Patently-O TidBits

  • Four Patentable Subject Matter Cases (via Hal Wegner):
    • Microsoft v. AT&T (Supreme Court): Although not squarely raised, if the court discusses patentable subject matter, it will rule that software per se is not patentable.  Depending upon that ruling, it may eliminate business method patents as well.  An opinion is expected this spring.
    • In re Nuijten (Fed. Cir.): The Federal Circuit has heard oral arguments on this case, which focuses on patentability of a signal that is not tied to any particular physical form.  
    • Ex parte Bilski: This case is on appeal from the BPAI involving patenting of methods that could be “entirely performed within the human mind.” (The PTO has rejected the application).
    • In re Comiskey: Comiskey was recently argued at the CAFC, and supplemental briefs filed on Section 101 issues that were raised sua sponte by the CAFC (Chief Judge Michel, Judges Dyk & Prost). This case involves a method that could be performed by humans without any machine as an aide.
  • Thomas Ichim on YouTube discussing stem cell patents
  • Aaron Barkoff on Bloomberg TV discussing reverse payment settlements. 

75 thoughts on “Patently-O TidBits

  1. Maybe they have 6502 based gear to control grove heaters, bird repellers, irrigation controllers or something… Does anyone remember the 6811 with the built-in A/D?

  2. What about instructions for an abacus written in the sand?

    I suppose you’re going to tell me that I can’t patent that.
    :(

  3. Now we’re all showing our wrinkles. I remember working at one high tech company out East and we were panicking because MOS Tech was threatening to stop manufacture of their 6502 microprocessor chip, the chip we used in our box. Then we got word of some weird fruit company out in California that was starting to buy up 6502′s in droves. Now why would a fruit company need 6502′s?

  4. The Altair was first introduced with a 8080 processor. If you had a paper tape reader, the switches were flipped to code in the program for the tape loader, which then allowed the processor to read the program punched into the tape.

    PS: The 8080 predated the Z80, which I thought was a great processor.

  5. stepback

    “Didn’t flipping switches on the front panel so as to load bits into the TTL registers amount to “just writing”, just writing software in no different a way than people write poems? Sure sounds like it.”

    Poems can be written in code. They are still poems to anyone who has the key.

    Did anyone every try to independently patent, “A switch panel configured to provide capability X, wherein said switches are positioned as follows …”?

    What about a novel punch card with a specified pattern of holes for instructing a computer to perform a particular function? Did IBM patent cards with recited configurations of punched holes?

  6. Oops just saw step back’s reference to TRS-80, 6502, etc. Now THOSE were processors. Once wrote a networking RTOS for 65xx, carved it into stone tablets…

  7. I guess no one remembers the Z80… or PDP-11. Went to the Computer History Museum recently on a trip to Mountain View. If you want to feel like a relic Tom, go there. Talk about time compression.

  8. And I forgot to ask: Didn’t flipping switches on the front panel so as to load bits into the TTL registers amount to “just writing”, just writing software in no different a way than people write poems? Sure sounds like it.
    (For you young’ins out there, TTL stands for vacuum Tube- to vacuum Tube Logic. Kidding.)

  9. Now you’re pushing the memory circuits to their limits. Was the Altair a 4040 chip ,a 4004 or a 6502? And was that 256 bytes of ram, UVPROM or magnetic core?

  10. Malcolm, stepback, you guys are youngsters. Real men used the Altair, which was coded by flipping toggle switches on the front cover. Output was by lights on the front cover. Ahh, the things you could do with 256 bytes of memory.

  11. A VIC-20 ?
    Malcolm dude. Gimme a break. Real men use Trash 80′s and code in assembly language after having hand-disassembled Radio Shack’s BASIC interpreter. (Them was the good old days. :-)

  12. Mr. Mooney

    “…until the great day …”

    Actually, I believe it will be a great day when you finally emerge from self-imposed anonymity.

  13. stepback

    “The universe that you attribute to those who disagree with you is a fantasy universe and not one in line with scientifc reality.”

    You argued that a drug provides “instructions” to the body in the same way that software provides “instructions” to a computer. That’s not my fantasy. Scroll up and welcome to the real universe where you made the argument.

    Like most people of my generation who owned a VIC-20, I’ve programmed enough computers to know that writing software is equivalent to writing instructions for computing machines. I don’t doubt that you could round up twenty “software engineers” who will testify otherwise, just as I don’t doubt that half of those engineers would testify that Charles Darwin was a fraud.

  14. It’s okay, Mr. S., I won’t be offended if you ignore every comment I make until the great day when CaveMan declares that I am serious and worthy of his famously desirable approval. Tonight, I’ll sleep fitfully, as I calculate and absorb the dozens of de-merit points on my report card.

  15. –in a universe where everything is an “instruction.”—

    Malcolm,
    Here is where you show your malcontempt for science.
    In the world of biotech, DNA sequences include specific codons for initiating and terminating transcription. So clearly not every codon sequence can be an “instruction”. To be an instruction, the sequence has to be specially and intelligently designed.

    Similarly, in the world of computers, random sequences of 1′s and zeroes will generally fail to function as instructions. To be an instruction, the sequence of 1′s and zeroes has to be specially and intelligently designed for cooperatively interacting with a target computer.

    The universe that you attribute to those who disagree with you is a fantasy universe and not one in line with scientifc reality. I don’t expect the Supreme Court judges to be knowledgeable in such matters. But who knows? Maybe one of them reads Patently-O and gets educated once in a while? If that happens, they’ll have you to thank for it.

  16. Mr. Slonecker,

    I personally wouldn’t dignify any comment from Mooney with so much as an UGH. You are far too accomplished for that. I don’t find that he has much to add except snipey little insults and non-sequiturs.

  17. Let’s say I have a pill.
    It is nothing but a bunch of atoms ordered in a certain way to define a bunch of “instructions”.

    Certainly it is true that instructions are patentable in a universe where everything is an “instruction.”

    Thankfully, we don’t live in that universe. At least, I don’t and neither do the Supremes.

  18. Thank you to David Boundy for posting his letter to the USPTO on Greg’s PAtnews. Can you please repost it here on Patently-O so that everyone else can see it?

    IMO, it is a valuable analysis regarding 101 and the PTO Interim Guidelines.

  19. “It would be excellent if someone could draft a coherent argument explaining why instructions — i.e., on paper or on chips or in electromagnetic waves — should be deemed patentable based on the novelty of the instructional information itself. Such a coherent argument might persuade the Supremes. I wonder why a coherent argument has not yet been proferred?”

    OK
    I’ll be your huckleberry.

    Let’s say I have a pill.
    It is nothing but a bunch of atoms ordered in a certain way to define a bunch of “instructions”.

    Sitting by itself, my pill does nothing.

    However, if you swallow it, it contains DNA-reordering instructions that cause the DNA in your body to restructure themselves (to programmably reconfigure themeselves) so that you live forever and are always young and healthy (and somewhat intelligent to boot).

    But then again, as you say, this pill is nothing but a bunch of lifeless instructions. Sitting there on the lab bench it is useless and uninteresting. One instruction is like the next whether inscribed in a potato chip or a semiconductor chip or on a CDROM disc or in a nucleic acid sequence.

