The Death of Google's Patents?

By John F. Duffy* [File Attachment (42 KB)]

            The Patent and Trademark Office has now made clear that its newly developed position on patentable subject matter will invalidate many and perhaps most software patents, including pioneering patent claims to such innovators as Google, Inc.

            In a series of cases including In re Nuijten, In re Comiskey and In re Bilski, the Patent and Trademark Office has argued in favor of imposing new restrictions on the scope of patentable subject matter set forth by Congress in § 101 of the Patent Act.  In the most recent of these three—the currently pending en banc Bilski appeal—the Office takes the position that process inventions generally are unpatentable unless they “result in a physical transformation of an article” or are “tied to a particular machine.”[1] Perhaps, the agency has conceded, some “new, unforeseen technology” might warrant an “exception” to this formalistic test, but in the agency’s view, no such technology has yet emerged so there is no reason currently to use a more inclusive standard.[2]  

            The Bilski en banc hearing attracted enormous attention, and yet there has remained a sense among many patent practitioners that the PTO’s attempts to curtail section 101 would affect only a few atypical patent claims.  The vast bulk of patents on software, business and information technology are thought by some not to be threatened because those innovations are typically implemented on a machine—namely, a computer—and the tie to a machine would provide security against the agency’s contractions of § 101.  Even if that view were right, the contraction of patent eligibility would be very troubling because the patent system is supposed to be designed to encourage the atypical, the unusual and the innovative.  But that view is wrong.

            The logic of the PTO’s positions in Nuijten, Comiskey and Bilski has always threatened to destabilize whole fields of patenting, most especially in the field of software patents.  If the PTO’s test is followed, the crucial question for the vitality of patents on computer implemented inventions is whether a general purpose computer qualifies as a “particular” machine within the meaning of the agency’s test.  In two recent decisions announced after the oral arguments in the Bilski case, Ex parte Langemyr (May 28, 2008) and Ex parte Wasynczuk (June 2, 2008),[3] the PTO Board of Patent Appeals and Interferences has now supplied an answer to that question: A general purpose computer is not a particular machine, and thus innovative software processes are unpatentable if they are tied only to a general purpose computer.  

            That stark answer should capture the attention of the many inventors and firms owning, or seeking to own, patents on innovative computer implemented processes, for the PTO’s new interpretation of patentable subject matter provides a clear avenue to reject patent applications and to invalid issued patents on all such innovations without regard to how meritorious or creative the innovation is.  To understand the sweeping implications of this new position, we need only to consider how the PTO’s position applies to the patent on Google’s PageRank technology, which is surely one of the most famous and valuable of all modern software patents and which is now almost surely invalid under the agency’s position. 

The Patent on Google’s PageRank Technology

            Google has constructed its web search technology using a “technology for ranking web pages” that the company refers to as “PageRank.”[4]   This patented technology was developed by Larry Page and Sergey Brin while they were attending Stanford University.[5]  Stanford owns the patent, and Google holds a perpetual license on the technology that is exclusive through at least 2011.[6]   The first claim of this important patent reads:  

A computer implemented method of scoring a plurality of linked documents, comprising:

obtaining a plurality of documents, at least some of the documents being linked documents, at least some of the documents being linking documents, and at least some of the documents being both linked documents and linking documents, each of the linked documents being pointed to by a link in one or more of the linking documents;

 assigning a score to each of the linked documents based on scores of the one or more linking documents; and

 processing the linked documents according to their scores.

U.S. Pat. No. 6,285,999 (filed Jan. 9, 1998, issued Sept. 4, 2001).[7].

