Why Wishes Should Be Patentable

By Robert Plotkin
June 30, 2009

Robert Plotkin, author of The Genie in the Machine

Robert Plotkin, author of "The Genie in the Machine"

Critics of software patents often argue that software should not be patentable because software is too “abstract” to be patented. The patent system was created to protect nuts-and-bolts machines like the steam engine and the cotton gin, not “intangible” creations like software, so the argument goes. In this article I will argue that not only should software be patentable, but that inventions that are even more “abstract” should be patentable – inventions that I call “wishes” in my recent book, The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business.

Chuck Connell did an excellent job of laying out why arguments against software patents miss the mark in his recent posting on this blog, entitled Is Software Patentable? Let me add to what he said by pointing out that the software in a physical computer is not “abstract” or “intangible”: it is as concrete and tangible as a cotton gin in the senses that are relevant to patent law. Consider anti-lock braking software installed in the anti-lock braking system of a car. Such a system includes both a processor and a memory in which the anti-lock braking software is installed. Everyone agrees that the processor and memory are concrete and tangible. Yet the “software” that is “installed” in the memory is simply the collection of switches in the memory which have been flipped into a particular pattern to cause the processor to behave as an anti-lock braking controller. If the memory itself is concrete and tangible, then certainly a subset of the memory is also concrete and tangible.

Although you could (and many do) argue that the software in this case is the pattern of flipped switches and therefore is intangible, this is what philosophers like to call a “category mistake,” and if taken seriously, leads to the conclusion that nothing is patentable. After all, consider a watch gear that is novel and nonobvious because of the pattern of its teeth, which causes it to turn more efficiently inside the watch. I suppose you could argue that this tooth pattern is abstract and intangible, thereby rendering the gear unpatentable. The same could be said of every physical device which has ever been patented. The problem with this argument is that although it may be true that an abstract or intangible pattern may be embodied in the gear, the gear itself is both concrete and tangible, and is capable of performing a useful function in the real world. The same is true of a computer memory which has been programmed with a particular piece of software. Therefore, software installed in the physical memory of a computer should be considered just as concrete and tangible as any traditional mechanical device for patent law’s purposes.

“But wait,” you say, “the problem with software patents isn’t that software is too abstract, it’s that software patents are written too broadly and abstractly.” Abstraction, however, isn’t necessarily a problem in patents. In fact, the whole point of a patent claim is to abstract from the implementation details of the various embodiments of the invention and point out the general features of the invention that make it useful, novel, and nonobvious. Going back to my watch gear example, if the pattern of teeth on my gear makes it useful, novel, and nonobvious, then patent law entitles me to obtain a patent claim written relatively abstractly to cover gears having the novel pattern. Such a claim will generally be interpreted to cover various gears having the same pattern, even if they vary in size, material, and other features. This kind of abstraction is well-accepted within patent law, and does not necessarily lead to unclear or overly broad patents. As computer scientist Edsger Dijkstra said, “the purpose of abstracting is not to be vague, but to create a new semantic level in which one can be absolutely precise.”

This isn’t to say that software doesn’t raise some new and challenging problems for patent law. In The Genie in the Machine, I use the engineer’s “waterfall model” of design as a framework for thinking about the similarities and differences between abstraction in mechanical patents and abstraction in software patents. In a nutshell, the waterfall model defines several sequential stages for solving a problem, such as: (1) Problem Definition; (2) Requirements Analysis; (3) Functional Design; and (4) Structural Design. Traditional mechanical patent claims are often written to a high degree of abstraction within the realm of the final stage of Structural Design. The law typically limits (but does not entirely prevent) the ability to cross the line into claims written at the Functional Design level of abstraction.

