Software Patents
David G. Hough at validgh
dgh
Thu Jan 6 17:46:31 PST 1994
Patents on mathematical ideas are not that far removed from current reality,
and they would make our life much more difficult.
Fortunately the Patent Office goofed in such a big way in the Compton's case
that it has felt forced to re-examine the whole issue.
The following is in response to a call from the League for Programming
Freedom. I encourage individuals to respond to the patent office, whether
or not you agree with my position. I regret that my response could not be
more detailed or better thought out, but time is of the essence, as the
lawyers say.
============================= my response ===================================
PO Box 20370
San Jose, CA 95160
6 January 1994
dghavalidgh.com
Commissioner of Patents and Trademarks
Attn: Mr. Jeff Kushan
Box 4
Patent and Trademark Office
Washington, DC 20231
Dear Commissioner:
I am responding to the Request for Comments on Patent
Protection for Software-Related Inventions. Patent pro-
tection for software is very bad public policy, for it tends
to stifle rather than encourage innovation. This has become
apparent to me over a period of almost twenty years, during
which I have served as a software engineer at Tektronix,
Apple Computer, and Sun Microsystems, and as an independent
consultant, and during which I served as part of the IEEE
P754 working group that produced the specifications for
binary floating-point arithmetic which are followed by most
of the personal computers and engineering workstations being
built today.
The Request for Comments appears to be in response to
public outcry over the Compton's patent. It would be a
mistake, however, to suppose that the problems with software
patents can be addressed by minor tinkering with the present
system. The whole notion of patent protection requires
statutory revision, at least with respect to the kinds of
industries that I am familiar with, that involve intense
international competition, extremely rapid technological
development involving large organizations, and extremely
short product lifetimes. What follows refers primarily to
the software, computer system, and semiconductor industries,
although much seems to apply to other industries such as
automotive, perhaps less forcefully. I hope that the final
outcome of the Request for Comments is a recommendation to
Congress for appropriate statutory relief.
The original constitutional notion of patent protection
was to encourage innovation by granting a legal monopoly in
return for publication. Publication allowed technology to
build upon previous art, unlike technology protected by
trade secret, which in 1800 might well have died with the
inventor.
Consider how things have changed in two hundred years.
Most incremental innovation is by large organizations that
must innovate constantly or go out of business. Current
product lifetimes in the workstation business are less than
two years. Patents can't even be filed and granted in the
time that they are immediately relevant. Trade secrets
afford a measure of protection for short periods of time,
although ideas that are "in the air" can't be kept secret
for long in these industries, due to the high degree of com-
munication and employee turnover. So why do firms continue
to seek patent protection when the patent, itself, is no
guarantee nor recompense for innovation?
Large organizations primarily seek patent protection in
order to STIFLE innovation by small competitors, and to
avoid being stifled in the same way by larger competitors.
For instance, it is not possible now to produce state-of-
the-art semiconductors without licensing one or more patents
from each of the main semiconductor companies. This is
not an issue among the principals; since they all are about
equally armed, they of necessity cross-license each other so
they can all stay in business. But they have the potential,
sometimes exercised, to seriously inhibit new entrants.
After all, even if a small new entrant has a genuinely new
idea, it is at a serious legal financial disadvantage in a
patent fight with a much larger firm.
But a more typical case in semiconductors, and much
more so in software, is that the claimed innovation is a
minor one whose patentable novelty is arguable even among
experts. After all, it is very difficult to have a wholly
original idea in a dynamic industry. Unlike semiconduc-
tors, moreover, reduction to practice of a software idea is
usually quick and inexpensive, and may be "obvious" once the
underlying mathematical or logical theory is discerned.
Thus software patents are tantamount to patenting mathemat-
ics or logic. Since it's in the nature of a major indus-
try that many experts are considering the main problems at
once, in order to assure competitive advantage to their
employers, it's likely that new ideas will be put into prac-
tice almost simultaneously by several independent groups.
Which of these gets patent protection? It becomes a crap
shoot, or a game of who can hire the best lawyers. This
is bad public policy. The public loses.
What should be done instead? Several different
approaches have been proposed. Very short terms for
patents in semiconductor/computer/software industries - at
most four years - would be an improvement, if the patent
examination process could be made fast and accurate enough.
Recent history is not reassuring on this point. Better
protection for trade secrets - perhaps Federal statutory
protection - is more promising. Copyright is already an
effective protection of implementations or realizations -
programs, object codes, perhaps even semiconductor masks.
