Guest Post by Martin Goetz
In Dennis Crouch's July 29, 2012 Patently-O essay "Ongoing Debate: Is Software Patentable?" he concludes by writing "It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable"
One of the main reasons for this long debated argument about the patentability of software is that the wrong question is being debated. The current debate is mainly on the question "Should software be Patentable? And whether software, in the form of a computer program, is patentable subject matter?" Software is just a means to an end. The debate should be about the invention.
If the debate was on the question "Is an invention that is patentable in hardware, equally patentable if implemented in software?" there would be much less controversy. Hardware implemented inventions have been issued for well over a hundred years, long before the advent of the digital computer.
Back in October 2011 I wrote an article for a UK publication "Should software be patentable? That's the wrong question to ask". Because of the many comments to that article, many of which were critical of my arguments, I was asked for a follow up article "Pioneer Goetz rebuts software patent critics". In these two articles I tried to stress that software (a computer program) is purely part of a proper disclosure
Article 29 of the US Patent Office's application guidelines covering "Disclosure Obligations" states "…An applicant for an invention shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention…."
Clearly, if the best mode is a computer program, then that disclosure would be described through diagrams, flow charts, and descriptive text. In many inventions, the best mode is a combination of hardware and software. (Or if the best mode is not hardware and/or software but cams, pistons, and flywheels or water or wind power, so be it.)
If the Patent Office's examiners focused on the invention, and not on how the invention was disclosed, it would reject many, if not most Software and Business Method Patents. Unfortunately, the Patent Office is bound by a plethora of confusing Supreme Court and lower courts decisions and opinions. Yet, the US Patent Office does have flexibility in how it interprets the US Supreme Court's many rulings. This gets us back to the US Patent Office and its examiners who must be better trained to recognize true inventions. Easily said, and a gigantic challenge for the US Patent Office. But, unfortunately, that is where we are today.
Postscript: Back on November 30, 2009, Patently-O published my blog "In Defense of Software Patents" in response to the editorial "Abandoning Software Patents" by Ciaran O'Riordan, Director of End Software Patents (posted on Patently-O on November 6, 2009) which had as its premise that software companies are trying to protect "software ideas". In that article I commented on the Bilski Opinion as well as gave some concrete examples of software-only patents as well as hardware/software patents. That article also received hundreds of comments, many being negative, and in response in September 2010 I had a follow up article "In Defense of Software Patents – Part 2". Both those articles explained why software companies and other companies should not be denied patent protection on true inventions solely because part or all of the disclosure involves a computer and a computer program. It goes on to describe why many software companies are high technology companies that employ many highly educated people fully capable of inventing.
101, not without the qualifications we just agreed upon.
And what happens if the Supreme Court has a break through and realizes that its additions to patent law are ultra vires and that the unambiguous words as actually written by Congress must be given their full legal effect?
“What then?”
Benson is completely overturned.
Applied math once again becomes patent eligible subject matter.
And Ned, MM, and 6 will literally drink the Kool Aide.
I think you missed the subtlety of the jab, Ned.
101 Integration Expert,
And what happens if the Supreme Court has a break through and realizes that its additions to patent law are ultra vires and that the unambiguous words as actually written by Congress must be given their full legal effect?
What then?
So you now agree that business methods, and software are statutory subject matter?
Mr. Expert, we have indeed. I think we are on the same page now.
“But if they are claimed in a manner such as the process itself is old and there is an improved method of calculating the math that is not integrated into that old process, then I would hope Mr. Integration Expert, that we would agree that such a process, not having its abstract subject matter integrated, is non statutory?”
Well, Mr. Heller, the law says we must take the claims as a whole.
So if the claim is a process claim, and the process itself is old, such as Diehr’s process for curing rubber, that will not disqualify it at least at 101.
Now if the process contains math, such as the Arrhenius equation used in Diehr, we must still take the claims as a whole, and the answer would still be that the claims are not barred at 101.