Modern computers enable programmers to engage in stages (1)-(3), resulting in written computer source code, which is essentially a Functional Design specification from the perspective of traditional engineering. The programmer can then hand off the source code to a computer, which automatically creates executable software that can perform the functions described in the source code. In this sense computers have automated, or eliminated the need to engage in, the final stage of Structural Design for that class of problems which can be solved by computer programming. It should be no surprise, then, that software patent specifications and claims are typically written at the level of Functional Design – this is the level of abstraction at which software developers conceive of and create software. As I argue in The Genie in the Machine, patent law’s traditional aversion to patents written at this higher level of abstraction should be relaxed to the extent that purely functional descriptions of software can actually enable those having ordinary skill in the art to make and use the invention – which is not often the case for purely functional descriptions of mechanical devices. Similarly, functionally-worded software patent claims can (if written appropriately) provide the public with clear notice of what has been invented and therefore should not be rejected out of hand for being “too abstract” in some absolute sense.

This all leads to the “wish patents” that I mentioned at the beginning of this article. As computers continue to further automate the process of inventing, it is becoming possible for an inventor to create a new, useful, and nonobvious machine merely by writing an even more abstract description – such as a description of the problem to be solved or the requirements to be satisfied – and then providing that description to a computer, which produces a concrete design for a machine that solves the problem or satisfies the requirements. I provide many examples of such “artificial invention” technology and the inventions it has produced in The Genie in the Machine.

For example, the inventor might tell the computer – in a computer-understandable form – that he needs an antenna that can transmit signals having specified properties within a certain range of frequencies, and that weighs less than two ounces. This description is an example of what I have been calling a “wish.” If all goes well, the computer churns for a while and then produces a digital design for an antenna that satisfies the criteria specified by the wish.

One question raised by such technologies is whether such artificial wishes themselves should be patentable. Of course, many such wishes will fail to be novel or nonobvious. In practice it may be very difficult to come up with a novel and nonobvious wish. In many fields, the problems to be solved and the requirements to be satisfied are well known, and what engineers spend their time doing is figuring out how to satisfy those requirements with specific product designs. In such cases, patent law’s novelty and nonobviousness requirements will stop wish patent applications at the gate.

What should happen, however, if someone does come up with a useful, novel, and nonobvious wish that can be provided to a computer to create designs for a whole new class of products? Should the creator of such a wish be entitled to a patent on the entire class of products? In short, in The Genie in the Machine I argue that such patents should be allowed, assuming of course that they satisfy not only the utility, novelty, and nonobviousness requirements, but also the enablement requirement. Satisfying such requirements may prove difficult in practice, but not impossible in theory. If someone is able to satisfy them all in a particular case, then he has not only enabled a whole new class of products to be created but has taught the public how to make and use such products. The inventor should therefore be entitled to patent protection for the class of products for the same reasons that the watch gear inventor should be entitled to a patent covering the class of watches having the tooth pattern he invented.

In summary, if you thought the patent system would have a hard time dealing with the abstract nature of software patents, then you ain’t seen nothing yet. It is only a matter of time before savvy inventors start filing wish patent applications, forcing the Patent Office and the courts to grapple with them. Careful study of the history of software patents, however, can help us to head off the worst problems at the pass if we begin to work now on making sure that such patent applications are examined correctly and interpreted appropriately after they are granted.

About the Author

Robert Plotkin started programming computers when he was in fifth grade when his school received two brand new Tandy/Radio Shack TRS-80s. His first lesson was learning how to write a two-line program that would display my name repeatedly on the screen. He was hooked. Now, about a quarter of a century later, he is a full-time patent lawyer and part-time law professor, and he still spends most of my time working with and thinking about computers. He is the author of The Genie in the Machine: How Computer-Automated Invention Is Revolutionizing Law & Business, and he blogs at Automating Invention, writing about the impact of computer-automated inventing on the future of invention and patent law.

The Author

Robert Plotkin

Robert Plotkin is a founding partner of Blueshift IP. Attorney Plotkin has been a leader in obtaining software patents for over two decades, and consistently obtains software patents for clients even after the Alice Supreme Court decision and the passage of the AIA.

For more information or to contact Attorney Plotkin, please visit his Firm Profile Page.

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Discuss this

There are currently 9 Comments comments.

  1. Adam June 30, 2009 3:39 pm

    Of course, if Mr. Plotkin’s software-is-switches analysis is right, then nothing is too “abstract” to be patentable. Every idea that can be communicated with human language can be represented by a set of switches in computer memory. Every set of instructions (including those from pure math) can be represented as executable instructions in computer memory. In Mr. Plotkin’s model, there’s no way to prevent the Pythagorean Theorem or Newton’s Method from being patented, which is surely neither beneficial to society nor the intent of the law.

