Software Patent --- Matter Driving the World Crazy?©
Autumn, 2000

Background Statement

Power is truth?  Although it is hard, at least to some extent, for a 'learned', of some kind, person to so acknowledge, it appears to be true after the US definitely declared a software application is patentable, a great many of countries then-discussing or wondering whether it is necessary, just and/or desirable to protect a software creation under the patent law soon redirected themselves to formulate the contents of rules governing the patent protection related to the software invention, without much lingering on their past exhausting efforts exerted on struggling for solutions in this respect. In fact, it is unfair to so assert in that the key points might reside in the facts that competition leaves no room for precise evaluation and that it is far beyond our fast determination as to whether we could find a better solution at a later time. Are these reasons good enough to persuade ourselves to let the situation be kept in the state in which we are left?

It has been reported that there are "Supreme Court Trilogy"   in the US, namely, 1) Gottschalk v. Benson (409 U.S. 63, 73 (1972)) holding that a method of programming a general purpose digital computer to convert signals from the binary-coded decimal form into the pure binary form is a mathematical formula and thus not patentable subject matter; 2) Parker v. Flook (437 U.S. 584, 594-96 (1978)) holding that a process for updating 'alarm limits'  for the catalytic conversion of hydrocarbons based on an algorithm is essentially a method of calculating and nonpatentable; and 3) Diamond v. Diehr (450 U.S. 175, 191-93 (1981)) holding that a process for curing synthetic rubber employing a computer is patentable because the claimed process involves the physical transformation of an article. It has been recognized that after that, courts have generally found in favor of patentability of software-related inventions.



Summary of developments

It is therefore an object of the present article to join in the fun of briefly studying the software patent problem.

It is another object of the present article to add trouble to the unsolvable situation the software-based world we live is facing.

It has been well taken that this computerized world depends more and more on computer software or program. Just with a thought, it can be known that we can hardly lead our lives either in work or at rest without involvement of the software program which comes into our lives either silently, or unconsciously, or spectacularly, or annoyingly. The law is always urged by the demand, which might originate from the necessity of protecting the general public or from the pressure the legislator cannot endure from the pressure group lobbying the legislation for benefits of that group or whom it is trusted.

As is known, the patent law is enacted to promote creation upon which more creations can be anticipated or better human life can be based. It is evident that it appears the software clearly meets with this requirement since it is an apparent logic that if the software is not so critical, why our lives are so much related or tied thereto? As a matter of fact, we cannot easily go across the reasoning gap between the preceding two sentences since creation or the promotion of creation need not be encouraged by protection bestowed by the patent law. The present article has no interests to discuss any specific phenomenon having been dealt with previously by any one else, but instead desires to try to pose some issues which might not have been considered before in any way and/or to suggest somehow how to cope with these issues.

Generally, the person-readable source code for software can be concentrated into a flowchart including a plurality of steps.  Since any person-made thing under the sun is nearly patentable, we thus have an excellent basis to challenge why such a flowchart cannot meet with the patentable requirements in view of the statutory provision that patent protection is available for the invention or discovery of "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."  It appears to be a truth that a conventional process normally has a number of steps.  Here comes the problem.   What are differences between steps in the conventional process and steps in a software flowchart? There are many kinds of steps in conventional processes which are nevertheless patentable without any doubt.  To the heart of the matter, why steps of a computer flowchart are so exactly special as to make it controversial as to whether its formed process is patentable?  It would appear that the former two of the "Supreme Court trilogy" can provide some hints or answers in this respect.

From the extremely brief holding above-mentioned in Gottschalk v. Benson, we can find factors disproving patentability of a software process as follows:

