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Extras from "Patently Absurd"

By Simson L. Garfinkel

WHAT PEOPLE ARE SAYING ABOUT SOFTWARE PATENTS

John Preston, director of technology development, MIT:
"The big problem with software patents is not that they are evil or good, it is just that the Patent Office has been confused. There is no way to search prior art. There is no way to determine uniqueness. And so the US Patent Office has granted some bad patents.... given out patents when they have not been deserved."

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Paul Robinson. chief programmer for Tansin A. Darcos & Company, a software development firm that specializes in text processing applications:
"Until recently, the only legal issue that anyone had to worry about was copyright infringement. This could be avoided by creating new work from scratch. Now we have another issue altogether. A programmer can independently create something without ever knowing about any other developments, and yet be sabotaged by the discovery that the method they have used is patented.... A single large application might have a dozen people working on it or thousands of people working on it, and upwards of 50 different features, and might have upwards of 200 or more different parts. Any one of those might be infringing on zero, one, or more patents, depending on what the claims are. I doubt seriously that all but the largest corporations have the resources to do 200 patent searches on a single software application."

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Keith Stephens, corporate counsel to Taligent Inc.:
"Taligent is a joint venture, similar to many other small innovative companies in the Silicon Valley. It's increasingly important for small ventures to be able to protect their intellectual property.

"First, it's important for the Patent Office to hire the best people. Second, to provide them with the best tools. And third, to tune the examination process."

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Rob Lippincott, executive vice president of the Interactive Multimedia Association, and vice president for content, Ziff-Davis Interactive:
"As multimedia information publishers we have come to view interactivity as perhaps the fundamental principle of the new media. It is how editors and developers use computers to speak to people. It's how people use computers to get the information they need, and it's how people speak to other people through computers. Perhaps most importantly, it's how communities grow and how markets are formed. Interactivity, per se, cannot be considered a patentable process. It's how we communicate."

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Stephen Noe, assistant general patent counsel at Caterpillar Inc., an earth-moving and computer company in Peoria, Illinois:
"Whether an automobile engine is controlled by a camshaft or a microprocessor makes little difference to the driver of that automobile who only cares that the engine runs well and reliably. Patent policy should not be the factor that forces a manufacturer to choose which tool to use to control that engine."

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Allan Ratner, president of the Philadelphia Patent Law Association:
"Defining separate standards for patenting hardware and software is likely to result in inadequate protection for software-related inventions that do not fit neatly into the precise pigeonholes of hardware systems and software systems. Although it is more common to see hardware circuitry replaced by software implementations, this is not a one-way street. As computer-aided design techniques improve, a growing number of hardware designs are created by implementing functions in software from which designs for dedicated hardware are automatically generated.

"Given the ability to implement many algorithms in either hardware or software elements that are functionally equivalent, there is no compelling reason to penalize an inventor who selects one implementation over another."

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R. Duff Thompson, executive vice president and general counsel of WordPerfect Corporation:
"It has been the position of the owners and most of the employees of WordPerfect Corporation for a number of years that patents are not good news for the software industry. However, I believe the time for making that argument passed many years ago and we are now at a point where we simply have to say, If they are part of the landscape how can we best ensure that they become a workable part of our business plan?... Three years ago, WordPerfect Corporation essentially had one patent application in process. Today we have many. We are considering hiring in-house patent counsel. We consider it an unfortunate circumstance, but a necessary circumstance."

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Vern Blanchard, president, American Multisystems, whose company was destroyed by US$100,000 in legal fees defending a bogus software patent:
"I've always believed that software was an expression of an idea and covered under the First Amendment."

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Gary Hecker, patent attorney with the firm of Hecker & Harriman:
"The patent system has traditionally given power to the inventor.... The STAC case is a good example of that.

"I think if you look in the long-term history of the United States, and where we are going to be 5, 10, or 20 yeas from now, we will look back and say this was an aberration for a 5 to 10 year period."

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Joseph Hofstader, testifying for Chris Hofstader, president, League for Programming Freedom:
"The software industry employs some 6 million people. A significant fraction of them develop software. More people are probably engaged in software development than in all other branches of engineering combined. Reinvention in the software industry has become commonplace as a result, and software patents seriously harm competition."

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Bernard Galler, chair of the executive committee, Software Patent Institute:
"Programmers are usually too interested in moving on to the next task to take the time to document the last one.... In fact, even when this kind of information is not regarded as a trade secret, many companies are not particularly anxious to have it made widely available."

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Gregory Aharonian, Internet Patent News Service:
"Recent developments in the hardware design world are really blurring the distinctions between hardware and software.... There exist programs that allow one to scan in circuits that anyone would consider to be a pure piece of hardware and turn them into a software algorithm. There is a German company that combined CASE tools with hardware design tools, so that within one environment the engineer doesn't even care what the end result will be, hardware or software. The engineer just worries about processes and algorithms and devices and things like that and pushes a button at the end to get out a chip or a computer program."

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Wallace Judd, president of Mentrix Corporation, Nevada City, California:
"All the programmers seem to be opposed to patents for software, and all the lawyers have testified in favor of them."

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David Bradford, senior vice president and general counsel, Novell:
"The Patent and Trademark Office is getting better and better.... I'm confident that - over time, with the way technology is moving - PTO will have the capability of at least improving upon the current system."


WHO'S GETTING SOFTWARE PATENTS

Despite the fact that patents are often held up as the one of the few weapons that sole inventors and small companies have against mega- corporations like IBM, some of the industry's biggest players top the list of companies seeking software patents.

