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Patent
Law
PATENT PROTECTION FOR COMPUTER
SOFTWARE, May 1998 MD Bar Journal, pp. 54-57.
A patent is the grant from the United States government to the invention's
owner of the right to exclude all others from making, using or selling
the invention for a limited time. In exchange for these patent rights,
the inventor is required to file and have approved a patent application
which discloses the invention in enough detail to allow other people to
use the invention after the monopoly expires and to learn from the invention
and build on its ideas.
There are different types of patents (i.e., utility, design and plant).
A utility patent protects the functional aspects of an invention and is
the type of patent that is applicable to the protection of computer software.
A utility patent protects the invention for a period of twenty years from
the date of filing of the required patent application, subject of the
payment of specified maintenance fees.
Complimentary Nature of Patent Protection
Patent protection has recently become a more realistic, valuable, additional
means, complimentary to traditional copyright and trade secret means,
for protecting computer software. The truth of this statement can be seen
by considering the following infringement hypotheticals and assessing
which means of protection are most applicable and useful.
Assume that an inventor: (a) conceives of and reduces to practice a new,
nonobvious and useful piece of software, (b) hires an independent contractor,
computer programmer to write the code expressing the invention, (c) contracts
with a software publisher to produce the resulting software product, (d)
contracts with a distributor to distribute copies of the software, and
an end-user purchases a copy of the software.
COURT CASES
In Computer Associates v. Altai, 982 F.2d 693 (2d Cir.
1992), the court held that other than the copying of the literal elements
of a computer program (i.e., the object codes and the source codes), copyright
offered relatively narrow protection for the other elements of software
(i.e., the structure, sequence and organization of the software). In 1996,
the Supreme Court affirmed the holding in Lotus v. Borland, 49 F.3d 807
(1st Cir. 1995), that the command menu hierarchy of the Lotus 1-2-3 spreadsheet
program is not copyrightable because it is a method of operation. In both
of these cases, the opinions suggest that what the plaintiffs were seeking
was protection that falls within the arena of patents -- not copyrights.
Meanwhile, in 1994 the Court of Appeals for the Federal Circuit (CAFC)
decided five cases involving the question of whether software inventions
constituted patentable, statutory subject matter under 35 U.S.C. §
101. These cases generally tend to broaden the scope of pantentability
for software inventions, and indicate heightened interest in this question
(i.e., In the twelve prior years since the CAFC's creation in 1982, the
CAFC has only heard three similar cases).
In In re Alappat, 33 F.3d 1526 (en
banc), the CAFC held that a means for creating a smooth waveform display
in a digital oscilloscope was patentable subject matter. Thus, a "general
purpose" computer operating pursuant to a computer program to perform
specific functions was held to be a discrete, patentable machine.
In re Lowry, 32 F.3d 1579, did not
directly present a statutory subject matter rejection issue to the CAFC.
This issue was resolved earlier by the USPTO Board of Patent Appeals that
reversed the patent examiner's rejection of a claimed means for imposing
a physical organization on data that provided computational advantages
for the storage, use and management of information residing in a computer's
memory. The CAFC went on to hold that the USPTO must consider all the
claim limitations (of this invention) when assessing the invention with
respect to the novelty requirement (35 U.S.C. § 102) for patentability.
In In re Schrader, 22 F.3d 290, the
CAFC held a method of bidding at an auction to be unpatentable, noting
that "there is nothing physical (i.e., connected with the physical
environment - a transformation or reduction of matter) about the bids
per se." However, a dissent argued for patentability on the basis
that the method "achieves a technologically useful result."
In In re Warmerdam, 33 F.3d 1354, the CAFC held a method for controlling
the motion of objects such as robots to avoid collisions with other objects
to be unpatentable because it describes "nothing more than the manipulation
of basic mathematical constructs, the paradigmatic abstract idea."
However, it did hold a claim in this same patent for a computer storing
the computational results from the application of the method to be patentable.
In In re Trovato, 60 F.3d 805 (1995,
en banc), the CAFC vacated the 1994 judgment of a three-judge panel that
a linear programming technique to find the optimal path between two locations
was non-statutory subject matter and remanded the issue to the USPTO Board
of Patent Appeals. The CAFC noted that In re Alappat was decided subsequent
to the three-judge panel's decision and provided further guidance on the
35 U.S.C. § 101 statutory, subject-matter issue. Furthermore, the
CAFC noted that the USPTO had recently issued "Proposed Examination
Guidelines for Computer-Implemented Inventions" and ordered that
the case be reconsidered in light of any new guidelines to be adopted
by the USPTO.
Patentability of Computer Software
All inventions must satisfy the following patentability requirements:
(1) useful, patentable subject matter, 35 U.S.C. § 101; (2) novelty,
35 U.S.C. § 102; (3) nonobviousness, 35 U.S.C. § 103.
NEW USPTO GUIDELINES
The new USPTO guidelines for the examination of inventions related to
computer software (See Manual of Patent Examining Procedure §2106
- Patentable Subject Matter, Computer-Related Inventions) indicate that
there are three general ways whereby software can be used in an invention
to satisfy the statutory subject matter requirement.
