Chapter 1: Relation of Proprietary Rights in Software to Intellectual Property Law (Continued)
C. Are There Difficulties of “Fit” Between
Computer Programs and Traditional
Intellectual Property Law?
General Comparison of Intellectual Property Rights — Patents,
Copyrights, and Trade Secrets — What About Software?
Excerpt from Richard H. Stern, The Bundle of Rights
Suited to New Technology, 47 U. Pitt. L. Rev. 1229 (1986)I. Introduction
Every body of intellectual property law1 has its own bundle of rights and remedies. To some extent these differences reflect historical accident. More significantly, the differences reflect a series of legislative and judicial compromises among and balances of competing interests, often evolved over a very long time.
1. “ Intellectual property law consists of two major parts: (1) industrial property law and (2) copyright and neighboring rights. Industrial property, of which patent law and the Semiconductor Chip Protection Act of 1984 (SCPA) are examples, is directed primarily at mass-produced articles of commerce. It therefore reflects the economic values of manufacturers and sellers of such articles and society's interest in encouraging industrial innovation and investment. Copyright and neighboring rights are directed primarily at the personal literary and artistic creations of authors and artists, and they tend to reflect the personal values of authors and artists in the integrity of their creations and society's interest in encouraging such creative activity.
The study of the respective patterns of the different bundles of rights and remedies peculiar to the various systems of intellectual property law demonstrates that it is not fruitful to consider only one aspect of a pattern, such as the system's rights, without regard to the rest of the pattern, such as the arsenal of remedies. Thus, the power to secure injunctions and punitive damages against the sale of computer programs utilizing a protected algo- rithm may be more weighty than the power to collect reasonable royalties on the making, sale, and use of such computer programs. More generally, the tradeoffs involve a weighted average of the rights afforded, their duration, the limitations on those rights, and the remedies made available. A meaningful analysis of any one system, or comparison of one system with another, must consider each of these things. The problem is to strike an appropriate balance (or at least state a method for doing so) between the rights afforded, their scope and duration, limitations on them, and the remedies available.II. The Bundles of Rights Under Different
Systems of Intellectual Property LawThe different bodies of intellectual property law offer the owners of these different types of intellectual property rights packages of legally enforceable economic power that are quite different. Under patent law, the patent owner may exclude others from making, using, or selling the subject matter of the patent. In principle, at least, this is the most comprehensive bundle of rights granted by any of the systems of intellectual property. A copyright owner, in contrast, has the power to prevent others from reproducing, which is approximately equivalent to making, or distributing, which is approximately equivalent to selling, the subject matter of the copyright, but has no general power to prevent use of infringing articles. The owner of mask work rights similarly may exclude others from reproducing the work or distributing semiconductor chip products embodying the work. A trademark owner's right is essentially to stop others from using the mark in connection with their marketing, where the use would confuse the public by leading it to believe that the trademark owner sponsors the infringer's activities. A trade secret owner's sole right is to prevent others who learn the owner's secret by improper means from then using or disclosing the secret.
The duration and extent of these rights differs among the various bodies of intellectual property law. A patent right lasts for seventeen years; a copyright, for approximately seventy-five years; a mask work right, for ten years. A trademark is protected so long as it is used and does not become generic; the right to protect a trade secret lasts as long as the subject matter is kept secret. How absolute the protection is against second comers varies among the systems. A patent can be enforced against later independent inventors. Although a copyright lasts more than four times as long as a patent, it is not effective against an independent creator of similar subject matter. Similarly, trade secret rights are not enforceable against a person who independently develops the secret technology or learns it by legitimate reverse engineering.
The concept of infringement also varies from system to system. The claims of a patent protect some penumbra beyond their literal terms — they sweep up a range of ''equivalents'' commensurate in scope with the degree of technological advance that the inventor contributed. The copyright in a novel or other imaginative literary or dramatic work covers not only the literal expression of the author but some paraphrases of those words, and also some variations on the pattern of the plot. The copyright in a less imaginative work, such as a factual compilation, a toy, or a lacework design, where the quantum of originality is less or where there is simply less room for originality, has a narrower scope, so that copying must be much closer for there to be copyright infringement. Whether one trademark infringes another depends not only on the degree of intrinsic similarity of the marks but also on a number of factors extrinsic to the marks and relating to the business setting, such as how similar the goods are, whether the first user is likely to expand into the product or geographic area of the second user, how sophisticated the customers are, and what channels of distribution are used by the parties.