            How does Google’s patent fare under the position advanced by the government in Bilski?  The first part of the government’s test recognizes the patentable eligibility for processes that result in “a physical transformation of an article.”  Google’s PageRank process seems to fail that part of the test, for the process merely generates a set of scores (which are merely numbers) that are then used to score or rank documents.  The documents themselves probably do not qualify as physical articles under the government’s restrictive test, for the documents are typically virtual webpages.  Moreover, even if the documents would count as physical articles, they are not transformed; the process merely ranks them.  The total output from the Google patent is just a mass of intangible data, and worse still it is intangible data about intangible documents. Simply put, there’s no “physical,” no “transformation,” and no “article.”  Indeed, Google’s process is even less physical than the process at issue in Bilski, which involved hedging the volatility in money flows.  Dollars and cents seem real and physical enough for many people.  If processes affecting money flows do not qualify as producing a physical transformation, it seems impossible to imagine that a process would qualify where it only scores virtual documents by virtual links to other virtual documents.  

            The second part of the PTO’s proposed eligibility test is thus crucial.  Unlike the patent claim in Bilski, which was not limited to machine implemented hedges, Google’s PageRank patent claim expressly states that it is “computer implemented.”  But the government’s test does not merely require a connection to a machine; it requires a tie to a particular machine.  

            On a recent panel held after the oral argument in Bilski, I raised the issue of Google’s patent claim with Ray Chen, the lawyer who represented the PTO in Bilski, and he asserted that, under the PTO’s position, the Google claim was probably still patentable.[8]  But in light of the PTO’s subsequent decisions in Langemyr and Wasynczuk, it is increasingly hard to see how Google’s PageRank patent survives.  Nor is that one patent an anomaly in Google’s portfolio.[9]  Indeed, other patents owned by Google include claims that do not even include a formal limitation to a computer.[10]  Google might have thought that the patent system would surely protect new technological developments that are highly creative and socially valuable.  The PTO’s new position proves that view mistaken.

Langemyr and Wasynczuk

            The patent claim at issue in Langemyr covers a “method executed in a computer apparatus” for producing a model of a physical system using a set of partial differential equations.[11]  Even though Langemyr’s claimed invention is more closely tied to the physical world than Google’s PageRank technology is—Langemyr is, after all, modeling the physical systems rather than scoring virtual documents by their virtual links to other virtual documents—the PTO Board still had little difficulty finding that Langemyr’s claimed process does not contain a “physical transformation” and therefore does not qualify as patentable subject matter under the first part of the PTO’s test.  The Board reasoned that the claimed process produced no “transformation of subject matter but merely an abstract mathematical expression that is created from the previous steps.”[12]  The process, the Board noted, “does not require any physical output into the real world.”[13]  Precisely the same can be said of Google’s patented process, which produces merely mathematical expressions—a set of ranks or scores—and lacks any physical output into the real world.

            Thus for both Langemyr and Google, patent eligibility under the PTO’s test comes down to the interpretation of the second part of the PTO’s test.  Both the Langemyr and Google patent claims are expressly limited to processes “executed” (Langemyr) or “implemented” (Google) on a general purpose computer, and the Langemyr decision holds that “the limitation that the method is ‘executed in a computer apparatus’ does not tie the method to a ‘particular machine.’”[14]  The key flaw in Langemyr’s claim, the PTO Board reasoned, was its general applicability to all computer:  “Any and all computing systems will suffice, indicating that the claim is not directed to the function of any particular machine. … Thus, the claimed method is not tied to ‘a particular machine,’ but rather is tied only to a general purpose computer.” [15] 

            In these crucial passages, the PTO Board has provided the foundation for rejecting and invalidating huge swaths of software patents, including not merely Langemyr’s claims, but those of Google, Microsoft, IBM and many other companies.  If we want to evaluate the PTO’s ongoing attempts to constrict § 101, it does not seem an understatement to say that the constriction is truly breathtaking, given that the PTO’s position pushes outside the patent system Google’s PageRank patent, even though that patent covers one of the most widely known and commercially successful innovations of our era.  

            This is not, however, the end of the story.  The PTO’s decision in Ex parte Wasynczuk provides one final twist so Kafkaesque as to strain credulity.  