    And alas, since it is not patentable (I trust you, you know), I have ripped apart this instructional pill and tossed it asunder. Tomorrow I will spend my energies on something far more practical, like a toilet seat that automatically lowers itself before my wife walks into the bathroom. :-)

    Thank you for helping me see the light.

  20. “MM apparently have trouble understanding the difference between writing poems and “writing” software. He is not alone… The SCOTUS judges and the entire open source crowd have the same problem.”

    First, it’s not my “problem.” I don’t have a dog in this fight except to the extent that fewer software applications means that (in theory) the PTO will spend more time examining other applications and yielding stronger patents.

    The problem for software patent luvvahs is the Supremes. It would be excellent if someone could draft a coherent argument explaining why instructions — i.e., on paper or on chips or in electromagnetic waves — should be deemed patentable based on the novelty of the instructional information itself. Such a coherent argument might persuade the Supremes. I wonder why a coherent argument has not yet been proferred?

    “Writing source code is … is just one step in the production of software. Unless the software is trivial, there are many steps before the source code is written.”

    There are often many steps before poems and movie scripts are typed up in final form. So what? Not patentable. Never were, never will be. If you care to place bets to the contrary, let it be known!

    Does anyone want to argue that “steel parts” stamped out at a factory floor represesent “instructional information” in the same way that software does? Go ahead! Ask mathematician Bill Dembski if he’s had much luck in Federal Courts playing those kinds of rhetorical games.

  21. small_guy has a very good point. Writing source code is equivalent to the person on the factory floor stamping out steel parts. It is just one step in the production of software. Unless the software is trivial, there are many steps before the source code is written.

  22. MM apparently have trouble understanding the difference between writing poems and “writing” software. He is not alone… The SCOTUS judges and the entire open source crowd have the same problem.
    One piece of advice – when talking about software never ever use the word “write”.
    There is no such thing as “writing” software – software is engineered, at least the good software Mr. Slonecker is talking about…
    There are no “software writers” – there are “software engineers”, just like “mechanical engineers” or “chemical engineers”

    Don’t listen to open source propaganda – you know, “software is just written – therefore it should not be patentable, copyright is all we need…”

  23. “Never seen FFTs or wavelets or the like ever used to write a poem, prepare instructions for assembling, say, a bicycle, or making a painting.”

    I asked a “yes” or “no” question. I’ll assume that this answer is a “no” and your mind is NOT boggled (for reasons that you may choose to keep private) by the fact that printed instructions for mixing ingredients in a kit etc. are not patentable.

    So … what have you seen an “FFT” or “wavelet” or “the like” do that is “truly extraordinary” (other than simply “exist” as information for someone or something else to use, just as printed instructions for using a kit exist as information for someone or something to use).

  24. Mr. Mooney:

    “What about “Oh my god, a novel poem!” “Oh my god, a printed set of novel instructions for using a kit!” “Oh my god, a novel painting of the sunset!”"

    Never seen FFTs or wavelets or the like ever used to write a poem, prepare instructions for assembling, say, a bicycle, or making a painting.

  25. pds

    “MM, did you notice the use of the word “may” in the phrase “may not have come to pass”?”

    Yes. Did you notice that your hypothetical was purely imaginary but my questions were based on discoveries which actually happened? Think about that today.

  26. Slonecker

    “It boggles the mind that a person can come up with a truly extraordinary achievement, only to have persons without a clue what that person has done to loudly proclaim “Oh my God, an “algorithm”. ”

    What about “Oh my god, a novel poem!” “Oh my god, a printed set of novel instructions for using a kit!” “Oh my god, a novel painting of the sunset!”

    Does it “boggle” your mind that truly extraordinary examples of those novel “achievements” aren’t patentable?

    Developers of software and algorithms have a lot in common with those folks who write those extraordinarily beautiful and clear instructions which come with kits for purifying proteins and DNA and other biologic materials: they need to find other ways to claim their “inventions” so that they have a function besides *existing* as information to be used by someone or something else.

    I know how I would do it. I’ll let the cavemen around here figure out how they would do it.

  27. Cavey

    “In Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981) the court states that “…an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”"

    This is true but in a very trivial sense. All methods of doing something are applications of one or more “laws of nature” and some of those methods are deserving of patent protection.

  28. I find that the same “venerable guide” (the Interim Guidelines) is a cause of much mischief because Examiners tend to read short parargraphs from it, taken out of context and thus misinterpret the intent of the quotes lifted from the case law; particularly the one about the “useful, tangible and concrete result”. There is no substitute for reading the actual case law and knowing the history of the law. It would not surprise me to have some examiner demand that all my claims recite “dried cement” because it says so in the guidelines.

    If one reads the history of the case law on 101 issues, one would see that we are all on a journey. We are all prodding and poking at the “software” elephant as we blindly step around it. It may be a very long time if ever before most of us can step back and see the bigger picture regarding what “software” is, what “hardware” is, and more importantly what we are.

  29. As usual, Mr. Slonecker has added significant value to this discussion.

    I would only add that some problems arise from the use of the term “algorithm” itself, especially as bandied about within this thread. I believe the subject matter problems arise with “mathematical alogorithms” that express laws of nature, natural phenomena, and the like. For exampple, one could not simply claim the Newtonian laws of motion.

    The Supreme Court as Mr. Slonecker notes has put forth the physical transformation test, however they specifically acknowledge that this is not the only test. However, under State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998) and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir. 1999) the practicaly utility of the invention as a whole is determined. In Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981) the court states that “…an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”

    All of the above can be found in the venerable document that heralded the rise in the so-called “software patents.” Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (for Computer Related and Business Method inventions).

    found here:
    link to uspto.gov

    I suggest that Software Viz should print a copy and keep it beside his bed at night for when he wakes up in a cold sweat.

  30. A search using Google and the search term “image interpolation wavelets” yielded the following document pertaining to a purportedly new “scheme” for enlarging digital images (quite a trick when you want to take a image from a consumer digital camera and blow it up to monstrous proportions, such as a roadside billboard).

    Caveat: I have not “vetted” the paper, nor have I attempted to investigate how this scheme would be implemented (taking the word of the authors that it can be implemented via “hardware” or “software”). I mention it merely for illustrative purposes and nothing more.

    link to research.microsoft.com

    My point is this: The researchers have identified a “problem”, and have crafted a solution for the “problem”. To do so they have resorted to levels of mathematics that I cannot even begin to fathom at this time. Assuming what they have created is an “algorithm”, it escapes me why the “naked” algorithm would be vilified by many as unworthy of the benefits of patent law.

    When I first began practicing so many years ago, my mentor (and later partner) told me he viewed what is an “invention” in a fairly simple and straightforward way. First, does a “problem” exist, and, second, has a solution to the “problem” been created? I have conducted my practice mindful of his approach, and it has served me well.

    It boggles the mind that a person can come up with a truly extraordinary achievement, only to have persons without a clue what that person has done to loudly proclaim “Oh my God, an “algorithm”. We do not know what it does; all we know is that despite our ignorance we must hold it to be outside the realm of Title 35 because it is, well, mathematical.”

