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Misnomers, Myths, Misunderstandings and Misconceptions about Software Patents

Written by Martin A. Goetz
President, Applied Data Research 1959-1988
Inventor of U.S. Patent No. 3,380,029
Posted: March 20, 2014 @ 4:40 pm
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This article is a follow-up to my January 21st article Why the Supreme Court in the CLS Bank v. Alice Case Should Not Answer the Question on Computer-Implemented Invention.

As I enter my 60th year in the Software Products and Services Industry I am amazed that the question of the patentability of true inventions implemented in software has been discussed and debated for the last 50 years. And again, for the fourth time, it is before the Supreme Court. Many in the media are predicting its death e.g., Obituary for software Patents and Court Case Could Mean ‘Death’ of Software Patents while others just wish it e.g., “Will the Supreme Court Save us from Software Patents?”.

Much of this negativism is based on the poor job the US patent examiners have done in weeding out those many patent applications where the so-called invention is just one of the almost infinite, but obvious, ways one can automate a manual or semi-automatic process or procedure. But there are also true inventions that use a computer as part, or all, of the implementation of the invention. There is no reason to throw out the baby with the bathwater. So it is of utmost importance that we examine the many falsehoods related to software patents.

In this new article I intend to provide facts about software and the software industry to debunk these misnomers, myths, misconceptions, and just pure misunderstandings about “software patents”.

Misnomer: The term “Software Patent” is a misnomer.

Here’s why. There is a good reason why there is no legal definition of a software patent. Let’s look at the four examples of computer-related inventions (that I referred to in my previous article) which are an Artificial Retina invention, a Voice and Language Translation invention, a reading Machine for the Blind invention, and a Sorting System invention. These inventions can all be categorized as software patents because the specification (in the patent application) includes software as part of the proposed implementation. But let’s look closely at the Artificial Retina (Visual Prosthesis) invention.  The patent description included a pair of glasses attached to a video camera unit, a computer and software. If one looks at the Claims and Specifications in the issued patent the following can be seen. In the Claims section there are 12 claims and there is never a mention of software or a computer program. In the Specifications section of the Retina patent there are several mentions of where software is used in the proposed implementation, but there is never any computer program shown or any explanation of how the software would be implemented, except for two very high level flow charts consisting of  9 flow chart symbols. Most of the specification discusses how the information from a video camera is transformed into signals that are transmitted wirelessly to a receiver that is surgically implanted in and around the eye.

One would be hard pressed to call it a computer-implemented invention or that the patent is a software patent. But that’s how it could be classified because software is shown in the specification. In this example the inventor went from idea to a true medical device invention. Many medical device and prosthesis inventions use a computer and software in their implementation and such inventions have the potential of losing their patent protections with an adverse decision from the Supreme Court.

Myth: Software is mathematics, a mental process, laws of nature or abstract.

Not true. Wikipedia gives a solid definition of software and the words “mathematics, mental process, laws of nature and abstract” never appear in its description. It is an indisputable fact that there is no relationship of a group of instructions to mathematics, unless those instructions were performing a mathematical function out an almost infinite number of other possibilities. Nor is software a mental process, although software may simulate a mental process e.g., recognizing a face in a picture from a group of faces. It is also factual that software is not a law of nature or abstract any more than a computer circuit or computer chip is. These facts can be best illustrated by examining the six phases in the software product development life cycle: Definition, Design, Implementation, Delivery, Maintenance, and Enhancements. If you examine these phases, you will see how closely they resemble characteristics common to all manufacturing companies. During the definition phase software companies describe its functionality, its specifications, the environment in which it must operate, and its operating characteristics. During the design phase, it develops and defines all its interfaces, breaks down the functionality into modules, and does all the engineering so that the product can be properly implemented, maintained and enhanced during its lifecycle. During the implementation phase the software is debugged, tested, and goes through quality assurance. During the delivery phase there is alpha and beta testing, documentation, installation, and training. Often software companies OEMs (Original Equipment Manufacturers) the product to other companies where the software becomes a component of a larger system and is re-packaged. During the maintenance phase the company warrants its workmanship, and guarantees the correction of errors and defects. Finally, during the enhancement phase the software is improved, enhanced, upgraded, and new models (releases) are announced.