Unfortunately copyright has also been used to protect inter-
faces, or ideas, rather than the underlying implementation
of those interfaces. Innovation and the public interest are
best served by encouraging rather than stifling independent
implementations of the same ideas.
Thus I propose that the Patent Office recognize the
fundamentally different nature of the industries I have men-
tioned, and propose Federal statutory relief to Congress
that encourages innovation by increasing protection for
trade secrets and copyright of implementations, if needed,
while eliminating patent protection from those areas of
industrial innovation where it is now counter-productive.
=============================== LPF =========================================
From: uunet!gnu.ai.mit.edu!cdh
To: lpf-all-membersaprep.ai.mit.edu
Resent-To: lpf-all-membersaprep.ai.mit.edu
Subject: PTO Call for Comment
Date: Wed, 5 Jan 94 10:27:09 est
CALL for LETTERS
Since the formation of the League for Programming Freedom it has been
our contention that patents should not be granted on software. Many
people in the academic community and industry share this position.
We are now being offered an opportunity to affect a change in the
current patent system.
The United States Patent Office is now admiting that there is
something wrong with the way patents on software are currently
implemented. They have issued the attached statement calling for
statements to be made on software patents.
The League for Programming Freedom plans on sending a representitive
to testify in these hearings. We are also asking all concerned
individuals to send their comments to the patent office. To make it
easiest for people to do this the LPF has set up a mailbox for this
purpose.
To make comments please send email to lpf-pto-lettersaprep.ai.mit.edu.
This will send your message to the patent office and to the LPF so we
can keep track of this activity. If you choose to send in your
comments via US Mail we would appreciate it if you could CC a copy to
the LPF so we can have it in our files.
Since this is such an important opportunity I urge all of those
concerned to take the time to send a letter to the Patent Office.
This may be our last chance to change the system of software patents.
Christian D. Hofstader
President
League for Programming Freedom
(617) 492 0023
cdhaprep.ai.mit.edu
The following is the request by the Patent and Trademark Office:
============================= Patent Office =================================
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Docket #: 931222-3322
Notice of Public Hearings and Request for Comments on
Patent Protection for Software-Related Inventions
AGENCY: Patent and Trademark Office, Department of Commerce
ACTION: Notice of hearings and request for public comments
SUMMARY: The Patent and Trademark Office (PTO) is interested in obtaining
public input on issues associated with the patenting of software-related
inventions. Interested members of the public are invited to testify at
public hearings and to present written comments on any of the topics
outlined in the supplementary information section of this notice.
DATES: Public hearings will be held on January 26-27, 1994, at the San Jose
Convention Center, 408 Almaden Avenue, San Jose, California, and on February
10-11, 1994, at the Crystal Forum in Arlington, Virginia. Those wishing to
present oral testimony at any of the hearings must request an opportunity to
do so no later than five days before the date of the hearing at which they
wish to testify. Written comments on the topics presented in the
supplementary information section of this notice should be received by the
PTO on or before March 15, 1994.
ADDRESSES: Those interested in presenting written comments on the topics
presented in the supplementary information, or any other related topics,
should address their comments to the Commissioner of Patents and Trademarks,
marked to the attention of Jeff Kushan. Comments submitted by mail should
be sent to Commissioner of Patents and Trademarks, Box 4, Patent and
Trademark Office, Washington, DC 20231. Comments may also be submitted by
telefax at (703) 305-8885 and by electronic mail through the Internet to
comments-softwareauspto.gov. Written comments should include the following
information: - name and affiliation of the individual responding; - an
indication of whether comments offered represent views of the individual's
organization or are the respondent's personal views; and - if applicable,
the nature of the respondent's organization, including the size, type of
organization (e.g., business, trade group, university, non-profit
organization) and principal areas of business or software development
activity.
Parties offering testimony or written comments are asked to provide their
comments in machine readable format in one of the following file formats:
ASCII text, WordPerfect for DOS version 4.2 or 5.x, WordPerfect for Windows
version 5.x, Word for Windows version 1.0 or 2.0, Word for DOS version 5.0,
Word for Macintosh version 3.0, 4.0 or 5.x, or WordPerfect for Macintosh
version 2.x.
Persons wishing to testify must notify Jeff Kushan no later than five (5)
days before the date of the hearing at which they wish to testify. Mr.
Kushan can be reached by mail sent to his attention addressed to the
Commissioner of Patents and Trademarks, Box 4, Washington, DC 20231; by
phone at (703) 305-9300; or by telefax at (703) 305-8885. No requests for
presenting oral testimony will be accepted through electronic mail.
