[Patents] Re: Technical effect

[Gregory Aharonian srctran@world.std.com]

Steve writes:
>Data compression is a technical problem. ..... An invention which addresses
>technical problems like these is likely to be patentable.
>
>On the other hand, IBM homophone checker looks at words to see whether they
>are spelt correctly.  Most of you reading this reply just did that when you
>read my last sentence.  What was the technical problem?  Where was the
>technical effect?  In the UK such an invention would probably be excluded
>from patentability as a method for performing a mental act, as well as a
>computer program.

There was a time when the US courts tried to make the same distinctions,
where the rulings used language similar to that appearing in some UK and
German decisions against software patents.  Eventually, and wisely, the
US courts realized this was a false distinction, and told the US PTO to
stop making such distinctions and rejections.

Data compression is not a "technical" problem - it is something I can
program a Turing machine to do, just as I can program a Turing machine
to do homophone checking.  Whether I implement either algorithm in 
digital hardware, software, DNA, optics, or mechanical gears, is
irrelevant to the algorithm's essence, novelty and non-obviousness,
which is what the spirit of science, invention and discovery is all
about.

Many of the arguments being made here and in Europe have their parallels
earlier in time in the US.  The eventual general legal and scientific
consensus was that these arbitrary distinctions between the embodiments
of a new invention with regards to its patentability are indeed arbitrary.

Now all of you may hate such a consensus and logic from here in the US,
but whatever Europe does in the short term, at some point there is 
going to be a trans-Atlantic harmonization fight at the WTO, with the
US insisting that the EC's rules with regards to these topics are too
arbitrary and should be made to conform more towards the US style.
That is, if the EC itself doesn't scrap 52c and then require all of the
national patent offices and courts (like those in the UK and Germany) 
to comply.  And frankly, looking at the tactics being discussed here,
and loser language like "evil", I am betting that the EC will drop 52c.

Word processing (like homophone checking) is a form of information
TECHNOLOGY.  It has been so described for decades.  The nature of
technology changes over the decades.  Take encryption.  Encryption
techniques were first protected by copyright (i.e. copyrighting the
code books used for manual hand translation), then with mechanical
patents (i.e. the technology of World War II devices), then with
digital hardware patents, and now with software patents, and I 
suspect at some point in the future with DNA patents.  The underlying
algorithms have evolved mostly independent of their embodiments.

On the information processing side, take something as simple as 
indenting in a word processor.  Decades ago electronic circuits were
patented to allow electric typewriters to do automatic indenting,
electronic circuits controling mechanical hardware.  Now there are
software patents for indenting in word processors, improved versions
of what was original done with electronics.  Assuming the improvements
are novel and unobvious from all of the hardware and software prior
art, it seems to me that an information technology/TECHNICAL problem
has been solved and therefore should be eligible for patentability.

That's what the US courts have ultimately concluded, after first being
more hostile towards software patents, using arguments that I think will
prevail in Europe.  They basically are arguing that these distinctions
are too ambiguous to use as a basis for prohibition in the law, so stop
prohibiting them for that reason, and worry about novelty, obviousness
and enablement.

Greg Aharonian