The Death of Google’s Patents?

By John F. Duffy* [File Attachment (42 KB)]

            The Patent and Trademark Office has now made clear that its newly developed position on patentable subject matter will invalidate many and perhaps most software patents, including pioneering patent claims to such innovators as Google, Inc.

            In a series of cases including In re Nuijten, In re Comiskey and In re Bilski, the Patent and Trademark Office has argued in favor of imposing new restrictions on the scope of patentable subject matter set forth by Congress in § 101 of the Patent Act.  In the most recent of these three—the currently pending en banc Bilski appeal—the Office takes the position that process inventions generally are unpatentable unless they “result in a physical transformation of an article” or are “tied to a particular machine.”[1] Perhaps, the agency has conceded, some “new, unforeseen technology” might warrant an “exception” to this formalistic test, but in the agency’s view, no such technology has yet emerged so there is no reason currently to use a more inclusive standard.[2]  

            The Bilski en banc hearing attracted enormous attention, and yet there has remained a sense among many patent practitioners that the PTO’s attempts to curtail section 101 would affect only a few atypical patent claims.  The vast bulk of patents on software, business and information technology are thought by some not to be threatened because those innovations are typically implemented on a machine—namely, a computer—and the tie to a machine would provide security against the agency’s contractions of § 101.  Even if that view were right, the contraction of patent eligibility would be very troubling because the patent system is supposed to be designed to encourage the atypical, the unusual and the innovative.  But that view is wrong.

            The logic of the PTO’s positions in Nuijten, Comiskey and Bilski has always threatened to destabilize whole fields of patenting, most especially in the field of software patents.  If the PTO’s test is followed, the crucial question for the vitality of patents on computer implemented inventions is whether a general purpose computer qualifies as a “particular” machine within the meaning of the agency’s test.  In two recent decisions announced after the oral arguments in the Bilski case, Ex parte Langemyr (May 28, 2008) and Ex parte Wasynczuk (June 2, 2008),[3] the PTO Board of Patent Appeals and Interferences has now supplied an answer to that question: A general purpose computer is not a particular machine, and thus innovative software processes are unpatentable if they are tied only to a general purpose computer.  

            That stark answer should capture the attention of the many inventors and firms owning, or seeking to own, patents on innovative computer implemented processes, for the PTO’s new interpretation of patentable subject matter provides a clear avenue to reject patent applications and to invalid issued patents on all such innovations without regard to how meritorious or creative the innovation is.  To understand the sweeping implications of this new position, we need only to consider how the PTO’s position applies to the patent on Google’s PageRank technology, which is surely one of the most famous and valuable of all modern software patents and which is now almost surely invalid under the agency’s position. 

The Patent on Google’s PageRank Technology

            Google has constructed its web search technology using a “technology for ranking web pages” that the company refers to as “PageRank.”[4]   This patented technology was developed by Larry Page and Sergey Brin while they were attending < ?xml:namespace prefix ="" st1 />Stanford University.[5]  Stanford owns the patent, and Google holds a perpetual license on the technology that is exclusive through at least 2011.[6]   The first claim of this important patent reads:  

A computer implemented method of scoring a plurality of linked documents, comprising:

obtaining a plurality of documents, at least some of the documents being linked documents, at least some of the documents being linking documents, and at least some of the documents being both linked documents and linking documents, each of the linked documents being pointed to by a link in one or more of the linking documents;

 assigning a score to each of the linked documents based on scores of the one or more linking documents; and

 processing the linked documents according to their scores.

U.S. Pat. No. 6,285,999 (filed Jan. 9, 1998, issued Sept. 4, 2001).[7].

            How does Google’s patent fare under the position advanced by the government in Bilski?  The first part of the government’s test recognizes the patentable eligibility for processes that result in “a physical transformation of an article.”  Google’s PageRank process seems to fail that part of the test, for the process merely generates a set of scores (which are merely numbers) that are then used to score or rank documents.  The documents themselves probably do not qualify as physical articles under the government’s restrictive test, for the documents are typically virtual webpages.  Moreover, even if the documents would count as physical articles, they are not transformed; the process merely ranks them.  The total output from the Google patent is just a mass of intangible data, and worse still it is intangible data about intangible documents. Simply put, there’s no “physical,” no “transformation,” and no “article.”  Indeed, Google’s process is even less physical than the process at issue in Bilski, which involved hedging the volatility in money flows.  Dollars and cents seem real and physical enough for many people.  If processes affecting money flows do not qualify as producing a physical transformation, it seems impossible to imagine that a process would qualify where it only scores virtual documents by virtual links to other virtual documents.  

            The second part of the PTO’s proposed eligibility test is thus crucial.  Unlike the patent claim in Bilski, which was not limited to machine implemented hedges, Google’s PageRank patent claim expressly states that it is “computer implemented.”  But the government’s test does not merely require a connection to a machine; it requires a tie to a particular machine.  

            On a recent panel held after the oral argument in Bilski, I raised the issue of Google’s patent claim with Ray Chen, the lawyer who represented the PTO in Bilski, and he asserted that, under the PTO’s position, the Google claim was probably still patentable.[8]  But in light of the PTO’s subsequent decisions in Langemyr and Wasynczuk, it is increasingly hard to see how Google’s PageRank patent survives.  Nor is that one patent an anomaly in Google’s portfolio.[9]  Indeed, other patents owned by Google include claims that do not even include a formal limitation to a computer.[10]  Google might have thought that the patent system would surely protect new technological developments that are highly creative and socially valuable.  The PTO’s new position proves that view mistaken.

Langemyr and Wasynczuk

            The patent claim at issue in Langemyr covers a “method executed in a computer apparatus” for producing a model of a physical system using a set of partial differential equations.[11]  Even though Langemyr’s claimed invention is more closely tied to the physical world than Google’s PageRank technology is—Langemyr is, after all, modeling the physical systems rather than scoring virtual documents by their virtual links to other virtual documents—the PTO Board still had little difficulty finding that Langemyr’s claimed process does not contain a “physical transformation” and therefore does not qualify as patentable subject matter under the first part of the PTO’s test.  The Board reasoned that the claimed process produced no “transformation of subject matter but merely an abstract mathematical expression that is created from the previous steps.”[12]  The process, the Board noted, “does not require any physical output into the real world.”[13]  Precisely the same can be said of Google’s patented process, which produces merely mathematical expressions—a set of ranks or scores—and lacks any physical output into the real world.

            Thus for both Langemyr and Google, patent eligibility under the PTO’s test comes down to the interpretation of the second part of the PTO’s test.  Both the Langemyr and Google patent claims are expressly limited to processes “executed” (Langemyr) or “implemented” (Google) on a general purpose computer, and the Langemyr decision holds that “the limitation that the method is ‘executed in a computer apparatus’ does not tie the method to a ‘particular machine.’”[14]  The key flaw in Langemyr’s claim, the PTO Board reasoned, was its general applicability to all computer:  “Any and all computing systems will suffice, indicating that the claim is not directed to the function of any particular machine. … Thus, the claimed method is not tied to ‘a particular machine,’ but rather is tied only to a general purpose computer.” [15] 

            In these crucial passages, the PTO Board has provided the foundation for rejecting and invalidating huge swaths of software patents, including not merely Langemyr’s claims, but those of Google, Microsoft, IBM and many other companies.  If we want to evaluate the PTO’s ongoing attempts to constrict § 101, it does not seem an understatement to say that the constriction is truly breathtaking, given that the PTO’s position pushes outside the patent system Google’s PageRank patent, even though that patent covers one of the most widely known and commercially successful innovations of our era.  

            This is not, however, the end of the story.  The PTO’s decision in Ex parte Wasynczuk provides one final twist so Kafkaesque as to strain credulity.  

            As in Langemyr, the invention at issue in Wasynczuk relates to a “computer-implemented” process for modeling physical systems.[16] As in Langemyr, the PTO Board in Wasynczuk holds the broadest claim in the application to be unpatentable subject matter because “the sole structural limitation recited is the ‘computer-implemented system’ of the preamble” and that limitation “is not any particular apparatus” because the computer could be “essentially any conventional apparatus that performs the claimed functions.”[17] 

            Yet unlike in Langemyr, the application in Wasynczuk also included a narrower claim in which “the first simulating step [of the claimed process] is performed on ‘a first physical computing device’ and the second simulating step is performed on ‘a second physical computing device.’”[18]  The PTO Board holds that claim to be patentable subject matter.  The Board concluded that the collection of the two “physical computing devices” operating together “is ‘a particular apparatus’ to which the process is tied, not simply a generic computing device for performing the steps.”[19]  Distribution of the process over two general purpose computing devices quite clearly seems to be the key to patentability in the Board’s view, for the Board emphasized that the narrower claim covered only the embodiment in Wasynczuk’s specification that “uses two computing devices” not the embodiment that “uses a single computer.”[20]  In sum, an innovative process is not patentable when operating on a single computer processor but is when operating on two processors, even though the Board recognizes that the process in the unpatentable claim “is essentially the method” set forth in the patentable claim.[21]  

            Google’s PageRank patent claim is of course not saved by the PTO’s caveat that two computer processors are better one when it comes to patentable subject matter.  The PageRank claim requires only computer implementation and is thus invalid under both Langemyr and Wasynczuk.  But the Wasynczuk definition of “particular machine” opens up vast possibilities for future litigation.  In an age when even simple laptops often contain multiple processors, many patent claims could be written as functioning on multiple “physical computing devices.”  Will such claims generally be patent eligible?  Will dual core processors operating on a single chip (e.g., Intel’s Centrino Duo® chip) constitute a “particular machine”?  Or will the processors have to be physically separate chips or physically separate computers?  Will the patent claims have to specify that certain steps occur only on one processor while other steps occur solely on the other?  Will the result be different if the processors share steps to some degree?  All these and many more fascinating questions will provide ample billable hours for patent attorneys even as inventors look on with utter horror and disbelief at the crucial importance the legal system is placing on distinctions that are technologically meaningless to the innovations sought to be patented. 

Requiem (?) for Google’s Patent 

            The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit.  It will surely be cause for mourning among those who believe that allowing patents on cutting edge technologies has served the country well for more than two centuries and that a radical departure from the traditional approach would be unwise.  And it is likely to generate puzzlement among business people and innovators, who may wonder how agency decisions supposedly premised on the need for ensuring that “that the patent system be directed to protecting technological innovations”[22] have ended up rendering unpatentable innovations in search engine technology, computer modeling, bioinformatics and many other innovations in cutting edge fields related to software and information technology.

            Undeniably, however, the pallor now cast upon Google’s patents and many other software patents highlight the stakes in the Federal Circuit’s pending en banc decision in Bilski. The PTO Board’s reasoning in Wasynczuk also reveals that the agency’s proposed new rule for patentable subject matter will not produce certainty but will instead open up software patents to new and previously unimagined litigation over the precise scope of the concept of a “particular machine.” Vast industries of modern innovation must now wait to see whether the courts will follow the agency’s lead. 



[1] PTO Supp. Bilski Br. at 25 (argument section heading; initial capitalization omitted).  See also id. at 6 (heading of argument section C.1, stating that “a Section 101 ‘process’ must either be tied to a particular apparatus or transform an article to a different state or thing”) (capitalization modified). 

[2] Id. at 9. 

[3] The decisions are available at, respectively, /media/docs/2008/07/fd081495.pdf and /media/docs/2008/07/fd081496.pdf.

[4]  Google Form S-1, Registration Statement (filed April 29, 2004) at 65.

[5] Id. at 67.

[6]  Id.  Google also stated in its SEC filing that patents are one of the legal mechanisms used to protected Google’s proprietary technology and that the company “rigorously control[s] access to proprietary technology.”  Id.  In light of these statements, made under pain perjury sanctions, there is no basis for believing anything other than that the PageRank patent is—or, in light of PTO’s new positions, was—an extremely valuable piece of intellectual property.

[7] The other claims in the PageRank patent include no more connections to a machine than does the first claim.  Twenty-seven of the twenty nine claims are directed to “computer implemented” processes that, like claim 1, have no limitation to a particular type of computer.  Two claims (18 & 19) are directed to software-on-a-disk claims (so-called Beauregard claims), with the claim covering a “computer-readable medium” containing instructions for the PageRank scoring process.

[8] See Tony Dutra, Bilski Opponents Renew Debate on Patentability Formalisms and Standards (May 30, 2008) (reporting my debate with Chen on whether the PTO’s position undermined Google’s patents). 

[9] See, e.g., U.S. Pat. No. 6,678,681 (issued Jan. 13, 2004) (setting forth a “computer implemented method of extracting information from a database”); U.S. Pat. No. 6,865,575 (March 8, 2005) (setting forth a “computer implemented method” for “using a modified index to provide search results in response to an ambiguous search query”).

[10] For example, the first claim in U.S. Patent No. 6,526,440 (issued Feb. 25, 2003), which discloses an improved search engine technology, does not even expressly include the limitation that the process must be computer implemented:

1. A method of identifying documents relevant to a search query, comprising:

obtaining an initial set of relevant documents from a corpus;

ranking the initial set of documents to obtain a relevance score for each document in the initial set of documents;

calculating a local score value for at least two of the documents in the initial set, the local score value quantifying an amount that the at least two documents are referenced by other documents in the initial set of documents; and

refining the relevance scores for the documents in the initial set based on the local score values.

See also U.S. Pat. No. 7,222,299 (issued May 22, 2007) (claiming a new method for “detecting quoted text” that is not limited to computer implemented versions of the method). 

[11] Claim 1 in Langemyr’s application reads:    

1. A method executed in a computer apparatus for creating a model of a combined physical system having physical quantities by representing physical quantities of the combined physical system in terms of a combined set of partial differential equations, the method comprising:

representing at least one of a plurality of systems as two or more selected application modes modeling physical quantities of said one of said plurality of systems;

determining a set of partial differential equations for each of the two or more selected application modes, parameters of the partial differential equations being physical quantities of corresponding ones of said plurality of systems;

forming said combined set of partial differential equations using the determined sets of partial differential equations associated with said one of said plurality of systems; and

outputting a model of said combined physical system based on said combined set of partial differential equations for the two or more selected application modes for the said one of said plurality of systems, whereby the model represents a mathematical expression of the physical quantities of the combined physical system.

Langemyr, BPAI Slip Op. at 2-3. 

[12] Id. at 21.

[13] Id.

[14] Id. at 22. 

[15] Id. at 22, 24.  The Board also rejected Langemyr’s software-on-a-disk claim (Beauregard claims), explaining that it could “see no reason why placing instructions on a computer readable medium … should be treated any differently from the method of claim 1.”  Id. at 28. 

[16] Wasynczuk’s claim 1 reads: 

1. A computer-implemented system, comprising:

a first executing process that:

implements a first continuous-time model to simulate a first physical subsystem, the first model being programmed in a first language and having a first state variable; and

sends a first series of state-related numerical values, each numerical value reflecting information relating to the value of the first state variable at a different point t, in simulation time in the first model; and

a second executing process that:

receives said first series of state-related numerical values from said first executing process without said first series of state-related numerical values passing through a central communication process;

implements a second continuous-time model to simulate a second physical subsystem, the second model being programmed in a second language and taking as an input values from said first series of state-related numerical values; and

outputs data representative of a state of the second continuous-time model.

Wasyczuk, BPAI Slip Op. at 2-3. 

[17] Id. at 25.

[18] Id. at 22.

[19] Id. 

[20] Id. at 22. 

[21] Id. at 25.

[22] Langemyr, Slip Op. at 8; Wasynczuk, Slip Op. at 12.   

265 thoughts on “The Death of Google’s Patents?

  1. 265

    I quite agree: computer implementable inventions that solve technical problems should be patentable as methods, programmed apparatus and program products – with or without data carriers
    – just as they are in Europe.

  2. 264

    Now here’s the test: uspat no 4713817 to Wei – dec 1987 (Wei wins the Shannon award for this invention – for those who don’t know the Shannon award is like a objectively award noble prize in communication). Trellis encoding – attributed to Wei – is the major breakthru in modern communications – it is a perfect example of human innovation by that i mean a true human ‘invention’ and not a feature found in nature like E=MC^2 – but of innovation that can (must) be expressed and implemented by mathematical application to the QAM signal. Here’s his method claim:

    31. A technique for estimating the most likely sequence of multi-dimensional signal points to have been sent via a channel from a transmitter of the kind that causes said multi-dimensional signal points to carry information about said sequence based on state transitions of a finite state device, said multi-dimensional signal points being drawn from a multi-dimensional constellation partitioned into multi-dimensional subsets corresponding to said state transitions, said multi-dimensional constellation being a concatenation of constituent constellations having fewer dimensions, each said constituent constellation being partitioned into constituent subsets, each said multi-dimensional subset consisting of multi-dimensional types, each said type being a concatenation of said constituent subsets, each said multi-dimensional signal point being a concatenation of a plurality of constituent signal points of fewer dimensions, said technique comprising

    determining the distances between each received constituent signal and the nearest constituent signal points in the corresponding said constituent subsets,

    determining the distance between each said received multi-dimensional signal and the nearest multi-dimensional signal point in each said multi-dimensional subset based on a combination of said distances with respect to constituent subsets corresponding to said multi-dimensional subset, and

    determining said most likely sequence based on the distances between each said received multi-dimensional signal and the nearest multi-dimensional signal point in each said multi-dimensional subset.

    Without question, the wei innovation – was sufficiently inventive to warrant a patent, but it appears to fail the new 101 test? Without question the trellis encoder/de-coder is implemented on a general purpose computer – but you can also implement it with an analogue demodulator and state-diagramed discrete logic circuit. Why the distinction? No modern communication product uses discrete circuit design- its all implemented on the dsp (a general purpose computer that happens to be fast at mathematical calculations).

  3. 263

    “no rights can exist without the right to translate one’s rights into reality—
    to think, to work and to keep the results”

  4. 262

    What that means in very simple terms is that a Search Engine Bot should not follow that link. Your commentator receives no link benefit from this and gets no page rank credit from Google. The reason why this is a default action in WordPress is to combat comment spam, to stop people from leaving meaningless comments just to get a link back to their websites

  5. 261

    “Not until we let go of the e-g-o is this world going to transcend its childlike practice of needing to be noticed and needing to own everything it creates.”

    Albert Hoffman tried, Glen Campbell cried.

  6. 260

    This is a good article on software patent issues. I’m convinced that it’s time to eliminate the software patent process, and simply use the existing copyright and trademark protection for software. See my article on blog.startupprofessionals.com titled “Software Patents: Time for a Change” for specifics.

    Marty Zwilling, Founder & CEO, Startup Professionals, Inc.

  7. 259

    Haven’t courts already denied this line of logic from the PTO (general purpose computer vs. particular computer)? as cited in In re Lowry, In re Bernhart and Fetterer states:
    There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i.e. it is structurally the same, no matter how new, useful and unobvious the result. . . . To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed. Bernhart, 417 F.2d at 1400.

  8. 258

    Under the United States Rejection and Trademark Office standard, word processors, spreadsheets, CAD programs (unless connected to a rapid prototyping machine), web browsers, database management software, etc. are all ‘natural phenomenona’.

    Did anyone ever found one grow on a tree?

    Moreover, to all those that claim sthat those inventions could be generated by ‘having sufficient number of monkeys given sufficient time, and sufficient number of general purpose computers’ willing to take the delay of ‘sufficient time’ (read ‘infinity – 0.1 sec’) before they could use those inventions?

    if so, kindly wait and do not use any of those great inventions unti you have sufficient monkeys work sufficient time.

    The USPTO did hurt many of the people that invented those great things and State Street came to fix this grave injustice. Now, the USRTO is trying to bring back the theft of intelectual property by the state, not for the benefit of the state, but for the benefit of their total and utter incompetance.

  9. 257

    …..and on and on it goes! Am sure that someone will soon patent a system and methodology for enabling the creation of a universe!

    Might even be one of the majors; Monsanto, Beyer etc seeing they’ve already started patenting seeds (material creations already in existence), genetics etc. So why stop there? What if a new material was found on an orbiting planet that could fuel the world’s appetite for power? What if the funders of the program that made the discovery decided to patent the resource and then license the material back to the whole world?

    As I wrote before, ideas are formed from various interactions with and observations of ‘things already in existence’. Nothing is formed in a vacuum. Newness is fundamentally a modification of an oldness. Patent holders (those who can afford to protect their newness) believe they have a ‘right’ to their specific newness because they hold a piece of paper acknowledging their right to enforce their ownership. The whole patent system is itself just a perpetual incremental revenue generating engine.

    In essence, what it all boils down to is this: patents are about egos and proof of ‘ownership’. As a collective and as a race we don’t have the capacity to truly share in knowledge…well not yet anyway. Not until we let go of the e-g-o is this world going to transcend its childlike practice of needing to be noticed and needing to own everything it creates.

    Perhaps the acceleration of global climate change might move us a little closer to harnessing the untold potential we could realize if we actually collaborated on everything from solar power to waste management to super efficient transport systems.

    I live in hope we’ll wake up soon ’cause something’s gotta give!

    TFD (from the heart not the head)

  10. 255

    The patent document contains many general suggestions about the direction Google wants to move their search criteria and ranking techniques in the near future.

    The document points out two areas in particular in which “there remains a need to improve the quality of results generated by search engines.”

  11. 254

    “The only difference between one program and another is the order in which the commands are sent to the CPU.”

    Begin Pseudo Program #1:

    Get Random_Number(1,10)
    If Random_Number > 6
    Then Fetch and Perform Instruction_1
    If Random_Number > 2
    Then Fetch and Perform Instruction_2
    Else, Reformat(HardDrive_C)
    End If

    End Program_#1

    “The only difference between one program and another is the order in which the commands are sent to the CPU.”

  12. 253

    Mike “2) Software is, and always will be, an algorithm. It’s a procedure. It is a set of commands that is sent to a CPU. The only difference between one program and another is the order in which the commands are sent to the CPU.”

