Software patentability and practical utility: What's the use?

Abstract

The debate over whether software is appropriate subject matter for patent protection continues to rage, without any clear resolution in sight. The European Patent Convention attempts to draw this distinction by excluding software programs from patent protection unless they have a ‘technical effect’. US law requires that a software program have a ‘practical utility’ to constitute patentable subject matter. Both such requirements fail to provide clear guidance in hard cases because they merely beg the question of what constitutes a ‘technical’ effect or a ‘practical’ utility. I recommend that software patent claims instead be evaluated in terms of three kinds of utility or effects: (1) physical utility, which refers to the direct physical effects of an invention, such as the movement of gears and levers in a mechanical cash register; (2) logical utility, which refers to the information processing tasks performed by an invention, such as the mathematical operations performed by a cash register; and (3) application utility, which refers to the usefulness of the invention to the end user, such as the increased accuracy and reduced calculation time made possible by a cash register. In particular, the physical utility requirement would require the applicant to demonstrate that the claimed software is susceptible of embodiment in a tangible form, the logical utility requirement would require the claimed software to be defined clearly in terms of the information processing steps it performs, and the application utility requirement would require the applicant to provide an industrial application of the claimed software. Furthermore, patent examiners and judges should be required to evaluate software patent claims expressly in terms of each kind of utility. This would clarify the basis for the decision in each case and avoid the now-common conflation of one kind of utility with another, thereby focusing any dispute over subject matter patentability on the particular kind of utility whose satisfaction is in question.

Notes

1 The debate dates back at least to 1965, when US President Johnson commissioned a comprehensive study of the United States patent system. The Commission explored a wide range of pressing issues facing the patent system and recommended, among other things, that ‘no patents on … computer programs’ be issued. 1965 Report of the President's Commission on the Patent System. 1.

2 In the USA, patentable subject matter is defined in 35 U.S.C. § 101. In the European patent system, patentable subject matter is defined in Article 52 of the European Patent Convention.

3 35 U.S.C. § 101.

4 Art. 52(1) Eur. Pat. Convention (Oct. 5, 1973).

5 Art. 52(2).

6 Art. 52(3).

7 Art. 54(1); 35 U.S.C. § 102.

8 Art. 56; 35 U.S.C. § 103.

9 For an overview of the history of the debate over software subject matter patentability, see eg Gregory A Stobbs Software Patents 2nd edn, Aspen Law and Business, 2000, pp 1–46.

10 Professor Pamela Samuelson, Professor JH Reichman, Mitch Kapor, and Randall Davis, ‘A manifesto concerning the legal protection of computer programs’ Columbia Law Review Vol 94, p 2308, 1994.

11 Professor Pamela Samuelson, Professor JH Reichman, Mitch Kapor, and Randall Davis, ‘A manifesto concerning the legal protection of computer programs’ Columbia Law Review Vol 94, p 2308, 1994.

12 ‘Symposium: Toward a Third Intellectual Property Paradigm’ Columbia Law Review Vol 94, p 2308 et seq.

13 See eg National Commission on New Technological Uses of Copyrighted Works, Final Report 910, 1978; Anthony L Clapes et al. ‘Silicon epics and binary bards: determining the proper scope of copyright protection for computer programs’ UCLA Law Review Vol 34, p 1493, 1987.

14 Professor Pamela Samuelson, Professor JH Reichman, Mitch Kapor, and Randall Davis, ‘A manifesto concerning the legal protection of computer programs’ Columbia Law Review Vol 94, pp 2316–2317, 1994.

15 Professor Pamela Samuelson, Professor JH Reichman, Mitch Kapor, and Randall Davis, ‘A manifesto concerning the legal protection of computer programs’ Columbia Law Review Vol 94, pp 2330–2364, 1994.

16 Professor Pamela Samuelson, Professor JH Reichman, Mitch Kapor, and Randall Davis, ‘A manifesto concerning the legal protection of computer programs’ Columbia Law Review Vol 94, pp 2365–2371, 1994.

17 U.S. Const. art. I, 8, cl. 8.

18 Professor Pamela Samuelson, Professor JH Reichman, Mitch Kapor, and Randall Davis, ‘A manifesto concerning the legal protection of computer programs’ Columbia Law Review Vol 94, pp 2343–2347, 1994.