Written comments and transcripts of the hearings will be available for
public inspection no later than March 30, 1994, in Room 902 of Crystal Park
Two, 2121 Crystal Drive, Arlington, Virginia. In addition, transcripts of
the hearings and comments provided in machine readable format will be
available after March 16, 1994, through anonymous file transfer protocol
(ftp) via the Internet (address: comments.uspto.gov), and will be available
for Wide Area Information Server (WAIS) searching after March 30, 1994.
FOR FURTHER INFORMATION CONTACT: Jeff Kushan by telephone at (703) 305-9300,
by fax at (703) 305-8885, by electronic mail at kushanauspto.gov, or by mail
marked to his attention addressed to the Commissioner of Patents and
Trademarks, Box 4, Washington, DC 20231.
SUPPLEMENTARY INFORMATION
I. Background
Over the past decade, the computer software industry has evolved into a
critical component of the U.S. economy. It is presently the fastest growing
industry in the United States, with 1992 sales in the three core elements of
the software industry -- programming services, prepackaged software and
computer integrated design -- accounting for over $36.7 billion of our
domestic gross product. The software industry also has created jobs at a
remarkable rate; since 1987, employment in the software industry has risen
at an annual rate of 6.6 percent and today, the industry employs about 4
percent of the American work force.
The dynamic nature of the U.S. software industry has also served to propel
the U.S. firms into a dominant position in the global software industry.
U.S. firms hold about 75 percent of the global market for prepackaged
software and approximately 60 percent of the world market for software and
related services. In 1991, foreign sales of U.S. prepackaged software
vendors totaled over $19.7 billion.
Constant innovation has been the key to continued success in the U.S.
software industry. As such, it is imperative that our domestic intellectual
property systems not only provide an effective stimulus for innovation, but
also provide appropriate and effective means for protecting those
innovations. Indeed, the continued success of U.S. firms, in both domestic
and foreign markets, depends directly on the availability of effective
mechanisms to protect software innovations. Without such means, the full
value of American innovation cannot be realized.
Intellectual property systems provide the means through which software
innovations can be both encouraged and protected. The present framework of
intellectual property laws provides three basic forms of legal protection
that are most relevant to the development and protection of software;
namely, copyrights, patents and trade secret protection. Detailed reviews
of each of these forms of protection can be found in the 1992 Office of
Technology Assessment report entitled "Finding a Balance: Computer Software,
Intellectual Property and the Challenge of Technological Change"
(OTA-TCT-527), and in the final report of the Advisory Commission on Patent
Law Reform to the Secretary of Commerce (1992). A brief synopsis of these
three forms of protection follows.
Software code is protected under copyright law as an original work of
authorship. Copyright protection stems automatically from the act of
fixation of a work onto a tangible medium. A copyright gives its owner the
ability to control the reproduction, adaptation, public distribution, public
display and public performance of the software code. Copyrights can be used
to prevent others from copying the software program, either through direct
duplication or through appropriation of the software's expressive (as
opposed to functional) elements. Under U.S. law, copyright owners can also
prevent the unauthorized rental of software. Copyright protection cannot be
used to prevent the use by others of the functional aspects of software, nor
can it be used as a basis for action against independently developed
software. In addition, the fair use doctrine under copyright law provides
third parties some flexibility in their use of copyrighted works.
Patents can be used to protect processes implemented using software, as well
as computer-based systems. The statutory definition of inventions that are
eligible to receive patent protection is found in section 101 of title 35,
United States Code. This section makes patents available for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." To obtain patent protection, the inventor
must apply for protection and proceed through an examination process before
the Patent and Trademark Office (PTO). The examination process is used to
assess whether the invention for which protection is sought meets all of the
statutory criteria for patentability; namely, that the invention is eligible
for protection, that it is new, that it is not obvious to a person familiar
with the technical field of the invention, and that the invention has been
adequately described in the patent application. Patent protection allows
the patent holder to preclude others from making, using or selling the
patented invention, as it has been defined in the patent claims, for a
period of seventeen years measured from the date the patent is granted.
Importantly, the party granted a patent must take action to enforce rights
provided under the patent--the issuance of a patent does not automatically
preclude infringing activity. In addition, the Federal courts have
developed a limited exception to liability for infringement for
non-commercial experimental use of inventions described in patents.
Additional information on the patent process is available in the Manual of
Patent Examining Procedure (MPEP), in particular, chapters 600, 700 and
2100.
