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| Authored by: Ian Al on Wednesday, October 17 2012 @ 05:56 AM EDT |
Fonar says that where the software doesn't contain the inventive concept and is
only part of the best way of carrying out the invention then just
disclose the functions of the software part of the invention. The reason is
that, in this circumstance, the software is a prior art, general purpose
component of the whole invention. It's just nuts and bolts.
This is
what the judge said:
As a general rule, where software constitutes
part of a best mode of carrying out an invention, description of such a
best mode is satisfied by a disclosure of the functions of the software.
This is because, normally, writing code for such software is
within the skill of the art, not requiring undue experimentation, once
its functions have been disclosed. It is well established that what is within
the skill of the art need not be disclosed to satisfy the best mode requirement
as long as that mode is described.
Stating the functions of the best
mode software satisfies that description test. We have so held previously and we
so hold today.
If the innovative concept is within the software
and is sufficiently innovative that it warrants a patent, then it is over and
above the skill of the art and is that on which the inventor wants a
monopoly.
Allowing just the disclosure of the functions claimed means
that the monopoly is on what the software does and not the innovative concept of
how the software does it.
The 'software patents' actually awarded are
not on the innovative concepts in the programs, but misapply Fonar and claim
just the functions resulting from executing programs with a processor. They are
not monopolies on the inventive concept, but a monopoly on the functions claimed
in the patent and achieved by executing the software containing the inventive
concept.
The effect of this is that the inventive concept in the
software cannot be replaced with another inventive concept that produces the
same monopolised function. It is not the invention that has been monopolised,
but the function flowing from the invention.
I did not cite the cotton
gin case law, but it is relevant to the same issues.
U.S.C. 35 §
101Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.
Thus a new and useful cotton gin might
be patentable as might a new and useful improvement to a cotton gin, but the
patenting of just the functions of a cotton gin would be gaining a monopoly on
the principles of all cotton gins, now and in the future.
For the same
reason, that demonstrates why awarding a monopoly on the functions of software
rather than the inventive concept in the software does not meet the requirements
of U.S.C. 35 § 101.
Inventors might point to the impossibility of
identifying the inventive concept in software such that it can be protected with
a patent monopoly. That is because the inventive concept is abstract ideas
expressed as a math algorithm using a mathematically valid computer programming
language.
The functions of software only become apparent when the
algorithms are executed by the processor, just as the patterns in the fabric
only become apparent when the Jacquard loom executes the instructions punched
into the cards to individually manipulate the warp threads. The lack of holes in
the card are symbols representing a raised warp thread and the holes represent
the lack of raising of the warp thread.
Even though the punched cards
represent instructions to be executed by the Jacquard loom, that does not make
it a direct equivalent to a general purpose computer. The computer only works
because it implements a universal math algorithm which mathematician Alan Turing
demonstrated could produce the result of any other valid math algorithm. This
PolR article explains that all computer programs that can be executed by a
general purpose computer processor have to be, in their entirety, math
algorithms. Look for 'Universal Turing Machine'.
Because programs
correctly written in computer languages are valid math algorithms, then they can
be compiled to equivalent instructions that can be executed by a general purpose
computer processor. Awarding a patent on an inventive concept in software would
award a monopoly on a particular math algorithm.
As I mentioned,
above, the patents purporting to be about software inventions pervert the
findings of Fonar by monopolising the claimed functions and not the inventive
software concept. However awarding a monopoly on the software algorithm, itself,
whether it is a monopoly on the abstract idea that formed the algorithm in the
programmer's mind or whether it is a monopoly on the use of a specific math
algorithm, is not a legally valid patent within the requirements of
§101.
From Bilski v. Kappos: The Court’s precedents provide
three specific exceptions to §101’s broad patent-eligibility principles: “laws
of nature, physical phenomena, and abstract ideas.” (Chakrabarty). While these
exceptions are not required by the statutory text, they are consistent with the
notion that a patentable process must be “new and useful.”
From
Gottschalk v. Benson:Respondents' method for converting numerical
information from binary-coded decimal numbers into pure binary numbers, for use
in programming conventional general-purpose digital computers is merely a series
of mathematical calculations or mental steps and does not constitute a
patentable "process" within the meaning of the Patent Act, 35 U.S.C.
100...
The mathematical procedures can be carried out in existing
computers long in use, no new machinery being necessary...
The patent
sought is on a method of programming a general-purpose digital computer to
convert signals from binary-coded decimal form into pure binary form. A
procedure for solving a given type of mathematical problem is known as an
"algorithm." The procedures set forth in the present claims are of that kind;
that is to say, they are a generalized formulation for programs to solve
mathematical problems of converting one form of numerical representation to
another...
It is conceded that one may not patent an idea. But in
practical effect that would be the result if the formula for converting BCD
numerals to pure binary numerals were patented in this case. The mathematical
formula involved here has no substantial practical application except in
connection with a digital computer, which means that if the judgment below is
affirmed, the patent would wholly pre-empt the mathematical formula and in
practical effect would be a patent on the algorithm itself.
The
patented inventive concept in Benson was a math algorithm. The court found that
the math algorithm ' does not constitute a patentable "process" within the
meaning of the Patent Act, 35 U.S.C. 100'. Benson also points out that the math
process run on an old computer is not a new machine under §101, because it 'can
be carried out in existing computers long in use, no new machinery being
necessary'.
However, what should be the result if a patent is sought
for an inventive concept in a math algorithm that has a useful, substantive,
practical application? It should not be awarded because of this finding in
Parker v. Flook:Respondent's process is unpatentable under 101, not
because it contains a mathematical algorithm as one component, but because once
that algorithm is assumed to be within the prior art, the application,
considered as a whole, contains no patentable invention.
Even though a
phenomenon of nature or mathematical formula may be well known, an inventive
application of the principle may be patented. Conversely, the discovery of such
a phenomenon cannot support a patent unless there is some other inventive
concept in its application.
The algorithm is treated as prior art,
because, as explained above in Bilski, laws of nature and abstract ideas cannot
be 'new and useful' within §101. Math algorithms are abstract thought. As
rigorously demonstrated in PolR's article, above, every part of software
executable on a general purpose computer processor is a part of a math
algorithm. The article is rigorous, in part, because it cites the most relevant
and important mathematics and computer science papers from the last century, and
before.
Benson explains that any math algorithm in an invention must
be treated like any abstract idea as not novel and therefore prior art (because
it is not new). For an invention to be patentable, the inventive concept must be
something other than 'a phenomenon of nature or mathematical formula'. If the
inventive concept is in the software, it is “laws of nature, physical phenomena,
and abstract ideas.” and it fails to meet the requirements of
§101.
Since software must be a math algorithm and a math
algorithm fails to meet the requirements of §101 then it is not legally possible
to obtain a patent monopoly on an inventive concept in
software.
---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid! [ Reply to This | Parent | # ]
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