Software patent

From Wikinfo

Jump to: navigation, search


A software patent is a patent on any performance of a computer realised by means of a computer program.[1]

A related term is computer-implemented invention (CII), which is used by the European Patent Office (EPO). One EPO definition of a CII is "an invention whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program." [2]

There is intense debate as to what extent either software patents or patents on computer-implemented inventions should be granted, if at all. Different aspects of this debate include:

  • The extent to which patents for processes implemented in software should be patentable as a matter of policy; and
  • The difficulties in assessing patents involving software under the requirements for inventive step and non-obviousness.

Contents

Patents in general

A patent is a set of exclusive rights granted by a state to a patentee (the inventor or assignee) for a limited period of time.

To obtain a patent, inventors must file patent applications in each and every country that they want protection in, such as Japan, China, the US or India. Some regional offices exist, such as the European Patent Office (EPO), which act as supranational bodies with the power to grant patents which can then be brought into effect in the member states.

Patent applications also have one or more claims which set out the boundaries of the invention that the inventor asserts is his/her original and non-obvious invention. The claims also describe what third parties are not allowed to do without permission from the patent proprietor. A patent claim is a one sentence definition of a given invention. For software inventions, such claims are often in the form of a computer-implemented method or a system for implementing the invention.

Patents are not granted automatically in most countries but must usually undergo an examination process in which a patent examiner determines if the applicant is entitled to the patent claims they are requesting. If so, then the claims are allowed and a patent issues, often only on payment of a grant or issue fee.

Once a patent issues in a given country, the patent owner can prevent others from making, using or selling the claimed invention in that country. Patents are generally enforceable for up to 20 years.

Different countries have different standards for allowing patents. This is particularly true of software or computer-implemented inventions. Thus a particular computer based patent application may be granted a patent in one country, such as the US or Australia where such applications are more likely to be accepted, but be deemed unpatentable by other patent offices such as the EPO.

History

Early example of a software patent

Back in the early 1960s, patents that may be qualified as software patents were not unheard of. On May 21, 1962, a British patent application entitled "A Computer Arranged for the Automatic Solution of Linear Programming Problems" was filed. [3] The invention is concerned with efficient memory management for the simplex algorithm, and may be implemented by purely software means. The patent, GB1039141, was granted on August 17, 1966.

Current trends

In the United States

Image:Software patents2.JPG
Growth of Software Patents in US

Main article: Software patents under United States patent law

The USPTO (the American patent office) has traditionally not considered software to be patentable because by statute patents can only be granted to "processes, machines, articles of manufacture, and compositions of matter". In particular patents cannot be granted to "scientific truths" or "mathematical expressions" of them. This means that most of the fundamental techniques of software engineering have never been patented.

The USPTO maintained this position, that software was in effect a mathematical algorithm, and therefore not patentable into the 1980s. The position of the USPTO was challenged with a landmark 1981 Supreme Court case, Diamond v. Diehr. The case involved a device that used computer software to ensure the correct timing when heating, or curing, rubber. Although the software was the integral part of the device, it also had other functions that related to real world manipulation. The court then ruled that as a device to mold rubber, it was a patentable object. The court essentially ruled that while algorithms themselves could not be patented, devices that utilized them could. This ruling wasn't as straightforward as many would have liked, forcing many electronic device makers into the courts to establish that their inventions were in fact patentable.[4]

Due to different treatment of federal patent rights in different parts of the country, in 1982 the U.S. Congress created a new court (the Federal Circuit) to hear patent cases. The new circuit rejected rulings from some parts of the country, and nationalized others. For example, the court made patents generally easier to uphold by presuming patents were valid unless proven invalid and weakening the defense of non-obviousness. This court allowed issues, such as patentability of software, to be treated uniformly throughout the US. Due to a few landmark cases in this court, by the early 1990s the patentability of software was well established, and in 1996 the USPTO issued Final Computer Related Examination Guidelines[5].

The recent expansion of the Internet and e-commerce has led to many patents being applied for and being granted for business methods implemented in software. There have been several successful enforcement trials in the USA, some of which are listed in the list of software patents article.

In Europe

Main article: Software patents under the European Patent Convention Within European Union member states, the EPO and other national patent offices have issued many granted patents for inventions involving software since the European Patent Convention (EPC) came into force in the late 1970s. Template:EPC Article of the EPC excludes "programs for computers" from patentability (Art. 52(2)) to the extent that a patent application relates to a computer program "as such" (Art. 52(3)). This has been interpreted to mean that any invention which makes a non-obvious "technical contribution" or solves a "technical problem" in a non-obvious way is patentable even if a computer program is used in the invention.