Note these terms indicative of a manufactured product … functionality, specifications, operational environment, operating characteristics, interfaces, modules, engineering, implemented, debugged, tested, quality assurance, alpha and beta testing, documentation, installation, training, OEM, component, system, re-packaged, maintenance, warrants, workmanship, guarantees, errors, defects, improved, enhanced, upgraded, and models.

 It is obvious that software and software products are not mathematics, a mental process, laws of nature or abstract.

Misunderstanding: Copyright protection can substitute for patent protection.

Not true. This is a common misunderstanding. Patents protect an inventive machine process, while copyrights do not. Any and all computer programs can be copyrighted, just like any writings can be copyrighted. But getting a copyright on a program has zero correlation with protecting an inventive machine process. Additionally, in a patent application a computer program is usually not shown in the description of how to implement the invention. Only high level flow charts depicting how to implement the software are required in the Specifications portion of the patent application. This confusion has existed for many years in this controversial debate about software patents (and about copyrights) because, as previously mentioned, the term “software patents” is a misnomer. Clearly, under patent law, only inventions can be patented. Not software or computer programs.

Misconception: Software has a short lifespan.

Back in November 2012 Forbes magazine had a three part article The Problems With Software Patents (Part 1 of 3) which began with the following Software has short innovation cycles” andmost software programs, and features of those programs, have an effective commercial life of only a few years.” This is a common misconception, but not true for successful software products. Most successful companies in the software product industry still actively market software products that were introduced 20 or more years ago. Examples are products from Oracle, CA, SAP, IBM and Microsoft. These companies continually upgrade their products to keep them viable. Because the Forbes author believed that software has short innovation cycles he also states that “software has significant first mover advantages” and “software lifecycles end before patents issue.” Both of those statements are completely false. Long lifecycles, in a competitive environment, are more representative of the products of thousands of companies in the software industry. These companies are part of the Software Products and Services Industry with annual revenues over $300 billion. Many of their software products are in the high-technology category and their marketability is greater than the 18 years of patent protection.

Conclusion

As many amicus briefs have advocated in the in the CLS Bank v. Alice case, the  Court should simply reaffirm as it has in the past, that including a computer and software as all, or part, of a specification in a patent application is perfectly permissible.

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Posted in: Computers, Guest Contributors, IP News, IPWatchdog.com Articles, Martin Goetz, Patentability, Patents, Software, US Supreme Court

About the Author

Martin A. Goetz was a pioneer in the development of the commercial software industry. He is widely regarded as the inventor on the first software patent ever granted by the United States Patent and Trademark Office, U.S. Patent No. 3,380,029. PBS Digital Studios profiled Goetz and his pursuit of the first software patent in the YouTube video below.

 

 


29 comments
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  1. Good article, but this is all redundant

    Sufficient is to say that a system implemented in software is fundamentally no different than any other system implemented using e.g. electrical circuits or mechanical gears

    it’s just a different way of implementing certain functionality

    if underlying functionality is inventive then it deserves a patent – that’s is all to it

    Why is this so difficult to understand to some people ???

  2. Mr. Goetz,

    I am disappointed that you inferentially proclaim yourself to be the final arbiter of the meaning of the noise bite that sounds out as “software”.

    Different people use that noise bite in different ways and indeed, among those many ways, and for some of those people who use it, the term refers to a mathematical modeling of how von Neuman or other data processing machines work where the modeling is divorced from the limitations of physics.

    Of course, lay judges and jury persons hear just one same noise (“software”) and they can’t distinguish between the 50+ shades of gray in which the term is used. They assume it is all one same thing.

