Patents - Protecting Programs and Data

Patents

Patents are unlike copyrights in that they protect inventions, tangible objects, or ways to make them, not works of the mind. The distinction between patents and copyrights is that patents were intended to apply to the results of science, technology, and engineering, whereas copyrights were meant to cover works in the arts, literature, and written scholarship. A patent can protect a "new and useful process, machine, manufacture, or composition of matter." The U.S. law excludes "newly discovered laws of nature… [and] mental processes." Thus "2+2=4" is not a proper subject for a patent because it is a law of nature. Similarly, that expression is in the public domain and would thus be unsuitable for a copyright. Finally, you can argue that mathematics is purely mental, just ideas. Nobody has ever seen or touched a twotwo horses, yes, but not just a two. A patent is designed to protect the device or process for carrying out an idea, not the idea itself.

Sidebar 11-2: Inappropriate Reference to Copyright Law

Sometimes vendors refer to copyright law inappropriately, to discourage customers from returning a software package. Kaner and Pels [KAN98] explain that some companies do not want to be bothered dealing with returns, especially when the software package it has sold turns out to be defective. The company may publish a policy, posted on the store wall, window, or web site, noting that it cannot accept returns because doing so would violate the copyright act. But in fact the act says nothing about returns. It restricts only software rentals. The case analysis for the lawsuit between Central Point Software, Inc., and Global Software and Accessories, Inc., (resolved in 1995) notes that giving a refund does not turn the sale into a rental.

Requirement of Novelty

If two composers happen to compose the same song independently at different times, copyright law would allow both of them to have copyright. If two inventors devise the same invention, the patent goes to the person who invented it first, regardless of who first filed the patent. A patent can be valid only for something that is truly novel or unique, so there can be only one patent for a given invention.

An object patented must also be nonobvious. If an invention would be obvious to a person ordinarily skilled in the field, it cannot be patented. The law states that a patent cannot be obtained "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." For example, a piece of cardboard to be used as a bookmark would not be a likely candidate for a patent because the idea of a piece of cardboard would be obvious to almost any reader.

Procedure for Registering a Patent

One registers a copyright by filing a brief form, marking a copyright notice on the creative work, and distributing the work. The whole process takes less than an hour.

To obtain a patent, an inventor must convince the U.S. Patent and Trademark Office that the invention deserves a patent. For a fee, a patent attorney will research the patents already issued for similar inventions. This search accomplishes two things. First, it determines that the invention to be patented has not already been patented (and, presumably, has not been previously invented). Second, the search can help identify similar things that have been patented. These similarities can be useful when describing the unique features of the invention that make it worthy of patent protection. The Patent Office compares an application to those of all other similar patented inventions and decides whether the application covers something truly novel and nonobvious. If the office decides the invention is novel, a patent is granted.

Typically, an inventor writes a patent application listing many claims of originality, from very general to very specific. The Patent Office may disallow some of the more general claims while upholding some of the more specific ones. The patent is valid for all the upheld claims. The patent applicant reveals what is novel about the invention in sufficient detail to allow the Patent Office and the courts to judge novelty; that degree of detail may also tell the world how the invention works, thereby opening the possibility of infringement.

The patent owner uses the patented invention by producing products or by licensing others to produce them. Patented objects are sometimes marked with a patent number to warn others that the technology is patented. The patent holder hopes this warning will prevent others from infringing.

Patent Infringement

A patent holder must oppose all infringement. With a copyright, the holder can choose which cases to prosecute, ignoring small infringements and waiting for serious infractions where the infringement is great enough to ensure success in court or to justify the cost of the court case. However, failing to sue a patent infringementeven a small one or one the patent holder does not know aboutcan mean losing the patent rights entirely. But, unlike copyright infringement, a patent holder does not have to prove that the infringer copied the invention; a patent infringement occurs even if someone independently invents the same thing, without knowledge of the patented invention.

Every infringement must be prosecuted. Prosecution is expensive and time consuming, but even worse, suing for patent infringement could cause the patent holder to lose the patent. Someone charged with infringement can argue all of the following points as a defense against the charge of infringement.

·    This isn't infringement. The alleged infringer will claim that the two inventions are sufficiently different that no infringement occurred.

·    The patent is invalid. If a prior infringement was not opposed, the patent rights may no longer be valid.

·    The invention is not novel. In this case, the supposed infringer will try to persuade the judge that the Patent Office acted incorrectly in granting a patent and that the invention is nothing worthy of patent.

·    The infringer invented the object first. If so, the accused infringer, and not the original patent holder, is entitled to the patent.

The first defense does not damage a patent, although it can limit the novelty of the invention. However, the other three defenses can destroy patent rights. Worse, all four defenses can be used every time a patent holder sues someone for infringement. Finally, obtaining and defending a patent can incur substantial legal fees. Patent protection is most appropriate for large companies with substantial research and development (and legal) staffs.

Applicability of Patents to Computer Objects

The Patent Office has not encouraged patents of computer software. For a long time, computer programs were seen as the representation of an algorithm, and an algorithm was a fact of nature, which is not subject to patent. An early software patent case, Gottschalk v. Benson, involved a request to patent a process for converting decimal numbers into binary. The Supreme Court rejected the claim, saying it seemed to attempt to patent an abstract idea, in short, an algorithm. But the underlying algorithm is precisely what most software developers would like to protect.

In 1981, two cases (Diamond v. Bradley and Diamond v. Diehr) won patents for a process that used computer software, a well-known algorithm, temperature sensors, and a computer to calculate the time to cure rubber seals. The court upheld the right to a patent because the claim was not for the software or the algorithm alone, but for the process that happened to use the software as one of its steps. An unfortunate inference is that using the software without using the other patented steps of the process would not be infringement.

Since 1981 the patent law has expanded to include computer software, recognizing that algorithms, like processes and formulas, are inventions. The Patent Office has issued thousands of software patents since these cases. But because of the time and expense involved in obtaining and maintaining a patent, this form of protection may be unacceptable for a small-scale software writer.