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To read comments to this article, go here
Slip, Sliding Away on Software Patents
Thursday, March 17 2005 @ 02:52 PM EST

You know how folks in Europe keep crossing their hearts and hoping to die that in the EU, nothing like the US system will ever be allowed and that there is no way software itself can ever be patented? In fact, supposedly that is the rule right now. So how does the European Patent Office (EPO) keep issuing what are obviously software patents?

Well, kiddies, take a look at this decision, by the Technical Board of Appeal, on an appeal by, sad to say, IBM, in which the appeal board found a way to say that maybe computer programs can be patented after all, even under the current rules. It's found in the EPO's journal for October of 1999. I thought you might like to see the EU equivalent to the US case, State Street Bank & Trust v. Signature Financial Group. Both in the US and in Europe, the beginnings were small and everyone said software couldn't be patented except in very restricted circumstances, and then the slide begins.

You might enjoy looking at the US process, explained thoroughly here in this USPTO page on 2106 - Patentable Subject Matter -- Computer-Related Inventions [R2] -- 2100 Patentability and to view some practical examples in their Examination Guidelines for Computer-Related Inventions to see where the US draws the line, such as it is, and the 1995 press release that announced them:

"We recognize the critical importance of effectively protecting software innovation," said Bruce A. Lehman, Assistant Secretary of Commerce and Commissioner of Patents and Trademarks. "The guidelines are the first step in our efforts to make the patent system more receptive to software innovation. Our guidelines will enable us to satisfy our mission of issuing valid and enforceable patent rights," he continued.

First step turned out to be a very accurate phrase, I'm sure you'll agree.

Here is an excerpt from the 2106 Patentable Subject Matter page:

As cast, 35 U.S.C. 101 defines four categories of inventions that Congress deemed to be the appropriate subject matter of a patent; namely, processes, machines, manufactures and compositions of matter. The latter three categories define "things" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed). See 35 U.S.C. 100(b) ("The term 'process' means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.").

Federal courts have held that 35 U.S.C. 101 does have certain limits. First, the phrase "anything under the sun that is made by man" is limited by the text of 35 U.S.C. 101, meaning that one may only patent something that is a machine, manufacture, composition of matter or a process. See, e.g., Alappat, 33 F.3d at 1542, 31 USPQ2d at 1556; Warmerdam, 33 F.3d at 1358, 31 USPQ2d at 1757 (Fed. Cir. 1994). Second, 35 U.S.C. 101 requires that the subject matter sought to be patented be a "useful" invention. Accordingly, a complete definition of the scope of 35 U.S.C. 101, reflecting Congressional intent, is that any new and useful process, machine, manufacture or composition of matter under the sun that is made by man is the proper subject matter of a patent.

The subject matter courts have found to be outside the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena. While this is easily stated, determining whether an applicant is seeking to patent an abstract idea, a law of nature or a natural phenomenon has proven to be challenging. These three exclusions recognize that subject matter that is not a practical application or use of an idea, a law of nature or a natural phenomenon is not patentable. See, e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874) ("idea of itself is not patentable, but a new device by which it may be made practically useful is"); Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94, 40 USPQ 199, 202 (1939) ("While a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be."); Warmerdam, 33 F.3d at 1360, 31 USPQ2d at 1759 ("steps of 'locating' a medial axis, and `creating" a bubble hierarchy . . . describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic 'abstract idea' ").

Courts have expressed a concern over "preemption" of ideas, laws of nature or natural phenomena. The concern over preemption was expressed as early as 1852. See Le Roy v. Tatham, 55 U.S. 156, 175 (1852) ("A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right."); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 132, 76 USPQ 280, 282 (1948) (combination of six species of bacteria held to be nonstatutory subject matter). The concern over preemption serves to bolster and justify the prohibition against the patenting of such subject matter. In fact, such concerns are only relevant to claiming a scientific truth or principle. Thus, a claim to an "abstract idea" is nonstatutory because it does not represent a practical application of the idea, not because it would preempt the idea.