19 See Stobbs, Software Patents 2nd edn, Aspen Law and Business, 2000, pp 521–598 for software patent statistics and for examples of issued software patents.

20 See infra 0.

21 See eg Diamond v Diehr, 450 U.S. 175 (1981).

22 Guidelines for Examination in the EPO § C-IV.2 (2001).

23 State Street Bank & Trust Co. v Signature Financial Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir. 1998).

24 State Street Bank & Trust Co. v Signature Financial Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir. 1998).

25 Diamond v Diehr, 450 U.S. at 185.

26 As described in more detail below in Section 0, this naïve ‘physicality’ test for statutory subject matter has been adopted in a variety of European and US cases.

27 For an example of such an approach, see eg Koch & Sterzel ‘X-ray Apparatus’ T26/86, Eur. Pat. Office J. 1–2 1988.

28 149 F.3d 1368 (Fed. Cir. 1998).

29 149 F.3d 1373.

30 172 F.3d 1352 (Fed. Cir. 1999).

31 172 F.3d 1358–1360.

32 See eg Cochrane v Deener, 94 U.S. 780, 788 (1876) (holding that ‘[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’).

33 U.S. Constitution Art. I, § 8, cl. 8; Art. 52(1) Eur. Pat. Convention (5 October 1973).

34 Diamond v Diehr, 450 U.S. at 185.

35 The following discussion does not provide an exhaustive set of case studies, but rather provides illustrative examples.

36 94 U.S. 780, 788 (1876).

37 613 F.2d. 809, 819 (C.C.P.A. 1980).

38 618 F.2d 758, 767–68 (C.C.P.A. 1980).

39 450 U.S. 175, 185 (1981).

40 684 F.2d 912, 916 (C.C.P.A. 1982).

41 888 F.2d 835, 840 (Fed. Cir 1989).

42 149 F.3d 1368, 1373 (Fed. Cir. 1998).

43 149 F.3d 1368, 1373 (Fed. Cir. 1998).

44 2 Eur. Pat. Office Rep. 74 (1987).

45 2 Eur. Pat. Office Rep. 79.

46 T6/83, Eur. Pat. Office J. 1–2 (1990).

47 172 F.3d 1352 (Fed. Cir. 1999).

48 172 F.3d 1358–1360.

49 172 F.3d 1357.

50 T115/85, Eur. Pat. Office J. 1–2 (1990).

51 T115/85, Eur. Pat. Office J. 1–2 (1990) at para 13.

52 681 F.2d 787, 790 (C.C.P.A. 1982).

53 684 F.2d 902 (C.C.P.A. 1982).

54 22 F.3d 290, 294 (Fed. Cir. 1994).

55 Arrhythmia Research Technology v Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992), is another example of a case which repeatedly conflates the two senses of ‘physicality’ noted herein. For further discussion of confusing surrounding these two senses of ‘physicality’, see Robert Plotkin ‘Computer programming and the automation of invention: a case for software patent reform’ UCLA Journal of Law and Technology Vol 7, 2003, § III.D.5.

56 Arrhythmia Research Technology v Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992), is another example of a case which repeatedly conflates the two senses of ‘physicality’ noted herein. For further discussion of confusing surrounding these two senses of ‘physicality’, see Robert Plotkin ‘Computer programming and the automation of invention: a case for software patent reform’ UCLA Journal of Law and Technology Vol 7, 2003, p 1373.

57 T52/85 Eur. Pat. Office J. R-8, 454 (1989).

58 T52/85 Eur. Pat. Office J. R-8, 458.

59 35 U.S.C. § 112 Ñ 1; Art. 83 Eur. Pat. Convention (5 October 1973).

60 Note, however, that a disclosure of a computer program may be enabling without describing the program in physical terms. See Plotkin, ‘Computer programming and the automation of invention: a case for software patent reform’ UCLA Journal of Law and Technology Vol 7, 2003, § III.D.

61 For a more detailed proposal for such modified rules of claim construction, see Plotkin, ‘Computer programming and the automation of invention: a case for software patent reform’ UCLA Journal of Law and Technology Vol 7, 2003, § V.C.