Each of these bodies of law also has a set of limitations on and exceptions to the bundle of rights. Under the exhaustion doctrine, for example, when the owner of a patent, copyright, mask work, or trademark sells a product embodying the subject matter of the intellectual property right, or licenses another to make and sell such a product, the rights of the intellectual property owner over the units thus sold substantially disappear. Therefore, a mask work owner cannot exert “remote control” over the use to which customers put the semiconductor chip products that they have lawfully purchased or over the prices at which the products are sold. Similarly, upon the first authorized sale of a patented product it “passes outside the monopoly” and the monopoly is “exhausted.” Similar principles pervade all intellectual property law. [Ed. Note. For a more extensive discussion of infringement of intellectual property rights and limitations on exercise of such rights, see Richard H. Stern, On Defining the Concept of Infringement of Intellectual Property Rights in Algorithms and Other Abstract Computer-Related Ideas, 23 AIPLA Q.J. 401 (1995).)
Other limitations on particular rights are peculiar to specific intellectual property laws. Under the mask work law, innocent purchasers of infringing chips are immunized from liability for acts that they committed before they acquired knowledge of any rights in the mask work, and the purchasers' liability for noninnocent resale of innocently purchased chips is limited to payment of a reasonable royalty. This privilege passes down the distribution chain to the innocent purchasers’ direct and indirect customers. Under the patent and copyright law, in contrast, ignorance of intellectual property rights in the goods is not a defense.
A party obtaining protection under any of these intellectual property systems does not acquire absolute control against others’ use of the protected subject matter. For example, “fair use” of a copyrighted work is not copyright infringement. This allows others to quote literally or reproduce parts or even all of a work for purposes of study, teaching, or criticism, without incurring liability. Similarly, the use of a patented invention for purposes of noncommercial study or to satisfy philosophical interests is not patent infringement. Nondeceptive use of a trademark for comparative advertising or other nontrademark purposes, such as compatibility description, is not trademark infringement.
The mask work analogue to fair use under the copyright laws is the broadest version of this type of limitation on intellectual property rights. A competitor of a mask work proprietor may lawfully “reverse engineer” a protected semiconductor chip product. This process may involve disassembling the product to study the details of the layout. The competitor may then manufacture a semiconductor chip product with a substantially similar layout, so long as the second semiconductor chip product is the product of substantial additional toil and investment and it is itself an “original mask work.”
Some limitations on intellectual property rights are more subtle. A patent may issue on a tangible apparatus that exploits a law of nature or an idea, but not on the law or idea itself. Thus, the Pythagorean Theorem or the formula E = mc2 cannot be patented. Similarly, patent claims cannot extend to subject matter significantly beyond the scope of the disclosure of technology in the patent's specification. Original thinkers cannot copyright their ideas since copyright protects only the “expressions” of ideas. Trademark and trademark-related rights may extend to the shape or appearance of an article, but not if the shape or appearance has substantial functional or utilitarian aspects. Rights in a mask work do not protect functionally dictated aspects of the chip's layout.
These limitations on intellectual property rights are based on considerations of public policy, and they both distinguish protections under different bodies of intellectual property law from one another and demarcate these laws’ respective zones of protection from the public domain.
The remedies available against infringers of intellectual property rights also vary significantly among the various bodies of intellectual property law. All existing United States intellectual property systems provide for injunctions against further infringement and for the recovery of actual damages resulting from the infringement. Beyond the availability of injunctive relief and recovery of actual damages, however, they diverge.
The copyright system provides the most extensive arsenal of remedies. A copyright infringer is able to the copyright owner for the actual damages caused by the copyright infringement, which ordinarily are the profits lost on sales diverted from the copyright owner to the infringer, and must account for any profits attributable to the infringement. Alteratively, the copyright owner may elect to recover a civil penalty, which is, in effect, a form of punitive damages. The infringing goods may be impounded during the litigation, as may the infringer's equipment for making them, and the infringing goods and equipment may later be destroyed. Finally, a willful, commercial copyright infringer may be fined and imprisoned as a felon. The same infringer would ordinarily be liable for related federal crimes, such as mail fraud, as a result of interstate marketing of the infringing goods.
