Misnomers, Myths, Misunderstandings and Misconceptions about Software Patents

By Martin A. Goetz

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” and “most 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.

[This post originally appeared at IPWatchdog.]

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