From phm@a2e.de  Sun Jul 22 18:11:17 2001
From: phm@a2e.de (PILCH Hartmut)
Date: Sun, 22 Jul 2001 19:11:17 +0200 (CEST)
Subject: [Patents] Re: overlapping legal regimes
In-Reply-To: <0.700002152.1719377113-738719082-995817765@topica.com>
Message-ID: <Pine.LNX.4.33.0107221838350.15426-100000@mulix.oas.a2e.de>

> For comparative case law and commentary through the mid-1980s, see Ivan
> Cherpillod, _L'objet du droit d'auteur_ (CEDIDAC, Lausanne, 1985); for
> comparative case law and commentary after that, see my "Hiroshige v. Van
> Gogh: Resolving the Dilemma of Copyright Scope in Remedying Infringement",
> Journal of the Copyright Society of the U.S.A., vol. 46 (1998), p. 39,
> with a shorter version at <http://www-rcf.usc.edu/~pgeller/dilemma.htm>.
> The longer, paper version has more references and pictures at the back.
> 	Many thanks for your further interesting analysis in the field of
> patents.  You might be interested in this fascinating short analysis:
> Allen Newell, "Response: The Models are Broken, The Models are Broken!",
> University of Pittsburgh Law Review, vol. 47 (1986), p. 1023.

I've heard of that one but not had a chance to read it.  Two Japanese
writers, summarized in

	TAMAI Tetsuo: Software Patents and the Problem of Abstraction
	http://swpat.ffii.org/vreji/papri/ist-tamai98/

	KONNO Hiroshi: the Karmarkar Patent and Software
	http://swpat.ffii.org/vreji/papri/konno95/

reference Newell quite extensively.

> > In any event, naive or wilful misunderstandings on the part of the
> > judiciary may reopen a casuistic labyrinth any time later even if we
> > now seriously address the questions -- something which our lawmakers are
> > currently trying to avoid.

I must add that I mean: our lawmakers are avoiding to seriously address
the questions.  Not: avoiding to reopen a casuistic labyrinth.  In fact I
believe they are aiming at that, and cynically calling this
"clarification" or "harmonisation"...

> My argument indeed cuts both ways.  If your distinction cannot be
> drawn with any consistent precision, the case law becomes more incoherent.
> However, if it can be drawn consistently in theory, it can be used to
> guide the case law -- assuming it is applied in practice .....  (However,
> as asked in the site you reference <http://swpat.ffii.org/stidi/epue52/>,
> "what is to be done when the highest courts rule against law and right?")

> 	Here's a thought.  Perhaps, a bare algorithm, with nothing but
> abstract variables, cannot constitute an invention.  Materialization, to
> use your notion, starts taking place at a semantic level, when the
> variables are made to refer to "things" in the real world that the person
> skilled in the art can manipulate -- and, the _sine qua non_, "useful,"
> that is, "industrially applicable", results claimed in the real world.

Indeed you can do it like that, and this seems to be what the EPO+USPTO
are actually doing.

You just said something which Mark Schar, a judge of the EPO said in
slightly less clear terms but using many more words in

	Mark Schar 1998: What is Technical?
	http://swpat.ffii.org/vreji/papri/jwip-schar98/

Even ignoring the question of whether this approach produces acceptable
patents, it has some logical flaws also. Here Tamai and Newell come to
mind again: the "problem of abstraction".

A number is of course no more abstract than an entity such as "input
stream" or even "apple" in some contexts.  The realm of abstraction is not
limited to elementary school arithmetics.

Assuming addition was a new method, you would, according to the Schar
approach, be able to patent addition in connection with apples but not on
its own.  This will probably give you a long list rather uninventive
claims and the real object of your "invention", the addition principle,
only shines through them indirectly.  It is as if you had a patent
description with 100 dependent claims and no main claim. You don't get a
patent on what you invented but only on some arbitrary list of
applications.  And if your lawyer is clever enough, he will know a way to
make those applications so general that you indirectly do get the addition
patent.  E.g. "system and method for ... by storing entity a1 in memory
chunk m1, entity a2 in memory chunk m2 ... ". Everything then becomes a
question of claim crafting.  This is why writers like Chisum, Laat and
others have asked for direct patentability of abstractions for the sake of
consistency.

Another problem is that once you allow only abstractions which are more
closely tied to a practical application (such as a mouse, an output device
etc, i.e. what the EPO has in mind when talking about "technical effect"),
you tend to sort out the great mathematical achievements (such as the
Karmarkar method) and select only trivial algorithms for patentability.
Any advance in informatics (and mathematicised disciplines in general)
will be taken to a high level of abstraction.  Abstraction is an
imperative of informatics and the like, but not of working with natural
forces.  As mentioned before, it doesn't help you much if you rewrite
your chemical formulas in a smarter way.

There is yet another, more basic inconsistency in the Schar/EPO/USPTO
approach of looking for tangible/practical/technical entities within
abstract problem solutions and thereby selecting what is patentable: this
approach does not take into account the reasons why patentability has to
be limited and why concepts such as "technical character" came up in the
first place.  The basic aim, against which any limiting rule must be
measured, is whether it selects those ideas where a fairly high
appropriation need is contrasted by a fairly low need of keeping the idea
free.  It is very hard to correlate this aim to the Schar concept. It is
however easily correlated to the traditional (BGH 1976 etc) requirement
that natural forces must really be part of the solution (not just as
schematic entities but as causal agents without which the problem is not
solved).  If such natural forces need to be part of the solution, the
solution can less easily be found and marketed by an ordinary private
person and is more closely tied to the industrial mode of production,
whose regulation poses little freedom problems and is the original purpose
of the patent system.

Thus it can be said that the Schar approach is inconsitent in itself,
teleologically wrong and leads to results that violate the existing laws
and work against the public interest.

Greetings

--
Hartmut Pilch                                           http://phm.ffii.org/
Protecting Innovation against Patent Inflation	      http://swpat.ffii.org/
80000 signatures against software patents         http://www.noepatents.org/