            As in Langemyr, the invention at issue in Wasynczuk relates to a “computer-implemented” process for modeling physical systems.[16] As in Langemyr, the PTO Board in Wasynczuk holds the broadest claim in the application to be unpatentable subject matter because “the sole structural limitation recited is the ‘computer-implemented system’ of the preamble” and that limitation “is not any particular apparatus” because the computer could be “essentially any conventional apparatus that performs the claimed functions.”[17] 

            Yet unlike in Langemyr, the application in Wasynczuk also included a narrower claim in which “the first simulating step [of the claimed process] is performed on ‘a first physical computing device’ and the second simulating step is performed on ‘a second physical computing device.’”[18]  The PTO Board holds that claim to be patentable subject matter.  The Board concluded that the collection of the two “physical computing devices” operating together “is ‘a particular apparatus’ to which the process is tied, not simply a generic computing device for performing the steps.”[19]  Distribution of the process over two general purpose computing devices quite clearly seems to be the key to patentability in the Board’s view, for the Board emphasized that the narrower claim covered only the embodiment in Wasynczuk’s specification that “uses two computing devices” not the embodiment that “uses a single computer.”[20]  In sum, an innovative process is not patentable when operating on a single computer processor but is when operating on two processors, even though the Board recognizes that the process in the unpatentable claim “is essentially the method” set forth in the patentable claim.[21]  

            Google’s PageRank patent claim is of course not saved by the PTO’s caveat that two computer processors are better one when it comes to patentable subject matter.  The PageRank claim requires only computer implementation and is thus invalid under both Langemyr and Wasynczuk.  But the Wasynczuk definition of “particular machine” opens up vast possibilities for future litigation.  In an age when even simple laptops often contain multiple processors, many patent claims could be written as functioning on multiple “physical computing devices.”  Will such claims generally be patent eligible?  Will dual core processors operating on a single chip (e.g., Intel’s Centrino Duo® chip) constitute a “particular machine”?  Or will the processors have to be physically separate chips or physically separate computers?  Will the patent claims have to specify that certain steps occur only on one processor while other steps occur solely on the other?  Will the result be different if the processors share steps to some degree?  All these and many more fascinating questions will provide ample billable hours for patent attorneys even as inventors look on with utter horror and disbelief at the crucial importance the legal system is placing on distinctions that are technologically meaningless to the innovations sought to be patented. 

Requiem (?) for Google’s Patent 

            The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit.  It will surely be cause for mourning among those who believe that allowing patents on cutting edge technologies has served the country well for more than two centuries and that a radical departure from the traditional approach would be unwise.  And it is likely to generate puzzlement among business people and innovators, who may wonder how agency decisions supposedly premised on the need for ensuring that “that the patent system be directed to protecting technological innovations”[22] have ended up rendering unpatentable innovations in search engine technology, computer modeling, bioinformatics and many other innovations in cutting edge fields related to software and information technology.

            Undeniably, however, the pallor now cast upon Google’s patents and many other software patents highlight the stakes in the Federal Circuit’s pending en banc decision in Bilski. The PTO Board’s reasoning in Wasynczuk also reveals that the agency’s proposed new rule for patentable subject matter will not produce certainty but will instead open up software patents to new and previously unimagined litigation over the precise scope of the concept of a “particular machine.” Vast industries of modern innovation must now wait to see whether the courts will follow the agency’s lead. 

---

[1] PTO Supp. Bilski Br. at 25 (argument section heading; initial capitalization omitted).  See also id. at 6 (heading of argument section C.1, stating that “a Section 101 ‘process’ must either be tied to a particular apparatus or transform an article to a different state or thing”) (capitalization modified). 

[2] Id. at 9. 

[3] The decisions are available at, respectively, http://www.uspto.gov/web/offices/dcom/bpai/its/fd081495.pdf and http://www.uspto.gov/web/offices/dcom/bpai/its/fd081496.pdf.

[4]  Google Form S-1, Registration Statement (filed April 29, 2004) at 65.

[5] Id. at 67.

