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Intellectual Property Protections for Embedded Software: A Primer

Tuesday, June 11th, 2013 by Michael Barr

My experiences as a testifying expert witness in numerous lawsuits involving software and source code have taught me a thing or two about the various intellectual property protections that are available to the creators of software. These are areas of the law that you, as an embedded software engineer, should probably know at least a little about. Hence, this primer.

Broadly speaking, software is protectable under three areas of intellectual property law: patent law, copyright law, and trade secret law. Each of these areas of the law protects your software in a different way and you may choose to rely on none, some, or all three such protections. (The name of your product may also be protectable by trademark law, though that has nothing specifically to do with software.)

Embedded Software and Patent Law

Patent law can be used to protect one or more innovative IDEAS that your product uses to get the job done. If you successfully patent a mathematical algorithm specific to your product domain (e.g., an algorithm for detecting or handling a specific arrhythmia used in your pacemaker) then you own a (time-limited) monopoly on that idea. If you believe another company is using the same algorithm in their product then you have the right to bring an infringement suit (e.g., in the ITC or U.S. District Court).

In the process of such a suit, the competitor’s schematics, source code, and design documents will generally be made available to independent expert witnesses (i.e., not to you directly). The expert(s) will then spend time reviewing the competitor’s source code to determine if one or more of the claims of the asserted patent(s) is infringed. It is a useful analogy to think of the claims of a patent as a description of the boundaries of real property and of infringement of the patent as trespassing.

Patents protect ideas regardless of how they are expressed. For example, you may have heard about (purely) “software patents” being new and somewhat controversial. However, the patents that protect most embedded systems typically cover a combination of at least electronics and software. Patent protection is typically broad enough to cover purely hardware, purely software, as well as hardware-software. Thus the protection can span a range of hardware vs. software decompositions and provides protection within software even when the programming languages and/or function and variable names differ.

To apply for a patent on your work you must file certain paperwork with and pay registration fees to the U.S. Patent and Trademark Office. This process generally begins with a prior art search conducted by an attorney and takes at least several years to complete. You should expect the total cost (not including your own time), per patent, to be measured in the tens of thousands of dollars.

Embedded Software and Copyright Law

Copyright law can be used to protect one or more creative EXPRESSIONS that the authors of the source code employed to get the job done. Unlike patent law, copyright law cannot be used to protect ideas or algorithms. Rather, copyright can only protect the way that you specifically creatively choose to implement those ideas. Indeed if there is only one or a handful of ways to implement a particular algorithm, or only one way to do so efficiently or in your chosen language, you may not be able to protect that aspect of your software with copyright.

The attorneys in a source code copyright infringement lawsuit wind up arguing over two primary issues. First, they argue which individual parts of the source code (e.g., function prototypes in an API) are protectable because they are sufficiently creative. The judge generally decides this issue, based on expert analysis. Second, they argue how the selection and arrangement of these individually protectable “islands” together shows a pattern of “substantial similarity”. The jury decides that.

Source code copyright infringement is easiest to prove when the two programs have source code that looks similar in some important way. That is, when the programming languages are the same and the function and variable names are similar. However, it is rare that the programs are identical in every detail. Thus, due to the possibility of the accused software developers independently creating something similar by coincidence rather than malfeasance, the legal standard for proving copyright infringement is much higher when it cannot be shown that the defendants had “access” to some version of the source code.

Unlike patents, copyrights do not need to be awarded. You, or your employer, own a copyright in your work merely by creating it. (Whether you write “Copyright (c) 2013 by MyCompany, Inc.” at the top of every source code file or not.) However, there are some advantages to registering your copyright (by submitting a sample) in a work of software with the U.S. Copyright Office before any alleged infringement occurs. Even if you outsource it to an attorney, the cost of registering a copyright should only be about a thousand dollars at most.

As source code frequently changes and new versions will inevitably be released, you should be reassured that a single copyright extends to “derivative works”, which generally includes later versions of the software. You don’t have to keep registering every minor release with the Copyright Office. And, very importantly, the binary executable version of your software (e.g., the contents of Flash or a library of object code) is extended copyright protection as a derivative work of the source code. Thus someone who copies your binary can also be found to have infringed your copyright.

Interestingly, both patent law and copyright law are called for in the U.S. Constitution. However, of course, the extension of these areas of law to software is a modern development.

Embedded Software and Trade Secret Law

Unlike patent and copyright law, which each at best protects only a portion (“islands”) of your source code, trade secret law can be used to protect the entirety of the SECRETS within the source code. Secrets need not be innovative ideas nor creative expressions. The key requirement for this area of law to apply is that you take reasonable steps to keep the source code “secret”. So, for example, though open source software may be protectable by patent law and copyright law it cannot be protected by trade secret law due to the lack of secrecy.

You may think that there is a fundamental conflict between registering the copyright in your software, which requires submitting a copy to the government, and keeping your source code secret. However, the U.S. Copyright Office only requires that a small portion of the source code of your program be filed to successfully identify the copyrighted software and its owner; the vast majority of the source code need not be submitted.

Preserving this secrecy is one of the reasons for the inconveniences software developers often encounter at the companies that employ them (e.g., not being able to take source code home). (And certain terms of their employment agreements.) Protecting software like the secret formula for Coca-Cola or Krabby Patties helps an owner prove that the source code is a trade secret and thus opens the door to this additional legal basis for bringing a lawsuit against a competitor. Trade secrets cases I have been involved with as an expert have involved allegations that one or more insiders left a company and subsequently misappropriated it’s software secrets to compete via a startup or existing competitor.

Final Thoughts

In my work as an expert, I always look to the attorneys for more precise definitions of legal terms. Importantly, there are many terms and concepts I have purposefully avoided using here to keep this at an introductory level of detail. You should, of course, always consult with an attorney about your specific situation. You should never simply rely on what you read on the Internet. Hopefully, there is enough information in this primer to help you at least understand the types of protections potentially available to you and to find a lawyer who specializes in the right field.

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One Response to “Intellectual Property Protections for Embedded Software: A Primer”

  1. Mahesh says:

    The issue i see with patent with embedded firmware is detectability. Its quite difficult to detect if someone use same algorithm which one has implemented and patented.

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