Patent Protection OF Computer Technologies

Flash! It comes to you late at night over a bowl of ramen. The database interface that the development team has been working on can be improved by incorporating a software-driven search function designed for the unique characteristics of the input data. Revolutionary, but is it an invention? Can you finally retire on the flow of royalties promised by a patent? Or are your noodles getting soft? by Karl Ruping The development of computer software technology has outpaced legal regimes designed to protect intellectual property rights. Trade secret was the initial means to protect the proprietary information of early software code. As mass-produced applications emerged and the requisite level of secrecy could not be maintained for trade secret law, software developers turned to copyright protection. Copyright is limited to the expressive elements of the work rather than the idea behind the expression. Software commercial value does not lay exclusively in the written programming, but also in its efficiency and interaction with other applications, hardware elements, and data structures. Such is the province of patent law. Patent registration provides a 20 year exclusive right to work a claimed invention. This right is available only to a highly advanced creation of a technical idea utilizing a natural law. Does a computer program itself qualify as patent subject matter? History Early patent protection focused on the physical embodiment of hardware innovations, a strategy that fits comfortably into the existing intellectual property system. The commercial value of software was not yet apparent, and the legal protection of this new technology was not a critical issue. While a robust US market had emerged by the early 1980s, Japan Inc. was less successful in developing software technologies. The domestic software boom did not began in earnest until the 1990s when IBM and other NEC competitors agreed on a common DOS-V platform supporting double byte Japanese characters. Software developers now had an opportunity to design interoperable programs that could attract a mass market of Japanese computer enthusiasts. This was further promoted with the popular Japanese version of Microsoft Word 95 and the sudden attraction of both office and home use of personal computers. Foreign software developers began to localize their popular programs and domestic developers found a welcome demand for native applications. There was a parallel growth in the Japanese software market and in the development of software technologies that challenged the existing intellectual property system. Innovative developers looked beyond the limitations of copyright and turned to patent protection. US Judicial Development Software patenting began where this industry and technology was the most advanced - the US. Early cases rejected claims that included mathematical algorithms, but in the 1981 Diamond vs. Diehr decision, the US Supreme Court accepted as patentable a rubber curing process that incorporated a programmed computer. Introducing a broad interpretation of statutory subject matter, the court stated that patent protection is available to �anything under the sun made by man� excluding laws of nature, natural phenomena and abstract ideas. Later courts have applied this expansive view of patenting to program computer hardware, data structures that impart structural organization on data in memory, and even to innovative programming on a computer readable medium. Based on this rich history of judicial precedent, the US Patent and Trademark Office (USPTO) issued the 1996 Examination Guidelines for Computer Related Inventions to assist examiners in review ingatent applications involving software elements. Japan�s Judicial Development The Japanese subject matter debate proceeded with few cases and no Supreme Court review. Rather, the question of software patenting has been left to the bureaucracy, in particular the Japan Patent Office (JPO). This should not be surprising, as it is the JPO that has initial jurisdiction over patent validity, including issues of patent subject matter. Courts can comment on patentability when reviewing appeals to JPO application review, an opportunity rarely taken in the fast-paced field of computer technology. A judge may also interpret statutory subject matter indirectly when establishing the scope of patent protection in an infringement action. Japan, the world�s second largest software market, has yet to see a final judicial decision in a software patent infringement action. The JPO issued its first statement on software subject matter in 1975 with the Examination Standards for Computer Program Related Inventions. This was not receptive to software patenting, and largely chilled attempts to claim software inventions. Subsequent guidelines have expanded the scope of protection consistent with the development of computer technologies and the domestic software market. The most recent 1997 Examination Guidelines for Computer Software-Related Inventions proved a framework from which the Patent Office will examine a patent application involving software claims. This document is largely modeled after the USPTO Guidelines, recognizing software claims in the form of a process, product, or a computer-readable storage medium. Excluded from patent subject matter are programming languages and program listings. The guidelines also provide that a software-related invention fails to utilize a law of nature when its solution is a mathematical algorithm, natural law, natural phenomena, or mathematical expression of natural laws or natural phenomena. While the JPO takes a cautious view of mathematical algorithms, a software-related invention incorporating a mathematical algorithm as an element may still qualify as a patentable invention if the claims taken as a whole are to a technical idea utilizing a natural law. Despite the growing importance of computer technology and the changing JPO practice in this area of law, there has been no court case confirming software-related inventions as patentable subject matter. In the YES case the plaintiff�s patent was a financial management and inventory control system which was claimed to be a hardware apparatus. A competitor designed a software application that performed the same functions as the hardware invention. The Tokyo District Court found the software program to be beyond the �technical scope� of the claimed hardware. But could the software version itself be a patentable invention? The Osaka District Court followed by distinguishing a patented hardware control device for use in a hospital management system from the defendant�s similar software-based system. The court further observed that the plaintiff�s hardware claim required a host computer to perform its function. The defendant produced only a software program, and this alone could not infringe the patented device. Both patent holders sought to protect the software technology by citing a hardware-based apparatus, which was clearly statutory subject matter under earlier JPO Software Guidelines. As the failed infringement claims demonstrate, however, this strategy did not ensure effective rights to the valuable element of those otherwise patentable inventions, the underlying software itself. Memory Claims The 1997 Software Guidelines recognize a new category of patentable subject matter: memory claims. A patent applicant can now claim both innovative software programs incorporated on a computer-readable recording medium and data structure incorporated on a computer-readable recording medium. Thus, unlike the YES case, infringement may be established with the distribution of the software program on a floppy disk or CD-ROM. Or possibly through Internet transmission over a (computer-readable) telephone line. Memory claims must still satisfy the technical idea/natural law requirement of the Patent Law. In particular, a software-related invention qualifies as patentable subject matter when it controls hardware resources, engages in information processing based on the physical or technical properties of an object, or relates to information processing using hardware resources. Data structures must additionally have a functional relationship with the computer processing function, a requirement that does not appear in the US line of cases from which the Japanese Guidelines again borrowed. The 1997 Software Guidelines suffer from a number of limitations. The JPO provides several examples of statutory and non-statutory subject matter, but these are brief and of very basic technologies. Absent are complex and detailed claims and a sophisticated review of the analysis behind statutory subject matter. The greatest failure is not the guideline itself, but the nature of legal development in this area. The general provisions of the guidelines and judicial silence of the courts do not provide a clear doctrine of software subject matter for patent holders to define the scope of rights or for applicants to predict the patentability of software-related inventions. We are left with only a vague idea of the technical idea/natural law requirement for securing a patent in this rapidly changing technological field. Regardless of these limits, software patenting is a new area of intellectual property protection that holds much promise, or danger, for those in the computer industry. So finish your ramen and get back to the drawing board... fame and fortune await.� Karl Ruping is a US attorney (NY & MA) specializing in, Intellectual Property rights in high technologies. In addition to his Boston practice, Karl lectures on IP rights in Europe, Asia and the US. Questions can be directed to the author at ruping@tuj.ac.jp . Back to the table of contents