From: srct...@world.std.com (Gregory Aharonian)
Subject: Review of testimony from Patent Office software hearings in DC
Keywords: software, patents, hearings, PTO, prior art, infringement
Organization: The World Public Access UNIX, Brookline, MA
Date: Mon, 14 Feb 1994 04:22:29 GMT
REVIEW OF USPTO HEARINGS IN WASHINGTON
ON SOFTWARE PATENTING
Feb 12, 1994
Internet Patent New Service
P.O. Box 404, Belmont, MA 02178
Last week the Patent and Trademark Office held two days of hearings at
the Crystal Forum in Crystal City, in which 28 testified for approximately
11 minutes each during the two days. Commissioner Lehman, along with about
a dozen other PTO officials, including Gerald Goldberg, director of Group
230 (which examines most of the software patents) were in attendance. About
70 people attended the first day, and 30 people the second day.
(I should note that the second day, ALL of Washington, DC, was shut down
because of a snow storm. Despite the shutdown of the federal government,
the Commissioner and some of his colleagues braved the weather and traveled
to the conference hall to hold the second day of hearings for those of us
still in attendance [many trapped because of cancelled airplanes]. Would
that all of the government was so dedicated.)
The testimony was quite interesting, which I will summarize briefly before
presenting summaries of each speaker's comments. I will also offer predictions
to what will happen to software patenting activities.
(Actually, my comments and predictions from the San Jose hearings review
that I posted pretty much remain the same. Much of the commentary from the
DC hearings reflected much of what was said at San Jose. If you missed my
review of the San Jose with my observations, let me know and I will email a
copy to you.).
SUMMARY COMMENTS OF TESTIFIERS AT THE HEARINGS
Thursday, February 10
(in order of testimony)
Paul Robinson, Programmer, Tansin Darcos & Co.
I collect software to reuse and learn. Companies wage vicious software
marketing wars. New releases have to be rapid to stay in business [with the
implication that that success is more important than patent protection].
Software represents mental processes, cost free electron manipulation in
microprocessor circuits (with no manufacturing/costs needed). Systems are
large and costly to modify, especially when forced by infringement.
Against first-to-file. Hard to check existing and new software patents.
Institute compulsory license. Eliminate secrecy - allow pre-publication.
Keith Stephens, Corporate Counsel, Taligent
Have to transform legal chaos of software patents - eliminate uncertainty.
Hire computer science majors with industry experience as examiners. Applaud
training efforts for 2300 group. Create human database of experts for
software prior art issues. Give examiners better tools like Internet access.
Tune examination process. Allow patents to be filed electronically. Modify
reexamination process - make more open, less biased towards patent holder.
Pre-publication is not necessary.
Mark Traphagen, Counsel, Software Publishers Association
SPA to date primarily focused on copyright law. However limited only to
expression, not enough for software. SPA has 1100 members. Improve patent
examination process first, then try changing statutory laws. Will ask
members to donate software prior art to the Patent Office, and to help train
examiners. Expanded prior art collections needed. Will award scholarships
to examiners to attend software conferences to interact with industry.
Rob Lippincott, Interactive Multimedia Association
IMA has 200 multimedia publishers. Interactivity not a patentable process.
They are trying to reduce barriers to multimedia use. Members fear patents
which constrain flow of information. Patent system indifferent to impact on
industries. Broad patents should not be granted, they are inherently
regulatory in nature. Prefer pre-publication. Need better prior art databases.
Average cost of litigation is $500,000 per claim. Insurance costs will rise
and be prohibitive.
[As a suggestion to the SPA, IMA and LPF, you can strengthen your arguments
much more if you did a little a historical research, and referenced the RCA
and Hazeltine patent pools, an approach the MPEG people are now considering.]
E. Robert Yoches, Finnegan Henderson Farabow Garrett & Dunner, Attorney
Software patent examination should be same as for other industries.
Wouldn't be practical to do so, encourages lawyers to play games with claims
drafting. Extra attention would complicate litigation by creating double
standards. Nothing fundamentally wrong with software patents. Need better
prior art, and retain qualified examiners. Shouldn't ask applicants for
more background information. Standards of novelty and obviousness should
match industry standards in software, but applied with the same rigor as in
other technology areas.
Stephen Noe, Intellectual Property Owners Inc.
