Authored by: Minsk on Thursday, July 29 2010 @ 03:44 PM EDT

Unless you want to correct the USPTO. In that case, you want another thread :) [ Reply to This | # ]



Authored by: complex_number on Thursday, July 29 2010 @ 03:46 PM EDT

Remember to quote the article in question



---

Ubuntu & 'apt-get' are not the answer to Life, The Universe & Everything which

is of course, "42" or is it 1.618?

[ Reply to This | # ]



Authored by: Anonymous on Thursday, July 29 2010 @ 03:51 PM EDT

Well, if you can describe the machine to create the heavens and the earth, in

enough detail that one "ordinarily skilled in the art" can implement

it, then, yes, that probably is worthy of a patent...



MSS2 [ Reply to This | # ]



Authored by: bugstomper on Thursday, July 29 2010 @ 03:51 PM EDT

Please stay off topic here. Use Html formatted Post Mode to make your clickies

more convenient and your formatting prettier. [ Reply to This | # ]



Authored by: bugstomper on Thursday, July 29 2010 @ 03:53 PM EDT

COMES transcripts here, posted with HTML markup in Plain Old Text mode so PJ can

easily copy and paste them.

[ Reply to This | # ]



Authored by: cmcnabb on Thursday, July 29 2010 @ 04:04 PM EDT

It seems to me that the only time "software" should be remotely

patentable is if

it implements a novel and non-obvious electronic circuit or machine that

*could* also be implemented without the use of software. For example, a

software-defined radio is an implementation of a real device on a computer. The



real device can exist entirely on it's own in a physical form.



---

"When governments fear the people, there is liberty. When the people fear the

government, there is tyranny." - Thomas Jefferson [ Reply to This | # ]



Authored by: Anonymous on Thursday, July 29 2010 @ 04:12 PM EDT

It really should be simple.



If you can perform the "invention" without a machine, e.g. a pencil

and paper, then it is abstract and not patentable, even if the pencil and paper

version takes longer than on a computer.



Another example: If an invention can be performed on a Turing machine, then it

is abstract. [ Reply to This | # ]



Authored by: Anonymous on Thursday, July 29 2010 @ 04:18 PM EDT

Can we send this to them?

Note the whole article is under PJ's Creative Commons License.

An Explanation of Computation Theory for Lawyers

Wednesday, November 11 2009 @ 07:48 PM EST

http://www.groklaw.net/article.php?story=20091111151305785 As didn't Novell tell the Supreme Court to read this, so then maybe the USPTO should read it too?

Linked from :

Novell tells Supremes to read Groklaw in Certiorari petition Authored by: PJ on Thursday, March 04 2010 @ 08:50 PM EST

I hope they read Computational Theory for Lawyers, if they do come here. Our entire Bilski coverage, in a perfect world. Afterall, software is what it is. And even the 5th Justice, didn't agree that software is patentable on it's face. Re: Bilski, they only all agreed that this BM patent as not patentable, and a majority actually didn't say that software is patentable. So - the USPTO should side with NO SOFTWARE PATENT angle on the Bilski ruling, and let the court then clear up any questions from there, meaning that the USPTO does not do damage by approving software patents, and if a case comes up that the plaintiff challenges the USPTO then let the court decide that too. [ Reply to This | # ]



Authored by: maroberts on Thursday, July 29 2010 @ 05:20 PM EDT

...you no longer had to produce a working model/prototype of your invention.



Admittedly in some areas (e.g. drugs), this may be a little difficult, but its a

sound idea which would solve a lotta problems. [ Reply to This | # ]



Authored by: Gringo on Thursday, July 29 2010 @ 05:25 PM EDT

I have seen patent lawyers seduced by the notion that UPSTO and the Courts have a duty and a responsibility to redefine patent law for the Information Age. This is often a preamble to a justification for patenting software and genes, etc. This is false reasoning, because it presumes what Congress would do. There is no reason whatsoever to assume that patent law would be broadened to include software and genes by Congress, should they decide to revisit patent law, and no one has the right to make such an assumption. For all we know, and enlightened Congress might specifically exclude such items. [ Reply to This | # ]



Authored by: Tolerance on Thursday, July 29 2010 @ 05:58 PM EDT

Oh dear. PJ, a few days ago I spent altogether too much time commenting that

algorithms weren't all of software and complaining that failing to preserve the

distinction would bite eventually. Now it has.



Briefly, until recently the word algorithm in computer science referred to code

which was finite (if arbitrarily large) and eventually returned a definite

result. That's because Turing machines operate on algorithms, so defined.



All is not lost. Even if we consider algorithms to have the broader sense in

casual use, it's still true that any item of software has a perfect map to some

abstract structure in mathematics. So at the very least, tying it to a specific

machine would seem essential to avoid patenting an abstract idea.



---

Grumpy old man [ Reply to This | # ]



Authored by: Anonymous on Thursday, July 29 2010 @ 06:17 PM EDT

How do you compensate someone who works for an extended period developing a

novel technique for solving an engineering problem?



Such things can't be marketed without explaining it in so much detail that

others can force the original creator out of the market.



An electronic circuit can be described mathematically. This is what circuit

simulators like Spice do. So why is an analog implementation of the mathematics

patentable, but a software version not?



rhb

[ Reply to This | # ]



Authored by: Anonymous on Thursday, July 29 2010 @ 07:19 PM EDT

I was nervous about the USPTO's possible response, but it seems that there will

be real gains from Bilski.



