent in the requirements that it dictated about the copyright laws its member nations must pass. The USA ratified the Universal Copyright Convention in 1972.
International Copyright Order
The government of India passed the International Copyright Order, 1958 whereby any work first published in any country which is a member of the Berne Convention or the UCC (Universal Copyright Convention) will be accorded the same treatment as if it was first published in India. The registration of copyright is not compulsory in India but registration offers better protection to the author in cases of infringement of copyright.
Advantages of Registration of Copyright
1. Registration establishes a public record of the copyright claim.
2. Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin where as in India it is not required.
3. If made before or within five years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
4. If registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
5. Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.
Registration Procedures for Filing Copyright
An application for copyright registration contains three essential elements: a completed application form, a nonrefundable filing fee, and a nonrefundable deposit—that is, a copy or copies of the work being registered and “deposited” with the Copyright Office.
A copyright registration is effective on the date the Copyright Office receives all required elements in acceptable form, regardless of how long it takes to process the application and mail the certificate of registration. The time needed to process applications varies depending on the amount of material the office is receiving and the method of application.
Option for registering copyright software
1. Online Registration
2. Registration with Fill-In Form CO (copyright office)
3. Registration with Paper Forms
Requirements for Registration Of Copyright Software
Computer Programs without Trade Secrets
1. For published or unpublished computer programs, send one copy of identifying portions of the program (first 25 and last 25 pages of source code) reproduced in a form visually perceptible without the aid of a machine or device, either on paper or in microform, together with the page or equivalent unit containing the copyright notice.
2. For a program less than 50 pages in length, send a visually perceptible copy of the entire source code.
3.Where an applicant is unable or unwilling to deposit source code, he/she must state in writing that the work as deposited in object code contains copyrightable authorship. The Office will then register the work under its rule of doubt since it has not determined the existence of copyrightable authorship.
4.When a computer program is embodied in a CD-ROM, ordinarily the entire CD-ROM package must be mailed to the Copyright Office, including a complete copy of any accompanying operating software and instructional manual. If registration is sought for the computer program, the deposit should also include a printout of the first 25 and last 25 pages of source code for the program.
Computer Programs Containing Trade Secrets
1. First 25 and last 25 pages of source code with portions containing trade secrets blocked out; or
2. First 10 and last 10 pages of source code alone, with no blocked out portions; or
3. First 25 and last 25 pages of object code plus any 10 or more consecutive pages of source code, with no blocked-out portions; or
4. For programs 50 pages or less in length, entire source code with trade secret portions blocked out.
Revised Computer Programs
1. If the revisions are present in the first 25 and last 25 pages, any one of the four options above, as appropriate; or
2. If the revisions are not present in the first 25 and the last 25 pages:
# 20 pages of source code containing the revisions with no blocked out portions; or
# any 50 pages of source code containing the revisions with some portions blocked out.
Effective Date of Registration
A copyright registration is effective on the date the Copyright Office receives all the required elements in acceptable form. The time the Copyright Office requires to process an application varies, depending on the amount of material the Office is receiving.
Copyright Software Litigation
Only competent court of jurisdiction shall entertain Software litigation. In case of US, the Federal courts have exclusive jurisdiction over copyright claims. Place of filing the complaint relating to infringement of software copyright would be the place where the defendant is found or where infringing acts occur. No complaint shall be entertained after the expiry of the three years from the day when action has accrued according to the Statute of limitations on civil copyright claims. Complainant or plaintiff must own the copyrights or be an exclusive licensee to have the right to use the Copyright. Such exclusive license must be given by the owner of the copyright or the individual who created the work or assignee of the true owner. And the litigation will only be initiated if above all conditions i.e. Registration and Submissions etc. will be carried down as per the requirement.