Finally, certain aspects of software can be protected through use of trade
secrecy and contractual licensing agreements. Protection of trade secrets
in the United States is governed by state, rather than Federal, law. Trade
secret laws typically require the party asserting a trade secret right to
take reasonable steps to prevent the public disclosure of the information
held as a trade secret. Accidental or other public disclosure of a trade
secret will eliminate the protection. Absent such disclosure, the trade
secret rights will remain effective indefinitely. Trade secret rights can
be enforced against parties that unlawfully obtain the information held as a
trade secret.
The focus of the discussions in the three scheduled public hearings will be
the use of the patent system to protect software-related inventions. There
will be three general subject matter areas presented for discussion:
- - Use of the patent system to protect software-related inventions;
- - Standards and practices used in examination of patent applications for
software-related inventions; and
- - Significance of and protection for visual aspects of software-related
inventions.
Questions appearing in section II, below, are intended to focus the
discussion on each of the topics. They are not intended to discourage
individuals from providing written comments on issues they believe should be
addressed that are related to the protection of software-related inventions.
Written comments on matters not presented below for discussion can be
forwarded to the Commissioner of Patents and Trademarks for inclusion in the
records of these hearings, but should clearly indicate that the comments are
general in nature and not directed at the issues presented for discussion.
II. Topics for Discussion
Topic A. Use of the patent system to protect software-related inventions
Dates and Times for Hearings on Topic A:
January 26, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
January 27, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
Location for Hearing: San Jose Convention Center
408 Almaden Avenue
San Jose, California.
The question of patent protection for software-related inventions has
engendered a significant amount of public debate. For example, concern has
been expressed over the appropriate scope of eligible subject matter (e.g.,
which aspects of software-related inventions should be eligible for patent
protection, and which should not). Others have expressed concerns over the
effects of providing protection for inventions in which the main
distinguishing characteristic is a software component.
Some guidance on the question of patent eligibility has been provided by the
Federal courts. First, the Supreme Court has instructed the lower courts to
interpret the eligibility standards for patent protectionbroadly. In
Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), the Court stated:
The committee Reports accompanying the 1952 Act inform
us that Congress intended statutory subject matter to "include
anything under the sun that is made by man." The subject matter
provisions of the patent law have been cast in broad terms to
fulfill the constitutional and statutory goal of promoting
"the progress of science and the useful arts". Congress
employed broad language in drafting Section 101 precisely
because such inventions are often unforeseeable.
Second, the Supreme Court has held that the mere presence of a computer
software-implemented mathematical algorithm in an invention does not
automatically preclude the invention from being eligible to receive patent
protection. Diamond v. Diehr, 450 U.S. 175 (1981). Finally, through
interpretation of the exclusions from patentable subject matter under
section 101 of title 35, United States Code, the Supreme Court and the lower
Federal courts have provided guidance in determining which aspects of
software-related inventions are eligible for patent protection.
There are three general categories of exclusions to patent eligibility that
are particularly relevant to software-related inventions. The first, and
most commonly applied exclusion, is the exclusion of mathematical
algorithms, per se, from patent eligibility. For a summary of the law
governing this exclusion, and for guidance on how the PTO applies this
exclusion in the context of its examination procedures, see "Patentable
Subject Matter, Mathematical Algorithms and Computer Programs", 1066 O.G. 5,
(Sept. 5, 1989) and "Note Interpreting In re Iwahashi," 1112 O.G. 16 (March
13, 1990). Second, methods of doing business are excluded from patent
protection. While no cases have directly applied this exclusion to deny
patent protection for software-related inventions, the exclusion is relevant
for questioning the patent eligibility of processes that are modeled upon
existing business processes but are implemented through a software-based
system. See, e.g., Paine, Webber, Jackson & Curtis, Inc., v. Merrill Lynch,
Pierce, Fenner & Smith, 564 F. Supp. 1358, 218 U.S.P.Q. 212 (D. Del. 1983).
Finally, printed matter, per se, is not eligible for protection under the
patent laws. This exclusion has relevance in the context of software code
"written" onto non-paper media (e.g., magnetic or optical media capable of
storing the software code). See, e.g., In re Miller, 164 U.S.P.Q. 439
(C.C.P.A. 1969); In re Jones, 153 U.S.P.Q. 77 (C.C.P.A. 1967).
Within these limits, however, is a spectrum of inventions whose patent
eligibility has been questioned. To encourage discussion of what aspects of
software-related inventions should or should not be eligible for patent
protection, interested members of the public are invited to offer their
views on the following series of questions.
