En anteriores entregas de esta serie de artículos nos hemos ocupado de la forma jurídica que puede adoptar un negocio digital, y de cómo distinguirlo de sus competidores a través de la marca y el nombre de dominio (parte 1); e igualmente, de las exigencias en materia de protección de datos y derecho digital que deben satisfacerse al emprender un negocio digital (parte 2).
Sin embargo, aún resta una cuestión importante por tratar: legal protection of software. Many digital businesses are built around applications that can be downloaded by users. These programs, whose development requires considerable investment, are often one of the company's main assets. Hence the need to provide them with adequate legal protection.
But this is when the question arises as to which legal instruments are valid and most effective in achieving this protection: the patent? the copyright? the trade secret?
We will begin by pointing out that The legal protection of computer programs should, in principle, be achieved through copyright., not through the patent. In this sense, both the Patent Law Spanish (Article 4.4) as well as the Convention on the Grant of European Patents (Art. 52.2) expressly exclude computer programs from patentability. On the contrary, the Intellectual Property Law regulates the protection of computer programs by copyright in Articles 95 et seq.
However, section 5 of the aforementioned article 4 of the Patent Law states: “The provisions of the preceding paragraph exclude the patentability of the subjects or activities mentioned therein. only to the extent that the patent application or patent relates exclusively to one of them considered as such”Paragraph 3 of Article 52 of the Convention on the Grant of European Patents establishes a similar provision.
These legal provisions mean that computer programs as such cannot be patented, but such programs they can be patented as part of an invention that solves a specific technical problem. These are the so-called computer-implemented inventions.
Computer programs that cannot be patented are those that are abstract creations without a specific technical purpose. However, in general terms, When a specific technical problem can be identified that is solved by the program, then it can be patented.. And that regardless of the medium on which the program is stored, whether it is physical media (for example, a program that improves the efficiency of a car engine and is installed on the vehicle's hardware) or intangible media, such as applications that we download from the Internet. What matters is that the program solves a specific technical problem, not its medium.
It should be clear, however, that Not all computer programs have the technical character necessary to be patentable.. The technical nature of a computer program can be found “in the additional effects derived from the execution (by the hardware) of the instructions given by the computer program” (Decision of July 1, 1998, of the Board of Appeal of the European Patent Office). When these effects resulting from the execution of the program solve a specific problem, then the software will be patentable. Thus, when considering whether or not a computer program is patentable It is of the utmost importance to accurately determine the technical problem being solved., as this will determine whether or not it can ultimately be patented.
Now that we know when it is possible to patent a computer program, we must ask ourselves whether it is advisable to do so. In other words, we must weigh up the advantages and disadvantages of legal protection for software through patents against the advantages and disadvantages of protection through copyright and trade secrets.
The copyright protection has some benefits very noteworthy. First, it stands out for its simplicity. Unlike patents, copyright protection does not depend on any formal act. It is not necessary to register the program in order to be the owner of all the rights that the Intellectual Property Law grants to its author.; on the contrary, by the mere fact of its creation, it already enjoys this protection.
In relation to this, it should be clarified that the Intellectual Property Law considers the author of a computer program, when it is created on the initiative and under the coordination of a natural or legal person (normally the case for programs developed within companies), to be the natural or legal person who publishes and distributes it under their name. Therefore,, the author under the law of a computer program developed and marketed by a company is the company itself., and as such has all the rights granted by the Intellectual Property Law, from the moment the program was created, without being subject to any other formal requirements.
In addition, The protection afforded by copyright is almost universal, as it is recognized in widely ratified international conventions. (for example, 105 countries are part of the WIPO Copyright Treaty). Thus, copyright automatically provides legal protection for the program in most countries around the world, rather than having to register the patent in each one (a more complex and expensive process).
Copyright protection for software in different countries is simpler, even when compared to the system created by the Patent Cooperation Treaty, which allows you to present a single application patent that will be valid in all contracting states, although each state will assess whether or not the patent applied for will ultimately be granted in accordance with the criteria established in its own legislation. In short, it is a system similar to that provided for trademarks in the Madrid Agreement and Protocol, which we analyzed in the first part of this article.
Another advantage of copyright is the durability of protection. In Spain, the duration of protection afforded by the Intellectual Property Law (LPI) to program owners is 70 years from January 1 of the year following its disclosure (or its creation, if the program has not yet been disclosed). In contrast, the maximum duration of a patent in our country is 20 years from the date of filing of the application. And bear in mind that the protection afforded by the IPL extends to successive versions of the original program.
Finally, patented inventions are subject to publication, which is not always in the interests of software development companies. However, it should be clarified that None of the articles of the Patent Law or the Convention on the Grant of European Patents require the source code of the program to be provided., and the Spanish Patent and Trademark Office does not require this. It is sufficient for the concept of the invention to be described in the patent application with sufficient precision for an expert in the field to be able to carry out the invention.