Instruction for Filing copyright registration form Online:
1. Enter your valid User ID and Password to login.
2. Click onto New User Registration, if you have not yet registered.
3. Note down User ID and Password for future use.
4. After login, click on to link “Click for online Copyright Registration”.
5. The online “Copyright Registration Form” is to be filled up in four steps
i. Complete the Form XIV, then press SAVE button to Save entered details, and press Step 2 to move to Next Step.
ii. Fillup the Statement of Particulars, and then press SAVE button to Save entered details, and press Step 3/4 to move to Next step
iii. Fillup the Statement of Further particulars. This form is applicable for “LITERARY/ DRAMATIC, MUSICAL AND ARTISTIC” works, and then press SAVE button to Save entrered details, and press Step 4 to move to Next Step.
iv. Make the payment through Internet Payment gateway
6. After successful submission of the form, Diary Number will be generated (Please note it for future reference).
7. Please take hard copy(print) of “Acknowledgement Slip” and “Copyright Registration Report”, and send it by post along with following documents :
- 2 Copies of work
- DD/IPO of Rs. (as applicable) per work
- NOC from author if author is different from applicant.
- NOC from publisher if work is published and publisher is different from applicant.
- If the application is being filed through attorney , a specific Power of Attorney in original duly signed by the applicant and accepted by the attorney
- Source code and object code of work for verification.
To the below mentioned address:
Department of Industrial Policy & Promotion, Ministry of Commerce and Industry
Boudhik Sampada Bhawan,
Plot No. 32, Sector 14, Dwarka, New Delhi-110075
Email Address: firstname.lastname@example.org
Telephone No.: 011-25301202
Application for Registration of Copyright
[See rule 70]
Application for Registration of Copyright
[See rule 70]
The Registrar of Copyrights,
Boudhik Sampada Bhawan, Plot No. 32,
Sector 14, Dwarka, New Delhi-110075
Boudhik Sampada Bhawan, Plot No. 32,
Sector 14, Dwarka, New Delhi-110075
In accordance with section 45 of the Copyright Act, 1957 (14 of 1957), I hereby apply for registration of copyright and request that entries may be made in the Register of Copyrights as in the enclosed statement of Particulars’ sent herewith in triplicate.
1. I also send herewith duly completed the statement of further particulars relating to the work.
2. In accordance with rule 70 of the Copyright Rules, 2012, I have sent by pre-paid registered post copies of this letter and of the enclosed statement(s) to the other parties concerned, as shown below:
Names and addresses of the parties
Date of Dispatch
4. The prescribed fee has been paid, as per details below:
5. Communications on this subject may be addressed to:
6. I hereby declare that to the best of my knowledge and belief, no person, other than to whom a notice has been sent as per paragraph 2 above has any claim or interest or dispute to my copyright of this work or to its use by me.
7. I hereby verify that the particulars given in this Form and the Statement of Particulars andStatement of Further Particulars are true to the best of my knowledge, belief and information and nothing has been concealed therefrom.
8. List of enclosures:
(Signature of the Applicant)
STATEMENT OF PARTICULARS
|1||Registration number (To be filled in the Copyright Office)|
|2||Name, Address and Nationality of the Applicant|
|3||Nature of the applicant’s interest in the copyright of the work|
|4||Class and description of the work|
|5||Title of the work|
|6||Language of the work|
|7||Name, address and nationality of the author and, if the author is deceased, the date of his decease|
|8||Whether work is Published or Unpublished|
|9||Year and country of first publication and name, address and nationality of the publishers|
|10||Years and countries of subsequent publications, if any, and names, addresses and nationalities of the publisher|
|11||Names, address and nationalities of the owners of the various rights comprising the copyright in the work and the extent of rights held by each, together with particulars of assignment and licenses, if any|
|12||Names, addresses and nationalities of other persons, if any, authorized to assign or license the rights comprising the copyright|
|13||If the work is an “artistic work”, the location of the original work, including name, address and nationality of the person in possession of the work. (In the case of an architectural work, the year of completion of the work should also be shown)|