****** Quote ******

Factors To Be Considered in an Abstract Idea Determination of a Method Claim



A. Whether the method involves or is executed by a particular machine or

apparatus. If so, the claims are less likely to be drawn to an abstract idea; if

not, they are more likely to be so drawn. Where a machine or apparatus is

recited or inherent in a patent claim, the following factors are relevant:



(1) The particularity or generality of the elements of the machine or apparatus;

i.e., the degree to which the machine in the claim can be specifically

identified (not any and all machines). Incorporation of a particular machine or

apparatus into the claimed method steps weighs toward eligibility.



(2) Whether the machine or apparatus implements the steps of the method.

Integral use of a machine or apparatus to achieve performance of the method

weighs toward eligibility, as compared to where the machine or apparatus is

merely an object on which the method operates, which weighs against

eligibility.

****** EndQuote ******



It looks like software on general purpose machines are (hopefully much) more

likely to be rejected. This is definitely a fair victory.



****** Quote ******

(2) The extent to which the claim is so abstract and sweeping as to cover both

known and unknown uses of the concept, and be performed through any existing or

future-devised machinery, or even without any apparatus.



(3) The extent to which the claim would effectively cover all possible solutions

to a particular problem; i.e., that the claim is a statement of the problem

versus a description of a particular solution to the problem.

****** EndQuote ******



This is an important rule (assuming it is new or newly focused), and, if taken

seriously, would possibly lead to the rejection of perhaps all of the

notoriously broad and "duh" patents we have seen over the years (were

the rules to be applied to those patents today).



In an effort to narrow down the meaning of "abstract" as per Bilski,

the patent office appears to be moving to requiring much more specificity in the

patent claims. This would certainly put patents closer to copyrights in terms of

narrowing their scope. A narrowed scope means it is easier to actually find

reasonable ways to invent around a patent. Also, the patent author will likely

have to take more time to write up the patent (and understand the invention),

opening the door to more prior art coming about. Independent invention getting

hit by the patent system will be less of an issue. In general, fewer patents

will be worth writing, and fewer open source developers and users will have

reasons to worry nearly as they may have in the past.



I would say that practical patent supporters in high positions at the USPTO, in

adhering to Bilski, want to take the opportunity to try and remove the black eye

patenting has gotten and not handcuff those that produce algorithms (eg, in

software) and require freedom, while still enabling the taxing of the superior

product implementations among those involved in the manufacturing industry where

patent costs as a business line item are tolerable.



PJ, it's not just you that believes Bilski has come with a "silver

lining" as goes open source.



:-)



--Jose_X

[ Reply to This | # ]



Authored by: Khym Chanur on Thursday, July 29 2010 @ 08:28 PM EDT

Will the patent office really listen to comments from the lay public? ---

Give a man a match, and he'll be warm for a minute, but set him on fire, and he'll be warm for the rest of his life. (Paraphrased from Terry Pratchett) [ Reply to This | # ]



Authored by: Anonymous on Thursday, July 29 2010 @ 09:03 PM EDT

From the UTPTO Website:

http://www.uspto.gov/news/pr/2010/10_35.jsp



"Comments should be sent to Bilski_Guidance@uspto.gov and must be received

by September 27, 2010."



Delivery to the following recipient failed permanently:



Bilski_Guidance@uspto.gov



Technical details of permanent failure:

Google tried to deliver your message, but it was rejected by the recipient

domain. We recommend contacting the other email provider for further information

about the cause of this error. The error that the other server returned was: 550

550 5.1.1 <Bilski_Guidance@uspto.gov>: Recipient address rejected: User

unknown in relay recipient table (state 14).

[ Reply to This | # ]



