Fixing Software Patents By Actually Applying Existing Patent Law
from the one-way-to-do-it dept
Lawyer/law professor Mark Lemley has argued for years that, even as there are very clear problems with software patents, the answer is not to merely exclude software from being patentable. I tend to agree. I think it's pretty clear that the problems with the patent system go way, way beyond just software, and as such, excluding software from being patentable would actually leave many serious problems with the patent system in place -- with little interest left in fixing them. I'd rather fix the big problems across the board then look for carve-outs and "exceptions." I've made many suggestions over the years for changes that I think would really help to fix the patent system, and Lemley has regularly argued that we don't even necessarily need a change in the law. His book from a few years ago, The Patent Crisis and How the Courts Can Solve It, as you can tell from the title, argued that the courts can fix the system without a major change to the underlying law.Lemley recently released a new paper, arguing that the problem of software patents can be dealt with by properly applying the 1952 Patent Act's limitation on so called "functional claiming." Simon Phipps, over at Infoworld, has an absolutely fantastic summary of Lemley's argument, though I recommend reading Lemley's paper itself as well. The short form of the argument is that under the 1952 Act, there are significant limitations on patent claims that cover a "function" rather than a specific solution. Phipps does an excellent job summarizing the broad concept of functional claiming:
When we say patents protect inventions, what we mean is they protect specific solutions to problems, rather than the idea of solving a particular problem. The design for a plough can be patented; the idea of ploughing a field can't. A specific new drug that stops a headache can be patented; the function of using a drug to stop a headache can't. Lemley explains how patent applications were increasingly written to go outside these bounds, culminating in a case in the 1940s where a judge finally declared patent claims that attempted to fence off a function -- "functional claiming" -- as an invalid use of patents.However, the 1952 Act brought back functional claiming -- but with very specific limitations, found in 35 USC 112(f):
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.Now, this may sound confusing, but as Lemley (and Phipps) explain, it really limits the ability to claim a "function" to a very narrow set of circumstances. Lemley provides an example of how "functional claiming" works with and without 112(f) and why it's very limited with it:
To take an example, suppose that the patent claim includes as an element a “means for processing data.” Read literally, without reference to section 112(f), this language would encompass any possible means for processing data, including any computer, but also a calculator, an abacus, pencil and paper, and perhaps even the human brain. Section 112(f) permits the use of such functional language, but doesn’t permit it to cover any means of performing the data-processing function. Instead, the claim would be limited to the particular “means for processing data” actually described in the patent specification (say, an iPad) “and equivalents thereof.”In other words, if you're going to claim a function, you only get to do so in the very narrow spectrum of the "means" for which your patent applies.
Now, the problem: in the computer age, patent lawyers have realized that if they effectively show "a computer" as "the means" then they can really go back to claiming the full function, rather than the very limited function.
A patentee who claims “means for calculating an alarm limit” is invoking the limits of section 112(f), and the claim will accordingly be limited to the particular software algorithm or implementation the patentee described in the specification. But if the same patentee claims “a computer programmed to calculate an alarm limit,” courts today will read the term “computer” as sufficient structure and will understand the claims to cover any computer that can calculate an alarm limit, however the calculation is programmed.He goes on to note a bunch of examples of the loose way that the system is defined to make software patents ridiculously broad, so they effectively go back to claiming a patent on the basic function. So you see things like "in a dating processing system," "a computer system," "a computer readable medium," "over the Internet," "one or more processors of a computer system" and so forth in patent claims. But given that pretty much everything is done "on a computer," it should come as little surprise that these patents, which should be really limited, actually do end up claiming very broad functionality for things like... sending email, or having a shopping cart, or having a web page "bounce back" when you hit the bottom.
Lemley argues that if we actually went back to what was clearly intended with the limitations on functional claiming, we could fix the problems associated with software patents. How would we do that? Easy: require that those filing software patents also submit their source code, and the patent should "be limited to those algorithms and equivalents thereof."
We don’t need to change the statute to achieve this result. We don’t even need to overrule existing cases. We just need to pay attention to a law that is on the books but doesn’t seem to get applied in practice. The Federal Circuit or the Supreme Court could, with one fell swoop, do away with most of the problem of overclaiming in software patents – and with it, most of the problems with software patents in general. All it needs to do is to take the statute at face value and limit functional claims to the particular way the patentee implemented that function. In the software world, the way an inventor implements a function is not with “a computer” or “a processor,” but with a particular computer program. The patent claim should accordingly be limited to that particular computer program, and ones that work in the same way to achieve the same result.Lemley points out a side benefit to having the courts just recognize this, rather than changing the law. If the courts go back to interpreting the law this way, then it applies across the board retroactively. As Lemley says, "the idea is that the law hasn't changed; we simply understand it better."