    Another difference between Adobe Photoshop and Microsoft Paint, for example, is that one delivers powerful tools that have been engineered to serve the needs of countless professional users and therefore has a multi-billion dollar market and the other is a simple bitmap editor of no real value to anyone.

  13. 252

    Huck “PDS: what patents do MySpace, Facebook and Twitter have?”

    Well, Google’s success depends crucially on the quality of its search technology, so right there is a reason for them to have a keen interest in patents. There’s nothing that MySpace etc do that is directly reliant on any particular technology.

    And Facebook at least have two published US patent applications. Claim 1 of one of those applications reads:

    1. A method for dynamically generating a privacy summary comprising:generating a profile for a user;receiving one or more privacy setting selections from the user associated with the profile;updating the profile associated with the user to incorporate the one or more privacy setting selections; andgenerating a privacy summary for the profile based on the one or more privacy setting selections.

    Isn’t that brilliant?

  14. 251

    “it was reported today that IT salaries have dropped for the first time in a long time (11 years)”

    Nobody could have predicted that would ever happen.

  15. 250

    Mr. Rat:

    You said “The invention would be the new algorithm – the mode of implementation really being irrelevant to the “newness” of the algorithm itself. The idea of implementing the algorithm in hard wired circuits rather than by software using lower level machine instructions being an obvious step given the state of the art.”

    So are you rejecting the claim to this invention under 101 or 103?

  16. 249

    Mike,

    With due respect, I’m not reaffirming anything. I don’t even understand what you mean by commands being “sent” to the CPU. A conventional CPU has a program counter register and various other registers including base address registers, a stack pointer, scratchpad registers, etc. At the appropriate time and in response to microcode, the program counter sends out an address signal to memory and memory returns the opcode(s) then pointed to by the program counter. The CPU then responds to the fetched opcodes.

    All these various signals and registers are real physical things. They are not abstractions. If they were abstractions, nothing would happen.

  17. 248

    Okay, Malcolm, I will bite — but be gentle with me.

    Photons are compositions of matter because they can be detected.

  18. 247

    Stepback and Mike

    I think a better example of the grey area between hardware and software would be an algorithm for multiplying or dividing two floating point numbers or taking a square root. Such an algorithm might be implemented in software (as it was when using the original IBM PC based on the 8088 chip) or in microcode or it might be implemented in the permanent physical structure of the chip, or some combination of one or more of these methods.

    The invention would be the new algorithm – the mode of implementation really being irrelevant to the “newness” of the algorithm itself. The idea of implementing the algorithm in hard wired circuits rather than by software using lower level machine instructions being an obvious step given the state of the art.

  19. 246

    Mike – Huh? follow the money … simple question, asked many times – is RSA patentable subject matter? Why not? Is RSA a business method? Does it enable business methods? Did it not enable the riddance of credit card books & real couriers carrying cash between banks? Or say, privacy protections or free speech … As to your points, you appear to disregard fundamental information theory …

    “Software if FUNDAMENTALLY DIFFERENT for many reasons.” actually it is not, in any meaningful way … try: babbage, boole, fourier, laplace, newton (even), nyquist, shannon, von neumann, reed & solomon, & if pendency in patents matters check out friedman’s recently issued patent filed in 1936 (us pat 6130946) … what is unstructured (“analog” – cognition – what we perceive) can be structured quite efficiently but NEVER can it be obscured (one time pads can only be reliably used once – the exception) … chaitin provides a rich basis for understanding the limits of programmability … akin to godel and the limits to mathematics (which i will argue IS the language of nature – software is not)

    “1) It is naturally obfuscated. You can NOT see how it works just by looking at it. The distributable (the binary that is sold) is not in a form where people can figure out how it works.”

    what people? if i can run the program it is a self-contained oracle … so-what if copyright protects the exactness of a particular arrangement of code (machine, object, executable) … and so what if you use one compiler versus another … no software is undecipherable – in fact, that is the basis for kerckhoff’s law which is to assume your adversary knows your cipher … err software … he formed this opinion in 1883 … it may be easy to think of software as code and a cipher as code plus a key

    “2) Software is, and always will be, an algorithm. It’s a procedure. It is a set of commands that is sent to a CPU. The only difference between one program and another is the order in which the commands are sent to the CPU.”

    an algorithm? huh. perhaps an organization or compilation of functions which may include algorithms but software is not “an algorithm” alone … & if it were an algorithm what is the CPU doing when it “processes” input>algorithm>output – stop? software enables people to structure data to achieve a particular outcome – very simplistic explanation but how much of the “software” that you “use” is a “procedure”? designed or reduced to practice as a method & by whom?

    if you are right, what is the point of diversity in programming? why not agree that mp3 is good enough and leave it at that – mp3 as a codec can also be included in other “software” with very different functionality – say streaming versus playing back a previously saved file. or, it can be used to record the cracked deCSS key which can be hard by others to crack the early DVD security …

    “3) Because it is a set of commands that is sent to a CPU, there is a finite number of ways to accomplish a task. This is NOT a finite set of linkages or shapes that you can work with when inventing a mechanism. The sky is the limit. It most certainly is NOT with computer language.”

    now you say it is a set of commands – that is not simply an algorithm, is it? who makes the commands? what is the set? which set of commands? computer language is just constrained by the computer – for instance, are you saying that a cpu is just a the same as a gpu? is CUDA the same as C or C++? are these the same? “the sky is the limit” – until your money and/or your creativity runs out … in the meanwhile, plenty of programming languages say they accomplish the same “commands” on different cpus – do they? write once … debug always … is the effort to improve software also not patentable? how about anti-virus or software that is designed specifically to resist the efforts of those programmers coding for malicious purposes?

    what is the difference between PDL (well, there was a little history there because it had one of the earliest software licenses CFG-Intel-Boeing – if memory serves – around 1974 – notwithstanding the famous letter to the editor written by a certain OS/apps company founder that software should not be free), LISP, Mathematica, Fortran?

    diversity matters and the patent system is the best mans to encourage public disclosure of innovation … you do not seem to provide a counter example of something that would be an adequate substitute – stated many times – litigation is cheaper than R&D

    “I can go on, but I’m sure that people already have their minds made up, one way or another…”

    please do go on … it was reported today that IT salaries have dropped for the first time in a long time (11 years) and so, how will software folks create value, protect themselves, and get paid? if software is OBFUSCATED why fear outsourcing – the developer of the software will always have a job (no?) – OTOH – even the DoD requires a certain level of documentation for the code – ah, legacy – what happened to all the “free” OS companies that became services providers and were then bought out?

    no one disagrees you are free to do things for free … but then again, we all compete against free …

  20. 245

    “Thus to me, sending commands to a CPU entails the transmission of electric charge carriers (i.e. electrons) through a conduction medium. All that “stuff”, electrons, wires, transistors, etc. are compositions of matter to my mind.”

    What about photons?

  21. 243

    I’m confused. Are you claiming that software is not a set of commands that gets sent to a CPU? Are you claiming that a set of commands is something physical? Are you reaffirming that the physical storage of commands results in physical changes of hardware? Or are you reaffirming that processing those commands results in physical changes of the hardware?

  22. 242

    “Are you serious? There can not be a brighter dividing line between hardware and software. Lets start with the obvious. Hardware is a physical object.”

    Mike,

    It seems to me that you and I were schooled in markedly different educational institutes. The place I attended taught hard science courses like physics and chemistry. Thus to me, sending commands to a CPU entails the transmission of electric charge carriers (i.e. electrons) through a conduction medium. All that “stuff”, electrons, wires, transistors, etc. are compositions of matter to my mind. Perhaps not to yours.

    When I touch an FPGA, it feels tangible to me even though its operations are defined by programming of internal configuration bits.

    When I touch a CPU, I know (from experience) that its internal operations are defined by microcode (not to be confused with assembly code). It’s hard and yet it contains code. There is no bright dividing line. Mother Nature does not care that you call one thing “hard” and another “soft”. The electrons move nonetheless. The registers get flipped. The voltages shift. Whether you are aware of it or not.

    Peace.

  23. 241

    “There is no bright dividing line between hardware and software.”?

    Are you serious? There can not be a brighter dividing line between hardware and software. Lets start with the obvious. Hardware is a physical object. It is matter, and it has mass. You can touch it. Software is a procedure. It is a series of commands that you send to a CPU. A procedure is not matter and is not has no mass. You can not touch it. Pretty cut and dry.

    Its like the difference between a piano and sheet music. Sheet music is a series of commands that you send to a piano to produce a song.

  24. 240

    Mike:

    You should also consider quickly filing a provisional application when you come up with a software “invention” (and then follow up within a year with your regular application). Should you later get involved in a controversy with someone contending that they have invented something similar around the same time as your invention date, the provisional application will give you proof of your conception date.

  25. 239

    As for your point 3,
    if you read what I wrote, I said that (unlike what patents were originally created for) it is NOT obvious how a program works just by looking at it. This is one of the reasons why patent protection is NOT needed. Copyright provides more then enough protection. Also, PageRank IS an algorithm. It’s a mathematical way of determining relevance based upon counting hyperlinks (among other things). Google themselves call it an algorithm. link to google.com. As for your other comments in point 3, I have no idea what you are talking about.

    As for your point 4,
    That’s the whole point of NOT allowing a patent. Google uses a specific implementation of searching using a method of counting hyperlinks. They obtained a patent on the system of searching by counting hyperlinks. It does not matter if you come up with a better implementation of searching using a method of counting hyperlinks (despite the fact that you came up with it completely independently, as you have no access to Google’s source code, and have no way of determining how Google did it by looking at their homepage). You can not use that ENTIRE RANGE OF IDEAS at all. So there is no point of even trying to advance that system yourself.

  26. 238

    Just because it is someone else’s burden to enforce their patent does not mean that I am not at a financial risk from them suing me. It’s like saying it’s ok to drive 5 mph past the speed limit because the cops probably won’t bust you, or it’s ok to speed in the country because the cops probably won’t be patrolling the specific road you are on.

    Ask any patent lawyer what the best way to protect yourself against patent law suits when you design software. The best defense is to have a large enough portfolio of patents (that you own) so that if they threaten to sue you, you threaten to sue them back. Hopefully, they believe that the resulting legal issues would cost more then what they expect to receive from you. Not such a bad strategy when you are a multimillion dollar corporation.

  27. 237

    Mike,

    calm DOWN. you’re shouting. you may be a cpu programmer (& believe it or whatever, many of us out here still do it or did it too), but you also appear to be ill informed about the pragmatics of patent law.

    1. You have absolutely no legal duty to go out and find patents that you might be infringing.
    2. It is the burden of the patent owner to instead find you if you are infringing and in many cases this is impossible from a practical sense.
    3. So you’re excuse for not coming up with today’s killer app is ill founded. All those patents out there are not stopping you. What’s stopping you is you’re lack of creativity. Come on now. I expect one killer app a week from you. After all, they’re all obvious and “mere” conversions of pre-existing business practices or math operations into automated ones. (cough cough)
    4. For example, I saw a recent news article about some Google ex-alums claiming to have come up with an even better search algorithm. Obviously you thought of it first and published it on one of those open source forums. So please point out the article so the rest of us won’t have to pay anything (not 1 cent) to those evil people who claim to have an improved search engine

  28. 236

    “There is no bright dividing line between hardware and software.”

    I agree but the conclusion I draw is that some inventions which amount to algorithms to be implemented in hardware may be objectionable in principle.

  29. 235

    [[Software p]] _P_atents are no more than a means of saying that_, for a limited term,_ no [[two people are ever]] _more than one person is_ allowed to [[have the same]] _use a_ bright idea _without risking a lawsuit or paying a royalty_.

  30. 234

    Max,

    Of course, based upon European case law and commentary, when software is “computer programs as such” and when it is not, is just as vague as the US.

  31. 233

    What are you talking about? I AM a programmer. I HAVE written applications. I DON’T write them anymore. It is literally IMPOSSIBLE to write any useful application without infringing on someone else’s patent. So, at my own personal level, patents have most certainly stiefeled innovation. In the software industry, that’s all I have EVER personally seen it do.

  32. 232

    Mike,

    May you be blessed with the insight to come up with the next killer app,

    And then rightfully cursed with the inability to profit from it. :-)

  33. 231

    Mike, many have closed their minds, true, but that doesn’t mean the subject is closed. The European Patent Convention has forbidden patents for “business methods, and computer programs, as such” since it came into force in 1978 but the European Patent Office grants thousands of patents each year on “computer-implemented inventions”. Europe thinks that patentability belongs to technological but not business innovation. The US Patent Statute was written before software was invented. It could be reformed but, hey, that’s proving to be difficult. The courts in the USA could draw the line but, hey, what do the judges know about “computer programs”? The issue, where to draw the line on patentability, is very much a work in progress, where trenchant and logical views can still carry the day.

  34. 230

    One last thing. Unlike virtually anything else that patents might cover, in the software industry, COPYRIGHT provide more then enough protection for innovation. Again, because the binary is obfuscated, you can not see how something is done by looking at it. Copyright prevents people from making an exact copy of that code and sell it themselves.

    So, the ONLY thing that eliminating patents would do in the software industry is make it easier for software engineers to write programs.

  35. 229

    Patents were never meant to cover thoughts, ideas, procedures, or algorithms. The REASON why patents are important and were created in the first place is that form ever follows function. When you invent a mechanism, you can figure out how it works simply by looking at it. So, to encourage people to continue to invent mechanisms without either a) worrying about people seeing how the mechanism is put together and selling their own product based on that, or b) building elaborate concealing devices that obfuscate or completely shield the mechanism, to prevent others from seeing it. The result is that it allows people to continue inventing without worrying about that stuff. Software if FUNDAMENTALLY DIFFERENT for many reasons.

    1) It is naturally obfuscated. You can NOT see how it works just by looking at it. The distributable (the binary that is sold) is not in a form where people can figure out how it works.

    2) Software is, and always will be, an algorithm. It’s a procedure. It is a set of commands that is sent to a CPU. The only difference between one program and another is the order in which the commands are sent to the CPU.

    3) Because it is a set of commands that is sent to a CPU, there is a finite number of ways to accomplish a task. This is NOT a finite set of linkages or shapes that you can work with when inventing a mechanism. The sky is the limit. It most certainly is NOT with computer language.

    I can go on, but I’m sure that people already have their minds made up, one way or another…

  36. 228

    Malcolm wrote “What’s the use of that? Well, for starters, it’s useful for converting X, Y, and Z to X2, Y2, and Z2, which you might want to do if you were [insert just about anything you want here].

    There you are. Give me my patent! Good luck for finding the motivation in the art to do all the steps that I can stick in my specification for blah blah and blah, given my ability to give those steps all kinds of silly technical names that will confound your ability to do a decent search.

    Anybody can come up with a new algorithm that works because math always works. You put a “plus” sign in your equation between two values and guess what: they add up. Every time! Add up three values and divide by three, you get the average: EVERY TIME! Is it because I am an “expert” at algorithms? No. It’s because all that is happening is that numbers are being changed to other numbers.”

    (1) Mechanical and electromechanical inventions are not required to have any more usefulness than that they do what I claim.

    (2) Nice strawman. The alogorithms you describe would not be patentable because of novelty. Which is my point. If it’s known or obvious, it should not be patentable.

    (3) X2, Y2, and Z2 have to have some sort of value or use to the user. Assuming they do, and assuming the method is novel, then why shouldn’t it be patentable.

  37. 227

    To Malcolm Mooney: Agreed “”Technical” as understood by the EPO” is boring. But at least it’s no more than a minority interest (for those working at the interface between technological innovative activity and business innovation. So “technical because I say it is” is a “puzzle at the edge of the claim” and therefore not much of a legal problem. Unlike “Obvious because I say it is” which is a universal challenge, to all patent attorneys.

  38. 226

    I thing the google patents should stay and everything except the 15 or 20 thousand good patents should be revoked There putting trash patents out the door at pto by the millions they will never lead to anything of significance being created. There reissuing the old with minor design changes that amount to reissuances with no justification! Now theres the place to let the proverbial axe fall.

  39. 225

    ironcislip: “Experts? What experts? Patent Law should be technology-neutral”

    Why? Because that maximizes revenues for lawyers?

    ironcislip: “And, no you need not care but please do provide an example of how software patents have caused you any issue versus say a DRM (patented software) in accessing some content you purchased? Where did the patent cause the issue?”

    I have already cited the enormous costs of abandoned projects and wasted time. I did so in my very first post here. DRM is a non-sequitur.

    I have no way of knowing what Mark Twain’s opinion on software patents would be. He might have taken the government at their word that the point of “intellectual property” is to *promote* innovation. If he did, then he would oppose intellectual property when it is applied in a way that deters innovation, as it does in the software industry.

  40. 224

    PDS says: “Although the big guys have lots of patents, try surviving (and prospering) as a little guy without one.”

    “Marketing only goes so far … ask Pets.com, e-Toys, Kozmo.com, etc…..”

    PDS: what patents do MySpace, Facebook and Twitter have?

  41. 223

    I think this situation deals primarily with the issue of Googles patents constituting business concepts and the longstanding argument that they are a restriction of interstate comerce.This is not true because they dont restrict they designate who has the right to the there own created intellectual materials and the profits from them.Also the intellectual material rights awarding only pertains to the segment of the market that the invention creates and without that creation that segment of interstate comerce would not exist.Refusal to grant patents on business concepts should stop because it is valuable property and has created the entire freemarket economy.Of course I created every new business concept including googles since 1953 without witch millions would be out of work with no thank yous either.

  42. 222

    “Scientists aren’t documents, are they, even if they write them? And the inventors were clever enough to apply this approach to ranking documents retrieved in response to a search query.”

    Leopold, the thing separating the computer-implemented Page Rank algorithm from the status ranking of academics watching their own and their peers’ citations ranking, is that the algorithm – which is quite old: poets in preliterate societies used it all the time, which is why we have Homer’s Illiad and Odyssey, instead of his competitors’ versions – was turned into software. And, for what it’s worth, it’s also the method used by Slashdot, to rank contributors.

    The algorithmic details which previously had resided in the brains of the academics and which were expressed in the form of citations on printed documents, were now turned into variables, constants, and the related data structures and lower-level algorithms of the computer programs.

    Page and Brin obviously woke up to its value during their studies. (Which makes Stanford U., a PITA, since they’ve sold out their academic integrity at that one point – since the algorithm is basic to academic status, any one university can’t claim ownership of it.)

  43. 221

    “I for one am not a patent attorney but I made my living for years writing original software.”

    I for one am a patent attorney and I made my living for years writing original software (including microcode, assembly level, higher level; as well as deciding when to implement functions in “hardware” or “firmware” as opposed to “software”). There is no bright dividing line between hardware and software. The electrons move nonetheless –to steal a paraphrase off of Galileo.

  44. 220

    “Method patents ARE “recipes” (for accomplishing some technical goal) that are published on paper, so what’s your point?”

    Lionel, Lionel, Lionel. As a matter of indisputable fact, method patents (the official ones that the PTO sends to applicants, anyway) are old pieces of paper with new arrangements of English text printed on them. That text describes an alleged “invention” but have you noticed that nobody (or nearly nobody) tries to claim the piece of paper with the descriptive text on it, in spite of the fact that the descriptive text represents new and non-obvious information? There is a reason for that.

    Of course, we’ve only seen the tip of the iceberg of business methods that are nearly as bad. I’m talking about claims that purport to cover methods of licensing the invention described in the patent and strategies for protecting the intellectual property described in the patent. I assume everybody has seen those sorts of claims, no? You know what those claims are good for? They are good for lining birdcages and lining patent attorneys’ pockets. That’s it.

  45. 219

    “How is coming up with a new algorithm any different than coming up with a new engine?”

    Here’s one difference: anybody can come up with a new algorithm with essentially zero intellectual energy expended, e.g., my new algorithm takes input of X, Y and Z and converts it new values X2, Y2 and Z2 by doing blah blah to X, then blah blah to Y, then blah blah to Z, then taking the results and blah blah blah, thus arriving at X2, Y2 and Z2.

    What’s the use of that? Well, for starters, it’s useful for converting X, Y, and Z to X2, Y2, and Z2, which you might want to do if you were [insert just about anything you want here].

    There you are. Give me my patent! Good luck for finding the motivation in the art to do all the steps that I can stick in my specification for blah blah and blah, given my ability to give those steps all kinds of silly technical names that will confound your ability to do a decent search.

    Anybody can come up with a new algorithm that works because math always works. You put a “plus” sign in your equation between two values and guess what: they add up. Every time! Add up three values and divide by three, you get the average: EVERY TIME! Is it because I am an “expert” at algorithms? No. It’s because all that is happening is that numbers are being changed to other numbers.

    Now let’s have some software geek try to invent a new non-obvious way of converting gas to motion that actually works.

  46. 218

    Malcolm,

    Method patents ARE “recipes” (for accomplishing some technical goal) that are published on paper, so what’s your point?

    Bureauguard claiming was simply a way to get around the ridiculous, baseless, and logic-impaired bias the USPTO had against software claims.

  47. 217

    Patents should not be denied simply on the basis of an arbitrary category. Novelty and obviousness should be more than enough to eliminate all the unpatentable stuff. All the arguments I have heard for eliminating software subject matter could be applied to any subject matter.

    Why should a method be unpatentable simply because it’s encoded in software instead of embodied in a physical apparatus? Why shouldn’t search algorithms be patentable? How is coming up with a new algorithm any different than coming up with a new engine?

    And anyone who believes there’s a bright line between software and hardware is ignorant or naive.

    The only practical arguments I have heard against SW patents regard their utility due to prosecution time and product lifecycles. However, given everyone’s fear of them I would say those are not so much of an issue.

  48. 216

    “There is a crippling misunderstanding of software as a mere mathematical algorithm, although at a very low level, it is just that.”

