Sorry, I was actually trying to avoid getting into the issue of novelty, but I fear I expressed myself badly. Lets drop that one for now.

From my layman’s understanding of the law, the first step is to establish the facts of the case, and the second step is to apply the law to those facts. I suggest we proceed in the same way.

It is a well established fact, backed up by mathematical proof, that any algorithm (i.e. a finite sequence of steps for manipulating information) can be expressed as a mathematical formula in the Lambda Calculus. Do you accept this fact?

Paul.

A couple more thoughts…

You say: “The patent in Bilski was found to be non-patentable subject matter because the only novel element was a mathematical formula, which is contrary to the decision in State Street. Or do you think that there is some legal principle under which the State Street and Bilski decisions can both be considered correct?”

That was not the holding in Bilski at all. Neither the Federal Circuit or the Supreme Court ever reached the novelty issue. Patentable subject matter is what the case is about and that is a wholly different inquiry than whether a claimed invention is novel. This is exactly why I say that those who want to take issue with patents really need to understand patent law. You are fundamentally misunderstanding Bilski and think it has to do with an issue that was never argued, never briefed and never addressed by any court.

The Supreme Court seemed to pretty clearly want to make sure that the invention in State Street remained patentable. They just didn’t like the test used. The test is now machine or transformation. If a process is inextricably intertwined with a machine then the process satisfies the patent eligible subject matter threshold. That is why it is extremely well settled that software is indeed patentable.

Your article and response suggest you just do not understand patent law. I also question whether you really understand what software is on a foundational level. Software is not a set of code or mathematical expressions or disassociated algorithms. Software is a set of instructions that directs a machine to perform a task. That has been and always will be patentable in the United States.

I also question whether you really are arguing about whether software should be considered patent eligible. Your bleeding over of the novelty issue suggest that your problem is with granting patents on software that is not new. That is certainly a valid concern, but not at all relevant when considering whether a class of invention expresses patent eligible subject matter.

-Gene

You say you want to have a debate about the legal issues surrounding the patenting of software and then you want to ignore the law, how the law interprets method claims, and fundamentally what software does and is. You start with the premise that software can be expressed in mathematical equations and therefore is not patentable. That premise is, however, flawed. Not only is it flawed in reality, it is simply not how the law approaches the issue. So if you want to have a legal debate then lets have that legal debate. You need to stop ignoring the law in what is a legal matter.

Nevertheless, I am happy to engage you in debate just as soon as you either solve or reduce claim 1 of the ’120 patent. Of course, we both know you can’t do that which in and of itself proves I am correct and you are incorrect.

-Gene

1: The Lambda Calculus is part of mathematics.

2: A formula in the Lambda Calculus is a mathematical formula.

3: A formula in the Lambda Calculus is not patentable subject matter.

4: Any supposed invention which can be reduced to a formula in the Lambda Calculus is thereby shown not to be patentable subject matter.

5: The formula “x = (-b +/- sqrt(b^2-4ac))/2a” is not patentable subject matter.

6: If the keyboard and display means are already well known, then the following claim describes non-patentable subject matter: “An machine where the user enters the values of ‘a’, ‘b’ and ‘c’ using a keyboard means, and a display means then shows the two values of ‘x’ found by applying the formula “x = (-b +/- sqrt(b^2-4ac))/2a”.

7: If the input and display steps are already well known, then the following claim describes non-patentable subject matter: “A process where in step 1 the user enters values ‘a’, ‘b’ and ‘c’, in step 2 the value ‘b’ is squared, in step 3 the values of ‘a’ and ‘c’ are multiplied, and the result is multiplied by 4, in step 4 the result of step 3 is subtracted from the result of step 2, in step 5 the square root of the result of step 4 is taken, in step 6 the result of step 5 is both added to and subtracted from the negation of the value ‘b’, yielding two results, and in step 7 both of these results are then divided by twice the value of ‘a’, and in step 8 the resulting numbers from step 7 are displayed to the user.”

You ask if a “mathematical equation” could infringe any of the claims in the ’120 patent. Leaving aside your apparent confusion over the difference between a formula and an equation, I believe the answer is a plain yes; those claims can be recast as mathematical formulae. You dismiss my demonstration of this as just “articulating the process steps in a different language”, and in doing so you miss the whole point; the language I used was a version of the Lambda Calculus, and a formula in the Lambda Calculus is part of mathematics. To any computer scientist this is of course trivial, but only because we all know that Alonzo Church proved that any method of manipulating information can be reduced to a formula in the Lambda Calculus.

