[Patents] How to interpret US opinions on patents

[PILCH Hartmut phm@a2e.de]

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      Some notes on Hart 1997: How to interpret US opinions on patents
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   It has been argued by patent lawyers that the United States introduced
      software patents after a conscious, public-opinion based debate.
   However, this is perception apparently is not based on solid evidence.
   One of the opinion leaders of the debate at the European Union, Robert
    Hart, actually found it necessary to grossly misrepresent reference
                     texts to support this perception.
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   Robert Hart has been a [88]long-term advocate in favor of software
   patents in Europe and only recently wrote an "independent" [89]study
   on software patents for the European Commission's [90]Directorate for
   the Internal Market (DGIM).
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   The Hart paper of 1997 was published in a context where the European
   Commission was formulating its policy on software patents as expressed
   in the [91]Greenpaper and its [92]follow-up papers. Like most patent
   lawyers, Hart's basic argument is that computer programs are
   equivalent to some currently patentable inventions and should
   therefore also be patentable:
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     Patent systems have been created to stimulate the evolution of
     existing and the creation of new industry by protecting the
     industrial application of innovations. The computer software
     industry needs that stimulation as much as any other industry.
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     ...To deny patent protection for such inventions would I believe
     remove from the patent system a significant industry thereby
     severely disadvantaging the innovators in that industry encouraging
     second comers rather than original creators upon whom any industry
     relies heavily for its evolution. (p. 252)
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   In the paper, the argumentation goes
    1. Introduction
    2. boundaries of copyright
         1. the need for protection beyond copyright
         2. what inventions could be patented
         3. position of the EPO
         4. history
         5. policy
         6. trade secrets
    3. conclusion
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   From this design it is obvious section 2.2 is the actual main argument
   whether patentability is desirable, so let me check it for scholarly
   consistency. The main arguments are given as quotes from (I) a
   manifesto for sui generis protection and (II) an OTA report.
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1. Reinterpreting a manifesto for a sui generis protection as justification
for patents

   Hart summarizes the Columbia Law Review paper [98]A Manifesto
   Concerning the Legal Protection of Computer Programs as
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     Effectively the Manifesto considers that there should be (i)
     copyright protection for the literal expression of the program
     code, (ii) patent protection for those functional features of the
     computer program and their application that meet the level of
     protection required by the patent system and (iii) an anti-cloning
     system to protect the program behavior not protected by the patent
     system.
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     However, in the manifesto document, "patents" does not occur in the
     TOC, nor in the conclusion, the only mention I have (passim) so far
     found is "the issue of a large number of questionable patents for
     software related ideas may impede competitive development and
     follow-on innovation in the software industry" (p. 2422). The
     emphasis seems to call for a sui generis protection (like the
     semiconductor act, cf pp. 2413-2420). Again, from the manifesto's
     conclusion:
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     We propose to remedy market-destructive appropriatins of program
     behavior and the industrial designs aimed at producing efficient
     program behavior through a period of automatic anti-cloning
     protection of these innovations. The period should be long enough
     enough to give efficient incentives to invest in the development of
     innovative software, yet short enough to avert the market failure
     that would result if second competitors and follow-on inventors
     were blocked from entering the market long after the first fim had
     recouped its initial investment. (p. 2430)
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     It is clear one does not even have to share the call for sui
     generis semiconducor-like protection desired by that manifesto (so
     may be of limited usefulness for those opposed to software
     protection beyond copyright), but to state they advocated patents
     for programs seems abusive.
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2. Taking what is useful from the OTA report

   The conclusions of the [99]OTA report (Section 1, pp. 32ff) are
   neutral:
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     Option 2.1: Refine the statutory definition of patentable subject
     matter to provide guidance for the courts and PTO. Legislation
     might address the extent to which processes implemented in software
     or mathematical algorithms are or are not statutory subject matter.
     Legislation might also address the issue of special exemptions,
     such as for research and education).
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     Option 2.2: Exclude software-related inventions and/or algorithms
     from the patent law and create a special, sui generis protection
     within a patent framework for some inventions. The latter might
     have a shorter term, lower criteria for inventiveness, and/or
     special exemptions from infringement.
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   However, the section that Hart quotes in length (on p. 132 of the
   report in its Section 4) in a way suggesting this also would be the
   OTA's direct recommendation, is just a summary of the USPTO arguments
   and of no recommendative meaning, in the same manner one could quote
   nearly the entire p. 136 of said Section 4 which summarizes objections
   to software patentability.
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3. Conclusion