A patentee, in contrast, is limited to an injunction and recovery of damages. A patentee's actual damages may be trebled when the court finds that the infringement was intentional. A mask work owner is in a position between that of a copyright owner and a patentee. A mask work owner may secure an injunction and impoundment of goods, but a potentially large civil penalty substitutes for any criminal penalties.III. Formulating an Appropriate Bundle of Rights for Software
A. Software — Code and Beyond
In the previous section, the similarities and differences between the various systems of intellectual property law were outlined. In order to arrive at a rational, sensible pattern of intellectual property protection for advances in software, it is necessary for us to be clear as to what we mean by “software” and what it is that we propose to afford legal protection against the competition of others.
The narrowest sense of “software” is particular collections of computer code comprising specific computer programs, such as “WordStar,” “VisiCalc,” “MS-DOS, Version 2.10,” “Turbo Pascal,” or “Pac-Man.” “Code” means the literal sequences of words and symbols in which computer programs are written or otherwise fixed. The concept includes sequences of 1's and 0's fixed in a diskette or semiconductor chip memory. If we restrict our inquiry to that sense of “software,” the question of formulating an appropriate bundle of rights and remedies is purely academic, or at least of far more theoretical than practical significance, for the United States courts have already defined what the bundle shall be.
For better or worse, the advocates of copyright protection have carried the day on the copyrightability of code. Thus, with regard to computer software in its narrowest sense, i.e., computer code, it now seems established that the copyright laws protect it with their whole arsenal of remedies. Any legislative redetermination of that result is unlikely to occur.
The scope of copyright protection of code is less clear, however. When a defendant's computer program contains code that is an exact copy, or quite close to an exact copy, of the code in a plaintiff ‘s copyrighted computer program, the defendant will almost surely be held liable to the plaintiff for copyright infringement. The question is much less clear, however, when an allegedly infringing computer program is only a “paraphrase” of another computer program or is a kindred computer program that is substantially different from the original in terms of the actual lines of code. For example, it is uncertain whether a computer program that performs substantially the same functions as WordStar in substantially the same way, so that it accomplishes the same results, will be held to infringe the copyright in WordStar, if the second computer program is written in a computer language so different from that of the original that the second program is not a mere rote “translation” but is instead a “transformation.”
In recent years, aggressive proponents of software protection have urged that the copyrights in computer programs should protect noncode aspects of software. Noncode aspects of software include the particular choice or selection of algorithms to employ in a computer program, the instruction set used in the language in which a computer program is written, the input formats, the menu and help screens, the metaphors and icons, and the “look and feel” of a computer program. It is not difficult to imagine some extensions of these assertions, such as claims to particular new algorithms, to any computer program acting in accordance with a particular flowchart, to dataflow patterns, and to the selection of queries or reports that can be made to or extracted from a database system.
Probably, most of these aggressive claims of right over noncode aspects of software will ultimately fail in the courts, as pretensions to exclusive rights in “ideas rather than expressions,” or as attempts to copyright a “procedure, process, system, method of operation, concept, principle, or discovery.” Refusing to protect the noncode aspects for these reasons would be consistent with established copyright precedent and tradition. It is also unlikely that Congress can be persuaded to expand the present copyright laws to embrace these things. The House subcommittee responsible for intellectual property legislation resolutely resisted protection of semiconductor chip topography under the copyright laws, and compelled the Senate to yield on this point. Clearly, there are limits to how far into the copyright tent the present occupants of the tent will allow the software camel’s nose to intrude.
It is not appropriate, however, to reject these attempts to extend intellectual property rights to noncode aspects of software, automatically or as a matter of general policy or principle. It may be bad copyright law to protect such things as the “look, feel, smell, and taste” of a computer program under a copyright rubric, but it does not follow that a claim to such a right should be rejected under all potential schemes of protection. A policy argument can be made for some kind and some quantum of intellectual property protection for some noncode aspects of software, even though the protection eventually decided upon may not be like that of the copyright in a book.