  3. Dude-

    I wish this were redundant.

    I also wish I had an explanation about why some people just don’t get it. I guess some just want to pretend that it is the hardware that provides the magic and the software is wholly incidental. Of course, those folks would never think of instructing their auto mechanic to remove the software from their vehicles. I’m sure they also wouldn’t remove the software from the DVR. They probably don’t understand that their automatic coffee makers aren’t really all that automatic without software, albeit rather basic software.

    I also find it comically amusing that software patent critics proclaim that there is hardly anything special about software. I suppose in one sense that is correct since it so infrequently works the way it is supposedly designed to work, needs so many upgrades to fix bugs and patch holes. For a product that is simplistic software sure suffers from an awful lot of flaws.

  4. The explanation is easy, Gene (albeit no less frustrating).

    There are simply a variety of vested interests, from multiple angles, that would love to see patents greatly dissipated or outright banished.

    This attitude may come from a philosophical bent or a mercantile one, but the desired end result is closely aligned.

  5. It is rumored that the Eskimos have 50 distinct words for the different kinds of snow
    and yet we, in the industrialized, uber-computerized world have but one indefinite
    term, ‘software” for the hundreds of varied meanings that are intended by that singular noise byte.

    Rather than belabor the details here, I will try to expand on them at my own site with a post that alas is still under construction:

    http://patentu.blogspot.com/2014/03/the-fifty-shades-of-elephant-gray-that.html

    But as a quick example, the “configuration bits” that are loaded into a Field Programmable Gate Array (FPGA) are not instructions for a “computer” but rather they are controls for how reconfigurable signal routing wires are to be routed and how reconfigurable logic blocks are to be configured. It is indeed “software”, but never “executed” by a computer. So anyone who claims that all “software” is computer executed software is overstepping the bounds of reasonableness.

    By contrast, anyone who claims that all “software” is pure “math” is equally stepping outside the bounds of reasonableness.

  6. step back,

    Will you be completing construction soon?

  7. Anon, yeah, good question.
    Finding the time and energy to finish a daunting project is always a tough one.
    Which is why I’m grateful to Gene for all the energy and persistence he puts into keeping the this IPWatchPooch web site going. It’s much harder than it looks.

    Do you have any specific angle you want me to address? (i.e. software seen as math, which it could in some senses be seen as such based on the observer and their personal modeling of the universe and its workings)

  8. step back,

    The angle I would like to see is “Why

    Whatever you want to call it, whatever 50 shade of gray (um, you should Google “50 Shades of Grey”), why is the item created?

    If the item is created for a utilitarian purpose, then (to me) it falls into the scope of why we have a patent system. For any of the shades for which no utility is found, then those shades (for simplicity, as I firmly believe that many more shades will have utility) should be labeled something else.

  9. Anon,
    Some people simply don’t care to know why or how (e.g. the “software” stuff is created and used).
    All they care is that they get theirs (never mind what that even means)
    and that they get “it” for free.

  10. Thanks step back,

    I think that anyone involved in law in this area necessarily must care about the law, why it exists, and what its purpose is.

    This is not to say that I disagree that many simply do not care – as you correctly indicate.

    I am all for a balanced and reasoned airing of opinions – but do feel that those that cannot be bothered to be informed should not be surprised that their opinions are given little weight. Those that purposefully scorn being informed should be treated harshly. Those that purposefully misinform, well…. not to be overly dramatic – ok, to be overly dramatic, Matthew 7:15 comes to mind.

  11. Anon,
    I have this deep suspicion that too many a people are so (French word) incompetent in various areas of debate that they don’t realize they are incompetent. They just love the sound of their own voice and they love making chirping noises to the other birds (sorry for offending bird kind) or making barking noises to the other dogs.

    (BTW construction of web link at comment #5 is now more complete –don’t forget to click on Paul at its end)

  12. step back,

    I have to wonder if you and my lower case namesake have similar, um, chemistry… (given the chemical components analogy often used).