    This highlights to me that the word “software” is being bandied about without much thought as to what it actually is. I hew to the line that if a real world problem has been identified and a solution has been crafted, then I see no good reason to exclude it from the reach of our patent laws unless tied to some level of “atomic transformation”. I have always viewed software as an instructional set that tells a computer what to do. If the pure instruction set, no matter what language is used (I will admit that assembly language, object code, etc. largely leave me high and dry because all I care about is the interface I am looking at on my monitor), is deemed outside scope of Title 35, then a fortiori it follows that an incredibly useful “algorithm” is likewise outside Title 35′s reach. This is just plain silly and is in my view precisely bassackwards from the goals personified within Article I, Section 8, Clause 8. But then again, I was aghast at the silliness of the rationale used by the Supreme Court in striking down the patents at issue in Sakraida and Anderson.

    Maybe now is the time to leave patent law and devote my energy to something useful like driving an 18 wheeler…

  31. MM wrote:

    ******
    “All these of these potential benefits resulting from the additional research may not have come to pass if MM’s blocking patent didn’t exist ”

    Were the alleged benefits of siRNA discovered only because other antisense methods were patented? Was PCR discovered only because other methods of detecting small amounts of DNA were patented? etc., etc., etc. x 10,000.

    So much for your assumptions.

    ******

    MM, did you notice the use of the word “may” in the phrase “may not have come to pass”? I intentionally put that word in there because I know you cannot resist butting in and I figured this word would trip you up. Anyway, you took the bait, hook, line, and sinker.

    The use of the word “may” was to indicate possibility or probability and NOT some absolute fact. As such, no matter what evidence you produced, you cannot disprove my assumptions because the way my assumptions were written, they cannot be disproved.

    Can you disprove that some technology wasn’t invented because a blocking patent wasn’t put in place? Since the technology wasn’t invented, how can we ascertain the reason why it wasn’t invented? Kind of difficult to prove don’t you think?

    Also, the fact that someone may have invented something without a blocking patent does not affect my assumptions.

    My arguments are based upon the premise that when the easy and/or most likely productive path can be taken, most people will take it and not explore the harder and/or less likely productive path (i.e., the path of least resistance). However, when the path of least resistance becomes blocked (e.g., by a patent), then other paths may be explored that otherwise might not have been explored.

    This is a fairly straight forward concept. As such, I’m not sure why you are having difficulty comprehending it.

  32. Michael, I think you’re making a critical point here. So many of the 101 debates start with the familiar assumptions about algorithms, natural phenomena, laws of nature, etc. I hope that the next attorney defending a 101 attack at the high court podium challenges many of these assumptions (which the Supreme Court itself has made). Section 101 doesn’t mention any of these taboo categories — they are creatures of case law.

    I think State Street Bank is correct: the focus should be on whether there is a practical, useful result. Focusing on physical transformation, programming of a machine, and the like makes no sense from a policy perspective.

    Some time ago, in the old Metabolite discussion, I discussed why there should be no difference in the 101 analysis of i) a method of creating compound X and administering it to a patient to treat disease Z and ii) administering naturally occurring compound Y to treat disease Z. There is no policy reason to treat i) or ii) any differently. However, one might argue that the inventor in ii) didn’t “invent” anything, but rather simply observed a natural medicinal effect of Y.

    These distinctions between software per se and software coupled with physical structure include a very similar and pointless analysis.

  33. Dear Slonecker,
    You simply do not understand a basic fundamental:
    In the United States, there are two kinds of property:
    1. Property owned by the rich, the powerful, and the praiseworthy; and
    2. Property owned by the poor, the powerless, and the despicable.

    Now if your darkroom processing program was patented by a Goliath sized multinational corporation, it would *not* be referred to as a mathematical algorithm. It would instead be called a “technological breakthrough of the most praiseworthy and paradigm shifting type”. Whole magazines would be published in praise of the new vistas and breath taking possibilities opened up by this new breakthrough.

    On the other hand, if the program was invented by, and patented by some small slob in his own darkroom garage, it would be called “nothing more than a mere series of abstract 1′s and 0′s that never should have been patented in the first place in history, where said history is easily rewritable given that our brains do not comprehend the time line too well and corporate mind benders know this.”

    So you see my dear Slonecker, it is quite elementary. You are wasting your time doing the deep think and asking why this and why that. Just look at who owns the invention. Then you will instantly know whether it should have been patented in the first place.

  34. Of course software is not patentable. Neither is an automobile. In fact nothing tangible is patentable. It is the ideas that are patentable. What the Supreme Court would be saying is that ideas embodied in computer readable code are not patentable. Which I cannot say I disagree with. However, how can a sane person state that a method is unpatentable simply because it is carried-out by a machine? That is absolutely ludicrous.

  35. I am an avid photographer who long ago left the confines of a darkroom to do my editing using Adobe Photoshop. Unlike a lot of people who think that the total mastery of the program is a worthy end goal, I happen to subscribe to the notion that I want to get from image to print as easily and quickly as possible. Hence, I use many third party plugins that make what I do much easier.

    These plugins embrace everything from image compression schemes, noise removal schemes, upsampling and downsampling schemes, etc. One thing I have learned is that many of these plugins incorporate highly unique, lengthy and complex algorithms, and that the creation of these algorithms was anything but simply putting pen to paper. Substantial R&D was needed to take the idea and come up with a workable solution, many of which solutions are quite esoteric in nature.

    With this as a factual predicate, and given that these algorithms did not just jump out of a tree into the laps of the creators, perhaps someone can explain why it is that so much venom is spewed towards algorithms in the context of patent law.

    Yes, I know all arguments about physical transformations, etc. Even so, just what is it about an algorithm per se that demands they be viewed outside the purview of Section 101? True, they are virtually impossible to implement without the use of a “computer”. Nevertheless, why is it that the “method” must be tied to a physical device in order for some to accept the existence of patentable subject matter?

    Just curious…

  36. “All these of these potential benefits resulting from the additional research may not have come to pass if MM’s blocking patent didn’t exist ”

    Were the alleged benefits of siRNA discovered only because other antisense methods were patented? Was PCR discovered only because other methods of detecting small amounts of DNA were patented? etc., etc., etc. x 10,000.

    So much for your assumptions.

  37. We all need to go back to the fundamental question of the bargain:

    Is the disclosure a fair trade for the monopoly?

    Well, does anyone read software-related patents? Uh, no.

    Why not? Maybe because the system wasn’t developed with software in mind.

    So, is this a fair trade? No.

    The system must change.

  38. “You want to treat cancer which is caused, at least in part, by Y? I hope you’re ready to license my claim which recites ‘A method of treating cancer by inhibiting the activity of Y.’”

    Nice example.

    If the cancer is caused, at least in part, by Y, perhaps it is also caused by some combination of A and B. Perhaps X and Z also play a part. Perhaps inhibiting only A or only B doesn’t work, but perhaps inhibiting both A and B will work. Perhaps you cannot inhibit both A and B but you can counteract the effects of A and B.