Authored by: dio gratia on Thursday, July 29 2010 @ 11:01 PM EDT

i4i recently announced the USPTO upheld their 5,787,449 patent. There are three independent claims, Claim 1, Claim 14 and Claim 20. Claim 1 was not in play for the reexamination (going to the Official Gazette for Patents following the link to week 30 (July 27, 2010) and select Browse Granted Patents and entering "5787449" in the search box we can find that the recent reexamination was confined to claims 14-20). We are primarily concerned with independent claims and don't look at 15 - 19. The validity of claims 14-20 were upheld by the reexamination. 14. A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising: providing the mapped content to mapped content storage means; providing a menu of metacodes; and compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and providing the document as the content of the document and the metacode map of the document. 20. A method for producing from a document made up of metacodes and content, a map of metacodes and their addresses of use in association with mapped content of the document and stored in distinct map storage means, the method comprising: (a) reading the content of the document until a metacode is found; (b) copying the content and storing the copied content in a mapped content storage; (c) noting in the map the found metacode and its position in the content; (d) repeating the processing of (a)-(c) until the entire document has been processed; and then (e) providing the document as the content of the document separately from the metacode map of the document. From the Detailed Description of the Invention we see that it provides the ability to store metacode attributes in a table instead of inline allowing the faster traversal of a mark up language, presumably for faster display. The table provides pointers into the raw markup language data, a means of faster access. Setting aside the notion of indexes and tables of contents that happen to include pointers such as page numbers and by association section and subsection numbers demonstrating the lack of novelty other than cart before the horse questions, lets address how this is tested under the Machine-or-Transformation test. We could also note that there is an issue differentiating a document from an abstract representation of a document and that by an large we equate semantically the data and the visual representation of the document that it represents. In other words, we are dealing with abstractions of documents which fully convey the ideas presenting by displaying the document visually, either on a computer screen or in printed form. However Webster's dictionary provides a definition of document compatible with our usage (See 3.). First of all does "A computer system for the manipulation of the architecture and content of a document having... " address a particular machine (Claim 1.)? "A computer system" appears to lack particularity. We know that the offending Microsoft Office software runs on general purpose computers. We know from the Federal Register publication of the proposed rules 101 Method Eligibility Quick Reference Sheet (available as 101 Method Eligibility Quick Reference Sheet, PDF, 49 KB), that the ..."Machine is merely an object on which the method operates" under "Factors Weighing Against Eligibility". Contrary to the views of some of the more vocal patent practitioner's blogs simple recitation of the equivalent of "on a computer" may not be enough, that it may not be a particular machine. We find in the Notes "(2) For a detailed explanation of the terms machine, transformation, article, particular, extrasolution activity, and field-of-use, please refer to the Interim Patent Subject Matter Eligibility Examination Instructions of August 24, 2009" which introduces the Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 (PDF File 389 KB) and provides guidelines for the Machine-or-Transformation test. The August 24, 2009 letter is the first page of the document. As background (Page 6, document page 5) tells us: In accordance with the M-or-T test, the claimed process must: (1) be tied to a particular machine or apparatus (machine implemented); or (2) particularly transform a particular article to a different state or thing. A method claim that does not require machine implementation or does not cause a transformation will fail the test and should be rejected under § 101. However, the mere presence of a machine tie or transformation is not sufficient to pass the test. When a machine tie or transformation has been identified, it must be further determined that the tie is to a particular machine or the particular transformation is of a particular article. Under II. Particular Practical Application, B. Processes (Methods) (Page 5, Page 4 of the document) we find the referenced definitions, and on Page 7, Page 6 of the document) specifically: A particular machine or apparatus or transformation of a particular article means that the method involves a specific machine or article, not any and all machines or articles. This ensures that the machine or transformation imposes real world limits on the claimed method by limiting the claim scope to a particular practical application. For computer implemented processes, the machine is often disclosed as a general purpose computer. In these cases, the general purpose computer may be sufficiently particular when programmed to perform the process steps. Such programming creates a new machine because a general purpose computer, in effect, becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. To qualify as a particular machine under the test, the claim must clearly convey that the computer is programmed to perform the steps of the method because such programming, in effect, creates a special purpose computer limited to the use of the particularly claimed combination of elements (i.e., the programmed instructions) performing the particularly claimed combination of functions. If the claim is so abstract and sweeping that performing the process as claimed would cover substantially all practical applications of a judicial exception, such as a mathematical algorithm, the claim would not satisfy the test as the machine would not be sufficiently particular. The impact of this is that we have conflicting guidelines apparently both in effect which if resolved in the applicant's favor grants patent eligibility. It accepts that a general purpose machine can be particular, but that if the method wholly operates on the machine "weighs against eligibility". Another factor that comes into play is whether or not the entirety of the claim is expressed as a mathematical algorithm enclosing all practical applications, addressing a judicial exception. For purposes of looking further lets assume the Machine leg of the Machine-or-Transformation test failed. We could note that Claim 1. was not part of the reexamination, presumably from having been found invalid or inapplicable during the course of the trial. From the court record O: Cases - CIVIL OPENi4i v Microsoft 607cv113 patent607cv113 LED ... (PDF, 291 KB) we find that Claims 1 - 13 were held invalid by Microsoft's Motion for Partial Summary Judgment of Invalidity of Claims 113 of the 449 Patent for Indefiniteness Under 35 U.S.C. § 112 2 (Docket. No. 83). Indefiniteness is a fancy term meaning that a Person Having Ordinary Skill in the Art would be unable to implement the invention from the description. Claim 1 implementation was found to be indefinite, in all likelihood because the equivalent of "on a computer" did not provide sufficient elaboration for implementation on a computer. Claims 14. and 20. are Method claims and bring up the question of transformation. From II. B. above (the preceding Page): An article includes a physical object or substance. The physical article or substance must be particular, meaning it can be specifically identified. An article can also be electronic data that represents a physical object or substance. For the test, the data should be more than an abstract value. Data can be specifically identified by indicating what the data represents, the particular type or nature of the data, and/or how or from where the data was obtained. Transformation of an article means that the article has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Manufactures and compositions of matter are the result of transforming raw materials into something new with a different function or use. Purely mental processes in which thoughts or human based actions are changed are not considered an eligible transformation. For data, mathematical manipulation per se has not been deemed a transformation; but, transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use (the efficient operation of a word processor for example). The first hurdle we see is whether or not the document data is abstract. We could note that the actual text conveyed to a visual or printed representation might not be considered sufficiently abstract (See 3a), simply enumerated while the metacode might be - it provides pointers to places in the document data, in abstract. Setting aside simple prejudice we examine transformation. We see that the document would be transformed as in the claims by the inclusion of the abstract data, in that it does provide suitability for a different use. As noted first the use of metacode to implement the equivalent of indexes and a table of contents speaks to novelty "on a computer" or as a method. One could ask if such manual uses were available more than a year before the filing date of the patent (June 2, 1994) and they were. Think HTML, 1991, Mozilla, URLs and other references - printed documents not withstanding. The patent appears to be a field-of-use limitation on prior art to efficient computer use of the document data. Prior art notwithstanding this purely software patent appears to have been upheld based on the transformation of the document by inclusion of abstract data to suitability for a different use - faster access or "efficiency of operation" (from the patent). We can conclude that in all likelihood the transformation leg of the Machine-or-Transformation test is currently being used to support the validity of purely software patents. Claims 14 through 20 do not involve a particular machine. (Note that the actual reexamination was completed in May 2010, and the certificate of reexamination noticed in the Patent Gazette 27 July 2010). The only hope from this particular patent infringement case would be that Microsoft's Supreme Court appeal were successful based on a finding that data is not a particular article. [ Reply to This | # ]



