[Patents] Re: overlapping legal regimes

[phm@a2e.de (PILCH Hartmut)]

On Sat, 21 Jul 2001, Paul Edward Geller wrote:

>       Let's be clear about the "idea/expression" distinction in
> copyright law.  It does nothing more than point to a highly ambiguous
> jurisprudence, with little value for guiding action.  The courts merely
> say that they are applying this distinction when trying to decide which
> reworkings of plaintiffs' works by defendants are infringing "adaptations"
> and which do not infringe because they are merely "based upon" these works
> -- the Germans use the notion of _Freiebenutzung_ at this vague limit.

Thanks for pointing this our even clearer.
It would also be nice to have some pointers to relevant caselaw.
The rules applied here are very pliable, and the scope of copyright on
computer programs has gradually grown.  But still it is unlikely to
develop in the direction of software patent law, because the latter leads
to a lot of claims on ideas that anybody would have witout imitating
someone else.

>       What about the distinction between "abstract" or "functional"
> ideas, on the one hand, and "technical" ideas or "materializations", on
> the other?  One way to tell whether it has no more rigor than the
> copyright distinction is to ask whether, and how, it feeds into the
> doctrine of equivalents.  To the extent it does, it, too, is no more than
> fancy words with which judges try to prettify messy jurisprudence.

If you claim a new physical causality (e.g. mixing substances A and B in a
certain way leads to substance C), then there is not much room for
equivalence arguments.  You might use the doctrine of equivalents for
cases where, due to different external conditions the mixture of A and B
has to be adapted in a way that the man skilled in the art would easily
infer from prior knowledge without it being immediately disclosed in the
patent description.  But you wouldn't use it to enlarge your claim to a
abstract-functional type, e.g. "any mixture of two substances under a
certain set of conditions where a third substance is produced", because
it is clear that you were not awarded a patent for the disclosure of such
an abstract idea but only for the disclosure of your experimental findings
that made possible the production of substance C.

>       Perhaps, if defendant's technology does nothing more than embody
> "abstract" or "functional" ideas differently embodied by plaintiff's
> technology, it is not equivalent.  Infringement would only lie in
> defendant's taking "material modes" from plaintiff's embodiment.  But --
> patent litigators, please help me here! -- does any case law say this?

I have witnessed some cases in chemistry where the doctrine of equivalence
was applied in this way, although the word "material modes" was not used.
Concerning software patents, there has not been much caselaw.  On the
other hand there was a decision about a body hair razing device based on
an invention patented by Braun, where Braun won in some European countries
and lost in others because some allowed an extension of the claim scope by
treating the claimed functionality as an invention susceptible to
equivalence argumentation and others said that the functionality can, even
if written in the claims, not be considered to be the core of the
invention to which equivalence arguments can be applied.
I know this from hearsay only and would of course also be interested in
such examples.  The Braun example is a recent one, but older jurisprudence
should also be interesting, since even if "caselaw has evolved", it can
hardly be said to have done so by eliminating errors and solving problems.
So we are likely to go in circles.

>       In any event, if the distinction between abstract/functional and
> technical ideas leads into a casuistic labyrinth, it will not suffice to
> ban software from the field of patents with categorical precision.

An important question indeed.

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

To some part it is this consideration which led to the explicit inclusion
of items such as "mathematical methods", "computer programs", "methods of
doing business" etc in art 52.  Lawmakers at the time preferred to set
targets by examples rather than get involved in building a stringend
theory of what are technical inventions.  They trusted that the judiciary
would build that theory correctly.  It was in fact doing an excellent job
at the time and one could expect that their tools would become more and
more sharp.  The opposite has happened, due to a worldwide patent
inflation wave in the 80s and 90s, and now apparently we have to
complement the list of exclusions by putting an explicit theory of
technical invention into the law. Or perhaps still largely leave it to the
judges but optionally give a signal by deleting the (semantically
redundant) art 52.3.

Various proposals can be found under

        regulation on the invention concept of European patent law with
        special regards to programs for computers
        http://swpat.ffii.org/stidi/javni/

        art 52 EPC and various proposals at tinkering with it
        http://swpat.ffii.org/stidi/epue52/

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