    Granted, all these things are a lot harder to do than inhibiting Y, but my client has determined that paying the license fee is not economically feasible. Perhaps after a considerable amount of research, my client finds out that inhibiting both A and B is a lot easier than people thought. Perhaps my client finds out that the agent used to inhibit A and B is also effective for inhibiting C and D, G, I and J, and K, which are factors associated with other types of cancers. Perhaps my client finds out that the agent used to inhibit A and B has a 50% greater chance of bringing about remission of the cancer than inhibiting Y.

    All these of these potential benefits resulting from the additional research may not have come to pass if MM’s blocking patent didn’t exist and researchers had free reign to explore different avenue’s of inhibiting the activity of Y since inhibiting the activity of Y was disclosed as the best and easiest way of treating this particular type of cancer.

    When someone puts a roadblock in the way of a motivated researcher/engineer/inventor, these people find a way around it. Not wanting to pay someone else your $$ can be a powerful motivator. Sometimes, the solution may only be different, not better. Sometimes, an alternative solution isn’t found. Sometimes, an improvement to the roadblock is found. Sometimes, a solution is found to a completely different problem. For these reasons, I believe that in many instances, patents (i.e., roadblocks) fuel innovation, not retard innovation.

    Dislclosure: I’m not a biotech person and my examples may reflect that.

  39. “This is not a counter-argument. This does not invalidate my argument.”

    So … are you arguing against patenting software or just patenting in general? Your arguments, to me, appear to be based, at least in part, upon the notion that “software is different.” My statement was to counter this argument.

    “Software is different in that blocking patents DON’T promote progress because of software’s complexity. There would be just too many and software NEEDS to be incremental, it is not now nor ever will be revolutionary.”

    There would be just too many what? Whether or not something is incremental or revolutionary all depends upon one’s definition. One person’s evolution is the next person’s revolution. BTW: You think the change from a single processor model for executing applications to a distributed computer model for executing applications wasn’t revolutionary?

    “This is not a counter-argument. Spontaneous infringement remains an indicator of obviousness.”
    Spontaneous infringement????? A Google search of that term (i.e., “spontaneous infringement”) came up with 13 hits. As such, I recommend you use a term/phrase that has a little more recognition. Regardless, if you would like to cite some case law that supports this contention, I would be happy to review it and provide you my comments.

    “It is impossible to arrive at the certainty you are not infringing, yes it is, the statement stands. You may arrive at certainty you ARE infringing, but that is not the same statement.”
    Although not my expertise, the missing element test is very easy to apply. I am quite sure that for a particular patent and a particular technology, I can tell you, with great certainty most of the times, whether or not you are infringing. If you want to know whether you are infringing any currently pending patent … as I said, it will take lots of money and resources, but that applies to almost all technology.

    “My argument is a statement of fact- software is orders of magnitude more complicated than any other machine.”
    I suppose you have some way of proving this??? Like I tell examiners when they take official notice of a particular fact, “Because I’m a trusting guy, I would like to take your word for it, but my client would like you to prove it.”

    “One, the big companies can afford to create patent thickets and do. The only choice left to small developers is as I stated earlier.”
    That didn’t answer the question “[h]ow is the elimination of software patents going to change the ability of large companies to dominate?”

    “Two, small companies cannot defend themselves against infringement, period. It’s a million plus to go to court. Just the wielding of a patent infringement suit against a company irrespective of the merits of the patent is enough to crush that company IF the patenter is big and the infringer is small.”
    You still haven’t answered the question.

    Let me ask you another question. Actually, I’ll ask you the question some venture capitalist is going to ask you (or some small developer) when you need money to take your idea off the ground … “Nice idea, how are you going to prevent Microsoft, Google, SAP, etc. from taking your idea and using it?”

    BTW: If you are small (i.e., poorly capitalized) and have a good, enforceable patent against a large company with the potential to make millions, you should be able to find an attorney that will do the litigation on a contingency fee basis. Not my cup of tea, but those types of attorneys are out there.

    “Software doesn’t take hundreds of people to write, not does putting more people on the job cause it to be made more quickly.”
    All the more easy for the big boys (or anybody else) to copy.

    “The internet has eliminated the advantage of distribution channels and to a large degree the advantage of expensive advertising campaigns which were the mainstays of large corporate advantage. The ability to manufacture at virtually zero cost, advertise and distribute via the internet has leveled the playing field to a shocking degree.”
    How do you plan to make money off your software? Once it is out there, what is to prevent anybody from copying it completely or reverse engineering it and selling it themselves? You think anybody will pay anything for something that they can get for free or some nominal amount if all they do is wait a month, a week, a day when somebody else sells it for less or even gives it away?

    Let us see what happens when you spend a couple thousand hours developing and coding a particular piece of software, put it out on the internet for $19.99 a download and with 1 week, find it on some large company website for free. My guess is that you (or someone similarly situated) will not be very happy.

    “I just take this to mean that some part of you admits the situation is terrible but thinks it’s inevitable. At any rate, again, not a counter-argument.”
    The real world is that when the government grants somebody a right someone is going to be prevented from doing something they would otherwise be allowed to do. This right could be to exclude somebody from practicing your invention or even a right to prevent someone from trespassing on your land.

    “Obviously, ideas the implementation of which takes the form of a computer program is what is forbidden. So your argument was a strawman argument.”
    You are the one that wrote “your infringing thoughts are not things that you can own.” Write what you mean, and mean what you write. Don’t complain to me because your writing was sloppy and I responded to what you wrote.

  40. Even so, based on your personality I would STILL give it a 35 USC 112 rejection – I doubt if you can provide enablement.

    Isn’t that cute? The Examiner is inviting me to interview the case!!! ;)

  41. pds

    “No matter the technology, the existence of a “blocking patent” is a great motivation for people to innovate around that blocking patent.”

    You want to treat cancer which is caused, at least in part, by Y? I hope you’re ready to license my claim which recites “A method of treating cancer by inhibiting the activity of Y.”

    And, yeah, never mind that everybody agrees that the IDEA of targeting Y with an agent that binds Y was discussed and approved ad nauseum years before we filed. We were the first group with the inspiration and guts to ACTUALLY file a patent in the “unpredictable” field of biotech and try to claim the ENTIRE concept and support it with a single crappy example AND spend a ton of $$$ appealing the claims to allowance!!!!!!! Yeeee HAW!!!!!

    It feels good to be a winner. When you’re through being “motivated” to “innovate around” our patent, feel free to take a license. Please do not be a traitor to the American way and think about sueing us. We already took precautions and patented methods of filing legal papers adverse to us which refer to this technology.

  42. Eric M. wrote:
    “Then I’ll just go back to selling my knockoff copies of (insert your favorite software here) on the street corner, since there is no copyright protection for software ‘inventions’.”

    Eric, first, I know what I am talking about… Copyright is good for protecting a large code base, e.g. some relatively trivial implementation of an e-mail system or a web-server… For those things everything is pretty much known in advance – the desired functionality etc.
    Copyright is absolutely inadequate for protecting small pieces of groundbreaking software – like RSA public encryption.
    Those small pieces can often be expressed in a few lines of code.
    Somebody wrote an implementation of an RSA algorithm in 2 or 3 lines of Perl and printed it on T-Shirts – Do you know what is so wonderful about Perl ? Do you ?
    You can write a functionally equivalent code in so many ways…

  43. Soft.Vizard,
    You are making the classic mistake of believing youself to be “special” and believing your craft (software) to be “special”.