For example, a social and technological benefit may be realized by directing energy toward the development of new instruction sets, at the chip, mainframe, or high-level language levels. Considerable toil and expense may be required to determine which instructions are the most and the least frequently used in the actual running of a particular type of computer program, and in determining whether the inclusion of Instruction X in the set contributes more by lowering the cost of processing or writing than it adds to the overhead of the system by increasing its complexity. It is probably demonstrable, at least by anecdotal evidence, that the toil and investment necessary to develop optimal instruction sets will not occur unless a profit is to be realized from the exercise. A very significant potential source for that profit is some sort of monopoly rent78 over the resulting instruction set.
78. “Monopoly rent” (also referred to, at times, as “economic rent”) means, in this context, the profit that a software proprietor can extract from users of an instruction set or other item, that is in excess of what would be obtained under a regime of free competition in the use of the item. Aside from the possibility of gaining supracompetitive profits during an initial headstart period, ordinarily the only way that monopoly rent could be obtained for an instruction set or other software-related item would be through some kind of intellectual property right, which would allow the owner of the protected work to use the force of the law to prevent unauthorized persons from freely appropriating and using the new subject matter.
The prospect of only a commercial headstart may well be an insufficient incentive, by itself, to induce much activity. To be sure, there may exist countervailing reasons to deny monopoly rent to the developers of new instruction sets, but the ultimate conclusion drawn should be based on the specific facts concerning instruction sets and their marketplace rather than on generalities about ideas and expressions.
Similar considerations apply to the other noncode aspects of software. We should at least entertain the question whether a net social benefit would result from affording some type of intellectual property protection to new algorithms, new icon/metaphors for tasks, and flow charts. It is realistic to infer that a different rate of technological progress in non-code aspects of software technology will result depending on whether the persons who are supposed to generate the progress, or pay for it, believe that they will gain some monopoly rent by doing so.
To be sure, it is doubtful that the results of a system that tries to provide incentive for the creation of more instruction sets, algorithms, or the like by offering their creators a 75–year monopoly over the resulting work, injunctions, and awards of punitive damages and infringers’ prof-its will be worth its cost to our society. Indeed, that system might retard technological progress in the United States more than it advanced it. But that is not the proper question. Surely, a system that provides incentives for more instruction sets would be worth a dime a year to the United States per instruction set called forth. On the other hand, the system would not be worth $10 billion per year per instruction set. Therefore, as in the well known Shavian story, the price is somewhere between a dime and $10 billion, and the proper question is what is the right price.
Protection of Computer Software Code
Excerpt from U.S. Cong./ Off. Technol. Assessment, Finding a
Balance: Computer Software, Intellectual Property, and the
Challenge of Technological Change, ch. 4 (1992)
http://www.wws.princeton.edu/cgi-bin/byteserv.prl/
~ota/disk1/1992/9215/921506.PDFThe copying of a computer program can be prevented by law in several ways. If a computer program is the implementation of a patented process, then copying the program and practicing the invention would infringe the patent. Copying could also be limited by a licensing agreement between the developer of the software and a licensee. However, the main vehicle for preventing the copying of the program has been copyright law. Computer programs have been copyrightable subject matter since 1978, when the Copyright Act of 1976 became fully effective.
The Copyright Act states that copyright protection does not extend to the “procedure” or “system” or “method of operation” described by a copyrighted work. This is to prevent copyright from being used to protect “utilitarian” or “functional” articles. For example, an electronic circuit is not copyrightable subject matter, but the circuit diagram that describes the circuit is a copyrightable “pictorial” work. The copyright only prevents someone from copying the pictorial work, not from building the circuit. In the case of computer programs, it is especially difficult to separate the description of the function from the function itself.
“Idea” is a metaphor used in copyright law for the elements of a work that copyright law does not protect. Procedures, systems and methods of operation are ideas. “Expression” is a metaphor for the protected elements of a work. Infringement occurs under copyright law when a work is copied and, taken together, the elements copied amount to an improper appropriation of expression. Copying can be shown by direct evidence or by inference, if the defendant had access to the plaintiff's work and the works have substantial similarity as to the protected expression. Improper appropriation is shown by the taking of a substantial amount of protected “expression.”Copying Literal Code
The literal code of a program has consistently been shown to be protected expression, and verbatim copying a copyright infringement. As a result, copying a program from one disk to another clearly infringes the copyright in the program, except to the extent permitted by the Copyright Act (e.g., section 117). This is true regardless of the language used to write the program: the argument that a program in executable (machine language) form was not copyrightable subject matter because it could be considered a “machine part” has been rejected by the courts.