    I think that you will find that by and large the people who are skeptical about software patents have a better understanding of what software is than the people in favor of software patents.

    I for one am not a patent attorney but I made my living for years writing original software.

  49. 214

    There is a crippling misunderstanding of software as a mere mathematical algorithm, although at a very low level, it is just that.

    However, at higher levels, software modules are indistinguishable from physically embodied devices. They can provide automation, communication, conversions, command, regulation, etc. and directly affect industrial and human activity. This is not the ‘how’ but the ‘what’ of the results that software can provide.

    Any discussion must consider what type of software, its applicability to the physical world, and the results it generates. I do not believe a generic discussion based on method/business process claims will resolve subject matter issues satisfactorily.

  50. 213

    Statement of technical problem: Food processors (e.g., cuisinarts) are susceptible to malfunction (e.g., jamming up, blade shatter, finger gnawing) when fed ingredients in a haphazard order. Insertion of ingredients in a suitably alphabetized procession has been found to reduce malfunction. Food processor preference tends to the roman alphabet, however, ethnic dishes (such as humus) are best processed in order of the alphabet at used at the locale in question (e.g., greek).

  51. 212

    “Many of these new concepts will appear to be obvious in hindsight after they virally implant themselves into our collective conscious.”

    Question: When can you patent a “concept”?
    Answer: When it’s written on an old computer-readable medium.
    Question: Is an old piece of paper a computer readable medium?
    Answer: Yes.
    Question: But can you then patent a piece of old paper with a recipe written on it?
    Answer: No.
    Question: Why not?
    Answer: Stop asking questions or before you know it nobody will write software because a small fraction of software developers think software patents are really important.

  52. 211

    Software patents are no more than a means of saying that no two people are ever allowed to have the same bright idea.

    Ridiculous.

    (If the patent trolls hadn’t so badly abused the system, we wouldn’t be having this discussion.)

  53. 210

    MaxDrei “I can’t see how arranging a list of ingredients in alphabetical order can solve a “technical” problem.”

    The technical problem is how to alphabetize a list of ingredients that is not alphabetized. As you indicate, nobody can explain why this problem is not a technical problem as that term is allegedly “understood” by the EPO. And for the record: I did not bring this issue up and, frankly, it bores me.

  54. 209

    When the “software developers” chime in here about the horrors that patents have wrecked on their craft, it’s usually a case of forgive-them-for-they-know-not-what-they-do (or say).

    Most software experts have a very funnel visioned view of the world. They don’t understand that they and their craft would be wholly insignificant if it weren’t for the pack of electrons (a composition of matter) shuttling over to change the charged/discharged state of a gate on a transistor (transforming an article from one state to another).

    Design of new and unobvious software goes on even now, as we speak. Many of these new concepts will appear to be obvious in hindsight after they virally implant themselves into our collective conscious. But they are not obvious now. If they were, they would already be there as part of the prior art.

  55. 208

    ironsclip: “digital TV was purely a software development”

    LOL. Yes, let’s just make it up as we go along.

  56. 207

    ironsclip: “Is food a “useful art”?”

    Of course.

    “Why would you want to patent the “old piece of paper”?”

    I don’t. I want to patent the old piece of paper with a new recipe written on it. Why do I want to do that? Because it is easier to sue someone with a composition claim than a method claim. At least, that’s what I’ve been told here a billion times.

    But a better question might be: why **wouldn’t** I want that claim to a piece of paper with the new recipe written on it? If I’ve got the money and time to spend to acquire the patent and send letters to all the likely infringers informing them that I am ready to take them to court if they don’t talk to me about a license, then the question pretty much answers itself, doesn’t it?

    Patents are business and software developers want to play. Do they have to play? Of course not. But they want to play. Who doesn’t like to gamble anyway? A software developer with a few “big” ideas and a well-heeled venture capitalist can make all kinds of noise if they manage to eek out a couple fat patents. Then you sue 100 other “players” and settle out. You just made all your money back and then some. That’s business.

    And the public gets the benefit of having all that innovative software that wouldn’t otherwise exist.

    It’s nice work if you can get it. Too bad the last part about the innovation is a giant pile of baloney.

  57. 206

    Re: “There is some 80%-90% agreement amongst programmers that we neither want nor need double coverage by patents, that software patents are illogical and a harm.”

    And the other 10%-20% have developed new and inventive software.

  58. 205

    “Patent lawyers know because they get paid by all sides”

    I know lawyers who make money from divorce, personal injury, crime and bankruptcy – I don’t think any of them are so delusional as to think that divorces, injuries, crimes or bankruptcies are good for the economy.

  59. 204

    DriedMax – is that a softball question – they go to where the money is! and INDUSTRY, yes, INDUSTRY pays them – even you get a paycheck from said INDUSTRY, no?

    Patent lawyers know because they get paid by all sides (even Google) – the most objective measurement – perhaps the contrapositive is true – if there was no infringement Patent lawyers would know something too …

    what more proof is necessary – a patent is an instrument of industry – software developer “David”, of course, must not have any lawyers or patent pools or industry standards or policy decisions (broadcast flag & digital TV of course was purely a software development that benefits only patent lawyers?) to point out as examples of “who” benefits … is increased copyright & trademark protection too part of the “[fight] to end the horrible mess” …

    the horror

  60. 203

    Why not? There are plenty of patent lawyers professing software patents to be good for the industry. How do they know?

  61. 202

    “As a software developer, I can tell you the entire software industry, including Google, is desperately fighting to end the horrible mess that software patents have created.”

    You can tell us all of that, simply because you’re a software developer? Amazing!

  62. 201

    As a software developer, I can tell you the entire software industry, including Google, is desperately fighting to end the horrible mess that software patents have created. They have greatly stifled innovation and have caused nothing but problems for everyone involved. Lawyers are the only ones benefiting from the current mess. Patents have no place in software development.

  63. 200

    MONEY – fact remains – Google is now in the patent purchasing game to compete with Intellectual Ventures/patent trolls/innovators ergo patents are valuable enough for Google to work all sides of the intellectual property landscape – counterpoints raised above come largely from folks who may not like patents (and those who simply don’t understand patentability)

    As if on predictable cue, your question ignores the point that the patent system should be “useful arts”-neutral – but since you already know what is innovative & don’t suffer any of the hindsight oh-so-plentiful in this thread & massively messaged by those who say they know better … How about we parse what I think you are trying to say:

    Money: “So why can’t we patent an old piece of paper with a new recipe written on it? After all, food is useful.”

    Is food a “useful art”?
    Why would you want to patent the “old piece of paper”?
    For educational purposes to train would-be chefs?
    Perhaps that has already been patented (now in the public domain thanks to the public notice function, again ignored by most posters – however crappy you or others may think the patent – it was paid for by the applicant and is yet another piece of knowledge for all the world to use or not): US Pat 3,799,550?
    We can call the “old piece of paper” a board game, no, or must it be a machine? Say, US Pat 7,044,466?

    Maybe you have identified a dark horse trend, even with all the copyright & trademark protection and attention paid to ingredients of would-be candidates baking cookies & BBQ’ing whatever, at least the average person is asking the right questions & helpfully avoiding your prejudice against patentable subject matter, take a look – link to foodandwine.com

    How about using all of this with a machine coded for certain improvements in recipes: Method & system in control of coating color recipe link to patentstorm.us – Is that novel & useful? Ever run a restaurant? A chain of them? How about a franchise operation with layers of revenue streams from a variety of licenses with different rights agreed to by the parties? You know like splits for allowable improvements in a given menu as directed by the franchise? To whom does that improvement belong?

    Will a recipe that is most effective in removing trans fats – or even identifying them in ingredients at low cost- be a “useful art” – or does that cut into the bio field you so dearly hold as the one true area of innovation (even if the FDA, not open communications networks, as per the software arts, is the bottleneck/gatekeeper for such innovation – of course, no partisan involvement to maintain neutrality over pharma – no fixed pricing for the “food” to back-end the R&D) – But trans-fats means more drug development! So, what to do?

    And, a favorite resource IMHO to educate all people about patents – Uncle Phaedrus, Finder of Lost Recipes (What No Motorcycle Maintenance?) – on the difficulty of patenting a recipe … link to hungrybrowser.com

    Remember to not go backwards, Money-hindsight: MPEP 2106 STILL states:

    “Prior to evaluating the claimed invention under 35 U.S.C. 101, USPTO personnel are expected to conduct a thorough search of the prior art. Generally, a thorough search involves reviewing both U.S. and foreign patents and nonpatent literature. In many cases, the result of such a search will contribute to USPTO personnel’s understanding of the invention. Both claimed and unclaimed aspects of the invention described in the specification should be searched if there is a reasonable expectation that the unclaimed aspects may be later claimed. A search must take into account any structure or material described in the specification and its equivalents which correspond to the claimed means plus function limitation, in accordance with 35 U.S.C. 112, sixth paragraph and MPEP § 2181 through § 2186.”

    Analogous art queries may help you in your decision to patent, no? :: MPEP 2141.01 (truncated) See, for example, Ex parte Bland, 3 USPQ2d 1103 (Bd. Pat App. & Inter. 1986) (Claims were drawn to a particulate composition useful as a preservative for an animal foodstuff (or a method of inhibiting fungus growth in an animal foodstuff therewith) comprising verxite having absorbed thereon propionic acid. All references were concerned with absorbing biologically active materials on carriers, and therefore the teachings in each of the various references would have been pertinent to the problems in the other references and the invention at hand.)

    Any novel & nonobvious steps in your recipe – like that new anti-stick, cheese-doodle (tradename?), cotton candy you’ve been hawking at the summer fair? or is that a summer festival? Someone mentioned your involvement with BK Lounge – you think they have patents? Dell has some fairly well-known patents on order taking directing the manufacture of computers – maybe you have special coded recipe paper with coupons, affinity points & the like which has options that you can feed into one of your BK Lounge machines & the food manufacturing apparatus gets it right – user-controlled food manufacture for fast food – remember to have your “old piece of paper” contain trans-fat identifiers …

    Now about that relevance index you punted on … How apropos we are in a thread about search …

  64. 199

    Thanks for demonstrating your technical competence Max.

    To Anita, a web page arguably becomes “physical” when it is displayed on a screen. That aside, I would ignore the hackneyed analogies to pieces of paper with recipes foisted by the likes of Leopold Mooney.

  65. 198

    Sorry it doesn’t make sense to you Malcolm. As to your question, I can’t see how arranging a list of ingredients in alphabetical order can solve a “technical” problem. Maybe we are at cross-purposes. I was trying to help Anita K, whereas I suppose you are trying to assist further upthread. If the point you are making is the Aharonian one, that “technical”, like “obvious”, is undefined by the Statute, you’re right.

  66. 197

    maxdrei “BTW, the reason why the new recipe isn’t patentable in Europe is because it isn’t a solution to a “technical” problem. Does that make sense to you?”

    No. Is alphabetizing a list of ingredients a “technical problem”?

  67. 195

    Anita, to get a patent out of the USPTO you need to define in the words of a “claim” the area monopolised by your patent, in such a way that there is nothing old or obvious inside the “metes and bounds” (cute old-fashioned lawyers’ phrase, that) of your definition. A claim is nothing more than a list of “elements”. The more unrelated elements in your list, and the more recently developed things in your list, the harder it is for the PTO to prove that the combination of things in your list already existed, or was obvious. The debate above includes argument whether you can turn an old “book” or “web page” into a patentable book (or web page) just by reciting in the claim that some new, non-obvious and useful cooking recipe is written on it. At least, that’s how I understand it. BTW, the reason why the new recipe isn’t patentable in Europe is because it isn’t a solution to a “technical” problem. Does that make sense to you?

  68. 194

    Anita, to get a patent out of the USPTO you need to define in the words of a “claim” the area monopolised by your patent, in such a way that there is nothing old or obvious inside the “metes and bounds” (cute old-fashioned lawyers’ phrase, that) of your definition. A claim is nothing more than a list of “elements”. The more unrelated elements in your list, and the more recently developed things in your list, the harder it is for the PTO to prove that the combination of things in your list already existed, or was obvious. The debate above includes argument whether you can turn an old “book” or “web page” into a patentable book (or web page) just by reciting in the claim that some new, non-obvious and useful cooking recipe is written on it. At least, that’s how I understand it. BTW, the reason why the new recipe isn’t patentable in Europe is because it isn’t a solution to a “technical” problem. Does that make sense to you?

  69. 193

    I cann’t understand why an electronic medium (a webpage) is considered different from a physical medium such as a printed paper or a book though both provide the same information to the reader. Why is physical existance so inportant in patent law whereas the end result remains same for bot i.e. getting information.. can anyone clarify please.

  70. 192

    I’ve reviewed enough software patents now that I’ve come to realize that most are patently offensive. After marking out the gobbledygook, lawyer double-speak, you can get to the real meat of the patent. You’ll find it describes some marvelous (thick sarcasm on that word) innovation of using a “computer system” to “store data” in a “database”, or even more innovative, “computer algorithm” to manipulate data stored in a database. The solution to all this junk is simple. Issue copyrights on the compositions, the literary works, that talented software developers compose. The code is beautiful when well-written and junk other-wise. Well written code when published for public consumption should be protected, but like any great book, developers or authors should be inspired, but not merely plagiarize the work for profit. Unless of course the original author has placed the “open-source” composition into the public domain to help other author create wonderful compositions.

  71. 191

    “Patent Law should be technology-neutral – it is “promotion of the useful arts””

    So why can’t we patent an old piece of paper with a new recipe written on it? After all, food is useful.

  72. 190

    Huck Finn (ironic given your author was a huge proponent of IP protection – yes, even if that was not the wrod at the time though “patent pirate” most certainly was) “PDS: your slippery slope argument is unpersuasive. I’m a software developer. Why should I care whether patents are effective in semiconductors or pharmaceuticals? Let the experts in those areas argue about it. Each industry has its own economics and insofar as the patent system was supposed to “promote the progress of science and useful arts”, it is the government’s job to make sure the rules do that for all major industries. Most programmers will tell you that software parents are an impediment, not a help.”

    Experts? What experts? Patent Law should be technology-neutral – it is “promotion of the useful arts” – And, no you need not care but please do provide an example of how software patents have caused you any issue versus say a DRM (patented software) in accessing some content you purchased? Where did the patent cause the issue?

    Slippery slope to what? Another Patent Reform Act to more fully gut inventor rights? Say “hi” to Tom!

  73. 189

    “thinkfeeldo” –“You’re all missing the point. Most patents are derived from an observation of something already in existence.” – could that result from requirement that patent be published? how about the massive increase in “defensive patents”?
    “Very few are truly original.” – according to you.
    ‘In the not too distant future we will come to acknowledge them as one of our greatest mistakes realising they have been largely responsible for slowing human progress. TFD” – wow, human progress has been slowed – do tell!

    you have anything empirical to support this? it doesn’t exist. that we have several dominant software companies that have been successful in swallowing smaller innovators can hardly be viewed as a “mistake” … a huge uptick in patent purchase activities has been sorely needed to provide liquidity to a previously illiquid “market … and guess who the main purchasers are?

    that many entrepreneurs and software developers failed (often at the advice of VCs) to seek patent protection is equally “responsible for slowing human progress” if not far more to blame …

    asked before – why is is that copyright & trademark protection experience increased protections? & WHY do large IT/CE/Content folks pool patents? what is an industry standard? what is meant by “open”?

    this is business & patents present the most appropriate challenge to the status quo – that was precisely the point of the system!!!

    please point me to a patent that meets your “standard” of quality …

  74. 188

    Leopold: “And the inventors were clever enough to apply this approach to ranking documents retrieved in response to a search query.”

    Why is that “clever”? Seems to me to be about as clever as putting up an umbrella when it rains.

    If there was any cleverness in Google’s idea, it was whatever solution they devised (or borrowed) for doing the actual determination of what is being linked/quoted across a significant swath of the internet.

  75. 187

    “Next time you have an opportunity to talk to a venture capitalist, ask them what they think the value of patents are for a startup.”

    The average venture capitalist is not very bright and tends to lag behind the times about five to ten years.

  76. 186

    “Well, Leopold, I have to agree with you, that, with hindsight, everything seems obvious.”

    That’s not really correct. Not everything is obvious in hindsight. Haven’t you ever read a paper and been left thinking: “Wow, that’s really clever”. If everything was obvious in hindsight there would never be that sense of wonder at reading something truly novel.

  77. 185

    Well, Leopold, I have to agree with you, that, with hindsight, everything seems obvious. Prof Duffy points out exactly that, quoting Milton (if memory serves, Paradise Lost) in his recent Paper published in November 2007 Texas Law Review. But, then again, there’s an awful lot of people pointing out that doing by computer what hitherto was always done without a computer, is hardly a flash of genius but, rather, something lying plumb in the road (latin: ob Via) of technological progress. So, what we need is to examine whether the state of the art, at the date of the claim, contained any hint or suggestion to solve the objective technical problem (making search engines perform better) by Page Ranking. Matter of evidence, wouldn’t you say? Two sides to the debate? May the best evidence win, in a fair balanced fight, I say.

  78. 184

    “Excuse me, folks, but from what has been disclosed of the Google Page Rank algorithm reminds me of the method many scientists use to rank a fellow scientist. … Because, if as I guess, it is merely the computer-implemented form of status ranking used by academics from time immemorial – your value as a scientist is ranked by your peers in that if they quote your material, they value it; if they don’t, they don’t value it – then the patent is valueless and void, because it is a method of status ranking as old as scientific publication.”

    Uh-huh. Scientists aren’t documents, are they, even if they write them? And the inventors were clever enough to apply this approach to ranking documents retrieved in response to a search query. Seven years later, looking backwards, you’re able to see a vague resemblance. Congratulations – you’ve just demonstrated “hindsight reconstruction.”

  79. 183

    Not just scientific publications Wesley. This is how civil law jurisdictions (by that I mean Asia and mainland Europe) advance their jurisprudence. Not by Binding Precedent but by peer review and citation. Best example the by now thousands of decisions on obviousness, taken over 30 years at the European Patent Office, in inter Partes disputed post-issue opposition proceedings between parties such as Kimberly-Clark and P&G, or Boeing and Airbus. By now, there are 24 equal rank Boards of Appeal that revoke patents for the whole of Europe, in three twitches of a pen, with no recourse to any higher jurisdiction, and with no Binding Precedent. They get it right by the same process that a scientific theory grows in authority. But US patents have an assymetric advantage. Once granted by the USPTO, they have a Statutory Presumption of Validity, and cannot be found invalid until somebody comes up with enough evidence to clearly (NB the Statute says “clear and convincing”)convince a tribunal (utterly ignorant of patent law) that the USPTO got it wrong. No wonder “tech” eg Microsoft, found inescapable the logic that “Till the law changes, we need for our very survival a pile of patents bigger than those of all the others. We have to do this, even though, like Leonardo, we disagree with the premise peddled by our tormenters”. Many look to Congress to fix the broken system, but members of Congress themselves have difficulty grasping how patent law works. That’s fully understandable. As the Irishman said, when asked by a passing motorist the way to Dublin “That’s very difficult. You have picked a bad place to start from”. So with patent law reform. Back in the 1970’s Europe had an advantage. No one Member State was powerful enough to impose its patent law on all the rest. What we got was a New Model Patent Law, starting from a plain white sheet of paper. But that option isn’t open to the United States, is it?

  80. 182

    Excuse me, folks, but from what has been disclosed of the Google Page Rank algorithm reminds me of the method many scientists use to rank a fellow scientist. It would be obvious to the PTO, too, excpet they weren’t thinking at the time they read “the first claim in U.S. Patent No. 6,526,440 (issued Feb. 25, 2003), which discloses an improved search engine technology, does not even expressly include the limitation that the process must be computer implemented”.

    Because, if as I guess, it is merely the computer-implemented form of status ranking used by academics from time immemorial – your value as a scientist is ranked by your peers in that if they quote your material, they value it; if they don’t, they don’t value it – then the patent is valueless and void, because it is a method of status ranking as old as scientific publication.

    I wish Prof. Duffy would consider whether or not this online publication is going to contribute to his status ranking, and is thus in material breach of the Google Page Ranking patent. And what is the sole difference between being ranked by one’s peers on the number of links created by citations by one’s peers, and a computer ranking web pages on the number of links created by other pages’ authors?

    How much, Prof. Duffy, are you willing to pay Google, to have other academics rank you in academic publications? Just to prove you can put your money where your mouth is?

  81. 181

    With the depreciating U.S. dollar and the constipated, inept U.S. patent office, backed-up by greedy lawyers, we’ve decided to enjoy the benefits of living on U.S soil, develop our software here, but our company is established off-shore. Software patent lawyers and the USPTO can all kiss our butts. The only down-side is we pay more taxes to our host country rather than our home nation. Considering the corruption of our government and misuse of funds… that’s probably not so bad.

  82. 180

    “Any responsible person who wants to guarantee that this sort of patent can issue, must also provide a plan for preventing the current flood of clearly insufficient and unsatisfactory patents which are crippling the industry, and Duffy provides no such proposal.”

    The software industry has really come on hard times in the last 15-25 years. Software must be the slowest growing technology out there. It is as if nothing has changed since the TRS-80, Apple II and the Commodore 64. Those pesky patents … they certainly have thrown a monkey wrench into the works.

    “A competitor attempting to clone the algorithm to compete with Google.”
    Let’s see …. Yahoo, Alta Vista, Lycos, Excite.com were big dogs before Google came along …. however, how did Google actually convince the venture capitalists that they should invest money in the company?

    Hmmmmmm …. let me think about this ….. hmmmmmm. Oh yeahh, a little intellectual property goes a way in convincing them that you’ve got something.

    Next time you have an opportunity to talk to a venture capitalist, ask them what they think the value of patents are for a startup.

    Big money doesn’t send seed capital to small ventures when somebody much bigger with a lot more resources can knock off the product and out-market them. Although the big guys have lots of patents, try surviving (and prospering) as a little guy without one.

