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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 | # ]
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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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