1. What aspects of the following examples of software-related inventions
should or should not be protectable through the patent system? [Note--these
are generalized hypothetical examples of patent claims. They are not
intended to prompt comments as to the merits of the process referred to in
the claim (e.g., whether the process is well known or obvious to a computer
programmer). Instead, comments are desired as to the benefits or drawbacks
of granting patents on the invention defined by the claim, presuming it was
new and not obvious to a computer programmer.]
Example A: a mathematical algorithm implemented on a general purpose
computer:
A computer comprising means for causing the computer to generate a
signal that varies according to application of mathematical
algorithm X to a given numerical input value.
Example B: a mathematical algorithm implemented on a special purpose
computer:
A computer comprising:
- means for collecting data;
- means for extracting usable data from the collected data;
- means for processing the usable data through application
of mathematical algorithm X=A2 + B2, where A and B are derived from
the extracted usable data;
- a read-only memory used to calculate the squares of numbers
provided to it;
- means for providing to said read only memory numerical values
derived from the extracted usable data;
- means for storing in said read only memory numerical values
derived from the extracted usable data;
- means for obtaining from said read only memory the squares of
numbers provided to said read only memory; and
- means responsive to the output of said read only memory.
Examples C-1 and C-2: A computer-readable medium, such as a disk, on
which is stored a computer program.
[Note: These examples include references to a computer readable
medium as a "tangible" or "physical" embodiment of a
software-related invention. The two perspectives presented in the
examples differ in how the invention is defined. The first example
defines the invention through reference to the actual software
object or source code. The second example defines the invention
through a narrative description of how the program functions.]
C-1. A computer-readable medium, on which is stored a computer
program of instructions comprising [software object or source code].
C-2. A computer-readable medium, on which is stored a computer
program of instructions comprising:
- means for performing function X;
- means for performing function Y; and
- means for performing function Z.
Examples D-1 and D-2: A computer program, per se.
[Note: These examples focus on the computer program, per se, as the
invention, without inclusion of a "tangible" or "physical"
embodiment. Like examples C-1 and C-2, two perspectives are
presented as to how the invention is defined. The first example
defines the invention through reference to the actual software
object or source code. The second example defines the invention
through a narrative description of how the program functions.]
D-1. A computer program of instructions comprising [software object
or source code].
D-2. A computer program of instructions comprising:
- means for performing function X;
- means for performing function Y; and
- means for performing function Z.
Example E: A data structure used in a computer program
A hierarchical tree data structure having elements and possessing
properties and operations.
Example F: A process consisting of a series of computational or
decisional steps that can only practicably be performed on a
computer:
A method of diagnosing an abnormal condition in an individual
comprising:
- collecting data related to the condition of the individual;
- processing the data collected to place it in a structured,
consistent format;
- comparing the processed data to a first database of information
documenting characteristics of normal and abnormal conditions in
patients to determine if an abnormal condition exists;
- upon detecting an abnormal condition, comparing the processed data
to a second database of information documenting characteristics of
the abnormality to determine the precise nature of the abnormality;
- upon determining the precise nature of the abnormality, comparing
the characteristics of the abnormality to a third database of
information documenting suggested treatment and therapeutic regimes;
and
- collecting and presenting the information from said third database
relevant to the determined abnormality.
Example G: A method of doing business that has been implemented in a
computer program (e.g., an accounting system implemented in
software).
A computer-implemented process comprising the steps of:
- accessing information regarding the name of a patient and services
provided to that patient from an electronic storage medium;
- associating treatment rendered to a patient with a fee by
comparing the collected data to a database of fees;
- extracting billing data for said patient from said database;
- printing an invoice documenting the fees charged and the
appropriate mailing information for said patient.
2. What impact, positive or negative, have you or your organization
experienced from patents issued on software-related inventions? [Note: If
providing comments on this question, please provide details regarding the
nature of the impact (e.g., the nature of any action taken by or against you
or your organization under a patent, the results of the action, and the
impact of those results on your activities or operations).]
3. What implications, positive or negative, can you foresee in maintaining
or altering the standards for patent eligibility for software-related
inventions (e.g., consider possible effects, if any, on doing business or
protecting software products in domestic or foreign markets, conducting
research, designing software or modifications thereto, etc.)?
4. Does the present framework of patent, copyright and trade secret law:
(a) effectively promote innovation in the field of software? (b) provide
the appropriate level of protection for software-related inventions? [Note:
If responding to this question, please describe the experiences, if any,
that you have had with the current system that led you to your conclusions.]
