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I don't think it's that easy | 221 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
I don't think it's that easy
Authored by: Ian Al on Thursday, June 13 2013 @ 03:06 AM EDT
What if a machine invention is best implemented by using software to achieve some of its function such as a mouse trap replacing a mechanical trigger with a computer controlled trigger? The whole machine is a new and useful invention. Should it be unpatentable subject matter?

If it is patentable subject matter according to §101, then it should be awarded a patent.

Fonar v. GE give the legal explanation about the framework for inventions that include computer-implementation:
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.
To explore the patentability, or not, of software I use the example of a novel patented auto gearbox.

If the chosen mode is mechanical, then the patent is on the arrangement of gears, actuators, clutches and the control mechanism. The invention is the arrangement of the components and there may be some novel components that warrant a patent in their own right. You can replace the control mechanism with a computer (a microcontroller) that electrically interfaces with the actuators. What is patentable is the whole device and not the components. If the original electro-mechanical control mechanism was patentable in its own right then it would be the precise control function that would be patented. Doing the precise control function with a computer should be equally patentable. The software/software function would not be patentable, only the computer/electrical interface/controlling function combination. Most automatic gearbox control mechanisms will not be any more patentable than the gears they manipulate so that even the special purpose computer assembly would be the patent equivalent of a standard nut or bolt.

Although the gearbox is controlled by a microcontroller, the magic is achieved by measuring the gear speeds and electro-mechanically operating the levers The actual software in the microcontroller is irrelevant to the functions claimed for the invention. All that is important is to state what functions related to engine speed, output shaft speed, engine power and similar aspects of the design are carried out by the software.

It is irrelevant what software language is used to program the microcontroller and what software algorithms or functions are used. If the same algorithms and functions are used with some other gearbox, then the other gearbox only infringes if the inventive concept in the patent is also used. The inventive concept is not in the software functions carried out by the software, but is in the functions of the gearbox.

The microcontroller is the best mode of carrying out those control functions, but it could be replaced by mechanical alternatives. The bit in Fonar that is almost universally ignored is that the patented invention may be defined only by the functions if the software is only a part of a best mode and, in that situation, it is only within the skill of the art once its functions have been disclosed.

My auto gearbox example (which I have been using for years to make this point) is the sort of patent that Fonar encompasses. However, Fonar is clear that if software constitutes all of the best mode for carrying out an invention, then disclosing the function is not sufficient for a patent award. Also, if software is all of the carrying out of the invention then by Benson, Flook, Diehr, Bilski and Mayo the software process (or software machine) when considered as a whole must be shown to have an inventive concept. Please note that the inventive concept is not a textual list of the instructions given to the processor. Neither is it in the source code comments. These are just expressions of abstract ideas. The inventive concept must be demonstrated in the binary instructions and data executed and manipulated by the processor. It is not possible for the inventor to do this in a legally valid way.

Even more seriously, it must be shown that the software, itself, is patentable subject matter under §101 and not be in the list of judicially excluded subject matter including math, “laws of nature, physical phenomena, and abstract ideas.”.

In other words, anything that is not a novel invention in the area of 'process, machine, manufacture, or composition of matter, or any new and useful improvement thereof', or is judicially excluded, cannot be a patented invention. In Mayo, the Supreme Court has expressed its fury that §101 was being skipped in the rush to patenting.
[T]he prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity’” (quoting Diehr),
So, software is not patentable, even if it is the inventive part of a mousetrap. However, if all parts of patent law are respected by an invention, it should be awarded a patent. §101 and the judicial exclusions make Free software, free.

---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

[ Reply to This | Parent | # ]

That bit's easy: It's a Null Statement
Authored by: Anonymous on Thursday, June 13 2013 @ 04:07 AM EDT
Since there is no software that can replace a mechanical or elecromagnetic
component, that part is stating that there's an exception in an impossible
situation.


ie, we can all ignore it until someone claims that they're got a flow chart that
can replace a physical device.

And then we can point out what's really replacing the physical device is another
physical device, not the flow chart.

[ Reply to This | Parent | # ]

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