Preface: This article reviews the 50 years of controversy on software patents. Because there continues to be a cloud over computer-implemented inventions, the article makes the argument, through indisputable facts, that computer-implemented inventions are no different from inventions that have been patented since the beginning of the Patent System in 1790. Finally, the article reviews three innovative patented computer-implemented inventions and explains why the phrase “software patent” is meaningless.
Prior to the advent of the general purpose digital computer in the 1950’s IBM dominated the punch card industry. They employed many IP lawyers and often led the US in the filing of patents each year. Many of these patents, like the IBM Punched card Sorting Machine, were electro-mechanical machines containing electronic circuity.
By the mid 1950’s and into the 1960’s, IBM started replacing, or complementing punch card equipment, with general purpose digital computers and bundled a limited number of computer programs with their computer. Much of that software was developed under contract by a handful of independent software companies that had formed in the 1950’s and early 60’s. Applied Data Research (ADR), my former company, was started in 1959 and was one of those companies.
In 1965 when the term “computer programs” were not yet called “software”, President Johnson was asked by a Senate Subcommittee to establish “The President’s Commission on the Patent System”. A final report called “Report of the President’s Commission on the Patent System” provided thirty five recommendations. One of their recommendations was on computer programs.
As shown on page 12 the recommendation on computer programs was:
The classes of patentable subject matter shall continue as at present, except:
A series of instructions which control or condition the operation of a data processing machine, generally referred to as a “program” shall not be considered patentable regardless of whether the program is claimed as: (a) an article, (b) a process described in terms of the operations performed by a machine pursuant to a program, or (c) one or more machine configurations established by a program.
On Page 13 under 3. it added…
Programs: Uncertainty now exists as to whether the statute permits a valid patent to be granted on a program… It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright law for programs is presently available.
That proposed recommendation, which was never enacted by Congress, set the seeds for this 50 year controversy.
It is unbelievable that the Commission concluded in 1966 that “the creation of programs has undergone substantial and satisfactory growth”. At that time there was no software industry and IBM and other computer companies were bundling a limited number of computer programs with their mainframe computers. For a detailed review of how IBM in the 1960’s and early 70’s tried to inhibit the emergence and growth of the independent software industry click and read Pages 233 and 234 from the book Information Technology Law: The law and Society.
In 1965, ADR on my behalf filed a patent application for a Sorting System and I received the first software patent in 1968 for an innovative way to sort large amounts data on a computer that had tape drives that could only read and write data in a forward direction (See Patent # 3,380,029). Computerworld, a computer publication ran a headline on page 1 “First Patent issued for Software, Full Implications Are Not Yet Known.” The Sorting System patent was dubbed a software patent but it could also have been a computer hardware patent. It was dubbed a software patent solely because the preferred implementation (the disclosure) was a logic chart and diagrams (which was recognized by the patent office as a proper disclosure). My Sorting System patent would not have been controversial if the disclosure had been electronic circuitry since there were many hardware patents for sorting data on special-purpose computers and special apparatus.
Fortune magazine in their August 1968 article “Unprecedented Patent” wrote “It was the first software patent granted in the U.S.—and it touched of a thundering controversy.”
From 1968 through 1980 ADR filed Amicus briefs in the Prater & Wei, Benson, Johnson, Flook, and Diehr cases in which we argued that a machine process patentable in hardware (electronic circuitry) is equally patentable in software. Here is exactly how we posed a “Question of Law” in our 1980 Diehr brief:
Whether a computerized machine or industrial process that is patentable subject matter under 35 USC 101 when constructed with a hardware program (wired circuits) would also be patentable subject matter when constructed with a stored computer program (i.e., firmware or software)?
Had that question been debated publicly, instead of “Is Software Patentable?” the controversy may have ended much earlier.
As the years rolled by, and with the advent of the PC and computer chips, more and more patent applications had software descriptions in the Specifications section of the patent application. By 2011, patents related to software made up more than 50% of all issued patents” according to a 2013 GAO Report.
Fast forward to October 2016. Unfortunately, the controversy continues.
For instance, in the recent article The Current State of Computer Software Patentability the author concluded…
Each of the above four post-Alice cases (DDR holdings v. Hotels, Enfish v. Microsoft, Bascom v. AT&T, and McRO v Bandai received tremendous attention from the intellectual property community because each provided helpful guidelines to determine (and assert) patent eligibility for software inventions. It has been, however, a “mixed bag.” Each of the four cases garnered hope that intellectual property protection for software was available within a rather bleak-looking landscape.
And in the latest Federal Appeals Court decision in Intellectual Ventures v. Symantec Judge Mayer’s, in his concurring opinion, wrote (Page 6)…
Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents.
Also see Software patents are ‘deadweight loss’, says Federal Circuit for additional comments by Judge Mayer.
But such hysteria should not discourage inventors that describe software as part of the Specifications in their patent application. The seven facts below should give those patent seekers the confidence that if their application contains a true invention, along with a software description in its disclosure, it would not be the basis for denying a patent by the Patent Office
Fact 2: Computer programs and electronic circuitry diagrams can be protected by copyright, not by patents.
