Power is truth? Although it is hard, at least to some extent, for
a 'learned', of some kind, person to so acknowledge, it appears to be true after the US
definitely declared a software application is patentable, a great many of countries
then-discussing or wondering whether it is necessary, just and/or desirable to protect a
software creation under the patent law soon redirected themselves to formulate the
contents of rules governing the patent protection related to the software invention,
without much lingering on their past exhausting efforts exerted on struggling for
solutions in this respect. In fact, it is unfair to so assert in that the key points might
reside in the facts that competition leaves no room for precise evaluation and that it is
far beyond our fast determination as to whether we could find a better solution at a later
time. Are these reasons good enough to persuade ourselves to let the situation be kept in
the state in which we are left?
It has been reported that there are "Supreme Court Trilogy"
in the US, namely, 1) Gottschalk v. Benson (409 U.S. 63, 73 (1972)) holding that a
method of programming a general purpose digital computer to convert signals from the
binary-coded decimal form into the pure binary form is a mathematical formula and thus not
patentable subject matter; 2) Parker v. Flook (437 U.S. 584, 594-96 (1978)) holding that a
process for updating 'alarm limits' for the catalytic conversion of hydrocarbons
based on an algorithm is essentially a method of calculating and nonpatentable; and 3)
Diamond v. Diehr (450 U.S. 175, 191-93 (1981)) holding that a process for curing synthetic
rubber employing a computer is patentable because the claimed process involves the
physical transformation of an article. It has been recognized that after that, courts have
generally found in favor of patentability of software-related inventions.
Summary of developments
It is therefore an object of the present article to join in the fun of
briefly studying the software patent problem.
It is another object of the present article to add trouble to the
unsolvable situation the software-based world we live is facing.
It has been well taken that this computerized world depends more and
more on computer software or program. Just with a thought, it can be known that we can
hardly lead our lives either in work or at rest without involvement of the software
program which comes into our lives either silently, or unconsciously, or spectacularly, or
annoyingly. The law is always urged by the demand, which might originate from the
necessity of protecting the general public or from the pressure the legislator cannot
endure from the pressure group lobbying the legislation for benefits of that group or whom
it is trusted.
As is known, the patent law is enacted to promote creation upon which
more creations can be anticipated or better human life can be based. It is evident that it
appears the software clearly meets with this requirement since it is an apparent logic
that if the software is not so critical, why our lives are so much related or tied
thereto? As a matter of fact, we cannot easily go across the reasoning gap between the
preceding two sentences since creation or the promotion of creation need not be encouraged
by protection bestowed by the patent law. The present article has no interests to discuss
any specific phenomenon having been dealt with previously by any one else, but instead
desires to try to pose some issues which might not have been considered before in any way
and/or to suggest somehow how to cope with these issues.
Generally, the person-readable source code for software can be
concentrated into a flowchart including a plurality of steps. Since any person-made
thing under the sun is nearly patentable, we thus have an excellent basis to challenge why
such a flowchart cannot meet with the patentable requirements in view of the statutory
provision that patent protection is available for the invention or discovery of "any
new and useful process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof." It appears to be a truth that a conventional
process normally has a number of steps. Here comes the problem. What are
differences between steps in the conventional process and steps in a software flowchart?
There are many kinds of steps in conventional processes which are nevertheless patentable
without any doubt. To the heart of the matter, why steps of a computer flowchart are
so exactly special as to make it controversial as to whether its formed process is
patentable? It would appear that the former two of the "Supreme Court
trilogy" can provide some hints or answers in this respect.
From the extremely brief holding above-mentioned in Gottschalk v.
Benson, we can find factors disproving patentability of a software process as follows:
- It merely relates to the necessitated programming of a digital computer. As is well
taken, rule or law of nature is unpatentable. If there is anything which is a must
for performing some task, it is quite possible that the anything relates to the rule or
law of nature and thus is unpatentable. Although this is generally correct, the
following situations are fully reasonable:
- Said anything might have the import of rule of nature but need not be necessarily so
categorized. As a simple example, there existed no computer some decades of years
ago. It appears to be illogical to regard the process of the first program to operate the
first computer as a rule of nature since such process should be one exploiting the rule of
nature rather than a rule of nature by itself;
- It is quite possible that said anything is a rule of nature in appearance but an
extremely wonderful skill in substance to be so easily to be erroneously regarded as a
rule of nature. If this is the case, could we in any way find any basis to wreck the
patentability of said anything?