5. Do you believe a new form of protection for computer programs is needed?
If so, what would be the desirable characteristics of such protection (e.g.,
what would be the substantive requirements for obtaining protection, what
procedures would be used to obtain or register rights, what rights would be
provided and how would those rights be enforced, and how would the new
system relate to existing forms of intellectual property protection)? What
would be the drawbacks of a new form of protection?
Topic B. Standards and practices used in examination of patent applications
for software-related inventions
Dates and Times for Hearings on Topic B:
February 10, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
February 11, 1994; 9:00 a.m. to 12:00 p.m.
Location for Hearing: Marriott Crystal Forum
1999 Jefferson Davis Highway
Arlington, Virginia
Different sectors of the software industry have expressed concern over the
ability of the Patent and Trademark Office to examine patent applications
for software-related inventions effectively. Much of the discussion
involves the lack of availability of printed documents, patents, and other
evidence of public use of the invention before the application was filed
(e.g., called "prior art") that can be used by examiners as a basis for
denying the grant of a patent. Factors that have been identified as
contributing to this problem include:
- - early programming techniques were not well documented or publicly
available;
- - many software programming techniques were kept as trade secrets and not
publicly disclosed;
- - locating and obtaining the most relevant prior art is extremely difficult,
due to the widely diverse nature of processes that have been implemented by
computer software-related systems; and
- - software is not documented in a consistent, readily understandable format
(e.g., some programs only provide object code, different programming
languages are used, source code is not summarized or documented, etc.).
Concerns other than access to and use of prior art have also been cited.
For example, some concern has been expressed that the standards used by
examiners to assess novelty and/or obviousness over prior art are not
reflective of industry standards, with the effect that patents are granted
for well-known or obvious software techniques. Others have questioned the
closed nature of the examination process, with no public intervention prior
to grant, while some have criticized the current options for contesting the
validity of granted patents (e.g., the PTO reexamination process or
litigation in the Federal courts).
In view of this, the PTO is interested in public input on how to improve the
examination process for patent applications for software-related inventions.
Interested members of the public are invited to offer comments on the
following series of questions:
1. Do patents and printed publications provide examiners with a sufficient
and representative collection of prior art to assess novelty and obviousness
of software-related inventions? If not, how can existing collections of
prior art be supplemented to provide examiners with a complete collection of
prior art?
2. Can an accurate measurement of the ordinary level of skill in the art in
the field of computer programming be derived from printed publications and
issued patents?
3. Should the PTO impose a special duty on patent applicants for
software-related inventions to disclose information relevant to their
inventions (e.g., one that is higher than in other areas of technology)?
[Note: Under current Rule 56 (37 CFR 1.56), all patent applicants are
required to disclose to the PTO any information of which they are aware that
is pertinent to the invention they claim in their patent application. The
standard does not require the patent applicant to search or locate relevant
information and present it to the Office for consideration. Failure of an
applicant to comply with this requirement can result in the patent being
held unenforceable.]
4. Do the standards governing novelty (35 U.S.C. 102) and obviousness (35
U.S.C. 103), as applied by the PTO and the Federal courts, accurately
reflect inventive activity in the field of software design and development?
[Note: If responding "no" to this question, please provide your suggestions
on standards that could be used to demonstrate which software innovations
should be viewed as "new" and "non-obvious" to a person of ordinary skill in
the field of software design and development.]
5. Should implementing a known process, technique, system or method of doing
business on a computer be viewed as being novel and non-obvious if, but for
the use of software, the overall process, technique, system or method is
well known?
6. In what ways can the PTO change examination procedures to assess novelty
and obviousness of software-related inventions? [Note: The following
questions are not intended to restrict comments on ways the PTO can improve
the examination process, but are offered only as a sample of possible
changes to the examination process.
- Should the PTO require patent applicants for inventions related to
software to conduct a search of prior art before filing a patent
application, and to include in their application copies of relevant
prior art documents along with a detailed explanation that points
out how the invention claimed in the application is distinguishable
over the supplied references? [Note: This would make the "special
accelerated examination" practice described in MPEP 708.02 VIII
standard practice for patent applications on software-related
inventions.]
- Given the difficulties associated with examiners assessing
procedures from all fields of technology that have been implemented
on a software-based system, should the PTO require patent applicants
to prove that their inventions are distinct over the prior art aside
from the implementation of the process on a computer?
- Should the PTO be permitted to establish that a software-related
invention is not novel or is obvious using a lower standard of proof
than for other areas of technology (e.g., a standard less than prima
facie)?
