Archive for May, 2010

Is Europe Going Soft on Software Patents?

Sunday, May 30th, 2010

In what some are viewing as surprising developments, both the European Board of Patent Appeals and the German Court handed down decisions favoring patent protection for software in Europe.  In the EPO, the European Patent Office’s Enlarged Board of Appeal this month issued a decision that refused a request by EPO President Alison Brimelow to reconsider the law regarding software patents, on the basis that the law is not divergent enough to warrant reconsideration. The EPO’s acceptance of software patents will therefore continue as it currently stands.   

In Germany, in a decision handed down on April 20 (number X ZR 27/07), an appeal court upheld a Microsoft patent on a FAT invention allowing for long name files while preserving backward compatibility with a file system that supported only short file names.  This decision overturned a lower court ruling finding the patent – EP 0618550 (based on US 5,758,352) — invalid.  

My thanks to Dr. John Collins at Marks & Clerk for his help with this posting.

Abstract Ideas Stored as Physical Data: Real or Abstract?

Saturday, May 29th, 2010

Well, since the Supreme Court is making us all wait for its verdict on Bilski, I thought I would explore (but far from resolve) a notion that has always fascinated and puzzled me – the concept of abstract ideas represented by real data. In order to get oriented in reality for this discussion, and avoid being completely lost in metaphysical analysis, let me posit two different types of inventions involving data – one where the data represents a real entity, and one where the data represents an abstract entity.

The first invention is a method of processing an x-ray image by obtaining an x-ray image, converting the image to a machine usable digital representation, and then processing the digital representation to remove noise in the image.  This is generally the subject matter of the invention found patentable on appeal in In re Abele and Marshall (CCPA) 1982, 684 F.2d 902, 214 USPQ 682.  In this first posited example, one can argue the following are true:

 1) the x-ray is real (after all you can kill people with them);

2) the machine usable digital data therefore represents a real entity;

3) the machine usable data takes the form of real signals or physical quantities in that it can be stored (as a charge, magnetic orientation, physical material, etc..), moved, processed and even detected with a scientific instrument.

4) the “data,” as disembodied from its physical representation, has an abstract character, in that it only represents a real entity and only has meaning when a human mind correlates the data to the physical entity it represents.

Now, let’s posit another example.  In this example the invention is a process for storing and searching machine usable data representing pure ideas, like the idea of “justice.”  In this example, one can argue the following are true:

1) the ideas are not physically real – they are abstract;

2) the machine usable digital data represents an abstract entity – i.e., the notion of “justice”;

3) the machine usable data takes the form of real signals or physical quantities in that it can be stored, moved, processed and even detected with a scientific instrument;

4) the “data,” as disembodied from its physical representation, has an abstract character as well, in that it only represents the abstract entity and only has meaning when a human mind correlates the data to the abstract entity it represents.

If we agree on the above observations, then the following is also true:

1) machine usable digital data representing either real or abstract entities is real and not abstract.  This data simply has to be real in order to be manipulated by a computing system.

2) real data can represent either real or abstract entities.

3) real data can be created, stored, moved and processed by a computer.

4) an invention that processes real data is real and not abstract.

5) an invention that processes real data is not performing “mental steps” as the human brain cannot store or process real data.

Another level of this same inquiry is whether a limitation that specifies the type of type of data is entitled to be recognized for the purpose of distinguishing a claim from the prior art.  As established by In re Abele, if the data represents a real entity (or at least is explicitly obtained from measuring or sensing a real entity) then the limitation is given weight as if the real data was a proxy for a corresponding real (physical) entity.  On the other hand, if the machine usable data represents an abstract entity, and the data is considered a proxy for the abstract entity, then this element of the claim could be considered abstract and therefore not entitled to be recognized as part of the claimed combination for the purpose of distinguishing the claim.  Of course we know that most of the time these limitations are given credit, as thousands or perhaps even tens of thousands of patents now in force claim inventions with these types of limitations. 

So, what are some of the types of abstract entities represented by real data?  Here are a few:

  • language —  language has meaning only in the minds of man, and not according to any law of nature
  • currency systems  — a currency system is an abstraction straight out of the mind of man, rooted in a common agreement to keep financial score using the same medium of exchange
  • man-made laws – laws that exist only by decree of politicians or legislative bodies do not exist in nature
  • contract rights – rights that represent an agreement between parties are also abstract in the sense they do not exist in nature

Let me close this posting with the following question, and possibly the question that  the Supreme Court struggled with in Bilski:  If I represent these abstractions with real data, are these abstractions now real for the purpose of patent protection?  I will do my best to provide some insight to this question in one of my upcoming postings.  No doubt the Supreme Court will soon give us some of their insight on this question as well.