- It simply converts signals from the binary-coded decimal form into the pure binary form.
The computer can be considered as a complex calculating machine. During the period
of its calculation or operation, it normally requires no personal participation and/or
visual control. As is conventionally recognized, it is never a good idea to protect a
method or process of doing calculation through diversiform combinations of different known
operation rules. Although these statements are generally correct, the following
situations appear to be fully reasonable:
- If a calculating machine can do a work in novel, non-obvious and utility ways, what is
the ultimate rationale on which we can worrilessly base to reject the patentability of
such machine? Is it convincing that a machine should be excluded from patent
protection merely because it is calculation-directed?
- Conventionally, a patentable process is visually or tangibly controllable by the
operator. Does the assertion of patentability exclusion of a software invention in fact
originate from the lost fear that the computer program is not physically reined under our
- Certainly, calculation is known to be exercised through kinds of operation rules, which
are, nevertheless, often known or somewhat 'obvious' to one skilled in the art. It
seems, however, to be evidently baseless to allege that 'diversiform combinations of
different known operation rules' must also be known or obvious in that it can hardly be
wrong that only after the nucleus or key spirit of an invention is explained, can we know
how and why the invention can be achieved in so an easy but fancy manner.
Accordingly, simple or easy technique judged through hindsight needs not be that simple or
easy from a foresighted viewpoint. It will be even more true diversified
combinations of a multitude of easy or simple operation rules will oftentimes make the
formulated process novel, non-obvious and utility.
- It is, in fact, sometimes a mathematical formula from some point of view. As is
well-known, the computer always executes a calculation according to a mathematical formula
or a series of steps included in a flowchart. It appears to be clear that
mathematical formula itself is unpatentable. It might be headachy to answer whether a
process primarily involves in the mathematical formula is patentable. It is,
however, also evident that steps in a flowchart need not be mathematical formula-related.
- Just like what happens to the rule of nature, a process exploiting the mathematical
formula should be different from the mathematical formula in itself. In other words, while
the mathematical formula itself is unpatentable, the process exploiting the mathematical
formula should be eligible for patent protection if other statutory requirements are met;
- If the series of steps are irrelevant to the mathematical formula, they would be likely
to be components of a patentable conventional process. What we really concern is
what position we should take with respect to a process exploiting the mathematical
formula? Through the above discussions, it appears to be safe for us to conclude that
there exists no problem of eligibility of patent protection for the process relating
mathematical formula whose patentability is to be determined by statutory patentable
From the extremely brief holding above-mentioned in Parker v. Flook, we
can find factors refuting patentability of a software process as follows:
- It is a process for updating 'alarm limits' or digits. Conventionally, the
starting material or end product is usually referred to real articles. Here, either
or both of them might be virtual, not real but imaginary. It does be hard to accept
that digits themselves are eligible for patent protection. Nevertheless, a
digits-updating process appears to have good reasons, through the above discussions, for
soliciting patent protection in that:
- Digits themselves are dead and dull for sure but are lovely and useful in some respect,
e.g. in the deposit account. If they do sometimes represent novel, non-obvious and
utility application, why we should exclude them from patent protection? How could we
justify ourselves of having such adherence by the understanding that the relevant process
'merely' relates to digits? We were told when we were young that it is important for
us to know a matter into its substance rather than in a superficial manner. Is our
position here superficial or substantial?
- Not only the social activities have been driven into virtual, but also the world has
also been. It would appear whether or not the starting material or end product is
real is not so important and/or desired at present. What would be emphasized
nowadays would be whether or not there would occur effectiveness? As such, how we
could find competent bases for excusing ourselves in taking that a novel process using,
operating and/or generating useful digits is unpatentable.
- It is a process based on an algorithm. Algorithm is different from but analogous in some
respect to mathematical formula or rule of nature. According to Webster's Ninth New
Collegiate Dictionary, the first definition for 'algorithm' is "a procedure for
solving a mathematical problem in a finite number of steps that frequently involves
repetition of an operation," which appears to the case in this case, which can be
regarded as relating to the mathematical formula. As such, the preceding discussion
seems applicable here also.
