Legal protection tools for software

Software under copyright law

Software is described by both legislation (Article 2 of the Copyright Law) and case law as “a sequence of instructions, written in a programming language, to achieve a specific result and perform functions on an electronic device”.

Since it consists of a sequence of instructions, similar to a formula or guide, software protection has been assimilated to that of other creative works (such as novels, songs, etc.).

Just like other intellectual works, software must meet the requirements of creativity, originality, and externalization to be protected under Italian Copyright Law.

Regarding originality, software is considered new when it differs from existing programming codes. Creativity is measured based on the software’s degree of differentiation from previous ones. The protection applies not only to the program’s code but also to its design, known as preparatory material.

Thus, the protection covers both the expressive form and how the software is encoded. The program code can be deposited in special registers to establish proof of creation, which can be used in case of disputes concerning the software’s validity and ownership.

From copyright protection to patent protection

In the field of intellectual property law, patents represent an additional protection tool, particularly relevant in the case of software. The granting of a patent allows the holder to enjoy an exclusive right to produce, use, and sell the software for a specific period, typically 20 years, after which the software enters the public domain.

Patent protection goes beyond copyright protection, as it covers not only the expressive form of the software but also the underlying ideas and principles, including its method and operational process. This means that patent protection can prevent others from developing, using, or selling software based on the same protected ideas or methods, even if the source code is different.

What are the requirements for patenting software?

To obtain a patent, software must meet several criteria and undergo a thorough examination. It must be demonstrated that the software is new, useful, and inventive, meaning it must solve a technical problem in a way that is not obvious to an expert in the field.

However, the issue of software patentability is complex and debated. In Italy, as well as in the 38 countries adhering to the European Patent Convention (EPC), software “as such” cannot be patented, as it falls under the category of intellectual works protected by copyright.

According to the case law of the European Patent Office, for software to be patentable, it must:

• provide a technical contribution beyond the existing state of the art;
• produce a further technical effect, meaning an effect that goes beyond the mere interaction between software and computer;
• not be a process executable exclusively as a mental act.

In addition to the above requirements, software must also meet the standard patent criteria: novelty, inventive step, and industrial applicability.

Examples of patentable software include: Software for process/equipment control systems; Software for telecommunications systems (protocols); Software for managing a PC’s memory, peripherals, or processors; Software for processing technical data, such as image processing, data compression, noise suppression, and encoding/decoding.

Conversely, the following types of software are not patentable: Software for solving integrals; Software for pension schemes; Management software that digitizes well-known procedures.

Determining whether software can be patented does not have an immediate or straightforward answer. The decision to protect software through copyright or a patent depends on the nature of the software itself. Since each program is unique, consulting industry experts is essential to determine the best protection strategy.