  1. It merely relates to the necessitated programming of a digital computer. As is well taken, rule or law of nature is unpatentable.  If there is anything which is a must for performing some task, it is quite possible that the anything relates to the rule or law of nature and thus is unpatentable.  Although this is generally correct, the following situations are fully reasonable:
  1. Said anything might have the import of rule of nature but need not be necessarily so categorized.  As a simple example, there existed no computer some decades of years ago. It appears to be illogical to regard the process of the first program to operate the first computer as a rule of nature since such process should be one exploiting the rule of nature rather than a rule of nature by itself;
  2. It is quite possible that said anything is a rule of nature in appearance but an extremely wonderful skill in substance to be so easily to be erroneously regarded as a rule of nature. If this is the case, could we in any way find any basis to wreck the patentability of said anything?
  1. It simply converts signals from the binary-coded decimal form into the pure binary form. The computer can be considered as a complex calculating machine.  During the period of its calculation or operation, it normally requires no personal participation and/or visual control. As is conventionally recognized, it is never a good idea to protect a method or process of doing calculation through diversiform combinations of different known operation rules.  Although these statements are generally correct, the following situations appear to be fully reasonable:
  1. If a calculating machine can do a work in novel, non-obvious and utility ways, what is the ultimate rationale on which we can worrilessly base to reject the patentability of such machine?  Is it convincing that a machine should be excluded from patent protection merely because it is calculation-directed?
  2. Conventionally, a patentable process is visually or tangibly controllable by the operator. Does the assertion of patentability exclusion of a software invention in fact originate from the lost fear that the computer program is not physically reined under our arbitrary will?
  3. Certainly, calculation is known to be exercised through kinds of operation rules, which are, nevertheless, often known or somewhat 'obvious' to one skilled in the art.  It seems, however, to be evidently baseless to allege that 'diversiform combinations of different known operation rules' must also be known or obvious in that it can hardly be wrong that only after the nucleus or key spirit of an invention is explained, can we know how and why the invention can be achieved in so an easy but fancy manner.   Accordingly, simple or easy technique judged through hindsight needs not be that simple or easy from a foresighted viewpoint.  It will be even more true diversified combinations of a multitude of easy or simple operation rules will oftentimes make the formulated process novel, non-obvious and utility.
  1. It is, in fact, sometimes a mathematical formula from some point of view.  As is well-known, the computer always executes a calculation according to a mathematical formula or a series of steps included in a flowchart.  It appears to be clear that mathematical formula itself is unpatentable. It might be headachy to answer whether a process primarily involves in the mathematical formula is patentable.  It is, however, also evident that steps in a flowchart need not be mathematical formula-related. Specifically,
  1. Just like what happens to the rule of nature, a process exploiting the mathematical formula should be different from the mathematical formula in itself. In other words, while the mathematical formula itself is unpatentable, the process exploiting the mathematical formula should be eligible for patent protection if other statutory requirements are met;
  2. If the series of steps are irrelevant to the mathematical formula, they would be likely to be components of a patentable conventional process.  What we really concern is what position we should take with respect to a process exploiting the mathematical formula? Through the above discussions, it appears to be safe for us to conclude that there exists no problem of eligibility of patent protection for the process relating mathematical formula whose patentability is to be determined by statutory patentable requirements.

From the extremely brief holding above-mentioned in Parker v. Flook, we can find factors refuting patentability of a software process as follows:

  1. It is a process for updating 'alarm limits' or digits.  Conventionally, the starting material or end product is usually referred to real articles.  Here, either or both of them might be virtual, not real but imaginary.  It does be hard to accept that digits themselves are eligible for patent protection.  Nevertheless, a digits-updating process appears to have good reasons, through the above discussions, for soliciting patent protection in that:
  1. Digits themselves are dead and dull for sure but are lovely and useful in some respect, e.g. in the deposit account.  If they do sometimes represent novel, non-obvious and utility application, why we should exclude them from patent protection?  How could we justify ourselves of having such adherence by the understanding that the relevant process 'merely' relates to digits?  We were told when we were young that it is important for us to know a matter into its substance rather than in a superficial manner.  Is our position here superficial or substantial?
  2. Not only the social activities have been driven into virtual, but also the world has also been.  It would appear whether or not the starting material or end product is real is not so important and/or desired at present.  What would be emphasized nowadays would be whether or not there would occur effectiveness?  As such, how we could find competent bases for excusing ourselves in taking that a novel process using, operating and/or generating useful digits is unpatentable.
  1. It is a process based on an algorithm. Algorithm is different from but analogous in some respect to mathematical formula or rule of nature.  According to Webster's Ninth New Collegiate Dictionary, the first definition for 'algorithm' is "a procedure for solving a mathematical problem in a finite number of steps that frequently involves repetition of an operation," which appears to the case in this case, which can be regarded as relating to the mathematical formula.  As such, the preceding discussion seems applicable here also.
  2. It is essentially a method of calculating.  In this regard, please refer to what is discussed related therewith.