A second topic related to patent examination standards and practices relates
to the problem of effectively and meaningfully disclosing software-related
inventions in patents and other printed publications. To fulfill their
statutorily defined function, patent documents must effectively teach a
person of ordinary skill in the relevant field of technology how to make and
use the invention that is protected by the patent. With respect to patents
on software-related inventions, this means that the patent must disclose
enough information to enable the software programmer of ordinary skill to
recreate the invention protected by the patent claims. In practice, several
concerns have been identified. For example, some have questioned the
"disclosure" value of computer program listings that are often included with
patent specifications, given the significant administrative problems these
listings create for the PTO and the widely divergent manner in which
software is written. Others have questioned how best to describe
software-related inventions in general, standardized terms (e.g., not
through program code listings). In view of these points, the PTO invites
public input on the following series of questions regarding disclosure
requirements for software-related inventions.
7. What are the most effective ways to describe software (e.g., pseudocode,
flowcharts, etc.), and how can they be implemented through the disclosure
requirements for patent applications?
8. What difficulties do patent applicants face in complying with existing
disclosure requirements (e.g., enablement, description, best mode) for
software-related inventions?
9. Should the PTO require patent applicants to conform to a standardized
disclosure format for applications filed on software-related inventions?
10. How should the PTO handle the submission of computer program code
listings? Should the PTO require submission of program code listings?
Should they require submission of code listings in machine readable format
only? Should program code listings be included in patent documents or
should they be made available only through a publicly accessible database?
What hardships would patent applicants face if these requirements were
imposed?
11. Are current rules governing the submission of drawings impeding the
effective description of software-related inventions, and if so, what
changes should be made? [Note: Rule 96 (37 CFR 1.96) governs the submission
of computer program listings].
12. What difficulties might patent applicants face if they were required to
fully satisfy the disclosure requirements of 35 U.S.C. 112, 1st paragraph
(i.e., enablement, description, best mode), without reliance on computer
program listings?
Topic C: Significance of and protection for visual aspects of
software-related inventions
Date of Hearing for Topic C:
February 11, 1994; 2:00 p.m. to 5:00 p.m.
Location for Hearing: Marriott Crystal Forum1999
Jefferson Davis Highway
Arlington, Virginia
This topic addresses the question of design patent protection for computer
screen elements (e.g., icons and other user interface elements), and the
significance of screen elements in the context of patentability (utility) of
software-related inventions.
Protection of the visual elements of software, particularly computer screen
displays and images, is very important to the software industry. Recently,
questions have arisen whether design patents can be used to provide
protection for such elements. As way of background, a design patent
provides protection for only the appearance of an article, not for its
structural or utilitarian (functional) features. See, 35 U.S.C. 171. This
is in contrast to a "utility" patent that provides protection for new,
useful and non-obvious products, processes, machines, and compositions of
matter. In the context of software, some have argued that design patents
could provide much needed protection for the visual elements of screen
displays that give programs their distinctive "look and feel."
The question of design patent protection for computer screen displays or
images has been raised in a series of recent cases before the Board of
Patent Appeals and Interferences (Board). See, Ex parte Tayama, 24
U.S.P.Q.2d 1614 (Bd. PA&I. 1992); Ex parte Donaldson, 26 U.S.P.Q.2d 1250
(Bd. PA&I. 1992); Ex parte Strijland, 26 U.S.P.Q.2d 1259 (Bd. PA&I. 1992);
Ex parte Donoghue, 26 U.S.P.Q.2d 1266 (Bd. PA&I. 1992); and Ex parte
Donoghue, 26 USPQ2d 1271 (Bd. PA&I. 1992). The Board held in each of these
cases that screen displays, standing alone, are not statutory subject
matter.
The Board concluded that, as claimed and described, the designs were merely
pictures, and that "a picture standing alone is not protectable by a design
patent." The Board's conclusions are consistent with judicial precedent that
treats pictures standing alone as not being statutory design subject matter.
This precedent points out that the factor that distinguishes subject matter
eligible for design patent protection from a mere picture or surface
ornamentation per se (i.e., abstract designs) is "the embodiment of the
design in an article of manufacture."
Note that, in dicta, four of the Strijland panel members indicated they
would have concluded that statutory subject matter was present if certain
threshold requirements were met. These are: (1) the specification as
originally filed described and claimed the icon as a design for a programmed
computer system; (2) the specification included drawings depicting the icon
displayed on the monitor of a programmed computer system and (3) the
specification explained how the icon was an "integral and active component
in the operation of a programmed computer displaying the design."
