Patenting of Software-Related Inventions

[David Farber <farber () central cis upenn edu>]

Presentation by Bernard A. Galler, Software Patent Institute
to the Patent & Trademark Office Hearings on
Patenting of Software-Related Inventions
February 11, 1994




The history of inventions in the software area is not recorded well.
There are a few formal journals, such as the Annals of the History of
Computing, and some textbooks, but the prior art that is needed by the
United States Patent and Trademark Office (PTO) is not available in many
of the forms that more mature fields support.  For example, in the fields
of chemistry or physics, in addition to a large number of patents available
to the PTO, most research results are published in a relatively few
journals.  This is certainly not the case in the software community.  Not
only are results and inventions not published in formal journals most of
the time, they are usually described, if at all,  primarily in informal
conference reports or newsletters.  Add to that the almost complete lack
of issued patents before 1981 in this field, and it is clear why PTO
examiners have a difficult time finding prior art, even when previous work
that is relevant is well known in the field.


There are some repositories of program code, but it is very difficult
to extract or abstract the innovative and non-obvious algorithms and ideas
that are detailed there.  What is needed is not the detailed code, but some
level of description of what is in that code.  Unless the author carefully
documents the developing algorithm, the control flow, and the data
structures, it is very difficult to discover these concepts to understand
 the underlying process.  It is well known, however, that programmers are
usually too interested in moving on to the next task to take the time to
document the last one.


It isnUt difficult to understand why software results are so often not
published in formal journals.  Most of the work in this emerging field has been
done outside academia, since software is almost always immediately
applicable to the solution of problems that already exist in industry.  Of
course there is theoretical work in Computer Science and in Computer
Engineering, but the explosion of computing in our society has led to a
corresponding explosion in software techniques in advance of the theory, and
in the rush to exploit these techniques, relatively little effort has been
devoted to disseminating these results and techniques widely.  In fact, even
when this kind of information is not regarded as a trade secret, many
companies are not particularly anxious to have it widely available.  During the
years before 1980, there was much confusion as to the kind of protection that
might be available, if any, for software inventions, and there was little
incentive for programmers to try to publish their work.  Much of the
communication that did go on occurred at thematic conferences and workshops.
The reports of such conferences constitute a very valuable source of prior art,
but they are not readily available to the PTO.


Thus, the PTO has found it difficult to identify the relevant sources
for prior art, or to collect that prior art into a usable database for the
purpose of evaluating patent applications.  What are the relevant sources
for prior art in the software area?


- Already mentioned are conference and workshop proceedings from both
general and specialized conferences.  These are usually sponsored by
professional societies such as the Association for Computing Machinery (ACM)
and the Institute of Electrical and Electronic Engineers (IEEE), or their
Special
Interest Groups (SIGs) or Societies.  The SIGs publish newsletters, also, often
containing nuggets describing new ideas and techniques which eventually
prove to be important prior art.










- Universities, such as Michigan and UCLA, have for many years offered
short courses (lasting one or two weeks), in which leading-edge research
results are presented, disclosing new ideas, concepts, and techniques.  The
notes which are distributed to attendees contain valuable descriptions of such
work, and in time prove to be important prior art, publicly disclosed.


- Manuals for commercial systems and applications often contain
important descriptions of the techniques these systems and applications
embody, and are a valuable source of prior art.  Such sources would not be
readily available to PTO examiners unless the PTO would have the funding
to build an extensive library with appropriate indexing for that purpose.


- A number of software vendors publish internal reports and/or
research journals which are made available to their customers and are
thus publicly disclosed.  These reports and journals, and other materials
used for the education and training of customers, often describe
innovative ideas and techniques which could be used as prior art if they
were available to the PTO examiners.


- Government-supported research is often documented in reports
generated by the Principal Investigators and published by the sponsoring
government agencies.  While these are public documents, it is not easy to
know where to look for them.  They often contain the earliest reports of
significant research and applications in the software area.


- Another source of material can be found in books published on
various subjects in Computer Science and Computer Engineering.  These
include textbooks for more advanced courses, and research publications
from academic institutions.  It is not always easy to find the kinds of
prior art that examiners need in such books, but if they were on-line
(instead of only in printed form), it would be much easier to discover
which books contain material relevant to a particular claimed invention.


- Finally, corporate defensive disclosure publications can be
important sources of relevant prior art.   A company that wants to make
sure that a competitor does not obtain a patent covering a process or
technique that is essential to its own business might publish a
description of that process or technique so as to have it publicly
disclosed, without taking the additional step of applying for a patent.  On
the other hand, that company may not be particularly anxious to advertise
its discovery or use of that process or technique, so the publication will
not be very widely disseminated.  If indeed a patent is later issued for
that process or technique, the company can point to the disclosed art
during litigation, but that is a very late stage in the cycle.  Companies
that rely on defensive disclosure should be encouraged to deposit their
published disclosures in a database available to the PTO, so the
controversial patent most likely will not be granted at all.


The Software Patent Institute (SPI) is a nonprofit institution
dedicated to providing information to the public, to assisting the PTO and
others by providing technical support in the form of educational and
training programs, and to providing access to information and retrieval
resources. The primary goal of the Software Patent Institute is to provide
the best available information as to prior art in the software field for
utilization by the public and the PTO.  We applaud the effort by Dr. Dobb's
Journal of Miller Freeman Publications to make its articles available on
CD-ROM, and the efforts of Ziff-Davis Publications to put a number of
recent computer-related publications on CD-ROM, as well as the efforts by
the IEEE and the ACM to make available abstracts of computer science
articles.  We also applaud the efforts of those who are working to
identify, collect, and distribute copies of the patents they consider
software-related, especially since many of the patents that have been
identified come from a large number of PTO classes.


These efforts are valuable contributions to the overall effort to
document the history of software technology and to make the results
available in on-line form.  The Software Patent Institute, for its part, is
tracking these efforts carefully so that our collection supplements, rather
than duplicates, these other efforts.  To track the history of an exploding
industry with rapidly developing technology is a massive undertaking that
will require significant efforts by a number of organizations. We are
committed to being one of them.


The Software Patent Institute also provides an educational resource
from which the PTO and the public can obtain an enhanced understanding of the
nature of software, of software engineering, and of the history of the
discipline and its relationship to the patent process.  Several lectures have
already been given to the examiners of the PTO on aspects of software history
and techniques, and several more are scheduled during the next few weeks and
the coming months.  We plan to offer our first one-day session on related
topics to patent professionals and the general public sometime this Spring.


Although there is currently a debate on the overall desirability of
having software patents, the Software Patent Institute has deliberately
taken no position on that question.  We recognize that the patent system is
in place and working, but that there is currently a problem regarding
software-related patents.  We are dedicated to helping alleviate that
problem, independent of longer-range considerations that must eventually
be resolved.


The Software Patent Institute has asked people throughout the
software industry, government, and academia to contribute descriptions
of software techniques and processes to the Software Patent Institute
database.  These descriptions form the content of the SPI database and
have now been made available for computer-aided searching by the PTO,
and by the members of the Software Patent Institute.  Access by the
general public will follow shortly.


The SPI database already contains many examples of each of the
kinds of relevant prior art outlined above, and it is growing rapidly.  Our
recommendation to this panel is to issue a strong recognition and
endorsement of this kind of activity -- by the Software Patent Institute
and by others -- and to encourage the PTO to take advantage of the
services of the Software Patent Institute as much as possible.  We
strongly believe that the PTO can and will do a better job than it has, if it
has the right tools and the right information.