Computer-implemented inventions which only solve a business problem using a computer, rather than a technical problem, are considered unpatentable as lacking an inventive step (see T 258/03). Nevertheless, the fact that an invention is useful in business does not mean it is not patentable if it also solves a technical problem. This fine line has led the EPO to reject Amazon's 1-click patent, but to grant related patent number Template:Cite patent claiming a method of obtaining a mailing address for sending a gift. This patent is currently being opposed.

In the United Kingdom

Main article: Software patents under United Kingdom patent law

United Kingdom patent law is interpreted to have the same effect as the European Patent Convention such that "programs for computers" are excluded from patentability to the extent that a patent application relates to a computer program "as such". Current case law in the UK states that an (alleged) invention will only be actually regarded as an invention if it provides a contribution that is not excluded and which is also technical. A computer program implementing a business process is therefore not an invention, but a computer program implementing an industrial process may well be.

In other countries

In India, a clause to include software patents was quashed by the Indian Parliament in April 2005.

In Australia, pure or abstract methods of doing business are not considered to be patentable, but if the method is implemented using a computer, it avoids the exclusion for business methods [6].

Software patents as a matter of policy

Patents are intended to promote innovation by encouraging the timely disclosure of how to make and use inventions and by protecting investments made to commercialize inventions. They attempt to accomplish this by requiring that a prompt and full disclosure is made by an inventor of how to make and use his/her/their invention and by granting a monopoly right for a limited period of time to a patent owner to prevent others from making, using or selling the invention in exchange for said prompt and full disclosure.[2]

There is debate as to whether or not these aims are achieved with software patents.

Proposals for a software patent policy

In seeking to find a balance, different countries have different policies as to where the boundary between patentable and non-patentable software should lie. In Europe, a number of different proposals for setting a boundary line were put forward during the debate concerning the proposed Directive on the patentability of computer-implemented inventions, none of which were found acceptable by the various parties to the debate. Two particular suggestions for a hurdle that software must pass to be patentable include:

  • A computer program that utilises "controllable forces of nature to achieve predictable results".
  • A computer program which provides a "technical effect". [7]

In the US, Ben Klemens, a Guest Scholar at the Brookings Institution, proposed that patents should be granted only to inventions that include a physical component that is by itself nonobvious. [8] This is based on Justice William Rehnquist's ruling in the U.S. Supreme Court case of Diamond v. Diehr that stated that "... insignificant postsolution activity will not transform an unpatentable principle into a patentable process." By this rule, one would consider software loaded onto a stock PC to be an abstract algorithm with obvious postsolution activity, while a new circuit design implementing the logic would likely be a nonobvious physical device. Upholding an "insignificant postsolution activity" rule as per Justice Rehnquist's ruling would also eliminate most business method patents.

Examples of perceived negative effects

Patents against compatibility

There are a number of high profile examples where the patenting of a data exchange standards forced another programming group to introduce an alternative format. For instance, the PNG format was introduced to avoid the GIF patent problems, and the Ogg Vorbis format was introduced to avoid the MP3 patent problems. If it is discovered that these new suggested formats are themselves covered by existing patents, the final result may be a large number of incompatible formats. Creating such formats and supporting them costs money, creates inconvenience to users and even threatens to split the Internet into several partially incompatible sub-networks (ASF and non-ASF, for instance).

Defensive patents

As another example, many software companies are of the opinion that copyrights and trade secrets provide adequate protection against unauthorized copying of their innovations[9]. Companies such as Oracle Corporation and Red Hat are therefore generally opposed to the patenting of software.[10]

Nonetheless, these companies do file and receive patents. Their stated rationale is that since their competitors get patents, they must get patents as well for defensive purposes. In the event that they get sued for patent infringement by a competitor they can counter sue using their own patents. The net result is that both companies often cross license each others' patents at little or no out-of-pocket expense for either party. However, the cost of developing a suitable portfolio of patents may be out of reach of many small software companies.

Obviousness of software patents

A common objection to software patents is that they relate to trivial inventions. A patent on an invention that many people would easily develop independently of one another should not, it is argued, be granted since this impedes development. Different countries have different ways of dealing with the question of inventive step and non-obviousness in relation to software patents.