- It is essentially a method of calculating. In this regard, please refer to what is
discussed related therewith.
From the extremely brief holding above-mentioned in Diamond v. Diehr,
we can find factors advocating patentability of a software process as follows:
- It is a process employing a computer by which the court held a computer-employing
process is patentable, subject to compliance with legal requisites. In this regard,
- After the play of the former two in the trilogy, it appears to naturally come the last
of trilogy, although there might involve a bit of hindsight. Now that anything under
the sun which is useful is patentable, it should not be so strange for the court to hold
patentable a computer-employing process which does be useful generally.
- As is known, novelty can relatively easily be judged when compared to non-obviousness.
People try very hard to set standards, as objective as possible, for determining whether a
specific invention is non-obvious in view of the prior art. Since the mechanism which does
the 'objectively' judging work is a person who normally performs his/her work
subjectively, either unconsciously or uncontrollable, as can be evidenced now and then by
the live prosecution results of a certain applications, because it is quite possible that
there has never existed any absolutely 'objective' person in the world, it might be well
questionable whether the standards for non-obviousness in respect of the computer software
is or should be the same with those in other respects?
A lot of factors are involved in here. As an example, whether a
software process which is first time created in this world for executing a specific
function through the computer is patentable or non-obvious is questionable if it is proved
at a later time that the concept or flowchart disclosed in the software process is a
necessarily unique one. Specifically, the 'inventor' of the software process, in
fact, happens to be the inventor merely by chance since any one who is skilled in software
programming and desires a computer to execute the specific function can invent a similar
software process. In a general case, the examiner will allow the first specific
process since at the time it is filed or it is examined, it is quite possible that there
is no similar process existing in the world and that it might present some difficulties
before the examiner to prove the first specific process in fact is not so much unique as
alleged by the applicant.
For further an example, if a problem is conventionally solved through
the hardware measure and is then made possible to be solved by a software-related process
by an inventor, a similar situation might occur. Specifically, if the
software-related process is so neat, its patentability would be no problem. If its
corresponding hardware-related measure has been known, a stricter consideration upon
examination must be exercised in that it might be interpreted that the underlying concept
of that software-related process has been known. What is really invented is thus to
achieve the desired function through a software-related measure instead of the
hardware-related measure. Here, the situation will be similar but not identical to
the above described. (No further discussion will be discussed here)
- The claimed process involves the physical transformation of an article. Generally,
a software-related process will 'directly' or indirectly cause changes in physical or
chemical property of an article controlled by or worked or functioning in relation with
the software-related process. In this regard,
- The physical transformation is a kind of "post-solution activity" or
"post-computer- process activity" or "pre-computer-process activity,"
which is repetitively confirmed to be a patentable attribute if such activity represents a
"significant use" which normally is the case.
- It appears safe to say that it is not difficult for us to disguise a software process
with the patentable attribute above-described. What is concerned here is whether there
exists a possibility that a specific software-related process or device is unpatentable no
matter how it is disguised in the patent claim?
Brief Items to be Discussed for Presenting Issues We Concern
*Primitive software patent
*Derivative software patent---means plus function
*Software patent regarding internet
*Software patent for doing business
#Primitive software patent
As can be known from above discussions, since the computer is getting
more and more popular, it is more and more difficult for us to stay away from
participation of the software in our daily lives. As such, kinds of 'creative'
software must be invented in order to cope with our extensive demands in various respects.
Among these kinds, there must be at least some of them which are really creative to be
eligible for patent protection. Since these some kinds are so much appropriate to be
or worthy of being patent-protected, does it naturally come to the conclusion that all
kinds of software-related applications are patentable? Specifically,
- It is not strange for the software, as a medium of great utility in serving the human
life and/or of a multitude of practical applications, to be necessarily patentable in some
respects, e.g. the last of the trilogy. People trying to seek patented
software-related applications in these respects are always sympathy-soliciting in that
they do make the world easier for people to live in. Software patents in these
respects might thus be categorized as 'primitive' software patents. Now comes the
problem that how far the software patent should go? Is it a good idea to take that
any kind of software should be eligible for patent protection?