According to Gregory Aharonian, there were 4875 software patents granted in the three years from 1991 through 1993. The top ten corporations receiving those patents were:


Company				Patents Granted 1991-1993

IBM 520 Hitachi 250 DEC 144 ATT Bell Laboratories 123 Kabushiki Kaisha Toshiba 123 Xerox 104 Mitsubishi Denki Kabushiki Kaisha 73 Fanuc 72 Sharp Kabushiki Kaisha 71 Hewlett-Packard 67

But these numbers don't tell the whole story, says Aharonian. "At current rates, the patent office will issue 4000 software patents this year, which is amazing, since from 1970 to 1993 they only issued 12000 software patents. The software patenting problem will really become a mess."

WHAT'S BEING PATENTED

In 1981, the US Supreme Court ruled that simply including a general-purpose computer running a specific program in a patentable invention didn't make the invention unpatentable. The Patent and Trademark Office took the Supreme Court's ruling as a green light and started handing out patents on any invention that could be described solely using a computer. It even allowed Merrill Lynch to patent a method of doing business (patent #4,346,442) - on the grounds that the method of doing business would be impossible without a computer - despite the fact business practices had previously been unpatentable. Nevertheless, both PTO and the courts maintain the legal fiction that patents on "mathematical algorithms" are inadmissible under US law. But the court never defined what a "mathematical algorithm" is.

Patents involving math and algorithms top of the list of the software categories in which patents are being awarded. According to Gregory Aharonian, the top ten categories for software patents awarded in 1992 were:

Category		Number of patents awarded

Image Analysis & Vision 100 Operating Systems 95 Graphics 73 Networks & Communication 69 Data Bases 52 Process and Numerical Control 51 Word Processing 40 Artificial Intelligence 31 Financial & Management 30 Multiprocessing 30

A 10-MINUTE GUIDE TO PATENT LAW

Just like computer geeks, patent examiners and attorneys have developed their own variant of English. Normal, everyday words take on new meaning to the patent-savvy. Anybody who follows patents knows that the real law isn't made in Congress. It's made by the 201 years of legal tradition in the courts. The following is a brief glossary of patent-related terms.

Claim: The statements at the end of a patent application that describe the inventions claimed by the application.

Element: The parts of an invention that make up a claim.

Enablement: The requirement that a patent application give a description of the invention that is sufficiently detailed so that the invention can be duplicated by any person sufficiently skilled in the invention's field.

Infringement: A violation of the claims of another's patent. In order to be guilty of infringing, it is necessary to have an invention which consists of each and every element of a particular claim.

Monopoly: Exclusive ownership through legal privilege, command of supply, or concerted action. By law, patents give an assignee a legal monopoly to practice an invention and to sell or import devices that embody the invention or are made through its use.

Non-Obviousness: Another big requirement for patentability which, unfortunately, hasn't been applied rigorously to software inventions. See "Section 103."

Novelty: One of the main requirements for patentability. Basically, you can't patent something unless you thought it up before everybody else. See "Section 102."

Patent and Trademark Office: The part of the US Department of Commerce responsible for granting patents and trademarks.

Prior Art: The sum total of knowledge publicly accessible to people interested in pursuing inventions in a particular field. Every book, magazine article, and sales catalog that has ever been printed is part of the prior art, as are student theses (as long as they sit on a shelf in some library and are referenced in the card catalog). Something is in the prior art if you can find out about it without breaking into somebody's office, signing a non-disclosure agreement, or getting a section clearance. If something is in the prior art, it's not patentable.

Prosecution: The process of filing a patent application and then fighting with the patent office to have the patent granted.

35 U.S.C. Section 101: This is the section of the United States Code that defines what is patentable and what is not. As it has been interpreted by the courts, laws of nature cannot be patented, but inventions which make use of the laws can; "mathematical algorithms" cannot be patented, but regular computer algorithms can; methods of doing business cannot be patented, but methods of doing business that involve a computer can; bacteria and animals can be patented, as can plants, even though plants are also covered under the Plant Variety Protection Act.

Section 102: This section of the Patent Act is the heart of most patent controversies; it lists seven conditions which should prevent a patent from being given. Patents that are granted by the Patent and Trademark Office can be invalidated by showing that they violate one or more of the provisions of section 102. A patent is invalid:

102(a): If the invention was known or used by other people in the United States before the patentee applied for the patent, or described by others in a printed publication.

102(b): If it was described in a printed publication, put on public display, or sold by the inventor more than a year before the inventor applied for a patent.

102(c): If the inventor abandoned the invention.

102(d): If the invention was patented in another country more than a year before the application was filed in the United States.

102(e): If the invention is described in a patent application filed in the US or abroad by another person before the patentee's application was filed.

102(f): If the inventor listed on the application is not the true inventor of the invention.

102(g): If someone else came up with the invention before the inventor who filed for the application, and the original inventor did not abandon, suppress, or conceal the invention.

Section 103: The part of the patent law likely to be the next big fighting ground for software patent foes. Section 103 states that the Patent and Trademark Office may not grant patents if the invention "would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Clearly, this is a big bag of worms that will keep lawyers employed well into the next century.

Submarine Patent: A patent, usually applied for by a lone inventor, which spends years hidden in prosecution. Eventually the submarine surfaces, laying claim to huge license fees from companies which suddenly discover themselves to be "infringers."

Supreme Court: Often called simply "The Court," this court is allegedly the highest court of the United States. In issues of patent law, however, the Federal Circuit court has consistently reinterpreted Supreme Court rulings to suit its own ends. Although The Court has ruled that including a computer as part of an invention does not make the invention unpatentable per se (Diamond v. Diehr, 1981), it has never specifically addressed the question of whether algorithms in and of themselves are patentable or not.

The US Court of Appeals for the Federal Circuit Court: Created in 1982, this court has dramatically boosted the power of patents by broadening the scope of patents and making it more likely that alleged infringers be found guilty.