“Nonliteral” Copying
In a series of cases, courts have held that the internal design of a program at a level of abstraction above that of the program code could not be copied. In one case a judge wrote:
It would probably be a violation to take a detailed description of a particular problem solution, such as a flowchart or step-by-step set of prose instructions, written in human language, and program such a description in computer language.In other words, a finding of infringement could not be avoided by making small changes to a program or by translating the program from one language to another language.
The higher levels of abstraction of the program code are often described as the “structure, sequence, and organization” (SSO) of the program, although this terminology has been criticized. Protection of the structure, sequence, and organization has been described as consistent with the application of copyright to more traditional types of “literary” works such as novels. The main reason to limit copying at this higher level of abstraction is that it would otherwise be possible to avoid copyright infringement by making a few trivial changes to the program text. The courts have determined that this would allow the appropriation of a significant part of the value of a program.
There were two seminal cases in the area of protection for the structure, sequence, and organization of computer programs: Whelan v. Jaslow and SAS v. S&H. In these cases the particular organization of the program into subroutines or modules was found to be protected expression. In SAS v. S&H the court stated that copying the organizational scheme of a program would be a taking of expression, even if the program code for the “lowest level tasks” were written independently. In Whelan v. Jaslow the two programs were found to be substantially similar because of similarities in the detailed structure of the five subroutines that the court found to be qualitatively important to the program and because of “virtually identical” file structures.Constraints on Program Structure
The courts have applied the “merger” doctrine of copyright law by looking for evidence that the structure of the program was dictated by engineering constraints. In cases such as Q-Co. v. Hoffman and NEC v. Intel the courts have found that the similarities between programs were due to constraints imposed by the overall purpose of the program or by the hardware. If there were different ways of write the program to perform a particular function, however, the courts have found protected expression. In SAS v. S&H, for example, the court wrote:
[The defendants] presented no evidence that the functional abilities, ideas, methods, and processes of SAS could be expressed in only very limited ways.The number of different ways of writing a program to perform a particular function was discussed at hearings conducted by the National Commission on New Technological Uses of Copyrighted Works (CONTU).Copies
Because computer programs are protected by copyright, the making of any copy is an infringement. Even the transfer of a program from disk to memory is thought by some to be the creation of a copy that would be infringing but for the special exemption contained in section 117 of the Copyright Act, which allows a computer program to be copied “as an essential step in the utilization of the computer program in conjunction with a machine.”
The exclusive rights granted to the copyright holder are also thought by some to limit disassembly or decompilation of programs—these procedures involve the making of reproductions or “derivative works” of the machine language program. Limitations on disassembly and decompilation provide trade secret protection for aspects of a program because the machine language version of programs is difficult to understand.Protection of Nonliteral Code Elements — Literal Copying
The justification for restrictions on the copying of computer programs is economic: some form of legal protection is necessary to provide program developers with the incentives to develop software. Computer programs are easy to copy-they have the same intangible character as traditionally copyrightable works. The CONTU Final Report states:
The Commission is, therefore, satisfied that some form of protection is necessary to encourage the creation and broad distribution of computer programs in a competitive market.
The Commission viewed computer program copyrightability as consistent with the expansion of copyright to new technologies over the previous two centuries.
Issues in Protection of Non-Literal Elements
One of the reasons for protecting nonliteral elements of a program is to prevent later developers from avoiding a finding of infringement by making small changes. The main issue is the degree of similarity two programs may have and the degree of independent development that a later developer will be forced to do. In other words, to what extent canthe intellectual work in one program be used in a second program? In the two important structure, sequence, and organization cases, Whelan v. Jaslow and SAS v. S&H, the infringing program's code was similar at a low level of detail. The line drawn between protected and unprotected elements reflects a determination of the level of competition desirable. Articulating this line has proven to be difficult.