    Marketing only goes so far … ask Pets.com, e-Toys, Kozmo.com, etc…..

  83. 179

    As for Google, it is trivial to show that the amount they lose every year defending against software patent lawsuits vastly exceeds any benefit from the PageRank *patent*. Do not confuse the economic benefit of the *patent* with economic benefit of the PageRank *algorithm*, which Google would have had *for free* rather than by paying Stanford University, had the patent not issued.

    A competitor attempting to clone the algorithm to compete with Google would have had to first read and understand the paper (assuming Google published it and didn’t keep it a trade secret), then implement it in software independently (without violating copyright — nontrival), develop its own giant farm of hardware servers to actually run it (very very nontrivial), acquire venture capital to pay for all of this (implausible), and *then* would find itself offering an inferior product to Google’s, having gotten there later, in a field which is economically a natural monopoly (search), and would proceed to go bust anyway.

  84. 178

    Joshua Strodtbeck makes the crucial point, and explains clearly where the group of people who are *generally* in favor of patents, but do not want bogus and historically disallowed patents on abstract algorithms, are coming from. Perhaps if Duffy actually listened to and responded to this group of people rather than using the strawman caricature of them as “those who are philosophically opposed to property rights,” his article would be more persuasive.

    A related point is that, unlike with physical objects, the specifications/blueprints for a “patented” computer program are precisely the same as the program itself; under the patent bargain, we must be free to publish the specifications, so what possible legal justification is there for restricting the sale of the programs? If these patents issue, they should not legally be able to restrict the copying, sale, and production of computer programs (which are simply blueprints); only the execution of programs, or enticing people to run them, could be restricted under traditional patent doctrines. This, of course, is not how the current, broken, patent system works.

    It is also critical to note the Duffy, while ignoring the basic problems with abstract algorithm patents, also does not address, in any way, the appalling patent quality of these algorithm patents. Most critically, they almost never provide sufficient disclosure to reproduce the patented algorithm. Any responsible person who wants to guarantee that this sort of patent can issue, must also provide a plan for preventing the current flood of clearly insufficient and unsatisfactory patents which are crippling the industry, and Duffy provides no such proposal.

    This is a well-constructed propaganda piece with phrasing suitable for a litigator, but it adds nothing to the debate. Which is unfortunate. I hope to read a more thoughtful piece by Professor Duffy some time in the future; one which addresses the actual issues.

  85. 177

    PDS – it is ironic that you accuse me of strawman arguments. You say:

    “The same logic could apply to semiconductors (I have no doubt that Intel’s latest chip has probably well over a thousand patentable concepts embodied in it)”

    If those concepts amount to minor or inevitable advances in digital design then they should not be patentable either. The problem in software is general language seeking broad patents on algorithms which were obvious or inevitable in the near term. The fact that an algorithm may be implemented in silicon on an Intel chip does not make it more worthy of a patent. Pro patent supporters say that the hardware software divide is frequently artificial and I agree but my solution is to invalid a lot of digital design intended for hardware implementation.

    You attack me for suggesting “that one needs to “review thousands of patents and negotiate hundreds of licensing agreements.”” and say that the scope of space occupied by software/computer-implemented inventions is so broad that there is plenty of fertile ground that nobody has touched or seen.”

    It may indeed be that I am embarking on terra incognita when I start a new project – but I need to review thousands of patents to make sure and since software tends to be built using fairly standard pieces and concepts (something like 40% of all computer cycles dedicated to scientific computing is spent executing DAXPY as the very innermost loop) the chances of my writing a nontrivial piece of software that does not incidentally reinvent the subject matter of an existing patent may be pretty low. I had a look at the Netflix prize last year and as I recall there are hundreds of patents on collaborative filtering / recommender systems. Anyone hoping to win that prize has to be concerned that they are going to re-invent something which has already been patented.

  86. 176

    4. Are PageRank or other software patents likely to be invalidated after all is said and done? As noted in my paper and as emphasized in some of the posted comments, the PTO’s positions on patentable subject matter are still being tested in the courts, so that remains a significant uncertainty. Also noted in my paper is that the PTO’s concept of a “particular machine” is likely to generate a new vein of litigation as the agency and the courts struggle to define the concept. That too is a significant source of uncertainty. The Board itself drew a distinction in Wasynczuk that Ben Klemens, for example, called “tenuous.” Ben and I agree on this point, even though we otherwise have quite different views on patentable subject matter. Ben expects that the Board’s doctrine will be “superseded by better, fast.” I too hope for that, but I’m not so confident that the hope will be realized quickly. When adjudicators make tenuous distinctions, it tends to make the law more uncertain, as legal actors have difficulty not only in understanding the distinction (so as to apply it in other cases) but also in predicting whether the legal system will generate additional tenuous distinctions as future cases arise. The point of my short paper was to show the extent of the uncertainty and to reveal the powerful doctrinal tool that the “particular machine” doctrine, if it survives judicial review, could give to those seeking to invalidate software patents.

  87. 175

    3. Are Google’s patents valuable? In my paper, I cited certain statements Google made in the company’s SEC filing prior to its initial public offering. These statements, made in formal governmental filings and subject to significant sanctions for misleading statements, seemed to suggest that patents are significant to Google; that the company was in fact using the technology disclosed in the PageRank patent; and that it was somewhat significant that the company obtained an exclusive license to that patent from Stanford. In the absence of other evidence, I take these statements to mean that the PageRank and perhaps other Google patents are valuable properties. I remain, however, open to contrary evidence. If the company has made any statements, especially under penalty of perjury or other sanctions, concerning the value of their patent portfolio (or lack thereof), I would appreciate having those cites.

  88. 174

    2. I presented amicus argument in In re Bilski. Some commenters noted that I did not discuss my presentation of amicus arguments in the pending Federal Circuit en banc case In re Bilski. I wrote this comment on Langemyr and Wasynczuk for the readers of Patently-0, most of whom, I believe, know well that I have previously taken positions on patentable subject matter in Bilski and in other contexts. See, e.g., link to patentlyo.com (discussing my appearance for amicus RDC in Bilski); /media/docs/2007/02/DuffyOnNuijten.pdf (setting forth my paper on the PTO’s position in the Nuijten case); /media/docs/2007/02/DuffyOralArguments.pdf (setting forth my comments on oral arguments in Nuijten that correctly predicted the final outcome and final vote in the case); link to patentlyo.com (reporting my filing of an academic amicus brief in support of Nuijten’s certiorari petition). My current paper also cites an article in BNA that likewise reported my participation in the Bilski case and my representation of RDC as an amicus. Given how widely known these facts are, discussion of them in this short paper did not seem necessary. Indeed, even the very first comments on Patently-O demonstrated that readers are quite well aware of these facts.

  89. 173

    These are comments from the author, John Duffy.

    First, thanks to all for the useful discussion, which I am following. I have few specific comments. I may have to divide these into separate postings because of this blog’s word limits on comments. Nonetheless here they are:

    1. Langemyr and Wasynczuk are informative opinions by the Board. A number of people have commented that the two Board of Appeals decisions at issue here are not categorized as “precedential,” but are instead only “informative.” That is true, and I appreciate the caveat. It would be a mistake, however, to view Board “informative” opinions as the equivalent of a non-precedential opinion by a court. The Board classifies its opinions into three categories: precedential, informative and routine. See Michael R. Fleming, Chief Administrative Patent Judge, Publication of the Opinions of the Board of Patent Appeals and Interferences (Dec. 27, 2006) (available at link to uspto.gov). The BPAI’s Bilski decision was itself categorized as an “informative” opinion, so I think it would be a mistake to dismiss informative opinions as inconsequential. Moreover, informative opinions are expressly supposed to “illustrate norms of Board decision-making for the public, the patent examining corps, and future Board panels.” Id. Until the PTO eschews the positions taken in Board’s Langemyr and Wasynczuk decisions, I think the public should assume that these informative decisions do accurately “illustrate norms of Board decision-making.”

  90. 172

    The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit.

    You forgot about another class of people, those who agree with Turing’s thesis that an algorithm and its implementation are the same thing, and that most software patents therefore amount to patents on abstract ideas. At best, they amount to patents on using computers to do mathematical computations, but that would fail the obviousness test, since computers are specifically designed to do math. It’s like patenting the use of a paintbrush to paint a picture of a particular object, or patenting the use of a glass to hold a particular kind of liquid. We have been at the point for a long time where you can patent the use of a computer to compute this particular set of mathematical expressions, and it’s high time the USPTO does something about it. This is good news for this mathematician!

  91. 171

    PDS: your slippery slope argument is unpersuasive. I’m a software developer. Why should I care whether patents are effective in semiconductors or pharmaceuticals? Let the experts in those areas argue about it. Each industry has its own economics and insofar as the patent system was supposed to “promote the progress of science and useful arts”, it is the government’s job to make sure the rules do that for all major industries. Most programmers will tell you that software parents are an impediment, not a help.

    As MaxDrei said: the tail is wagging the dog. Lawyers are impeding technological progress and frankly the only way anything gets done is because software developers simply do not bother to check whether every idea they come up with might have been patented somewhere before. If we did that, we would have no time for programming. The industry only functions to the extent that people pretend that the patent system does not exist until it bites them in the ass.

  92. 170

    “The idea of patents is not necessarily to protect a unique end result but to protect an innovative way of getting there.”

    … which is exactly what Google did. They protected a innovative way of getting their result. Your argument seems to be that they didn’t protect the more specific way of acheiving result. However, patent law (for any technology) has never required the claim to be directed to the best mode.

    If I have a claim to a piece of software, do I need to also claim the operating system it runs on or the type of server? Do I also need to describe the motherboard, memory, and processor as well in the claim?

    Similar, if I have a claim to a method of manufacturing a piston (for an engine) using HIP (hot isostatic-press), do I need to specify the heat treat furnace used? Do I need to include in the claim all of the settings?

    If nobody has done the broad concept before, then there is no requirement that a claim also include all the additional limitations. A patent specification is required to describe the “best mode” (i.e., the best way the inventor believes the invention should be practiced). However, the inventor is not required to update this “best mode” after the application has been filed or claim the best mode.

    BTW: This article must have referenced elsewhere because we’ve got a lot of newcomers.

  93. 169

    “20 years is “temporary” for a lot of things, but not for software that tends to be obsolete within 6-24 months. We are effectively granting permanent monopolies on the inventions, which in fact dampens innovation.”

    Not good with logic are you? **IF** the software was obsolete within 6-24 months, as you suggest, then what does it matter if the term was for 20 years or 200 years? If the technology is obsolete, who really cares if it is patented or not? Would you really care if some buggy whip, which was patented back in the 1800s, still has some patent term left to it?

    Your faulty logic aside, as I noted earlier in this thread, just because a piece of software becomes obsolete does not mean that the underlying technology embodied in the software becomes obsolete.

    BTW: If you think 2 years is enough time, then you are OBVIOUSLY not experienced in patents whatsoever. You would be lucky to have the USPTO take a first look at a patent application in 2 years. Based upon my experience, you are looking between 4-8 years to get an issued patent from an application in the software space. But of course, if the technology is already obsolete by that time, as you suggest, then who cares???

  94. 168

    “20 years is “temporary” for a lot of things, but not for software that tends to be obsolete within 6-24 months. We are effectively granting permanent monopolies on the inventions, which in fact dampens innovation.”

    Not good with logic are you? **IF** the software was obsolete within 6-24 months, as you suggest, then what does it matter if the term was for 20 years or 200 years? If the technology is obsolete, who really cares if it is patented or not? Would you really care if some buggy whip, which was patented back in the 1800s, still has some patent term left to it?

    Your faulty logic aside, as I noted earlier in this thread, just because a piece of software becomes obsolete does not mean that the underlying technology embodied in the software becomes obsolete.

    BTW: If you think 2 years is enough time, then you are OBVIOUSLY not experienced in patents whatsoever. You would be lucky to have the USPTO take a first look at a patent application in 2 years. Based upon my experience, you are looking between 4-8 years to get an issued patent from an application in the software space. But of course, if the technology is already obsolete by that time, as you suggest, then who cares???

  95. 167

    “Which of course is precisely why people are skeptical about software patents on a practical level. If a developer needed to review thousands of patents and negotiate hundreds of licensing agreements before writing a line of software then there could be no progress. This problem applies particularly to smaller developers since the big players (IBM, Microsoft etc) can cross license their patent pools and avoid a lot of headaches.”

    The same logic could apply to semiconductors (I have no doubt that Intel’s latest chip has probably well over a thousand patentable concepts embodied in it) … so let’s get rid of semiconductor patents as well. I mean come on, given the snail’s pace of progress in computers and software the last 25 years, I can easily see why we should ban patents on both.

    Heck, why don’t we ban patents on pharma as well. The only reason drugs cost as much as they do because is because they are patented. Heck, people are DYING because they cannot afford the drugs.

    BTW: I see you are cozying up to Sally Strawman (MM is going to be jealous!!) with your suggest that one needs to “review thousands of patents and negotiate hundreds of licensing agreements.” The scope of space occupied by software/computer-implemented inventions is so broad that there is plenty of fertile ground that nobody has touched or seen.

  96. 166

    Alsee

    Without necessarily taking a position either pro- or anti-software patents, the following points can be made in reply to your arguments:

    Re a process is “an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.”

    How does this preclude data from being “the subject matter” of a patentable process? Data is clearly capable of being “transformed and reduced to a different state”.

    Re “”an algorithm, or mathematical formula … like a law of nature … cannot be the subject of a patent”

    But a practical (useful) novel and non-obvious application of an algorithm, mathematical formula or law of nature can be the subject of a patent. This describes most kinds of engineering.

    Re “You can no more invent and patent “novel and useful” software than you can invent and patent a “novel and useful” hundred-digit number.”

    This just doesn’t make sense. OK, program code is, ultimately, just a number, but that’s not the point. The point is that program code, executed on a computer, makes something useful happen. Software claims define the software in terms of its functionality, not in terms of its code.

  97. 165

    “Once you limit patentability to the “how” then you’ve essentially opened the door to anybody to come up with a different way of implementing the same concept (i.e., the PageRank idea). Why get the patent when it is useless. Second thought, why disclose the idea when any patent obtainable therefrom wouldn’t be worth the paper it was printed on. Ooops … there blows that whole idea about rewarding inventors for their disclosure.”

    First, the whole point of patents is to protect a different “how”. Patents are designed to protect a process or machine. Think how many mousetraps, pencil sharpeners, FOLDING GROCERY BAG DISPENSERS, etc are patented. Or just do a patent search. The idea of patents is not necessarily to protect a unique end result but to protect an innovative way of getting there.

    That said, I agree with the posters who have said that the current wave of software “patents” is ridiculous because the patent language is overbroad and would not allow for reproduction of the patented device or process after the expiration of the statutory period. Patent protection is meant to grant a limited monopoly in echange for the disclosure of the information needed to duplicate the patented device or process. That’s why you have to submit all kinds of physical diagrams with mechanical patents. The patents quoted above don’t describe in sufficient detail the process they are meant to protect. If the software companies want to protect their processes without disclosing them, the appropriate designation would be “trade secret” not “patentable device” – like the recipe for KFC Original Crispy Chicken, or the Coke syrup formula. There have certainly been successful litigations for the protection of Coke’s formula without disclosure. However, in order to take advantage of the patent system, that level of disclosure is necessary.

    The real problem with software patents (which, actually, I favor) is that for years the PTO has permitted patents to go through that do not satisfy the statutory requirements for patents. There are plenty of other protections available under the Patent and Copyright Act for companies that do not want to disclose any information; patents may not be the appropriate forum for these companies. However, using patents currently registered as some sort of benchmark for writing new patents? May not be your best bet in the coming years. That’s not a bad thing for either the industry (which needs to figure out what protection is appropriate and use that one, which may not be patents in many cases) or the public (which long ago made a bargain to permit a limited monoply in exchange for information and which is now getting a complete onoply in exchange for just about nothing).

  98. 164

    …..all well and good guys, but have you thought yet about the vital national interest of “USA, Inc.”? Isn’t there a widespread perception that the “US nose in front, of the ROW” position must be preserved and that the best way to do it is with a “strong” US patents system, that monopolises for 20 years “every new and non-obvious business and financial computer operation under the sun made by man”.

  99. 163

    If the principle of the patent is to promote innovation and convince inventors to disclose their secrets in exchange for a temporary monopoly, we must keep in mind the pace at which information technology evolves. 20 years is “temporary” for a lot of things, but not for software that tends to be obsolete within 6-24 months. We are effectively granting permanent monopolies on the inventions, which in fact dampens innovation.

    Software and other intangible (“business process”) patents should expire in two years instead of 20. This is plenty of time for an inventor to monopolize and cash in on the technology, and in many cases the technology will be obsolete by the end of the two years. However, in those cases where the utility persists beyond two years, we will have healthy competition within a reasonable timeframe. It is completely unreasonable for Google to own the rights to “Serving advertisements based on content” for 20 years.

  100. 162

    Let’s not forget how Norbert Wiener, the founder of Cybernetics, defined software. I quote from memory: “A program is a tool that transforms a machine into another machine”.

  101. 161

    All the way back in 1876 Cochrane v. Deener the US Supreme Court defined a process patent as:
    “an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.”
    US Supreme Court Gottschalk v. Benson 1972:
    “Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”
    In Diamond v. Diehr 1981 the US Supreme Court quoted and reaffirmed both of the above statements, as well as repeating:
    “an algorithm, or mathematical formula … like a law of nature … cannot be the subject of a patent” (all software is nothing more than an algorithm)
    In Diamond v. Diehr 1981 the US Supreme Court additionally warned:
    “insignificant post-solution activity will not transform an unpatentable principle into a patentable process. To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection.”

    Of course tons of software patents are going to get invalidated. By repeated consistent Supreme Court statements it was invalid for the patent office to grant software patents in the first place. They are and always were non-patentable non-inventions. You can no more invent and patent “novel and useful” software than you can invent and patent a “novel and useful” hundred-digit number.

    We programmers are protected by copyright. There is some 80%-90% agreement amongst programmers that we neither want nor need double coverage by patents, that software patents are illogical and a harm.

    You invent and patent novel physical objects, and you invent and patent and novel physical processes for transform physical materials into something else. You cannot “invent” and patent math. All software is nothing but a fancy stylized math calculation. It’s silly to suggest math and calculations should be patentable. Any software can (slowly) be “run” mentally – programmers routinely do so while writing and debugging software. It would be ludicrous to suggest someone could commit THOUGHT CRIME for mentally carrying out a patented software calculation, and there is absolutely nothing non-obvious about using an ordinary pre-existing computer for the obvious and intended purpose of merely more quickly carrying out that exact same non-patentable non-invention mental process.

  102. 160

    “The Patent and Trademark Office has now made clear that its newly developed position on patentable subject matter will invalidate many and perhaps most software patents.”

    If only that were true. If only that were true.

    Everyone but the patent lawyers would be a lot better off, that’s for sure.

  103. 159

    Huck Finn: you and the little boy who pointed out that the Emperor has no Clothes would make a great team. Stand by to be told on this blog that you know nothing, and should shut up. Reply by pointing out that patent attorneys are parasitic on the body of industry and that the dog should be shaking the tail, not the other way around.

    That said, a huge proportion of perfectly proper patentable matter, these days, is inseparably computer-implemented. The key problem is “Where to Draw the Line”. The EPO President’s take, on what’s been patentable up to now in the USA, is the “Anything under the sun made by man” definition. You and a great many others share her grave doubts, whether that’s optimal, for that worthy aim, of promoting the progress of the “useful arts”.

  104. 158

    Jimmy Crack Corn is correct. Perhaps there are industries where patents are wonderful motivators to innovate but software patents gum up the works of software innovation.

    Just today I heard the story of a small company that spent months building a great little software system that would help them compete with some large companies. Before launch, they called in the lawyers. This is the point at which the story gets good for the lawyers (I guess the owner of this blog is a lawyer) and bad for the technologists.

    It turns out that they had infringed 50 or 60 patents: not those of the big companies that they wished to compete with, but rather patents owned by other big companies in a mostly unrelated part of the industry. Those companies in industry B could not be bothered to negotiate with a small company like my friend’s, so my friend was disallowed from competing in industry A.

    I’ve been on the patenting side as well. I’ve been at small companies applying for patents (“defensively” they always say) and the patent-creation process is a huge distraction from the business of providing value to customers. Usually the bit that can be patented is some low-level technology that is only indirectly interesting to customers. Even if the patented technology is directly of interest to them, the patent itself is not. In fact, the patent creates a monopoly that can only hurt customers.

    There are some really interesting software ideas that nobody is implementing, not the patent holders and not third parties. They are in patent-hell limbo.

    After 15 years in the software industry, I see no benefit to software patents at all. Benefit to lawyers? Sure. Benefit to customers or software companies? Not at all.

  105. 157

    To Jim Sawyer: and does the US “transformation” test give a fair reward to the inventor, when there is no infringement, except by those who operate the laser? Do you not prefer the European approach, which recognises patentability also in the software product that instructs the laser, so that those who make and sell the software are also infringers? Key of course in Europe, where the touchstone of patentability is “technical”, is that the software product as claimed must be one that delivers an output that instructs a laser to do its technical job. Business method software products lack any such output.

  106. 156

    Google’s patents may be in danger, but the suggestion that Google owes it success to the patents it holds is not supported by the evidence.

    As a programmer, I have been professionally involved in the search space for over 10 years now, and I am of the [informed] opinion that Google owes its success to better “execution” (implementation in software-speak), not to some IP lock it holds that thwarts would-be competitors from entering the space. Much of Google’s “execution” advantage involves trade secrets–the very opposite of patents.