IPO supports software patents. Software is not different from other
technologies in terms of patenting. Hard to define what software is for use
in legal considerations. Continued patent protection for software important
to US economy. No need for special obviousness and novelty tests. Need
better prior art. Train examiners in software technologies. Special duty
for disclosure for software applicants not fair or practical, would
encourage people to claim ideas as non-software. Use the Internet.
Industry needs "insurance" provided by patent protection. Software is not
a different type of technology.
John Horn, Allen-Bradley, Patent Counsel
Industrial control hardware and software have similar claims. Thus
software should be patentable, but most look at relevant hardware prior art
when considering software patent applications. Need better prior art.
Software does not need higher standards of reliability.
Richard Nydegger, Workman Nydegger & Jensen, Attorney
Samual Morse's and Alexander Graham Bell's patents' broad claims were
upheld in court, leading to new industries despite sweeping nature of claims.
Broad protection is justifiable. Current system for software patents does
have problems, which can be fixed. Improve access to prior art. Better
classify software technology (such as systems used by IEEE and ACM). Train
examiners better, who need more exposure to software technology. Allow
third party involvement in reexamination. PTO should decrease pendency time
for patent applications. After 18 months allow pre-publication - helps
prevent "submarine" patents.
Allan Ratner, Philadelphia Patent Law Association, President & Attorney
Hard to define what software industry, and software itself, is. Growing
use of software and embedded microprocessor chips helps blur distinctions.
Impossible to separate software from its embedded hosts. Copyright not
sufficient protection. Higher patenting standards for hardware/software
patents unfair and impractical. Examiners need better prior art.
Pre-publication one way to solicit third-party prior art. Open up the
Diane Callan, Lotus Development Corporation, Deputy General Counsel
Business Software Alliance
Software has rapid innovation and widespread use. Software industry is
a major contributor to US economy. Strong IP protection for software is
needed. Source code vital to companies needing protection. No new forms
of protection desired for software. Novelty and obviousness standards must
be more rigorously enforced. Patent pendency too long, partially due to
continuations. Protection should be fixed-term from filing date. Better
prior art database is needed. Give examiners better searching tools.
Should require applicants to do comprehensive prior art search. Allow
third party into reexamination - allow opposition period.
R. Duff Thompson, WordPerfect Corporation, General Counsel
Software piracy endemic. Intellectual property protection needed.
Changing laws will take to long to pass Congress. Existing laws provide
an adequate framework. Need better prior art database, and faster patent
application processing. WordPerfect pledges to help patent office. Supports
having an opposition period. Endless continuations delay patents while other
companies start using similar technologies, technologies then incoporated into
revised patent claims and greatly expanding scope of industry infringement.
Prefer fixed term for patent protection from filing date. Supports
pre-publication. Don't like Doctrine of Equivalents greatly expanding scope
of software claims. WordPerfect now filing defensive software patents.
Richard Jordan, Thinking Machines, Patent Counsel
Thinking Machines' Connection Machines intimately relies on both
hardware and software. 70% of their R&D staff are software developers, who
are encouraged to publish papers without prior legal review. Patent
protection important for protecting its investments. Copyright insufficent
for protecting its investments and preventing reverse engineering. However,
the software patenting process can be made better. Patent prosecuting
pendency too long - would like pre-publication. Hard to get prior art from
foreign patent offices. Opposition period would allow public to be involved.
Jeff Berkowitz, Finnegan Henderson Farabow Garrett & Dunner, Attorney
PTO should not force people to submit source code listings.
Ron Reiling, Digital Equipment Corporation, Counsel
Patent protection for software important. Patents allow ideas to be
assets, essential for information age. Software inventions should be
treated the same as other technologies. Better training is needed for
examiners. All software concepts should be patentable. Standards for
software patents should be same as other technologies. Software ideas,
though, must be novel and non-obvious. No special rule-56 patentability
searches should be imposed on software patent applicants. Program code
listings should be accepted. PTO invest in having quality examinations.
Need more examiners. Have better explanations of office-action claims
rejections. Need better software prior art database. Open up reexamination
process. DEC willing to work with PTO to help improve processes.
A. Jason Mirabito, Boston Patent Law Association, Board Member
Needs more funds for training examiners and better prior art, but don't
raise fees [note: for those who don't know, the PTO is one of the few
government agencies that funds its budget from user fees, no Congressional
appropriation]. Hire more computer scientists as examiners, as did the
biotech group. Open reexamination to third parties. Adopt pre-publication
system, but after first office action (which sometimes is later than 18
months). No special disclosure standards for software. No special prior art
search burdens for software applicants. Section 112 best guidelines for
describing software inventions.
