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.