Of course, in the IBM case in Europe, the appeal board had to do quite a bit of contorting and dancing around to accomplish the slide, but in the end they decided this:

"In the view of the Board, a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the 'normal' physical interactions between the program (software) and the computer (hardware) on which it is run.

”'Running on a computer' means that the system comprising the computer program plus the computer carries out a method (or process) which may be of the kind according to claim 1.

”'Loaded into a computer' means that the computer programmed in this way is capable of or adapted to carrying out a method which may be of the kind according to claim1 and thus constitutes a system (or device or apparatus) which may be of the kind according to claim 14."

I know you like me to explain legalese, so here goes: this means that in the EU, you can't patent computer programs, except when you can, which is whenever they let you, so you might as well try. And so everyone did try, and that brings us to the present. Please don't let anyone tell you that there will be no slide toward a US-style patent system. There already has been such a slide, and here you see how it all began. The IBM decision's discussion of "technical effect", by the way, is followed closely in the European Commission's Directive on Patentability of Computer-implemented Inventions, which attempts to codify the same meaning for "technical contribution."

And for the dewy-eyed naifs among us, here's a report on the USPTO's February Patent Law Harmonization Meeting, an "exploratory meeting" as they call it "to discuss the future of substantive patent law harmonization."

And here's their Statement of Intent:

Statement of Intent

1. The Participants of the Exploratory Meeting of Interested Parties Concerning the Future of Substantive Patent Law Harmonization (“Participants”), held February 3-4, 2005, in Alexandria, Virginia, wishing to promote and facilitate progress on certain key issues under consideration in the World Intellectual Property Organization (WIPO), agree to convene future meetings to consider:

(i) substantive patent law harmonization issues, notably the Trilateral “first package,” as developed by the United States Patent and Trademark Office, the European Patent Office and the Japan Patent Office and set forth in WIPO Document WO/GA/31/10; and

(ii) issues with regard to intellectual property and development, including proposals for a WIPO Development Agenda and proposals relating to genetic resources,

with a view to seeking a common basis for further discussions in WIPO.

2. The Participants agree that the following parties will be invited to participate in the future meetings: all Members of WIPO Group B, member States of the European Union, the European Commission, Member States of the European Patent Organization, and the European Patent Office.

3. The Participants further agree to have regular, intersessional meetings of subgroups to address the issues referenced in Paragraph 1.

February 5, 2005

Finally, there is a transcript of an online chat with USPTO experts which yields the following:

yunsong (Feb 24, 2005 2:46:58 PM)
What are the common mistakes the independent inventors intend to make when they file a patent application without using patent attorney/agent?

USPTO Expert (Feb 24, 2005 2:48:30 PM) (edited answer)
First, the most common mistake is not doing your homework by understanding what is needed in an application. Our web site, http://www.uspto.gov/ has a wealth of information. Second, the claims are usually written as what the invention does, how it works or what it is intended to do rather than how it is made. It is important to clearly define what the invention is. Finally, the written descriptions that most often cause trouble are those that don't clearly describe their invention. You can contact our Inventors Assistance Center at 1-800-786-9199 for additional information. . . .

Harry (Feb 24, 2005 3:00:27 PM)
Whom to contact for unanswered questions ?

USPTO Expert3 (Feb 24, 2005 3:01:11 PM)
You can contact the Inventors Assistance Center at 1-800-786-9199 and also review our previous on-line chat, your question may already have been answered. http://www.uspto.gov/web/offices/com/iip/transcripts.htm . . .

beachgirllookingforaball (Feb 24, 2005 3:09:29 PM)
what do you mean by non-obvious

USPTO Expert3 (edited answer)
Obviousness is covered by 35 U.S.C 103. Under this statute, a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. In a rejection under this statute, it is necessary to modify a single reference or to combine it with one or more other references. The term "obvious" applies to this modification/combination. If the modification/combination is obvious, then the rejection is proper.

To determine if a modification/combination is obvious, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. See MPEP 2142.

More resources on their how to search patents and Patents Organization chart pages. And here's the page where they provide the manual, section by section (see also this revision to the manual [PDF]), on how they decide whether to grant a patent or not. What? You didn't think they just rubber stamp them all, did you? Or did you?


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