Jonathan Band, Morrison & Moerster, Attorney
Better to treat "bad software patents" than "software patents are bad".
Consider pre-publication and fixed-term patent rights after filing. Patent
lawyers benefit too much from current chaos. Bring in computer experts.
However, overprotecting software intellectual property as bas as
underprotecting software intellectual property.
Leonard Suchtya, Bellcore, General Attorney
Bellcore uses patents, trade secrets and copyrights for software, so
strongly favors patent protection for software inventions. Patents and
printed publications provide plentiful prior art. Bellcore will donate their
publications to the PTO library. Standards can be established for novelty
and obviousness. Rule 56 requirements sufficient, no special need for
different rules for software. No need for applicants to perform special
prior art search. Filing source code shouldn't be necessary, under section
112, and sometimes for large lines-of-code programs hides interesting
features. In fact, filing source code should not be permitted.
Vern Blanchard, Software Entrepreneur, San Diego
Against software patents, they must be eliminated. Programmers don't
like litigation, would rather switch fields. New companies could be barred
without lots of licenses. His company developed a Bingo program, working for
two years without pay, and whose customers liked it a lot. Then a competitor
sued over patent infringement, and he was put out of business. Competitor
claims covered handheld device, and they filed for injunction. Blanchard is
now in debt for $100,000, though injunction was overturned. Competitor spent
$450,000. In the end, the legal fees killed his company, even though they
were in the right. Did consider reexamination, but probably would have had
little effect on their court case. Patent run counter to spirit of sharing
of software over the Internet.
Ed Currie, Imagesoft, Software Entrepreneur
Involved with patent infringement suit. Need better prior art database.
His company has spent $120,000 just arguing over venue for lawsuit. Want to
use reexamination, but 6 law firms in New York advised against reexamination,
saying it favors patent holder and hinders further prosecution abilities.
Friday, February 11
(in order of testimony)
D.C. Toedt, Arnold White & Durkee, Attorney
PTO should try using some of the disclosure practices of the SEC, where
prior corporate financial information is similar to prior invention info.
Patent examinations should be more timely, cutoffs for discovery, and fixed
dates to resolve issues.
Christian Hofstader, League for Programming Freedom, President
LPF opposed to software patents. As size of industry grows, length of
patent life should drop. They believe "software" can be defined (as opposed
to some at San Jose [including myself] that argued that hardware and software
are growingly indistinct), so that legislation can be drafted banning software
patents. Microcomputer software leaders grew industry without using patents,
why do we need them? Copyright is sufficient for software intellectual
property protection. Copyright allows companies to compete via rival
implementations, which drives innovation.
Tim Scanlon, Allen Bradley (AB)
Hardware functionality being replaced by software functionality. If one
form deserves patent protection, so then does the other. GUI technology is
important to AB. Icon, bitmaps and control box components important to
AB products, especially multilanguage interfaces and symbology for global
recognition. A lot of ergonomic research goes into their products to make
them more usable. Copyright protection not sufficient, concentrates too
heavily on expression. Strengthen patent protection for GUI componentry.
R. Lewis Gable, Welsh & Katz, Patent Attorney
Experience level of average software examiner is low. Fewer primary
examiners at PTO, 1:10 to non-primary examiners, who mostly are inexperienced.
Examiners don't have enough time to process applications and do prior art
search. Younger examiners tend to cite prior art patents with little
relevance to application under examination. In group 2300, 130 out of 160
are non-primary examiners, with 89 having less than 2 years experience.
Examiners not paid enough, and after a few years experience, law firms offer
bigger bucks and out they go.
John DeWald, Prudential Insurance, General Counsel
Methods of doing business, not patentable, is patentable when implemented
in software. Fighting such lawsuits is costly and uncertain, costing millions
in the financial community. This has chilling effect on customers. Patent
holder, with biases in his favor, can wreck havoc. Examiners need better
prior art, which should include documents of business practices. PTO should
impose special duty on software patent applicants to disclose prior art.
Computer implementations of existing business practices should not be
patentable. Reexamination should be opened. Have an opposition period.
David Clark, local patent attorney
Formerly as examiner in group 2300 for ten years, now a private attorney.