[6]  Id.  Google also stated in its SEC filing that patents are one of the legal mechanisms used to protected Google’s proprietary technology and that the company “rigorously control[s] access to proprietary technology.”  Id.  In light of these statements, made under pain perjury sanctions, there is no basis for believing anything other than that the PageRank patent is—or, in light of PTO’s new positions, was—an extremely valuable piece of intellectual property.

[7] The other claims in the PageRank patent include no more connections to a machine than does the first claim.  Twenty-seven of the twenty nine claims are directed to “computer implemented” processes that, like claim 1, have no limitation to a particular type of computer.  Two claims (18 & 19) are directed to software-on-a-disk claims (so-called Beauregard claims), with the claim covering a “computer-readable medium” containing instructions for the PageRank scoring process.

[8] See Tony Dutra, Bilski Opponents Renew Debate on Patentability Formalisms and Standards (May 30, 2008) (reporting my debate with Chen on whether the PTO’s position undermined Google’s patents). 

[9] See, e.g., U.S. Pat. No. 6,678,681 (issued Jan. 13, 2004) (setting forth a “computer implemented method of extracting information from a database”); U.S. Pat. No. 6,865,575 (March 8, 2005) (setting forth a “computer implemented method” for “using a modified index to provide search results in response to an ambiguous search query”).

[10] For example, the first claim in U.S. Patent No. 6,526,440 (issued Feb. 25, 2003), which discloses an improved search engine technology, does not even expressly include the limitation that the process must be computer implemented:

1. A method of identifying documents relevant to a search query, comprising:

obtaining an initial set of relevant documents from a corpus;

ranking the initial set of documents to obtain a relevance score for each document in the initial set of documents;

calculating a local score value for at least two of the documents in the initial set, the local score value quantifying an amount that the at least two documents are referenced by other documents in the initial set of documents; and

refining the relevance scores for the documents in the initial set based on the local score values.

See also U.S. Pat. No. 7,222,299 (issued May 22, 2007) (claiming a new method for “detecting quoted text” that is not limited to computer implemented versions of the method). 

[11] Claim 1 in Langemyr’s application reads:    

1. A method executed in a computer apparatus for creating a model of a combined physical system having physical quantities by representing physical quantities of the combined physical system in terms of a combined set of partial differential equations, the method comprising:

representing at least one of a plurality of systems as two or more selected application modes modeling physical quantities of said one of said plurality of systems;

determining a set of partial differential equations for each of the two or more selected application modes, parameters of the partial differential equations being physical quantities of corresponding ones of said plurality of systems;

forming said combined set of partial differential equations using the determined sets of partial differential equations associated with said one of said plurality of systems; and

outputting a model of said combined physical system based on said combined set of partial differential equations for the two or more selected application modes for the said one of said plurality of systems, whereby the model represents a mathematical expression of the physical quantities of the combined physical system.

Langemyr, BPAI Slip Op. at 2-3. 

[12] Id. at 21.

[13] Id.

[14] Id. at 22. 

[15] Id. at 22, 24.  The Board also rejected Langemyr’s software-on-a-disk claim (Beauregard claims), explaining that it could “see no reason why placing instructions on a computer readable medium … should be treated any differently from the method of claim 1.”  Id. at 28. 

[16] Wasynczuk’s claim 1 reads: 

1. A computer-implemented system, comprising:

a first executing process that:

implements a first continuous-time model to simulate a first physical subsystem, the first model being programmed in a first language and having a first state variable; and

sends a first series of state-related numerical values, each numerical value reflecting information relating to the value of the first state variable at a different point t, in simulation time in the first model; and

a second executing process that:

receives said first series of state-related numerical values from said first executing process without said first series of state-related numerical values passing through a central communication process;

implements a second continuous-time model to simulate a second physical subsystem, the second model being programmed in a second language and taking as an input values from said first series of state-related numerical values; and

outputs data representative of a state of the second continuous-time model.

Wasyczuk, BPAI Slip Op. at 2-3. 

[17] Id. at 25.

[18] Id. at 22.

[19] Id. 

[20] Id. at 22. 