When you ask for a number, you make the common layman’s error of assuming that mathematics is only concerned with numerical values. Topology, geometry, set theory and the predicate calculus are examples of branches of mathematics that are not concerned with numbers. Of course any form of information can be reduced to numbers; this argument itself is represented as nothing more than a series of numbers as it is moved around the Internet. So if you insist on mathematics being only concerned with numbers (a contention which any professional mathematician would find insulting) then I could show how the “lists” and “tables” of the 120 patent can be encoded as numbers, and hence translate my formulae into numerical ones. But the result would be pretty unedifying.

(Incidentally, Kurt Godel did represent mathematical formulae as numbers as part of his undecidability proof. Turing did the same in his paper “On Computable Numbers”. If computer science really is the easy option, as you have previously claimed, then you should find both of these papers to be a little light reading, and you might also find them enlightening).

As for the legal situation, from my understanding it was the State Street decision that created the concept that “formula + useful application = invention”. However in Bilski the Supreme Court explicitly stated that they did not endorse anything in State Street, while laying down a different set of principles by which the patentability of business methods and other methods of processing information were to be judged. Since Bilski is new and there is very little case law following from it, it seems to me that the law on this point is anything but settled. The patent in Bilski was found to be non-patentable subject matter because the only novel element was a mathematical formula, which is contrary to the decision in State Street. Or do you think that there is some legal principle under which the State Street and Bilski decisions can both be considered correct?

The claims in the ’120 patent are not phrased as mathematical formulae (note, not equations). However this doesn’t matter because they are reducible to mathematical formulae. To argue otherwise you would have to find some difference between statements 5, 6 and 7 above.

In closing, I would just point out that it is extremely odd that some lawyers want so desperately to prove that software is not a form of mathematics when the opposite has been logically shown to be the case, and the entire weight of mathematical proof is 100% in opposition. You can write as much as you want, but as long as you cling to the erroneous views that are the premise of your theory you have no hope. It is not that explanations of the lawyers fall on deaf ears, it is that some lawyers think they understand mathematics and computer science better than the mathematicians and computer scientists.

It is not that explanations of mathematicians and computer scientists fall on def ears in the patent community. It is that mathematicians and computer scientists think they understand patent law better than patent attorneys.

You claim that all software is unpatentable post Bilski. That is simply not true. The Patent Office issues software patents and software patents are upheld in courts, so whether you or anyone else thinks software shouldn’t be patentable is really of no consequence. Software is patentable even post Bilski.

A mathematical equation is not patentable, but as I’m sure you realize the claims in the 5,893,120 patent are not mathematical equations. The invention relates to an information storage and retrieval system, hardly a mathematical equation. So everyone can see what we are talking about, here is claim 1:

“1. An information storage and retrieval system, the system comprising:

a linked list to store and provide access to records stored in a memory of the system, at least some of the records automatically expiring, a record search means utilizing a search key to access the linked list, the record search means including a means for identifying and removing at least some of the expired ones of the records from the linked list when the linked list is accessed, and means, utilizing the record search means, for accessing the linked list and, at the same time, removing at least some of the expired ones of the records in the linked list.”

Now it is obviously clear that this is not a mathematical equation that is unpatentable to anyone willing to be objective. If it were a mathematical equation it would be solvable, which it is not. Your efforts to translate this into mathematical expressions is just trying to articulate the process steps in a different language, nothing more. You cannot say that claim 1 equals any particular number, which of course you could do if it were a mathematical equation, or at the very least you could reduce claim 1, which you also cannot do while still keeping all of the process steps and the same meaning.

I doubt you will agree with the clearly correct statement above, so allow me to ask you this. Would a mathematical equation infringe any claim in this patent? If a mathematical equation would not infringe then the claim cannot be or cover a mathematical equation. The answer is a resounding no, of that I am 100% certain. How do I know? Aside from the obvious (i.e., that the claim defines steps, not math), if a mathematical equation would infringe then the claim would be invalid under either 101 or 112 or both because it would fail the Bilski machine or transformation test. It is clear that software does not preempt all uses of mathematical equations. At best software preempts a particular use in a particular scenario. You might not like that distinction, but that is one that the law makes.