- The real problem should be whether or not they do meet with requirements of novelty,
non-obviousness and utility? If we were not to disqualify the patentability of some
software applications through these requirements, how should we bar some kinds of software
applications from patent protection? How could we unperturbedly and confidently stands
before the fact that software of different kinds are subject to different applications in
eligibility for patent protection? How could we draw the line delimiting
therebetween? Or how could we finally conclude software-related applications in
which respects are eligible but others are not for patent protection?
- It appears that initiation is somewhat more difficult than development based thereon.
After software-related applications are eventually found patentable by way of the
primitive software patents, it appears the door for software-related patent has been
generously opened. It might be great for us to reflect how large the door should be
#Derivative software patent---means plus function
According to 35 USC 112(6), 'an element in a claim for a combination
may be expressed as a means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.' We are a bit interested in discussing here
before the software-related case was held patentable, is it possible to seek patented a
software-related creation using the type of means plus function?
- Before In re Donaldson decided on February 14, 1994 by the US Court of Appeals for the
Federal Circuit, it was often held the claim drafter would be not so much prudent or
competent upon preparing a specification if the drafter did not use the type of means plus
function in drafting the claim. Not only because it has a broadest coverage, but
also it is not so much critical to describe the involved structure, material or acts in a
greater detail. It seems cases on record did not show a software-directed application can
be sought patented merely because it is drafted in the manner of means plus function.
Specifically, before the last of trilogy, software-directed patent theoretically was
unpatentable even if drafted in the format of means plus function. Thereafter, it
goes without saying that the software-directed invention drafted in the style of means
plus function is patentable since software-directed invention has been held patentable
regardless of the format it is drafted.
- It is interesting to know what the court thought or what the practice allowed from the
Trovato court rejecting the claims and distinguishing them from the claims allowed in the
Alappat decision as follows:
Our result here comports with our recent decision in Alappat, 33 F.3d
1526, 31 U.S.P.Q.2d 1545. Although the claims of the inventor in Alappat were also drafted
in means format, unlike the disclosure here, his application disclosed a specific hardware
embodiment. There, we extensively relied upon the hardware listed in the
specification, including arithmetic logic circuits, barrel shifters and a read only memory
in reaching the result that the claimed invention constituted patent eligible subject
matter. Id. At 1541, 31 U.S.P.Q.2d at 1555. Specific note was also made of the
combination of claimed elements from which the inventor formed a machine. Id. At 1544, 31
U.S.P.Q.2d at 1577. As we have noted, however, a search through Trovota’s application
for the combination of similar apparatus is unavailing. The use of an apparatus claim
format in this fashion is precisely the sort of "guise" recognized in Alappat,
33 F.3d 1541, 31 U.S.P.Q.2d at 1555, and the cases cited therein.
- It might also be interesting to further note that the Federal Circuit revisited the
issue of patentability of software in In re Lowry about one month after its decision in
Alappat. It was also an appeal from the Board of Patent Appeals and Interferences of
PTO sustaining the Examiner's rejection of claims relating to software.. The Board of
Patent Appeals and Interferences upheld the rejection of the claims as printed matter on a
magnetic medium without functional value. In re Alappat had not resolved the
question whether software was patentable when it is claimed independent of a general
purpose computer. The Board of Patent Appeals and Interferences held that software
was not patentable independent of the general purpose computer. The Federal Circuit
again reversed the Board of Patent Appeals and Interferences to allow the patentability of
the claimed software. It was reported that these two cases eliminated the bases on
which the PTO had rejected the patentability of software claims. Accordingly, the
PTO Examination Guidelines for Computer Related Inventions were urged to be established.
#Software patent regarding internet
Time has or has been changed. It has been commonly recognized that a
person who does not explore the internet everyday or is not well-educated or well-trained
to browse the internet has fallen behind the ranks. The internet has successfully
shortened distances between persons or countries on earth. The great world has
shrunk into an earth village. Nevertheless, the actual distance still vividly
present before us. As such, the internet business or industry has got crazily hot in
recent years. A lot of internet companies have been established. There is a
Chinese saying that anything which comes fast will go quick. In these months, we saw
many internet companies cut down their sizes or closed their businesses. Before the
internet company having filed a patent application can enjoy its patent rights in time, we
have already experienced that it does not have the happy lot to take advantages of
claiming its rights possibly ensuing therefrom.
