
Software patents poised to make a comeback under new patent office rules - AdmiralAsshat
https://arstechnica.com/tech-policy/2019/01/software-patents-poised-to-make-a-comeback-under-new-patent-office-rules/
======
rkagerer
Watching the impact software related patents in the world, I've become
increasingly skeptical of their sensibility.

The patent system was conceived in an age when innovation was represented by
complex works like the steam engine. Invention was the result of applied
engineering and ingenuity.

Now that system is weaponized by organizations claiming exclusive use over
something as mundane as a UI gesture.

An institution intended to spur innovation is achieving the exact opposite,
chilling effect.

Here's an interesting comment from a seasoned investor on the value of formal
IP protection to the average internet startup:
[https://youtu.be/15iWltPLuPY?t=2274](https://youtu.be/15iWltPLuPY?t=2274)

While I can't find it now, I recall another I/O talk where an investor was
asked by an aspiring founder how to deal with the fear of unwittingly treading
on someone's patent. In response he opined the very act of innovating in
today's world makes you likely to trip over some patent or another, and his
guidance was to focus on building a great product.

I'd love a world where companies compete based on the merits of their product
and talent of those who craft it. Let them stay relevant by continuously
pushing the leading edge of innovation, rather than resting on the laurels of
accomplishments from 20 years ago.

Kudos to companies which have commited to never using patents for offense, and
bigger kudos to those who have gifted their IP to the world.

~~~
rayiner
> Kudos to companies which have commited to never using patents for offense,
> and bigger kudos to those who have gifted their IP to the world.

That gives credit to companies simply for being in particular types of
industries. Facebook and Google have opened up large amounts of IP in the form
of open source. They do so because they don't sell software; software is just
a gateway to their ad platforms and user databases (which, unsurprisingly, are
well-guarded). Does that deserve "kudos" compared to say, Microsoft, which
doesn't open up IP as much because it's in the business of exchanging software
for money? I don't see a moral distinction to be made there.

~~~
arebop
If there's an industry predicated on immoral activities, then there is a moral
distinction to be drawn between businesses in that industry and businesses in
industries that have no such requirement to act immorally.

~~~
rayiner
Is "advertising and hoovering up user data is more moral than patents" really
the hill you want to defend?

~~~
arebop
I'm actually fine with both having advertising and with the existence or
stewardship of user data, but in fact the hill I want to defend is "the
profitability of an enterprise does not determine its moral quality."

------
ScottBurson
This is exactly what I was concerned about when the _Alice_ decision came
down. The problem is that abstractness is relative: abstractions exist in a
hierarchy, such that what is abstract at one level is concrete relative to the
next level above it. There is no absolute measurement of abstractness.

What I really want to see is for obviousness tests to be strengthened. I
believe that in order for a patentee to sue for infringement, they should
first have to present _objective evidence_ that their idea is actually
nonobvious, along the lines of the "Graham factors" [0]: commercial success,
long-felt but unsolved needs, or failures of others.

The nonobviousness requirement has become toothless in recent years; the
Federal Circuit has reduced it to a requirement that no prior art exist
explicitly mentioning the invention. But lots of things are obvious that
haven't been explicitly mentioned in some publication; indeed, many things
aren't mentioned _because_ they are obvious. And the PTO is poorly placed to
evaluate nonobviousness; for one thing, one of the Graham factors, commercial
success, may not exist at patent application time — one may have to wait a few
years to see whether the invention gives rise to a viable business.

So the right time to evaluate obviousness is at the commencement of
litigation.

[0]
[https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co](https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co).

~~~
dctoedt
> _I believe that in order for a patentee to sue for infringement, they should
> first have to present objective evidence that their idea is actually
> nonobvious, along the lines of the "Graham factors" [0]: commercial success,
> long-felt but unsolved needs, or failures of others._

This triggers one of my pet soapbox issues: The U.S. patent statute _requires_
a patent to be issued to an inventor unless the _patent examiner_ can show
that the claimed invention was not new, useful, or nonobvious. True, the
inventor must tell the patent office about any prior art of which s/he happens
to be aware, but the inventor has zero obligation to do any kind of prior-art
search to see what else might have been out there. Contrast that with the
Ph.D. degree system, where the burden is on the candidate to do a literature
search and convince his/her committee that s/he didn't reinvent the wheel.

Another contrast: When a university grants a Ph.D. degree, the result isn't
national industrial policy in the form of a statutory monopoly over the
claimed subject matter.

And another one: Ph.D. degrees require a defense before not just an
experienced advisor, but also a committee of people who know at least
something about the subject matter. In contrast, patents and their statutory
monopolies are typically approved by junior- or mid-level examiners generally
either flying solo or (in theory) supervised by one more-experienced examiner.
Only if the examiner issues a final rejection will the invention be reviewed
by a board of appeals comprising senior examiners.