In practice, there will rarely be access to the high-level language version of a competitor's program. The only access that one would normally have to a competitor's program would be to its machine-language form. Disassembly would be possible, but there would still be considerable work involved in understanding the program and reimplementing it. It is not surprising that in the structure, sequence, and organization cases there has either been access to the source code or the programs were short enough to be disassembled and studied relatively easily. The legal status of attempts to disassemble a program is a major issue associated with the protection of computer programs using copyright law.
Notes
1. By way of supplement to the OTA report, the student of this field of law should be aware that during the decade immediately preceding the report vocal concerns were raised — for example, in the software industry trade press — over alleged excessive use of litigation as a business tactic. These critic argued that copyright infringement litigation was regularly employed to suppress start-up entrepreneurs and small, underfunded rivals by bringing expensive lawsuits against them based on expansive interpretations of the scope of copyright law. Examples were “look and feel” suits against sellers of competitive computer programs, where the litigation was based on the theory that the competitive product was, in some undefined gestalt way, too much like the plaintiff's program.
Other expressed concerns at the time were that evolving copyright law increasingly overprotected first comers’ program rights, leaving too little breathing room for would-be new entrants; and that copyright law, because of its allergy to systems and ideas, underprotected important aspects of software, providing insufficient incentives to technological progress in relatively abstract aspects of software.
On the other hand, counter–critics (that is, critics of the critics) argued that the nay–sayers were just a bunch of whiners and crybabies, unwilling or unable to adapt to the exigencies of a competitive marketplace. For support for that view, see A.R. Miller, Copyright Protection for Computer Programs, Databases, and Computer–Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 978 (1993).
2. In a July 1994 Report, the Department of Commerce's Working Group on Intellectual Property and the National Information Infrastructure, substantially supported an optimistic view of the case–by–case evolution of software copyright by adjudication: “We believe that with no more than minor clarification and amendment, the Copyright Act, like the Patent Act, will provide the necessary protection of rights – and limitations on those rights.”
In reading the cases and materials in the following chapters, consider what “minor clarification and amendment” you might advocate.
3. The same Commerce Department report expressed satisfaction with the patent laws as well as with the copyright laws as vehicles for the law's travel down the Information Highway. The following comment from OTA summarizes some software patent policy issues that went unmentioned in that report.
Software Patent Policy Issues
Excerpt from U.S. Cong./Off. Technol. Assessment, Finding a
Balance: Computer Software, Intellectual Property, and the
Challenge of Technological Change, ch. 4 (1992)
http://www.wws.princeton.edu/cgi-bin/byteserv.prl/~ota/disk1/1992/9215/921506.pdfThere has been considerable debate about the granting of patents for software-related inventions. Some believe that no inventions that use software should be patentable or that only software-related inventions that are traditional industrial processes should be statutory subject matter. Others believe that inventions that use software should not be treated differently from other types of inventions. In fact, some who believe that software-related inventions should be patentable have argued that many of what are now deemed nonstatutory mathematical algorithms should be statutory subject matter.
Some of the concerns about the patenting of inventions that use software are similar to those expressed about the patent system in general or about the patent system's ability to accommodate any new technology. In some cases these questions have been brought into sharper focus in the context of software. For example, the appropriate length of the patent term has been a subject of discussion for many years; many believe that 17 years is especially inappropriate for a fast-moving technology such as software. The fact that patent applications are kept secret until the patent issues makes it impossible to be certain that a product under development will not be accused of infringing a patent; this “landmine” problem may be exacerbated by the longer pendency for computer-related inventions.
However, two areas of concern are more directly related to the question of software patentability: the effect of patents on industry structure and innovation, and the quality of the patents that have been granted. First, it is argued that the widespread use of patents could change the structure of the software industry in a way that would actually reduce the rate of innovation. According to those who hold this view, patenting favors larger companies, not the small companies that have historically been the source of much innovation. The software industry has had a disproportionate number of smaller companies; in part, this industry structure was due to the fact that the limited use of patents and licenses kept barriers to entry modest. There is a concern that the widespread use of patents could reduce small-company-based innovation by raising barriers to entry, either as a result of the need to pay royalties or the added costs of searching and filing for patents. In addition, large companies could engage in portfolio trading while small companies without extensive patent portfolios would have their freedom to develop products restricted.
