Software Patents and the Return of Functional Claiming

The factors a court will look at when determining obviousness in the United States were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors". The court held that obviousness should be determined by looking at

    1. the scope and content of the prior art;
    2. the level of ordinary skill in the art;
    3. the differences between the claimed invention and the prior art; and
    4. objective evidence of nonobviousness.

    1. commercial success;
    2. long-felt but unsolved needs; and
    3. failure of others

I think software patents pose several problems for the Graham factors:

(1) Prior art is too hard to locate. The generativity of software is so great; it is so easy to invent new things; and so many things were invented before anyone even started patenting many of them, that it is very difficult to be confident that one has found all the prior art relevant to a particular patent application.

(2) The field is vast and continues to grow, with many subfields. No one person can know everything that has been done in software. This renders the very notion of "ordinary skill in the art" problematic.

(3) Because of those two factors, assessing the differences between the prior art and the claimed invention -- which was always a subjective process anyway -- becomes intractable. Anyone can line up experts to say that the invention is or is not obvious.

Thus, the only one of the Graham factors that is workable for software patents is #4: objective evidence of non-obviousness. I suggest that to obtain or prosecute a software patent, one should have to show objective evidence in at least one of the three categories in the second list quoted above. Such evidence could take many forms. The best, perhaps, would be multiple published academic papers showing an attempt to solve the same problem and presenting clearly inferior solutions. Another kind of evidence might be reviews of products complaining of the problem that the invention purports to solve.

Commercial success is in some ways the best metric and in other ways the worst. The biggest problem with it is that one has to file the patent application before releasing the product; at this point, evidence of commercial success is obviously unavailable. Another problem is that there are, of course, other factors that play into it ("execution" as they say) and that are often even more important than one's technology. Still, if one manages to build a business around an invention where others have tried and failed to do so, I think that has to count for something.

I believe that requiring objective evidence of non-obviousness would solve, or go a long way toward solving, the software patent quagmire because in my opinion, the majority of software patents these days result from the application of relatively well-known techniques to novel problems. That is, it's usually the problem that's new, not the solution; once one has noticed the existence of the problem, the solution is not hard to come by. Obviously, for a novel problem, there is not going to have been time for anyone else to attempt to solve it and fail, leaving behind some public record of their attempt.

Although IANAL, it also seems to me that the change I'm proposing is incremental enough -- close enough to the rules that the Supreme Court has already enunciated -- that it could actually be accomplished.

EDITED to fix formatting, and also to add: I wanted fo get the above posted because I've been thinking about it for a while, but I don't mean to dismiss Lemley's point at all. We clearly need to clamp down on functional claiming as well.

http://www.ipwatchdog.com/2011/10/09/defending-the-myth-of-t...

There are some interesting quotes:

"As for communism, it is a great analogy. Let’s look at one of those websites that promote “free love”: creativecommons.org. They are talking about “commons,” from which commune is derived. From the front page of their website: “Creative Commons helps you share your knowledge and creativity with the world.” Sounds like a statement out of Chairman Mao’s “Little Red Book.”

"Another great statement: “Creative Commons aspires to cultivate a commons in which people can feel free to reuse not only ideas, but also words, images, and music without asking permission — because permission has already been granted to everyone.” Again, sounds like communism to me – the entire commons/commune benefits from the labor of the individual. Moreover, since everybody has permission to use the “ideas, but also works, images, and without asking permission,” no money need change hands (i.e., the individual doesn’t get paid)."

-- This is the first time I've seen a direct comparison of CC to communism. The sneering tone is palpable.

"Separately from Lemley, your posts indicate an anti-software patent leaning. I grant that your primary legal stand may not be the same as the US legal stand, so some of that leaning can be graciously accepted. But my tolerance for that type of thinking is very short when it comes to US law. US law is explicitly different in the wide scope of patent eligible subject matter, and I firmly believe that US lawyers need to fight to protect that legal stand from the encroachment that many academics put forth in whatever sheepskin they dress up in."

-- Apparently the 'explicit' legal stand is the province of lawyers and not legal academics, whose wily and perverted encroachments are a blight and threat to the mighty and unambiguous law.

The Supreme Court, in a case called KSR: "…as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts."

-- This is interesting - if I'm reading this right, the Supreme Court apparently distinguished between "ordinary innovation" and inventions worthy of patent protection. A point rather in accord with software patent reformers' opinions

"He is not an engineer, and he hasn’t worked as an engineer. Had he, he (and SCOTUS) would have realized that ordinary workers are not particularly inventive. Most people, when their only tool is a hammer, treat all problems as nails. Few people will “look outside the box” to find a different tool for a problem that isn’t readily solved with a hammer.

"Had Lemley any real world experience, he would have recognized that “the expected skill of ordinary workers in the arts” generates very, very few inventions. Moreover, those inventions are the ones for which prior art is readily found."

-- This was a response to the previous Supreme Court quote. I don't know if the software world fits it - software engineers jerry-rig solutions all the time, I imagine, because the flexibility offered by the toolset is so great. Even more ironically, the entire ethos of the field is to re-use methods and libraries that have been discovered and refined already, relying on labor-saving through specialisation. So programmers basically only invent when there's a need or inclination to - and when they choose to, they can easily come to the same solutions that their fellows would if posed the same problem.

I've read pages of arguments between patent advocates and reformers on PatentlyO (an IP law blog), and it always leaves a bad taste in my mouth. There's too much acrimony, with more attacks on ideology and ad hominems from the patent advocates. It's too bad we don't have more overlap between lawyers and developers, more multi-talented judges like Alsup, more (any) legislators who also code.

[1]: http://www.infoworld.com/d/open-source-software/the-software...

It still seems that abandoning software patents altogether would be a more reasonable solution. There are exceedingly few software inventions that are significantly different from their technical predecessors that would require patent protection and could not be instead served by copyright protection or by being kept a trade secret.

If so, could you ever have a UI patent (such as the rubber band effect), or just patent methods to accomplish a rubber band effect?

If it's just the methods, then doesn't that make it incredibly easy to work around? Or would any set of methods that accomplish the specific effect be legally equivalent to the patented method?