Protecting Computer Software Beyond Process and Function: Leveraging IP Effectively With Copyright, Design Protection and Trademarks

Utility patents and trade secrets have been historically viewed as the most effective way to protect software in the United States. While some computer-related inventions are still patentable or protectable as trade secrets in the United States (and sometimes beyond), there are many legal, practical and financial challenges. Counsel to software developers are looking to other forms of legal protections for intellectual property to supplement or substitute for the limited availability and scope of utility patent rights and the challenges of preserving trade secrets in relation to software.

Developers and their counsel turn to industrial design protections (whether as design patents under U.S. law or under sui generis design law in other jurisdictions), trademarks, and copyrights with corresponding software licenses or terms of service to protect various aspects of software, including aspects of newer or trending forms of software, such as non-fungible tokens, blockchain, the metaverse, and artificial intelligence. Counsel must understand each of these approaches to guide their clients in choosing how best to protect their software.

Since software developers rarely write all of the code included in a software program, they and their counsel must also understand the copyright implications of incorporating or using third-party materials in the development process, including open-source code and libraries, commercial software tools, and accessing third-party Application Programming Interfaces (APIs). This is an important process to protect software against claims of infringement or breach of contract.

Our panel will guide counsel in evaluating the many available forms of IP protection for software in the United States, with a focus beyond utility patents and trade secrets, while also taking into account some international and related considerations. The panel will examine the pros and cons of each avenue and how developers and their counsel can utilize the IP protection available.

1. Challenges in protecting computer software
2. Leveraging IP protection available
   1. Patents post-Alice Corp.
   2. Copyrights
   3. Trade secrets
   4. Trademarks
   5. Design
   6. International considerations
   7. Licensing and terms of service
3. Best practices
   1. Understanding third-party materials incorporated into software and compliance with applicable licenses
   2. Evaluating options to protect software, including in relation to new software technologies
   3. Understanding the role of software protection strategies in M&A transactions

The panel will review these and other noteworthy issues:

• What aspects of software are protectable?
• What are the hurdles to obtaining the various IP protections for software?
• How can counsel assist clients in developing an IP protection strategy based on their business goals?
• How does a prospective acquirer evaluate the steps taken by the seller to protect its software?

After our presentations, we will engage in a live question and answer session with participants so we can answer your questions about these important issues directly.