- Background
A Portuguese SME, which developed a software-based application designed to assist patients and pharmacists in the effective use of medicines, meta SEA IP SME Helpdesk (SEA HD) representative at a trade fair in October 2024 in Porto, Portugal. After receiving a detailed follow-up email, the founder contacted the IP Business Advisor (IPBA) to learn which IP protection measures could be activated, and a 1 to 1 consultation was scheduled.
- IP issues raised
The founder expressed interest in identifying the most suitable IP rights (IPR) to protect the software-based product. He also sought to assess whether the company's mobile application could alternatively be protected through a utility model.
- Results & actions taken
The IPBA first emphasised the importance of copyright, which played a central role in software protection strategy. He explained that copyright protects the software’s original source code and that this right provides automatic protection upon creation without the need for registration (reference to the Berne Convention was made). However, to strengthen enforcement mechanisms and facilitate legal action against potential infringement, the IPBA recommended that the company seek copyright registration for the software in key South-East Asian jurisdictions whenever such registration is available.
Concerning Singapore and Brunei, where copyright registration is not available, the IPBA shared a few tips for alternative protective measures to assert ownership, i.e. (i) recording the creation/publication date of works and documents, and (ii) consistently displaying the © (copyright) symbol on software products, packaging, and marketing materials which may serve as a public notice of ownership and can deter unauthorised use.
Besides copyright, patents, utility models, and industrial designs were also discussed for the software-based product’s IP protection. These rights require novelty as a fundamental condition for registration. Thus, once an invention or design is publicly disclosed, it generally becomes ineligible for protection. The IPBA introduced a practical exception for this case, i.e., a grace period where the company could still file for registration of patents/utility models or designs within 6-12 months of disclosure. He also emphasised the importance of understanding and respecting this time frame, as failing to act in due time would eliminate any possibility of securing a patent, utility model, or industrial design right. Above all, the most effective and safest strategy for the company would be to submit an application before any public disclosure of the invention or design.
Furthermore, the IPBA clarified that protecting software through patents is generally challenging, particularly in SEA, as most countries in the region do not allow patent protection for software. Singapore was mentioned as a notable exception, where software-related inventions (not the software per se) may be eligible for patent protection under specific conditions, i.e., if there is a further technical effect. Thus, the company was advised to consider patent protection in Singapore for its subsequently developed software inventions, provided the requirements were met.
Last but not least, the IPBA recommended a multi-layered approach to protect other elements related to the software. In particular, the founder was advised to safeguard the company name, the software name, and the logo via trademark registration. This right is generally more affordable and easier to obtain than patents and helps protect the brand and reputation of the company.
Possible results:
Scenario 1: The SME developed its IP protection strategy
They carefully followed SEA HD’s recommendations to further protect their assets.
First, they promptly sought copyright registration in Thailand, a key South-East Asian territory where they intended to partner with a local company specialising in providing technical solutions for clinics in the country. They also consistently marked their products with the © symbol to assert clear ownership and impose an internal rule for their employees to always record the related information regarding the creation of the products.
Second, they adopted a more disciplined approach regarding the disclosure of data for new patentable elements. For every new application developed, they would immediately consult with an IP lawyer to explore the most suitable protection options and ensure compliance with critical deadlines.
Third, they strategically pursued patent registration for some of their key software-based inventions in Singapore to maximise protection, preparing for a future local partnership.
One year later, the company discovered that a former partner in Thailand had continued using their software after the trial phase of the partnership ended and even sold several features under a different brand to other medical clinics and pharmacies. Thanks to a proactive approach based on IP protection measures, the company swiftly gathered evidence and issued a Cease-and-Desist (C&D) letter clearly stating its IP ownership over the assets and claiming damages due to the loss of the company’s revenue and reputation. Faced with clear legal grounds and credible enforcement threats, the infringing party promptly ceased its activities. Along with the C&D letter, the company also submitted supporting evidence to their lawyers and made it clear that they were prepared to escalate the matter through civil litigation and notify relevant authorities of the unfair business action.
Scenario 2: The SME did not take any further action to protect its assets
The company neglected IP protection mainly for budget reasons, assuming that copyright was automatic and therefore not worth much attention. Also, they believed that they should not pursue patent or utility model registration, as the procedures were too complicated and time-consuming.
A couple of months later, a former employee who had contributed to the software's development left the company and challenged ownership of the application, claiming he was the true and sole owner. He also went behind the company's back to negotiate with a local partner in Thailand and presented himself as the legitimate owner. When trying to sell their product in Thailand, the Portuguese company encountered unauthorised sellers who had copied and sold their software without permission. Paying only minimal compensation when challenged, the sellers continued their parallel activities, and this further affected the company’s market share and brand value.
At this stage, the company sought legal assistance, but they lacked the necessary documentation to prove clear ownership over the software, which was challenged in both the home country (where the software was developed) and Thailand by their former employee. As a result, the absence of basic IP protection led the company to suffer significant financial losses and forced it to engage in costly and time-consuming legal disputes.
- Lessons Learnt:
Adopting a comprehensive IP strategy early in the software development lifecycle is crucial, especially in SEA, where IP enforcement can be complex. In this region, IP registration and clear evidence of IP ownership are often critical for the success of the enforcement procedure.
Copyright protection arises automatically upon the creation; however, many SMEs mistakenly believe this means no further action is needed. Without clear authorship records, contracts, or registration (where available), proving ownership in a dispute can be difficult.
SMEs often lack knowledge on how to protect their innovation, and one common pitfall is the disclosure of important data, implying a missed opportunity to secure a patent or utility model due to the destruction of the novelty requirement. Simple steps may be carried out to prevent this, starting by contacting an IP lawyer at an early stage.
Neglecting IP protection can be extremely costly in the long term. Failing to secure proper IP protection on time can result in financial losses, brand damage, and lengthy litigation that could have been prevented with timely and strategic IP protection measures before the infringement happens.
Protecting software via a patent is usually very difficult in SEA. However, some countries may be more flexible by granting limited patent protection under strict requirements, such as in Singapore. As a result, EU SMEs should be aware of country-specific IP frameworks within SEA to maximise their strategy.