Why Not Allow Software Patents?

By Gene Quinn
November 14, 2008

As many of you undoubtedly already know, the United States Court of Appeals for the Federal Circuit decided two weeks ago that software should be patentable if and only if it is tied to a machine.  The case, In re Bilski, asked the Federal Circuit to determine if a purely mental business method was patentable, but the Court decided to write a decision that brought into question the future of software patents.  There is no justification for the Federal Circuit doing this, and in fact most of the Court’s opinion is not actually the law moving forward because all the did was pontificate about a matter not necessary to reach a resolution, so if district court judges do what they are supposed to do legally they will simply ignore the Federal Circuit’s determination that software can only be patented if it is tied to a machine.  Hopefully that is exactly what will happen, but I have my doubts.

Let me be perfectly clear. Patents will continue to be applied for to attempt to cover software.  I foresee no fewer applications, but it is clear that each application will require far greater detail and much more attorney time. So the Bilski decision will do nothing for patent attorneys other than create more opportunity for revenue. Bilski will turn into something of a full employment act for patent attorneys and agents who work in this space. But just because the decision will be good for business, at least the patent attorney business, doesn’t mean that it is a good or wise decision. The decision was unnecessary and violates any norms of conservative judicial philosophy and instead supplants restraint for activism, which is unwise in my opinion.  All the Bilski decision will do is make it more costly for entrepreneurs and small businesses to protect the assets they create, thereby helping those who have achieved market dominance to maintain that market dominance.

What is the harm in allowing software patents?  Isn’t the problem that patent offices, particularly the United States Patent Office, are increasingly doing a poor job of finding relevant prior art and weeding out what is new and non-obvious from what is old and obvious? If prosecution were more meaningful, what is the harm in granting software patents? I see none because there is none. We should not tolerate intellectual dishonesty because it is expedient. The trouble is that patents are being granted on “inventions” that are not new or which are obvious. The problem is not that software presents an inherent evil.

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As far as I am concerned saying that software is not patentable subject matter is akin to saying that a car battery is not patentable subject matter. No one could seriously argue that a new and non-obvious car battery would not be patentable subject matter. In fact, that is exactly what many researchers are trying to find right now, albeit not the same type of car battery that we are used to inserting under the hood. You see, the car itself is just a bunch of pieces of metal that sit there fastened together to create a tangible shell that has taken on an identifiable structure. The car has lots of potential, but without some kind of fuel it doesn’t even have potential energy. It merely has potential to move from place to place under appropriate conditions. Hardly something that is useful in any real world sense of the word.

Lets assume that our hypothetical car is loaded with fuel, wired up appropriately and we can even give it an XM radio receiver for good measure. None of that will do anything other than make the vehicle more expensive. There is still no potential or use for the vehicle. What transforms this otherwise magnificent machine (or Ford F150 as the case may be) into something special is the battery. It is the battery that allows the vehicle to start and to play the XM radio receiver, which is particularly important when you are trying to listen to Mik & Mike in the morning on ESPN Radio. So it is the battery that brings everything together.

Of course, there are other components of the car that are required to create the magic, so lets not get to far off with the illustration. But hopefully you can see where I am going with this. A computer is just a bunch of metal, plastic, wires and various other parts that has the potential to do something, but which never will do anything, without software to create the spark. The computer itself is merely a means to operate software, and this point really cannot be challenged in any serious, logical and honest way. Who wants a computer without software? Exactly no one! So why then does our patent system require us to act like it is the computer that is the revolutionary aspect? I just do not see the mileage in ignoring truth and living by some fiction that is thrust upon us.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 5 Comments comments.

  1. step back April 12, 2009 5:31 am

    “The computer itself is merely a means to operate software”

    Gene,

    I really like most of what you say here and hope you don’t mind if I lift some of it for responding to a Bilski rejection at the USPTO.

    However, when it comes to the above-quoted statement, I must vehemently object. A programmed computer is not the same physical structure as the apparatus with all its memory locations zeroed out or filled with random 1’s and 0’s. In fact there is a question as to whether you could justifiably call such a pile of metal and silicon a “computer” given that it won’t usefully “compute” anything. It will just convert electricity into heat energy. Thus the thing should be called a toaster or an electric heater, not a computer.