    A number of us out here have not only read the Mythical Man-Month, we even lived the walk rather than just talking the talk. You are dead wrong if you believe I never sat in a Dilbert cubicle and had some manager banging me over the head as to why I don’t have golden code finished exactly on time and in accordance with his Pert chart.

    No one here has taken up my challenge of defining “software” or better yet defining “software per se”. I honestly have no freaking idea what is inside your head when you mutter meaningless noises like “software per se”. Just what the heck is that? What is “software” reduced to its purest, most theoretical form? It can’t be binary 1′s and 0′s. I know that because one can theoretically have a discrete logic system that is base 3 or base 5. Theory doesn’t force us to have a base 2 (binary) system. It is the bistable nature of the conventional, physical transistor that pushes the practical world in that direction. So before you start telling me that “software” (as trade secreted in your head) is “special”, first tell me what your definition of this special software stuff is. Otherwise you are muttering gobbledygook. You come across as being no more rational than the Supreme Court justices who believe that conventional hard disks store information by having electrons injected into them.

    I’m sorry to be brutal in this ad hominen attack way, but really, there are many of us out here who were probably coding before you got out of diapers. We really do know that computer source code langauges include a menu of op codes to select from and that much of code is routine and not at all novel. But then again, no one is going around trying to patent routine code. The inventors truly believe in most cases that they have something novel and nonobvious. Otherwise they wouldn’t be coming to the patent attorney.

    What you are basically saying is that every software designer who seeks a patent attorney and tries to patent his or her ideas is a crook and a thief and a traitor to the cause. Isn’t that what you are really saying?

  44. –>You could say that probably about any technology.

    This is not a counter-argument. This does not invalidate my argument.

    –>This, to me, appears to be a great way to promote the progress of science and useful arts.

    It’s not needed by argument one above. Further, the question is “how is software different? Software is different in that blocking patents DON’T promote progress because of software’s complexity. There would be just too many and software NEEDS to be incremental, it is not now nor ever will be revolutionary.

    –> You think the software world is alone in having developers/engineers constantly infringe?

    This is not a counter-argument. Spontaneous infringement remains an indicator of obviousness.

    –> One, it is not impossible … it is just difficult and expensive. Two, the same statement can probably be said about any technology.

    It is impossible to arrive at the certainty you are not infringing, yes it is, the statement stands. You may arrive at certainty you ARE infringing, but that is not the same statement.

    –>Two, the same statement can probably be said about any technology.

    This is not a counter-argument. This does not rebut the original argument.

    –> Oh please …. after dealing with other technology for a long time, I have been dealing with a lot of software-related patents recently, and this stuff is pretty basic.

    This is an inductive argument from personal experience, and as such is invalid. My argument is a statement of fact- software is orders of magnitude more complicated than any other machine. It is so complicated that certain basic properties about its functioning can never be arrived at with certainty. Further, these facts are not academic, but essential to software and directly impact the issue of software patents in the way I described.

    –>How is the elimination of software patents going to change the ability of large companies to dominate?

    One, the big companies can afford to create patent thickets and do. The only choice left to small developers is as I stated earlier.

    Two, small companies cannot defend themselves against infringement, period. It’s a million plus to go to court. Just the wielding of a patent infringement suit against a company irrespective of the merits of the patent is enough to crush that company IF the patenter is big and the infringer is small.

    –>The large companies will have the ability to steal EVERY GOOD IDEA that is developed by the smaller guy much quicker than the little guy will be able to copy from the big guys.

    This is exactly false. Software doesn’t take hundreds of people to write, not does putting more people on the job cause it to be made more quickly. This is a fundamental mistake about software made by assuming “software is just like everything else.”. I recommend The Mythical Man Month, by Fred Brooks.

    link to en.wikipedia.org

    –>The little guys are always at a disadvantage unless they have something that the big guys want

    This is also false. The internet has eliminated the advantage of distribution channels and to a large degree the advantage of expensive advertising campaigns which were the mainstays of large corporate advantage. The ability to manufacture at virtually zero cost, advertise and distribute via the internet has leveled the playing field to a shocking degree.

    –>Welcome to the real world. It happens in every technology.
    I just take this to mean that some part of you admits the situation is terrible but thinks it’s inevitable. At any rate, again, not a counter-argument.

    –>I would like to see somebody prove infringement based upon thoughts alone in my lifetime. Now that would be some interesting technology.

    Obviously, ideas the implementation of which takes the form of a computer program is what is forbidden. So your argument was a strawman argument.

  45. “First an we know that patents are not needed to promote the advancement of software and algorithms. Economic and social forces independent of a patent environment are sufficient to advance the field. This is the strongest reason with teh strongest proof, an existence proof.”

    You could say that probably about any technology.

    I like this combination of statements:

    “Second, it discourages innovation because all innovation in software is incremental.”

    Followed shortly by: “Such patents are known as blocking patents. The effect must be for researchers to look to other areas to innovate in. This must have the effect of freezing progress.”

    You stumbled right up to but then turned around. No matter the technology, the existence of a “blocking patent” is a great motivation for people to innovate around that blocking patent. These people can either pay a licensing fee or innovate around the patent. This, to me, appears to be a great way to promote the progress of science and useful arts.

    “All developers are constantly infringing without knowing it. Spontaneous and ubiquitous infringement implies obviousness.”
    You think the software world is alone in having developers/engineers constantly infringe? You don’t get out much since this is commonplace in many fields where there is a high motivation to innovate.

    “It is impossible for a developer to know if they are infringing.”
    One, it is not impossible … it is just difficult and expensive. Two, the same statement can probably be said about any technology.

    “The product software is a machine orders of magnitude more complex than any other human creation including artificial hearts, instruments of all types, microprocessors, space shuttles etc. etc. except to the extent that they too, have software embedded in them.”
    Oh please …. after dealing with other technology for a long time, I have been dealing with a lot of software-related patents recently, and this stuff is pretty basic.

    “Because software relies on millions of parts, each patentable subject matter, put together in an astronomical umber of ways, each patentable subject matter, the imposition of software patent royalties amounts to a tax that destroys value in the market place and creates a barrier to entrance that precludes economic participation except through the filing of and subsequent licensing of software patents to large corporations.”

    How is the elimination of software patents going to change the ability of large companies to dominate? The large companies will have the ability to steal EVERY GOOD IDEA that is developed by the smaller guy much quicker than the little guy will be able to copy from the big guys.

    The little guys are always at a disadvantage unless they have something that the big guys want … perhaps some patented technology that the big guys have to pay for to be usable. Also, because of the nature of today’s computing, you don’t have to have the good idea part of a huge suite of applications to be usable. The use of web-based programming and reusable programs (i.e., Java, applets, etc.) allow for a discreet program to be introduced into the marketplace.

    “This situation amounts to corporate feudalism. Corporate feudalism, like any kind of feudalism, is a non-value producing activity that redistributes money and power as a reward for nothing more than already having money and power.”
    Welcome to the real world. It happens in every technology.

