New USPTO Test Could Limit Software-Based Patents

bizwriter writes "The high tech industry has been waiting for a Supreme Court decision in the Bilski case to decide fundamental questions, like when you can patent software. But there's a new test from the Board of Patent Appeals and Interferences (PDF) that just became precedential, meaning that it offers new grounds on which the US Patent and Trademark Office can deny patents on machines that use mathematical algorithms."

Comments

Re:Simple solution

[Sir_Lewk]

Well since all software is math, this would effectively ban all software patents.

Its a little too late...

[cosm]

Sure, the patent office has it rough, sorting a gajillion [technical term] applicants all wanting a patent for their "unique idea", with the majority really just wanting a foothold for litigation riches. Don't get me wrong, there are definitely honest attempts at securing one's interests and not getting your own pride and joy "unique idea" stolen, but I'll be damned if the USTPO hasn't awarded some of the dumbest, most wide-ranging generalizations to companies that patent spam thousands upon thousands a year. The latter mentioned issue has been going on long before the dawn of the digital, so I feel its too late to correct the problem in the current system.

Re:Its a little too late...

[rolfwind]

and many others want to have a portfolio for defensive purposes.

This alone speaks to the brokeness of the system.

Re:Its a little too late...

[Halo1]

government resources that could have been spent on actually useful stuff.

Where have you been?

In a world that's not ruled by Faux News.

Re:Its a little too late...

[arose]

Instead of all of these technology companies making their knowledge trade secrets, they sign cross-licensing agreements so that both companies involved can use the other's research to make their own products better.

Cartel much?

Re:Everything?

[Nadaka]

Probably? Reworked? All algorithms are already mathematical formulas.

Re:Simple solution

[GrantRobertson]

As eloquently illustrated here: http://xkcd.com/435/, everything is math. So, the question, as always is where does one draw the line. There is no reason to throw the baby out with the bathwater.

Lawyering

[burnin1965]

Definitely a move in the right direction to address the now prophetic "untold consequences" foreseen by Judge Archer and Judge Nies in their dissenting opinion in In Re Alappat, No. 92-1381 (Fed. Cir. July 29, 1994).

Unfortunately, as with the majority decision in the 1994 Tektronix appeals case, the tests provided to determine patent-ability of software algorithms continues to leave the door wide open to incessant lawyering not for the purpose of upholding the constitution and promoting "the Progress of Science and useful Arts".

No, instead we will continue to waste investment resources to stifle competition in the name of profit margins and monopolies.

Most people likely will not read the dissenting opinion so I'll quote the conclusion from the dissenting opinion here with emphasis added so others can see the prophecy for themselves:

The majority's holding is dangerous in the following way. First, it reasons that one can obtain a patent for a discovery in mathematics as long as some structure is formally recited on the face of the claim. Under this aspect of the holding, many of the requirements for patentability other than "newness," such as nonobviousness, make no sense and cannot be meaningfully applied. Thus, mathematical patents will be easier to obtain than other patents. Moreover, the patent law will now engage in the charade wherein claims directed to a particular method of calculating numbers (for use in a computer) are unpatentable, but claims directed to a computer (performing a particular method of calculating numbers) are patentable. (Mercifully, the majority leaves open the possibility that a claim reciting structure on its face can still be rejected under 101. The majority says that this will happen where the claim reciting structure on its face is merely a "guise" for a claim to a mathematical process. Although the majority finds that Alappat's claim to a rasterizer is clearly not a "guise" for a discovery of a mathematical process, the majority does not describe in detail how one distinguishes in general a "true" apparatus claim from an apparatus claim in "guise." Presumably, the way this is done is to determine what is the invention or discovery for which the patent applicant seeks an award of patent, and then to determine whether that discovery is the kind the statute was enacted to protect, as this dissenting opinion does.)

Second, the majority accepts the argument that all digital electronic circuitry is statutory subject matter when it performs a mathematical operation, and it is all equivalent when the particular mathematical operation is the same. Under this aspect, the mathematical patents will create an enormous scope of technological exclusivity. The lack of meaningful examination and the breadth of exclusive rights conferred by patents for discoveries of bare mathematical operations are repugnant to Congress's careful statutory scheme for the promotion of the useful arts.

As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat's "rasterizer." And the Supreme Court has in its decisions required it so. Alappat's claimed discovery is outside 35 U.S.C. 101, and for this reason I would affirm the board's rejection. I dissent from the majority's decision on the merits to the contrary.

Why patent and not copyright?

[AP31R0N]

Please don't mod me a troll for asking an honest question. IANaIPL. If i had the answer i wouldn't be asking.

Why allow software to be patented instead of copyrighted?

- Patents should be for THINGS (concrete stuff).
- Copyright should cover TEXT (abstract stuff).

It make sense to me that you should be able to protect the way YOU managed to execute some process, but not the idea of being able to DO the process at all. It seems to me that software companies are trying to patent vehicle direction input devices (as a concept) rather than just 'our particular design for a steering wheel'(a specific implementation).