What mathematicians and computer scientists fail to understand is the basic function of software, which is really rather alarming when you think about it. How is it possible that a computer programmer can’t appreciate what software is doing? Software creates a set of instructions to operate a machine; a process for accomplishing a task. Methods and processes have been patentable since at least 1790.

I don’t doubt that computer programmers agree with you, but you really should ask why that is the case when the legal community, the Patent Office and judges disagree with you on a legal issue. Computer programmers prefer to copy code and don’t like the fact that they have to respect patents. They feel that they have some inalienable right to do whatever they want. They feel special, and believe that the laws that apply to all other businesses shouldn’t apply to them. On top of that, the U.S. government doesn’t even think computer programmers have the requisite scientific training to become a patent attorney or patent agent.

In closing I would just point out that it is extremely odd that mathematicians and computer scientists want so desperately to prove that software is not patentable when that is a legal conclusion and the entire weight of legal reasoning is 100% in opposition. You can write as much as you want and as long as you cling to erroneous views that are the premise of your theory you have no hope. If you want to influence outcomes in legal debates you have to know the law, how it is interpreted and how it is applied and work within the system. But the issue of software has, at least for now, been conclusively decided and pretending that is not the case strikes me as a truly academic exercise.

-Gene

I’ve tackled this question of software versus mathematics on my blog, where amongst other things I reduce a patent to a set of mathematical formulae in the Lambda Calculus. In Bilski the Supreme Court stated that a method reduced to a mathematical formula is not patentable subject matter. Hence logically the claims of patent 5893120 are not in fact patentable subject matter. Would you agree with this?

A lot of computer programmers seem to agree with me, but I’ve not seen anything cogent from anyone on the other side of the argument.

You can find the relevant postings on http://paulspontifications.blogspot.com/

Are mathematical functions patentable? A mathematical function is a mapping from some set of inputs to some set of outputs. A computer program is the same thing: it takes in inputs and produces some output. A computer program IS a mathematical expression. Mathematical expressions are also processes. They are evaluated in very particular ways, sometimes there is only one way to evaluate mathematical expression. Programs are just mathematical expressions that can only be evaluated in one way. That is why they seem to be able to be patented as “processes.”

Also, where would you draw the line between mathematical functions and programs? There are languages across the entire spectrum from one to the other. Consider Mathcad. This is software in which you can put in mathematical expressions in their normal math notation and they can be evaluated. Mathematica is similar, except the expressions are all text. From there you can go to Maple, SML, C, Assembly, and finally to binary (there are probably programming languages that could fit between these that I left out).

You might argue that Mathcad and Mathematica can’t compile to native code, but what’s to stop me from writing such a compiler? If I wrote a compiler for the “Mathcad” language (aka math notation) could I patent Maxwell’s equations?

You might argue that these don’t allow me to implement a lot of the things traditional programming languages can. For example guis. But there are other problems. Are programs with guis the only one’s patentable? Also what’s to stop me from implementing these functionalities in them? OCaml has OpenGL bindings. Why not add OpenGL to Mathcad?

This is where the problem lies in distinguishing math from programs. They ARE the same. Study Programming Languages Theory/Type Theory and you’ll see that programs are just mathematical expressions in different notation. So then, how can you differentiate them?

I will not deride the difficulty required to study the various forms of engineering. However to seriously compare the difficulty of engineering with the difficulty of understanding calculus is ridiculous and implies (although I can’t be sure) that you don’t really have an understanding of what mathematics is and why it is considered difficult. Many people make the mistake of taking applied calculus in its various forms to be the peak of mathematics. It seems you have done this and consequently decided math is trivial in comparison to engineering.

This is because applied calculus IS trivial, even in its various forms. Calculus is just an advanced form of arithmetic. In order to solve a calculus problem, one needs only memorize the methodology involved. This is true from single variable calculus up to partial differential equations. There is no “thought” involved, simply application of memorized methods.

This is in fact the reason many math majors deride engineering. To them, success in these fields involves, for the most part, memorization and application. The most advanced math you need to know IS calculus (which is in fact, trivial) unless perhaps if you study physics in which case more advanced math may become necessary.

On to more advanced math. Consider a course in real analysis, or complex analysis. This is the math majors version of calculus. There is much beyond this. Topology, set theory, number theory, algebraic structures, combinatorics, graph theory, category theory, (some would consider theoretical computer science as math), etc. Basically, the things that fall under discrete mathematics. These are considered “real” math.