    “On the one hand, your infringing thoughts are not things that you can own, rather, the King has decreed that Corporation X owns them and you must pay rent to Corporation X or relinquish and divorce yourself completely from that thing which sprung spontaneously from your own mind.”
    I would like to see somebody prove infringement based upon thoughts alone in my lifetime. Now that would be some interesting technology.

  46. Further balm for Software Vis’ anxiety attack, the precise reason that algorithms are NOT patentable is for the very reason that keeps you up at night.

    If on the other hand, a new way to process a data input with an FFT and generate a useful output is patented and sold in a library or as an extension or something, then it should make much more sense to you.

    If something like an FFT is written in-line into a large application, the patentee probably doesn’t care, and it probably is not going to infringe anyway and won’t be easily suceptible of enforcement because who is going to analyze the code for a large, probably proprietary, application?

    If someone else is offering a whiz-bang FFT library that has been adapted for use in a computer controlled thermostat and is marketed to embedded systems developers as a solution, then they better make sure they’re not infringing.

    Using Eric M’s example, if I come up with an RSA implementation that takes in a coded vector and generates the key in a rapid and un-intrudable fashion, and make it available in a library, I have a good candidate for a “software” patent. More likely it will be in the form of a claim to a method for generating a key from a coded vector comprising: insert magic here.

  47. to Software Vis.

    If a person spends their time developing applications using off the shelf libraries, SDKs, and APIs, and, of course, blogging, then that person probably doesn’t need to worry about “software patents” and that person can get back to work without fretting that every single keystroke is a work of potentially infringing art.

    If, on the other hand, that person is developing an embedded signal processing system for a wireless telephony platform that can handle interrupts while at the same time solving hidden Markov models, that person may just may be on to something potentially patentable and/or infringing, AND that person and his management will probably know it.

    If a person has never heard of the terms “IR&D” “NRE” or the like, that person probably doesn’t need to worry about software patents.

  48. Combining elements (atoms, wires, etc.) is not invention in and of itself. Any ordinary person and stick a few nuts and bolts together and make a car or telephone or blender. These are known and expected things. The invention comes from putting the parts together to make something that would not be known or expected (at the time) from the combination.

    Example: I know a nut and bolt can hold a part in place. I expect that a nut, bolt, and screw could hold a part better than just a nut and bolt. I know that light usually doesn’t make nuts and bolts come apart. I would not then expect a screw that would make the nut and bolt come apart when exposed to light. There is the invention, not in the parts, but in the non-obvious results from a set of parts.

    Another Example: I know I can put atoms into just about any form I want to make a molecule. I know many of them will kill mice and dogs. What I don’t know is that one of these forms will kill mice, but is totally harmless to dogs.

    I agree that there are such things as software inventions. I think encryption methods are probably an example of this. Even though they may be ‘algorithms’, if novel they should be patentable. The ways that ‘stuff’ is sold however I do not think is patentable work.

    “And NO, copyright DOES NOT protect software inventions, an everybody knows it.”
    – Then I’ll just go back to selling my knockoff copies of (insert your favorite software here) on the street corner, since there is no copyright protection for software ‘inventions’.

  49. “It is impossible for a developer to know if they are infringing.”

    Well, let me ask you something, if you are finding it impossible to tell if you are infringing, what makes you think anyone else is going to know?

    And if you’re spending all your time blogging instead of writing code, what are you worried about?

  50. To Softwarevis…

    “Finally, the Constitutionally defined purpose of a patent is to “advance the useful arts and sciences”. Absent that prerequisite, no patent is to be issued; patents are not entitlements.”

    Your statement is gobbeldygook and demonstrates what can happen when software guys (or anyone else for that matter) start pretending they are lawyers.

    It is widely accepted in patent law circles, that 35 USC sec. 102 governs what patents shall issue. 102 says a patent SHALL issue UNLESS:… it is not novel and it is not obivous.

    Sadly, your Constitutional analysis is a bit wishful and weak. Contrary to your specious assertion, an argument for a constituional right to patent could easily be inferred from the power of Congress articulated in Article 1, section 8 (which you misquote above) coupled with the language of 102.

    Article 1, section 8 section 8 confers upon Congress the power to grant exclusive rights to authors and inventors in order to promote the progress of science and the useful arts. Couple that with the language of section 102 and you have a pretty strong “Constitutionally defined” mandate for patents.

    Also your “what if” scenarios are pure paranoia and hysteria, (but then again, you are becoming known around here for that).

    What if some new field emerges?!

    “…patent protection would have the effect opposite of promoting the useful arts and sciences?! …IF such a field did emerge THEN no patent protection would be afforded?! …the vast majority of computer scientists believe that software is such a field?! …real-world effects of patenting within a field could run counter to the public good?! …no patents would be issued EVEN IF they tended on the whole to promote the useful arts and sciences?! …Patents could be either broad or pervasive in such a way as to cause people to spontaneously infringe??!!! …Infringement which is inescapable and universal is good cause to remove patent protection from the subject matter?! …In fact, this is the case currently with software patents. ”

    With all due respect, what planet are you from?

    Now, don’t you have some software to deliver? I dont’ think the arguments above are going to fly with your boss when he asks you for a status report. Those lines of code are not going to write themselves. And where’s that TPS report?

  51. Here are some reasons why software is different and should not be given patentable subject matter status -

    First an we know that patents are not needed to promote the advancement of software and algorithms. Economic and social forces independent of a patent environment are sufficient to advance the field. This is the strongest reason with teh strongest proof, an existence proof.

    Proof- the rapidly advancing state of software prior to widespread patenting, essentially before 1999.

    Second, it discourages innovation because all innovation in software is incremental.

    Argument:
    Because patents for software exist at the level of ideas and end-effects only and NOT particular implementations, that is, patents protect NOT source code but the ability to do something with software irrespective of the particulars of the code, earlier, less efficient implementations discourage the creation of later better implementations. Later innovations will fall afoul of existing patents which have claimed that area. Such patents are known as blocking patents. The effect must be for researchers to look to other areas to innovate in. This must have the effect of freezing progress.

    Third- the concept of “obviousness” does not translate well into the software field and therefore a basic requirement, of non-obviousness fails and there is no fix for this.

    Argument:
    All developers are constantly infringing without knowing it. Spontaneous and ubiquitous infringement implies obviousness. Unlike other fields, developers do not read patents to steal ideas; they infringe because they spontaneously created the same algorithm, solved the same problem or created the same result. Obviousness is determined roughly by the previous appearance in the literature of a similar innovation, or the suggestion that such an innovation could be created through a combining of parts.

    For the same reasons are cited in the next paragraph, it is impossible that all obvious inventions in software should ever be either written about, enumerated or even contemplated by one person or the community at large, irrespective of how determined such a community was to set forth all obvious knowledge. Therefore the obviousness test is moot and terminally inapplicable to software. Without a test for obviousness, the subject matter is inappropriate for patenting.

    Fourth
    It is impossible for a developer to know if they are infringing.

    The product software is a machine orders of magnitude more complex than any other human creation including artificial hearts, instruments of all types, microprocessors, space shuttles etc. etc. except to the extent that they too, have software embedded in them. The behaviour of microprocessors, for instance, can be verified; the behaviour of software can never be verified, even in principle, owing to this difference.