Authored by: reiisi on Friday, July 30 2010 @ 01:02 AM EDT

I feel like a broken record, because I keep saying this. (And I keep getting

ignored.)



Algorithms are abstract. Software that runs, to the extent it is free of

programming errors, is an implementation of an algorithm. (Usually of multiple

combined algorithms, but an algorithm combined with an algorithm is still an

algorithm.)



(Repeating myself a bit from a post above:)



That's the way the math department described it when I was in college 20 or 25

years ago.



It was also the way the CS department described it.



Patenting implementations of algorithms, whether in hardware or software, should

be no problem, with a small, but significant caveat. I'm pretty sure that the

original intent of the people who wrote the law agreed on that.



(Someone in this article is busy pointing out that patents went south from the

point a working model was no longer required.)



The verbal descriptions in most of the patents I've read are verbal descriptions

of algorithms. Not the algorithms themselves, but verbal descriptions thereof

(and generally not very accurate, which is something else that needs

consideration).



Algorithms can be described mathematically, too. Sometimes we say that the

source code is a mathematical description of the algorithm, but this is not

accurate. Source code is a (partial) mathematical description of an

implementation of the algorithm.



One problem is that we keep arguing that source code is equivalent to a

mathematical description of the algorithm.



It is not. It is a mathematical description of an implementation of the

algorithm.



Other parts of the description of the implementation include the context of

implementation. When you make that concrete, you specify the run-time, the

libraries used, the requirements of machines the software runs on.



Either way, the patents seem to be conflating descriptions of algorithms with

descriptions of implementations. Almost every software patent I've seen

describes an algorithm, not an implementation.



Without the source code, you really can't recreate any sort of a functioning

machine, algebraic or otherwise, from any software patent I've ever read.



I think that's the line that should be seen. (Doesn't need to be drawn, it's

already there, if we are willing to see it.)



Implementations are necessarily concrete. They require source code and other

specifications.



Algorithms are necessarily abstract.



That should be the line.



If you want to patent software, you should be required to patent your source

code. That means you must file it, make it visible. Perhaps not the entire

source code, but the source code that implements the claims.



And, yeah, that would mean that source code could be written to avoid the patent

claims. Of course it means that. Regular hardware patents have the same problem,

usually.

[ Reply to This | # ]



Authored by: Ian Al on Friday, July 30 2010 @ 05:34 AM EDT

(1) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed method steps weighs toward eligibility.



(2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility.



(3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility. I expect that each submitted software patent will claim to be on a particular machine. I see considerable hurdles for the proposer to overcome. Take the 'one-click' type of proposal. The machine is not the browser client machine because it plays no active part in the process. The machine is up in the interweb. So, which particular machine is it? The process could be implemented on any interweb machine in the world. All the interweb machines and the interweb website software they run can all be made to implement the 'one-click' proposals. In other words the interweb machines 'contribute only nominally or insignificantly to the execution of the claimed method' and they are 'merely objects on which the method operates'. That is demonstrated by the fact that it is irrelevant which machine is used because they can have different processors, different operating systems, different programming languages, different interweb software and it makes no difference: they can all act as objects that have been chosen to implement the process for reasons not related in any way to their ability to implement the process.



How about a file system on a memory device? It is not a process. It is not a machine for doing something. It is a data structure which the USPTO has already ruled as ineligible. Don't tell me that the data structure is especially clever because it overcomes a limitation of another data structure. Phooey!



Lets have a look at a feature in a personal computer program. What is it about the feature that makes it essential to use a particular PC to implement it? Could you use any PC you liked? Yes you could. Running on a particular processor, operating system and as part of a program that you wrote is a choice that you made that is not crucial in any way to the implementation of the process. That goes for writing it in a particular language or implementing it as a web page on a local web-server. They are all 'merely objects on which the method operates'.



Let's suppose that we intend to patent a wonderful new algorithm to reduce the size of video files stored on computers. Of course, we don't propose to patent the algorithm: that would be completely ineligible! No, ours is a complete process for the transformation of the data from one form to another and back, using an algorithm. Of course, it must be admissible because it is a process and it is a machine. Now, the machine is, unfortunately, 'a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) which would weigh against eligibility'. So, we apply as a process patent.



