Patent issue followup

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From:Tim Morken <>
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Sorry to beat the dead horse again! This is only for those who are still 
interested in patent issues in histology. The article below concerns 
computer software but much of it applies to lab methods. One point to be 
taken from this is that if you use a procedure that has never been published 
it is possible for someone else to patent that procedure and then prevent 
you from using it without paying for it. That is certainly one good reason 
to try to publish ANY procedure you use!

Tim Morken
Atlanta, GA USA

Software Patents: Are they more than a means of transferring IT investment 
dollars to the legal profession?

Author is anonymous

More and more frequently, the excitement surrounding the software industry 
is not about software technology but about software patents. Some believe 
that software patents are absolutely necessary for the maturity of the 
software industry. Others believe that software patents are the death knell 
of software innovation. In any case, headlines like the following are 
becoming an everyday occurrence.

      Settlement of Business Objects and Brio Technology Patent      

      StorageTek Pays 100 Million as Result of Patent Litigation sues Microsoft sues for Patent Infringement

Every information technologist who cares about the health of the IT 
industry, as well as those who harbor expectations of becoming entrepreneurs 
in the industry, should become informed about this rapidly evolving aspect 
of the IT industry. If current trends continue, the breadth of choice you 
have will be determined at the Patent and Trademark Office (PTO) and in the 
courts rather than in the innovator's garage or basement. What follows is 
some very brief background. You might like to spend some time on your 
favorite search engine exploring this critical but sometimes tedious issue.

A patent is an exclusive right provided by a government bureaucracy for the 
patent holder to restrain others from using some key concepts embodied in a 
device. The patent examiner (with an average of #189# day of consideration) 
decides whether an idea is novel, useful, and nonobvious. If so, the 
inventor is granted an exclusive right to the idea for 17 years along with 
an opportunity to bully smaller competitors who may lack the deep pockets 
necessary to challenge the validity of the patent. Challenging a patent 
takes an average of $1.2 million so, often, the challenger folds.

The trouble is that "novel," "nonobvious," and "useful" are hard attributes 
to nail down in the most important cases. Unfortunately in the case of 
software, it seems that bad patents are the rule rather than the exception. 
One current patent gives the holder a monopoly over a "network-based sales 
system" -- using communications between networked computers to post 
advertisements and collect payments -- otherwise know as e-commerce. Another 
covers the purchase of software over a network, notwithstanding the fact 
that these would seem to overlap. Yet another allows to patent 
the ability for a purchase to be made with "one-click" rather than 
"two-clicks" (does that mean that a "two-click" patent is still available?). 
These are just a few examples. When you look into the software patent 
literature, you will find hundreds.

The PTO has a difficult job. Perhaps the job of examining high technology 
patent applications is undoable with the structure that is in place. 
Attitudes are an important issue as well. Only recently was the PTO willing 
to hire examiners who had a computer science background. To its credit, the 
PTO has taken steps in the last two years to upgrade its capabilities of 
examining software patents. One step is the establishment of guidelines for 
software patent examination to replace the assumption that guidelines 
originally intended for the hardware industry were adequate.

The key criterion used to qualify the concept of "novel" is that of "prior 
art." That is, has it been done before? The directions given by the PTO to 
examiners follow: "Prior to classifying the claimed invention under b 101, 
Office 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 practice, however, the examiners are 
professionally capable of examining only the preexisting patents, and the 
general literature on software is seldom exploited. Furthermore, and perhaps 
more disturbing, this clearly says that in practice prior art is 
demonstrated not by using the art but by publishing the art. In several 
recent cases, status of prior art was denied solely because the publication 
of an algorithm occurred after the challenged patent was applied for, even 
though the software created by the challenger had been using the algorithm 
for several years.

After the "novelty" of the claim is determined, the question of 
"nonobviousness" must be addressed. Again, the PTO provides guidance: "Once 
distinctions are identified between the claimed invention and the prior art, 
those distinctions must be assessed and resolved in light of the knowledge 
possessed by a person of ordinary skill in the art. Against this backdrop, 
one must determine whether the invention would have been obvious at the time 
the invention was made." Again, a problem arises in that the "person of 
ordinary skill in the art" is very hard to define. Suffice it to say that 
he/she is not likely to work as a patent examiner.

Perhaps the best idea would be to eliminate the generic role of patent 
examiner in favor of a set of categorical boards made up of subject matter 
experts (i.e., persons of ordinary skill in the art). In that model, 
software patent applications would be examined by a board of software 
developers. Of course they would have to be free of conflicts of interest. 
That may be difficult to satisfy in practice. Educate yourself and send your 
own ideas to the PTO.

Some prior articles on the issue of patents: "Whoever invents or discovers 
any new and useful process, "machine", manufacture, or composition of 
matter, or any new and useful improvement thereof, may obtain a patent 
therefore, subject to the conditions and requirements of this title." 
(Section 101, U.S. Patent Act)

"O there are three categories of subject matter for which one may not obtain 
patent protection, namely 'laws of nature, natural phenomena, and abstract 
ideas.'" (U.S. Supreme Court decision in interpretation of Section 101).

"The Supreme Court has defined an algorithm as a 'procedure for solving a 
given mathematical problem,' in a generalized or abstract form such that 
'from the generic formulation [computer] programs may be developed as 
specific applications.'" (J. Dratler, Intellectual Property Law (1991))

"certain types of mathematical subject matter, standing alone, represent 
nothing more than "abstract ideas" until reduced to some type of practical 
application, and thus that subject matter is not, in and of itself, entitled 
to patent protection. O" "that a patent claim does not fall outside the 
scope of the Patent Act simply because it uses a mathematical formula, 
equation or algorithm, computer program or digital computer. [the proper 
question] is to see whether the claimed subject matter "as a whole" is a 
disembodied mathematical concept ... which in essence represents nothing 
more than a 'law of nature,' 'natural phenomenon,' or 'abstract idea.'" 
(U.S. Court of Appeals for the Federal Circuit)

"[Supreme Court decisions are] based upon the axioms that abstract ideas, 
principles, and laws of nature are not patentable subject matter, but that 
their useful applications may be. Mathematical operations, like ideas and 
laws of nature, are not useful applications and therefore not statutory 
subject matter. The hypertechnical distinction between calling something a 
mathematical 'algorithm' versus another mathematical noun is without legal 
distinction. O On the other hand an invention or discovery of a process or 
product in which a mathematical operation is practically "applied" may be 
[patentable.] O [The question is] whether the invention or discovery 'for' 
which an award of patent is sought is more than just a discovery in abstract 
mathematics." (Chief Judge, Federal Circuit dissenting opinion)

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