HANS TROESCH FISH AND RICHARDSON MR. TROESCH: Good morning, Mr. Commissioner, distinguished Panel. My name is Hans Troesch. I'm here speaking on my own behalf. My partners have reminded me of that. Many years ago I earned a Masters Degree in Computer Science at the University of Michigan, and for close to ten years, regard- less of my various and more fancy job titles, I consideLmyself principally to be a computer programmer. Today I'm an attorney and a member of the patent bar. I practice patent, copyright and trade secrets law, as we already mentioned, with the law firm of Fish and Richardson. I'm here today because I would like to offer my own views on a few of the questions that the Patent Office has invited the pub- lic to address at these hearings. As a preliminary matter, I must confess my own deep concerns about the present fate of software inventions in the Patent Office. I believe that the logical, al- most musical nature of software technology provides unique oppor- tunities for advocacy and for confusion in a system that is based on a more structural, may I say more sculptural view of the world, but that is a topic for another day. Today I will merely state my hope and belief that the Patent Of- fice will rise to the challenge of finding and keeping qualified examiners, securing access to the vast body of software_related prior art that is not of record in the Patent Pce, and of developing delimiting doctrines of novelty, obviousness and en- ablement in ways appropriate to the peculiarly flexible genius of software technology. I would like to address Question 1 at this point in the Office Notice, and to state my view that a computer program, that is to say, a set of instructions that is executable on a computer, to achieve a result, should be considered a machine within the mean- ing of Section 101 of the Patent Statute, and should therefore be eligible for patent protection, without resort to the additional and often redundant limitations to computer processors, read_only memories or data input_output devices. On the issue of eligibility for patent protection, I dare say such a change in the form of the law would not greatly expand the scope of protection available to inventors, at least not to those inventors who can afford the kind of legal talent testifying at these hearings. Those of us who know what we are doing can get computer program machines covered. The pro.......T we have to go through may be painful to watch, may be expensive, but we can do it. For that reason I would promote my suggestion principally as one that will improve the quality of the analysis of software_related ventures, and the doctrine under which those inventions are examined. On the issue of infringement we would have to be a bit more sub- tle. If we allow claims to be made to computer programs per se we must be careful not to create a risk of infringement by tradi- tional print media and their successors in electronic publishing. The publication for human readers, whether or not on paper, for the patent_protected computer program, should not by itself be any kind of infringement of the patent. I would like to turn now to one of the specific questions raised for today's hearing. What aspect of a mathematical algorithm im- plemented on the general_purpose computer should or should not be protectable through the patent system? I believe that a machine made up of computer program instructions thatXfully transforms data or information should be protectable under the patent laws in all its novel and nonobvious aspects. Given the importance of information processing to our economy, it would be perverse for us to continue to deny direct protection to a technology that is so important to our information processing prosperity. This leads me unavoidably to the question of what is novel and unobvious in a computer program. I believe that our greatest challenge lies in these two questions, regardless of how we answer the question previously posed. For myself, I would not consider novel and nonobvious merely to transpose to a computer something previously known to be done by hand, or in one person's head, or collectively by a group of peo- ple. But if the method for transforming information is truly new, then the doctrines that limit or preclude protection solely be- cause the method is a computer program seems unwarranted. It has been suggested that allowing mathematical algorithms to be protected would.......nature from the public domain and give an unwarranted universal scope of protection to a patented tech- nique. Personally I find those rationales peculiar. Taking the computer programmer's informal definition that an algorithm is a predetermined set of steps to perform a function, and that a mathematical algorithm is one that operates on mathematical ob- jects, such as numbers, triangles, continuously differentiable functions, then granting protection for a new, previously_unknown and nonobvious set of steps withdraws nothing from the public. And if the patent reaches over a broad range of applications, that would merely correspond to the broad usefulness of the new algorithm. In any other technology this would be grounds for praising the inventor, not for denying protection. I would submit to you that if someone were to object to a patent on the transistor on the ground that it would have too many uses, you would find that ob- jection incomprehensible. One final point that might be kept in mi........`efore whence it comes to an alarm about the potential breadth of claims to mathematical algorithms; a naked mathematical algorithm claim would seem to be the ultimate engineering claims, and therefore particularly susceptible to being rejected or invalidated, be- cause any prior art that shows the algorithm steps being applied in any context would invalidate the claim. Personally I would be surprised if any patent practitioner would ever rely solely on a naked algorithm to protect his client's interests. The Patent Office also poses the variant of this question, limit- ing it to the implementation of the algorithm to a special pur- pose rather than a general purpose computer. If the problem is bad patents, this does not seem to be a solution. If one begins with a computer program that should be unpatentable because it is not new, or because it is obvious, one should not in my view be able to achieve patentability merely by attaching to the program the input_output devices that are conventional for the processdt the computer performs. In other words, one should not be able to save an old or obvious bread_baking program merely by attaching a digital thermometer to it. Conversely, if the program is new and not obvious, then the conventional addition of necessary computer hardware and other devices is redundant to the claim, at least insofar as patenta- bility is concerned. Such additional limitations would not in fact limit the scope of protection available to the inventor, un- less parenthetically the claims are poorly drafted. But such a redundant edition of apparatus to the program claim does create a potentially substantial distraction for the patent examiner who, in the terms of my example, in searching the art of digital ther- mometers, may completely miss the point about bread_baking. Finally, I would like to say a word about whether we should re- place patents with a new form of protection for computer software. My one_word answer is no. Patent law can deliver pred- ictability, definiteness and uniformity. hr copyright law we cannot protect your ideas, at least not without doing some violence to traditional copyright principles, and we are subject to forum shopping in thirteen circuit courts of appeal. Under trade secrets law, we can protect our ideas, but are subject to the law as developed in any of fifty different state courts and their Federal counterparts. We're never quite sure what the pro- tected ideas are and are at risk of having someone rediscover or reverse_engineer our inventions out from under us. But under the patent laws we can get warning about what is protected expressed with reasonable clarity and applied with national uniformity. It would be unfortunate if such a sound concept were to be crippled because we were too slow in learning to apply its fundamental principles to the challenges of software_related inventions. Thank you. COMMISSIONER LEHMAN: Thank you very much, Mr. Troesch. That was very helpful. The next person on our list is Brett Glass, but we're not sure that Brett Gl....lis here. If you are, will you please stand up and identify yourself and come forward? If not, we will move on to Robert Sabath, President of the World Intellectual Property and Trade Forum.