    The idea to rank pages based on link information actually predates Google’s PageRank “idea”. In fact, Jon Kleinberg at Cornell was the first to give the idea a mathematical footing link to cs.cornell.edu . His 1997 paper “Authoritative sources in a hyperlinked environment” sparked a lot of interest in the search field. The HITS algorithm he describes in that paper is very similar to Google’s PageRank algorithm. I wont digress on technical details, only to note that the intellectual leap from HITS to PageRank (as published under Google’s patent) is not that great, and there are likely many paths from HITS to a good ranking algorithm.

    I also have some anecdotal evidence that Google’s search patents are not the competitive issue. In a recent visit to a Microsoft search lab, I had the opportunity to speak with the search team’s technical top dog. The implementation challenge to search, he told me, was not algorithmic. In other words, it wasn’t a patent issue. They have the recipe to make the burgers, they can make a few tasty ones in the lab, but the recipe doesn’t tell you how to roll out a MacDonalds corporation. A good part of Google’s technical lead is in things like scalability, redundancy, stability, storage, etc.

    So my point is stop crying wolf. Google would survive without its patents just fine. My world (software), my livelihood, my business–none of it, needs the “protection” offered by this legalistic racket called Patents. Quite the contrary, in software, patents impede innovation, and increase the cost of doing business.

    Get off my lawn!

  107. 154

    Sunshine tans and simple math formulas are patentable? You have gone off the deep end, Guest.

  108. 153

    This makesmethink of how in search for ‘profit’ everything is given a ‘value’ for marketing and soon sunshine tans or simple math formulas will be patented and beach goers and math student forced to pay usage fees for those discovered ‘processes’ of nature that have been in existence for years but never codeified or well described.

  109. 152

    This makesmethink of how in search for ‘profit’ everything is given a ‘value’ for marketing and soon sunshine tans or simple math formulas will be patented and beach goers and math student forced to pay usage fees for those discovered ‘processes’ of nature that have been in existence for years but never codeified or well described.

  110. 151

    > 120. A method for improving refractive ophthalmic treatment comprising:
    > * obtaining a first, pre-operative diagnostic measurement
    of an individual cornea of an eye;
    > * determining a first operative corneal ablation specification
    based on the first, preoperative diagnostic measurement;
    > * obtaining non-tissue removing perturbation data
    from the individual cornea before ablation to obtain
    a biodynamic response data from that individual cornea;
    > * obtaining a second, post-perturbation, preoperative
    diagnostic measurement of the individual cornea;
    > * correlating said non-tissue removing perturbation data
    with the biodynamic response data gathered from a
    statistically significant number of corneas; and
    > * establishing an individual customized laser ablation specification
    for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

    101 subject matter or not?”

    Depends –

    if that is the entire claim,
    then no – not patentable – as no physical transformation occurs.

    if the claim continues, with something like,

    “and the simulated result of a laser ablation
    process, driven by those numbers, is made to appear
    on the video monitor of a computer”

    then no, not patentable – as no physical transforation occurs.

    if instead the claim continues, with something like,

    “and an industry standard laser ablation apparatus,
    attached to an otherwise general purpose computer,
    is then driven by those numbers and thereby corrects
    the function of a patient cornea, by transforming
    said cornea”

    then yes – patentable – as physical transformation occurs,
    and the process *requires* the use of a device which,
    while said device is itself *standard*, such devices
    are *not* expected to be found on garden variety general
    purpose computers, at least in the present era.

    Seems the patent office is *FINALLY* beginning to
    differentiate the specific ‘implementation of idea’,
    from ‘the idea itself’, even when computers and software
    are involved, and this seems like very good news, to me.

    Sadly, in Ex parte Wasynczuk, they immediately
    punt away most of the gain, getting hopelessly lost in
    the “party of the first part” first partaking to party
    with the “party of the second part” hoo-hah shuffle
    subterfuge gambit, which appears prima facie constructed
    for that very purpose – to confuse the reader – hoping
    those with authority will err and issue/uphold a patent,
    which is what seems to have happened. One can hope that
    they (PTO, et al) will catch on sooner, rather than later,
    so, being an optimist at heart, I guess I will.

    How about you?

    -Jim

  111. 150

    Indeed, and there’s case law that says if a potential patentee keeps his invention secret, he abandons his right to get a patent. IIRC, case law says that the time period one must keep an invention secret in order to abandon patent rights under 102(c) is 1 year, which tracks 102(b). 102(c) is rarely used in litigation (and I imagine never in prosecution), but it’s a way to combat those who try to patent former trade secrets.

  112. 148

    “Is there a statutory provision which says that “jealously guarded secrets” (which have not been commercialized more than a year) are per se not patentable?”

    Yes. See 35 U.S.C. 102(c).

  113. 147

    “However, one piece of sophisticated software may involve several hundred patentable concepts.”

    Which of course is precisely why people are skeptical about software patents on a practical level. If a developer needed to review thousands of patents and negotiate hundreds of licensing agreements before writing a line of software then there could be no progress. This problem applies particularly to smaller developers since the big players (IBM, Microsoft etc) can cross license their patent pools and avoid a lot of headaches.

  114. 146

    “If Pagerank was un-patentable, it could only be protected as a trade secret and run behind closed doors”

    It effectively is. The patent process currently *doesn’t require submission of a working model* and *doesn’t require a programmer-readable description of the patented algorithm*. Go ahead, try to implement PageRank on your own based solely on the patent! (You’re allowed to do so for research purposes such as developing an improved algorithm, according to traditional patent law.) You’ll find that you can’t.

    What precisely did we gain by this patent “bargain”?

  115. 145

    Patents are great. Nothing wrong with patents.

    The patents you describe, however, are pure mathematics. They should never have been patentable in the first place. Patenting them threatens free speech and research among other things.

    Not being a mathematician or an engineer, you probably don’t appreciate this, but the PTO is 100% correct. I expect that Google, including Brin and Page, will frankly be *happy* to be rid of software patents, *including* their own; ask them.

  116. 144

    “The numbers are similar, pds, but you forgot to divide the numbers by the total number of patent applications filed.”

    We were NOT talking about numbers of patents … your original comment was “So do I. It’s also unbelievable and appalling that anyone would imply that the the costs of developing a new piece of software are remotely near the cost of developing a new pharmaceutical.”

    Would Window’s Vista be considered a “new piece of software”? How about Office 2007? I would wager that Microsoft spent a LOT of money on the R&D for those (BTW: I’m no fan of Vista).

    You can easily argue that the “technology” embodied by one pharma patent involves considerably more R&D dollars than the “technology” embodied by one software patent, and I wouldn’t dispute that one bit. However, one piece of sophisticated software may involve several hundred patentable concepts. Like many people, you think software and you think a few lines of code, and say to yourself, “how quaint.” However, I’ve read where Microsoft Vista has 50 millions lines of code. Not an insignificant number.

    Regardless, the creation of software requires an extremely large amount of R&D. Dismiss the numbers all you want, but you cannot hide from them.

  117. 143

    I respectfully beg to suggest to Mooney and pds that they, in the vernacuar, GET A ROOM!

  118. 142

    Comparing pharmaceuticals to software doesn’t work because software can be protected by copyright but drugs can’t.

    Comparing R&D budgets also doesn’t work. The cost of coming up with “patentable” innovations in the software industry is very low. Most software development expenditure is on grunt work such as QA and debugging which happens *after* the patentable innovation.

    For Web companies like Google, where software runs only on their own servers, that software is also effectively protected by trade secrecy. Google and the other Web companies actually need patent protection much *less* than most other companies … making Google a particularly poor example to use for this blog post.

  119. 141

    “What about these numbers make you think that the numbers aren’t similar?”

    The numbers are similar, pds, but you forgot to divide the numbers by the total number of patent applications filed.

  120. 140

    What if Google had never applied for a patent, yet still produced search results that the majority of the searching public preferred? Would their primary risk been internal source code theft, resulting in a competing search engine of similar popularity? If patents did not exist, and Google couldn’t prove their source code had been stolen, would they still be in business today? I admit that I believe that innovation and creativity are stifled by today’s Intellectual Property and copyright landscape. I also recognize, however, that in the case of Google, they built a better mousetrap, albeit a virtual mousetrap.

  121. 139

    good riddance to bad rubbish.

    software patents are the #1 barrier to innovation in the technology industry, and it’s high time we jettison that burdensome albatross at any cost.

  122. 137

    MM … what is your obsession with me?

    My first comments, which you reproduced, were comparing the returning on investment, in time, for “developing/coding/testing/marketing” software (which will later be distributed out with no restrictions on copying) with the return on investment, in time, for working at the local BK. NOTHING, and I repeat, NOTHING, about that comment was directed towards R&D with pharma. Stop sucking face with Sandy Strawman and try to respond to the comments I actually make.

    “Then pds posted a bunch of numbers where R&D costs for software companies versus big pharma were compiled in a way to make those costs appear similar.”
    Hahahahahahahahahahahahahahahahahaha.

    Sure … either I (or the companies themselves when they reported their numbers in a 10Q/10K to the SEC) magically added a couple of zeros to these R&D numbers for all these software companies so as to artificially inflate their actually R&D numbers.

    MSFT spent $7B in R&D on about $51B in revenue last fiscal year.
    IBM spent $6B in R&D on about $99B in revenue last fiscal year.
    Oracle spent about $3B in R&D on about $22B in revenue last fiscal year.

    Pfizer spent $8B in R&D on about $48B in revenue last fiscal year.
    Merck spent $5B in R&D on about $24B in revenue last fiscal year.
    Bristol-Meyers spent $3B in R&D on about $19B in revenue last fiscal year.

    What about these numbers make you think that the numbers aren’t similar? For anybody who has looked at the balance sheets and income statements of any Fortune 100 company, these R&D numbers are huge no matter how you want to look at it.

    I looked at a few other “big name” US technology companies,
    United Technologies spent $1.7B in R&D on about $55B in revenue.
    Boeing spent about $4B in R&D on about $66B in revenue.
    Raytheon spent about $0.5B in R&D on about $21B in revenue.

    For those interested for some more R&D numbers:
    link to baselinemag.com
    link to fiercebiotech.com

    Yet again, MM, thanks for showing just how uninformed you really are.

  123. 136

    “again it is over-generalized so that someone skilled in the art can’t really reproduce the results without reconstructing a whole lot of the actual processes on their own.”

    One of the quid pro quos of obtaining patent protection is that the applicant provide an “enabling” disclosure. If an enabling disclosure is not provided then patent protection should not have been granted.

  124. 135

    jbengt says “Google’s actual page rank algorithm is a jealously guarded secret, and is therefore most explicilty not patentable.”

    Is there a statutory provision which says that “jealously guarded secrets” (which have not been commercialized more than a year) are per se not patentable?

    Please explain

  125. 134

    Google’s actual page rank algorithm is a jealously guarded secret, and is therefore most explicilty not patentable. The “page rank patent” is really a misnomer. It’s another one of those vague patents that should be rejected on the grounds that it does not explain enough to allow someone skilled in the arts to reproduce anything.

    Langemyr’s partial diff eq patent is pure math, I didn’t think pure math was patentable. Also, again it is over-generalized so that someone skilled in the art can’t really reproduce the results without reconstructing a whole lot of the actual processes on their own.

    The unavoidable problem with all these rules is that they should really be based on the notion of promoting the progress of science and useful arts, which is not a straightforward problem to solve.

  126. 133

    pds “Did I ever say that it did? Nooooooo. Did I ever imply it? Nooooo. Have I ever thought it? Nooooooo.”

    A quick recap:

    Upthread someone compared software development and pharmaceutical development and wrote “”Second, the economics of software appear to me to make the initial investment rather low, so that a profit is returned more quickly.”

    pds took issue with that comment and replied: “I’m guessing that you haven’t tried to make money selling software? Come up with a piece of software and try to sell it. . . .My guess is that for the time you spent developing/coding/testing/marketing the software, you would have a greater return on your time spent by working at the local Burger King.”

    Then pds posted a bunch of numbers where R&D costs for software companies versus big pharma were compiled in a way to make those costs appear similar.

    Sorry, pds: your guilty as charged. Drop the argument because it’s a loser.

  127. 132

    From Mr. Duffy:

    “The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit.”

    Nonsense. Distaste for the current state of software patents has nothing to do with distaste for property rights. Patents have their place, but I’m convinced that they are not the best tool for the job when it comes to software. Let the ideas be freely propagated patent-free, and let copyrights protect the expressions of those ideas as they manifest themselves in the code that is written. Would it not be a better state of affairs with regards to advancing technology if Google’s process for weighting pages, itself just a mathematical construct, were to be usable by anybody? That’s not to say anyone can use Google’s code: that’s protected by Copyright. Others would have to develop their own code to implement the algorithm, and in so doing would come up with approaches perhaps not thought of by Google. Google would retain the lead until such time as someone else does it better, at which point Google would have to do something innovative to again stay on top. This would do much more to foster the advancement of software than would patent exclusivity.

    “It will surely be cause for mourning among those who believe that allowing patents on cutting edge technologies has served the country well for more than two centuries and that a radical departure from the traditional approach would be unwise.”

    The vast majority of those two centuries were without computers. The
    beginnings of the computer era came about through the sharing of information and the establishing of common standards. Individuals and
    institutions alike would come up with ways of writing useful software, would publish what they did so others could build on it, which would in turn be available to the creator to further enhance. It is through this kind of process that core parts of the world’s current network infrastructure were built: TCP/IP, DNS, POP, the Web browser, and many more. This worked very well without granting any sort of exclusivity other than that afforded through copyrights. In fact, I would argue that an exclusive ownership over any of these technologies would have severely limited their adoption and ability to mature.

    While I agree that the one computer-two computer test does not make sense, I applaud the patent office for the direction it is taking.

    Disclaimer: The opinions stated here do not necessarily reflect those of my employer.

  128. 131

    From Mr. Duffy:

    “The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit.”

    Nonsense. Distaste for the current state of software patents has nothing to do with distaste for property rights. Patents have their place, but I’m convinced that they are not the best tool for the job when it comes to software. Let the ideas be freely propagated patent-free, and let copyrights protect the expressions of those ideas as they manifest themselves in the code that is written. Would it not be a better state of affairs with regards to advancing technology if Google’s process for weighting pages, itself just a mathematical construct, were to be usable by anybody? That’s not to say anyone can use Google’s code: that’s protected by Copyright. Others would have to develop their own code to implement the algorithm, and in so doing would come up with approaches perhaps not thought of by Google. Google would retain the lead until such time as someone else does it better, at which point Google would have to do something innovative to again stay on top. This would do much more to foster the advancement of software than would patent exclusivity.

    “It will surely be cause for mourning among those who believe that allowing patents on cutting edge technologies has served the country well for more than two centuries and that a radical departure from the traditional approach would be unwise.”

    The vast majority of those two centuries were without computers. The
    beginnings of the computer era came about through the sharing of information and the establishing of common standards. Individuals and
    institutions alike would come up with ways of writing useful software, would publish what they did so others could build on it, which would in turn be available to the creator to further enhance. It is through this kind of process that core parts of the world’s current network infrastructure were built: TCP/IP, DNS, POP, the Web browser, and many more. This worked very well without granting any sort of exclusivity other than that afforded through copyrights. In fact, I would argue that an exclusive ownership over any of these technologies would have severely limited their adoption and ability to mature.

    While I agree that the one computer-two computer test does not make sense, I applaud the patent office for the direction it is taking.

    Disclaimer: The opinions stated here do not necessarily reflect those of my employer.

  129. 130

    Your analysis is inconsistent:

    “Tied to a machine” is defined as the physical and control system qualities THAT DICTATE THE MACHINE’S PHYSICAL OPERATION.

    This is applicable to software ONLY in the context as similar to hardware or direct control of hardware such as machine control circuits (which may have machine code implemented) as in CNC control CHIPS, not the computer which might signal the commands or process indirectly.

    The “software” you falsely claim does not effect any real world physical system in any context other than a very few (typically physically transmorphic) physical machines which still have a finite physical structure which may apply for patent.

    In no way does microsoft control the hardcoded operation or mechanical structure of an intel processor.

    FPGAs for example are finite physical systems where their operative qualities are pre determined and the hardware device is never altered or controlled by the code represented within its structure.

    The situation is quite simple, except for self optimizing atomic level physical systems (aka similar to organic molecular structures) and hardware that MIGHT have a critical physical system with code (pwm controller, direct drive control, NOT interpreted commands) you assume your claims are invalid.

    Now its time to address physical claims (including intellectual processes applied (agriculture)) as CRIMES AGAINST HUMANITY AND NATURE.

  130. 129

    The reasoning for the allowance of the claims is certainly useful to this reader, at least for “tethering” and “computer program product”, given the European prohibition on patenting computer programs as such, and math methods. Somebody did say earlier in this blog that as fast as the US rows away from patenting program products, the Europeans are rowing in the other direction. Eurodisnae, thanks.

  131. 128

    This is an example of the patent system moving in a retardiff mode their throwing back to an era before the invention of the computer to deny and reject viable new business concepts The basis of granting patents should be marketability the value or worth to the consumer and patentee obviousness is obviously not the determination method eithere because it is easy to say it was obvious after the creation fact ex cept no one could think of it or is would already be on the store shelf.

  132. 127

    Of possible interest, a recent decision from the UK Intellectual Property Office:

    Summary
    The claims related to a method and apparatus for deciding the tilt angle of antennas in radio communication system. The examiner considered that the claims needed to be restricted to actual use in controlling antennas to avoid exclusion as a computer program, but the hearing officer (considering the mathematical method exclusion also) held that on the basis of VICOM (T 208/84), Astron Clinica [2008] RPC 14, Halliburton v Smith [2006] RPC 2 and Institut Francais &c (BL O/201/03) a step of outputting an optimal tilt angle for use in controlling the tilt angle sufficed to tether the claims to a patentable invention. The hearing officer also accepted that a proposed claim to a computer program product for implementing the method would not be open to objection under section 1(2).

    Patent decision
    BL number
    O/202/08
    Concerning rights in
    GB 0506607.1
    Hearing Officer
    Mr R C Kennell
    Decision date
    15 July 2008
    Person(s) or Company(s) involved
    NEC Corporation
    Provisions discussed
    PA 1977 Section 1(2)
    Keywords
    Excluded fields (allowed)

  133. 126

    “I don’t doubt the numbers, pds. I just can’t believe you think they support the assertion that it costs as much to develop, test and market a new piece of software as it does to develop, test and market a new therapeutic drug for humans.”

    Did I ever say that it did? Nooooooo. Did I ever imply it? Nooooo. Have I ever thought it? Nooooooo.

    I was just giving you some facts to work with. Software companies spend $$$$$ on R&D. As such, don’t think a comparison cannot be made, particularly when you look at the overal numbers being spent on R&D.

    Also, with this much money on the line, do you think that the software companies are going to go away meekly if some serious push to ban software patents ever gets instituted? FYI … I treat the USPTO’s action as little more that just a PITA that has very little real effect on the number of software patents being issued. As discussed by Lee Rahn above, all the USPTO’s sticking points are easily resolved with essentially non-limiting limitations.

    As such, 101 rejections (and responses thereto) are just a big game right now. The USPTO likes to change the rules every 12-18 months an applicants either take the easy way out (and amend) or take the hard way (and argue). Either way, 101 has not been, nor will be at any time in the foreseeable future, a serious roadblock to software patents.

    It is what it is …..

  134. 125

    “I just looked up the numbers. Easy to find, just look at the income statements for the companies. Took me about 5 minutes to do on Yahoo’s financial website.”

    I don’t doubt the numbers, pds. I just can’t believe you think they support the assertion that it costs as much to develop, test and market a new piece of software as it does to develop, test and market a new therapeutic drug for humans.

  135. 124

    Lee: “I have long felt that patentable subject matter is really a question of claim drafting and usually has no practical effect on the permissible scope of protection.”

    Yup. I’ve long felt the same way, Lee. But certain prosecutors in certain computer-related subfields learn ****really**** slowly because they think their field is “special” and should be excepted from the case law as it is (and has been) applied to other fields. Those computer related subfields are special, of course, but not in the way they think it is.

  136. 123

    The PageRank patent is not valuable to Google. Their competitors started using it shortly after the work was published (in a journal). And clearly Google’s success is not based on patent licensing fees.

    These days, Google’s superior search quality depends on a large range of innovations, most of which are protected with trade secrecy.

    > It will surely be cause for mourning among those who believe that allowing
    > patents on cutting edge technologies has served the country well for more
    > than two centuries and that a radical departure from the traditional
    > approach would be unwise.

    For the first thirty years of the software industry, it thrived without patent protection. From our point of view, the explosion of software patents is the radical departure from a working formula.

  137. 122

    My comments are based on Federal Circuit law, not the restrictive policies of the PTO.

    I have long felt that patentable subject matter is really a question of claim drafting and usually has no practical effect on the permissible scope of protection. Consider this modification of the page rank claim:

    A computer implemented method of scoring a plurality of linked documents, comprising:
    [obtaining] downloading to a memory device from an online database a plurality of documents in electronic form, at least some of the documents being linked documents, at least some of the documents being linking documents, and at least some of the documents being both linked documents and linking documents, each of the linked documents being pointed to by a link in one or more of the linking documents;
    assigning a score to each of the linked documents in the memory device based on scores of the one or more linking documents in the memory device; and
    processing the linked documents in the memory device according to their scores.

    I believe this modified claim is directed to statutory subject matter because it recites a memory device and a downloading step. This does not surrender claim scope because almost any computer implemented method that performs the functions recited in the original claim is protected.

    A number of years ago Judge Rich wrote an opinion that I believe was precedential. The opinion said that a general purpose computer executing a computer program is a “machine” when it sets up connections between memory and arithmatic units that perform mathematical operations,input terminals, output terminals Each configuration of the computer components is a separate machine. As far as I know, this case has not been overruled.

    As a rule of thumb I believe a claim is statutory so long as the claimed subject matter is not so broad that every element of the claim can be carried out by hand, on paper, or in the mind. I have not seen a Federal; Circuit case that is contrary to this rule of thumb.