Now I will grant you that if the process is a pure math equation such as the arrhenius equation, and that equation is claimed by itself it will be ruled as non statutory subject matter because of a judicially created exception. And yes in that scenario the arrhenius equation would be placed under the abstract idea umbrella even though there is nothing abstract about it.
But a claim of applied math, used in conjunction (integrated) with all the other steps ( non math) in the process is statutory subject matter, so long as the process as a whole can’t be completed just by solving the math problem alone.
This, “Integration Analysis” was established in Diehr, upheld in Biski, buttressed in Prometheus, and applied by the USPTO, Official Guidelines.
Understand now?
Did we make a breakthrough
Mr. SS, again, I must as, how does not distinguish between a claim to a new machine, process, manufacture or composition and an old machine, etc., where the novelty is in subject matter that is not within the useful Arts?
Explain.
Mr. 101, I will grant you, I can think of processes that improve qualtiy as a byproduct of their execution. But if they are claimed in a manner such as the process itself is old and there is an improved method of calculating the math that is not integrated into that old process, then I would hope Mr. Integration Expert, that we would agree that such a process, not having its abstract subject matter integrated, is non statutory?
You forgot to through in the non-sequitur of “Beauty,” Ned.
If you are going to totally ignore the posts already presented and rehash the tripe you want to peddle, why not be complete about it?
“101, “quality is a process?” Not really. One can equally say that risk is a process. ”
One can “say” anything they want to “say”. But it does not make it a fact.
First of all let’s make it clear that we are talking about applied processes, and not purely mental processes.
Now, Quality, as in the “Quality Assurance” QA process pioneered by engineers like Demming for business and industry, produces a concrete, objectively measured, guaranteed result.
There is “NOTHING” abstract about the Quality Assurance process. If you execute the exact steps of the process the engineers designed you will get the same exact results every time, guaranteed.
You can’t say the same thing about your concept of “risk”,
This is why processes deserve to be an independent category of the four enumerated categories.
Furthermore, the fact that you, and other others want to eliminate processes, because they are beneficial to business and industry has no logical basis whatsoever.
101, "quality is a process?"
Not really. One can equally say that risk is a process.
Both risk and quality are abstract concepts. Reducing risk may involve physical steps as imputs, but the ultimate calculation is simply mathematical in nature. Ditto quality.
“Quality. Likewise, describe how to make one.”
Ned, quality is a process!
Processes are as real and measurable as an anvil that Wile E. Coyote drops on your head.
You are so backwards in your thinking to suggest otherwise.
Have you never head of Demming?
link to en.wikipedia.org
Go read the bio. Then read the books and keep on reading all the authors and research and hopefully you will understand the importance of the processes and what business methods truly are
Maybe then you will see that there is more to patentable eligible subject matter than the contraptions from good old ACME.
“the warning in Prometheus needs to be better understood about the danger of eviscerating all subject matter,”
But that is what the vocal minority and anti-patent crowd want to do! However the more we understand the use of “integration” in Prometheus, the less chance there is of that happening.
Of course this is why you wont see MM, Ned, or 6 EVER dare discuss “Integration Analysis”, or attempt to apply the Official Office Guidelines on Integration to Ultramercial’s claims, or ANY claims. Despite MM,Ned and 6 celebrating the Prometheus decision and MM posting the link to the guidelines. Apparently they did not read or think before they took those actions.
“Ned, Your own strawman comes right back at you: You can sell a service (which is likely a process), but how do you build one?”
Notice Ned did not answer this question. Like all intellectually dishonest trolls, he has cut & run to kick up dusts in other threads.
Mr. Heller what I am pointing out is the fact that your question at Aug 15, 2012 at 11:05 AM is irrelevant.
If you wish to continue to play dum b that is your own affair. If you are even “playing” that is.
Ned, ever heard of the saying, ” Beauty is in the eye of the beholder?
Why are you even bringing up beauty?
Oh..thats right. You kick up dust to try and cover up the fact that you just lost a debate on the merits with LATBA!
actual reduction to practice is useful
“lack of support in the specification” is not a 101 issue
Processes can be useful within the useful Arts. Are you suggesting that useful Arts utility is the sine qua non?