From the extremely brief holding above-mentioned in Diamond v. Diehr, we can find factors advocating patentability of a software process as follows:

  1. It is a process employing a computer by which the court held a computer-employing process is patentable, subject to compliance with legal requisites.  In this regard,
  1. After the play of the former two in the trilogy, it appears to naturally come the last of trilogy, although there might involve a bit of hindsight.  Now that anything under the sun which is useful is patentable, it should not be so strange for the court to hold patentable a computer-employing process which does be useful generally.
  2. As is known, novelty can relatively easily be judged when compared to non-obviousness. People try very hard to set standards, as objective as possible, for determining whether a specific invention is non-obvious in view of the prior art. Since the mechanism which does the 'objectively' judging work is a person who normally performs his/her work subjectively, either unconsciously or uncontrollable, as can be evidenced now and then by the live prosecution results of a certain applications, because it is quite possible that there has never existed any absolutely 'objective' person in the world, it might be well questionable whether the standards for non-obviousness in respect of the computer software is or should be the same with those in other respects?

A lot of factors are involved in here. As an example, whether a software process which is first time created in this world for executing a specific function through the computer is patentable or non-obvious is questionable if it is proved at a later time that the concept or flowchart disclosed in the software process is a necessarily unique one.  Specifically, the 'inventor' of the software process, in fact, happens to be the inventor merely by chance since any one who is skilled in software programming and desires a computer to execute the specific function can invent a similar software process.  In a general case, the examiner will allow the first specific process since at the time it is filed or it is examined, it is quite possible that there is no similar process existing in the world and that it might present some difficulties before the examiner to prove the first specific process in fact is not so much unique as alleged by the applicant.

For further an example, if a problem is conventionally solved through the hardware measure and is then made possible to be solved by a software-related process by an inventor, a similar situation might occur.  Specifically, if the software-related process is so neat, its patentability would be no problem.  If its corresponding hardware-related measure has been known, a stricter consideration upon examination must be exercised in that it might be interpreted that the underlying concept of that software-related process has been known.  What is really invented is thus to achieve the desired function through a software-related measure instead of the hardware-related measure.  Here, the situation will be similar but not identical to the above described.  (No further discussion will be discussed here)

  1. The claimed process involves the physical transformation of an article.  Generally, a software-related process will 'directly' or indirectly cause changes in physical or chemical property of an article controlled by or worked or functioning in relation with the software-related process.  In this regard,
  1. The physical transformation is a kind of "post-solution activity" or "post-computer- process activity" or "pre-computer-process activity," which is repetitively confirmed to be a patentable attribute if such activity represents a "significant use" which normally is the case.
  2. It appears safe to say that it is not difficult for us to disguise a software process with the patentable attribute above-described. What is concerned here is whether there exists a possibility that a specific software-related process or device is unpatentable no matter how it is disguised in the patent claim?



Brief Items to be Discussed for Presenting Issues We Concern

*Primitive software patent

*Derivative software patent---means plus function

*Software patent regarding internet

*Software patent for doing business



Detailed Analyses

#Primitive software patent

As can be known from above discussions, since the computer is getting more and more popular, it is more and more difficult for us to stay away from participation of the software in our daily lives.  As such, kinds of 'creative' software must be invented in order to cope with our extensive demands in various respects. Among these kinds, there must be at least some of them which are really creative to be eligible for patent protection.  Since these some kinds are so much appropriate to be or worthy of being patent-protected, does it naturally come to the conclusion that all kinds of software-related applications are patentable?  Specifically,

