Computer Programs & Software
Traditional protection of software in SA
Historically, software has been protected primarily through the provisions in the South African Copyright Act. Examples of subject matter for Copyright protection of computer programs are:
- Copyright residing in the source code.
- Copyright residing in the on-screen layout
- Copyright residing in any characters or animation forming part of the program
However, with the development of software in the entertainment arena, these categories can be greatly be expanded on. With ever increasing modularity of software and the availability of cross compilers to create software code, protection in terms of the South African Copyright Act is very limited. Similar to other forms of inventions, a need has arisen to protect the underlying principle of operation of the computer software, rather than the physical representation thereof as set out above. Therefore, a need has arisen to protect software related inventions in terms of the Patents Act.
Interpretation by the SA Courts in Patent / Copyright matters
At present, the South African Patents Act excludes a program for a computer, as such, from the definition of an invention. For more information on the requirements for patentability in general, please refer to our Patents page. However, there has not been any litigation South Africa on the specific section in the South African Patents Act dealing with the exclusion of software from patentability. There is therefore no clear indication of the interpretation that the courts would lend to this section of the Patents Act. Our courts may however, be influenced by rulings in patent cases in other countries. In particular, because of the similarity of the South African Patents Act to the British Patents Act, the South African courts may be guided by decisions of the British courts in software patent matters. Therefore, it is interesting to note that the British Patent Office has, from 1999, accepted patents and claims to computer programs as such, or on a storage carrier. There is, however, a provision that the program must produce a technical effect when run on a computer to render it patentable. The technical effect should go beyond the normal effect that a computer program has, when run on a computer. It would be interesting to note which direction the South African courts will follow in terms of the boundaries of patentability of computer implemented inventions, and it is therefore important to take note of developments in this regard elsewhere in the world.
The law regarding patents for computer programs / software in Europe
Programs for computers are a form of computer-implemented inventions. This concept covers computers, computer networks or other conventional programmable apparatus. While South African courts have not yet considered the patentability of software, this field of law is quite well developed in Europe. The European Patent Office has issued guidelines which state that if a computer program has a technical character, then it is not excluded from patentability. However, a data-processing operation controlled by a computer program can equally, in theory, be implemented by means of special circuits, and the execution of a program always involves physical effects, e.g. electrical currents. Such normal physical effects are not in themselves sufficient to lend a computer program technical character and to render it patentable. However, if a computer program is capable of bringing about a technical effect going beyond these normal physical effects, it is not excluded from patentability, irrespective of whether it is claimed by itself or as a record on a recording medium or "carrier". Other examples of technical effects which provide sufficient technical character to a computer program may be software used in the control of an industrial process or in processing data which represent physical entities. Also, programs directing the internal functioning of the computer itself or its interfaces under the influence of the program may be patentable.
Programs or software affecting the efficiency or security of a process, the management of computer resources required, or the rate of data transfer in a communication link are also not excluded from patentability. As a consequence, a computer program claimed by itself or as a record on a carrier or in the form of a signal may be considered patentable in terms of European Law. In general thus, a computer program may be patentable if it has the potential to bring about a technical effect which goes beyond the normal physical interactions between the program and the computer. Computer systems programmed for use in a particular field, such as business or economy, are more akin to a traditional apparatus and may be patentable as such.
Computer programs and the patent inventiveness requirement
As with all other inventions, computer programs must be new, inventive and have a use or application in trade, industry or agriculture (see our Patent page for more information on the requirements for patentability). To overcome objections as to whether the program or apparatus involves an inventive step, it may be helpful to determine what the technical problem is which has been solved through use of the program. The presence of such a technical contribution is usually sufficient to establish that the claimed subject-matter has a technical character and therefore is indeed a patentable invention. If no such objective technical problem is found, the claimed subject-matter does not satisfy the general requirements for patentability and cannot be patented.
Filing of patents for computer related inventions in SA
The South African Patent Office is a so-called non-examining patent office. This means that patent applications lodged at the South African Patent Office are not subject to examination on the patentability of the inventions disclosed in the patent application. Patent applications are only examined on the formalities. It is therefore unlikely that the Registrar of Patents will not allow a patent application because it contains claims to a computer program. More likely, South African patents may be challenged in court by third parties who, by their own volition, wish to attack the validity of any patent granted by the South African Patent Office. Your patent application will in all likelihood not be rejected by the South African Patent Office on the grounds of non-patentability. However, this does not mean that a patent granted for your invention is valid. In view of the above it may be worthwhile to file a patent application for your computer implemented invention, rather than taking the risk of exploiting your invention without any patent protection.
Using a SA provisional patent application to obtain patent protection in foreign countries
It is important to bear in mind that a South African provisional patent application for your invention may form the basis for further applications filed in foreign countries such as the USA, UK and most European Union members where patents for computer programs are allowed. It may therefore be worthwhile filing a South African provisional application from which foreign applications can claim a priority right. This will allow you to secure your rights to your invention in foreign countries. The cost of filing a South African provisional patent application is normally less than filing costs elsewhere. Should you require assistance in filing foreign patent applications, please consult our page on foreign patent protection for more information.
Related forms of software protection
Apart from the traditional protection provided by the South African Copyright Act and the protection provided by the South African Patents Act, other forms of protection for computer related inventions should be considered such as contractual agreements and in particular Escrow agreements. An escrow agreement is entered into between the provider of software, the acquirer of software and an independent third party. For example, if an acquirer of software wants to guarantee that he will be able to support the software if the provider of the software fails to do so, and, the provider of software wants to obtain credibility as a reliable software provider, but does not want to supply the source code of the software outright, an independent third party can be contracted to keep the software source code in a so called Escrow account, only to release it in certain predefined circumstances. This mechanism is, although specialized in terms of its practical implementation, a very elegant mechanism to meet the objectives of both a software supplier and software acquirer. As this is a very specialized form of protection that goes beyond the safekeeping of documents, it is advised that you only use a firm with the necessary technical expertise to perform this function.
Services offered by Smit & Van Wyk, Inc.
Apart from the required legal background, our firm also has the practical technical background to assist you with the protection of your computer related inventions. You are therefore welcome to contact us to discuss the protection of your computer implemented invention with us.