    I also think that my “Why” focus answers any chemistry questions just as well.

  13. Anon:

    No connection between me and little “a” anon.
    I was not using the word “chemistry” in the sense of asking whether isolated chemical compounds are patent eligible.
    Rather, I was pointing out that words like “chemistry”, “software”, etc. are all very ambiguous and imprecise and not well suited for our “modern” high tech society.

    For example, I might ask you if “flying things” are patent eligible?
    Your knee jerk reaction may be to say, absolutely yes, ALL things that qualify as “flying things” are patent eligible.

    However, I may then point out that Dumbo the Elephant (a fictional cartoon character) qualifies as a “flying thing”. The latter terminology is too loose, too ambiguous and that allows people to play word games with such terminology. “Software” is yet another example of terminology is too loose, too ambiguous and one that allows people to play word games with it.

  14. Anon:

    I have intentionally not responded to your “Why?” point.

    This is so because the people who hate “software patents” generally do know even what a “patent” is let alone what makes one patent a “software’ one and another not so much.

    All they know is that they have been trained (brainwashed) to emotionally hate the phrase “software patent” and that is their irrational, purely emotional reaction each time the Pavlovian dinner bell rings.

  15. step back,

    @5 I have worked with FPGA designers and I have never heard them refer to the file downloaded to the array as Software. I have heard them refer to the VHDL as software like or quasi software, not because it runs on a computer but because it is compiled like a programming language. So as a generialisation, most people would understand that software runs on a computer.

    I fully appreciate that software can also be implemented in hardware i.e. using AND gates and OR gates and NOT gates. However, good luck trying to explain to a court that Boolean Algebra is not an abstract idea.

    /ikh

  16. ikh:

    The bits stored in a general purpose “file” on a computer hard disk are “software” because they can be easily changed.

    That is a major difference between “hard” ware (hard to change) and “soft”ware (easy to change).
    The beauty of an FPGA (or CPLD or other reconfigurable logic chip) is that it is easy to change by simply changing the configuration bits, the “soft”ware part of the programmed PLD.

    If all software was, by definition only computer-executable software, there would be no phrase such as “computer software” because that would be an unnecessary redundancy. But it is not a redundancy because “software” refers to the more easily changed 1’s and 0’s that are loaded (stored) into a machine and that change the behavior of the machine. The configuration bits of an FPGA configuration file do exactly that.

    Boolean Algebra per se is an abstract idea.

    The fact that engineered electronic circuits (i.e. FPGA’s) appear to obey those Boolean rules is no mere coincidence or natural phenomenon but rather the result of the intentional skill of engineers in fashioning the electronics to appear to mimic Boolean Algebra.

  17. step back,

    As a Computer Scientist and Software Engineer I am familiar with the definition of Software and Hardware and we could add for completeness Firmware ( ROM, PROM, EEPROM ) etc being between hard and soft in difficiulty to change. And of course Vapourware :-) a computer product that is announced but never arrives.

    Whilst I thnik that software is generally taken to mean Computer Software I am not particularly interested in argueing the point and will therefore accept your qualification.

    All computer software can be expressed as Boolean Algebra and Boolean Algebra is an abstract Idea, then it follows that computer software is an abstract idea.

    /ikh

  18. No.

    It follows that you do not follow rules of logic.

    The entire world or Universe can be “expressed” using poetry or oil paintings or music or other forms of human-developed means of “expressing”.

    However, ‘the map is not the territory'; the French philosopher’s painting of a smoking pipe is not the pipe; and the electronic state changes stored in a RAM or EEPROM that provides the electrical config bits to the FPGA are real physical things rather than being some abstraction used to model them within an abstraction world, be it Boolean or poetry or what have you. Time to get “real”. ;-)

  19. ikh

    I didn’t mean to beat up on you.
    It may very well be that you have hit upon the corner stone of misconception between what computer science folk believe that patents “claim” and what the patents in reality actually do claim.

