ROGER SCHLAFLY REAL SOFTWARE MR. SCHLAFLY: My name is Roger Schlafly, I am self_employed and a software developer and nobody is paying me to be here. I have a Ph.D. in mathematics and I have worked for both small and large companies. I have one issued patent, and I have been sued for patent infringement. I have a couple of patents pending, and I have some pending patent litigation. Most of the discussion so far has come from software companies who've argued about whether software patents are good for the industry, and from patent lawyers who favor patenting everything. There have also been a number of good suggestions for improving the system, but most of these apply equally to nonsoftware patents. Instead, I want to focus on some legal and technical issues related to the scope of software patents. First of all, I want to say that software patents are not as new as everyone seems to act that they are. The first Patent Act explicitly made processes eligible for patents, and the government's been getting process patents for 200 years. Processes are indistinguishable from algorithms, many process patents are enforced. For example, the Polymerase Chain Reaction, PCR invention which won the Nobel prize in chemistry last year was a process patent. It was upheld in court and was sold for $300 million. It is a recipe for cooking DNA, but legally it is indistinguishable from an algorithm path. For an older example, Samuel Morse's patent on the telegraph was upheld by the U.S. Supreme Court in 1853. Morse specifically claimed the system of dots and dashes we now know as Morse code. This was a software patent. My next point is that many software patents are not algorithm patents, and much of the discussion of the legality of software patents focuses on the patentability of algorithms, but actually many if not most, claim a system or an apparatus or a machine. Even if we could reinstate the anti_algorithm bias of the Benson Decision, it would not eliminate software patents. Many of these software patents, especially the nonalgorithm patents are legally indistinguishable from traditional nonsoftware patents. Many special purpose electronic circuits and chips are designed using software techniques, and they often have microcoded programs etched onto chips. Nobody is seriously suggesting that patent protection should not be available for electronic gadgets. I don't see how you could justify protection for a special_purpose circuit and deny protection for software on general_purpose computer that performs the same function. My next point is that the law does not have to change with new technology. Many people here have argued that software is different from other technology and therefore requires a sui generis protection scheme. I think this is a big mistake. For 200 years copyrights and patents have served to protect intellectual property without any fundamental change in the law. I only know of two cases where sui generis protection scheme was created as a result of industry pleading that some new technology required it. One, is plant patents. As you know, it was eventually decided that ordinary patents suffice for animal inventions, so the notion that special patents were needed for plants turned out to be unnecessary. The other case is The Semiconductor Chip Protection Act, eventually though, it turned out that ordinary copyright law was sufficient to protect complicated chip designs, and this special law turned out to be unnecessary also. Thus, I think you should reject the notion that the law must change to keep up with changing technology unless there is clear and compelling evidence to the contrary. One advocate here of the sui generis system was Oracle, and to tell you where they're coming from, I want to quote from their policy on software patents. They say, "New developments influential to the software industry frequently emanate from individuals and small companies that lack substantial resources". So from this I suggest that here they are one billion dollar company, what they want to do is get their innovation for free and not pay for it. Okay. My next point is that mathematical algorithms are not distinguishable from other algorithms. The Benson decision tried to make this distinction, most everyone including the Court of Appeals for the Federal Circuit and the recent Arrhythmia decision, agreed that this was nonsense. All computer algorithms are essentially mathematical in character. I see we have up in the podium the Knuth bible on computer algorithms, and it's impossible to say that some of these are mathematical and some of them aren't. There's just no distinction there. Fortunately, all these are in the public domain. My next point is that many software patents should have failed the novelty or nonobviousness test. For example, the Benson patent, which was rejected by the Supreme Court in 1972 for being unstatutory subject matter, was for an algorithm for multiplying by 10. It consists of noticing that the decimal number 10 is equal to one_zero one_zero in binary notations. So that on a binary computer multiplication by 10 can be accomplished by two shifts and an add. This trick is obvious to any skilled programer. If anyone had tried to publish the trick as a research result, he would be laughed at. A lot of patents seem to merely consist of taking some well known method and putting it on a computer. These are not novel. Any method can be put on a computer, that is inherent in the nature of computers, and people shouldn't get patents just for the idea of computerizing something. Now, I want to talk about some of the specific claims that were in the Notice of Announcement for this hearing. The last one, Invention G seems to be in this category of just computerizing something. It claims an accounting system implemented on a computer. It is obvious that any accounting system can be implemented on a computer. Accounting systems are normally not patentable and it shouldn't make any difference that it is implemented on a computer. So I don't think that claim should be patentable. Inventions A and B are for mathematical algorithms. Patents for these were thrown out by the Benson decision and reinstated by later decisions. Current practice is to look unfavorably towards these, but to allow them as long as the claim mentioned some hardware. The hardware mentioned might be merely some memory chips. Many older patents have drawn elaborate diagrams of flip_flops and other electronics hardware, but the Patent Office seems to be getting more lenient about this all the time. It seems to me that the hardware requirement is not serving any useful purpose anymore, it is not required by the law, and does not serve to limit the claims in any meaningful way. It might as well be abolished. Invention claim C_1 and D_1, directly claim a computer listing. I think this is a mistake and should not be allowed because it confuses patent and copyright protection. Copyright law protects program listings. If someone else sells a similar program, such a claim will not provide any useful guidance as to what constitutes an infringement. On the other hand, copyright law provides a framework for deciding what plagiarism is. Software patent claims should distinctly claim the invention as with other patent claims. The alternate version of the claims for that invention, Claims C_2 and D_2 more reasonably describe the software invention. I don't see that it makes any difference whether such a claim directly refers to a computer program, or something more tangible such as a disk. The legal scope of the claim will be the same. The traditional Patent Office tangibility requirement is not accomplishing anything useful here, it should be dropped. Invention E is a computer data structure, I think the arguments for and against this are the same as for mathematical algorithms. Much as people may not like it, I don't see any basis under current law for rejecting these claims. Invention F is a computational diagnostic method performed on a computer. If it is a genuinely novel invention, it shouldn't be rejected just because it uses a computer. An MRI device might be in this category. Computer calculations perform a necessary part of MRI scans, but most of the novelty lies elsewhere. A great many electronic devices use microprocessors with software. But the claim in Invention F is very similar to the claims in the Meyer and Weissman patent which was rejected by the Court of Customs and Patent Appeals in 1982 for unstatutory subject matter. That invention was not really a diagnostic device, but a computer program for inputting medical test results comparing them to a list of known (ontcomps) and applying a simple criterion for determining whether the patient has a problem. It might be acceptable to grant a patent for some very clever novel way of implementing such a criterion, but the Patent Office should not give a broad patent for something like this. It is completely obvious that there are many criteria to chose from, and that any criterion can be computerized. In sum, whether anyone likes it or not, it's my opinion that software_related patents will continue to be issued because that's the law. The best we can do, is improve the system by trying to give patents only for truly novel and nonobvious inventions. COMMISSIONER LEHMAN: Thank you very much. Next I would like to ask Wallace Judd of Mentrix Corporation to come forward.