Diamond v. Diehr: Instead, they seek to patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. The maths in Diamond v. Diehr was 'a well-known mathematical equation' aka 'mathematical prior art'. The Supremes said 'I want to let this guy patent the use of this mathematical prior art for the purpose of vulcanising rubber'. So, the Supremes don't reject patenting mathematical/software prior art in a patentable invention containing no inventive components. Its the invention that has to be inventive, not the components. Note that one of the protect-able components in this case is a well known mathematical algorithm which was considered prior art. Maths, of itself, is not patentable subject matter, but the Supremes accepted it as a protect-able part of an invention.



So how does our algorithmic patent hold up in the light of Diehr? Unfortunately, you cannot transform rubber, or any other material, using our patented method. It is a transformation of data. Let's see if it improves our chances if we claim that the process is the end to end process of capturing the video with a camera, saving it to a file with our algorithmic machine and then displaying the result on a video screen. Now, the 'material' we are transforming is the light forming the video event. However, anything less than a perfect reproduction of the original video event is not a useful transformation in itself. So, the only difference between our transformative machine and the immediate display of camera images on a screen is the transformation of the digital data representing the video and the essential reversal of the transformation for it to be useful. So, any transformation of material that takes place has to be reversed as much as possible for the process machine to be useful. The invention does not transform material to another useful form. The output of the machine is the same material that went in. Either that, or the invention is just a machine to transform data and that is an abstract process.



Patent denied.



---

Regards

Ian Al

SCOG, what ever happened to them? Whatever, it was less than they deserve. [ Reply to This | # ]



Authored by: ais523 on Friday, July 30 2010 @ 08:29 AM EDT

(Note: the remainder of this post is an implausible hypothesis, mostly not actual fact. Hopefully, it'll help show patent lawyers what life as a programmer when software patents are allowed can be like. The analogy is not quite perfect, but is more or less the right level of ludicrous to describe the current situation.) When preparing their cases, lawyers often want to cite precedents and similar cases, in order to demonstrate that similar cases have had similar results to their desired result in the past. Due to the number of court cases that have taken place over the years, searching for citations can be a difficult job, requiring both skill and a lot of time. Originally, citations were unprotected; if a lawyer cited a case, then anyone could just observe the fact of the citation, and use the citation themselves; after all, court records are public (and for good reason). Thus, it rather annoyed lawyers and paralegals who had spent hours trawling through obscure cases looking for citations, to see all their hard work simply copied the next time a similar case came up; there were even widespread fears that some of the larger law firms had found devastatingly useful citations and yet were keeping them hidden, forgoing their use in less important cases to be able to use them as a surprise should they ever reach the Supreme Court, although nobody actually had any evidence of this happening. The situation was said to cause a worrying lack of citation research, leading to a hypothetical future in which there was nothing but a few low-quality citations that anyone dared use. Thus, after much lobbying, a new law came in; henceforth, citations could be patented: upon finding a useful citation for the first time, the law firm in question became the only firm who could use that citation in their own cases for 25 years (the idea being, that that compensated them for the effort of finding the citation in the first place, and after that, the citation would be free for all to use, thus benefiting the law community at large who would have a new useful citation to use in their own cases). There were several safeguards in the new system; "obvious" citations like recently decided cases in the appeals courts were deemed too easy to find and not worthy of patent protection, and citations could only be patented by the first law firm to find them. However, it quickly lead to all sorts of problems. One issue was that, upon finding a citation, you had no easy way to tell whether someone else had already patented it or not. In theory you could trawl through the lists of published citation patents, but not only was this just as difficult as finding the citations in the first place, but the citations in the patents were deliberately written in an obscure and difficult style, that was just about enough to check whether a particular citation violated them, but not to reproduce it, thus subverting the whole purpose of the patents in the first place. (Random commenters at Groklaw observed that it would make a lot more sense if the actual text of the citation itself had to be included in the patent, not just a convoluted description of it.) As it was hard to put together a convincing case without the use of citations, it became commonplace for lawyers to simply ignore the patents of other law firms; it was virtually impossible not to. Because all the major firms were doing it, none of them could hope to sue another for patent infringement without risking a huge countersuit, thus leaving the situation amongst major law firms much the same as it was pre-patent. As a bonus, it made it almost impossible for new competitors, not to mention pro se litigants, to enter the market, as they didn't have a huge library of citation patents to defend themselves with. Another issue is that adding to the huge lists of citation patents that you had to trawl through to stay within the bounds of the law, there were thousands of other patents being filed all the time, often of dubious quality; some law firms would file patents on every minor trial court judgement in a particular geographic area, just in case it ended up being an important citation some day. Even obviously citeable cases were being patented, on the basis that smaller law firms wouldn't be able to afford the lawsuits needed to overturn the resulting patents. With more or less every court case ever patented, generally with vague descriptions that didn't even make it clear what the citation in question would be useful for, the catalog of patented citations was completely useless, even for people willing to wait 25 years for the citations to end patent coverage. (Not to mention, that the law changes quickly, and after 25 years most of the decisions were completely irrelevant due to changes to the law in the intervening time.) So what's the situation now? An oligopoly of a few big law firms, a large pool of citation trolls (who own a lot of citation patents, often bought from actual law firms, and who don't bring cases themselves and so who can't be countersued over citation patent violation), and a few smaller firms who have to first write their cases, then look for some really obscure and less relevant citations to substitute in for the ones they want to use. Nobody else has much of a chance at legally practicing law at all. Outside the major law firms, pretty much everyone hates the way citation patents turned out; useless as protection against big firms, a threat hanging over everyone else, and not even giving useful information to the public. There's a growing movement to repeal them at the moment, and even a Supreme Court case which casts doubt on whether citation patents are even legal in the first place (although it's unfortunately unclear and ambiguous). Hopefully, we can get them repealed, with enough lobbying and explanations of the situation. [ Reply to This | # ]



Authored by: Ian Al on Friday, July 30 2010 @ 08:33 AM EDT

Over the years that we have talked about software patents, comments about

including software source code in software patents have stuck in my mind. They

all revolve around folk saying that they include source code in their own

patents or that the design of the software invention can only be explicitly

given by using the source code.



