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The Legal Journal On Technology

TRIPS, AGREEMENT AND SOFTWARE

This blog is written by Harine S., a third year law student at SYmbiosis Law School, Hyderabad.


The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) forms a very important part of the application of IPR by various countries. Historically, courts in various countries have overlooked the fact that it is important to protect computer software through an intellectual property right. In Gottschalk vs. Bonson [i], the United States Supreme Court held that computer software is not patentable as “it would be a patent on the algorithm”. This has formed the base for various other countries refusing to grant patents to computer software and the reasons are strong enough to justify the refusal. Some countries do give patents indirectly to computer software. However, by far, the patentability of computer software is not possible. The TRIPS agreement has brought various changes to this state.


WHAT DID THE TRIPS AGREEMENT INTRODUCE?

Agreements and important conventions before TRIPS did not give a lot of attention to computer software and intellectual protection. The Berne Convention of 1886 which dealt with copyright protection worldwide did not recognize computer software despite numerous amendments between 1886 and 1979.[ii] The Paris Convention of 1883 which deals with industrial property has been criticized for its patent structure worldwide. TRIPS brought in a major change by bringing computer software under the ambit of copyright. The Agreement brought computer software under the ambit of previously existing conventions such as the Berne Convention. It also brings all field of technology under the ambit of patents.[iii] It also provides the inventors with the chance to prove that the invention meets all the criteria as mentioned by the agreement.[iv] Overall, the following are the changes that have brought in by the agreement: -

(a) The object code and the source of code of computer software have been brought under Berne convention thereby giving them copyright protection.[v]

(b) The authors get protection under the enforcement mechanism under the TRIPS agreement.

(c) Computer software has been expressly defined as a literary work under the agreement.

(d) The agreement also provides the authors with the “right to authorize or prohibit commercial rental of their copyrighted works.”[vi]

Despite providing some clarification as to the stand of computer software and intellectual protection is given to it, the agreement had certain drawbacks and had still not clarified major areas of the same.


WHAT WERE THE PROBLEMS WITH AGREEMENT?

Patentability of computer software is still a very big issue as almost all the countries do not provide for a patent to the author of computer software. Though TRIPS made some advancements, it did not answer whether a computer software can be patented or not and this has been a prolonging question to date. Article 27 uses the term filed of technology but does not clarify the scope of it. Neither does it expressly deny nor does it expressly admit that a computer software falls under the ambit of technology that is eligible to get patents. The agreement does not provide for a definite scope to terms such as “any inventions”. Apart from that, the exceptions under Article 27 allows the members to exclude certain inventions. TRIPS has been criticized for this very reason. The agreement has not handled the controversy of ‘pure software’. While certain member countries are moving towards the idea of patenting computer software, some are against the idea. The United States has gradually moved away from completely rejecting a patent application for software to accepting a few of them. However, the patentability of computer software largely varies from one country to another. In some countries, patenting computer software is very expensive thereby discouraging many authors from patenting their software.[vii] There are certain practices that have been followed by party-states though not mentioned in TRIPS such as excluding abstract ideas, scientific phenomena, or mathematical formulae from being patented.[viii] Largely, the practices followed by various countries have had more implications on computer software than the agreement itself.

According to Article 10 of TRIPS, the object code and source code of the software are covered under the Berne convention thereby extending copyright protection to them. However, the drawback of the TRIPS agreement is that it does not specify any criteria with respect to the term “works of applied art” as used under the Berne Convention.[ix] States have, to a very large extent, been given the authority to tweak these rules and follow their standard practices. TRIPS has also failed to address the issue of copying the functionality and has dealt only with the issue of copying the code as a whole. As TRIPS has failed to define the scope of application of the terms and the extent to which protection should be given, the issue largely remains unsolved.


ARE THERE ANY SOLUTIONS TO THE SAME?

The TRIPS Agreement has handled the areas of trade secrets and competition law well by providing for penalties for violations. Article 39(2) of the Agreement provides for “protection of undisclosed information” along with some exceptions. This has been said to fill the “functional know-how gap” that was not addressed by the Agreement under article 10.[x] However, the depth with which patentability of software has been dealt under the Agreement is not sufficient to address the modern problems. First, the Agreement has to recognize the arguments raised in favour of and against the patentability of computer software. While doing this, the best standard practices of various countries have to be considered. Apart from this, the Agreement has to also lay down the scope of applicability of the Berne Convention with respect to copyrighted computer software. Based on the inputs from various stakeholders and the member countries, a stronger agreement can be drafted.


CONCLUSION

The dependency on technology and computer software is high in the 21st century. Given the complex needs, companies work on very complex computer software to satisfy the needs. For example, the coding for Microsoft Word, or Microsoft Powerpoint, has all been worked on by authors and the end product of it is the application. Such applications are sold with a license considering the intellectual importance of the object code and the source code. If they are directly sold in the market, the code can be copied to create a similar application due to which the original code loses its value. Considering this, the demand for intellectual protection for these codes is on the rise. The debates involving whether a computer software has to be patented or not has to be addressed not just by the agreement but also by every country uniformly. The extension of copyright protection to computer software should also be defined. With the growing complexity, it is very important to realize the work of the authors and the value that each computer software adds to the company.

[i] Gottschalk vs Bonson, 409 U.S. 63 [ii]Talat Kaya, A Comparative Analysis of the Patentability of Computer Software under the TRIPS Agreement: The U.S, The E.U and Turkey, 4 Ankara Law Review 43, 53 (2007). [iii]Article 27(1), Agreement on Trade- Related Aspects of Intellectual Property Rights. [iv]Article 62 (1), Agreement on Trade- Related Aspects of Intellectual Property Rights. [v]Article 10, Agreement on Trade- Related Aspects of Intellectual Property Rights. [vi]Kaya, Supra note 2 at 57. [vii]Fenwick and West, International Legal Protection Software, 1, 8 (2004) https://assets.fenwick.com/legacy/FenwickDocuments/Software_Protection_2004.pdf (last visited Dec.28,2020 [viii]Ibid at 60. [ix] JJ Reichman, The Know-How Gap in the TRIPS Agreement: Why Software Fared Badly, and What are the Solutions, 763 Hastings Comm/Ent L.j. 775 (1995) https://scholarship.law.duke.edu/cgi/viewcontent.cgi?article=1614&context=faculty_scholarship (last visited Dec. 28, 2020). [x]Ibid at 785.

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