Now, the copyright protection also presents some disadvantages important. In particular, This form of protection applies to the way in which the program is expressed, but not to its underlying ideas.. In other words, copyright prevents the program from being copied verbatim, but it does not prevent potential competitors from developing their own software in parallel based on the ideas that inspired the original. In fact, Article 100 of the Intellectual Property Law allows legitimate users of a copy of a computer program to “observe, study, or verify its operation, without prior authorization from the owner, in order to determine the ideas and principles implicit in any element of the program”, that is, the program may be decompiled (albeit with certain limitations). Conversely, The protection afforded by the patent is much stronger because it does cover these ideas..
Furthermore, it should be noted that the patent grants its owner the right to prohibit any third party from exploiting the invention patented by him. This means that, Unlike copyright, it is not necessary to copy the program for there to be a patent infringement.. This is particularly relevant in a sector such as information technology, where different companies, acting independently and without copying their competitors, may develop programs inspired by similar ideas that solve the same technical problems.
Along with this, have a patent, that is, with an official title that certifies the holder as the owner of the rights granted by the Patent Law, can make the difference between getting investors or not. Patents are therefore an essential asset for innovative companies, especially startups.
As things stand, it turns out that both copyright and patent protection offer advantages and disadvantages. The good news is that one and the other are not incompatible among themselves. Indeed, Article 96 of the Intellectual Property Law provides that “When computer programs form part of a patent or utility model shall enjoy, without prejudice to the provisions of this Law, the protection to which they may be entitled under the legal regime governing industrial property.”.
Therefore, in each case First, it must be assessed whether it is possible to patent the computer program, which depends on the criteria established in the legislation of each country (in Europe, as we have seen, the program is required to solve a technical problem). Next, if the patent is possible, a cost/benefit analysis must be performed to decide in which countries it is advisable to apply for a patent and in which cases the legal protection of the program will be entrusted solely to copyright.
On the other hand, if you prefer to opt for protection through trade secret, this cannot be combined with the patent because they are inherently incompatible: patents are public, while trade secrets must obviously be kept secret.
In Spain, trade secrets are regulated in the Law 1/2019, of February 20, on Trade Secrets (LSSEE), which sets out the requirements that information must meet in order to be considered a trade secret. First, must be confidential, that is, that the information in question is not generally known in the field to which it refers (the field of computer science when we talk about computer programs), nor easily accessible.
This last clarification is of great importance to the issue at hand because, as mentioned above, if the Intellectual Property Law allows software to be decompiled, even in a limited way, it will be difficult to argue that it is not easily accessible. Therefore, When referring to programs that are free and easily downloadable from the Internet, trade secrets do not seem to be the best option for protection.. However, there are other programs that can be kept secret.. Let's imagine that a company develops, for example, database management software. This program will be used by the developer company itself or licensed to other customers (companies, institutions, etc.), but it will not be easily accessible on the Internet; access to it is restricted. Thus, the database management software in our example could meet the requirement of being secret information. Furthermore, beyond the protection of the software that makes them work, databases themselves are also protected by copyright, in Articles 12 and 133 to 137 of the Intellectual Property Law.
However, it is not enough for information to be inaccessible for it to be protected by the Trade Secrets Act. It must also it is necessary that the holder of the information has taken reasonable measures to preserve confidentiality. These measures may be technical (user and password access control to databases where information is stored, video surveillance in sensitive areas, etc.), contractual (confidentiality agreements or Non-Disclosure Agreements (NDA) with customers and employees, etc.), or organizational (limiting the information accessible to employees based on their roles, returning confidential information at the end of the employment relationship, etc.).
As a final requirement, the information covered by trade secrets it must be valuable from a business perspective. This value does not necessarily have to be current, but can be potential, as it is a secret and may refer to a product that has not yet been marketed. For example, a computer program in the development phase does not have a current economic value, as it is unfinished, is not marketed, and does not generate any income, but it does have a potential value, as there is an expectation that, in the future, when its development is complete and it is offered on the market, it will be able to generate income for the company.
If the three requirements indicated (secrecy, reasonable measures to preserve it, business value) are met, the computer program can be considered a secret protected by the LSSEE. This protection offers significant benefitsFirstly, as with copyright and unlike patents, consideration as a trade secret is not subject to compliance with formal requirements and the protection it provides is not restricted to a territory.
Furthermore, trade secrets have the unique characteristic that its duration is indefinite. Unlike copyright and patents, the protection afforded by trade secrets is not subject to any legal time limit, but rather will continue for as long as the secret can be kept.
However, the latter is also its main disadvantage, since once the secret is revealed, the protection is lost provided by the LSSEE.
As we have seen throughout this article, when it comes to protecting software, copyright, patents, and trade secrets each have their own scope of application, advantages, and disadvantages. Therefore, when seeking legal protection for computer programs, it is necessary to devise a strategy that weighs the pros and cons of each of the options indicated, considering the scope of protection to be given to these assets and weighing the cost/benefit ratio. Consequently, when designing this strategy, it is highly recommended to seek the advice and support of experts in the field.
En Bamboo somos especialistas en propiedad intelectual e industrial, y podemos ayudarte a proteger tu software.
[Article written by Luis Mª Benito Cerezo]