    We almost never claim the map in place of the territory or the painting of the pipe in place of the physically real and actual pipe itself.

    Thanks for flushing out that perhaps subtle but definitely important difference. :-)

  20. step back,

    If that was being “beaten up” it was very gentle :-).

    As a Computer Scientist and Software Engineer I am, after all, some what of a Simpleton ;-) so I find you use of metaphor a little to abstract for me :-). Plain English and simple examples are much more to my taste.

    A couple of questions.

    1) Are you saying that computer software is patentable as a machine or a process?

    2) If I design my software using Boolean Algebra and implement it using discrete gates that I buy from Tandy/Radio shack. How is this patentable subject matter and not the implementation of an abstract idea.

    /ikh

  21. ikh:

    First off, words are funny things.
    I have no idea what you mean based on the phraseologies you have chosen.

    There is a concept in patent law that used to be called “statutory subject matter” but is now referred to as “patent eligible subject matter”.

    The US Congress passed a law. Here it is in black and white:

    35 U.S.C. 101 Inventions patentable.
    Whoever invents or discovers ANY new and useful [1] process, [2] machine, [3] manufacture, or [4] composition of matter, or ANY new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    If you claim a “machine” that is new and useful, it is patent eligible.
    If you claim a “process” that is new and useful, it is patent eligible.
    If you claim a “manufacture” [e.g. computer readable medium which is programmed] that is new and useful, it is patent eligible.

    To phrase the question and answer in any other way is to ignore or violate the law.

  22. 35 U.S.C. 103 … Patentability shall not be negated by the manner in which the invention was made.

    I don’t care how you got to the stage where you have your new and useful machine, process or manufacture. If you used a Wiji borad in place of Boolean Algebra fine, The law says it’s a non-issue.

    Almost all inventions are composed of old parts. The use of Radio Shack chips is also a non-issue.

  23. ikh,

    In plain English, and borrowing liberally from my namesake,

    1) software may be patent eligible under the patent eligible category of a manufacture. Software systems may be patent eligible under the patent eligible category of machines. Use of software/software systems may be patent eligible under the patent eligible category of processes.

    2) Your question is flawed. You present an “either/or false dichotomy” style question in which the correct answer is not an “either/or” answer. The correct answer is that your software may be patent eligible under the patent eligible category of manufacture, and it is well recognized that patent eligible manufactures routinely are composed of elements already known in the art and further implementations of abstract ideas clearly can easily rise above the patent eligible exception for claiming an abstract idea.

  24. Anon,

    Thanks for the plain English. It is very much appreciated.

    So, my computer software is Boolean Algebra making it an abstract idea. It is implemented in Boolean Algebra which seems to me to preclude it being patented as a machine.
    The example used by step back of computer software written to media can not apply to this example because it is implemented in hardware.

    So I don’t see how it can be patent eligible subject matter.

    /ikh

  25. ikh,

    Your computer software is not Boolean Algebra. Software is not math.

    “Implemented in” and “is” are not the same things. You ask me for plain English, and I return the request: use plain English to describe the work product differentiated from the work tools.

    In plain English, you are misrepresenting what software is. Whether this is done on purpose, or through a belief system, I do not know, nor in truth, do not care all that much. You are not grasping what I and others have told you: software is a manufacture.

    Just as the map is not the land, what you are mapping in your head ‘as software’ is not software. You are not paying attention to what step back has told you. Read again the comments here. You ask for plain English, then ignore that plain English. You want others to use plain English, then you refuse to use plain English yourself.