  2. Examiner #9 June 30, 2009 8:38 pm

    How do you propose the examination of software patents? One of the issues for software patents is that being etheral in structure it is difficult if not impossible to search. The structure of one claimed patent could be completely different than another but yet they could most definitely infringe. The struture of the watch gear is set and stone (or copper or iron) and there is a definite amount of ways searching that. Just wondering your opinion on that.

    I’m currently reading your book right now, so maybe my question will answer itself.

    I have other issuesbut I will hold off on till I finish the book.

  3. Gene Quinn June 30, 2009 9:23 pm

    Examiner 9-

    I don’t know that I see any trouble with the search or it being any different. If the claims are not well defined to an apparatus they can be rejected over things that are unrelated, particularly for obviousness.

    Can you elaborate a bit more on why you think the searching would be different? I know it is different, but I am particularly interested in hearing your thoughts as to why it would be so different that it would be hard to examine. It just seems to me that if you are familiar with software it would not be any different than searching another complex area that you are familiar with.

    -Gene

  4. Roland Orre July 1, 2009 3:54 pm

    Hi Robert, we met in Amsterdam, October 2005, at the seminar “IPR on software: the road ahead” you presented “Reinventing Intellectual Property Protection for Software”

    In case you were serious with your Wish-patents, then I can tell you that in case you would be able to patent these new “inventions” then you have at least two problems:
    1) who would be the owner of the patent? All people that have made the wish? or the programmer that wrote the code implementing the wish-to-design process (me and others 🙂
    2) if any outcome from this would be patented, then you have the same problem as with software patents, that is they will efficiently stifle further innovation.

    As you know software, you may know what a DAG (Directed Acyclic Graph) is. A DAG is one way to hierarchically describe software and any type of incremental innovations. If any node in this graph, which is connecting one level to the other is blocked by a patent, then it will efficiently cut all the infinite set of inventions that can be made from this node. Invent around? Sometimes possible, sometimes not. As soon as there are nodes that has to be passed (think about a simple thing like an “if” statement or something easily imaginable) then no further inventions will be possible.

    OK, if we don’t want any development, just feed the patent system and lawyers, and are fine with a Status Quo society, then your wish-patents are fine, but… the idea with these wishes is to make technical progress isn’t it 😕

    Best regards
    Roland Orre

  5. lex July 2, 2009 10:25 am

    Good laugh! Given the serious flaws of the current patent system(s) Mr. Plotkin’s idea is so far off from being operationalizeable that I wonder if there is anything more to this blog post than its satiric value. Perfect data interoperability on the semantic level won’t help nothing –> Open World Assumption.
    And btw: It is still not the inventors that apply for patents but the lawyers. There is definitelly no doubt that they are interested in extending the system to nearly everything. What about patenting thoughts?

  6. Gene Quinn July 2, 2009 10:44 am

    Lex-

    By the way, inventors are the ones that apply for patents. You really should brush up on your patent law.

    Also, and by the way, patent lawyers are not interested in extending the system to nearly everything. It is the US Congress and the US Supreme Court that have definitively and repeatedly said that you can patent nearly everything in the US. The role of any lawyer is to represent your client vigorously and when there is protection to be had thanks to the Congress and the Supreme Court then lawyers get that protection for their clients.

    Whether you choose to accept reality, Plotkin’s idea is dead on accurate, and it will happen. We are on the brink of having innovations that will allow for a person’s thoughts (i.e., wishes) to operate machinery. Of course, the operative innovation here will be software, which is and always will be patentable in the US.

    -Gene

  7. Robert Plotkin July 2, 2009 2:11 pm

    Thanks to everyone for your comments. I have two answers which respond to most of the comments:

    (1) Read my book. 🙂 For better or worse, the most that I can do in a short blog posting of this kind is to provide a summary of my argument and conclusions. There is no room to address potential objections and implementation details. I devote significant space to such details in the book and openly acknowledge that implementing my recommendations will not be simple. In fact, I devote an entire chapter to the limitations that patent law will face when adapting to automated inventing. I also point out, however, that doing nothing will result in even worse problems than following the path I recommend.

