Software patents have come of age, and the various factions of the
software industry are reacting to this relatively new phenomenon with
wonder, disbelief, excitement, relief, frustration, and downright anger,
depending on their particular points of view. Let's try to shed a little
light on this development.
Not too long ago, software was believed to be unpatentable because
software was viewed as a mere idea, or an algorithm. As such, the theory
went, it could not be a "machine" or a "process" that could be eligible
for patent protection. The commissioner of patents took that position in
a landmark 1981 Supreme Court case, in attempting to deny patent
protection to a rubber-curing device invented by a Mr. Diehr and his
coinventors.
The Diehr device was a rubber-curing mold with an internal thermometer
and a timer. A computer program ran iterative calculations against a
time-honored and well-known curing-time algorithm (the Arrhenius
equation)--based on time and temperature inputs--and when the optimal
cure time had elapsed, the program signaled to a spring component to cut
off the heat and throw open the mold.
The Supreme Court rejected the com-missioner's argument, finding both
that the device could indeed be patentable and that it was not
ineligible for patent protection simply because the mechanism
incorporated a computer program that executed a well-known algorithm. In
addition, the patent did not preclude others from using the Arrhenius
equation, the Court noted; it only prevented others from implementing
that equation as a part of a particular device (including a digital
computer as a control element) that cured rubber.
The 1980s accordingly saw a groundswell of software-based inventions,
especially as the contours and criteria of copyright protection
gradually revealed the inherent limits of that form of legal protection.
Patents, after all, can be far superior to copyrights. Copyrights
protect only against copying; patents provide protection against systems
that are created independently of the patented invention. Software
companies got the message.
Of course, there were (and are) problems. Perhaps the principal problem
lies in the examination methodology followed by the Patent and U.S.
Trademark Office. When a patent application is filed, the patent office
tries to determine if the invention is both "new" and "nonobvious." To
do so, it refers to the reference source of what is called "prior art"
that was the most accessible and available to it: the database of
previously issued U.S. patents.
Of course, there weren't many previously issued software patents with
which to compare new patent applications; therefore, many applications
matured into patents. To use a sports analogy, these applications were
like soft shots on an open net: any decent goalie would have made the
save, but without a defense, the applications sailed through.
Furthermore, many patent examiners lacked the needed familiarity with
software technology so as to be able to spot "old" or "obvious"
implementations.
Because the burden is on the challenger to show that an issued patent is
invalid because, for instance, the invention is old or obvious, many
recipients of patent infringement claims find that it's easier to pay
the $2 rather than fight. Owners of weak or questionable patents may
consequently try to gain low license fees from a broad constituency,
relying on the theory that a lot of money can be made by extracting a
small amount of money (in relative terms, the $2 parking ticket) from
each of a large number of people (e.g., everyone in the computer
industry that does X).
The Software Patent Institute (SPI), an Ann Arbor-based nonprofit
organization, was founded to provide both a forum for software patent
issues and an advocacy center for the reform and improvement of the U.S.
patent system relative to software. Support for the SPI comes from many
companies and organizations, including Microsoft, Lotus, Apple, DEC, and
IBM. The SPI has developed a prior-art database that is available to SPI
members and the patent office.
One of the more notable (or, depending on your viewpoint, notorious)
recent patents is Compton's New Media patent (Reed et al., no.
5,241,671, issued August 31, 1993), which is for a "Multimedia Search
System using a Plurality of Entry Path Means which indicate
Interrelatedness of Information." Widespread press reports have
characterized the patent as covering the very nature of multimedia
itself. That may be a bit hyperbolic, although the broadest claim does
cover a very broad search system for information stored in a combined
text-and-graphics form.
The patent office took the unusual step of initiating a reexamination of
the patent last December, prompted by an outcry from the burgeoning
multimedia industry. The Wall Street Journal of March 25, 1994 reported
that the Patent Office has issued and office action asserting that the
claims are invalid. Compton will no doubt respond to this decision and
attempt to keep some or all of its claims. In the meantime, the Patent
No. 5,241,671 remains in effect.
Another patent of note is the Billings patent (no. 4,714,989) for a
"Functionally Structured Distributed Data Processing System." Mr.
Billings has sued Novell for infringement of his patent, claiming
hundreds of millions of dollars are owed him for violation of his patent
rights. Billings claims, in effect, to be the father of client-server
computing, and an unbiased reader of his patent might conclude that the
patent office essentially agreed with this claim.
Both the Billings and the Compton's New Media patents were topics of
debate at some rather unusual public hearings held last December in San
Jose. Commissioner of Patents and Trademarks Bruce Lehman said the
hearings were held "in the high-tech heartland of America" to gather
comments about the software patent issue.
And comments were not in short supply. An Adobe spokesman asserted that
software per se should not be entitled to patent protection and that
such patents were effectively harming the health of the software
industry. Others claimed that the patent system, intended to foster
innovation and creativity, was actually stifling the progress it was
designed to encourage. Other industry representatives stated that patent
protection for software-related technology was crucial and that it was
improper to discriminate against software as a disfavored species of
computer-related invention.
Many pundits believe that some changes are in the works for the U.S.
software patent system and that if changes occur, they will probably be
changes for the better. Whatever one's opinions about the Billings and
Compton's New Media patents, there are indeed some very questionable
software patents out there, and the whole system profits when the patent
office denies protection to unworthy technologies.
It's unlikely that software patents will go away, despite the
protestations of some industry members. Look instead to see more gradual
and evolutionary changes (such as publishing patents before they issue),
as well as more effective examination mechanisms for separating the
wheat from the chaff.
Edmund B. (Peter) Burke is an attorney in the Corporate and Technology
Practice Group at Powell, Goldstein, Frazer & Murphy, a law firm with
offices in Atlanta and Washington, D.C.
**This column provides only generalized and anecdotal discussion of
legal issues and should not in any way be construed as legal advice.
Legal problems are inherently complex and require specific attention to
and analysis of the particular facts. Never rely on a general article
for guidance in a particular case.