Key problem is retaining examiners for more than a few years. Provide better
tools for examination process. Group 2300 most compete with private sector
for hiring. Examiners don't have enough time. Current searching out of
control. Better classify information for retrieval and dynamically altering
classification scheme. Should use computer networks to exchange information,
both internal to PTO and externally. Salaries can double for examiners if
they goto private sector, a strong lure.
Samuel Oddi, Professor
Economic impact of intellectual property. Published an article on
revolutionary patents and their economic impact. A patent free society would
see lower rates of innovation and commercial exploitation. Revolutionary
patents treated poorly by current patenting system - ideas are too new to
satisfy statutory regulations. Copyrights are difficult to apply to software
and revolutionary ideas, where expression far less important than the
functionality. Risk taking business aspects of inventing require patent
protection, including software.
Bernard Galler, Professor
Lots of software prior art not published in readily available sources.
Hard to locate innovative and non-obvious source code prior art. Most
development outside of academia. Commercial product manuals also prior art.
Applauds efforts of Source Translation & Optimization to build the largest
comprehensive software prior art database.
( The last speaker of the hearing was myself, speaking on the complexities
of software prior art database development and use. What follows are an
extended version of my comments. Hey, its my newsletter :-)
Greg Aharonian, Source Translation & Optimization, President
There are six stages of the patenting process where knowledge of
all existing publicly known information, prior art, is necessary for the
patenting system to work as efficiently as possible: information disclosure
document, patent examination, opposiiton period, reexaminations, patent
infringement lawsuits, and circuit court decisions. At each of these stages,
key issues are often obviousness and novelty, which can only be addressed by
referencing a comprehensive prior art database. At these hearings, everyone
has agreed that lack of such a database in the software field is causing
many problems, including the issuance of bad software patents that lead to
costly nuisance lawsuits and a dampening of innovation. The repeated calls
by people testifying to address this issue, people who disagree on many other
aspects of software patenting, illustrates how serious a problem the lack of
a comprehensive software prior art database is.
Some of the solutions proposed at the hearings, in particular using the
Internet to solicit contributions of prior art for reexamination or opposition
proceedings, without a database structure in place, will swamp the PTO with
tons [sic] of documentation that people will have to sift through and bring
order to, to relate it to the proceedings under consideration. For example,
opening up all existing 11,000 software patents for reexamination, and asking
for public contributions of prior art, would bring in hundreds of thousands
of documents, many duplicative and lacking in prior art stature.
A related problem in the software development community is the lack of
a comprehensive reusable software components database, so that all of the
benefits being promised of software reuse can be realized. While many tools
have been developed to facilitiate software reuse, a key missing component has
been large reusable component databases.
Both problems, software prior art and reuse, have the same solution, a
comprehensive of as much information as possible on software technology
developed in this country over the last twenty five years. This country is
now spending over $50 billion annually developing software (much by the US
government), but spends very little keeping track of the results of these
very large expenditures. And the tens of millions of dollars that has been
spent trying to do so, for the most part, has achieved very little.
In all cases, the reasons for such limited results are the same - people
with little experience in building archival databases adopting passive
approaches to collecting information, and underestimating the complexity of
classification, maintenance and organization of tens and hundreds of thousands
of documents that have to be dealt with. Too often, such efforts ignore the
contributions of the library science community, who have decades of experience
struggling with these issues.
For the last eight years, I have building a software prior art/reuse
database. Currently I have actively-collected information on over 15,000
computer programs available in source code form, 5000 software patents, and
over 100,000 abstracts of entities of software technical information. It
is the largest such database in the country, and has been developed privately
One of the simpler questions is what to collect. Prior art appears in
a variety of publications: government/academic/corporate technical reports,
journal articles, conference proceedings, theses, books, commercial products
through their manuals, Internet files, bulletin board files, and software
patents. For each of these forms, there are legacies by the publishers that
it is important to know, usually reflected in the editors and authors of
items that appear in the publications. For example, I conclude different
things knowing that an algorithm is published in IEEE transactions on software
engineering versus being published in BYTE.
In these various publication forms, there are a variety of styles in
which prior art can occur: source code listings, object libraries, flowcharts,
state charts, psuedo-code, mathematical algorithms, and patent claims.
There are also some non-obvious forms of software prior art, such as VHDL
and SPICE files (hardware description languages), and numerical data, which
can be translated into algorithms. Thus there are over fifty combinations
of publication forms and prior art styles that one has to be on the look for
when gathering information for inclusion into a prior art database. Each
combination has a different set of rules for determining whether or not to
include an item in the database, and learning and applying these rules is not
a trivial matter.