  1. It is not strange for the software, as a medium of great utility in serving the human life and/or of a multitude of practical applications, to be necessarily patentable in some respects, e.g. the last of the trilogy.  People trying to seek patented software-related applications in these respects are always sympathy-soliciting in that they do make the world easier for people to live in.  Software patents in these respects might thus be categorized as 'primitive' software patents.  Now comes the problem that how far the software patent should go?  Is it a good idea to take that any kind of software should be eligible for patent protection?
  2. The real problem should be whether or not they do meet with requirements of novelty, non-obviousness and utility?  If we were not to disqualify the patentability of some software applications through these requirements, how should we bar some kinds of software applications from patent protection? How could we unperturbedly and confidently stands before the fact that software of different kinds are subject to different applications in eligibility for patent protection?  How could we draw the line delimiting therebetween?  Or how could we finally conclude software-related applications in which respects are eligible but others are not for patent protection?
  3. It appears that initiation is somewhat more difficult than development based thereon. After software-related applications are eventually found patentable by way of the primitive software patents, it appears the door for software-related patent has been generously opened.  It might be great for us to reflect how large the door should be opened?



#Derivative software patent---means plus function

According to 35 USC 112(6), 'an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.'  We are a bit interested in discussing here before the software-related case was held patentable, is it possible to seek patented a software-related creation using the type of means plus function?

  1. Before In re Donaldson decided on February 14, 1994 by the US Court of Appeals for the Federal Circuit, it was often held the claim drafter would be not so much prudent or competent upon preparing a specification if the drafter did not use the type of means plus function in drafting the claim.  Not only because it has a broadest coverage, but also it is not so much critical to describe the involved structure, material or acts in a greater detail. It seems cases on record did not show a software-directed application can be sought patented merely because it is drafted in the manner of means plus function. Specifically, before the last of trilogy, software-directed patent theoretically was unpatentable even if drafted in the format of means plus function.  Thereafter, it goes without saying that the software-directed invention drafted in the style of means plus function is patentable since software-directed invention has been held patentable regardless of the format it is drafted.
  2. It is interesting to know what the court thought or what the practice allowed from the Trovato court rejecting the claims and distinguishing them from the claims allowed in the Alappat decision as follows:
  3. Our result here comports with our recent decision in Alappat, 33 F.3d 1526, 31 U.S.P.Q.2d 1545. Although the claims of the inventor in Alappat were also drafted in means format, unlike the disclosure here, his application disclosed a specific hardware embodiment.  There, we extensively relied upon the hardware listed in the specification, including arithmetic logic circuits, barrel shifters and a read only memory in reaching the result that the claimed invention constituted patent eligible subject matter. Id. At 1541, 31 U.S.P.Q.2d at 1555.  Specific note was also made of the combination of claimed elements from which the inventor formed a machine. Id. At 1544, 31 U.S.P.Q.2d at 1577. As we have noted, however, a search through Trovota’s application for the combination of similar apparatus is unavailing. The use of an apparatus claim format in this fashion is precisely the sort of "guise" recognized in Alappat, 33 F.3d 1541, 31 U.S.P.Q.2d at 1555, and the cases cited therein.

  4. It might also be interesting to further note that the Federal Circuit revisited the issue of patentability of software in In re Lowry about one month after its decision in Alappat.  It was also an appeal from the Board of Patent Appeals and Interferences of PTO sustaining the Examiner's rejection of claims relating to software.. The Board of Patent Appeals and Interferences upheld the rejection of the claims as printed matter on a magnetic medium without functional value.  In re Alappat had not resolved the question whether software was patentable when it is claimed independent of a general purpose computer.  The Board of Patent Appeals and Interferences held that software was not patentable independent of the general purpose computer.  The Federal Circuit again reversed the Board of Patent Appeals and Interferences to allow the patentability of the claimed software.  It was reported that these two cases eliminated the bases on which the PTO had rejected the patentability of software claims.  Accordingly, the PTO Examination Guidelines for Computer Related Inventions were urged to be established.



#Software patent regarding internet

Time has or has been changed. It has been commonly recognized that a person who does not explore the internet everyday or is not well-educated or well-trained to browse the internet has fallen behind the ranks.  The internet has successfully shortened distances between persons or countries on earth.  The great world has shrunk into an earth village.  Nevertheless, the actual distance still vividly present before us. As such, the internet business or industry has got crazily hot in recent years.  A lot of internet companies have been established.  There is a Chinese saying that anything which comes fast will go quick.  In these months, we saw many internet companies cut down their sizes or closed their businesses.  Before the internet company having filed a patent application can enjoy its patent rights in time, we have already experienced that it does not have the happy lot to take advantages of claiming its rights possibly ensuing therefrom.

