Third Part. Software’s Patentability
We concluded our last post with the question: how is the software developed by a startup protected. It is a subject that has generated a lot of debate mostly when it comes to legally classify software and identify the kind of protection applicable.
Nowadays, there is not an homogeneous approach, and the way adopted by each country and international and regional organizations oscillates between author rights and patents. In Chile, for instance, and in international treaties¹, it is often resorted to author rights for software’s protection, meanwhile it’s patenting is more common in the USA and Japan.
Now, although author rights offer a more lasting and less costly protection as well as a legally and technically simpler registration, the protection granted by it extends mainly to the software’s “literal expression”², meaning, the source code, receiving the treatment of a literary work, without necessarily meeting all the features of a computer program. On the other hand, the patenting of an invention requires for itself to fulfil different requirements such as, namely, the software’s originality and novelty. Likewise, it is necessary to submit a request whose complexity may affect the result of the endeavour and its temporal and territorial limits, which could result in a more restrictive protection.
As we already mentioned in the last paragraph, in Chile, software is subject of protection through author rights, under Law Nº 17.336 of Intellectual Property. And it is about “rights that, only by means of the work’s creation, works’ authors acquire of the intelligence in literary, artistic and scientific domains” (Art. 1, Law 17.336). In the same way, article 3 number 16 grants protection to “Computer programs, whichever is their way or form of expression, as source program or object program, and even the preparatory documentation, its technical description and operating manuals”.
The procedure may be carried out by the author and/or the titleholder throughout the year before the Department of Intellectual Rights, registering a copy of the work and by getting its related registration in the Public Registry of Author Rights Property after the payment of a fee calculated on a percentage over the basis of the UTM (Monthly Tax Unit) (percentage varies according to the type of work, in the case of a software it is of 35%). In order to conduct the registration (online, in person or by mail) it is necessary to submit the pertinent registry request, a copy of the work, personal information on the author and/or titleholder and the payment receipt.
Registry grants the moral and proprietary rights over the work and the recognition of its ownership and an exclusive right for its use and commercial exploit. Therefore, protection achieved through the registry is particularly beneficial if we take into account that software’s development is critical for a technology based Startup project, being these intangible assets, not only its most important creation but its only commercial value.
¹See WIPO treaty about Author Rights (Article 4); the TRIPS Agreement of the World Trade Organization (Article 10); directive (91/250/CEE) of the European Council’s European Union Computer Programs Directive (article 1)
²World Intellectual Porperty Organization, “Patenting of software”, see http://www.wipo.int/sme/es/documents/software_patents.htm (last access 11/27/2016)
Giorgia Vulcano, Lawyer.
Photo: Jan Erik Waider