The alternative view is that the economics of the software industry is not that different from the economics of other industries, and that patents are therefore equally appropriate for encouraging software development. Some argue that software development is becoming increasingly expensive, and patents may provide the incentive needed to invest or attract venture capital funding. In addition, it may be that patents in fact benefit small companies, by providing a means to protect their development effort against appropriation by a larger company.
A second set of concerns focuses on the quality of patents that have issued. Some consider that many patents have issued that not in fact represent significant advances. From the developer's perspective, this increases the probability that a program could be accused of infringing patents. The developer would then have to decide whether to engage in costly litigation in an attempt to invalidate the patent. The perceived problems with examination quality have primarily been the result of the long period of time during which it was uncertain whether software-related inventions were statutory subject matter. Few patents issued for software-related inventions, leading to gaps in PTO's database of prior art. Some believe that the problems with the database of prior art can be resolved given enough time. However, the burdens on the PTO of increasingly backlogged applications and external criticism may be exacerbated over the next several years. Computer-implemented processes will become more commonplace and important in a wide variety of industries and appli- cations ranging from home entertainment to scientific research to financial services.
There may be many practical limitations on attempts to exclude “software” inventions from the patent system. First many claims in computer-related invention patents issuing today cover both hardware and software implementations; if the software implementation were not an infringement, the value of a hardware” invention could be appropriated. Some inventions that initially were “hardware inventions” are now being implemented in software, as faster processors have become available. Second, there are many inventions that use software but are not the type of invention that has been the subject of concern in the policy debate. There does not appear to be much concern about the patenting of traditional industrial processes that happen to use software as part of the apparatus or to perform a step in the process.
Notes
1. The “landmine” problem (also known as the “submarine” patent problem) may be solvable in large part by publication of pending patent applications some fixed time after filing, such as 12 or 15 months.
Does early publication of patent applications provide a complete solution? Consider continuation–in–part applications. Consider also late claiming issues. Some allege that “submariners” add to their continuation–in–part applications claims to inventions that others have developed and placed on the market since the filing of the parent application on which the continuation–in–part is based.
Is there anything the matter with amending a pending patent application to make it cover competitors' latest products? Compare Edward Miller & Co. v. Bridgeport Brass Co., 104 U.S. 350, 355 (1881)(reissues), with Kingsdown Med. Cons., Ltd. v. Hollister, Inc., 863 F.2d 867, 874 (Fed. Cir. 1988); Al-Site Corp. v. Opti–Ray, Inc., 28 U.S.P.Q.2d 1058, 1059 n.1 (E.D.N.Y. 1993). See also Lemelson v. Wang Laboratories, Inc., 874 F.Supp. 430 (D. Mass. 1994)(in ch. 12, below).
2. Another concern that software developers have expressed is that possibly “duplicative” patent and copyright coverage of the same software creates undue problems for others in the field. Do a patent and a copyright on the same piece of software really cover the same thing? Is there a real difference or is that just a debater's point?
3. The possible “difficulties in fit” between traditional intellectual property law and computer software, particularly in its most abstract aspects, has been discussed for many years. Beginning at the end of the 1960s, Elmer Galbi of IBM proposed modifying patent law to provide sui generis legal protection for software. See, e.g., E. Galbi, Proposal for New Legislation To Protect Computer Programming, 17 J. Copr. Soc'y 280 (1970). A WIPO–proposed model software code in the 1970s built on Galbi's ideas, see WIPO's Model Provisions on the Protection of Computer Software (1978), but it failed to gain general acceptance. See also R. Stern, The Case of the Purloined Object Code: Can It Be Solved? (Part II), BYTE, Oct. 1982 at 210, 222, for another early proposal for sui generis software protection.
More recently, four commentators published a “manifesto” in which they criticized both copyright and patent law as “mismatched to software” and “ill–suited to protecting software innovation.” P. Samuelson, R. Davis, M. Kapor, and J. Reichman, A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum. L. Rev. 2308 (1994). The “manifesto” commentators tended to be long on abstractions, however, and short on specific proposals about what kind of rules should be legislated to regulate software rights.
Chapter 13, below, further addresses possible sui generis software protection.
Link to section D of chapter 1
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