[21] Id. at 25.

[22] Langemyr, Slip Op. at 8; Wasynczuk, Slip Op. at 12.   

Comments

[Just an ordinary inventor(TM)]

TQ,

As I understand your questions, the answers are: No, Yes, No and No.

[MaxDrei]

Ah JAOI, I see it's possible to type an answer, even with your tongue firmly stuck in your cheek. Nice one. TQ: don't you believe him. Think: he would say that, wouldn't be, because he's an inventor, and a patent holder, and somebody with a passionate interest in a "strong" US patent system. Not your type at all.

[Eurodisnae]

TQ

>>Is it true that the idea of patents was to induce people to reveal their secrets so they could serve as inspiration to others?

Almost – the patent system is supposed to encourage the publication of useful information regarding “inventions” by granting limited monopoly rights in return

>>Is not one of the main notions that the patent is supposed to be able to replicate the patented device?

Yes, the published information should be sufficient to enable the appropriately skilled person to implement the invention for which the monopoly rights are sought. So, when the patent expires, the invention becomes freely available to all.

>>And if true, aren't these ideas contradicted by the broad and abstract claims made by the patents we have been talking about?

Don’t confuse the “claims” with the overall “teaching” provided by the patent. The patent as a whole must enable replication. The claims seek to define the “invention” in terms of its essential elements, in terms that try cover the same “inventive concept” being implemented in different ways. In themselves the claims don’t need to enable replication.

>>Don't they support the court opinion that started this all when it said that saying 'any computer' (eyeball measuring device, etc) is too vague compared to some specifically configured production system?

This is where it gets tricky. Claims tend to define inventions in terms that are generalised from specific examples of ways of implementing the invention. How much generalisation is acceptable depends on the nature of the invention and how much the patent contributes to human knowledge. If the claims are too broad in relation to the teaching provided then they will not stand up. How broad is “too broad”? The answer to that varies with the judicial/political climate. Setting standards for these things leads to all kinds of peculiar word games.

[MaxDrei]

The central conundrum on Disnae's "standard setting" is that cases should get as far as trial only when they are so finely balanced that both sides still think they can win. Then we have the old maxim "Hard Cases Make Bad Law". So, there's a special responsibility on the first instance courts that try patent matters to be wise enough to see all the consequences of the legal theories they hand down in their "hard cases". When the judges lack vast experience in patent law, the caselaw they hand down can get a bit dodgy. With common law Binding Precedent, it can just go on getting worse and worse, till somebody wise enough and senior enough calls for order. And I think we are at the moment not short of calls for order.

[Wookey]

pds. Copyright stops people copying your particular implementation of an algorithm or idea. It is _good_ than someone else implementing that alogorithm or idea in a different way is not infringement. This allows competition and development. This way writers of software get to compete on who's is best, or has the most pleasing interface, or whatever it is that the customer likes. That's good too, for both producers and consumers.

As TQ White says, the original patent bargain about revealing secrets sufficiently that others could implement those secrets seems to have been forgotten about some time ago.

Tom S made a very good point about this really being about 'should data processing be patentable'. I'm entirely in agreement with his analysis (although I suspect we might reach different opinions on the answer).

[M. Slonecker]

A rather scathing comment about Professor Duffy's "journalistic ethics" has been the subject of an article appearing on the techdirt blog.

Out of curiosity, is there anyone posting to this blog who believes that Professor Duffy violated such ethics by not noting at the outset of his comments that he participated in preparing an amicus brief in the Bilski case? I think not given the nature of this blog and that his comments were directed to its participants, and that his amicus brief was a continuation of points he has repeatedly stated in his many journal articles concerning what he believes to be the proper approach for analyzing issues pertaining to 101.

[Malcolm Mooney]

"I find it disingenuous that the software companies whined for so long about how the patent system took too long to examine and issue their patents; complaining that their business cycle time was so short, perhaps a max of 5 years, but now embrace a system that gives them protection for 20 years, ostensibly long past the date that their products have ceased to be viable."