Fact 4: Electronic circuits (hardware) and software programs are logically equivalent. In Hardware/Software Tradeoffs: A General Design Principle? the abstract states “the decision to put certain features in hardware and others in software is based on such factors as cost, speed, reliability and frequency of change and “Today’s software is tomorrow’s hardware, and vice versa.”
Fact 5: The USPTO 1996 publication Examination Guidelines for Computer-Related Inventions stated “the procedure office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in hardware or software.”
Fact 6: In the 1981 Supreme Court case the Court wrote “the claims of Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer
Fact 7: In the Alice unanimous Supreme Court 2014 decision the Court wrote that “inventive concepts are the basis for a patent” and “improvements to another technology or technical field” and improvements to the functioning of the computer itself” were examples of patentable subject matter.
Here are three examples of three computer-implemented inventions that are very different. The three could be designated as “computer-implemented inventions” or they could simply be described as a digital mouse patent, a medical device patent and a voice patent. What they all have in common in that there is a software element in the Specifications of each patent.
Example 1: The Digital Mouse Patent: This example, patent US7683883, was issued on a 3-D mouse and game controller. In the Specification (the disclosure) the inventor states “While this invention is described in terms of the best mode for achieving this invention’s objectives in a particular application, it will be appreciated by those skilled in the art that variations may be accomplished in view of these teachings without deviating from the spirit or scope of the present invention. For example, the present invention may be implemented using any combination of computer programming software, firmware, or hardware.”
So should this invention be designated as a software patent, a firmware patent, or a hardware patent? Obviously, what is significant is that it is a real invention; that it is a contribution to the state-of-the –art; and that the claims are appropriate for the claimed invention. In the US as long as there is a proper disclosure on how an invention can be implemented it is acceptable to the patent office if the disclosure is adequate for one skilled in the art. And under the USPTO guidelines the Specification in the patent application need not be even be the best mode for implementation. See “Best Mode Requirement”
Example 2: The Medical Device Patent. In this example of the Argus II Retinal Visual Prosthesis invention, the specification included a pair of glasses attached to a video camera unit and a computer and software. A miniature video camera housed in the patient’s glasses sends information to a small computer worn by the patient where it is processed and transformed into instructions transmitted wirelessly to a receiver that is surgically implanted in and around the eye. The signals are then sent to an electrode array, attached to the retina, which emits small pulses of electricity. These electrical pulses are intended to bypass the damaged photoreceptors and stimulate the retina’s remaining cells to transmit the visual information along the optic nerve to the brain. Photoreceptors are light-sensitive cells (neurons) in the retina that convert light energy to neural impulses. The photoreceptors are as far as light gets into the visual system. The invention was awarded a special patent #8,000,000 by the USPTO and Time Inc. named the Argus II artificial retina one of the best 25 inventions of 2013.
Although software is mentioned in the Specification, that software was not the inventive part of invention and was not described in any detail in the disclosure of the Artificial Retina invention. So there is no reason to call this patent a software patent or a computer-implemented invention.
Example 3: The Voice Patent: Back in November 2012 Microsoft stated in a press release “Microsoft researchers have demonstrated software that translates spoken English into spoken Chinese almost instantly, while preserving the unique cadence of the speaker’s voice—a trick that could make conversation more effective and personal.” In 2016 Microsoft received a patent for Voice Generation with Predetermined Emotion Type which I believe reflects the “unique cadence of the speaker’s voice” and was based on the extensive research in their research labs, A shortened description of this patent shows the complexity of this computer-implemented invention.. But this is clearly a computer-implemented invention when it is stated “The disclosure relates to computer generation of voice with emotional content.”
Hopefully, these three examples will demonstrate that when one gets a patent, it is not on a program and it is on an invention.
The lower Courts and the Mayo test have exposed many invalid patents that were issued over the years where there was no invention—and just the obvious use of a computer to automate an application or process. And in a University of Maryland Software Patents: A One-Year Review of Alice v. CLS Bank study “out of roughly 240,000 current patents in force related to computer-implemented inventions as of 2015, about 199,000 of those would likely be invalid patents under Alice, leaving about 41,000 valid patents. In December 2014 the Patent Office gave guidelines and examples of what is patentable and what is not patentable and in July 2015 it came out with an additional update on subject matter eligibility. Also see The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility.
So there is no reason to believe that today’s patent examiners are rejecting new patent applications that may have a software description in the disclosure at any greater rate than non-computer implemented applications because of their requirement to use the Mayo test. And In recent testimony before a House Judiciary subcommittee USPTO Director Michelle K. Lee said her office has taken numerous steps to improve the work of its more than 8,000 patent examiners.
As far as the Software Industry, it is alive and well. According to Statista, “In 2010, the packaged software vendors had revenue of 316 billion U.S. dollars worldwide.” For 2015 they are forecasting 430.9 billion dollars.