~~~
ScottBurson
> Only if the examiner issues a final rejection will the invention be reviewed
> by a board of appeals comprising senior examiners.

Yes, that's quite backwards, isn't it? Granted patents should be reviewed more
carefully than rejections. Where the PhD system is built to minimize false
positives, the patent system is built to minimize false negatives.

Here's how I've seen it put in the past. A patent is a deal the public makes
with an inventor: the inventor gets a temporary monopoly in exchange for
disclosing how the invention works. The problem we have is that no one in the
system — neither the PTO nor the courts — is specifically responsible for
representing the public's interest, by making sure that the information being
disclosed is valuable enough to deserve the monopoly.

~~~
dctoedt
> _no one in the system — neither the PTO nor the courts — is specifically
> responsible for representing the public 's interest, by making sure that the
> information being disclosed is valuable enough to deserve the monopoly._

By law, that's the job of the USPTO. The PTO routinely rejects patent
applications if the examiner thinks that the claimed subject matter wasn't
novel or would have been obvious at the time the invention was made. Most
rejections stick (I would guess), but sometimes examiners get worn down by
patent attorneys. The problem was famously summarized nearly a century ago by
the legendary federal judge Learned Hand, who said that "... the antlike
persistency of solicitors has overcome, and I suppose will continue to
overcome, the patience of examiners, and there is apparently always but one
outcome." [0]

[0] _Lyon v. Boh_ , 1 F.2d 48, 50 (S.D.N.Y.1924) (L. Hand, J.), at
[https://scholar.google.com/scholar_case?case=969659756696519...](https://scholar.google.com/scholar_case?case=9696597566965196877)
, _rev 'd on other grounds,_ 10 F. 2d 30 (2d Cir. 1926).

------
anotherevan
“Once the last developer is locked up and the last idea patented you will
realise that lawyers can’t program.”

— Christian Heilmann (@codepo8)

[https://twitter.com/codepo8/statuses/79531211327930368](https://twitter.com/codepo8/statuses/79531211327930368)

------
deogeo
A reminder that software patents are funded by all those 'pragmatic' choices
for proprietary over free software.

------
rayiner
Several nits with the article.

> On the flip side, the argument that without software patents modern tech-
> based companies can't thrive seems weaker every day. A 2015 article
> calculated that 30 percent of billion-dollar startups have zero patents.

This is an odd take on the original data source:
[https://www.ipwatchdog.com/2015/11/03/the-naked-
truth-30-of-...](https://www.ipwatchdog.com/2015/11/03/the-naked-truth-30-of-
us-unicorns-have-no-patents/id=62842). If you look at the table mid-way down
the page, only one category of companies has relatively low patent-ownership
share compared to valuation share: "consumer Internet." Of course, these
companies don't need patents to protect their IP. They don't deliver a product
to consumers that their competitors can disassemble and copy. Their IP is
hidden in their servers behind a web services API. Uber's logistics
algorithms, for example, are important trade secrets, but there is no need to
patent them because they can't be reverse-engineered from the Uber app.

As shown in the chart, several kinds of companies deliver software products to
consumers, or disclose technology through standardization, and have a
relatively greater need for patent protection. Waymo, for example, has tons of
patents: [https://patents.justia.com/assignee/waymo-
llc](https://patents.justia.com/assignee/waymo-llc). So does CMU, which
pioneered early work in self-driving cars.

> In a 2016 ruling called Enfish, the Federal Circuit ruling took a single
> sentence from the Supreme Court's 2014 ruling and used it as the legal
> foundation for approving more software patents.

This reads _Alice_ backwards. _Alice_ was about why patents on business
methods are ineligible, even though they are implemented in software. _I.e._
patents on using software to automate methods of doing business that were
already in use. That is why when Ars covered the decision in Alice, its
headline was "Supreme Court smashes 'do it on a computer' patents in 9-0
opinion," not "Supreme Court smashes software patents in general." _Alice_
assumes that real technological inventions that happen to be implemented in
software are patentable.

The "single sentence" in _Alice_ Ars that refers to is actually two sentences:

> The method claims do not, for example, purport to improve the functioning of
> the computer itself.

> In other words, the claims in _Diehr_ were patent eligible because they
> improved an existing technological process, not because they were
> implemented on a computer.

Ars makes it sound like the Federal Circuit (and now PTO) took a narrow
exception in _Alice_ , articulated in a single sentence, and used it to
swallow the rule. But in _Alice_ , the Supreme Court viewed business-method
patents as the exception to the general rule that useful inventions are
patentable (even if they are implemented in software). These sentences simply
explain why the patent in that case falls into the exception.

To put it in concrete terms, compare the patent in _Alice_ (on the business
practice of intermediated settlement), to something like an algorithm for
power management in a laptop that improves battery life. _Alice_ says that the
former is not patent eligible, in part by distinguishing it from the latter.
But it's not really talking about the latter category of eligible inventions,
or making any statements on how broadly or narrowly that category should be
defined.