So do I. It's also unbelievable and appalling that anyone would imply that the the costs of developing a new piece of software are remotely near the cost of developing a new pharmaceutical.

But someone upthread did just that.

[pds]

"This allows competition and development. This way writers of software get to compete on who's is best, or has the most pleasing interface, or whatever it is that the customer likes. That's good too, for both producers and consumers."

Great for consumers, no doubt about that ... which is why the internet (i.e., the best place to find the most prolific users of software) is full of people advocating that software shouldn't be patentable.

The last generation or so has grown up in a society where the belief that content should be free has run rampant. However, the people producing the content and/or the products (such as software) still need to get paid.

I call this form of attitude "patent communism" ... the belief that everything should be shared and that people will still produce the products/content because that is what they do. Communism, when first instituted by hard core believers, works at first. However, what happens is that those that produce more value than others don't appreciate others reaping the fruit of their labors, particularly when the fruit doesn't come back to them. Moreover, others practicing communism also determine that the person producing the least gets just as much as the person producing the most. As such, there is little incentive to produce more or even at all.

With inventive ideas, whether embodied in an automobile engine or software running on a server or on a browser in a client, when the incentive to produce these ideas are no longer there (because somebody can copy them with weeks, days or even hours of them being implemented), then why going through the process? Like practicing communists found out ... let the other guy do the work, and you reap the benefit of that work. As such, let the other guy do the inventing, and then you just copy what was invented.

One can argue whether or not this will happen or not, but philosophically, this is what I believe. Altruistic people exists, but they don't exist in such great numbers so as to make communism work.

[Malcolm Mooney]

"is there anyone posting to this blog who believes that Professor Duffy violated such ethics by not noting at the outset of his comments that he participated in preparing an amicus brief in the Bilski case?"

I, for one, could care less.

In the world of potential lapses in journalistic ethics, I'm not sure that it would be possible to find a less trivial and meaningless example than a blog article on an obscure patent case.

Meanwhile, CBS and the Washington Post cover up John McCain's lies for him. Nice.

[MaxDrei]

Without patent rights, those in creative job areas producing hot cakes content will go without an income? Seems that few of those creative content-providers share your conviction, pds, since new content is "rampant" now and getting ever more rampanter. Those creative authors are still all dreaming of "striking it rich" aren't they, and the successful content-creators do still strike it ever richer, don't they. I had supposed that anybody with a track record of creating hot cakes is ever more assured, as talent becomes ever more scarce, of securing ever more wealth. Can't yet see what's wrong with strong copyright and strong patents for everything that's "technical". As in non-communist Europe.

[pds]

"So do I. It's also unbelievable and appalling that anyone would imply that the the costs of developing a new piece of software are remotely near the cost of developing a new pharmaceutical."

Care to point it who? .... Didn't think so.

If there was a comparison being made ... it was made you and your trusty sidekick, Sandy Strawman.

BTW: Some Annual R&D numbers for select pharma companies: (all numbers in billions)

Amgen: $3B
Merck: $5B
Bristol-Meyer: $3B
Pfizer: $8B
Sanofi-Aventis: $7B

Annual R&D numbers for some big companies in the "software" space:

MSFT: $7B
IBM: $6B
Google: $2B
Yahoo: $1B
Oracle: $3B
SAP: $2B

[Leopold Bloom]

"is there anyone posting to this blog who believes that Professor Duffy violated such ethics by not noting at the outset of his comments that he participated in preparing an amicus brief in the Bilski case?"

I just read the techdirt blog and commentary. I don't get it. Some people seem to be confused by the concepts of having an opinion and "conflict of interest," as a number of the commenters accused Duffy of having the latter. I don't see any conflict at all - he wrote an article that presumably reflects his opinions, which are in apparent conformity with his amicus brief. Where's the conflict? Who suffers from this supposed conflict?