    The reissue statute should solve Google’s problem. The type of modification I am proposing would result in a narrowing reissue.

  138. 121

    Lionel, sorry, I’m confused. You and I think that the purpose of patents is to disseminate info, JAOI not. Yet you say he is “absolutely” correct. Huh? As to LF, you read it different from me. Maybe we both read into it what we want to read into it? As to pds, again, I feel vindicated. You invent an improvement in a method of trading pork bellies. pds calls that method an advance in technology. I don’t. Ask a judge. Who does he agree with? Again, with “obvious”. The meaning of the word is very plain. It’s not the fault of the word itself, that the caselaw in the USA is byzantine. It ain’t at the EPO.

  139. 119

    Max,

    JAOI was absolutely correct if he is referring to the initial purpose of patents, which was to promote efficiency in the King’s land and reward the king’s friends. As articulated in our Constitution, the idea is to disseminate information.

    Further, If Liebel-Flarsheim were applied literally to most EPO claims they would be invalid as well (which is not to say that the CAFC will necessarily stick to the standard they articulated in the US).

    According to the Court in LF, if I can come up with a configuration you did not disclose in the body of your application, I can infringe your claims with impunity. It does not matter that my product embodies your claim exactly as claimed.

    Worse, the Court could have simply found non-infringement based upon disclaimers by the Patent holder. This is one of those cases where I agree with the decision for the defendant, but believe the logic is incredibly bad.

  140. 118

    “Dude, you have GOT to be kidding me.”

    Hey, I just looked up the numbers. Easy to find, just look at the income statements for the companies. Took me about 5 minutes to do on Yahoo’s financial website.

    “But between the 20 year monopoly for software claims and full-bore communism there is an awful lot of middle ground.”
    There may be … but that is not for me to decide or opine about, as I’m not sure what is the right number for software, versus pharma, versus semiconductor, versus hard-core scientific discoveries, versus some soft-core Rube Golberg contraption invented out of somebody’s garage.

    “I want people who write software to be paid. But as I recall Congress already passed some pretty generous legislation to facilitate that precise result.”
    You’ve lost me on that one.

  141. 117

    “Aharonian preposterously writes that ‘obvious’ is meaningless and ‘technical’ is meaningless. Most ordinary people, including judges, think otherwise.”

    I’m not sure I would use the term meaningless, but I think very-poorly defined would be better. I have a very broad concept of technology. To me, a pencil represents technology (albeit very old technology), just as a canvas and paint brush are forms of technology. I think that most people, when confronted with the phrase “technology,” automatically insert the word “new” or “computer” in front of that phrase. Ask the average business person about their technology resources, and they’ll start to tell you about their IT system.

    If somebody comes up with a great new methodology for hedging pork belly futures, then I say gives us your disclosure, and we’ll give you a patent. However, once those 20 years are up, then the world is free to use it as they choose. If the technology is really valuable, somebody will license it and still make money. Also, somebody wanting to acheive the same end result may build upon this disclosure and/or work around it. These are all good results in my eyes … much better than keeping the idea under wraps.

    As for the term “obvious,” the more I think about it, the more I am more comfortable calling it meaningless. It is a place holder for byzantine set of case law (and the application of which) that changes depending upon who is performing the analysis and which way the wind blows at the USPTO.

  142. 116

    pds: my question was rhetorical. Of course software creators have IP in their creations, from which an income is derivable. My point, in a nutshell, is “Horses for Courses”. Copyright law for things like artistic, literary and musical works and not technology. Patent law for technical innovation, but not for business methods, mathematical methods, algorithms, as such. Aharonian preposterously writes that “obvious” is meaningless and “technical” is meaningless. Most ordinary people, including judges, think otherwise.

  143. 115

    pds, I agree with much of what you write in your 12:39 post. But between the 20 year monopoly for software claims and full-bore communism there is an awful lot of middle ground.

    I want people who write software to be paid. But as I recall Congress already passed some pretty generous legislation to facilitate that precise result.

  144. 114

    “Annual R&D numbers for some big companies in the “software” space”

    Dude, you have GOT to be kidding me.

  145. 113

    MadMax … are you taking a liking to Sandy Strawman as well?

    “Without patent rights, those in creative job areas producing hot cakes content will go without an income?”
    Working with a few light bulbs burnt out today are we? Don’t know the difference between copyrights and patents?

    Let’s flip your argument around, shall we …. new software appears to be quite rampant in the US despite all these onerous patents. How is that possible?

    BTW: You can get a copyright on a new automobile. However, just because you can get a copyright doesn’t mean that it is the best form of intellecutal property for it.

  146. 112

    “is there anyone posting to this blog who believes that Professor Duffy violated such ethics by not noting at the outset of his comments that he participated in preparing an amicus brief in the Bilski case?”

    I just read the techdirt blog and commentary. I don’t get it. Some people seem to be confused by the concepts of having an opinion and “conflict of interest,” as a number of the commenters accused Duffy of having the latter. I don’t see any conflict at all – he wrote an article that presumably reflects his opinions, which are in apparent conformity with his amicus brief. Where’s the conflict? Who suffers from this supposed conflict?

    The original blogger seemed to be saying that Duffy violated some “journalistic” code of ethics by not disclosing his participation in the Bilski case. My understanding is that Duffy has no personal interest in the case – he just participated in an amicus brief. So the problem is that somehow the reader of the present piece is deceived by not knowing that Duffy participated in drafing a brief that is consistent with the present piece? That makes no sense. He’s unethical because he doesn’t disclose that he’s published other writings promoting the same viewpoint?

    If the supposed ethical lapse is that Duffy is trying to impermissibly influence the CAFC opinion, then that’s even more absurd. The CAFC knows very well who he is. If the CAFC is influenced by public outrage aroused by Duffy’s post in Patently-O, then we have bigger problems.

    This looks like nothing more than a not terribly sophisticated ad hominem attack, where the strategy appears to be to divert attention from the substance of a writing by attacking the author.

  147. 111

    “So do I. It’s also unbelievable and appalling that anyone would imply that the the costs of developing a new piece of software are remotely near the cost of developing a new pharmaceutical.”

    Care to point it who? …. Didn’t think so.

    If there was a comparison being made … it was made you and your trusty sidekick, Sandy Strawman.

    BTW: Some Annual R&D numbers for select pharma companies: (all numbers in billions)

    Amgen: $3B
    Merck: $5B
    Bristol-Meyer: $3B
    Pfizer: $8B
    Sanofi-Aventis: $7B

    Annual R&D numbers for some big companies in the “software” space:

    MSFT: $7B
    IBM: $6B
    Google: $2B
    Yahoo: $1B
    Oracle: $3B
    SAP: $2B

  148. 110

    Without patent rights, those in creative job areas producing hot cakes content will go without an income? Seems that few of those creative content-providers share your conviction, pds, since new content is “rampant” now and getting ever more rampanter. Those creative authors are still all dreaming of “striking it rich” aren’t they, and the successful content-creators do still strike it ever richer, don’t they. I had supposed that anybody with a track record of creating hot cakes is ever more assured, as talent becomes ever more scarce, of securing ever more wealth. Can’t yet see what’s wrong with strong copyright and strong patents for everything that’s “technical”. As in non-communist Europe.

  149. 109

    “is there anyone posting to this blog who believes that Professor Duffy violated such ethics by not noting at the outset of his comments that he participated in preparing an amicus brief in the Bilski case?”

    I, for one, could care less.

    In the world of potential lapses in journalistic ethics, I’m not sure that it would be possible to find a less trivial and meaningless example than a blog article on an obscure patent case.

    Meanwhile, CBS and the Washington Post cover up John McCain’s lies for him. Nice.

  150. 108

    “This allows competition and development. This way writers of software get to compete on who’s is best, or has the most pleasing interface, or whatever it is that the customer likes. That’s good too, for both producers and consumers.”

    Great for consumers, no doubt about that … which is why the internet (i.e., the best place to find the most prolific users of software) is full of people advocating that software shouldn’t be patentable.

    The last generation or so has grown up in a society where the belief that content should be free has run rampant. However, the people producing the content and/or the products (such as software) still need to get paid.

    I call this form of attitude “patent communism” … the belief that everything should be shared and that people will still produce the products/content because that is what they do. Communism, when first instituted by hard core believers, works at first. However, what happens is that those that produce more value than others don’t appreciate others reaping the fruit of their labors, particularly when the fruit doesn’t come back to them. Moreover, others practicing communism also determine that the person producing the least gets just as much as the person producing the most. As such, there is little incentive to produce more or even at all.

    With inventive ideas, whether embodied in an automobile engine or software running on a server or on a browser in a client, when the incentive to produce these ideas are no longer there (because somebody can copy them with weeks, days or even hours of them being implemented), then why going through the process? Like practicing communists found out … let the other guy do the work, and you reap the benefit of that work. As such, let the other guy do the inventing, and then you just copy what was invented.

    One can argue whether or not this will happen or not, but philosophically, this is what I believe. Altruistic people exists, but they don’t exist in such great numbers so as to make communism work.

  151. 107

    “I find it disingenuous that the software companies whined for so long about how the patent system took too long to examine and issue their patents; complaining that their business cycle time was so short, perhaps a max of 5 years, but now embrace a system that gives them protection for 20 years, ostensibly long past the date that their products have ceased to be viable.”

    So do I. It’s also unbelievable and appalling that anyone would imply that the the costs of developing a new piece of software are remotely near the cost of developing a new pharmaceutical.

    But someone upthread did just that.

  152. 106

    A rather scathing comment about Professor Duffy’s “journalistic ethics” has been the subject of an article appearing on the techdirt blog.

    Out of curiosity, is there anyone posting to this blog who believes that Professor Duffy violated such ethics by not noting at the outset of his comments that he participated in preparing an amicus brief in the Bilski case? I think not given the nature of this blog and that his comments were directed to its participants, and that his amicus brief was a continuation of points he has repeatedly stated in his many journal articles concerning what he believes to be the proper approach for analyzing issues pertaining to 101.

  153. 105

    pds. Copyright stops people copying your particular implementation of an algorithm or idea. It is _good_ than someone else implementing that alogorithm or idea in a different way is not infringement. This allows competition and development. This way writers of software get to compete on who’s is best, or has the most pleasing interface, or whatever it is that the customer likes. That’s good too, for both producers and consumers.

    As TQ White says, the original patent bargain about revealing secrets sufficiently that others could implement those secrets seems to have been forgotten about some time ago.

    Tom S made a very good point about this really being about ‘should data processing be patentable’. I’m entirely in agreement with his analysis (although I suspect we might reach different opinions on the answer).

  154. 104

    The central conundrum on Disnae’s “standard setting” is that cases should get as far as trial only when they are so finely balanced that both sides still think they can win. Then we have the old maxim “Hard Cases Make Bad Law”. So, there’s a special responsibility on the first instance courts that try patent matters to be wise enough to see all the consequences of the legal theories they hand down in their “hard cases”. When the judges lack vast experience in patent law, the caselaw they hand down can get a bit dodgy. With common law Binding Precedent, it can just go on getting worse and worse, till somebody wise enough and senior enough calls for order. And I think we are at the moment not short of calls for order.

  155. 103

    TQ

    >>Is it true that the idea of patents was to induce people to reveal their secrets so they could serve as inspiration to others?

    Almost – the patent system is supposed to encourage the publication of useful information regarding “inventions” by granting limited monopoly rights in return

    >>Is not one of the main notions that the patent is supposed to be able to replicate the patented device?

    Yes, the published information should be sufficient to enable the appropriately skilled person to implement the invention for which the monopoly rights are sought. So, when the patent expires, the invention becomes freely available to all.

    >>And if true, aren’t these ideas contradicted by the broad and abstract claims made by the patents we have been talking about?

    Don’t confuse the “claims” with the overall “teaching” provided by the patent. The patent as a whole must enable replication. The claims seek to define the “invention” in terms of its essential elements, in terms that try cover the same “inventive concept” being implemented in different ways. In themselves the claims don’t need to enable replication.

    >>Don’t they support the court opinion that started this all when it said that saying ‘any computer’ (eyeball measuring device, etc) is too vague compared to some specifically configured production system?

    This is where it gets tricky. Claims tend to define inventions in terms that are generalised from specific examples of ways of implementing the invention. How much generalisation is acceptable depends on the nature of the invention and how much the patent contributes to human knowledge. If the claims are too broad in relation to the teaching provided then they will not stand up. How broad is “too broad”? The answer to that varies with the judicial/political climate. Setting standards for these things leads to all kinds of peculiar word games.

  156. 102

    Ah JAOI, I see it’s possible to type an answer, even with your tongue firmly stuck in your cheek. Nice one. TQ: don’t you believe him. Think: he would say that, wouldn’t be, because he’s an inventor, and a patent holder, and somebody with a passionate interest in a “strong” US patent system. Not your type at all.

  157. 101

    TQ,

    As I understand your questions, the answers are: No, Yes, No and No.

  158. 100

    TQ: there is a recent US case called Liebel-Flarsheim, which caused a stir in its assertion that the inventor has to enable (in his app to the PTO) the whole scope of the area he embraces with his claim. But, in Europe, where patent practitioners and attorneys at law are two different professions, with a healthy mutual disprespect, that’s long been a fundamental principle of patent law. Actually, I think it is too, in the USA, but you know how those lawyers can muddy the waters.

  159. 99

    Some of you actual patent experts out there…

    Is it true that the idea of patents was to induce people to reveal their secrets so they could serve as inspiration to others? Is not one of the main notions that the patent is supposed to be able to replicate the patented device?

    And if true, aren’t these ideas contradicted by the broad and abstract claims made by the patents we have been talking about? Don’t they support the court opinion that started this all when it said that saying ‘any computer’ (eyeball measuring device, etc) is too vague compared to some specifically configured production system?

  160. 98

    Which begs the question: Isn’t copyright the more appropriate forum for software protection?

    Copright doesn’t protect funtionality. Come on, we’ve gone over this dozens of times. Just like there are hundreds of different ways to manufacture an automobile engine (and yet still retain the same functionality of the engine), there are hundreds (that number could be off by several orders of magnitude) of different ways to create the same functionality of a particular type of software.

    Copyright protection for software will only protect against really dumb copiers.

    “I find it disingenuous that the software companies whined for so long about how the patent system took too long to examine and issue their patents; complaining that their business cycle time was so short, perhaps a max of 5 years, but now embrace a system that gives them protection for 20 years, ostensibly long past the date that their products have ceased to be viable. Does this engender innovation?”

    Don’t confuse products with the technology. They are NOT one and the same. The product may be obsolete, but the technology may not. As in ALL types of technologies, improvements may be made on the old technology that still fall within the scope of the old technology. As such, although the product that embodied the original technology may long be off the shelf, the technology may live on in future products.

  161. 97

    Somebody’s pulling my leg. “Single electronic global brain, accessible to all” You cannot be serious. And anyway, who wants to live in that world? I tell you what: I’m not holding my breath till that day.

    Think..Do: may I commend to you the life of a European Patent Attorney whose daily work is oppositions at the EPO. One day I’m working for an inventor, say of a blockbuster pharmaceutical, who needs a patent to recoup his investment. The next, I’m working for a generics manufacturer, who is pointing out the iniquities of evergreening patents. I see their point. Both of them. As far as I am concerned, the modern European law of patents, with its fundamental statutory imperative of delivering “fair” protection for inventors yet “legal certainty” for those impeded by the patent rights of others, is the right model to foster innovation in technology, for the foreseeable future.

  162. 96

    In his book, G-Forces – The 35 Global Forces Restructuring Our Future (Morrow Publishing 1989), Frank Feather offers a Chapter on Sharing Information and Technology with a subject headed: Copyright Law Becoming Obsolete.

    In it he proposes: ‘Individual intellectual property rights will become absurd once collective knowledge is shared in a single electronic global brain, accessible to all.’

    He continues; ‘To restrict access to information, then, is to restrict economic development for everyone. Ideas are only economically valuable once they are applied in economic activity, and their value can be increased only through their widespread diffusion.’

    Mr Feather’s next subject, titled ‘Technology Transfer – Essential to Prosperity’ offers another remarkable insight:

    ‘Never before have ideas been made so subservient to the wishes of mercenary authors. These days you must buy ideas or do without them – unless you succumb to piracy and counterfeiting.’ Later he produces this gem: ‘The problem today is that world competition has become intensely threatening. The fear of this threat is impeding our collective progress.’

  163. 95

    You’re all missing the point.

    Most patents are derived from an observation of something already in existence. Very few are truly original. In the not too distant future we will come to acknowledge them as one of our greatest mistakes realising they have been largely responsible for slowing human progress.

    TFD

  164. 94

    “Moreover, try to sell it at the same time saying that it is freely copyable.”

    Which begs the question: Isn’t copyright the more appropriate forum for software protection?

    I find it disingenuous that the software companies whined for so long about how the patent system took too long to examine and issue their patents; complaining that their business cycle time was so short, perhaps a max of 5 years, but now embrace a system that gives them protection for 20 years, ostensibly long past the date that their products have ceased to be viable. Does this engender innovation?

  165. 93

    “Your argument seems to be along the lines of ‘it’s easier to use a patent to go after a copycat’ rather than ‘patent is the right regime for protecting software.'”

    My argument is both. Software is much more than just a bunch of code lumped together, just as the latest engine in a high-end Lexus is more than just a bunch of metal lumped together.

    Software is more than just “an idea,” it is an idea embodied in methodology combined with hardware that does something useful. Just like an automobile engine is an Otto cycle (i.e., a thermodynamic cycle) embodied in a methodology combined with hardware.

    “Second, the economics of software appear to me to make the initial investment rather low, so that a profit is returned more quickly.”
    I’m guessing that you haven’t tried to make money selling software? Come up with a piece of software and try to sell it. Moreover, try to sell it at the same time saying that it is freely copyable. My guess is that for the time you spent developing/coding/testing/marketing the software, you would have a greater return on your time spent by working at the local Burger King.

  166. 92

    Tiptoe: do you have any issue with the “big idea” in Europe, that patents are to be obtainable by the first inventor ( I write “inventor” deliberately, because that is, in its effect, what we have in Europe) to file an enabling disclosure of a new, useful and non-obvious solution to an objective technical problem, to secure 20 years of exclusive rights, with a scope of protection commensurate with the size of the new and non-obvious “contribution” to the technical field in which the patentable subject matter is located.

    I had thought that such a definition of “What ought to be patentable” is not controversial, not even seriously disputable. And it covers software products too. But on this blog, anything’s disputable. What do you think?

  167. 91

    Posted by: pds | Jul 22, 2008 at 08:58 PM

    pds,

    Your argument seems to be along the lines of “it’s easier to use a patent to go after a copycat” rather than “patent is the right regime for protecting software.” I agree, it’s harder to prove someone stole and used your trade secret than it is to prove that someone infringed your patent. It’s also harder to recover your damages. However, ease of enforcement / collection doesn’t convince me that software should thus be patentable.

    Patent explicitly does not protect some subject matter, those which are ineligible under 101, 102, 103, and 112 for example. I can understand those who argue that software should be excluded under 102/103, but I’m not completely convinced yet that they should make it through the door of 101.

    From this thread, it appears that the main argument for patenting software is that because the same result can be coded for in many different ways, patent is necessary to protect the “idea” being coded so the inventor can recoup his investment and make a profit. First, this seems to me to run explicitly into the “ideas are not patentable” function of 101. Second, the economics of software appear to me to make the initial investment rather low, so that a profit is returned more quickly. At least, that’s my impression compared to say, pharmaceuticals.

  168. 90

    “Why aren’t the likes of Google et al paying royalties to the estate of Thomas Edison or for that matter any other holder of a patent which has made their own patents/ systems/ models/ methods possible?”

    Actually, this is a point lost on many patent-hat ers. Patents expire 20 years from issue. For example, every patent that was filed during the alleged “great patent rush” of the late 90s has already used up half of its life. In another ten years, all these patents that people are currently ringing their hands over are going to expire.

    20 years is a blink of an eye … particularly when you are trying to get a patent application through the USPTO.

  169. 89

    What get’s me folks is this:

    Inspiration does NOT form in a vacuum!

    Why aren’t the likes of Google et al paying royalties to the estate of Thomas Edison or for that matter any other holder of a patent which has made their own patents/ systems/ models/ methods possible?
    I.e. No electricity = no power = no ‘puter = no claims = no patents = no Google!

    Like practically every other inventor before them, Page and Brin have borrowed from previous technological realities and developments or systems already in existence. All they’ve really done is applied their own inherent reasoning to the then current incarnation and tweaked it! Whoo! Hoo!

    Why isn’t it mandatory for inventors to make a royalty payment to the source of their inspiration? I.e. “I was watching a dolphin leap out of the water one day and…hey presto!”

    For are we all not standing on the shoulders of giants before us?

    P.S. I am currently working on a patent (system and method) which will enable me to charge a royalty for any new thought or action derived from any previous thought or action ;-)

    TFD

  170. 88

    “The bottom line here is that a process to be statutory must perform a transformation and reduction of an article to a different state or thing. This test must be applied to the claims in question, especially if there is only an incidental recitation of a computer apparatus in the preamble.”

    Apply that logic to the decision of AT&T v. Excel. What is the article being transformed?

  171. 86

    “John Love, Deputy Commissioner for Patent Policy, who joined the office in 1969 to avoid the Vietnam draft”

    Great argument!!!

  172. 85

    Here’s what’s going on…in a NUTSHELL:

    There is now raging a 30-year plus debate on whether “transformation of information” is patentable subject matter. Transformation of information is, of course, performed in the modern day by software. It can be performed by other means–including mental steps–however, advantageously sometimes necessarily, it is performed by software.