   To defend Hart, the OTA report is presented in a more balanced way in
   his section 2(f) (p. 251). But the fact that both pillars of the core
   "why we need patents" section are hollow leaves a somewhat bitter
   taste in the argumentation's overtones "the US know what they are
   doing".
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   Hart also does not tell us that at the 1994 USPTO hearings, only a
   fraction of software companies (among them Microsoft) argued clearly
   in favor of software patents, whereas a larger fraction considered
   software patents harmful to business interests (among them Oracle,
   Adobe). Of course, there also was a broad field of undecided
   statements and statements from law firms in favor of software patents.
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   Even in 2000 the USPTO conducted a similar hearing. Yet, however
   critical the opinions raised in these hearings, it was always unlikely
   that they would have any impact, since the decisions in the US were
   not taken by Congress, and not even by the USPTO, but by a few courts,
   namely the CAFC.  Some proponents of software patents in Europe have
   tried to create an impression that the US and Japan have decided in
   favor of software patentability after some careful and conscious
   public deliberation process.  The facts don't support that assertion.
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4. Further Reading

     * Robert Hart 1997, The Case for Patent Protection for Computer
       Program-Related Inventions, in: The computer law and security
       report, 13(4), 247-252.
     * [100]OTA 1992, OTA-TCT-527, Finding a Balance: Computer Software,
       Intellectual Property and the Challenge of Technological Change
     * [101]Pamela Samuelson et al. 1994, A Manifesto Concerning the
       Legal Protection of Computer, Columbia Law Review, 94(8),
       2308-2431.
     * [102]United States Patent and Trademark Office, Public Hearing on
       Use of the Patent System to Protect Software-Related Inventions,
       Transcript of Proceedings, 1994
     * [103]The Impact of Granting Patents for Information Innovations
       (This report by the US National Research Council from July 2000
       criticizes that the decision in favor of software patentability
       was taken by lawcourts without any backing from Congress.)
     * [104]R=E9ponse de l'Isoc-France =E0 la Consultation sur la
       Brevetabilit=E9 du Logiciel de la Direction G=E9n=E9rale du March=E9
       Int=E9rieur de la Commission Europ=E9enne (This consultation paper
       from the French Section of the Internet Society criticizes the IPI
       study and specially mentions bad argumentation by Robert Hart
       within this study.)
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5. Acknowledgements

   The body of this review was researched and written by Holger Blasum,
   thanks to hints from Thomas Ebinger. Editorial responsibility is taken
   by Hartmut Pilch
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    http://swpat.ffii.org/vreji/papri/clsr-rhart97/indexen.html
    2000-12-20 FFII Swpat Workgroup
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References

  88. http://www.softprot.demon.co.uk/indpatent.htm
  89. http://europa.eu.int/comm/internal_market/en/intprop/indprop/study.pd=
f
  90. http://europa.eu.int/comm/internal_market/
  91. http://europa.eu.int/comm/internal_market/en/intprop/indprop/paten.pd=
f
  92. http://europa.eu.int/comm/internal_market/en/intprop/indprop/8682en.p=
df
  93. http://swpat.ffii.org/vreji/papri/clsr-rhart97/#suigen
  94. http://swpat.ffii.org/vreji/papri/clsr-rhart97/#ota
  95. http://swpat.ffii.org/vreji/papri/clsr-rhart97/#klud
  96. http://swpat.ffii.org/vreji/papri/clsr-rhart97/#ref
  97. http://swpat.ffii.org/vreji/papri/clsr-rhart97/#auth
  98. http://wwwsecure.law.cornell.edu/commentary/intelpro/manifint.htm#int=
ro
  99. http://www.wws.princeton.edu/~ota/disk1/1992/9215.html
 100. http://www.wws.princeton.edu/~ota/disk1/1992/9215.html
 101. http://wwwsecure.law.cornell.edu/commentary/intelpro/manifint.htm#int=
ro
 102. http://www.eff.org/pub/Intellectual_property/ca_softpatent.testimony
 103. http://swpat.ffii.org/vreji/papri/digidilem00/indexen.html
 104. http://www.isoc.asso.fr/PRESSE/ce-brvt.htm