The United States, as a heaven for the gambler or investor, certainly
will foster a great number of internet enterprises and evidence the above situation. In
addition, it has been predicted in the year 2000, estimations for electronic commerce in
the US range from $50 to $650 billions, in Europe $30 billions and in Asia $40 billions,
all of which could be considered to be completed through the internet. It has been
well-known that to file an internet patent has at least the following advantages:
- It will greatly work upon soliciting the investment capital or business partner.
People will feel or really become great only after they have ever dreamed. Damages
collected from a patent infringement might amount to a billion which is a so much
attractive digit by which the joint venture is easily formed. A hot patent normally
represents that the owner can fund money as much as or far more than it desires. By
the same token, a hot patent will make it easier to gather together kinds of partners the
owner would like to have.
- It serves as a shield for protecting from competition. It has been described that
a patent is a kind of legitimate monopoly by which a relatively small company can solely
provide a favorite product in the market by which that company can protectedly rapidly
grow. Although theoretical success might not come true, which, nevertheless, have
successfully paved the stout way for one to hardly strive therefor.
- It offers the possibility of threatening a patent infringement suit. While to be
threatened is not good, to threaten some else sometimes is fruitful. In this country, a
lot of people think shame to go to the court, either as plaintiff or defendant of whatever
cause. As such, a lot of patent rascals earn quite a bit benefits through
threatening of a patent infringement suit since some kindhearted people consider it a bad
luck to get involved in a law suit and tend to settle with the plaintiff before going to
the court, although the situation is changing now.
- It provides the possibility of collecting licensing royalties. A license can occur
when two parties desire to work a project with or without a royalty. The former
normally happens when the licensee considers there might be a patent infringement.
The latter often occurs when the licensor thinks there might be no infringement, but
misleads others to pay royalties. This world is too much complicate for a simple
person to happily lead his/her life.
#Software patent for doing business
Although software patent for doing business is much related to the
internet patent as the internet technology is getting more and more developed, it appears
to be true for us to believe it culminates in patent application of doing business which
every one bets it is unpatentable in the past. In the e-era, it appears that we have been
accustomed to the interchange of yesterday's truth and today's false. In spite of
this, we are exhausting our last efforts to present our discussions in this regard as
- As discussed above, software as a medium for improving the human life should not be
excluded from patent eligibility since before it, even being a method of doing business,
can be patented, it must meet with statutory patentable requirements, i.e. novelty,
non-obviousness and utility, out of which, in fact, the major problem exists with
non-obviousness. In the realistic world, the first prototype or the theory of a
certain product is normally developed or invented by a big internationalized company.
Although the prototype or the theory might be a unique must if we would like to
utilize that product, it appears that we do not feel it a bad idea to have it patented.
There are four maybe excellent reasons for this. Firstly, the product does be
newly created. Second, the product normally is not absolutely necessitated in the human
life. Third, sometimes, to invent and to discover are not so clearly distinguishable
from each other, as partly evidenced by the wording in 35 USC 101. Fourth, the
patentee might have exerted much efforts in promoting the product to be popularly accepted
by the consumer. All of which, it appears, explain it is worthy to exchange not more
than 20 years patent rights with the social welfare derivable therefrom.
- As mentioned before, in this e-era, the computer rudely forces its way into our daily
life. The software never easily let slip any of us. We have been luckily and unluckily
pushed into the internet pool in which we swim by our own surviving skill and/or selects
to lean against the pool bank to take our rest and to hesitate whether we should cleverly
swim further or masculinely get out of the pool. It has never been strange for us to
order goods through the internet during which it is quite possible that we have infringed
a patented method of doing business. Now that we have been innocently trapped in
this e-world without choice, there should be some measure rescuing us therefrom in order
that we can still freely breathe the fresh air to keep our life. As a logic and
reasonable person, it is advisable for us to admit that there do be some methods of doing
business which are so remarkable that we will feel uncomfortable if they are prohibited
from being patented. Nevertheless, there do be some methods of doing business which are
created simply because the inventor is lucky enough to encounter therewith and tries to
provide a solution therefor. It thus appears to be inappropriate for accepting their
patentability in order that newcomers can constitutionally lead their lives without the
cruel and irrational intervention of statutory barbarity. Upon so performing, it
seems imprudent to curb them from being patented by eligibility of patent protection.