The Board decisions leave open the question of the threshold requirements
for the protection of screen displays. To assist the Office in evaluating
how to proceed in light of these decisions, public comments are invited on
the following series of questions:
1. Should design patent protection be available for screen displays and
other visual elements of computer software (e.g., should the PTO adopt the
suggestion of the Board in the Strijland opinion that, if properly
presented, screen displays can be statutory subject matter under 35 U.S.C.
171)?
2. If your answer to 1 is "yes" then:
(a) Should the Office adopt the threshold requirements for statutory
subject matter set forth in Strijland? What alternatives to those
requirements would be consistent with current statutes, regulations
and case law?
(b) Would adoption of the Strijland threshold requirements require
more detailed design application specifications in order to meet the
description, enablement and best mode requirements of 35 U.S.C.
112, paragraph 1?
(c) Would adoption of the Strijland threshold requirements affect
the patentability of design applications claiming type fonts
designs? Are type fonts distinguishable from screen displays for
the purposes of 35 U.S.C. 171?
(d) What is the article of manufacture that can be considered
ornamented by icons, screen displays, menus, dialog boxes, etc., and
how can these articles be illustrated to comply with 37 CFR 1.152?
3. What protection would design patents for screen displays provide that is
not already provided by copyright and trademark law?
4. Have you or your organization encountered situations where copyrights or
trademarks have failed to provide adequate protection for visual elements of
software that could have been addressed through use of design patent
protection?
5. Are images displayed on a television screen legally distinguishable from
the same image displayed on a computer monitor?
6. Does a description in a specification indicating how a displayed image is
an "integral and active component in the operation of a programmed computer
displaying the design" provide a workable line between statutory and
non-statutory design subject matter?
A second facet of the discussion of visual elements of software is the
significance of those elements in evaluating whether a software-related
invention is deserving of utility patent protection. Specifically, how
should visual elements of a software-related invention be evaluated, in the
context of the invention as a whole, during examination and for judicial
assessments of validity? The focus of this question is not whether the
software-related invention should be eligible for protection under the
utility patent law (for discussion of this question, see topic A, above).
Rather, it is focused on the significance of visual elements of software in
determining whether a patentable improvement has been made to a previously
known process or article of manufacture. To assist this discussion,
consider each of the following questions in the context of two machines,
each having multiple hardware components and one software component that
guides the operation of the machine. The only difference between the two
machines is that the "new" machine employs different visual display elements
in its software component.
7. Should the "new" machine be considered "novel" in view of the different
visual elements used in the software component?
8. If viewed as making the machine as a whole "novel", should the visual
display elements of the "new" machine justify a conclusion that the product
as a whole could be non-obvious to a person of ordinary skill?
9. If you answered yes to questions 1 or 2,
(a) Which field of technology should be used to determine the
ordinary level of skill for assessing the question of obviousness
(e.g., software programming, software interface design, field of
technology for the machine, other) ?
(b) How should the visual display elements be evaluated (e.g., ease
of use, functions they provide, etc.)?
(c) What aspects of the visual display should be compared and/or
considered?
III. Guidelines for Oral Testimony
Individuals wishing to testify must adhere to the following guidelines:
1. Anyone wishing to testify at the hearings must request an opportunity to
do so no later than five days prior to the date of the hearing at which they
wish to testify. No one will be permitted to testify without prior
approval.
2. Requests to testify must include the speaker's name, affiliation (if
any), phone number, fax number (if available), mailing address, and the
questions in each topic that the speaker intends to address in his or her
testimony.
3. Speakers will be provided between 7 and 12 minutes to present their
remarks. The exact time allocated per speaker will be determined after the
final number of parties testifying has been determined.
4. Speakers must provide a written copy of their testimony for inclusion in
the record of the proceedings no later than the last date of the hearings at
which they are testifying (e.g., either January 27 or February 11, 1994).
5. Speakers must adhere to guidelines established for testimony. These
guidelines will be provided to all speakers no later than two days prior to
the date of the hearings.
A schedule providing approximate times for testimony will be provided to all
speakers no later than the morning of the day of each hearing. Speakers are
advised that the schedule for testimony will be subject to change during the
course of the hearings.
IV. Other Information
For information regarding accommodations in the San Jose area, or for
information regarding the San Jose Convention Center facilities, individuals
can contact Joseph R. Hedges of the Office of Economic Development of the
City of San Jose. Mr. Hedges can be reached by phone at (408) 277-5880; by
fax at (408) 277-3615, or by mail addressed to 50 West San Fernando Street,
Suite 900, San Jose, California 95113.
Bruce A. Lehman
Assistant Secretary of Commerce and Commissioner of Patents and Trademarks
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