The United States, as a heaven for the gambler or investor, certainly will foster a great number of internet enterprises and evidence the above situation. In addition, it has been predicted in the year 2000, estimations for electronic commerce in the US range from $50 to $650 billions, in Europe $30 billions and in Asia $40 billions, all of which could be considered to be completed through the internet. It has been well-known that to file an internet patent has at least the following advantages:

  1. It will greatly work upon soliciting the investment capital or business partner.   People will feel or really become great only after they have ever dreamed. Damages collected from a patent infringement might amount to a billion which is a so much attractive digit by which the joint venture is easily formed. A hot patent normally represents that the owner can fund money as much as or far more than it desires.  By the same token, a hot patent will make it easier to gather together kinds of partners the owner would like to have.
  2. It serves as a shield for protecting from competition.  It has been described that a patent is a kind of legitimate monopoly by which a relatively small company can solely provide a favorite product in the market by which that company can protectedly rapidly grow. Although theoretical success might not come true, which, nevertheless, have successfully paved the stout way for one to hardly strive therefor.
  3. It offers the possibility of threatening a patent infringement suit.  While to be threatened is not good, to threaten some else sometimes is fruitful. In this country, a lot of people think shame to go to the court, either as plaintiff or defendant of whatever cause.  As such, a lot of patent rascals earn quite a bit benefits through threatening of a patent infringement suit since some kindhearted people consider it a bad luck to get involved in a law suit and tend to settle with the plaintiff before going to the court, although the situation is changing now.
  4. It provides the possibility of collecting licensing royalties.  A license can occur when two parties desire to work a project with or without a royalty.  The former normally happens when the licensee considers there might be a patent infringement.   The latter often occurs when the licensor thinks there might be no infringement, but misleads others to pay royalties.  This world is too much complicate for a simple person to happily lead his/her life.



#Software patent for doing business

Although software patent for doing business is much related to the internet patent as the internet technology is getting more and more developed, it appears to be true for us to believe it culminates in patent application of doing business which every one bets it is unpatentable in the past. In the e-era, it appears that we have been accustomed to the interchange of yesterday's truth and today's false.  In spite of this, we are exhausting our last efforts to present our discussions in this regard as follow:

  1. As discussed above, software as a medium for improving the human life should not be excluded from patent eligibility since before it, even being a method of doing business, can be patented, it must meet with statutory patentable requirements, i.e. novelty, non-obviousness and utility, out of which, in fact, the major problem exists with non-obviousness.  In the realistic world, the first prototype or the theory of a certain product is normally developed or invented by a big internationalized company.   Although the prototype or the theory might be a unique must if we would like to utilize that product, it appears that we do not feel it a bad idea to have it patented.   There are four maybe excellent reasons for this.  Firstly, the product does be newly created. Second, the product normally is not absolutely necessitated in the human life.  Third, sometimes, to invent and to discover are not so clearly distinguishable from each other, as partly evidenced by the wording in 35 USC 101.  Fourth, the patentee might have exerted much efforts in promoting the product to be popularly accepted by the consumer.  All of which, it appears, explain it is worthy to exchange not more than 20 years patent rights with the social welfare derivable therefrom.
  2. As mentioned before, in this e-era, the computer rudely forces its way into our daily life. The software never easily let slip any of us. We have been luckily and unluckily pushed into the internet pool in which we swim by our own surviving skill and/or selects to lean against the pool bank to take our rest and to hesitate whether we should cleverly swim further or masculinely get out of the pool.  It has never been strange for us to order goods through the internet during which it is quite possible that we have infringed a patented method of doing business.  Now that we have been innocently trapped in this e-world without choice, there should be some measure rescuing us therefrom in order that we can still freely breathe the fresh air to keep our life.  As a logic and reasonable person, it is advisable for us to admit that there do be some methods of doing business which are so remarkable that we will feel uncomfortable if they are prohibited from being patented. Nevertheless, there do be some methods of doing business which are created simply because the inventor is lucky enough to encounter therewith and tries to provide a solution therefor.  It thus appears to be inappropriate for accepting their patentability in order that newcomers can constitutionally lead their lives without the cruel and irrational intervention of statutory barbarity.  Upon so performing, it seems imprudent to curb them from being patented by eligibility of patent protection.   Instead, it would sound considerable to wreck them before the great patentable requirement of non-obviousness.



