Note from [link_user name=”matt.levy”]Matt Levy[/link_user]: The Alice v. CLS Bank case, which is being argued at the U.S. Supreme Court later this month, has invigorated the debate over the patentability of software.
The following guest post is by Dana Rao, Vice President for Intellectual Property and Litigation at Adobe, and I’m thrilled to be able to publish it. Dana gets at the fundamental conflict in the debate in a way that’s very easy to understand.
It’s a little longer than our typical pieces, but I hope you’ll read the whole post. It’s worth your time.
A few weeks ago I was asked to speak at my daughter’s 8th grade honors science class, regarding the weighty topics of “patents and innovation.” They are in the middle of a unit on inventions and they have to invent something as part of that class. As I prepared my slides on interesting topics (to me) like “how Morse used the existing ideas of an electromagnet to solve the problems of instantaneous communication as illustrated in the beacon scene of the Lord of the Rings,” the thought occurred to me that the principles from these legendary inventions illustrate why the software patentability debate of today is disconnected with our country’s history of innovation.
Samuel Morse did not discover the abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More that running an electric current through a wire wrapped around iron transforms the previously nonmagnetic iron into a very powerful electromagnet. Others had discovered this concept (though it was still a recent discovery in 1852). Morse combined the principle of electromagnetism with his own, intangible, idea, that you can use a code to deliver messages that would reduce the number of wires required to transmit the message, and print the result on paper. Other solutions required many wires, or used moving needles in scopes at the end to reveal the message. Morse’s invention increased the practicality of using electromagnetism to solve the problems of instantaneous communication.
He first had an idea, the use of electromagnetism in a particular way, and then had an implementation, one that fit the medium of his idea, in this case, wires and metal and ink. Samuel Morse’s code was an intangible concept indeed, but was deemed patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. even in 1852, as implemented in his telegraph machine, for telegraphic purposes.
The main thrust of the argument against the patentability of software is that a software program, like an algorithm, describes nothing more than an “abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More.” This argument has as its corollary the notion that patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. subject matter only can be found in an invention in something “tangible.” Patents for intangible things (like an algorithm implemented in software) are conflated with patents on purely abstract ideas (like “time travel” or “electromagnetism”), and therefore, neither category should be patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature.. In reality, though, all ideas and inventions are at their very core intangible concepts. It is when the inventor actually implements an idea in the medium best suited for its execution that the invention enters the realm of patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. subject matter. Software is no different than any other medium, and inventions made in software are as deserving of patent protection as inventions anywhere else.
Every patent has a similar story as Morse’s. In today’s world, the medium in which many of our inventions manifest themselves is software. These software-implemented inventions typically are executed by a general purpose processor, coupled to a general purpose memory, often coupled to a network. Instead of being implemented in software, these inventions could be constructed using specialized circuitry, or directly in silicon, or by some specific network topology to accomplish their means. However, there would be nothing patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. about those implementation mediums (circuitry, silicon, or network topology) in the fulfillment of the inventions. Nor was there anything patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. about the mediums of Morse’s iron, wire, and ink, or Thomas Edison’s carbon, electricity, and glass. Instead, it was the ideas animating the use of those mediums to solve their problems (the “algorithms” as it were), that made those discoveries patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature..
If all inventions are intangible at their core, when should an idea be considered to be unpatentably abstract? In the seminal case of O’Reilly v. Morse, the Supreme Court found Morse’s eighth patent claimThe section of a patent that describes the legal scope of the invention. Patent claims are supposed to establish the boundaries of the patentee’s entitlement to exclude. Under peripheral claiming as practiced in the U.S., claims establish the outer bounds of the patentee's privilege to exclude others. For further reading, see Burk and Lemley, Signposts or Fence Posts., for the use of electro-magnetism however developed for printing letters at any distances, to be drawn to an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More, and thus unpatentable. Morse, for that one claim, explicitly stated his invention was not bound by the details of his specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification.. In finding this claim unpatentable, the Court articulated the basis on which to determine whether an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More is patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. subject matter:
Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more.
The Court stated that, to determine whether an idea is abstract, the focus should be on whether the invention is disclosed and claimed fully and exactly. An inventor can secure a patent in any art on any useful result, the Court says, as long as the exact means for accomplishing that result is specified. The nature of the invention is irrelevant.
And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.
The key question to understanding whether an idea is abstract, the Court says, is whether or not the inventor described the process in sufficient detail to allow others to achieve the same ends without infringing the patent if they use substantially different means.
We see so often under current law that the “claims are not bound to the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification..” But why shouldn’t they be? Samuel Morse’s code was found to be patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. because, in his other claims which lacked the explicit disclaimer of linkage to his specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification., the Court limited their breadth to his disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection.. This makes sense. There is no sound policy reason to grant monopolies to people for implementations beyond the scope of their invention. Unfortunately, patents today are allowed to have claim scopes defined by their relation to the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. (or, more accurately, the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. found at the time of examination), and are not grounded by any of the details in their specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification.. Breaking the connection between claims and the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification. has resulted in the rise of vaguely drafted patents that are the source of the patent trollAn entity in the business of being infringed — by analogy to the mythological troll that exacted payments from the unwary. Cf. NPE, PAE, PME. See Reitzig and Henkel, Patent Trolls, the Sustainability of ‘Locking-in-to-Extort’ Strategies, and Implications for Innovating Firms. suits. With no meaningful constraints imposed by the description of the invention itself, the patent trolls are free to make their abstract claims apply to all.
In response, many blame software itself as the cause of these meritless suits, and invoke Section 101 to simplistically assert that software related inventions are just too abstract to be patented. But from both a technical and a legal perspective, this argument of convenience is plainly not correct. Software is merely the medium by which the inventions of today are implemented. If an invention, in software or in any other field, is for a “useful result” and specifies the means described in sufficient detail so full and exact that anyone skilled in the science can produce the same result, the invention should be considered to be more than an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More. If such disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection. is lacking, then the claim is invalid. It is either for an idea that is too abstract, or described too abstractly.
If we bring our Section 112 jurisprudence in line with the doctrine articulated by the Morse Court, I believe we can rid our system of abstractly drafted patents. And stricter application of Section 103 will further curb the grant of software patents whose sole claim to noveltyA requirement for patentability, based on 35 U.S.C. § 102(a) of the Patent Act. An invention cannot have been disclosed, offered for sale, or used publicly more than a year before seeking a patent. is that they implement ancient concepts in the new medium of software. Both of these measures will appropriately shift the patentability focus from the medium to the method disclosed.
The teenagers in that 8th grade science class told me all sorts of cool ideas (which I can’t disclose), and most typically the medium of their inventions was software. Let’s ensure the patent system continues to protect the inventors of the next generation, in whatever medium they choose to invent.