|14||If the work is an ‘artistic work’ which is used or is capable of being used in relation to any goods or services, the application shall include a certificate from the Registrar of Trade Marks in terms of the proviso to sub-section (1) of section 45 of the Copyright Act, 1957.]|
|15||If the work is an “artistic work” whether it is registered under the Designs Act 2000. If yes give details.|
|16||If the work is an “artistic work” capable of being registered as a design under the Designs Act 2000, whether it has been applied to an article though an industrial process and , if yes, the number of times it is reproduced.|
|17||Remarks, if any|
(Signature of the Applicant)
(Signature of the Applicant)
STATEMENT OF FURTHER PARTICULARS
(For Literary, including Software, Dramatic, Musical and Artistic Works only)
|1||Is the work to be registered|
|(a)||An original work?|
|(b)||Translation of a work in the public domain?|
|(c)||A translation of a work in which copyright subsists?|
|(d)||An adaptation of a work in the public domain?|
|(e)||An adaptation of a work in which copyright subsists?|
|2||If the work is a translation or adaptation of a work in which copyright subsists:|
|(a)||Title of the original work.|
|(b)||Language of the original work.|
|(c)||Name, address and nationality of the author of the original work and, if the author is deceased, the date of his decease.|
|(d)||Name, address and nationality of the publisher, if any, of the original work.|
|(e)||Particulars of the authorization for a translation or adaptation including the name, address and nationality of the party authorizing.|
|3||Remarks, if any.|
(Signature of the Applicant)
(Signature of the Applicant)
FEE CAN BE PAID BY POSTAL ODER /DEMAND DRAFT/ONLINE PAYMENT PAYABLE TO “REGISTRAR OF COPYRIGHTS, NEW DELHI”:
|S. No.||For an application for COMPULSORY LICENSE :||Fee|
|1||For a license to republish a Literary, Dramatic, Musical or Artistic work (Sections 31, 31A,31B* and 32A)||Rs. 5,000/- per work|
|2||For a license to communicate an any work to the public by Broadcast(Section 31(1)(b))||Rs. 40,000/- per applicant/per sataton|
|3||For license to republish a Cinematograph Film (Section 31)||Rs. 15,000/- per work|
|4||For a license to republish a sound recording (Section 31)||Rs. 10,000/- per work|
|5||For a license to perform any work in public (Section 31)||Rs. 5,000/- per work|
|6||For a license to publish or communicate to the public the work or translation (Section 31A)||Rs. 5,000/- per work|
|7||For a license to publish any work in any format useful for person with disability (Section 31 B)||Rs. 2,000/- per work|
|8||For an application for a license to produce and publish a translation of a Literary or Dramatic work in any Language (Section 32 & 32-A )||Rs. 5,000/- per work|
|9||For an application for registration or copyright in a:|
|(a)Literary, Dramatic, Musical or Artistic work||Rs. 500/- per work|
|(b)Provided that in respect of a Literary or Artistic work which is used or is capable of being used in relation to any goods or services (Section 45)||Rs. 2,000/- per work|
|10||For an application for change in particulars of copyright entered in the Register of Copyrights in respect of a:|
|(a)Literary, Dramatic, Musical or Artistic work||Rs. 200/- per work|
|(b)Provided that in respect of a literary or Artistic work which is used or is capable of being used in relation to any goods or services (Section 45)||Rs. 1,000/- per work|
|11||For an application for registration of Copyright in a Cinematograph Film (Section 45)||Rs. 5,000/- per work|
|12||For an application for registration of change in particulars of copyright entered in the Register of Copyrights in respect of Cinematograph film (Section 45)||Rs. 2,000/- per work|
|13||For an application for registration of copyright in a Sound Recording (Section 45)||Rs. 2,000/- per work|
|14||For an application for registration of changes in particulars of copyright entered in the Register of Copyrights in respect of Sound Recording (Section 45)||Rs. 1,000/- per work|
|15||For taking extracts from the indexes (Section 47)||Rs. 500/- per work|
|16||For taking extracts from the Register of Copyrights (Section 47).||Rs. 500/- per work|
|17||For a certified copy of an extract from the Register of Copyrights of the indexes (Section 47)||Rs. 500/- per copy|
|18||For a certified copy of any other public document in the custody of the Register of Copyright or Secretary of the Copyright Board||Rs. 500/- per Copy|
|19||For an application for prevention of importation of infringing copies (Section 53) per place of entry||Rs. 1,200/- per work|