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Re: Strawmen and Urban Legends

From: robertplattbell
Subject: Re: Strawmen and Urban Legends
Date: 27 Dec 2006 19:05:12 -0800
User-agent: G2/1.0

There are three Patent types, Design, Utility, and Plant.

You are correct that there is no "software patent" per se.  You cannot
identify one by serial number or classification.  There is no
bright-line demarcation as to what is a hardware, software, or firmware
patent.  And since many systems (modems, A/D converters, DVD decoders,
etc.) can be implemented in all three, or a combination of all three,
it is ridiculous to try to classify some inventions as purely
"hardware" or "software".  It simply can't be done in many cases.  And
a competent Patent Attorney would be foolhardy to limit the embodiment
of an invention to only hardware or only software.

Under 35 USC 101, and as confirmed by the Federal Circuit, basically
anything under the sun is patentable, except for natural phenonenon or
mental processes.

The Patent Office expanded this mental process exception, sua sponte,
to include "mathematical algorithms".

>From that, the Patent Office devised a rubrik whereby software was
considered a computer implementation of a mathematical algorithm, and
therefore was not Patentable.

As the Federal Circuit correctly pointed out, however, the law does not
support such a construct.

However, that being said, the case law still favors "software"
inventions that produce some result - the calculation of a share price,
at the very least, it would seem.

The Patent Office is examining most of these "non-traditional subject
matter" applications with a fine tooth comb these days.  101 rejections
are the norm.  Examiners are being provided with form paragraphs to
reject such inventions (particularly business method Patents or other
"nontraditional" subject matter).  A lot of these form paragraphs
dredge up some pretty hoary old case law from the CCPA.  It is almost
funnny, except that it can really add a lot of expense to Patent

So, if you want to get your "software" patent allowed, it is best not
to couch it in terms of software alone.  Some end function in the real
world should be claimed.  I believe the software patenting guidelines
are posted on the USPTO website.  Of all the "non-traditional" subject
matter, software is probably the easiest to Patent.

I am sort of suprised that you are posting on this topic as though it
was a recent controversy.  Here is an article I wrote OVER A DECADE AGO
on the subject.  I mean, if the software industry hasn't been
"destroyed" by Patents now, how much longer will it take?   Another
decade?  --Bob.

* * * *

This article was originally published in June 26, 1995 edition of
ComputerWorld Magazine as an OpEd piece.  I ended up writing and filing
one of the earliest Internet Method of Doing Business Patents as a
result of that exposure.  Recall at the time, many were predicting the
ruin of the software business if software was patentable.


            Now that the U.S. Patent & Trademark Office has given the
green light for software-related patents, some software developers have
gone ballistic.  In Internet postings and other forums, they argue that
software patents will retard innovation, squash the small developer and
generally bring an end of the American Way of Life as we know it.

            Underlying this concern is that, with the apparent demise
of "look and feel" copyright protection in the Lotus v. Borland case,
it appears that patents may become the best way to protect software

            I can understand why some software developers are upset.
Copyright protection does have some certain advantages, such as being
fairly inexpensive to obtain.  Moreover, a case of copyright
infringement, requires proof that a defendant did some copying.
Insulating your software design staff from outside code sources may
protect you from a copyright suit.  Patents, on the other hand, require
no such proof.  You can be sued for patent infringement on a patent
you've never seen or heard of.

            But the critics underestimate the advantages of patent
protection for software.  Consider the following points:

            Software Patents Were Issuing Anyway.  At least now the PTO
doesn't have to pretend that they don't.  By facing this issue
squarely, the Patent Office now has the opportunity to more
consistently issue valid patents in software related fields.  By hiring
computer science majors (a break from long-standing PTO tradition) and
creating a dedicated Examining group equipped with "prior art" files
from the software field, the PTO has a better chance of avoiding such
embarrassments as the Compton Multimedia Encyclopedia patent.

            Patents are Easier to Adjudicate.  The Patent field has
over 200 years of Law and Rule making and court decisions behind it to
aid in determining the scope and validity of claims.  Patent claims are
printed on a patent for all to see and interpret.  In contrast, the
"look and feel" copyright doctrine, apparently now defunct, was a new,
judicially created doctrine with no precedential history.  Patent
claims may be distinctly designed around.  "Look and feel" is more
nebulous.  Whose look?  Whose feel?  Patent claim interpretation is
much less dependent on which judge you get.

            Other Fields Have Survived and Thrived.  Despite reports to
the contrary, most technologies, including the computer arts, have
survived and even thrived under our patent system.  In the technology
business, it is taken for granted that any new product carries a risk
of infringement of a patent or patents.  This risk can be minimized by
performing a simple prior art search which may cost only a few hundred

            Monopolizing the Software Field with Patents Won't Work.
Proprietary formats and technologies are vigorously fought in the
marketplace.  In most cases, less sophisticated competing technologies
will prevail.  Consider BETA vrs. VHS, MacIntosh vrs. the IBM-PC, or
Polaroid vrs. 35 mm.  In all three cases, less sophisticated
non-proprietary technology has prevailed.  Any software developer who
attempts to "force" the marketplace to buy his products through patent
monopolies will eventually be history.  (Bill Gates are you listening?)

            Patents Don't Always Favor the "Big Guy".  Consider
Microsoft and Stakker.  The patent system may actually favor the small
inventor.  Large Corporations may spend hundreds of thousands, if not
millions litigating a patent suit.  A small company, if they can find
the right attorney, may litigate such a suit on contingency for a
fraction of that amount.  Moreover, a sole inventor has a much greater
chance of eliciting jury sympathy when going up against the "big"
corporation.  Consider Mr. Kerns and his intermittent windshield wiper
patent.  If anything, large companies have more to fear from sole
inventors than vice versa.

            Regardless of whether you favor or oppose software patents,
it appears as though they are here to stay.  Unfortunately, it is not
possible to 'opt out' of the intellectual property system.  The best
strategy is to establish your own portfolio and take reasonable
precautions to prevent patent infringement.  If sued, your patents can
be valuable weapons to force settlement of a suit.  Moreover, if you
are a small, start-up company, you should count on any possible buy-out
suitors being keenly interested in the contents of your patent

* * *
This posting is (c) 2007, Robert Platt Bell.  No, you may not copy this
onto a pay website and charge people for it, or use it sell ad space.
And yes, people have tried...

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