Out-Law News | 23 Jul 2008 | 2:15 pm | 2 min. read
John F Duffy is a law professor at George Washington University Law School in Washington DC, and he has published an article arguing that the software patents that form the basis of much of the US technology business are under threat.
"The logic of the PTO’s positions in [recent cases] has always threatened to destabilize whole fields of patenting, most especially in the field of software patents," wrote Duffy at patent blog Patently-O.
"[The implications of the judgments] should capture the attention of the many inventors and firms owning, or seeking to own, patents on innovative computer implemented processes, for the PTO’s new interpretation of patentable subject matter provides a clear avenue to reject patent applications and to invalid issued patents on all such innovations without regard to how meritorious or creative the innovation is," he wrote.
A patent is a kind of protection for an inventor. In return for making public exact, detailed instructions on how to repeat the invention the inventor is given a monopoly on it for a fixed term of up to 20 years. After that time others can follow his instructions and repeat his inventions without his permission.
Duffy has examined the rulings of the US Patents and Trade Marks Office (USPTO) in a number of cases, including those of Nuijten, Comiskey and Bilski. In these, he said, the USPTO imposed new restrictions on what can be covered by a patent.
"In the most recent of these three … the [USPTO] takes the position that process inventions generally are unpatentable unless they 'result in a physical transformation of an article' or are 'tied to a particular machine'," he wrote.
It has been assumed that software patents will survive this ruling because they are tied to a machine, since they cannot be useful without a computer on which to run.
But Duffy claims that more recent USPTO rulings say that a general purpose computer is not a machine in that sense, and that software is not patentable if it has to rely on a computer being the machine in that definition.
Duffy goes on to apply the new terms to the patent-protected PageRank system which underpins Google's entire business and finds that under the rules its patent is invalid. Though the patent is owned by Stanford University, where it was developed by Google founders Larry Page and Sergey Brin, Google holds an exclusive licence for it.
The rules require first that an invention create a 'physical transformation of an article'. Duffy said that cannot be said to be true of Google's system.
"The total output from the Google patent is just a mass of intangible data, and worse still it is intangible data about intangible documents. Simply put, there’s no 'physical,' no 'transformation,' and no 'article.'," wrote Duffy. "It seems impossible to imagine that a process would qualify where it only scores virtual documents by virtual links to other virtual documents."
In another case, that of Langmeyr, Duffy found that the USPTO had said that the ability of software to be run on any computer excluded it from patentability.
He said that the Langemyr ruling found that an ability of software to run on any machine meant that it was not tied, in the phraseology of the USPTO, to "any particular machine", and therefore cannot rely on that in order to become patentable.
"In these crucial passages, the PTO Board has provided the foundation for rejecting and invalidating huge swaths of software patents including not merely Langemyr’s claims, but those of Google, Microsoft, IBM and many other companies," wrote Duffy. "The constriction is truly breathtaking, given that the PTO’s position pushes outside the patent system Google’s PageRank patent, even though that patent covers one of the most widely known and commercially successful innovations of our era."
"Vast industries of modern innovation must now wait to see whether the courts will follow the [USPTO]'s lead," wrote Duffy.