    John Love, Deputy Commissioner for Patent Policy, who joined the office in 1969 to avoid the Vietnam draft, is a mechanical engineer who in his heart of hearts cannot fathom why software should be patentable. The “wacky” business method patents and even wackier methods in other arts just puts him over the edge. It’s a wonder he’s still sane? That’s a question mark.

    Should methods and systems for transformation of information be patentable? Why or why not? More importantly, who should decide?

    Well, CONGRESS should decide. It is Congress that was given the power in the Constitution, Article I, Section 8, to Promote the Progress of Science and the Useful Arts, by securing for limited times… However, Congress won’t decide, or can’t, or shouldn’t by reason of unintended consequences of laws enacted by the misinformed and misguided.

    So where does that leave us?

    Neither side will admit that the debate is really about whether patenting methods of transforming information is the issue, because, to the proponents, transformation of information still sounds unsubstantial (“it’s just software”; “it’s just data”), and because, to those opposed to software patenting, transformation of information is undisputably economically valuable as the driver of productivity in the 21st Century–by the tranformation of information we reduce, we optimize, we efficiently allocate resources (tangible, concrete resources mind you) to more economically productive outcomes.

    Ask a 20-something if information is worth paying for (ask a Dad of 20-something who pays his or her cell phone bill). Ask a 40-something if transformation of information is economically valuable. Of course. Ask a 60-something the same question. Different answer. John Love is a 60-something. The BPAI is 60-something.

    This author’s opinion is that the present attack on patenting by the Office and by certain members of the BPAI is from a fundamental aversion to patenting methods of transforming information to useful ends (i.e. software); the belief that such transformation is not innovation and has no place in patenting, patenting having been reserved by our founders for those technologies which they could foresee in 1776, namely, mechanical and chemical patents (recall that electrical methods and means had not yet arrived); and as a political expedient to global harmonization of patent laws (note that Europe is moving TOWARD software patenting, not away).

    A forthright debate on whether methods of transforming information in this Information Age “promotes the progress of science and the useful arts” would be the most direct approach. In the meantime, Congress has not enjoined patenting of novel and nonobvious methods of transforming information and the Supreme Court has concurred on Congress’ right to “so order.”

  173. 84

    “Thus for both Langemyr and Google, patent eligibility under the PTO’s test comes down to the interpretation of the second part of the PTO’s test.”

    I think this statement is incorrect. There is no two-part test, so there is no second part.

  174. 83

    With all due respect, the test you articulate is not the correct test.

    You recite the test as “In the most recent of these three—the currently pending en banc Bilski appeal—the Office takes the position that process inventions generally are unpatentable unless they “result in a physical transformation of an article” or are “tied to a particular machine.” Indeed, this may have been stated in oral argument, but the language is unfortunate.

    The language paraphrases the test that is being applied. That test is “Transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.” Diehr, 450 US at 184, quoting Benson.

    Thus, there is not a two part test here. There is only a one part test. Bifurcating the test leads to error.

    The point of the unfortunate language is that the recitation in the preamble that the process is a method executed on a computer apparatus does not save the process, if the claim fails to meet the transformation test. The board held that a nominal recitation of a computer apparatus in an otherwise ineligible method fails to make the method a statutory process.

    After the board states that the claimed method is not tied to a particular machine, but rather is tied only to a general purpose computer, the board states that claims that involve machines in a merely incidental fashion are not automatically directed to a patentable process.

    That is the meaning of the unfortunate language, which you have interpreted as a separate leg of a two-part analysis.

    The bottom line here is that a process to be statutory must perform a transformation and reduction of an article to a different state or thing. This test must be applied to the claims in question, especially if there is only an incidental recitation of a computer apparatus in the preamble.

  175. 82

    PDS wrote: “all it will take is just one person with a USB flash drive (or whatever small portable storage device you want to dream up) to steal the trade secrets and post them on the internet. In a couple of minutes, the trade secret goes “poof” and you are left nothing.”

    Really? Is that an accurate statement of trade secret law?

    For that matter, are you sure that Google’s page rank algorithm isn’t protected by trade secret as well? Is it possible that the patent protects the idea, but that the actual algorithm is protected by trade secret?

  176. 81

    very few inventions that are commercialized can be protected by trade secret protection

  177. 80

    “Gosh, back in the bad old days when I started computer programming (sometime between 1950 and 1981) when software patents were not being allowed there was no end of innovation. Innovations came as fast as the hardware permitted. I even remember one major design meeting in about 1976 for a project where we explicitly agreed to design the software for the hardware we expected to be available two years later – innovation was running ahead of the hardware. I expect that game programmers do the same today.”

    Oh yes …. the roaring 50s, 60s, and 70s … the pinnacle of software development. Since the early 80s, not much has change in software …. barely any innovation whatsoever.

    “Instead of seeking a patent they would have relied on trade secrets – which they do to a significant extent anyway.”
    A trade secret??? Really??? Do you think computer-related inventions can be protected by trade secret???

    Since you’ve owned up to be at least somewhat knowledable in the area, do you realize that very, very, very few companies are able to protect their computer related inventions by trade secret? Google can protect its server-side technology because it controls the server. However, Google cannot protect anything that gets distributed out. Most companies that try to make money on their computer-related inventions do so by selling the software and/or hardware associated with the software to clients. As such, once its in the client’s hands, you might as well kiss the trade secret good bye.

    Moreover, even if they are protected in-house, all it will take is just one person with a USB flash drive (or whatever small portable storage device you want to dream up) to steal the trade secrets and post them on the internet. In a couple of minutes, the trade secret goes “poof” and you are left nothing.

  178. 79

    “I have a question – say that PageRank was never patented in the 1st place, … But, the “guys” did come up with the idea – how could they just sell the idea to someone else”

    They would have done what they probably did anyway: develop a prototype working on a a subset of the Web as a computer science school project and demonstrated its effectiveness to venture capitalists. Instead of seeking a patent they would have relied on trade secrets – which they do to a significant extent anyway. Its not as though the computer science department at Stanford would have had much trouble getting the attention of venture capitalists.

  179. 78

    “If you don’t grant software patents, where is the incentive for innovation?”

    Gosh, back in the bad old days when I started computer programming (sometime between 1950 and 1981) when software patents were not being allowed there was no end of innovation. Innovations came as fast as the hardware permitted. I even remember one major design meeting in about 1976 for a project where we explicitly agreed to design the software for the hardware we expected to be available two years later – innovation was running ahead of the hardware. I expect that game programmers do the same today.

    It appears to me that software patents have not added to the rate of software innovation since 1981 and if anything have slowed down the overall pace of innovation.

  180. 77

    Google’s PageRank patent is one of many patents which takes a well-known process and moves it to a new area. Just as the concept of “hey, let’s patent storing a wishlist in a database” isn’t very innovative, the concept of PageRank is embodied in the citation counts used to evaluate professors up for tenure. “Citation clubs” are the way to beat that system, and indeed, “link exchange” is used to attack PageRank.

    It’s a shame that the patent system has been unable to stop such silly patents. Personally, I’d rather see no software patents than a flood of silly ones. That way we could all go back to innovating, and spend less time wading through a swamp of patents, and the trolls that love them.

  181. 76

    I have a question – say that PageRank was never patented in the 1st place, because there was no such thing as patenting in the realm of software. But, the “guys” did come up with the idea – how could they just sell the idea to someone else, if they could not surrender the rights to the patent itself? In that case, they might have just given up and we would still be using alta vista (crap). I mean, this “idea” had a life – they had to put in a boatload of work between the original initial “thought” and the pseudo “design” which these patents seem to be – since you can just take it to a Cobol programmer (as in “unimaginative”) and they could make it work.

  182. 75

    “If you don’t grant software patents, where is the incentive for innovation?”

    Maybe there is some latent consumer demand for better software. You could tap that demand and fuel it with advertisements and free trial periods. Then you could charge the users for upgrades and add-ons once you got them addicted. Maybe you could make that stuff available by the web and reduce production and distribution costs to relatively nil compared to the old truck/gas/store model.

    I dunno. Those are just some thoughts that popped into my head.

  183. 74

    Malcom: The quid pro quo of the patent system allows a monopoly as a reward for innovation. The programmer who can build upon a patentable idea *can* once the idea is part of the public domain at the expiration of the patent term. If you don’t grant software patents, where is the incentive for innovation?

    Where is the incentive to transform hardware devices currently in use into software form? For example, musical synthesizers. If you can patent a hardware synthesizer, why can’t you patent software that performs the same functions but on a computer?

  184. 73

    TQ White, the reason those great inventors are entitled to those claims is because they were working in a complete vacuum. Prior to their inventions, there were no such things as search results or eye surgeries. Their contributions were so tremendous that the PTO, always thinking of the American public, thought it best to give them claims of gigantic scope — a little extra bit of reward (and incentive for the next truly brilliant, society-changing invention that would never take place but for the brilliance of the inventors who deem us worthy of their creations).

    /patent huffer off

  185. 72

    “In other words, the secret to Google’s success isn’t someone’s obsession with a lightweight interface – it was their major leap forward in search result quality.”

    And that, plus $4.50 will get you a cup of latte. Where’s the value?

  186. 71

    I’m not a lawyer but I am opposed to much of the current intellectual property regime. I’ve read this and agree with the USPTO. Pagerank is an idea, not an invention. It could have as easily said, “Method for assisting people to find good information.” Doing a tally of incoming and outbound links is a good idea and Google does a good job of it. However, I don’t understand how it benefits our society by preventing someone else from doing it better.

    You want companies to prosper? Ok, then tell them to keep their secrets secret. There’s nothing about Google that requires them to reveal their details. And, as we all know, they have not. Google is known to have adjusted Pagerank in many secret ways over the years.

    Honestly, it seems to me that the laser eye treatment patent should be invalid, too. As far as shown in these comments, it only describes ideas. All the questions about how the measurements would be taken are legitimate. My recollection is that a patent was supposed to contain enough information to allow another practitioner to duplicate the process – the process that was prohibited by the patent.

    Both Pagerank and the laser patents cover an infinitude of potential systems that fit the description. Neither contains enough information to duplicate any particular system (are the laser people patenting eye measurement with a cool laser system? Calipers on the eyeball? Estimation? All of them?).

    The bargain, as I understand it, of the patent system, is that we will grant a monopoly in exchange for information to allow others to expand upon. Mere ideas are not sufficient for this purpose. I’m not smart enough to conceive Pagerank (even having heard that such a thing exists) but I might be smart enough to see a way to improve upon it, if I knew how it was done. But I can’t, because its claims to cover the very idea of link-based relevance, the guy who is smart enough to figure out Pagerank the Sequel, is prevented from doing so.

    And so I say again, how does our society benefit from this?

  187. 70

    stepback “A diagnosis after all is merely purely a mental step”

    Indeed is is, in the simplest embodiment.

    Unless a claimed method of diagnosis is limited by requiring a step of communicating, reporting (i.e.,to a patient or another physician) or recording the information, it is very likely an invalid claim. You are not allowed to claim facts and prevent a doctor from merely thinking about the facts, nor can you prevent a doctor from taking action on claimed mental steps that you “suppose” the doctor must have considered.

  188. 69

    “But Lowly’s (and others) point was that it is a poorly written claim, period, regardless of who the claim is “trying to capture.” A claim on “using data”, that reads on an entirely mental process? It’s unpatentable.”

    You are correct. I don’t care how clever the idea behind the claim was, it was written in a way that opens the door to a 101 rejection from E6k. It should have been written differently.

  189. 68

    The Google PageRank claim could have arguably included at least a “virtual” transformation of data (that ultimately appears as a physical transformation on a networked computer display), rather than simply calculating a “rank” (just a number), if it had recited obtaining a plurality of documents “in response to a search request from a network user”, and “returning a linked list of the linked and linking documents to the network user in an order determined by said score such that said documents are accessible to the network user through said linked list”. But the claim, as written, arguably covers only the mere calculation of a score, as described in the article, without actually defining the transformation that does occur in the invented method.

  190. 67

    Mooney,

    Your arguments about obtaining measurement data are vacuous at best if not downright unscientific.

    The next time you have a personal health emergency and are laying on a gurney in the Emergency Room, tell the doctor not to bother with obtaining measurements via EKG, x-rays, etc, because the data obtained is merely mental steps and expensive, as well as time wasting. Let the doctor conjure up his own data using only his mental powers and come up with a quick diagnosis. A diagnosis after all is merely purely a mental step (as you and some others here see it) and therefore why waste time taking physical measurements?

    As for myself, I prefer that the doctor obtain measurement data so that he can make a scientifically based diagnosis rather than one based entirely on witchcraft. And if my health bill includes royalties to an inventor who came up with a better medical procedure, so be it. That’s the cost of progress (for those who do not want to engage in outright stealing from the work of others).

  191. 66

    Great comments by Danny Sullivan and big hairy rat who clearly get it. Not that difficult, really.

  192. 65

    stepback “The second party is still exploiting the invention but trying to do so in a crafty way. Claim 120 was apparently written with an eye towards getting direct infringement by such a second party.”

    But Lowly’s (and others) point was that it is a poorly written claim, period, regardless of who the claim is “trying to capture.” A claim on “using data”, that reads on an entirely mental process? It’s unpatentable.

  193. 64

    ”’Another poorly drafted claim. In the first claim and fourth features, rather than “obtaining” I’d have written “performing.” ”’

    Lowly,

    Don’t be so quick in your rush to judgment.
    The fact that it is claim number 120 should give you a clue that perhaps there were 119 claims that preceded this one.

    A good patent attorney (and BTW I have no association with the Ex parte Roberts people, just happened to spot their BPAI decision on a random look-see) would consider the ways in which an infringer might try to design around the invention.

    So one of the ways is to split the infringing acts (divided infringement) where one party does the measuring and a second party does the using of the data obtained from the measurements. The second party is still exploiting the invention but trying to do so in a crafty way. Claim 120 was apparently written with an eye towards getting direct infringement by such a second party.

    Don’t be so quick to judge others.

  194. 63

    Even if the patent is invalidated, no big deal to Google. It’s not like it has tried to enforce others from using it. Nor are they, at least entirely, since ranking algorithms are more like a recipe of many different techniques — and PageRank is just one of them. Google has its own secret recipe that isn’t patented but remains unique to Google.

  195. 62

    “Then invalidate it based on novelty, obviousness and/or enablement. Why must a court create a “gloss” on the meaning of “process” in section 101 so that it can be the gatekeeper?”

    I think that you are right at an intellectual level and I would agree with you if there were no costs associated with bad patents. I suspect that what is going on is that the PTO is saying that the software / business method patents that are coming in are so low quality that it is better from the point of view of encouraging innovation to simply disallow all software / business methods under 101 then to try to separate the wheat from the chaff using the other sections.

    Changing metaphors: When you are mining thin ore, there comes a point where it becomes counterproductive even if there are a few nuggets of gold mixed in with all the dross.

  196. 61

    Ironicslip

    Ironically, I’m not at all sure what point you’re trying to make.

    Patents have never just been about things that people buy, but about the technology embodied in or associated with things that people buy, including the equipment, materials and processes used to make those things.

    And people buy computer program products, whether such products are tangibly embodied on CD-ROMs and sold in physical 3D stores or whether they are downloaded over the net (I hear you can even do it wirelessly these days).

    One of the interesting things about Google is that they don’t sell anything to anyone except people who are trying to sell other things to other people, and yet their business model depends crucially on their technology that serves the people they aren’t selling anything to.

    TRIPS doesn’t preclude the patenting of anything at all. It insists that “novel, inventive, industrially applicable technology” should be patentable, allows members to prohibit patenting a very limited list of things if they wish, and positively doesn’t prohibit members from allowing the patenting of things beyond “novel, inventive, industrially applicable technology” – my point was that the apparent USPTO desire to limit patentability as discussed in the article actually seems preclude the patenting of some things that TRIPS insists should be patentable.

    You don’t have to be European to think that USPTO policy/practice is a mess – just read this board. Where does Lundgren stand right now? Are we waiting for the Bilski judgement to answer that too?

    A software patent is a patent that’s only about software innovation and a business method patent is a patent that’s only about business method innovation. They do exist, as do a variety of hybrids.

  197. 60

    Slip, don’t understand. Euro-whatever is saying that the Google contribution is new and non-obvious technology, so it’s patentable subject matter in Europe. If “people” were to find that technology (signals, software products) which is the subject of their valid European patents is unpatentable in the USA, that would be unfortunate, no?

  198. 59

    Mouse, depending who are your “people”, do not despair. I think the entire patent community of Europe realises what you wish “people” would realise. But when 101 is as it is, and Congress is as it is, and the judiciary is as it is, and you are the USPTO “people”, you do what you can to get by, don’t you, and to keep the ship afloat? Maybe the PTO plan is: when we’ve done enough of our “reject, reject, reject” to succeed in damping the surge of doubtfully-technical apps to a more manageable steady flow, then (and only then) we can begin to ease open the tap. Everything comes to he who waits (perhaps).

  199. 58

    AP – “Maybe the PTO is finally implementing my test: If the claim is nothing more than a computer making calculations that, given enough monkeys and calculators, could be done manually, there is no patentable subject matter.” right, and a patent agent is nothing more than a “computer” trying to get claims … what value do YOU add? why not let your client give a whirl with the OFFICE? given enough claims and enough agents why do it manually at all …

    simply fire the patent agents &, by extension, if we want to continue to devalue the US Patent system keep the disclosure from public dissemination (they aren’t written very well, they aren’t novel. they aren’t “part of our plan”), … why bother if there is no there there? here is a previously referenced appln – call it patent agent replacement 20010049707

    the real irony … the “coalition for patent fairness” pushes and pushes and lobbies and lobbies for patent reform (the patent reform act of 2007 even carved out payments for datatreasury) & it comes in spades all over the map … new rules on continuations & appeals & IDS & more boxes to check (thank you Exec Branch – err Admin Agency) … lots of rulings from the SCOTUS (thank you Judiciary Branch) … then … Bilski (well, not such a dramatic event) …

    amicus briefs filed in Bilski take a decidedly different tone from the entrenched positions of the members of the coalition for patent fairness. Duffy included, btw. how could they believe that their own IP would be at risk, yet the “monkeys with computers” are STILL on the loose … Duffy points out the obvious but forgets about the MSFT-Yahoo-Google dance currently in motion – what could be more tangible or ripe for DoJ interest – forget patents, right (btw, it is the Overture patent, US Pat 6,269,361, referenced here previously, that DID price at $1.63 bil – anyone posting here who is dismissive of *patent* value in Google’s plans is out of touch, put mildly)

    … perhaps Google’s recent “Allied Security Trust” in view of Intellectual Ventures multi-billion dollar funds should be considered innovation or even RIM’s massive purchases of patents in 2008 – $350 mil 1st quarter (?) (perhaps when their lobbying was deemed ineffective – thank you, Canadian brothers & sisters) … what does it means to be tangible? (ability to pay mortgage?) a “useful art”? (only if we have shiny plastic boxes attached – for taxation purposes?) an “innovation”? (only if you bought one too – else it’s a fad) >>> litigation is cheaper than R&D …

    SIDE NOTE :: Euro-whatever – people DO NOT BUY TECHNOLOGY THEY BUY PRODUCTS & SERVICES … that the underlying page rank system is based on patentable subject matter EQUALLY MEANS THE US SHOULD ABANDON TRIPS & WTO in general in deference to protecting US Patents … The facts can be used in reverse … the US has suffered stagnating white collar income so why not reverse the bad harmonization decisions made over the past 15 years. Whatever is “endemic to the USPTO” – please show me a valuable EPO patent … akin to the Overture patent cited above … for reference purposes.

    last, can some please explain what a software patent is? what is a business method patent? all patents are software & all patents are business methods (well if a patent can get the patent holder paid – *that* is a business) – ooh ooh – what is a “defensive patent” again?

  200. 57

    BHR wrote, “My view is that the idea of ranking pages using link data should not be patentable by itself (which would then cover every conceivable way of calculating page weights from the link data) but a particular way of doing so may be properly patentable.”

    Then invalidate it based on novelty, obviousness and/or enablement. Why must a court create a “gloss” on the meaning of “process” in section 101 so that it can be the gatekeeper? I think the “enabling the full scope of the claim” cases are adequate to address claims that go far beyond what the applications disclose. Hire a computer science expert who can show that the claims are not enabled. It shouldn’t be that hard to do.

  201. 56

    Giri,

    You should see some of the rejections I get. Your claim would be rejected on 101 because it reads on a signal, which is nonstatutory. Yes, I cited Beauregard and quotes the claims from the patent. Rejection. People buy software over the innernets now, you know. Computer program products included downloads.

    Yes, I tried the “how do you ‘store’ information on a signal?” argument. Rejection.

    I tried “tangible computer readable storage medium.” Rejection.

    Now time for appeal. What a waste of time and money.

    Of course a CPP has always read on a printed piece of paper even though we pretend it doesn’t. There’s is no difference between writing a bunch of hexadecimal on A4 paper and scanning it in or putting it in Braille or putting binary bumps on a CD ROM.

    I wish people realized that the reasoning against patenting “software” extends to all subject matter. A general purpose computer *running* software is a particular apparatus, just as a snazzy new antilock braking system using brave new algorithms in an embedded controller is a particular apparatus.

  202. 55

    “120. A method for improving refractive ophthalmic treatment comprising:
    * obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye;
    * determining a first operative corneal ablation specification based on the first, preoperative diagnostic measurement;
    * obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea;
    * obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea;
    * correlating said non-tissue removing perturbation data with the biodynamic response data gathered from a statistically significant number of corneas; and
    * establishing an individual customized laser ablation specification for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

    101 subject matter or not?”

    Another poorly drafted claim. In the first claim and fourth features, rather than “obtaining” i’d have written “performing.”

  203. 54

    Following up on Eurodisnae, my gut tells me that Stanford (Page and Brin) would have a valid patent in Europe. But their patent family on 6,285,999 contains only US members. So we will never know.

