How to protect software

In an economy shaped by digitisation, software has become a major strategic asset. How, then, can it be protected effectively?

The legal protection of software has long been debated, both in legal scholarship and within national and international institutions. Software is a technological object that is not easily characterised, and it has raised many questions. Is a computer program a work of the mind? A patentable invention? A new kind of intellectual creation calling for a sui generis intellectual property right?

As early as the 1970s, some authors suggested creating a sui generis right, on the view that software fitted neither patent law nor copyright. The proposal was taken up, in particular, by the INPI in the 1980s, before being abandoned.

With that specific route abandoned, and computer programs excluded by statute from patentability, the legislature had to turn to existing legal instruments to protect software effectively. Copyright emerged in that context.

Copyright protection of software

General copyright law did not fit software perfectly, so specific rules had to be created. The Copyright Act of 3 July 1985, known as the Lang Act, added software to the list of protected works. The Act of 10 May 1994 implementing Directive 91/250/EEC of 14 May 1991 then amended and clarified the legal protection of computer programs (software).

Protection arises automatically upon creation

Article L111-1 of the French Intellectual Property Code provides: “The author of a work of the mind shall enjoy in that work, by the mere fact of its creation, an exclusive incorporeal property right which shall be enforceable against all persons.”

Copyright rests on a legal fact: the creation of the work. It is not subject to formalities, since no filing is required. A software work is deemed created as soon as it is made, even if unfinished, and regardless of any disclosure to the public.

It should be noted, however, that the French Heritage Code provides: “Software and databases are subject to legal deposit where they are made available to the public through the distribution of a physical medium, whatever the nature of that medium.”

This obligation applies to software and databases in the same way as to books, films or sound recordings, and arises once the work is distributed to the public on a physical medium. Failure to comply may lead to penalties but has no direct bearing on copyright, which arises without formality as soon as the original work is created.

What the protection covers

What, then, does this protection cover? What exactly is protected?

The term “logiciel”, which is in fact a French coinage, refers to a complex whole that includes:

• computer programs (source code and object code, in other words the programming language);
• preparatory work (functional and structural analysis, flowcharts, formalised algorithms);
• user documentation.

The following may therefore be protected:

• computer programs (source code and object code);
• preparatory design material, where it is such as to enable the software to be developed at a later stage;
• user documentation, now protected as a separate literary work if it is original;
• the overall structure of the software, where it reflects an original arrangement of the programs.

By contrast, ideas, abstract functionalities and algorithms as such fall outside the definition, and therefore outside protection.

Originality as a condition of protection

Traditionally, a work is regarded as original if it reflects the personality and sensibility of its author. Software, however, does not seek to move its audience or to tell a story: it makes machines operate, logically and automatically.

French courts therefore developed a new approach, a definition better suited to software: the author’s intellectual contribution, meaning a personal effort that goes beyond the mere application of technical or automatic rules. The European Union takes a more flexible view: software is original if it has not been copied.

Combining both approaches, software may be regarded as original where its author has made a genuine intellectual effort in creating new software that does more than apply ready-made rules.

Who owns the rights

When software is created, the key question is who owns it. In other words, who is entitled to exploit it, sell it or develop it further? The answer depends on the context in which the software was developed.

In principle, the author is the human creator of the software. Two other situations must, however, be considered:

• Where software is created by an employee in the course of his or her employment: the economic rights, also called exploitation rights, vest automatically in the employer (Article L113-9 of the French Intellectual Property Code), unless the contract provides otherwise.
• Where software is created by a service provider or a freelancer: by default, the rights in the software belong to the provider who created it, even if the client paid for its development. An express contractual assignment is therefore needed if the party who commissioned the software intends to modify it, resell it or exploit it freely. Without an assignment, the commissioning party will only have the right to use the software.

Patent protection of software, by way of exception

In principle, in France as in Europe, software “as such” (that is, taken on its own) cannot be protected by a patent, because the law does not regard it as a technical invention. That exclusion is not absolute, however, and exceptions exist.

In its Schlumberger judgment of 15 June 1981, the Paris Court of Appeal held that an invention was patentable where it related to a technical process some steps of which were carried out by software. In other words, software will be protected by patent law if it forms part of a broader invention.

The European Patent Office (EPO) takes a more flexible approach, recognising that software may be protected if it produces a further technical effect, that is, something more than a mere exchange of information with the computer. For example, image processing, robot control or data compression software may be patented if it goes beyond the mere automation of abstract ideas.