Computer technology is everywhere. A computer cannot operate without instructions: the so-called computer programs or software. Despite their omnipresence, intellectual property protection of software remains blurred. The present newsletter aims at analyzing, with a focus on Swiss regulations, the conditions for protection by the two intellectual property protection that could enter into account for software protection, namely copyright and patent. We will also give a brief overview of the different software licensing systems.
Notion of computer program and software
There is no uniform definition of what a computer software is, neither at the national nor international level. Specifically, such a definition cannot be found in the law, as most national norms and international treaties predate the software era.
Before the beginning of the spectacular development of digital technology, it was sometimes used as a kind of synonym for “computer program” and sometimes referred to everything that may be included in computers in a machine-readable form[1]. Although this definition is constantly evolving, we will herein consider the notions of “computer programs” and “computer software” as synonyms.
A computer program can be defined as a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a machine-readable medium, of causing a computer to perform or to achieve a particular task or result[2]. In other words, a computer program is a series of lines of coded instructions that are intended to bring about a particular result when used in a computer.
Countries or regions, such as Europe with the Directive on the legal protection of computer programs[3], have adopted specific regulations on the legal status of software. The Swiss approach is to apply common law to the issues raised by technology, rather than sector-specific regulations[4].
Copyright
a) Applicable provisions and case law
At the international level, under Article 4 of the WIPO Copyright Treaty, computer programs are protected as literary works within the meaning of Article 2 of the Bern Convention. In addition, Article 10 of the Agreement on Trade Related Aspects of Intellectual Property states that “computer programs, whether in source of object code, shall be protected as literary works under the Berne Convention (1971)”.
Switzerland has adopted the same approach of default protection of software by copyright. Art. 2 para. 3 of the Federal Act on Copyright and Related Rights (“CopA”; SR 231.1) indicates that computer programs are works, within the meaning of art. 2 para.1 CopA: literary and artistic intellectual creations with individual character, irrespective of their value or purpose.
To attract copyright protection, software must be:
- Original, i.e. the author’s own intellectual creation; and
- A work or expression, ie. not an idea.
A judgment from the Zurich Obergericht set the presumption and principle that a software has an individual character in the sense of copyright law, unless it appears banal or common from the point of view of experts[5]. The presumption of sufficient individuality also applies to parts of programs, especially if they are non-trivial and not insignificant sequences[6]. Thus, copyright protection of computer programs is the rule and the lack of creative level over software is the exception. In the case of proceedings, the opponent bears the burden of proof that the program in question is exceptionally not protectable because it represents a trivial programming achievement or merely takes over a programming work from another programmer[7].
It must be emphasized that the protection granted by copyright covers the source code of the program[8]. However, algorithms which, for example, form the basis of software are excluded from protection[9]. In other words, copyright protection is limited to the wording of the code, and does not cover the underlying technical solutions or algorithms.
b) General copyright considerations: term and authorship over computer programs
The protection by copyright in the case of computer programs expires 50 years after the death of the author (art. 29 para. 2 lit. a CopA).
Authorship is granted to the natural person who has created the work(art. 6 CopA). It grants the exclusive right to decide whether, when and how the work is used (art. 10 CopA). In Switzerland, copyright protection is granted automatically, from the moment the work is created. There is no register.
Special attention should be drawn when an employee creates a work. Art.17 CopA states that if a computer program has been created under an employment contract in the course of discharging professional duties and in fulfilling contractual obligations, the employer alone shall be entitled to exercise the exclusive rights of use. The worker only keeps moral rights over the software[10].
c) Limits of copyright protection for software
Swiss legislation, at art. 21 CopA grants the right to decode a computer program under two conditions:
- The information must be essential for the development of interoperability, ie. the connection with another computer program; and
- The information must not be obtainable in any other way, in particular it must not be possible to acquire it from the copyright holders without further authorisation[11].
Copyright law protects against servile copy – such as installing an unauthorised copy on a computer. However, it does little to fend off a rival willing to go to the trouble of rewriting the code[12].
Only patents adequately protect technical solutions.
Patent
a) Applicable provisions and case law
According to the Federal Act on Patents for Inventions (“PatA”; SR 232.14), an invention is patentable if it is i) novel, ii) non-obvious/inventive and iii) capable of industrial application/useful(art. 1 para 1 and 2 PatA).
Art. 7 para. 1 PatA indicates that an invention is considered to be new if it does not form part of the state of the art. As most software are developed and progresses incrementally, the challenge of identifying the inventive step leaves a significant segment of the software industry without patent protection because of the obviousness of the invention.
Regarding the condition of usefulness, software “as such” is excluded from the field of patents. This means that patents cannot be granted for the computer program or software alone. The invention must consist of something other than the computer program: it must be a computer-related invention.
