On March 25, 2013, I spoke on the record with Eric Gould Bear (left) about software innovations, software patents and the trials and tribulations of litigating software patents long after they were first written.
Bear is an inventor on over 100 patents and patent applications in the software space. He has spent over 25 years working with numerous Fortune 500 corporations with respect to assisting them in the creation of new user experiences. He is also a founder of the design studio MONKEYmedia, which recently launched a patent infringement lawsuit against Apple that we will discuss in Part II of the interview. MONKEYmedia also has litigation pending against Sony, Disney and others. And on top of all of this, Bear is a testifying expert witness for patent infringement cases. Simply, there is little in the software/patent space that Bear hasn’t seen or been a part of over his career.
In Part I of our conversation, which appears below, we discuss the journey from ideas to designs that sit in the path of disruptive technology and could realistically be useful 5, 10 or more years down the road.
Collecting the information necessary to prepare a patent application covering a computer related invention can be quite challenging. Typically, most computer related inventions today relate at least in some way to software, which is at the core of the challenge. This software challenge stems from the fact that the software code is not protected by patent law, but rather how the software operates is protected. This means that the description needs to be one that can be replicated by others regardless of how they choose to write code to accomplish the necessary tasks.
A patent does not need to be a blueprint, but it needs to direct. For example, you do not need to provide the code for the scripts, although that is certainly one way to make sure it is described adequately, and perhaps something you may want to consider if you have a working prototype that you want to protect (more on this later).
Generally speaking, the goal is to provide enough description so that someone who is “skilled in the art,” which is a legal term that refers to those who would be expected to possess the knowledge and understanding appropriate to comprehend the invention, can make and use the invention after reading the patent application. In order to satisfy the patent law description requirements the explanation of the software in a patent application must give the programmer enough information to be able to sit down and know how to write the code having only read the description contained in the patent application.
On Friday, April 12, 2013, I was at American University Washington College of Law for a program titled Patent Subject Matter Eligibility Today: Software, Genomics, and Business Methods. I participated on a panel titled CLS Bank en band: Are Software Methods Patentable? What I want to write about today, however, is not our panel presentation, but rather the Keynote presentation by Suzanne Michel (no relation to Chief Judge Michel), a former deputy director of the FTC who is Senior Patent Counsel at Google, Inc., working in Google’s policy office in Washington, DC.
It is no great surprise probably, but I disagreed with practically everything she said, although I did enjoy her presentation. I love to debate the issues, and she is extremely knowledgeable and well briefed on what is happening in the trenches. Those of us who disagree with the proffered narrative that the patent system is broken can’t ignore competent advocates like Michel. She is not a patent-hater and her message is sharp, crisp and clear, although I do think it is misleading. The patent system is not broken, and for reasons I can only guess the best and brightest leaders in much of the big-tech industry are pursuing paths not calculated to succeed; at least if the goal is to stem the rise of patent litigation and innovate for the future.
With this in mind, what follows is a summary of Michel’s presentation, which if not titled was certainly themed — Fixing Problems of the Patent System to Improve Innovation. I also provide my thoughts and comments in the format of comments from the peanut gallery, or perhaps as a patent law equivalent to Mystery Science Theater 3000. In order to differentiate my thoughts/comments from Michel’s presentation, my comments are italicized, colored, indented and tagged with the IPWatchdog logo.
On Friday, April 12, 2013, i will be at American University Washington College of Law for a program titled Patent Subject Matter Eligibility Today: Software, Genomics, and Business Methods. I will be participating on a panel that begins at 10:15am, which is titled CLS Bank en band: Are Software Methods Patentable? The event is free to attend. To register to attend you can visit WCL Event Registration.
Topic for Discussion
The following is what our panel will discuss regarding application of Section 101 to software:
(1) For many years, a large segment of the software industry viewed patent protection as inappropriate for software, relying instead on a mixture of copyright and trade secret law. At a high level, should software be patentable?
(2) Two common criticisms of software patents, as compared to patents in the pharmaceutical and biotech sectors, are (a) the relatively low cost of invention; and (b) the relative ease of implementation. Are these the right factors for us to be considering for purposes of inventiveness?
One of the things that makes protecting computer related inventions tricky is that first you have to define the invention, and defining the invention is not something that is altogether easy when the invention is a computer process or relates to software. Sure, it is easy enough to define a list of desired functionality, and if you have some computer programming skills it is easy enough (after investing the requisite time) to write the code that will enable the functionality, but that which can be protected via patent lies somewhere between the desired functionality and the code, making the defining of the invention rather elusive for some, particularly those who are new to the patent arena.
Further complicating the matter is the reality that over the last several years the law of patent eligibility in the United States has been in flux. It did become largely settled with respect to software and business methods thanks to Bilski v. Kappos, which was decided by the United States Supreme Court. This case left the industry with the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter. The Supreme Court determined in Bilski that the machine-or-transformation test is not the only test for patent eligibility, but rather that it was an important clue. But what exactly does that mean?
On January 21, 2013, I interviewed Manny Schecter, Chief Patent Counsel for IBM. In Part I of the interview we discussed IBM’s commitment to remaining the top patenting company in the United States, their commitment to research and development and the process by which decisions are made on what patents to keep and which to let fall into the public domain.
In Part II of the interview, which is the final segment, we discuss how IBM keeps a watchful eye on the industry to learn from the mistakes of others, what the conversion to first to file will mean for IBM patents, how Watson is being deployed and David Kappos leaving the USPTO.
QUINN: Let me pick up on that for a minute. As you know we talk about this with some frequency, and I’ve always been interested in the IBM model because it’s successful. And I always try to tell small business, why would you ever try and pick a company that has not been successful and imitate them? And one of the things I keep thinking about more and more lately — I wonder whether one of the tricks in life and in business is to create systems of infrastructure that in some way save you from yourself. Realizing what you just said that even Babe Ruth is going to strike out. So even IBM no matter how careful you guys are are going to make some mistakes. But if you have the infrastructure in place and the processes and procedures in place to guard against that and to give you a longer horizon to let things develop, as the result of process you’re going to minimize those mistakes.
Manny Schecter is Chief Patent Counsel for IBM, and someone who is always willing to take a pro-patent, pro-innovation position. For example, on Saturday, January 26, 2013, Schecter tweeted: “Mechanical logic = patent, electric circuit logic = patent, but no patent for software logic? Makes no sense – would be going backward!” Indeed, I agree with Schecter wholeheartedly. The patentability of software is one of the things I spoke with him about when I interviewed in on January 21, 2013.
The point of the interview was not to discuss software specifically, but when the conversation turned to how IBM is deploying Watson, the genius computer that dominated Jeopardy, the topic of software patents came up. What provoked my request for an interview, however, was news that for the twentieth straight year IBM has been the top patenting entity in the United States.
Whenever there is interesting IBM news of a patent variety Schecter has been gracious enough to make time to chat. The news of IBM’s patent supremacy wasn’t just any run-of-the-mill news, at least not in my opinion. The commitment to innovation and belief in the patent system has served IBM well for many decades, and twenty years as #1 at anything is astounding in a world dominated by parity and antitrust regulators that don’t want any single company to succeed too much.
Typically blog roll links are not helpful to a website's rank. To give some additional "link love" to those we think you might be interested in reading we have moved our blog roll and links to a dedicated page. Go to IPWatchdog Blog Roll & Links.