  2. Jamaal July 3, 2009 6:29 pm

    I have to disagree with you, “step back,”

    In my profession, I am often handed a computer with absolutely no information in its memory. I am told what my employers want it to do, and then I begin a thought process about how that thing could be done by a computer. I record, then refine this thought process as much as possible, in preparation for putting the recorded thought into a form that the computer can consume. After I have put it into this form and fed it into the machine, I clarify my thought process and correct the record until the computer can accomplish my goals exactly.

    If the thought process included an “interpreter,” I can then do the same process again with one difference: instead of rendering the thought into a form that a standard form that the computer can consume out of the box, I have installed the interpreter to allow the computer to understand a form that is situationally preferable to me, so I can render it to that. And that can also be an interpreter. Sooner or later, the situation gets to the point of end user software (unless the software is intended to control other machines), where I am basically installing an interpreter of another name that tries to determine your thought processes, especially whether you were trying to express “rhythm” when you typed “rithem.”

    The computer has the ability to do this when it is first plugged in, we just haven’t asked it to yet. Desiring and asking doesn’t add to what it can do in any way. Saying that a computer is useless before it is programmed is akin to saying that a chair is useless before it is sat in. It’s philosophically an argument against all patents _excepting_ method patents.

  3. Gene Quinn July 3, 2009 10:24 pm

    Jamaal-

    If the computer has the ability when it is first plugged in then why does it need software at all? Perhaps you have stumbled on a truly innovative computer, namely one that does not need software in order to perform.

    Your chair analogy is not the best one. A chair can perform a function as a result of its structure and without any additional assistance. A computer, on the other hand, cannot. If you doubt this put together a computer, do not load an operating system, and then try and do something simple like send e-mail or surf the web. I think you will find that your computer has a real tough time doing even simple tasks without a lot of further assistance. The chair, on the other hand, operates fine immediately and requires nothing addition in order to function.

    -Gene

  4. Jim Selover November 24, 2009 3:07 am

    My problem with patenting of software is very basic. For the patent system to work, everyone MUST play the patent game. Otherwise the system is ripe for exploitation by only those that choose (and can afford) to play. How are prior art searches performed by the Patent Office? How can they possibly search software that was never patented? Does the fact that a big company has more money to spend on patents than a small company justify the big company’s ability to obtain and patent the smaller companies ideas? Is that how the patent office ‘encourages innovation’? There are many, many startups with original, innovative ideas that cannot afford to play the patent game. Your assertion: “All the Bilski decision will do is make it more costly for entrepreneurs and small businesses to protect the assets they create, thereby helping those who have achieved market dominance to maintain that market dominance.” is similar to my opinion. My opinion is that it is already too costly for many entrepreneurs and small businesses to protect the assets they create using the patent system. Patent applications themselves may not be expensive to submit, but defending any resulting patents is far too costly for most companies outside the top 500 to even consider; therefore, those small companies have little realistic choice except to skip the whole process and hope they are not sued over technology they were first to create.

  5. Gene Quinn November 24, 2009 10:05 am

    Jim-

    Much of what you say is right on target. The Patent Office cannot search much because it was never patented, but I think you are missing the bigger picture. Large software companies never (or almost never) enforce their patents against others with patents. To the extent that software patents are enforced it is small businesses suing large companies, not the other way around. Large companies do bully many software companies, but the ones who are bullied are the ones who have decided they did not want to obtain software patents themselves. So they have followed a business plan that ensures bullying, that is hardly a problem caused by the Patent Office or the government.

    You are not correct when you say that enforcing patents is too costly for most companies to consider. Once upon a time that was certainly true, but today there are an ever increasing number of litigation firms willing to take patent cases on a contingency basis. At this point if you are not able to find a law firm to take the case on a contingency basis it is because the case is not very good, the patent is not very strong or there is no likely infringement. A small company that is being infringed by a large company is the darling of the contingency fee litigators.

    Small companies do not have a realistic choice to skip the whole process, and when they do that they ensure that they will be targets and never anyone to take seriously in the industry. The unfortunate truth is that software companies used to be able to operate without any business sense. Those days are long gone.

    -Gene