62 The requirements of specific, substantial, and credible utility are drawn from the United States Patent and Trademark Office Utility Examination Guidelines, 66 Fed. Reg. 1092 (2001), and represent a reasonable attempt to provide standards for evaluating whether an invention has a ‘real-world’ utility.

63 Physical utility arguably takes the ‘external perspective’, while logical utility and application utility arguably take the ‘internal perspective’ described in Orin S Kerr ‘The problem of perspective in Internet law’ Georgetown Law Journal Vol 91, p 357, 2003.

64 For example, ‘application utility’ could further be subdivided into different levels of social utility, such as the utility of a process to its direct user and the higher-level utility of the process to an enterprise employing many such users performing many instances of the process. Returning the mechanical cash register example, the cash register's ‘user utility’ might be the calculation of the total price of a bag of groceries, while the ‘enterprise utility’ might be increased throughput of customers through the queue.

65 Plotkin, ‘Computer programming and the automation of invention: a case for software patent reform’ UCLA Journal of Law and Technology Vol 7, 2003, Section 0.

66 See eg Oracle Corporation Patent Policy, Patent & Trademark Office Software Patent Hearings (26–27 January 1994), available at http://www.jamesshuggins.com/h/tek1/software_patent_oracle.htm; Prepared Testimony and Statement for the Record of Jim Warren Before the Patent and Trademark Office (26–27 January 1994), available at http://www.bustpatents.com/autodesk.htm (14 September 2003).

67 See eg James Gleick ‘Patently absurd’ NewYork Times, 12 March 2000 (Magazine), at p 44 available at http://www.nytimes.com/library/magazine/home/20000312mag-patents.html; Prepared Testimony and Statement for the Record of Jim Warren Before the Patent and Trademark Office, (26–27 January 1994), available at http://www.bustpatents.com/autodesk.htm (14 September 2003); Mark Aaron Paley ‘A model software petite patent act’ Computer and High Technology Law Journal Vol 12 pp 301, 319, 1996; Randall Davis et al. ‘A new view of intellectual property and software’ Communications of the ACM pp 124–145, March 1996.

68 ‘Symposium: Internet Business Model Patents: Obvious by Analogy’ Michigan Telecommunications and Technology Law Review Vol 7, pp 253, 278, 2001.

69 See eg Oracle Corporation Patent Policy, Patent & Trademark Office Software Patent Hearings (26–27 January 1994), available at http://www.jamesshuggins.com/h/tek1/software_patent_oracle.htm (recommending a six-month patent examination process); Richard H Stern ‘An attempt to rationalize floppy disk claims’ John Marshall Journal of Computer and Information Law Vol 17, p 183, 1998.

70 For discussions of potential sui generis systems of intellectual property protection for software, see generally the Manifesto, Professor Pamela Samuelson, Professor JH Reichman, Mitch Kapor, and Randall Davis, ‘A manifesto concerning the legal protection of computer programs’ Columbia Law Review Vol 94, p 2308, 1994, John C Phillips, ‘Sui generis intellectual property protection for computer software’ George Washington Law Review Vol 60, p 997, 1992.

71 The following discussion is also applicable, though perhaps with a somewhat different flavor, to the meaning of ‘industrial’.

72 For an excellent discussion of this topic, see John R Thomas ‘The post-industrial patent system’ Fordham Intellectual Property Media and Entertainment Law Journal Vol 10, p 346, 1999.

73 For an excellent discussion of this topic, see John R Thomas ‘The post-industrial patent system’ Fordham Intellectual Property Media and Entertainment Law Journal Vol 10, 1999 at note 193.

74 For an excellent discussion of this topic, see John R Thomas ‘The post-industrial patent system’ Fordham Intellectual Property Media and Entertainment Law Journal Vol 10, 1999 at note 207.

75 See Richard Susskind The Future of Law Oxford 1996, Oxford University Press.

76 Interestingly, this breakdown is evidenced not only in the functions performed by software, but in the way in which software is created. The act of programming a computer includes elements both of engineering and of literary authorship and has been described as an art as much as a science.

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Robert Plotkin

Robert Plotkin, P.C., is an Attorney in Concord, MA, USA and Lecturer at Boston University School of Law, Boston, MA, USA.