Is such a "solution" possible? It's certainly possible. Phipps quotes lawyer Andrew Updegrove, who notes that the theory just needs to be tested in front of a judge who understands the details:
What we need now is a case that presents an appropriate opportunity for Professor Lemley's argument to be presented, and a judge that is willing to accept it.I would imagine that it won't be long before we begin to see some test cases. It may be years before they work themselves through the court system, but hopefully judges at the upper levels can read and understand Lemley's paper in the interim...
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Filed Under: functional claims, law, patents, software patents
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Revisionist history at its worst...and wrong. It is a shame that neither Judge Rich nor Mr. Federico are here to explain why this is so. The 1946 Halliburton case did not strike down functional claiming, but rather interpreted the then statute to include the very limitations that were incorporated into the Patent Act of 1952.
Mr. Lemley is correct, however, that the consistent application of Section 112(f) is important to avoid overclaiming. I know of no person associated with the practice of full gamut patent law who disagrees with this very basic proposition.
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Not going to work.
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Re: Not going to work.
Since one could say that about the presently applied rules too I think the question is rather: which alternative is better?.
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Re: Not going to work.
Software patents are very slippery at the best of times. N need to make them even more difficult to deal with.
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Re: Not going to work.
Patenting code written in a programming language is like copyrighting a story written in Tolkien's Elven Language.
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How would this affect current broa patents?
What would this new attitude of enforcing the functional claiming limitations do for those patents?
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Several erroneous underlying assumptions and some suggested fixes, too
Second: re-empower the 'doctrine of equivalents', not gut it; so a specification stating a 'limit test' need not further state whether the test measures equivalence, overage, or underrun (or 'when', 'until' 'as long as' condition limits) at and for each disjoint stage, object method, or procedure. Otherwise you encourage gaming the legal decisionmakers by porting the code and changing the functions encapsulated therein (as comment 6 shudders to think of -- why isn't the same a fear for complex electronics, or chemical syntheses of ionic hydrocarbon groups?)
Third: patents exist precisely to patent 'ideas' -- when those ideas are 'how to', not 'whether or not, to', do something. Contrary to the summary, one can patent the idea of plowing a field -- but not, thereby, the idea of killing the weeds in it and opening the soil for new planting and hydration. You just won't be able to use any method that is the same as 'plowing'(which is a 'process', therefore statutorily patentable) as described in the patent. Sure, you can't patent plowing _now_ -- because it is not original, now. Back when the first turning-iron was attached to a mold-board and both to drawing traces, well...they didn't have our modern law, then.
Finally, and in too-short a fashion: until the PTO and law get serious about addressing the difference between 'P' and 'NP' as part of analyzing software algorithms, and recognizes the importance of Order(n) and other measures of raw computability, these problems will remain. There is a very real _science_ in Computer Science, just as there is in Physics, Biology, and Chemistry -- one which deals with the instantiations realizable in the world, and not just in mathematical or other models.
Yes, we can use existing law to address the issues of "software patents"; but only as long as those doing so, work from real knowledge of the technical field. I have not yet seen a single analyst mention that there is a sub-field in Computer Science which is called, and deals with, 'Analysis of Algorithms'. That just might be relevant -- as is the historical record of what computer people have done since the 1940's, for a large part of four decades before a few savvy patent seekers realized that 'process' could include something using a computer.
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Utter Bullshit
Limitting software to a very specific function doesn't solve anything because it is a wordgame. When is something 'a function'. I can make software that has a function to help other software (which would be a library).
All in all, I think you are completely wrong on this one.
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Falling WAY too short
the answer is not to merely exclude software from being patentable
Is an absurd statement, because software already IS not patentable. Because all software is mathemathics.
http://en.swpat.org/wiki/Software_is_math
Mathematically provable.
Now the problem obviously is that the courts, patent office and lawyers seem to think an algorithm in software is something entirely different than in mathematics. Which is bogus. Sort of like legislating the value of Pi to exactly 3 (Which was actually tried in Indiana in 1897). I can't even fathom the incredible absurdity -- and complete disconnection with science -- that view shows.
So if you really believe that software should NOT be excluded from patents, you're saying mathematics, and by extension, laws of nature, should be patentable. You can't tell me you really mean this.
In short: Yes, if the patent law as it exists would be actually applied, there would be no software patent whatsoever.
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Re: Falling WAY too short
Its not just software patents that are the problem. Why should software be special? Software patents are just a symptom of the whole.
Fix the entire damn system - which is what this idea is about.