The reason they are considered more difficult is because they require you to reason as opposed to memorize. They are entirely based on the proof of theorems. In order to have a solid understanding of math one needs to be able to reason from axioms to develop a solid logical argument as to why a statement is true. At the highest levels of the field, this involves proving theorems that no one in all of human history has been able to reason to be true from what was known to be true at the time. Pitting one’s intellect against the whole of humanity and human history is no small undertaking.

As far as your saying that a mathematics and computer science understanding is not rigourous enough to become an attourney, it is because they have not spent the time to memorize the laws. I am not a lawyer, so you can correct me on this, but the form of reasoning one must do when one is an attourney would involve making a lot of assumptions about what the listener/reader understands and what they consider “common sense.” In this way they can be considered “fuzzy” and are not “rigorous” in the sense of a mathematician. In mathematics, all theorems are proved from a basic set of axioms. Nothing can be assumed about the readers knowledge or their sense of common sense. Even such things as “2 > 1″ must be proven (or taken as an axiom, but it is generally proven).

Some mathematicians may take this personally but I would argue that computer science is at least as rigorous as mathematics. The theoretical side of computer science requires its algorithms to be proven correct as theorems. The application side of computer science (programming) requires a level high level of rigour because the computer has no “common sense” which can be assumed. The amount of rigour necessary to write a correct program (I’m assuming, of course, you are trying to write a correct program) is akin to the level of rigour of the proofs that an automatic theorem prover would churn out.

That is why I must disagree with you when you say that “mathematics and computer science is not technically rigorous enough to warrant licensing as a patent attorney or agent…”

-Gene

That being said the best argument I can think of FOR code being patentable would probably stem from including it into the definition of “process”: Title 35 part II Chapter 10 § 100(b) – “The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material” and the subsequent protection provided. Specifically the whole “new use of a known machine” part. Since thats about the best reason against my opinion, that machine code is inviable as patentable material, I’m going to focus on that, if you disagree based on another reason I’d like to hear it.

I would argue that machine code can not be considered “new use” as the use was engineered into the machine to begin with.
I.E. – Using a detector in conjunction with a light bulb to determine if something has crossed the lights path (e.g. laser burglar alarm) would be considered finding a “new use” for a light bulb. However; taking something which is designed to read machine code and then trying to describe the “new use” for it as being reading DIFFERENT machine code does not make sense. It is akin to attempting to patent alcohol or biodiesel or candle wax as potential fuels in a gas engine because they burn. The purpose of the engine is specifically to burn what you put in it, if its flammable enough the engine keeps spinning. Simply figuring out that other things burn wouldn’t be patentable as it would have been a violation of one of the conditions for patentability, specifically § 103 (a) – “A patent may not be obtained… if… obvious at the time the invention was made to a person having ordinary skill in that art to which the subject pertains.”

Even then, it’s feasible that you could reserve doubts of binary instruction sets applicability to patent law. You could claim that they aren’t obvious. Now, granted; it takes a lot of hard work to write the code that results in the desired effect and the end result could be considered not “obvious” due to the huge amount of man hours that go into writing, debugging, et al. So lets say your still not convinced, stuck in your ways and need more reason to be convinced.
§ 103(b)(2)(B) A patent issued on a process under paragraph (1) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
-AND-
§ 154(a)(2) …if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365 (c) of this title, from the date on which the earliest such application was filed.

Extending this to your “process” of machine code that would mean all code runnable on x86 architecture (the foundation of the most prevalent chip designs currently in market) as well as all extensions therewith WOULD be patentable but only UP to the expiration date of the original x86 design which has lapsed it’s 20 years. But even then, taking it a step further the reduced instruction sets in general have been around since the 70′s, well past their 20 years. Yet, somehow using an instruction set that by its own nature makes reference to an earlier patent means you get new patentable material for a new two decades?
From my vantage every time code is patented it has the effect of re-patenting a small section of that which is public domain. I think thats what irks me most, theres a limited number of ways to do something and if you and I are both trying to figure the one path to our shared destination in free and open pastures belonging to the public why should you get to suddenly turn around and put up a fence across the only bridge so you can start charging tolls?
However, that being said it’s obvious that my interpretation of patent law is not shared by SCOTUS’ so it’s really a moot point I guess.