First, software can be used to create a "machine"
when a computer is included in the claims as having its operation controlled
by the software, as illustrated in In re Alappat.
Second, software can be claimed as a "process"
when it is described as a series of operational steps to be performed
on or with the aid of a computer. And finally, a computer-readable memory
(e.g., floppy disks, CD-ROM, system memory) containing the software that
can be used to direct a computer to function in a particular manner can
be considered as an "article of manufacture."
The novelty requirement for an invention will be satisfied unless, during
the patentability examination of the inventor's application seeking the
patent rights for the invention, a USPTO patent examiner can cite a single
prior art reference from anywhere in the world that contains all of the
features claimed in the invention disclosed in the inventor's patent application.
The probably more demanding, nonobviousness requirement is harder to objectively
define. The typical way that an examiner shows obviousness is to cite
a number of prior art references that, when combined as suggested by possibly
another prior art reference, contain all of the elements of the applicant's
invention. The applicant generally challenges the logic of the combination
and identifies certain secondary considerations that suggest that the
invention was not obvious (e.g., long duration of well-recognized need
for the invention, prior unsuccessful efforts of others to develop such
an invention, degree of commercial success of the invention).
Finally, the Supreme Court has long held that certain types of invention
are unpatentable:
(a) laws of nature or science,
(b) naturally occurring articles or natural phenomena,
and
(c) abstract ideas.
In Gottschalk v. Benson, 409 U.S. 63 (1972), the Court
extended the definition of law of nature to include "algorithm, or
mathematical formula."
Since computer software often uses algorithms and mathematical formulas,
this holding raised many doubts as to the patentability of computer software.
However, in Diamond v. Diehr, 450 U.S. 175, 186 (1981) the Supreme Court
clarified that an unpatentable algorithm means "a
procedure for solving a given type of mathematical problem."
Thus, computer software containing a mathematical algorithm and claiming
something other than just the algorithm itself is now recognized as
being patentable if it can meet the other statutory requirements for patentability.
Process of Obtaining a Patent
Because of the often complex and specialized nature of the patent application
process, most inventors chose to retain the services of a patent attorney
(i.e., an attorney admitted to file and prosecute patent applications
before the USPTO) to represent them in this process. Since the legal expenses
associated with applying for a patent can be relatively large (i.e., $3,000
to greater than $10,000), it is often advisable to first make a relatively
low-cost assessment (i.e., a novelty search at a cost of $500 to $2,000)
as to whether it is likely that a patent will issue on the proposed invention.
This typically involves investigating USPTO files for technology similar
to the proposed invention to determine the state of the art in the area
of the invention and what, if any, scope of patent protection may be available
for the invention. If the search reveals no prior patents that substantially
disclose the proposed invention, this knowledge serves to justify incurring
the patent application preparation expenses.
The patent application has two primary sections:
1. The specification
The specification is essentially a detailed description
of the invention, including drawings if necessary, showing what the invention
does, how it works, and disclosing its advantages over prior art. The
description of the invention must meet certain legal requirements, including
that it: (a) be thorough enough to allow a person skilled in the invention's
field of technology to make and use the invention, (b) identify the invention's
best mode of operation, and (c) provide a basis for and explanation of
the terminology that is used in the following claims.
2. The claims
The claims of the patent application are carefully worded, legally structured
sentences that vary in definitiveness, with each of these sentences attempting
to distinctly define more closely than the others the patentable novelty
of the invention. Thus, while one ideal claim might suffice, the patent
application almost always contains claims that range from broad ones (which
define the invention with the fewest details possible) to narrow ones
(which set forth in more detail the specific elements of the invention).
For the USPTO to examine a patent application, a required filing fee of
$790 (half of this amount for independent inventors and companies with
less than 500 employees) must be paid at the time the application is submitted.
After the patent application has been filed with the USPTO, a patent examiner
carefully reviews the application in order to determine the invention's
patentability.
USPTO EXAMINATION TIMELINE
The examination workload and staffing of the USPTO are
such that this examination process usually extends over a period of 18
to 30 months.
OFFICE ACTION
When the examiner has made an initial patentability determination,
the USPTO sends the applicant an "Office Action" containing
its determination and the reasons for it. If the Office Action contains
a rejection of the claims (which occurs on the first Office Action about
80% of the time) and there exist arguable grounds for contesting the examiner's
determination, one typically files a "Response," usually in
the form of an Amendment, to overcome the rejection. There are usually
only two Office Actions and Responses before a final determination is
made by the examiner as to the invention's patentability. If this determination
is detrimental to the applicant's interests, it can be appealed in the
federal court system. The courts ultimately decide the validity and enforceability
of a patent.
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