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Re: Re: Falling WAY too short
Patenting software is self-inconsistent in that what the patent prohibits, the description of a process (written in particular language), is what the patent regime is supposed to be encouraging. To prohibit the writing of software that implements a patented process is equivalent to prohibiting writing about the patented process. Would it be reasonable to prohibit the translation of a patent's claims into Swedish because doing so facilitates infringement by Scandinavians? If not, then why should it be reasonable to prohibit translating them into Lisp, or C, or Java? (Or more accurately, find a programmer to be infringing when the code he has written just so happens be "an equivalent thereof" the claims of a patent?)
The fixing of "non-software patents" problems requires a different approach because the nature of their problems -- whatever else they may be -- does not present an inherent contradiction between the means and the purpose of patents.
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Re: Re: Falling WAY too short
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The problem goes deeper than that, unfortunately. But could be a start.
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hmmm
1) Get human brain classified as a computer
2) Claim software patents outlaw thoughts without prior permissions
3) SUE SOMEBODY
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functional claiming
So far, courts have only bought the argument to a limited extent. The idea is to convince the judges; there are plenty of "test" cases out there.
Also, just to help avoid confusion for some people, there technically is no subsection (f) of section 112 in the US patent laws. The applicable law is simply the sixth paragraph of section 112, and is usually referred to as the sixth paragraph (in contrast, other sections of the law expressly specify a subsection letter).
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Re: functional claiming
I do, however, restate my objection to Mr. Masnick's characterization of its incorporation into the 1952 Act as revisioninst history. Judge Rich and Mr. Federico went to great length to merely codify existing statutory provisions as then interpreted by the courts, with the functional claiming limitations having their genesis in Halliburton.
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Patents - massively gut and impose yearly quota
If you've tried looking at just about any non-example device patent recently (most of the device ones at least have to include a design schematic or working example, and thus on that basis serve the above function) you will likely wonder what crazy thing they are trying to describe. Let alone actually finding a useful design if you are searching with no foreknowledge.
So, clearly, there are both patents that are not written in a way that will be useful to future members of that field as well as far too many patents in general. The solution would therefore be to have a limited number of patents issued and only validate those which are of the highest and most useful quality. I also argue for compulsory licencing to be determined at the time of issuance; I suspect that market forces erecting an entry barrier would set more than adequate a rate to repay the actual inventor.
Oh, also, patents should only be able to be held by their inventors; though whomever hired them should also be able to require a zero-cost license in return.
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We should not be using the "algorithm" to count as the means disclosed in the spec. Algorithms are not strutures or acts as 112 6th paragraph calls for.
The answer is to make patentees tell us what is so special, specifically, about the computer they want to put in the claim and tell us about it STRUCTURALLY. Not in the form of an algorithm.
Note that this has the side benefit of rendering most software patents worthless.
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Software Patents Already Invalid
Almost all software patents are by their very nature functional claiming, especially since anything about a software patent that is not functional claiming is already covered by copyright to the extent to which it is protectable. The few possible exceptions to this are likely to be invalid for other reasons, or only worth anything as submarine patents (i.e., only worth something if you get a bunch of people to use it first and then start charging for it later after people need it for compatibility with existing software, like LZW compression or MP3 files).
This basically makes it so that any attempt to retain software patents at all is not worthwhile. All the current uses of them are for purposes not intended to be supported by original patent legislation. In fact, they are for purposes specifically intended not to be supported.
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Economic quackery
And in my view that's a highly ironic evaluation because perhaps the most serious problem of all with the patent system is that it is applied - equally - to all fields and technologies. While its parameters and practices may be optimised for e.g. pharmaceuticals until it actually does have the overall beneficial effect on innovation and welfare in that field which is its only reasonable justification in the first place, it is quite likely to have an overall pernicious effect in others.
As a sometime 'skeptic' I've often been struck by the analogies between the way many people think about the patent system 'medicine' and its economic 'patients' and the way in which a quack thinks about his medicine(s) and his patients. One thing very noticeable about quacks is that even though many of them are decent and well-meaning folk they are prone to (unwittingly) prioritising the welfare of their 'system of medicine' and their profession over that of their patients. So when the clinical trial results showing that Oscillococcinum probably isn't any good for the 'flu come in, instead of abandoning it and moving on as an ordinary physician or medical scientist would, they make up excuses and insist that in fact it does cure the 'flu but only if it is prescribed by 'proper homeopaths' and administered in 'the right' formulation.
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So for the entertaining side note... The real problem is that as a small it developer it is very hard to compete against big companies. Patents help because it prevents big companies from just taking the good ideas on the market and copying them.
Kind Regards,
Nick
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Re:
Patents are supposed to be copied and improved on. That's why they're accessible to the public. Ideas cannot be patented; the patent law clearly says so. Trying to monopolize ideas is: illegal, unethical, and impossible.
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