Instead, it would sound considerable to wreck them before the great patentable
requirement of non-obviousness.
Claims we have
- A power must be often correct in the past to be the power at present. Although the
power always tries its best to be alert to the changing society, wisdom and fate need not
forever and ever follow therewith. Although the first step the power strides on earth in
certain aspect normally wins therefor lots of benefits and interests, it might be possible
that when that aspect is hot no more, the power might be hurt badly. We are
incapable of confusing the world here since we are not clever enough to fully convince
anyone where is wrong, how should we do and what should be done? All what we want to
humbly express here is to remind whom it may concern in any respect that before a decision
is taken, it might be worthy for us to get fully prepared therefor. After we take
the decision, it might be advisable that we carefully monitor what is happening to the
society influenced by that decision. Meanwhile, what measures or changes should be
taken or made to that decision in order to cope with the influenced society, if possible
and/or if in time, should be continuously kept in investigation.
- Is it necessary for us to lead our lives dependent on software so much? Need we
change our living style a bit? Is it a good idea or possible that we happily lead
our lives without much introduction of the software? Do these answers help solve the
question as to whether a software process is patentable? For example, if a patentable
software process in certain field is not so popular, is it necessary for us to be so
nervous as to whether that process is patentable?
- It appears to be important to discern a software process exploiting the rule of nature
from one of a rule of nature per se. It is equally important to distinguish a program
process being a rule of nature in appearance from one which is wonderfully skillful in
substance to be erroneously taken as a rule of nature. In the proper cases, could we
in any way find any basis to wreck the patentability of said anything?
- As the computer is getting more and more utilized, people are getting more and more
dependent on the software. If a specific software process is compulsory for a
specific function in the computer, it might be strongly doubtful that the first designer
of the specific software process in the world is patentable in that it might be extremely
possible the first designer is the 'inventor' merely by luckiness. It is committed
here that in fields other than computer, it is quite possible that the first lucky
discoverer of a certain process or device is normally a legal patent owner. Then,
why we should doubt a lucky first designer in respect of the software? Are we
correct in taking that computer software should be differently considered from other
fields in that the replaceability of computer is much smaller than other fields?
Does this appropriately justify our assumption here?
- It is easier or much reasonable for us to bar a software-related application from patent
protection by means of patentable requirements rather than eligibility for patent
protection since it is nearly impossible for us to set fair or convincing standards for
such determination. What we would like to bar some kind of software-related application
for patent protection is not directed to wreck the development of the technology.
Instead, such measure is considered extremely helpful in promoting the technology in that
the necessary growth of specific industrial sectors will not be gratuitously suppressed by
such software-related patents which are created merely because the first inventor is lucky
enough to first complete the software or first find that software is compulsory for
his/her computer to perform the work he/she is relying on to live or earn benefits without
the necessity of exercising what kind of special efforts or the involvement of what kind
of particular ingenuity.
- It is interesting to ascertain whether the non-obviousness test for scrutinizing the
computer software patents, especially software applications of doing business is the same
as in examining other patent applications. Specifically, whether the fact that the
computer has got more and more popularized and required in the human daily life will
successfully urge us in considering whether different standards or definitions for
non-obviousness should be exercised is never an easy question to answer. Even if we
decide to so do, the measure we take therefor should be stricter for better protecting our
possibly simple but happy daily lives or looser for encouraging creations in this field in
further securing our brand new beautiful world? Is it possible that we find out how
we should properly react in this respect? Are we foolish enough in exploring this
- In sum, if we were willing to accept that some basic and necessitated software method of
doing business is unpatentable in order to safeguard the human life to some extent, it
appears it is better for us to carefully exercise the non-obviousness test in determining
whether the specific software patent application is patentable. Specifically, if the
software application of doing business is basic and/or necessitated whenever the possible
user is to encounter, it seems it is a good idea that the application should be rejected
because it is merely a 'choice of design' or something like rule of nature. If it is found
to be impossible for us to do so, is it considerable that the granted patent should be
accorded with a narrower or more limited scope?
- If the above reasoning is viable, does it sound good to have such reasoning applied to
other possible fields? If yes, what are possible fields? How this will influence the
patent system we are familiar at present?