    And for those of you who prefer eliminating the patent system entirely, or banning software patents entirely, as a solution, what reason do we have to think that the market, in the absence of patent protection for legitimate inventions which satisfy all of the legal requirements for patentability (not the kind of sham patents that are often used as straw men in arguments against software patents), will maximize innovation? Markets without patents can result in stifling innovation in their own ways, such as by producing monopolies. (The history of the software industry is not without examples of this, to the detriment of individual programmers and small software companies.)

    Furthermore, as I also explain in detail in the book, attempting to ban software patents outright will just cause people to rewrite their software patents to read like hardware patents, and there will be no basis in law for rejecting such patents, unless you eliminate hardware patents as well. This is exactly what happened in the early history of software patents, and the result was to produce patents which were effectively software patents, but which were unnecessarily difficult to write and to understand as a result of trying to fit a square peg into a round hole.

    Similarly, I explain in the book that if patent examiners and judges do not allow wish patents to be written in terms of abstract wishes, inventors will simply file very long and detailed patent applications on all of the many particular embodiments they have created (or could create) by providing a wish to a computer. You can imagine a patent on a wish for a class of gears which lists and illustrates hundreds or thousands of different individual gears produced using the wish, and then claims each one separately. Does such a patent simplify examination? Make the patent a better tool for putting the public on notice of the invention that has been patented? Reduce costs of patent procurement for inventors? Reduce costs of avoidance for competitors? No. It does exactly the opposite. Yet since each of the claims is to a specific gear (clearly patentable subject matter), and assuming that each of the gears is new, useful, and nonobvious, and that the specification explains how to make and use each of the gears, then each gear individually qualifies as a patentable invention.

    The net effect of such a long and complex patent, however, is to provide the inventor with patent protection for the class of gears produced using the wish — the same legal effect as granting a patent on the wish directly. So what does either the inventor, the inventor’s competitors, or the public at large gain from forcing the inventor to describe and claim the class of gears at such a low level of detail, rather than more abstractly — and hence more simply and concisely?

    Of course, there are some legitimate answers to this question, but they are much more subtle than you might think at first glance. That is why, as I suggested at the beginning of this comment, I suggest that you read my book. 🙂

  8. Gene Quinn July 2, 2009 4:42 pm

    NOTE TO EVERYONE-

    Anonymous comments that are confrontational and use obviously fictitious e-mail addresses, like anon@yahoo.com, are not going to get approved.

    I do not require folks to register as users before they comment, but if you are not willing to use a real name or a real e-mail address your comment needs to be squeeky clean and not at all confrontational. Those are my rules and anyone that has a problem with it please keep your thoughts to yourself. I am growing tired of being told I don’t understand “freedom of expression.” I enjoy those rights as well, and I will not tolerate factually inaccurate, legally inaccurate, abusive, vulgar or confrontational posts. Open debate and disagreement is fine, but IPWatchdog.com has always been about conveying accurate information, and I will not tolerate junior high level attacks on those who are meaningfully contributing to a debate.

    I have never revealed a source, never revealed an e-mail address and I am not going to allow IPWatchdog to be taken over by those with an agenda who are unwilling to let themselves be known to at least me, the administrator.

    -Gene

  9. Dale B. Halling July 11, 2009 10:58 am

    Very interesting article. I’m not sure that the “wish patent” makes sense. I think if the person can define a problem and a method of developing a solution, for instance an evolutionary algorithm and the solution is otherwise meets the crieria for patentability, it should be patentable.

    The arguments against software patents have a fundamental flaw. As any electrical engineer knows, solutions to problems implemented in software can also be realized in hardware, i.e., electronic circuits. The main reason for choosing a software solution is the ease in implementing changes, the main reason for choosing a hardware solution is speed of processing. Therefore, a time critical solution is more likely to be implemented in hardware. While a solution that requires the ability to add features easily will be implemented in software. As a result, to be intellectually consistent those people against software patents also have to be against patents for electronic circuits. For more information on patents and innovation see http://www.hallingblog.com.