~~~
jcranmer
The article does a major disservice by not tracing the history of software
patents.

First, in Flook, SCOTUS effectively said that software wasn't patentable, the
software in question being a controller for a catalytic converter. In Diamond
v. Diehr, SCOTUS said that software was patentable insofar as it was part of a
larger patentable system, the software in question being a controller for a
rubber mold.

Effectively, SCOTUS (in a time-honored tradition) overturned Flook in Diamond
v. Diehr while simultaneously emphasizing that it wasn't overturning Flook.

The Federal Circuit then created the infamous State St. ruling, which held
that anything was patentable if it produced a "useful, concrete, tangible
result." This is generally recognized as the moment when the patent system
broke.

In Bilski v. Kappos, SCOTUS again returned to striking down dubious patents.
Of particular note, all of the opinions went out of their way to criticize the
State St. formulation as exceptionally bad law. They also rejected the CAFC's
alternative-to-State-St. formulation of "machine or transformation test" while
being unable to articulate what the correct test ought to be. Mayo and Alice,
as noted in the article, further slammed both the State St. notion of "pretty
much everything you can think up is patentable" and the general class of
business patents. At the same time, SCOTUS has been reluctant to fully close
out what isn't patentable (so as to avoid accidentally shutting out Next-Big-
Technological-Area-That-Really-Needs-Patents) while being unable to articulate
what makes something in a really gray area like software able or unable to
clear the bar.

The thrust of SCOTUS is pretty damn clear: if your patent is struggling to tie
its innovation to something that's pretty clearly patentable under 18th
century patent norms, it's not going to be patentable. That it can't formally
articulate those guidelines into a coherent, clear statement is unfortunate
but completely understandable. Software itself is in a gray area that really
could use clarification, but SCOTUS isn't going to do that without an
appropriate vehicle to rule on. Someone needs to try to obtain a patent that
is clearly novel, useful, and pure software and have its validity challenged,
and have this challenge be appealed up to SCOTUS, before you're going to get a
decision where SCOTUS may try to decide it.

Bilski, Mayo, and Alice have all shown that several justices are inherently
skeptical of software patents, and they've also shown that software patents
are of major interest to the wider topic. But SCOTUS is generally unwilling to
rule on a question that isn't directly presented and argued before them, so
until a case that itself directly involves software patent 101 eligibility
(and has no room to rule invalid on 102-104), there is unlikely to be much
clarity here.

~~~
brlewis
>In Diamond v. Diehr, SCOTUS said that software was patentable insofar as it
was part of a larger patentable system, the software in question being a
controller for a rubber mold.

Not true. They said system could be patentable despite having software as a
component. This is common sense. If an invention includes a pulley, a wheel,
and a lever, you don't evaluate what's there if those non-novel elements are
removed; you look at the whole system. SCOTUS said to look at the system as a
whole, including the software. But the novelty and non-obviousness have to
exist in the system as a whole. If it's only novel and non-obvious in the
software, generally speaking, no patent. They did allow for the possibility
that patentable software might possibly exist, but the gist of the ruling is
that they hadn't seen such software yet. Also that it was up to congress to
clarify, because they didn't feel 100% comfortable deciding if software could
possibly be patentable.

So they basically stopped a millimeter short of saying software couldn't be
patented at all, and the State St ruling stuck a crowbar in that crack.

------
userbinator
The title with "poised to make a comeback" is misleading because it implies
software patents existed and then were completely eliminated at one point,
which is (unfortunately) not true.

------
bleriot
Looks like the decisions that favor patent trolls were all decided by majority
Obama appointees. Makes me wonder if the new Supreme Court appointees will
accept any challenges to these rulings and if so, will they finally put a
leash on this Federal Circuit Appeals Court.

~~~
jcranmer
These pro-patent decisions by the FAFC have generally been struck down by
SCOTUS repeatedly. The history of patent decisions is basically "FAFC says
this isn't kosher" and SCOTUS responds "you're a pack of idiots; REVERSED by a
unanimous court".

