In today’s digital economy, and especially in view of the shift to a virtual existence attributable to the COVID-19 pandemic, cloud-based inventions are abundant. These same inventions, however, can also be more challenging to protect.
Cloud-based software inventions may generally be protected in one or more of the following ways:
1. Relying on Copyright
Copyright is a relatively simple means of protection for a software-based invention. Not only that, but copyright automatically subsists in a work as soon as it is created. Meaning, creators’ works are protected without needing to so much as fill out a form. That said, it is certainly possible to formally register copyright in a work with a government intellectual property office, and there are advantages to doing so.
Copyright protects original literary, dramatic, musical and artistic works and, therefore, copyright protects software code – a literary work. For that very reason, however, the protection afforded to software via copyright is quite narrow, as different code may accomplish a similar output.
Copyright protects original expressions of ideas and not ideas themselves. A copyright owner has the exclusive right to produce, reproduce, publish or perform their original literary, dramatic, musical or artistic work or a substantial part thereof. The “substantial part” language is important, as it means that a copycat may deviate from the exact code and nonetheless be liable for copyright infringement. On the other hand, code which is not substantially similar from that of the copyright owner would not be infringing, even if the coded instructions were capable of producing the exact same result. Moreover, copyright infringement requires an infringer to have had access to the work infringed. Thus, actual independent creation is complete defence to allegations of copyright infringement.
2. Keeping It Secret
Another way to protect a cloud-based invention is simply by keeping it secret. One of the best-known examples of an invention kept secret is the recipe for Coca-Cola. While it has been serving the beverage giant well, trade secret protection, like copyright, has its pros and cons.
If you intend to rely on secrecy to protect your invention, you will want anyone with knowledge of the invention to execute a non-disclosure agreement or “NDA”. A non-disclosure agreement restricts anyone who signs it from divulging the information identified therein as being confidential. Note, however, that trade secret protection is typically only effective in circumstances where an invention is either inaccessible to the public or, if the invention is available to the public, is not able to be reverse engineered. If your invention may be copied without anyone needing to disclose the details of the invention other than by making it available, it’s still worth keeping secret, but there’s no guarantee your invention is safe.
Finally, keep in mind that even in the scenario where trade secret protection is appropriate, a trade secret in no way entitles you to exclusive rights in an invention. If an individual breaches the NDA and discloses the details of your invention, your recourse under the contract is against that individual and depending on the circumstances there may not be adequate recourse against someone who subsequently copies the invention. Thus once confidential information about your invention is revealed, others may be able to capitalize on that information.
3. Obtaining Patent Protection
Finally, we’re left with what is often the best choice: patents. In both the United States and in Canada, a patent owner holds exclusive rights to their invention for a period of 20 years from the date of filing the application (less the time from filing to patent issuance). That is to say, the patent owner has the exclusive right to make, use or sell their invention for up to 20 years. This is, of course, a critical point of difference between obtaining a patent and using a non-disclosure agreement and one reason patents are so highly regarded as a method of protecting an invention.
The patentability of software as a type of subject matter is a source of regular debate and review in Canadian, American and foreign law. Over the years, various claim drafting strategies have developed which may transform what would otherwise seem to be an ineligible, disembodied software invention into a patentable computer-implemented process, for example. Appropriately drafted claims can be the difference between being granted a patent for your software invention and having your application refused. This is just one of many reasons to retain a patent agent to prepare your application.
Of course, having surmounted the subject matter hurdle, an invention must still be new, inventive and useful to be eligible for patent protection. Thus, while a patent will typically be your first choice for protecting your invention, as it can provide the most comprehensive scope of protection, it is also by far the most difficult to secure for this reason.
While each of these protective strategies presents different advantages and scopes of protection, it is recommend to consider a combination of one or more of the above mechanisms to protect your cloud-based technology. Given the rising popularity of cloud computing, an innovative cloud-based solution has the potential to be a very valuable asset when properly protected.