    Tell me where any software has not been ‘implemented in’ some type of ‘hardware.’ You can think about software all that you want. You can even formulate bits and pieces of it totally in your mind. But what is in your mind is not software. It is the idea of software. My namesake on another blog uses a copyright analogy, while imperfect in its totality, works well for certain points. Can you tell me in plain English, do you think that your software earns copyright protection? There is one certain and explicit requirement for copyright protection that takes the ‘thinking about software totally in the mind’ and changes it into something that earns legal protection. In plain English, you are attempting to portray software as something that it is not.

    step back,

    I agree with you that software is a term that is unwieldy. Part of the problem is exemplified by ikh here: the dogmatic belief that their thinking is something that it is not. A belief that software patents will prevent them from thinking. Such is not, nor ever has been, the reality of software patents. Where that belief system breaks down is that very next step of taking those thoughts and creating a manufacture with them. It is the manufactures that are prevented by software patents. This relates back to my ‘why’ point. When a manufacture is created for a specific utility, a thing is created and that thing is no longer merely a thought totally in someone’s head. The fact that I may still be able to think about a manufacture in my head (for example, the beautiful antique oak table that I sit at with my laptop and morning coffee) does not change the fact that the manufacture is very much real.

    In other words, all the math that exists in the mind remains free, but applied math (i.e. engineering) is no longer free because it has been applied to a ‘why,’ an intended utility within the sphere of the Useful Arts meant to be protected by patents. That is why I proposed the ‘why’ distinction. Take that which is without utility and remove it because people are purposefully trying to confuse things.

  26. Anon,

    When a human being wishes to analyze a piece of software, that human may in his brain “model” what the software does by using the abstract concepts of Boolean Algebra.

    However, that act of modeling or mapping the software into the abstract realm of Boolean Algebra does not move the software itself into the abstract realm of Boolean Algebra any more so than studying a 2D map of a geographic terrain moves the physically real terrain into an abstract 2D Euclidean world.

    ikh appears to consistently confuse the map for the territory and vice versa.

    The map versus territory example is the seminal analogy used by existentialists to understand the difference between reality and our human perceptions of reality.

    See for example:
    http://aminotes.tumblr.com/post/3482612234/map-territory-relation-a-brief-resume

  27. step back,

    I am already in your choir.

  28. Yeah.
    But the choir is very small.

    Consider the bat-sh8 that comes out from supposedly rational papers like the NYT:

    ” Compared with patents for other innovations, those for software are granted using a very broad and lax standard of invention. Ordinarily, the law requires inventors to explain not just the result of an invention, but also how the invention actually works. If you invent a car that drives on water, you have to explain exactly how you get it to stay afloat. Not so for software: the mere idea of a floating car is enough.”

    http://www.nytimes.com/2014/03/29/opinion/slowing-the-patent-trolls.html?hp&rref=opinion&_r=0

    (Supposedly authored by an IP aw professor !!!)

  29. step back,

    As noted on another thread, Prof. Feldman’s views should not come as a surprise. The Left, as represented by the Ivory Tower and academic intelligentsia have a visceral distaste for the object of any type of personal property.

    You may enjoy perusing the records of the red scare of the 1950’s. While the rhetoric was often overheated from both sides, one thing that has come out as fact was that the academic system was not only the target of infiltration of socialist/communist beliefs, but how deeply that infiltration was actually achieved.

    It is also well-known that the academic community is not a meritocracy, nor is it an open system. One advances in that system by how closely one mirrors the beliefs of those in power and further advocates that belief system. The system itself spawns a dangerous and recklessly incestuous captured culture that witnesses far too little academic rigor on what academia itself pursues and advocates.

    They say that politics makes strange bedfellows and there is no greater evidence of this than in the politics of innovation, where the legal tools of intellectual property intersect with the machinations of the various philosophical camps. We live in the heart of interesting times of such ardent socio-political battles. To me, the reality of the battle is actually under-served by the rhetoric. Jaded we have become by the screeching from all sides, and in that sense of jaded whatever-ness lies the true danger of apathy, the danger that whatever is passed as law, however that law comes to be written, just does not matter.

    I agree with you that the choir is too small. But we need to stop preaching to the choir. We need to amend not just what our message is, but to whom we are targeting that message.