Every time, my little internal Mr. Irascible runs around ringing alarm bells and

shouting 'preposterous', but I have not been able to elucidate what's... what's

upsetting the little fellow.



I can withstand the stress no longer. I must have a go at rationalising this. If

you are not convinced, then take it up with Mr. Irascible.



The source code is intended as the explicit blueprint of the software invention

such that someone skilled in the art can make one just like it. Now, when I am

walking up and down the very middle of the high street shouting obscenities

about software patents it is because I believe that they do not give the

explicit blueprint for the software invention, but manage to define just the

functionality. This means that no one will ever be able to invent another

invention that avoids the patent because anything that recreates the

functionality is considered violating by the courts.



So, surely the source code is the perfect blueprint. Anyone skilled in the art

can make a device just like the one defined by the software source code. Mr.

Irascible is ringing the bells again so this is where I need to start

cogitating. What would it take to do what the invention does using the same

design, but coming up with a completely different blueprint? Let's start with

another processor, operating system and programming language. Immediately, the

courts and the USPTO would see an entirely different blueprint even if the

original source code invention was exactly copied. You programmers know what I

am getting at. The source code is explicit, but it is not capable of protecting

the construction of the invention even though the invention can be built exactly

using the source code in the patent.



Let's be more particular about the particular machine since that is on-topic.

Let's use the original machine, operating system and programming language. We

can protect the source code blueprint of the software invention with copyright,

but supposing someone finds a cunning way around that? For instance, let's use

the SCO Obfuscation and Ladderage Process (Patent Spending) and obfuscate 'til

the pips squeak. The courts and the USPTO will find it impossible to see the

original invention in the obfuscated code blueprint. The original inventor

might, but what is it that he can see in the other code that he can use,

alternatively, as a patent blueprint in such a way that he protects the

invention from the 'another machine' and 'Obfuscation Process' side-stepping of

the original patent, but still permits another inventor to come up with a new

invention that does the same thing?



I might have said this, before (OK, I've said it again and again 'till I'm blue

in the face), but I don't think there is a way. You might suggest that it can be

achieved in some way with pseudo-code. I think pseudo-code suffers from exactly

the same problems as source code.



If you start from the bottom up, you start with op codes that cannot be

patented. Then you get to individual lines of programming language source code

that cannot be patented. For software blueprints to be possible, it must be

possible as you go up the conceptual layers of the software to get to a level of

abstraction that is the invention and not just an inconsequential collection of

lower level components.



If you start from the top down, you begin with a general description of what the

program, as a complete entity, does. This is a functional description and is not

patentable. As you work down the layers of abstraction, you go past the

functional descriptions of program modules. Functionality must not be

patentable, as explained above.



It is my belief that the bottom up and top down analysis never gets to a layer

where it is possible to produce a blueprint for a software invention.

Functionality disaggregates directly to blocks of unpatentable code.



So, once again I throw down the challenge. If you believe you have a software

invention that can be protected by patent, show me the blueprint for your

invention such that someone else's invention is not foreclosed by your blueprint

and your own invention is protected no matter what the building materials used

by someone else may be.



We will never get beyond the 'software is patentable, no it's not, yes it is'

position with the lawyers. I believe that the 'show us the blueprint' is too

high a hurdle to surmount and that prior art discussions need never take place.

Whilst discussing prior art, let me pose this question. When you come up with

software prior art, is it always to do with software that had the same

functionality as the software patent in question? Why do you think functionality

should be patentable without revealing the invention blueprint? Just because I

can see the functionality at work on my Amiga, what makes you think that the

same invention does the same thing in a Windows PC.



Listen. No bells. I must be right!



---

Regards

Ian Al

SCOG, what ever happened to them? Whatever, it was less than they deserve. [ Reply to This | # ]



Authored by: dwheeler on Friday, July 30 2010 @ 09:55 AM EDT

Could some people draft and post possible responses to the USPTO? I'd be happy to write them a letter, but it's easier to write a more complete response once I see what others are saying. Any such response must be consistent with Bilski, since the USPTO must obey the Supreme Court's decision in Bilski. But since Bilski left many issues open, there's a lot of room for interpretation; I'd prefer that the USPTO interpretation caused less harm. [ Reply to This | # ]



Authored by: Anonymous on Friday, July 30 2010 @ 10:53 AM EDT

I think that an idea is abstract if it can be separated from the rest of the

invention or done on different hardware. I also think that this is a

sufficient, but not necessary condition (e.g. there may be other ways to

determine that an idea is abstract).



In that respect, I like the "particular machine" fork of the test.