Inventive step test in Europe

See T 258/03

Software patent conflicts

Software patent vs computer-implemented invention (CII)

Main article: Software patents under the European Patent Convention

A microsite of the EPO website states that a generally accepted and widely used definition of a CII is "an invention whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program."[11] A similar definition is provided by The Guidelines for Examination at the EPO.[12]

Lobbyists, such as [[Florian M�ller]], suggest that the terms "software patent" and "computer-implemented invention" are synonymous.[13] The term has also been criticized as a politically motived obfuscation manoeuver.[14]

The EPO, in contrast, deny that they grant software patents.[15] They further argue that the term software patent is itself a misleading concept since it could imply that an invention must be in the form of software to count as a CII. The case law of the EPO[16] and various national courts in Europe[17] states that a computer program cannot be patented in the guise of an object or as hardware if the underlying invention is still a computer program as such. Computer-implemented invention also covers inventions relating to computer control of processes external to a computer, such as ABS braking systems. Such inventions are not caught by many definitions of software patent, such as the one proposed by the FFII.[1]

Additionally, the EPO do not grant patents to all computer-implemented inventions since they must still provide a technical solution to a technical problem to be viewed as being inventive, whereas the term software patent implies a granted patent. Nevertheless, the fact that the EPO deem that many software-related patent applications describe inventions is a point of contention.

Software patents vs copyright

Software patents are not the same as software copyright. Under international agreements, such as the WTO's TRIPs Agreement, any software written is automatically covered by copyright. This allows the owner to prevent another entity from directly copying the source code and there is generally no need to register code in order for it to be copyrighted. In fact, one of the most recent EPO decisions T 424/03 clarifies the distinction, stating that software is patentable, because it is basically only a technical method executed on a computer, which is to be distinguished from the program itself for executing the method, the program being merely an expression of the method, and thus being copyrighted.

Copyleft is an informal term used to describe free software licences that uses copyright in an unconventional manner to encourage the public disclosure of improved versions of a particular piece of software. The license agreements prevent third parties from copying a given piece of source code unless said third parties agree to make their improvements to the source code available to the public under similar open source terms when they distribute the program.

Patents, on the other hand, give their owners the right to prevent others from using a claimed invention, even if there was no copying involved.

Patents and copyright form complementary means for allowing a monopoly over software innovations. Patents cover the underlying methodologies embodied in a given piece of software, or the function that the software is intended to serve, independent of the particular language or code that the software is written in. Copyright prevents the direct copying of some or all of a particular version of a given piece of software, but do not prevent other authors from writing their own embodiments of the underlying methodologies. Copyright can also be used to prevent a given set of data from being copied while still allowing the author to keep the contents of said set of data a trade secret.

Software patents vs free/open source software

There is tremendous animosity in the free software community towards software patents. Much of this has been caused by the fact that several free software/open source projects, such as a free/open source alternative to Dolby audio compression, have had to be shut down when the owners of patents covering different aspects of the initiatives demanded license fees. The initiatives did not have the budget to pay the license fees or were not offered terms which were compatible with the software licence in use.[18]

To combat the negative press directed at proprietary software companies, several such companies, including IBM, have granted royalty-free licenses to free software/open source initiatives. Novell has gone further by committing to actively use its patent portfolio against companies that bring actions against certain free/open source products.[19] Historically, however, such actions have not aided patent holders in improving their public relations. Unisys gained little good publicity despite giving free licenses to hundreds of non-profit organizations, schools and governments under their patent covering the LZW compression method and, by extension, the GIF image format.[20]

Ironically, free/open source initiatives are creating infringement problems of a different sort for proprietary software companies. The developers of proprietary (and/or patented) software may incorporate free/open source code into their systems, of which the patented part may only represent a small portion. This may violate the copyright licenses of said free/open source code if the proprietary companies do not make the patented portions of their code similarly available or if they attempt to sue under their patents. Draft versions of GPLv3 may go further and prevent any patent holder from enforcing their patents against a user if they also distribute software covered by those patents under the GPL.[21]

Jurisdictions

Substantive law regarding the patentability of software and computer-implemented inventions, and case law interpreting the legal provisions, are different under different jurisdictions.

Software patents under multilateral treaties:

Software patents under national laws:

Litigation of software patents

Several successful litigations show that software patents are enforceable in the USA. For example, Eolas was awarded $565 million from Microsoft. See List of software patents for more examples.

Similarly in Japan, software patents have been successfully enforced. In 2005, for example, Matsushita won a court order barring Justsystem from infringing Matsuhita's Japanese patent 2,803,236 covering word processing software. A Tokyo court ordered Justsystem to pull their product from the market. This order has been stayed pending an appeal[22].

So far there does not appear to have been any case before a European Court where both infringement and validity of a software patent has been proved and damages have been awarded.

Licensing of software patents

Image:UScomputerpatents.JPG
Total US software patents by class of invention as of 2004
Patenting software is widespread in the US. As of 2004, approximately 145,000 patents had issued in the 22 classes of patents covering computer implemented inventions. (see table to the right).

