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Patenting Computer Programs

By Jill Gilbert Welytok

Copyright protection is automatic, but it has a distinct disadvantage as compared to patent protection for software: it only protects against outright copying. In contrast, a patent prevents reverse engineering, where competitors may analyze the software product to develop their own functionally equivalent programs. A patent holder has a tremendous competitive advantage known as the doctrine of equivalents. This doctrine protects against products which have only minor variations but perform an identical function. Copyright law offers no protection against a functionally equivalent product obtained through reverse engineering other than copying.

Lawyer's Note:
In order to be classified as a patentable process, a software program must affect some hardware or process, and produce a useful result. It must be part of an overall process for achieving a result rather than an isolated mathematical algorithm.

Until the 1980's it was virtually unheard of to get patent protection for software. Prior to that time courts uniformly held that computer programs were types of mathematical algorithms, and since mathematical algorithms are laws of nature, patents were not appropriate.

In 1981, the U.S. Supreme Court opened the door for software patents, and signaled that it was no longer going to view all programs as simple algorithms. In Diamond v. Diehr 1 the Court characterized a computer program for regulating the temperature in rubber molds as process rather than an algorithm. The Court reasoned the "process admittedly employs a well known mathematical equation, but [the developers] do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all other steps of their claimed process." The Court went on to explain "[o]bviously one does not need a 'computer' to cure natural or synthetic rubber" but that using a computer program to enhance or carry out the process did not automatically make the process unpatentable subject matter.

1. 450 U.S. 175 (1981).



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