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Law Offices of Dominic E. Rainone


Protecting Computer Software

A client asks, "Should any action be taken to protect my computer software program? What patent, copyright or trademarks are needed?" The answer requires knowing what each action protects and how that protection is obtained.

Patent: A utility patent issued in the United States gives its owner the exclusive right to make, use or sell the claimed invention in the United States. A patent requires that an application be filed with the US Patent Office and that it be subsequently issued. To be issued, the invention must be useful, novel or new, not obvious to one of skill in the art, and not otherwise barred by statute. Generally, software based inventions must solve a practical problem in a technical art and produce a useful, concrete, tangible result from data input. This may involve the software running on a computer to manipulate data resulting in a machine movement or production of a printed or other external result.

Copyright: An original work of authorship, fixed in a tangible medium, is protected by copyright law upon its creation including such works as articles, photographs, brochures and software code. Registration and submission of copies of the work, i.e. program code, with the US Library of Congress, Copyright Office, gain additional copyright protection. Rights of the copyright owner include exclusive reproduction, distribution and derivative works; and protection against the substantial, illegal copying of the work.

Trademark: A trademark is any word, name, symbol, or device that is used in relation to goods or services and identifies their source or quality. Trademark rights at law are created upon use of the mark in commerce and provides for exclusive use of the mark over confusingly similar marks. Additional trademark protection is gained by registration of the mark on the Principal Register with the US Trademark Office. Marks which are merely descriptive of the type of goods are typically not granted registration on the Principle Register, however they may be granted on the Supplemental Register.

What Measure to Take? Therefore, the client's answer is three-fold. First, consider a patent application with the US Patent Office if the software is useful, novel, non-obvious, solves a problem in a technical art and produces a concrete, tangible result external to the computer manipulating data. Second, seek copyright protection for the software by registering a copy with the department of Commerce. Using both patent and copyright measures may provide the broadest protection. This is appropriate because: copyright is not infringed where original, substantially different computer code produces the same or similar result; the patent application may take several years of effort and not mature into an issued patent. Third, after a thorough search of existing trademark usage, choose a mark to use in connection with the software that is more than descriptive and that is not confusingly similar to that of another. Seek registration on the Principal Register with the US Trademark Office.

Contact a qualified attorney for help throughout this process.

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