Vermont Bar Journal
Winter 2007 - #3.
Challenges with Patenting Software
THE VERMONT BAR JOURNAL WINTER 2007
Challenges with Patenting Softwareby Kathleen Chapman, Esq. & Stephen Ball, Esq.
The incredible growth of the software industry has provoked increased intellectual property recognition for software inventions. Trade secret law was at one time the only option for protecting software. As technology became more widespread and software more ubiquitous, copyright protection became the norm. Now, with broad access to development tools, new programming languages, and Internetbased deployment methods, there is an increasing reliance on the patent system to provide even greater protection. Computer-related products can be easily copied or reverse-engineered and patent protection may be the strongest means to protect an investment in product development. Patent protection is particularly important for emerging industries whose research and development investment often represent a disproportionately large share of available resources. But achieving patent protection for software inventions can be a difficult undertaking. Patent law is in flux and there are organizations like the Free Software Foundation whose mission is to eradicate software patents entirely. Nonetheless, according to the Public Patent Foundation around 40,000 software-related patents were issued in 2006. At the same time, the relative novelty of computer-related inventions has given rise to heightened scrutiny of software patents by both the United States Patent and Trademark Office ("USPTO") and the courts. In order to anticipate problems and provide the greatest amount of intellectual property protection for software-related clients it is important to understand the current issues relating to patenting software. II. Obtaining a Software Patent
The patent application process usually begins with identifying the aspects of the software invention that are novel-- that is, a completely new approach or an improvement over an existing approach. Next, the novel aspects are listed and exemplary claims are drafted. It is usually prudent to perform a prior art search at this time, using the exemplary claims as bases for the search. The patent application is then drafted and filed with the USPTO. Once filed, the application is assigned to an art unit and examined. When the patent application is examined, the examiner can reject claims if they contain non-statutory subject matter, if they lack novelty, or if they are obvious over prior art. Only when the applicant has overcome all rejections will the patent issue and become valid, although it can still be challenged and invalidated during its term. However, while the patent application is being examined, inventors can notify others that a patent is pending and thus discourage investment in similar technology.
Challenges in Patenting Software
Statutory subject matter
The Early Days
While copyright protection is nominally limited to a particular expression of an idea, patent protection can extend to the idea itself. Patent protection is available for both things and processes that comprise steps to accomplish some task. Software inventions can encompass both, with elements such as source code, compiled object code, and configured hardware, all of which implement processes. The term "software patent" can be used to distinguish inventions that are primarily instantiated in software, although the terminology is far from welldefined. In particular, the line between software and hardware can be virtually non-existent since software can always be instantiated in hardware. Claims for computer-related inventions that have software components typically begin with phrases such as "A system for . . .," "A method for . . .," and "A computerreadable medium containing instructions for the practice of the method of claim . . ." While similar claim language can be used for business method patents, the term "business method" is used to describe inventions that include steps that are not necessarily associated with a computer system. Although the USPTO states in its "Business Methods Allowance Checklist" that an allowable business method is "not a computer program per se," business method patents and software patents continue to be viewed as similar, or even interchangeable.
There has historically been confusion in categorizing software inventions and as a result there has been difficulty in extending traditional patent law to them. In Diamond v. Chakrabarty, the Supreme Court reflected on patentable subject matter, noting that Congress intended it to "include anything under the sun that is made by man."(fn1) But the USPTO long considered computer software inventions to be unpatentable abstract ideas, composed of mere mathematical algorithms. In Diamond v. Diehr, the USPTO argued that a claimed process for curing rubber was non-statutory because it included steps carried out by a computer. The Supreme Court disagreed, stating that the claims must be taken as a whole. As a consequence, Diehr's claims were interpreted as having been directed to the inventive process and not to the mathematical algorithms used; the question of patentability focused on what the invention did and not merely how it achieved that functionality.(fn2) This opened the door to patent protection for software processes which produce a tangible, real-world result. In re Alappat appeared to eliminate any doubt about the patentability of software inventions when the Court of Appeals for the Federal Circuit ("CAFC") found a software invention patentable because it configured hardware, thus constituting a new "machine."(fn3) After Allappat, the CAFC decided In re Lowry, holding that data structures were "specific electrical or magnetic structural elements in a memory" and provided "tangible benefits"; as such the data structures were physical entities.(fn4) The next year in In re Beauregard, the Commissioner of the USPTO stated that computer programs stored in a computer usable medium were patentable subject matter.(fn5)
Aspects of the legal protection afforded software through patenting continue to be defined. In the spring of 2007 the United States Supreme Court decided the case of Microsoft Corp. v. AT&T Corp., which called into question patent protection for software inventions by challenging what may be considered a "component" under 35 U.S.C. 271, which restricts the export of components of a patented invention.(fn6) The two principal issues in the case were: (1) whether source code may be considered a component of a patentable invention; and (2) whether copies of such a "component" made in a foreign country are "supplied" from the United States. AT&T holds a patent for speech compression...