

Software Patents and the Return of Functional Claiming - Karunamon
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2117302

======
ScottBurson
I propose a different solution. If I may briefly quote Wikipedia (from
[http://en.wikipedia.org/wiki/Inventive_step_and_non-
obviousn...](http://en.wikipedia.org/wiki/Inventive_step_and_non-
obviousness)):

 _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.
    

In addition, the court outlined examples of factors that show "objective
evidence of nonobviousness". They are:

    
    
        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.

------
creamyhorror
I googled Lemley, and came across this discussion thread:

[http://www.ipwatchdog.com/2011/10/09/defending-the-myth-
of-t...](http://www.ipwatchdog.com/2011/10/09/defending-the-myth-of-the-sole-
inventor/id=19648/)

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.

~~~
ajb
Just for clarification - it looks like the odious remarks you quote are by
some random commenter, not by Mark Lemley, the author of the piece. (I wasn't
sure whether you were claiming that or not)

------
Karunamon
There is an infoworld article that has a more detailed summary[1].. I tried to
post that first but it immediately went dead. Infoworld is banned or
something?

[1]: [http://www.infoworld.com/d/open-source-software/the-
software...](http://www.infoworld.com/d/open-source-software/the-software-
patent-solution-has-been-right-here-all-along-202299)

------
astrodust
The observation that a lot of the conflict comes about because of the
"functional" language employed in patents, where the end result of the
invention is described, rather than the "technical" language which describes
the method to achieve the desired function, is an important one.

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.

------
randallu
So does that mean that only the prescribed "methods" for accomplishing a goal
can be patented?

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?

------
jorgem
How do you get behind something like this? The author of the paper is my new
hero.

