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Patents: Where's the invention?

06.03.2006
Hardly a week goes by without the controversial issue of software patenting hitting the news. Particularly controversial are the business-method software patent filings that are inundating the U.S. Patent and Trademark Office. Patent attorneys are characterizing obvious and normal business methods of processing information as "machine systems" and describing the logic for automating a manual or semi-manual business method as an invention. And the patent office continues to accept such applications.

Meanwhile, the U.S. courts are trying to cope with, as well as clarify, the plethora of software patents that are in litigation. It's a real mess that seems to be getting worse. Although nearly 40 years have passed since I was granted the first software patent, the nature of software is still being debated around the world.

Many organizations are fighting for or against the patenting of all software, while others are solely for or against the patenting of business methods. As more and more business methods are computerized, it is clear to many of us in the computer field that there are no inventions involved. What constitutes an "invention" is key to this discussion.

The patent office and the Supreme Court have never indicated that a computer program is the subject matter that can be patented. Patents can be granted to processes, machines or methods when they rise to the definition of an "invention" in patent law. While the invention may be implemented in a computer program, it is not the program that is patented. Computer programs themselves are protected from unauthorized copying only by copyright law.

An invention, in lay terms, can be a novel device, material or technique that is new, inventive and useful. It has been well established that machines, including computer hardware, contain patentable subject matter. As for software, it is well recognized that whatever can be designed in hardware circuitry can be developed in a computer program to perform the same functions. The choice is a purely economic one that mainly has to do with cost, speed and flexibility. Patent applications normally show the preferred implementation, and the patent must disclose the invention adequately for one skilled in the art. But the disclosure could be in the form of circuitry for a hardware implementation, a flow chart for a software implementation or a combination of both.

In 1981, the Supreme Court ruled in Diamond v. Diehr that processes were patentable, though it left to the patent office to decide whether a process was "novel" and "nonobvious." The court's emphasis was on whether there was an invention, not on how the invention was implemented.