Many software companies cross license their patents to each other. These agreements allow each party to practice the other party's patented inventions without the threat of being sued for patent infringement. Often, there is no payment of any royalties between the parties. Microsoft, for example, has agreements with IBM, Sun Microsystems, SAP, Hewlett-Packard, Siemens AG, Cisco, Autodesk[23] and recently Novell. Microsoft cross-licensed its patents with Sun, despite being direct competitors, and with Autodesk even though Autodesk has far fewer patents than Microsoft.

The ability to negotiate cross licensing agreements is a major reason that many software companies, including those providing open source software, file patents. As of June 2006, for example, Red Hat has developed a portfolio of 6 issued US patents, 1 issued European patent, 13 pending US patent applications, and 25 pending international PCT (Patent Cooperation Treaty) patent applications. Red Hat uses this portfolio to cross license with proprietary software companies (e.g. Microsoft, IBM) so that they can preserve their freedom to operate[24].

Many software patent holders license their patents in exchange for monetary royalties. Some patent owners, such as IBM, are in the business of selling the products they patent and view licensing as a way to increase the return on their investment in innovation. IBM generates an additional $US 2 billion per year by licensing[25].

Other patent holders are in the business of inventing new computer implemented inventions and then commercializing the inventions by licensing the patents to other companies that manufacture the inventions. Walker Digital, for example, has generated a large patent portfolio from its research efforts, including the basic patent on the Priceline.com reverse auction technology. US universities also fall into this class of patent owners. They collectively generate about $1.4 billion per year through licensing the inventions they develop to both established and start up companies in all fields of technology, including software[26].

Still other patent holders focus on obtaining patents from original inventors and licensing them to companies that have introduced commercial products into the marketplace after the patents were filed. Some of these patent holders, such as Intellectual Ventures, are privately held companies financed by large corporations such as Microsoft, Intel, Google, etc. Others, such as Acacia Technologies, are publicly traded companies with institutional investors being the primary shareholders[27].

The practice of acquiring patents merely to license them is controversial in the software industry. Companies that have this business model are pejoratively referred to as patent trolls. It is an integral part of the business model that patent licensing companies sue infringers that do not take a license. Furthermore, they may take advantage of the fact that many companies will pay a modest license fee (e.g.$100,000 to $1,000,000) for rights to a patent of questionable validity, rather than pay the high legal fees ($2,000,000 on up) to demonstrate in court that the patent is invalid.

See also

Template:PatentTypes

Notes

  1. ^ a b http://www.ffii.se/erik/EPIP/img8.html
  2. ^ http://cii.european-patent-office.org/law_practice/index.en.php
  3. ^ esp@cenet, GB1039141
  4. ^ http://www.bitlaw.com/software-patent/history.html
  5. ^ Final Computer Related Examination Guidelines
  6. ^ http://www.aipla.org/html/Patent-Handbook/countries/australia/AUsoftware.html
  7. ^ Decision T 59/93 of the Boards of Appeal of the European Patent Office, Reasons, point 3.4
  8. ^ Wall Street Journal, 25 March 2006, p A9 WSJ link (subscription required)
  9. ^ http://www.uspto.gov/web/offices/com/hearings/software/sanjose/sj_baker.html
  10. ^ http://www.redhat.com/legal/patent_policy.html
  11. ^ http://cii.european-patent-office.org/law_practice/index.en.php
  12. ^ EPO microsite on CIIs
  13. ^ No Lobbyists As Such
  14. ^ broken link?
  15. ^ EPO CII Brochure
  16. ^ T0158/88
  17. ^ Judgment in CFPH's application
  18. ^ http://swpat.ffii.org/patents/effects
  19. ^ [1]
  20. ^ Unisys Not Suing (most) Webmasters for Using GIFs - Slashdot article from August 31, 1999
  21. ^ HP may fork the GPL Stephen Shankland, CNET News.com, Published: 03 Aug 2006 09:05 BST
  22. ^ http://www.itworld.com/Man/2687/050208japanoffice
  23. ^ IDG News Service
  24. ^ http://www.redhat.com/legal/patent_policy.html
  25. ^ Newsweek Article
  26. ^ http://www.autm.org/events/File/FY04%20Licensing%20Survey/04AUTM-USLicSrvy-public.pdf
  27. ^ http://premium.hoovers.com/subscribe/co/overview.xhtml?ID=fffrfkrhrrxhjcxxkh

External links

Economic studies

Books

Papers and presentations


References

Retrieved from "http://www.wikinfo.org/index.php/Software_patent"
Personal tools