  204. 53

    IF the USA really wants to clarify the scope of patentable subject matter and IF it wants to limit that scope along the lines of physical transformations etc., it could do worse than look at the EPO’s established/evolving practice on “technical effect” – not perfect by any means, but certainly preferable to the semantic games and hopeless uncertainty that now seem endemic at the USPTO.

    I would humbly suggest, also, that the USPTO should be cognizant of its obbligations under TRIPS to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial applicability.

    PS I completely agree that what set Google apart from the competition at the outset was the quality of their search results. What might the reason be for that, other than superior TECHNOLOGY?

  205. 52

    To prove Eric’s comments that the sky is not falling, the very same pagerank patent has device claims that requires a computer:
    “19. A computer-readable medium that stores instructions executable by one or more processors to perform a method for scoring documents, comprising:

    instructions for searching a plurality of documents, at least some of the documents being linked documents and at least some of the documents being linking documents, at least some of the linking documents also being linked documents, each of the linked documents being pointed to by a link in one or more of the linking documents;
    instructions for scoring each of the linked documents based on scores for the one or more linking documents; and
    instructions for providing the linked documents based on their scores.”

    I can’t see any court invalidating that on the basis of 101. And most other software patents have atleast one independent claim that requires a physical medium. So, Prof. Duffy’s concerns are an overreaction, in my book.

  206. 51

    As a software inventor (not a patent attorney) I don’t see how the Google patent can be used as the poster-child to support this argument. Couldn’t Google claim:

    A search result presentation system comprising:
    one or more server computers running Pagerank engines;
    at least one end user display displaying Pageranked results;
    wherein each Pagerank engine… [does what it does].

    Would that meet the proposed new criteria? (I’m genuinely asking.)

    What the above Google example does clearly show me however, is how important software patents really are. If Pagerank was un-patentable, it could only be protected as a trade secret and run behind closed doors. This means the general developer community might never find out how Google works (including those open source developers who wish to have software patents abolished). This would have two immediate consequences:
    1) Google might be loathed to allow its products to be run securely inside corporate networks for confidential corporate data (since this would lead to the reverse engineering of its would-be trade secrets).
    2) Third-party developers may find Google’s application programming interfaces harder to leverage even if they were offered under those circumstances, since Google would be loathed (even more) to explain how its services behave under different conditions.

    In summary, the sky might not be falling in as the article suggests, but these issues need to be handled very carefully.

  207. 50

    “nothing more than a computer making calculations”

    The novelty (whether patentable or not) in Page Rank is not just the set of calculations (which could be done by “monkeys”) but the development of an algorithm for ranking pages that is actually useful. There is an unlimited variety of ways that could be used to rank the relevance of pages; in the years Before Google (BG) some of these were used apparently based on trial and error. The reason for Google’s success was its ability to produce useful results rather than just an arbitrary set of pages that happen to contain your search terms.

    Obviously an abstract algorithm (which is where the real smarts exists in most software patents) is even less patentable than a piece of software.

  208. 49

    “Does the USPTO have substantive legislative powers such that they can arbitrarily and capriciously re-define what “any process” means under 35 USC 101?”

    It’s not arbitrarily if the courts have done it for us already. You simply must remember the office isn’t coming out of left field with this interpretation, the office is asking the court to get back to where it was 20? years ago and then further clarify.

  209. 48

    Mooney, I’ve said it before and I’ll say it again – you don’t know what you’re talking about.

  210. 47

    “Thanks MM … for not answering any of the questions.”

    Except I did answer your 7:41 question directly, pds. I am loathe to break the bad news to you. You asked another question about what the law required but it seemed like a rhetorical strawman and you proceeded to answer the question yourself. In any event, whether the law requires that the process be tied to a machine is irrelevant to the fact that the claim reads on a wholly mental process. That’s bad claim drafting. More specifically, it’s unpatentably broad claim drafting. You’ll learn eventually, pds. Probably the hard way.

    “I have made the observation many times that you don’t like to answer questions.”

    And you were wrong every frigging time. Sorry, bud.

  211. 46

    I figured it wouldn’t be long until the shrimp serving and car parking shift was over and we had to endure more taxi cab “wisdom” from Mooney.

    “The answer to the question “why stop at calculations” is that “calculations” are merely symbolic embodiments of pre-existing mathematical relationships.”

    Tell that to Einstein. Better yet, tell that to Newton’s Ghost…

    Mooney, go back to the lake shore, your crack pipe is waiting.

  212. 45

    The Fed Case law is that (i) a general purpose computer can be programmed to not be ‘general purpose’; (ii) when data is transformed, the computer that uses it is transformed, albeit on the micro-level of the cells.

    What is issue here? Think Duffy is off ‘kilter’

  213. 44

    Thanks MM … for not answering any of the questions. Again, not remarkable as I have made the observation many times that you don’t like to answer questions.

    Instead, you are content to, yet again, change the subject and subject us to your wet dreams about the dissent in LabCorp v. Metabolite.

  214. 43

    One question to ask is: Does the USPTO have substantive legislative powers such that they can arbitrarily and capriciously re-define what “any process” means under 35 USC 101? Did Congress abrogate its powers and hand them over to the USPTO? If so, where and when did this happen?

  215. 42

    pds “obtaining non-tissue removing perturbation data from the individual cornea before ablation ”

    Obtaining data. Obtaining data. Obtaining data.

    It seems to me that if the patentee wanted the claim to be limited to a method that was only infringed if the practitioner (by himself or in conjunction with another acting under the control of a mastermind) ACTUALLY perturbed the individual’s cornea, then the patentee would have written the claim in that manner.

    But instead the patentee wrote the claim to recite a step of “obtaining data.”

    The way I approach these sort of claim construction issues is to ask: when the owner of the patent is seeking to capitalize on the granted patent and the alleged infringer or potential licensee says, “we don’t perturb the individual’s cornea”, will the patentee shrug and say “Oh we’re sorry. You clearly don’t infringe” ?

    Maybe you should revisit the history of the LabCorp v. Metabolite case again to see how these things play out in the real world.

  216. 41

    “What is a general purpose computer. Hand held devices like a Blackberry can be programmed to function as a general purpose computer – does that make every modern cell phone and pda out there a general purpose computer?”

    Does anybody actually have a definition of a general purpose computer from the Federal Circuit?

  217. 40

    “Does the claim require that the measurements so obtained are obtained for the first time by the practioner of the claim and not previously recorded by somebody else? Nope.”

    Does the law require that the process be directly tied to the machine? Not as far as I can tell.

    “‘Obtaining a measurement of the spectrum reflected by the iris’, i.e., ‘I see your eyes are blue.'”
    I very much doubt the spectrum of light reflected by the iris is a “pre-operative diagnostic measurement,” given the broadest, reasonable claim construction consistent with the specification. Also, you haven’t told me about how you were going to be “obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea.”

    Finding a claim unpatentable under 35 USC 101 is not difficult. In fact, it’s really easy if you ignore the ACTUAL language of the claims, and construe the claim language in an unreasonable manner inconsistent with applicants’ specification.

    In fact, I see it done all the time by examiners.

    BTW: it is good to see you and 6K buddy, buddy again. You two deserve each other.

  218. 39

    What is a general purpose computer. Hand held devices like a Blackberry can be programmed to function as a general purpose computer – does that make every modern cell phone and pda out there a general purpose computer?

  219. 38

    Can anyone tell me what is the meaning of “transform”. I mean, is there any court case that defines the meaning of “transform”?

  220. 37

    “Tell me again, how the measurements are obtained? They don’t just magically appear on the piece of paper. Even if someone wrote them down, the measurements still had to be obtained from something.”

    As e6k noted, the practitioner of the claim may obtain the measurements simply by reading them or observing them. “Obtaining a measurement of the spectrum reflected by the iris”, i.e., “I see your eyes are blue.”

    Does the claim require that the measurements be obtained to some degree of accuracy that is obtainable only through use of a machine? Nope. Does it require that the measurements are recorded on a piece of paper or entered into a computer? No. Does the claim require that the measurements so obtained are obtained for the first time by the practioner of the claim and not previously recorded by somebody else? Nope.

    Claim drafting is not difficult. In fact, it’s really really easy if you are trying to claim something really broad and unpatentable.

    What’s difficult is arguing that a claim like the one posted by pds should be read narrowly “just because.” The reason it’s difficult is because in the real world patentees and cautious potential infringers do not read claims that way. In fact, hardly anyone does except for district court judges who like getting overturned by the CAFC.

  221. 36

    Let’s not forget… 1) BPAI is not the Supreme Court, its discision is an opinion only. It is not law. 2) The party involved is Google. It has the deepest pocket one can imagine and it is not going to give up.

    So, don’t conclude anything, at least for now.

  222. 35

    “But they aren’t tied to any machine, that’s for sure”

    Tell me again, how the measurements are obtained? They don’t just magically appear on the piece of paper.

    Even if someone wrote them down, the measurements still had to be obtained from something.

    Just explain to me how you propose to obtain those measures, consistent with applicants’ specification (i.e., so as to fall within some unstated claim construction), without the use of a machine, and I’ll hop on the 6K and MM bandwagon.

  223. 34

    “why some combination of telekinesis with lasers produced solely by the power of the mind.”

    I knew MM had some weird sort of powers, but I didn’t know what kind. The only question left to answer is whether he uses them for good or for evil. Actually, what am I saying …. he uses his powers for good … his own good to the detriment of the patent system. Eventually, he’ll make it to the USPTO with his combination of telekiness and laser eyes and burn all the buildings to the ground.

    I can hear him laughing as he flies away ….. “now THAT is an example of an unpatentable mental process … try to get your poo-poo software patents now!!!”

  224. 33

    I think I can probably handle this one. I don’t believe MM was quite correct on the steps being purely mental. But they aren’t tied to any machine, that’s for sure.

    “obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye”

    Read a piece of paper with the measurements on it?

    “”obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea””

    Read another peice of paper?

    “”obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea””

    Read another peice of paper.

  225. 32

    “When you get a chance …. no hurry … explain to me the mental process you employ in performing the following steps:”

    why some combination of telekinesis with lasers produced solely by the power of the mind.

    obviously.

    what, you haven’t seen the x-men?

  226. 31

    “As written it reads on a purely mental process and, as such, is garbage.”

    When you get a chance …. no hurry … explain to me the mental process you employ in performing the following steps:

    “obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye”
    “obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea”
    “obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea”

  227. 30

    “By the way, what is the ‘secret’ to wikipedia’s success?”

    The one thing that many of the doomed websites of the late 90s/early 00s failed to have
    .
    .
    .
    .
    .
    content … now it they got that content is another story.

  228. 29

    “120. A method for improving refractive ophthalmic treatment comprising:
    * obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye;
    * determining a first operative corneal ablation specification based on the first, preoperative diagnostic measurement;
    * obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea;
    * obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea;
    * correlating said non-tissue removing perturbation data with the biodynamic response data gathered from a statistically significant number of corneas; and
    * establishing an individual customized laser ablation specification for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

    101 subject matter or not?”

    As written it reads on a purely mental process and, as such, is garbage.

    Next.

  229. 28

    “who cares whether Google’s success is based upon their patents? ”

    I think Professor Duffy does, for one.

  230. 27

    “In other words, the secret to Google’s success isn’t someone’s obsession with a lightweight interface – it was their major leap forward in search result quality”

    If you say so. I was quite happy with HotBot or whatever that thing was called until I stumbled on Google and stuck with it because of its lightweight interface.

    By the way, what is the “secret” to wikipedia’s success?

  231. 26

    MM …. let’s put Google to side, and let’s hear your take on these claims:

    120. A method for improving refractive ophthalmic treatment comprising:
    * obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye;
    * determining a first operative corneal ablation specification based on the first, preoperative diagnostic measurement;
    * obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea;
    * obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea;
    * correlating said non-tissue removing perturbation data with the biodynamic response data gathered from a statistically significant number of corneas; and
    * establishing an individual customized laser ablation specification for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

    101 subject matter or not?

  232. 25

    “Perhaps you weren’t using web search engines prior to Google”

    You’re absolutely right. The first times I used Google it was preternatural how good the search results were compared to Altavista. I never went back.

  233. 24

    And Malcolm

    Here’s a fundamental question that hasn’t been asked – who cares whether Google’s success is based upon their patents? That applies to the majority of non-pharmaceutical companies’ patents. Why not just go ahead and invalidate those patents as well?

  234. 23

    Malcolm,

    Mathematics is only a language for expressing physical relationships, both theoretical and empirical.

    Once again, using 101 to eliminate subject matter is laziness on the part of the PTO and diametrically opposed to the decisions in Alapat, Benson, Flook, and Diehr

  235. 21

    “Is Google’s success a result of its page ranking software? Of course not. It’s success is a result of the fact that it’s easy-to-use and elegant user interface blew everyone else’s interface away.”

    Perhaps you weren’t using web search engines prior to Google had indexed a significant chunk of the web space. However, at the time, there were two types of indexes/search engines to turn to: (1) Yahoo-style indexing services, which were considered higher quality sources because humans did web page categorizing; and (2) Altavista-style search engines, which indexed many more web pages, but would generally turn up pages and pages of results of either irrelevant or low-quality hits (low quality became even worse once “search engine optimization” (i.e., web spamming) took off). With the search engines at the time, what you were looking for was typically SOMEWHERE in the index, but you either had to keep trying to hit on the right search term, or dig through pages and pages of results.

    Contrast this with the results that Google would turn up. Even with relatively broad search terms, people generally got excellent results – good enough that Google could put up the “I’m feeling lucky” button, which would automatically forward you to the top hit for your query, and you would get reasonable results. On other search engines, such a button would have been useless for all but the narrowest of search terms.

    They also had a lightweight interface, and fast servers, which certainly helped. However, other search engines copied this aspect of Google’s services, without any real resultant gains.

    In other words, the secret to Google’s success isn’t someone’s obsession with a lightweight interface – it was their major leap forward in search result quality.

  236. 20

    is in re alappat no longer binding precedent?

    hopefully examiners don’t start taking this logic applied to process claims and applying it to apparatus claims.

    i’ve been seeing examiners say that because the various units/sections/controllers/etc. are readable on a general purpose computer executing software, the apparatus claim does not comply w/ 35 USC 101. flat wrong.

  237. 19

    “Once you limit patentability to the “how” then you’ve essentially opened the door to anybody to come up with a different way of implementing the same concept (i.e., the PageRank idea).”

    That depends on what you think the PageRank idea is. There would be an almost unlimited number of ways of using link data to calculate page rankings. My view is that the idea of ranking pages using link data should not be patentable by itself (which would then cover every conceivable way of calculating page weights from the link data) but a particular way of doing so may be properly patentable. I think that the “how” is the essence of what should be patentable.

  238. 18

    “why stop at calculations?… give them enough test tubes and throw out pharmaceuticals … give them enough tools and throw out mechanical devices”

    The answer to the question “why stop at calculations” is that “calculations” are merely symbolic embodiments of pre-existing mathematical relationships.

    Is Google’s success a result of its page ranking software? Of course not. It’s success is a result of the fact that it’s easy-to-use and elegant user interface blew everyone else’s interface away. Nobody wanted to use any of those dumb search engines after they found Google’s page without the banners and other garbage.

    Is a minimal, elegant user interface patentable? No.

    The emotional game that Professor Duffy plays depends on Google’s popularity. But Google’s popularity has little to do with Google’s patents.

    Sadly, some folks have drunk so much of the patent kool-aid that they believe without serious patent protection for software that people would have no incentive to write new software.

    That’s false and it’s so plainly false that one has to question the veracity and motives of anyone claiming otherwise.

  239. 17

    “Ooops … there blows that whole idea about rewarding inventors for their disclosure.”

    Come on pds, you know that a huge number of patents issued right at this moment don’t amount to anything for the inventor.

  240. 15

    “”But the government’s test does not merely require a connection to a machine; it requires a tie to a particular machine.”
    And a computer is not a particular machine???? One would think that by defining the machine as a computer, the scope of “machines” has been drastically reduced in number.

    Got to love that USPTO logic (or lack thereof).

    OK, time to vacate the premises before the 101 trolls start to arrive in mass.”

    I’ll only told you that I told you so. General computer does not equal particular machine just by itself. There are several cases where I saw this.

  241. 14

    I think anything that is marketable or a new draw to a website should be patentable if it is not available offline.Obviously tying websites to machines has no revelance in this situation.This should be considered a new business method if it is unique and different and adds to the value of the business or is useful and desirable to the public. It should be inovative not trivial though.

  242. 12

    “I discuss yet another eye-poking physical transformation case here:”

    I looked at the link and the claims. I would say that the USPTO’s decision is unbelievable, but I’ve read too many to be surprised by the BPAI’s ineptness when it comes to 101 issues.

  243. 11

    “The PageRank idea of ranking a page according to the rankings of pages linking to it should not be patentable but how they did it should be patentable (IMHO)”

    Once you limit patentability to the “how” then you’ve essentially opened the door to anybody to come up with a different way of implementing the same concept (i.e., the PageRank idea). Why get the patent when it is useless. Second thought, why disclose the idea when any patent obtainable therefrom wouldn’t be worth the paper it was printed on. Ooops … there blows that whole idea about rewarding inventors for their disclosure.

    Also, how to you propose that we draw the line between the broad concept and one specific implementation? Should we limit this to just computer-implemented inventions or all inventions? How would this language read? Do we have to come up with 35 USC 101.5, which addresses these types of inventions.

    It is like inventing ice cream only to be told that you can only choose one flavor to protect.

  244. 10

    John has been straining to motivate his philosophical predisposition toward patents on information processing for quite some time, and has had limited success. He uses Google as an example of a very successful tech company, but provides no evidence that Google really relied on patents (and neither does anybody else I’ve seen).

    John’s other means of motivating patents on information processing are also tenuous. We never believed that any creative act should be patentable—otherwise we’d be fine with storyline patents. He claims that Jefferson and the Congress of 1952 approve of patents on information so long as it is imprinted onto a physical substrate, but that claim has clearly been divisive in the courts, and intelligent people have seen it either way (depending on their philosophical predisposition).

    I agree with him, by the way, that the multiple-computer distinction in Wasynczuk is tenuous, and I expect that it will superseded by better, fast. Unfortunately, John stays purely negative, and does not propose any alternative means of solving the practical problems the USPTO and the courts are facing right now.

    John refers to “those who are philosophically opposed to property rights in innovation”, which is clearly an attempt to insult those software companies (like Microsoft) that state an opposition to information processing patents due to serious, sometimes company-threatening problems with the new class of patents. It may perhaps be his real belief that all the billions of dollars in headaches are a fiction manufactured by a cabal of philosophers, but such a belief would have more weight if he himself could provide evidence that his support of patents on information and information processing wasn’t itself an unfounded philosophical belief that patents are always good in all situations. Many authors have written on the practical problems caused by information patents, and John addresses none of them; the courts are grappling with these cases because there are real problems with the system, and John addresses none of them. All we get from this article is that John likes patents on information, and dislikes any court that disagrees with him on that, but that’s nothing we can build on.

  245. 8

    One wonders if the UPSTO actually looks at the case law. My response to the above rejection would be to have the USPTO re-read the following cases:

    link to digital-law-online.info
    link to ll.georgetown.edu

    “But the government’s test does not merely require a connection to a machine; it requires a tie to a particular machine.”
    And a computer is not a particular machine???? One would think that by defining the machine as a computer, the scope of “machines” has been drastically reduced in number.

    Got to love that USPTO logic (or lack thereof).

    OK, time to vacate the premises before the 101 trolls start to arrive in mass.

  246. 7

    The real problem with software patents is that people are trying to lock down trivialities. Langemyr appears to be an attempt to patent the general idea of a computer algebra system designed to combine standard pdes for components of a physical structure into a master linked pde for the structure as a whole (combine the pde for air flowing around a wing with the pde for the flexing and vibration of the wing structure itself). That sort of user friendly front end should not be patentable unless there is something really clever about how the pdes are combined – using a computer to grind out standard algebra is surely not patentable given the current state of the art and has not been patentable since the late fifties.

    The PTO needs to draw the line somewhere. This may not be the right place to draw it but Professor Duffy should be suggesting how the PTO should filter out crrp like Langemyr and Bilski and preserve genuinely interesting and important stuff like Page Rank. The PageRank idea of ranking a page according to the rankings of pages linking to it should not be patentable but how they did it should be patentable (IMHO):

    link to rose-hulman.edu

  247. 6

    Let’s just all hope that the new administration tosses out the monkeys that are running the patent office and brings in people that have some common sense and stops artificially limiting what can and can not be patentable based on non-technical gobbledy gook!!

  248. 5

    “If the claim is nothing more than a computer making calculations that, given enough monkeys and calculators, could be done manually, there is no patentable subject matter.”

    great standard, but why stop at calculations?… give them enough test tubes and throw out pharmaceuticals … give them enough tools and throw out mechanical devices … turns out that nothing is patentable subject matter! Wheeeeeeee

  249. 4

    Maybe the PTO is finally implementing my test:

    If the claim is nothing more than a computer making calculations that, given enough monkeys and calculators, could be done manually, there is no patentable subject matter.

  250. 2

    Perhaps the author should disclose that he’s representing an amicus in the Bilski case and participated in oral argument against the PTO.

    DDC Reply: Good point Anon — Professor Duffy has long been a staunch supporter broadly interpreting the statutory subject matter limitations of Section 101. He is representing an amicus party in the Bilski case. He has participated as amicus in several other Section 101 cases – always arguing for a broad interpretation of the statute.

  251. 1

    “The Patent and Trademark Office has now made clear that its newly developed position on patentable subject matter will invalidate many and perhaps most software patents.”

    This statement seems like an extreme interpretation of the USPTO position. The USPTO position, after all, relies upon the Supreme Court decisions in Benson, Flook, and Diehr.

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