These materials also have different physical forms. Printed materials,
microfiche, microfilm, microform, magnetic tapes, CDROMs, diskettes, card
decks, and lineprinter paper stacks all have to be dealt with, and when you
are dealing with hundreds of thousands of items, you need large storage
To both learn or apply such rules, you have to do something that has
escaped most previous efforts to build these prior art/reuse databases.
To really collect enough information to build a comprehensive database, you
have to actively seek out the information, and not rely on passive donations
of materials. While passive approaches to collecting information do result
in some materials being collected, the vast majority of the information will
not be obtained. In some cases, people and companies are lazy about
contributing. In other cases, the information is not well organized at the
hundreds of facilities around the country where software activities occur,
so that even if someone wanted to voluntarily donate their materials, they
would first have to invest a lot of time and effort in doing so. When I
think of prior art, I think of dimly lit basements with shelves from the
floor to the ceiling.
The best way to collect information is to go after it. Over the past
eight years, I have visited hundreds of government/academic/corporate sites,
searching through their libraries looking for items useful for software prior
art and reuse. One key problem in building and maintaining such databases
is determining how to monitor so many sites cost effectively, especially given
that some information is duplicated at many sites. You can waste lots of time
reexamining materials you already examined somewhere else. Working out of
the Boston and Silicon Valley communities (which are very rich in terms of
sources of software information), I have been able to develop a regimen to
monitor efficiently. It would be hard to do this outside of these areas,
at least for locating software information.
At these facilities, you have to one-by-one manually examine each item
of potential prior art/reuse information, and when candidates are found, you
then have to extract key information on its content for processing and
inclusion into the database. This can be very mind numbing; think of looking
at many hundreds of hundred page university theses over the course of an
afternoon or a week of afternoons. I then have to drag interesting theses
down a few floors to a copier to copy key sections to be summarized and
categorized back at my office.
Nothing else will work, despite attempts to disparage such efforts by
calling them "software salvaging". It also needs to be done by experienced
people, and obtaining experience in this matter is not easy. There are no
courses for it, and no companies really doing it (as a place to learn). I
learned empirically, by doing it for eight years. But without experience,
it is impossible to prioritize where you search and what you search for and
what you want to enter into a database. The only alternative is to throw
hundreds of millions of dollars at the problem, which would work.
For example, one area you have to acquire experience for, are schemes for
classifying software knowledge. The Patent Office has one scheme, the
Library of Congress another, the Dewey Decimal system for non-LC libraries,
the IEEE has one, the ACM has a few, online databases have their own schemes,
and then there are other schemes not used for software, but worth knowing, to
help you think about these issues, including the Encyclopedia Brittanica
classification, the work of James Grier Miller. There are also dozens of
specialized schemes from smaller software/mathematical societies, and a
variety of academic efforts to prepare taxonomies. Despite being in the
era of gigabyte-a-second keyword text searching retrieval systems, the need
for classification schemes is important.
In short, building software prior art/reuse databases is neither trivial
or something for amateurs. And as we speak, the complexity is becoming even
greater, for two reasons. First the growing capabilities of hardware and
software codesign, in which representation languages such as VHDL represent
both hardware and software, make it possible for hardware to serve as prior
art for software. Since there is at least twice as much hardware information
out there as software information (in the formerly strict sense of their
definitions), this convergence triples the size of a comprehensive database.
Second, the NAFTA and GATT treaties will allow foreigners to have
first-to-invent rights when filing in the United States (currently when they
file US patents, they only have first-to-file rights). To settle infringement
cases where foreigners are involved will then require a prior art database
that encompasses the entire planet. Based on patent counts, this will also
double the size of the database, as well as aggaravate the problems of
cost effectively visiting hundreds of sites around the world searching for
In short, the problem of building a software prior art database is very
complex. The rewards to the US economy, however, are even larger, so that
doing so is both necessary to treat the growing problems with software patents
while being beneficial in the resulting large body of software information so
collected. Driving the need to build the database will be the accelerating
rate of both software patent applications and awarded patents, and patent
infringement lawsuits. While I believe that on its merits, the Compton case
is making a mountain out of a mole hill, cases like Microsoft/Stac and
Novell/Billings will less and less be the exceptions.