Intellectual Property and the Digital Era – Intellectual Property in Software in Kenya

New technologies are created daily in Kenya, Africa and, indeed, the world. One may even be right to claim that our lives are run by technology, from the humble mobile phone to sophisticated solutions such as biotech, blockchain, IoT, autonomous driving, and advanced robotics.

Developers of these technologies often intend to eventually commercialize them. To be able to do so, however, they are faced with a critical question, “precisely what is the property in what I have created and what in it has commercial value?” The answer to that question is oft this: “the proprietary software through which the technology works.” Granted, it is understood that a new technological innovation will typically encompass aspects of hardware and the software that makes such hardware run. This article is therefore intended to examine the legal protection accorded to proprietors of software as well as the technologies based on that software against third parties who may wish to disenfranchise inventors.

According to the World Intellectual Property Organization, software has been remarkably difficult to classify as a specific form of IP subject matter because it is difficult to fit software into the existing IP legal regime.

The problem may lie in the fact that software is not unitary – instead, it typically has several levels of IP rights protected under different legal regimes and at times not fitting squarely within any of those regimes. Indeed, some commentators have suggested that a new category of intellectual property should be created, specifically designed to protect software proprietors. In Kenya, two legal regimes will apply depending on the circumstances, namely: copyright and patents.

Copyright in software

At the core of software is the source code (that is the internal programming language).

Internationally, source code is protected as a computer program under copyright law. Article 10 of the TRIPs Agreement provides that computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention for the Protection of Literary and Artistic Works. Further, Article 4 of the WIPO Copyright Treaty guarantees protection of computer programs as literary works under the Berne Convention and clarifies that such protection applies to computer programs whatever may be the mode or form of expression.

Similarly, in Kenya, source code is protected under Kenya’s copyright law as a computer program. Section 2 of Kenya’s Copyright Act defines a computer program as a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a medium that the computer can read, of causing a computer to perform or achieve a particular task or result.

For a computer program to be protected under this Act, it must meet the test for copyrightability in Kenya, namely: sufficient effort must have been expended on making the work to give it an original character, and it must be a literary expression, that is, the work must have been written down, recorded or otherwise reduced to material form (section 22(3) of the Copyright Act).

Copyright confers on the author of software economic rights including the right to use, adapt, arrange, to translate and reproduce the software in any means or form, as well as the right to receive income/royalties in relation to the software. Article 6 of the WIPO Copyright Treaty grants authors the right to control the distribution of the work to the public. Locally, under section 26 of the Copyrights Act, authors of computer programs enjoy the right to control the reproduction, translation, adaptation, distribution to the public of the work by way of sale, rental, lease, hire, loan or importation.

In addition to economic rights, an author of a computer program enjoys moral rights to their work. Under section 32 (1) of the Copyright Act, these include rights to claim authorship and to object to any distortion, mutilation or modification of the work prejudicial to his honour or reputation.

Patentability of software

From the above analysis, the literary expression of software, viz, the source code, is sufficiently protected under local and international copyright law.

However, software is more than merely the source code. For, the code has a function that is not dependent on its textual expression.

We must therefore devise a way to maneuver the difficulty of protecting software beyond copyright law. Such difficulty has created the need for the patentability of software both globally and in Kenya. This is because, generally, patents are used to protect functional aspects of works, which is precisely what software-based technological inventions seek to achieve.

This leads us to the main question that this article seeks to answer: is software patentable? International and local patent law seems to apply to inventions in any field of technology without discrimination as to their basis.

Article 27(1) of the TRIPS Agreement states that patents should be awarded to all inventions irrespective of the field of technology, provided that they meet the requirements of patentability, viz, they are new, involve an inventive step and are capable of industrial application.

In Kenya, section 2 of the Industrial Property Act provides that an invention means a new and useful art (whether producing a physical effect or not), process, machine, manufacture or composition of matter which is not obvious, or any new and useful improvement thereof which is not obvious, capable of being used or applied in trade or industry and includes an alleged invention. Section 21(1) of that Act states that, for purposes of patentability, “invention” means a solution to a specific problem in the field of technology.

Thus, unlike copyright which only protects the literary expression of software, patent offers protection to new and useful ideas, procedures and technologies.

From the above legal provisions, it appears that an invention is patentable regardless of its form, so long as it meets several patentability criteria. Among these, five are most significant in determining patentability: (a) the invention must consist of a patentable subject matter; (b) the invention must be capable of industrial application (i.e. be useful); (c) it must be new (novel); (d) it must involve an inventive step (be non-obvious); and (e) the disclosure of the invention in the patent application must meet certain formal and substantive standards.

Therefore, while software (source code and object code) itself is not patentable as it is already protected under the copyright legal regime, a technological invention that results from the application of software is patentable so long as it meets the patentability criteria set out above.

Consequently, under Kenyan and international law, innovations in the digital space enjoy two levels of protection, viz: copyright (for the literary aspects of the source code and object code) and patent law (for the functional products, processes and technologies that may result from the application of software).