In Switzerland, according to an old case law, to be patentable according to the PatA, a method has to involve the forces of nature in order to obtain the technical effect; a computer program does not involve a technical process, as it does not use natural forces[13]. Patentability of software has therefore been rejected.
b) General patent considerations: term and inventorship over computer programs
A patent confers to its proprietor the right to prohibit others from commercially using the invention (art. 8 para. 1 PatA). However, this right is limited in time, as the maximum term of the patent is 20 years from the filing date of the application (art. 14 para. 1 PatA). To the difference of copyright, patent protection requires filing with the adequate national office of each country where protection is sought. Such process implies that the invention will be disclosed; after the expiry of the protection period, all will be able to use the disclosed information.
An invention generally belongs to the inventor. However, if an employee invents something at work, during the course of their work and as part of the employee’s contractual obligations, the invention will belong to the employer provided nothing else is stated in the employment contract[14].
Licensing
In order to make use of the rights granted by IP regimes, the owner of the copyrightor, in limited cases, of the patent over the software will license it to third parties.
A software license is an authorisation given by the owner of copyright or related rights to a person or legal entity to perform a certain act in respect of the work or object of related rights concerned[15]. This authorises the licensee to carry out certain acts that would be otherwise restricted by the licensor – holder of the copyright and/or patent - such as reproducing, modifying, distributing or making the software available on the web.
In other words, the licensee does not own the intellectual property behind the software. By a license, the ownership of copyright is not transferred; the right of further authorisation is maintained by the licensor.
The classic way of software licensing is commercial or proprietary software; this system relies on the licensing of the exclusive rights of the owner on object, binary or executable code, usually for a fee[16]. Today, the dominant software delivery model is Software-as-a-Service (“SaaS”)[17]. In this regime, technically there is no software license: what is granted by the software owner is a “license” or right to access a certain Internet server where the software is installed, and to use the functionalities of the software made available over the internet.
Evermore, there is the emergence of a new type of licensing system, which is the Free and open source (“FOSS”) licensing. Despite what its name might lead to think, these licenses are not necessarily free of charge; the term “free” rather refers to the core freedoms that are transmitted with the software. In fact, as a legal instrument, there is no difference between a FOSS license and a proprietary license: the license documents set out what the licensee may or may not do with the software[18].
The general principles underlying FOSS licensing are freedom (to use the software)and access (to the source code). Copyleft licenses are a specific type of FOSS license which requires licenses to i) use the same free license on redistributing the software (including any modification); provide access to the source code (of the original and modified software program)[19]. In short, it is not possible to redistribute a software or part of it distributed as copyleft under a proprietary license.
There are three main types of FOSS licenses[20]:
- Permissive: derivative works may be closed, which allows mixing the software with virtually any other software;
- “Weak” copyleft: copyleft only on the original work (not on extensions or composed works using the work);
- “Strong” copyleft: copyleft applies to all redistributed work that incorporates the work; offers the user access to source code.
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Footnotes
[1] WIPO, Guide to the Copyright and Related rights Treaties administered by WIPO and Glossary of Copyright and Related rights terms (“Guide and Glossary”), 2003.
[2] Ibid.
[3] Directive2009/24/EC of the European Parliament and of the Council of 23 April 2009 onthe legal protection of computer programs.
[4] Anderson Atenas, “1ère Partie: philosophie du droit et droit international public/Le logiciel en tant qu’objet de droit” in Le droit face à la revolution 4.0, Schulthess, 2019, p. 17.
[5] Teilurteil Obergericht des Kantons Zürich vom 24. Januar 2013 / LK100006-O/U, recital 5.2.
[6] Teilurteil Obergericht des Kantons Zürich vom 24. Januar 2013 / LK100006-O/U.
[7] Ibid.
[8] Swiss Intellectual Property Institute (« IPI »),What is copright?, https://www.ige.ch/en/protecting-your-ip/copyright/the-basics(last visited on 13.07.2023).
[9] Ibid.
[10] Anderson, p. 16.
[11] Egloff Willi, Le nouveau droit d’auteur Commentaire de la loi fédérale surle droit d’auteur et les droits voisins, 4e éd, 2021, ad Art. 21, N 4.
[12] P&TS, Software and telecommunications, https://www.patentattorneys.ch/en/industries/software_patents/
[13] ATF98 Ib 396, recitals 3 and 4.
[14] Art.332 Swiss Code of Obligations (« SCO » ;SR 220).
[15] WIPO, Guide and Glossary.
[16] Business Software Alliance, Open Source and Commercial Software – An in-depth analysis of the issues, p. 3.
[17] IBM, What is SaaS ?, https://www.ibm.com/topics/saas(last visited on 18 July 2023)
[18] WIPO, Software licensing – traditional and open-source, p. 9.
[19] Ibid.
[20] WIPO, Software licensing – traditional and open-source, p. 13.