    It is therefore impossible for any developer to know if they are infringing. A system which cannot be made to work even in theory, is anti-social and contrary to the purpose of that system. By analogy, the tax code has similar problems.

    Corollary:
    Because software relies on millions of parts, each patentable subject matter, put together in an astronomical umber of ways, each patentable subject matter, the imposition of software patent royalties amounts to a tax that destroys value in the market place and creates a barrier to entrance that precludes economic participation except through the filing of and subsequent licensing of software patents to large corporations.

    This situation amounts to corporate feudalism. Corporate feudalism, like any kind of feudalism, is a non-value producing activity that redistributes money and power as a reward for nothing more than already having money and power.

    On the one hand, your infringing thoughts are not things that you can own, rather, the King has decreed that Corporation X owns them and you must pay rent to Corporation X or relinquish and divorce yourself completely from that thing which sprung spontaneously from your own mind.

    On the other hand, in order to exist, you must render your thoughts up to the Corporation X (for an negotiated fee) since outside of the providence of the Corporation X’s f the world, ten-million-part machines will not be buildable by you or others, owing to the existence of the the Corporation’s patents portfolio which consists of their patents and all patents created and surrendered by people formerly in your compromised position.

    Fifth:

    The mere fact that such a situation as described above could come to pass to whatever degree is in and of itself sufficient to discourage the channeling of energy towards advancing computer science and programming by the most creative and ambitious people. People who wish to have wealth derived from programming will no longer be brilliant scientists, instead they will instead be brilliant MBAs, with the expected result. A country that impedes and harasses that segment of society which is impelled to create science will not survive long.

  52. An orgasm from a disgruntled patent attorney named Malcom.
    Yeah, I see why, for you, the ‘natural’ way is not sufficient – necessity is the mother of invention. Even so, based on your personality I would STILL give it a 35 USC 112 rejection – I doubt if you can provide enablement.
    PS I am NOT related to ‘anon’ or ‘anonymous’ or any others.

  53. “As far as banning human-performed methods from patentability, a decision to that effect would be ridiculous.”

    Word.

    I’ve just begun filing my applications on manual methods of bringing human beings to orgasm. I guarantee you that my methods have not been published anywhere.

    The office actions should be interesting. I expect everyone here will want to take a license. What better way to show your partner that you love him/her??? Spring is in the air!

  54. “Whether the Supreme Court stands by its “anything under the sun made by man is patentable subject matter” statement, or retreats from it in the pending cases, will be crucial to the future of patents for innovative progress in the financial and business worlds.”

    No, not really.

    Also, “anything under the sun made by man” is checked by 101 restrictions. You can’t patent your “novel” movie plot, although it was “made” by man, even if you put it in writing so that a machine can read it.

  55. “I do think software ought to be patentable as long as algorithmns aren’t”

    Now there’s an apparent non sequitor. Could you please give an example of a piece of software that you feel is novel and patentable but which is not “an algorithm”.

  56. Eric M. wrote:
    “Creating software generally involves choosing a set of instructions from a menu of instructions a computer system can handle in order to perform a desired function. That to me is not an invention, just a utilization.”

    Pretty much all mechanical inventions just combine elements from a set of available elements into a new inventive combination that can do something new and unexpected: Good example: telephone – some wires, metal membrane, metal rod etc.
    Software is nothing special. Why do you want to give some special exemption to folks who do it for a living ? What is so special abot them ?
    Some of them create new inventions (real inventions, like RSA), some other folks just steal the inventions created by others. Business as usual – same as in every field.
    And NO, copyright DOES NOT protect software inventions, an everybody knows it.

  57. Eric M,

    Creating [hard]ware generally involves choosing a set of [atoms] from a menu of [atoms known as the Periodic Table] in order to perform a desired function. That to [you should also be] not an invention, just a utilization.

  58. Small Guy,

    I think that the point of bringing up that patent is that the Claim 1 for the referenced patent was issued even in light of all the references present. With such a broad claim issued, nobody would even attempt to “practically” implement the invention until the 20 years is up, if someone did they would be liable for infringement. So the net effect of that patent would be to hinder advancement of the useful (or “practical”) art and science for 20 years. This is exactly against the constitutional purpose of granting patents.

    Software is also special in that it enjoys both patent and copyright protection today. Most other patentable subjects do not also enjoy copyright protection. My opinion is that making most software is much more of a creative act than an inventive one, so most software should be only copyrighted. Creating software generally involves choosing a set of instructions from a menu of instructions a computer system can handle in order to perform a desired function. That to me is not an invention, just a utilization.

  59. “Does anyone think the Supreme Court will say the question of what constitutes patentable subject matter is more appropriately left to Congress to decide statutorially?”

    I don’t know. Maybe with the current composition of the Court, I believe are more inclined to say “Yes.”

    However, in the past, the Court has asserted that patentable subject matter is constitutionally limited.

  60. The prohibition against claiming “software per se” has always existed. It is a form-over-substance rule. It’s not really about the invention at all, but simply about how you phrase the preamble of the claim.

    If you claim “Instructions for doing X” or “Software for doing X” or “Code for doing X”, your claims will be rejected. On the other hand, if the claims expressly put the code/instructions/software in/on a physical medium (memory, a disk, a storage medium, etc.), the claims are okay.

    Previously, it was also okay to claim the instructions as being encoded in a signal, but that issue is under review at the moment. I don’t believe that there is any reasonable policy argument for distinguishing between instructions in a signal and instructions in a memory. (remeber vacuum tubes? They stored software “in memory” as a signal.

    As a practical matter, the biggest problem I have with holding software embodied in a signal to be unpatentable is that it reverses the PTO’s previously published position and retroactively invalidates thousands of issued patents.

    As far as banning human-performed methods from patentability, a decision to that effect would be ridiculous.

  61. “Does anyone think the Supreme Court will say the question of what constitutes patentable subject matter is more appropriately left to Congress to decide statutorially?”

    Yes.

  62. “Here are a group of intrepid fellows who have patented a swath of quantum computing wide enough to employ all the world’s patent lawyers in infringement litigation for he next thousand years:”

    You do know that all patents expire after about 20 years ?
    And there are no so-called “submarine patents” anymore.
    It’s pretty worthless to get a patent on some advanced idea if that idea cannot be practically implemented in the next 20 years (“practically” means cheaply enough to be commercially manufactured and sold in large enough quantities)

    BTW, the list of non-patent references cited for that particular patent is just overwhelming… Poor patent examiner…

  63. Isn’t it impossible to know a priori whether a new field will end up being one “for which patent protection would have the effect opposite of promoting the useful arts and sciences”? So, ten years after the first patent in said field, when such determination is made, should all such patents be declared invalid? Of course, going forward, one could stop issuing new patents.

    Does anyone think the Supreme Court will say the question of what constitutes patentable subject matter is more appropriately left to Congress to decide statutorially?

  64. Signals have been patentable since O’Reilly v Morse (and yes, the claim was for Morse code). I would hate to see In Re Nuitjen upset such an old precedent.