The real problem was always the "transformation" fork, wherein people

could invent all sorts of irrelevant "transformations" like those

involved when a bit is written to the hard drive. [ Reply to This | # ]



Authored by: Anonymous on Friday, July 30 2010 @ 11:05 AM EDT

The bottom line: Patent law needs to be revised to be crystal clear as to what

is and is not patentable. My suggestion: Only physical, created objects or

compounds for which there is a working prototype or, in the case of compounds, a

novel, provable usage, and where there is no "prior art". "Prior

Art" for which there is no patent places the object or compound in the

public domain. No software, no processes, no methods, no biology. [ Reply to This | # ]



Authored by: Anonymous on Friday, July 30 2010 @ 06:04 PM EDT

I find it strange to have a Supreme Court decision on some question, and then

the organization (here PTO) goes and asks for public input. That is going from

one extreme to the other. Why would public input have any impact on what courts

decide?



I think that is called dysfunctional. [ Reply to This | # ]



Authored by: Wol on Friday, July 30 2010 @ 07:57 PM EDT

(2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility. This should read something along the lines of "the likelihood of eligibility is directly related to the degree to which the machine is dedicated to the method. A machine totally dedicated to the method is highly likely to be eligible, a machine which can easily be used for other purposes than the method is unlikely to be eligible. That takes the general purpose computer out of play rather nicely :-) Cheers,

Wol [ Reply to This | # ]



Authored by: leopardi on Friday, July 30 2010 @ 09:50 PM EDT

I suppose that IEEE-USA and Dr. Lee Hollaar are cooking up some advice for USPTO. I wonder what it will say. Will it be as rabidly pro-software-patent as their amicus brief? [ Reply to This | # ]



Authored by: paulkappler on Saturday, July 31 2010 @ 10:48 AM EDT

I think there could be some interesting discussions around a specific cases.



To me the most important patents that has the chance of being invalidated in

light of Bilski are the patents around H.264.



For example, if you look at the a Patent like Apple's US 7292636.

"computing a particular value that is based on (i) a first order difference

value between an order value for the third video picture and an order value for

the first video picture...." This is the first patent in the list of H.264

patents.



They are clearing just patenting an aspect of an equation using words. The

words are so obfuscated that it's nearly impossible to determine what exactly

the equations are without going back to the standard. Still....this just an

equation.



If you think about what a video encoders and decoders do they are simply a

mathematical transformation of a compressed video to uncompressed video.



From my of point of view these are clearly an abstract mathmatical ideas that

could be done by anything that can compute and is not tied to a particular

machine.



If I am correct there has just been an untold revolution. This could blow open

video on the internet. We should be able to integrate H264 video into Firefox

and Opera and end the video standards war. I wish there was a lawyer was

willing to help fight that battle.



Would innovation in video compression stop if you couldn't patent the results?

Absolutely not.....There is plenty of money to be made selling Hardware capable

of better video compression. Innovation can enable smaller lighter video

players. The demand for such video players and the profit that can be made from

them to fund such research will not go away. [ Reply to This | # ]



Authored by: BitOBear on Monday, August 02 2010 @ 04:38 PM EDT

I clear reading of the word "particular" leads away from uncertainty.

In particular (pun intended) the definition of particular most applicable here

is "surpassing what is common or usual or expected".



By such readings and definition, if you _can_ execute the resultant code on a

"general purpose computer" consisting of parts available from usual

and expected sources (e.g. all the parts came from Dell, Fry's etc.) then the

machine is not "surpassing what is common or usual or expected".



The fact that you _may_ execute the "invention" on a particular

machine is not sufficient, as I can custom-build a machine to any task.



It must be that the "invention" _can_ _not_ execute on a general

purpose computer to meet the "particular machine" test.



To that end, it should thus be codified. Further, any case of execution on a

general purpose computer should be held as a priori, not infringing regardless

of any patent.



This is a simple enough line to draw actually. Absent the electro-mechanical

doo-dad that makes the machine "particular", it aint'

"particular" and so is not subject to any teaching of the patent. [ Reply to This | # ]



Authored by: Anonymous on Monday, August 02 2010 @ 11:39 PM EDT

In answer to PJ's challenge, one example might be a patent that was already mentioned in a previous comment. Apple's U.S. patent #7292636, one of the patents in the H.264 portfolio, describes in part a method for encoding and decoding video information with variable accuracy timing specifications. The previous poster claimed this patent could be invalidated post-Bilski because it was just mathematical equations. This is not quite true, because the patent also describes the use of mathematical operations on particular data structures in order to implement working video encoders and decoders. The patentability of the subject matter is dependent not just on the choice of mathematical algorithms, but on the choice of data structures, and the ordering of their application, to form efficient video compressors/decompressors. This is an example of a software patent that does not simply cover abstract algorithms. Support for this can be found in related Supreme Court rulings. The latest Bilski decision references the Diamond v. Diehr ruling in 1981, which said in part: Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. In Gottschalk v. Benson, we noted: "It is said that the decision precludes a patent for any program servicing a computer. We do not so hold." 409 U.S. at 409 U. S. 71. Similarly, in Parker v. Flook, we stated that "a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm." 437 U.S. at 437 U. S. 590. It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., 333 U. S. Seed Co. v. Kalo Inoculant Co., 333 U. S. 127 (1948); Ebel Process Co. v. Minnesota & Ontario Paper Co., 261 U. S. 45 (1923); Cochrane v. Deener, 94 U. S. 780 (1877) O'Reilly v. Morse, 15 How. 62 (1854); and Le Roy v. Tatham, 14 How. 156 (1853). As Justice Stone explained four decades ago:



"While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be."



Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S. 86, 306 U. S. 94 (1939).11 The Apple patent describes how a particular data structure, sets of macrocells representing frames of a video, can be manipulated to produce other data structures containing sufficient information to represent intervening frames. The patent does not cover the mathematical functions by themselves, but the combination of functions and particular data structures that form part of the H.264 standard. In Bilski v. Kappos, the Supreme Court seems to reaffirm the ruling of Diehr. Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook. The application in Diehr claimed a previously unknown method for "molding raw, uncured synthetic rubber into cured precision products," using a mathematical formula to complete some of its several steps by way of a computer. 450 U. S., at 177. Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." Id., at 187. Diehr emphasized the need to consider the invention as a whole, rather than "dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis." Id., at 188. It might actually be worthwhile to go over Apple's patent using the suggested USPTO guidance for factors to be considered in an abstract idea determination. A. Whether the method involves or is executed by a particular machine or apparatus. If so, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. The Apple patent does not appear to need the involvement of or be executed by a particular machine. So this factor favors the claims being more likely drawn to an abstract idea. B. Whether performance of the claimed method results in or otherwise involves a transformation of a particular article. If such a transformation exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where a transformation occurs, the following factors are relevant:



(1) The particularity or generality of the transformation. A more particular transformation would weigh in favor of eligibility. This factor seems to favor a finding of less abstract, since the article being transformed is video information existing in a particular form. (2) The degree to which the recited article is particular; i.e., can be specifically identified (not any and all articles). A transformation applied to a generically recited article would weigh against eligibility. Similarly, this factor also favors a finding of less abstract since the patent operates on particular representations of video information. (3) The nature of the transformation in terms of the type or extent of change in state or thing, for instance by having a different function or use, which would weigh toward eligibility, compared to merely having a different location, which would weigh against eligibility. This factor may also favor a finding of less abstract, since the particular functions selected can have a significant impact on the resulting extent of change in the outputs. (4) The nature of the article transformed, i.e., whether it is an object or substance, weighing toward eligibility, compared to a concept such as a contractual obligation or mental judgment, which would weigh against eligibility. This factor may also favor a finding of less abstract because the specified process works on instantiations of particular data structures. (5) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the transformation imposes meaningful limits on the execution of the claimed method steps. A transformation that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility. This factor also seems to favor a finding of less abstract because there is a particular field of use for the claims, video compression. C. Whether performance of the claimed method involves an application of a law of nature, even in the absence of a particular machine, apparatus, or transformation. If such an application exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. The patent does not seem to be an application of a law of nature, so these factors are not relevant. D. Whether a general concept (which could also be recognized in such terms as a principle, theory, plan or scheme) is involved in executing the steps of the method. The presence of such a general concept can be a clue that the claim is drawn to an abstract idea. Where a general concept is present, the following factors are relevant:

(1) The extent to which use of the concept, as expressed in the method, would preempt its use in other fields; i.e., that the claim would effectively grant a monopoly over the concept. The patent does not appear to preempt the use of concepts in other fields. Mathematical operations employed in the patent are not claimed in a way which would stop them from being used elsewhere. (2) The extent to which the claim is so abstract and sweeping as to cover both known and unknown uses of the concept, and be performed through any existing or future- devised machinery, or even without any apparatus. Again, the claims appear to be particular to the field of video compression/decompression, and are not so abstract or sweeping to preclude other uses of the concepts. (3) The extent to which the claim would effectively cover all possible solutions to a particular problem; i.e., that the claim is a statement of the problem versus a description of a particular solution to the problem. This is easy. There are many possible approaches to the problem of video compression/decompression, and the claims of the patent only cover one of those approaches. (4) Whether the concept is disembodied or whether it is instantiated; i.e., implemented, in some tangible way. Note, however, that limiting an abstract idea to one field of use or adding token postsolution components does not make the concept patentable. A concept that is well-instantiated weighs in favor of eligibility. The concepts of the patent are demonstrably instantiated in different hardware and software-based implementations. (5) The mechanism(s) by which the steps are implemented; e.g., whether the performance of the process is observable and verifiable rather than subjective or imperceptible. Steps that are observable and verifiable weigh in favor of eligibility. The claims of the patent produce results that are easily observable and verifiable. The success of video compression/decompression can be readily measure by a number of metrics including speed of execution, quality of resulting outputs, degree of compression for various video sources, etc. Under the USPTO guidelines, it seems that examination of the patent as a whole could readily meet sufficient factors for a finding of not being too abstract to be valid. In one way, patents in this area could be seen as an example where at least some of the goals of the patent system are being met. Video compression is one area where there is no one best way or correct approach to solving the problem. Advancements in the field are continually being made. The presence of heavily patented approaches has in part motivated the development of alternative approaches for people where patents are a serious concern, while also allowing development of widely accepted commercial standards for people who value interoperability and consistency more. The patent system does not serve people well when too many minor, incremental patents are issued that create roadblocks to further advancements. This seems to be more a problem with the low thresholds that have been placed in terms of inventions being novel and non-obvious, rather than on the interpretation of whether claims are for abstract ideas. --bystander1313 [ Reply to This | # ]



Authored by: Anonymous on Wednesday, August 04 2010 @ 04:44 PM EDT