Welcome to Patents4Software

Monday, May 24th, 2010

Welcome to my new blog on software patents.  It has been a long time since I started in the patent profession – I got my USPTO registration number in 1982 – and since then the debate and confusion over software patent protection, or at least the boundaries of that protection, has continued on.  It’s been a meandering journey through the 70’s, 80’s, 90’s and 00’s, featuring several early and by some accounts inconsistent Supreme Court decisions — Benson (1972), Flook (1978) and Diehr (1981), the copyright vs. patent wars (80’s), the flip-flopping of USPTO policy from anti-software, to pro-software and a little bit back again, and the largely progressive Federal Circuit jurisprudence notwithstanding the arguably backtracking “machine or transformation” test.  And let’s not forget the endless never-say-die opposition to software patents by the League for Programming Freedom and its European counterparts.  Yes, it has been over fifty years of a zig-zagging, one-step-forward, two-steps backward but ultimately forward-moving path to establishing patent protection for software, and it’s not over yet!  Of course none of the League’s predictions that the software industry would be destroyed by patents have come true.  Far from being destroyed by patents the industry has flourished into one of the US’s most important and innovate industrial sectors.  And it’s still as innovative as ever as cloud computing and mobile applications and myriad other new developments place unfathomable computing power literally in the hands of billions of people throughout the world. 

 So let’s get back to the future – where do we find ourselves now in this long, arduous legal journey?  Well, of course we are on the brink of what will no doubt be another seminal pronouncement by the Supreme Court in the Bilski case.  This time it will be a pronouncement on the patentability of business methods, and the odds are against business methods.  Many believe, and I can’t say I feel strongly the other way, that patent protection was conceived to protect the technological arts, not the business or finance arts, and any such expansion of statutory subject matter should be fully debated in the halls of Congress before it is imposed on the entire machinery of American business.

While it is a little late to predict what the Supreme Court will hold in Bilski since the decision is only hours or days away, I want to go on record, in my first blog posting, with my prediction.  So here is what I think the Supreme Court will hold:

  1. Congress intended that Title 35 protect the technological arts, not the business/financial arts, that the invention in question is not technological in nature, and are therefore non-statutory subject matter.
  2. To determine whether an invention is technological in nature, one must look at the nature of the innovation, not the form of the claim, much the same way patent exhaustion under Quanta Computer focuses on the “essential features” or “material parts” of a claimed invention to determine if the sale of an item exhausts the claims at issue.  As such, if the novelty of the invention lies not in its technological character, but rather its business/financial nature, then the invention is non-statutory even if claimed in terms of a computer system or computer process.  Accordingly, one cannot dress up a wolf in sheep’s clothing and side-step the ban on business method patents.
  3. On the other hand, technological innovations used to support business methods will remain patentable, so long as the nature of the innovation is technological.
  4. What exactly is “technological” and what is not will be defined in some manner but the exact contours of this definition will remain to be decided in future cases.
  5. Finally, the Federal Circuit’s “machine or transformation test” must include a technological arts requirement, and even then it not the only way to differentiate statutory from nonstatutory subject matter.

To find that methods of doing business are not patentable, the Court may in addition or the alternative invoke the well established prohibition on the patenting of abstract ideas or mental steps.  I hope, however, that it base its decision on these principles for at least two reasons.  First, a computer-implemented business process is no more abstract than many other technological software or data processing innovations that do merit patent protection.  For example, many data processing innovations meriting patent protection involve improvements in organizing, storing or processing various types of information that can all be said to involve some degree of abstraction at least in the sense that the data itself only describes or models a thing or concept that exists in the “real world.”  Secondly, for similar reasons I think the “mental step” analysis is also unproductive, since a computer can perform logic that is often identical to the mental steps that humans use to solve problems.  So to say that a computer software invention is nonstatutory because it replicates mental steps can, if taken to its logical conclusion, requires the outcome that many if not most computer software inventions are non-statutory.  Certainly, if one were to invent a computer system that could perfectly replicate the thought processes of a human it would be a phenomenal technological achievement, not nonstatutory subject matter!   So, the mental steps doctrine is problematic at best when used as a test for statutory subject matter in the realm of computer-implemented inventions.

 So, the next time you will hear from me is when Bilski is handed down, and that may be later today.