    I don’t much care for business method patents (although I’ve written a couple), whereas I do think software ought to be patentable as long as algorithmns aren’t, but we’ll all have to wait and see, won’t we? I doubt if anything more than subtle changes will occur.

  65. John Crossman said:
    “will be crucial to the future of patents for innovative progress in the financial and business worlds”

    This is a fantastically strong statement of the sort no reputable natural or social scientist would dare make and requires fantastically strong proof.

    Specifically,

    Why would not financial and business “worlds”, which have existed and innovated from before recorded time, suddenly now, in the 21st century cease to innovate? They are now prevented from innovation for some reason. Please prove this will be a direct consequence of the Court’s actions.

    The well known “anything under the sun” statement was NOT the Supreme Court’s and belongs to no member past or present of the Court. The statement appears in DIAMOND v. CHAKRABARTY, 447 U.S. 303 (1980) because Chief Justice Burger cited the committee reports accompanying the 1952 Patent Act as a part of a review of relevant legislative history.

    Here is the full Burger quote:

    Subsequent patent statutes in 1836, 1870 and 1874 employed this same broad language. In 1952, when the patent laws were recodified, Congress replaced the word “art” with “process,” but otherwise left Jefferson’s language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952). 6

    link:

    link to caselaw.lp.findlaw.com

    This are not, then the Court’s words.

    Finally, the Constitutionally defined purpose of a patent is to “advance the useful arts and sciences”. Absent that prerequisite, no patent is to be issued; patents are not entitlements.

    Therefore, any of the following could happen and be in accord with the spirit and letter of the U.S. Constitution:

    A new field could emerge for which patent protection would have the effect opposite of promoting the useful arts and sciences.

    I do not need to specify what that field is or what its characteristics would be, it’s enough to say that IF such a field did emerge THEN no patent protection would be afforded.

    Note that the vast majority of computer scientists believe that software is such a field.

    The real-world effects of patenting within a field could run counter to the public good. In this case, no patents would be issued EVEN IF they tended on the whole to promote the useful arts and sciences.

    There are any number such effects possible. Patents could be either broad or pervasive in such a way as to cause people to spontaneously infringe. Infringement which is inescapable and universal is good cause to remove patent protection from the subject matter. In fact, this is the case currently with software patents.

    Over all, here is no guarantee that the application of a set of ideas and principles which were productive of beneficial societal outcomes in the 18th century can be applied indefinitely. Monopoly issuance by the government over increasingly broader subject matter and increasingly minuscule “innovations” may not work with machines which are more complicated by orders of magnitude than even the most complicated computer chips, that is with software on the one hand and human thought in the form of business methods and practices on the other.

    Here are a group of intrepid fellows who have patented a swath of quantum computing wide enough to employ all the world’s patent lawyers in infringement litigation for he next thousand years:

    link to patft.uspto.gov

    From that patent:

    1. A method for quantum computation, comprising: preparing a set of one or more qubits capable of storing quantum information in 2.sup.n possible states or their superposition, wherein n is the number of qubits and n.gtoreq.1, and wherein the qubit set is subject to a decoherence mechanism that could cause a loss of quantum information stored in some but not all of the states; performing a quantum measurement of the qubit set to determine which of the 2.sup.n states is/are not susceptible to decoherence from the decoherence mechanism; and encoding and processing quantum information in one or more of the decoherence-free states of the set of qubit via either an electromagnetic interaction with the set of qubit or via controlling interactions between qubits

    Anyone who follows this even casually understand what a land grab that is. Its future rejection will, if nothing else, cite society’s countervailing need for more than 6 guys and their lawyers to have all the world’s money.

    Patents have a purpose- to promote the useful arts and sciences. That is their ONLY purpose. When where and to what degree they stop performing that useful function in each of the different endeavors is a matter of judgment. It is not unconstitutional nor contradictory for the Court to decide that software or business method or biotech patents or any other kind of patent either never did or no longer does fulfill its Constitutionally defined role.

  66. As noted in my prior comment, the following two very different, and very much broader, issues do NOT NEED to be decided by the CAFC in any of these cases, should not be confused with the narrower issue actually before the Court in these cases, and should more appropriately be adddressed en banc, and/or by the Supreme Court, namely: (1) should there be an en banc reversal of the panel decision in State Street as to whether or not ANY kind of “business method” should be patentable, even if specifically claimed as computer-implimented, as is still now allowed; and(2)whether or not software that only affects or controls the operation of a computer, and does not affect any physical transformion of another object or material [like the curing time of a rubber tire], should continue to be patentable even if claimed as residing on computer-readable storage media.

  67. When the CAFC said in State Street in 1998 that business methods are patentable like any other useful etc. method, it meant what it said. Software per se, as operated in or by a computing machine, had been held patentable since the Cash Management Account cases of Merrill Lynch in the early 1980′s. Business methods are things done in one’s head, around a table, or with pencil and paper, claimed as flow charts or decision trees; those methods, not just machine operations, are what were held patentable in the State Street and AT&T cases in reversing contrary decisions in the district courts. Some of us applied for and were granted “pure” business method patents soon after 1998, as patent no. 6338040; soon after that the PTO required at least one computer step, as in no. 6542875, disregarding State Street and AT&T. Whether the Supreme Court stands by its “anything under the sun made by man is patentable subject matter” statement, or retreats from it in the pending cases, will be crucial to the future of patents for innovative progress in the financial and business worlds. Let’s not go back either to the “synergism” or “flash of genius” tests for non-obviousness, or to only machine-based methods for patentable subject matter!

  68. What is “software that is disembodied from a physical structure?” I suppose it could be a software *design* that is still just a topic of conversation among engineers, without even being sketched on a whiteboard. But anything that is mature enough to be called “software” (as opposed to a design) is “embodied in a physical structure” – a memory or transmission medium, a transmission signal, etc.

  69. The specific issue in BOTH the Comiskey and Bilsky cases is whether or not business method claims written so broadly as to NOT REQUIRE any use of any part of a computer or other machine, i.e. peformable mentally OR with a pencil and paper, are patentable.

  70. (1) I should note that the predictions are mine, not Hal’s.
    (2) I think if software ‘per se’ as software that is disembodied from a physical structure.

  71. Source code claimed by itself has never been held as constituting patentable subject matter. Conversely, source code embedded on a disk, for example, does constitute patentable subject matter. Take a look at the claims in many old IBM and HP patents. Also see In re Gramms and cases that follow.

  72. I was surprised “software” managed to become patentable in the first place. Additionally, business method patents have been abused. The pendulum swings back? DR

  73. step_back asks: “What is the definition of ‘software per se’”

    In the initial post, “per se” modified “is not patentable,” not “software.”

    I don’t think Prof. Wegner has a prediction one way or the other on the ultimate result. As Dennis notes, the 101 rule is not squarely raised.

  74. Looks to me like the courts are about to step back from the law as it has been applied for the last decade.

  75. What is the definition of “software per se” (or “as such”)? What does a claim for software per se look like? Does it need to start with: “I claim: A software per se comprising: A, B and C”?

    How does Hal know what the Supremes will do? Just a few questions by a curious cat. :-)

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