Claims we have

  1. A power must be often correct in the past to be the power at present.  Although the power always tries its best to be alert to the changing society, wisdom and fate need not forever and ever follow therewith. Although the first step the power strides on earth in certain aspect normally wins therefor lots of benefits and interests, it might be possible that when that aspect is hot no more, the power might be hurt badly.  We are incapable of confusing the world here since we are not clever enough to fully convince anyone where is wrong, how should we do and what should be done?  All what we want to humbly express here is to remind whom it may concern in any respect that before a decision is taken, it might be worthy for us to get fully prepared therefor.  After we take the decision, it might be advisable that we carefully monitor what is happening to the society influenced by that decision.  Meanwhile, what measures or changes should be taken or made to that decision in order to cope with the influenced society, if possible and/or if in time, should be continuously kept in investigation.
  2. Is it necessary for us to lead our lives dependent on software so much?  Need we change our living style a bit?  Is it a good idea or possible that we happily lead our lives without much introduction of the software?  Do these answers help solve the question as to whether a software process is patentable? For example, if a patentable software process in certain field is not so popular, is it necessary for us to be so nervous as to whether that process is patentable?
  3. It appears to be important to discern a software process exploiting the rule of nature from one of a rule of nature per se. It is equally important to distinguish a program process being a rule of nature in appearance from one which is wonderfully skillful in substance to be erroneously taken as a rule of nature.  In the proper cases, could we in any way find any basis to wreck the patentability of said anything?
  4. As the computer is getting more and more utilized, people are getting more and more dependent on the software.  If a specific software process is compulsory for a specific function in the computer, it might be strongly doubtful that the first designer of the specific software process in the world is patentable in that it might be extremely possible the first designer is the 'inventor' merely by luckiness.  It is committed here that in fields other than computer, it is quite possible that the first lucky discoverer of a certain process or device is normally a legal patent owner.  Then, why we should doubt a lucky first designer in respect of the software?  Are we correct in taking that computer software should be differently considered from other fields in that the replaceability of computer is much smaller than other fields?   Does this appropriately justify our assumption here?
  5. It is easier or much reasonable for us to bar a software-related application from patent protection by means of patentable requirements rather than eligibility for patent protection since it is nearly impossible for us to set fair or convincing standards for such determination. What we would like to bar some kind of software-related application for patent protection is not directed to wreck the development of the technology.   Instead, such measure is considered extremely helpful in promoting the technology in that the necessary growth of specific industrial sectors will not be gratuitously suppressed by such software-related patents which are created merely because the first inventor is lucky enough to first complete the software or first find that software is compulsory for his/her computer to perform the work he/she is relying on to live or earn benefits without the necessity of exercising what kind of special efforts or the involvement of what kind of particular ingenuity.
  6. It is interesting to ascertain whether the non-obviousness test for scrutinizing the computer software patents, especially software applications of doing business is the same as in examining other patent applications.  Specifically, whether the fact that the computer has got more and more popularized and required in the human daily life will successfully urge us in considering whether different standards or definitions for non-obviousness should be exercised is never an easy question to answer.  Even if we decide to so do, the measure we take therefor should be stricter for better protecting our possibly simple but happy daily lives or looser for encouraging creations in this field in further securing our brand new beautiful world?  Is it possible that we find out how we should properly react in this respect?  Are we foolish enough in exploring this problem here?
  7. In sum, if we were willing to accept that some basic and necessitated software method of doing business is unpatentable in order to safeguard the human life to some extent, it appears it is better for us to carefully exercise the non-obviousness test in determining whether the specific software patent application is patentable. Specifically, if the software application of doing business is basic and/or necessitated whenever the possible user is to encounter, it seems it is a good idea that the application should be rejected because it is merely a 'choice of design' or something like rule of nature. If it is found to be impossible for us to do so, is it considerable that the granted patent should be accorded with a narrower or more limited scope?
  8. If the above reasoning is viable, does it sound good to have such reasoning applied to other possible fields? If yes, what are possible fields? How this will influence the patent system we are familiar at present?