Whoa there Mr. 101. Are you suggesting that useful and useful Arts are linked in some fashion?
Mr. Strawman, if you cannot build one, how can you sell one?
Any “Actual Inventor” that has licensed a patented process will tell you that the royalty is a “per use royalty” of the process itself. Each time the process is used the “Actual Inventor” gets paid.
Therefore processes are valuable.
Processes increase quality!
Processes increase productivity!!
Processes increase efficiency!!!
All which save time and money for business and industry and help improve the flow of commerce.
That’s why “Processes” are and shall remain an independent category of the four enumerated categories of patentable subject matter.
That’s a fallacious question since beauty comes under the liberal arts and patents come under the useful arts.
Mr. Heller please do not purposely conflate the arts!
It is a terribly intellectually dishonest thing to do!!!
“What kind of strawman is this?”
Mr. Heller dare I say, it is YOUR kind of strawman.
YOU make the fallacious assumption that all inventions have to be articles of manufacture. This is false.
There are also inventions that can be in the category of processes, compositions, and machines.
Remember anything “made” by man is the same as anything “created” by man. And as any Engineer will tell you, creation is a process.
But I will sit back now and continue watching “”Let Abstract Things Be Abstract” Intellectually B slap you.
It’s nice to have a break and good entertainment now that the Olympics are done.
"Quality" can be measured and therefore it is not abstract?
Can "beauty" be measured and if so is it not abstract?
Described to me the methodology for determining whether a poem is beautiful? Here's a sample poem:
"It was upon a Summers shynie day,
When Titan faire his beams did display,
In a fresh fountaine, farre from all mens view,
She bath'd her brest, the boiling heat t'alley,
She bath'd with roses red, and violets blew,
And all the sweetest flowers, that in the forrest grew.
""Build one" is a fallacious non-sequitur. Physical models simply aare not required."
What kind of strawman is this?
Mr. 101, so you think that beauty is not an abstract concept?
“one needs to be able to make use and sell either the patented product or the output of the patented method”
You almost grasp the fallacy of your own statement: “While this may not entirely be true in all circumstances”
If you can deal with your bias in a rational manner, you may be able to accept what is actually the law instead of crusading so much for a different law.
“In the case of a process, one that should be able to sell the thing produced by the patent process.”
That is your problem. You are not treating the enumerated category of process as an equal to the other categories, but rather as a means to obtaining something from the other categories.
It is a fatal bias. Process is not a subcategory.
As mentioned, price is real, quality can be real. There can be very real teachings that differentiate and that in themselves make for inventions. To think otherwise is a fallacy and disregards the entire 20th century manufacturung quality movement that made more “progress” than anything – and I do mean anything – in the eighteenth century.
Yes Errant. Beauty was not on my list. Do not engage in dust-kicking or strawmen.
“describe how to make one”
“make one” is likewise a fallacious non-sequitur. Those in the art are only too familiar with processes (not things) as Taguchi Methods and Six Sigma programs. Quality in these types of definitions are most definitely measurable and repeatable and every bit as real and non-abstract as eighteenth century anvils or plowshares.
“Build one” is a fallacious non-sequitur. Physical models simply aare not required.
At some level, agreed. But the be patentable, any and one needs to be able to make use and sell either the patented product or the output of the patented method. While this may not entirely be true in all circumstances, and I'm thinking of the Telephone Cases, at least the output is physical.
Mr. abstract, what I think it it gets down to is that in the case of a machine, article, or composition, one can both make and sell the patented invention. In the case of a process, one that should be able to sell the thing produced by the patent process.
One cannot make or sell price, quality (such as beautiful), risk or a number. I think this is the teaching, somewhat, of O'Reilly v. Morse. When something is abstract, there is no need to teach one how to make it because it does not physically exist.
Errant? OK. Back to abstract. Make and sell beauty.
Quality. Likewise, describe how to make one.
Accept this challenge then. Build one.
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