Seems to me that these systems should exist to prevent others from stealing your specific work, the result of *your* labor; not to prevent others from engaging in the same line of business. Which seems to be the point of much of software patenting.

And why allow it to be patented instead of having it copyrighted?

Am i missing something?

Tangent/Rant:

If the intent of copyright and patenting is to encourage innovation, i think it has failed. i have tons of doodles and outlines for things i'd like to see on the market or share. But when i look at what would be involved... i'd rather do anything else. Wash dishes, scoop the litter box or watch TV... than hire a lawyer and go through the years of waiting, piles of paper work and enormous expense of dealing with the nightmare of IP. Even if i do it all and do it all correctly it could still be taken from me by a better paid lawyer.

Re:Why patent and not copyright?

[mea37]

Attempting to define a patent in overly-broad terms is not unique to software. The PTO just doesn't seem to be very good at defining it in the context of software yet.

I think copyright protection for software is a poor fit. Copyright is a good fit for creative/expressive content (or at least, it would be if it weren't so messed up in its current legal form); but program code is functional in nature, and I don't think copyright works very well for that.

The application of copyright to software is IMO a pragmatic decision to make it possible to "sell" or "license" software to end users for profit. I think the principle is a stretch.

Copyright also has drawbacks in terms of how much protection it really offers. Once I know how your software works, I can write source code that works exactly the same way and copyright would not protect you. You talk about not getting protection if I can execute a process in a different way, but copyright wouldn't apply even if I execute it the same way you did, so long as I wrote my own code to do it.

That alone doens't speak to whether patents for software are appropriate, but it is why there is interest in the subject. The question I think remains poorly-addressed, even with this decision, is: in a world where algorithms are increasingly applied by configuring a general-purpose processor rather than by building some special device, how do you properly distinguish the algorithm (clearly shouldn't be patentable) from the innovative application thereof?

Rather a limited decision

[russotto]

This patent used the common tricks of "An ordinary computer implementing 'insert unpatentable material here'" and "A computer-readable medium containing code implementing 'insert unpatentable material here'", and while the board rejected both, it did so with very nitpicky analysis (particularly in the second case).

What the board should have done is categorically rejected them, particularly the second one. A claim like "A computer-readable medium containing X" should be no more valid than a claim of "A human-readable medium containing X". And the latter case would make the patent applications themselves patentable, which is obviously absurd.

Re:I don't buy that argument.

[Halo1]

The natural world may only be approximated using a mathematical framework (at least at present), but the devices that we create based on that knowledge is a direct application of the mathematical models.

No, they are a direct application of the laws of physics (and its manifestation in chemistry, biology, ...). These laws and their applications are described by mathematical models because those are a lot more efficient to work with (and to automate) than equivalent natural language descriptions, but the underlying novel insights are based on experimentation in the real world, not regarding maths (maths are just used to describe/generalise the observations from said experiments).

So say you have an algorithm, and claim that it is nothing more than math. You can implement that algorithm in a programming language, convert it to machine language for a general purpose processor, implement it as a giant logic table in an FPGA, implement it using TTL logic circuits, or make a custom ASIC of the same logic. Many algorithms, such as signal processing, can be implemented to within a desired precision with either digital or analog filters. There are also mechanical implementations of the same ideas - mechanical calculators are obvious, but even simple things like automatic valves may be more robust in for certain applications than converting to the electronic/digital realm and back again. At what point do you draw the line and say that it is no longer just a mathematical algorithm?

There are definitely grey areas and there is no way to draw a 100% clear line (even if you don't consider the issue of software patents at all; it's simply the nature of civil law), but as far as I am concerned the cases that you mention are not necessarily hard to classify.

Whether you implement an algorithm in software or in an ASIC or in an analog filter should be irrelevant. If your contribution only lies in the algorithm, then this is what should be considered for testing the patentability requirements. If you also contribute a completely novel way of building an ASIC or an analog filter, then you'd be crazy to only claim that novel hardware in combination with a particular algorithm rather than the hardware on its own (since the latter would cover any usage).

Conversely, if you figure out that you need 2 parts of Pb and 3 parts of Na to make 2 parts of Au, the fact that you can express this using a mathematical formula does not render this knowledge unpatentable (just like describing it in English does not render it unpatentable, even though text cannot be patented -- what you are patenting is not the description, but what is described). And performing this chemical reaction under control of a computer program would not render this process non-infringing simply because the basic knowledge is described in the form of a computer program and applied under computer-control.

There are other examples, such as the psycho-acoustic model used by MP3 compression. While MP3 compression is usually implemented completely in software and a psycho-acoustic model is a mathematical model, this model is based on new knowledge about the physical world and hence a patent on that would not necessarily be a math patent (of course, there are other problems that pop up in this case, such as interoperability/network effects).

Another example is anti-lock braking: it's virtually always performed under software control, but the actual invention is that by measuring the heat caused by the friction between the wheel and the brake you can determine whether you are skidding or not (and again, whether you perform this process via software, hardware or anything else is irrelevant as to whether or not it infringes, as long as the patent claims are drafted properly).