The original blogger seemed to be saying that Duffy violated some "journalistic" code of ethics by not disclosing his participation in the Bilski case. My understanding is that Duffy has no personal interest in the case - he just participated in an amicus brief. So the problem is that somehow the reader of the present piece is deceived by not knowing that Duffy participated in drafing a brief that is consistent with the present piece? That makes no sense. He's unethical because he doesn't disclose that he's published other writings promoting the same viewpoint?

If the supposed ethical lapse is that Duffy is trying to impermissibly influence the CAFC opinion, then that's even more absurd. The CAFC knows very well who he is. If the CAFC is influenced by public outrage aroused by Duffy's post in Patently-O, then we have bigger problems.

This looks like nothing more than a not terribly sophisticated ad hominem attack, where the strategy appears to be to divert attention from the substance of a writing by attacking the author.

[pds]

MadMax ... are you taking a liking to Sandy Strawman as well?

"Without patent rights, those in creative job areas producing hot cakes content will go without an income?"
Working with a few light bulbs burnt out today are we? Don't know the difference between copyrights and patents?

Let's flip your argument around, shall we .... new software appears to be quite rampant in the US despite all these onerous patents. How is that possible?

BTW: You can get a copyright on a new automobile. However, just because you can get a copyright doesn't mean that it is the best form of intellecutal property for it.

[Malcolm Mooney]

"Annual R&D numbers for some big companies in the "software" space"

Dude, you have GOT to be kidding me.

[Malcolm Mooney]

pds, I agree with much of what you write in your 12:39 post. But between the 20 year monopoly for software claims and full-bore communism there is an awful lot of middle ground.

I want people who write software to be paid. But as I recall Congress already passed some pretty generous legislation to facilitate that precise result.

[MaxDrei]

pds: my question was rhetorical. Of course software creators have IP in their creations, from which an income is derivable. My point, in a nutshell, is "Horses for Courses". Copyright law for things like artistic, literary and musical works and not technology. Patent law for technical innovation, but not for business methods, mathematical methods, algorithms, as such. Aharonian preposterously writes that "obvious" is meaningless and "technical" is meaningless. Most ordinary people, including judges, think otherwise.

[pds]

"Aharonian preposterously writes that 'obvious' is meaningless and 'technical' is meaningless. Most ordinary people, including judges, think otherwise."

I'm not sure I would use the term meaningless, but I think very-poorly defined would be better. I have a very broad concept of technology. To me, a pencil represents technology (albeit very old technology), just as a canvas and paint brush are forms of technology. I think that most people, when confronted with the phrase "technology," automatically insert the word "new" or "computer" in front of that phrase. Ask the average business person about their technology resources, and they'll start to tell you about their IT system.

If somebody comes up with a great new methodology for hedging pork belly futures, then I say gives us your disclosure, and we'll give you a patent. However, once those 20 years are up, then the world is free to use it as they choose. If the technology is really valuable, somebody will license it and still make money. Also, somebody wanting to acheive the same end result may build upon this disclosure and/or work around it. These are all good results in my eyes ... much better than keeping the idea under wraps.

As for the term "obvious," the more I think about it, the more I am more comfortable calling it meaningless. It is a place holder for byzantine set of case law (and the application of which) that changes depending upon who is performing the analysis and which way the wind blows at the USPTO.

[pds]

"Dude, you have GOT to be kidding me."

Hey, I just looked up the numbers. Easy to find, just look at the income statements for the companies. Took me about 5 minutes to do on Yahoo's financial website.

"But between the 20 year monopoly for software claims and full-bore communism there is an awful lot of middle ground."
There may be ... but that is not for me to decide or opine about, as I'm not sure what is the right number for software, versus pharma, versus semiconductor, versus hard-core scientific discoveries, versus some soft-core Rube Golberg contraption invented out of somebody's garage.

"I want people who write software to be paid. But as I recall Congress already passed some pretty generous legislation to facilitate that precise result."
You've lost me on that one.

[Lionel Hutz]

Max,

JAOI was absolutely correct if he is referring to the initial purpose of patents, which was to promote efficiency in the King's land and reward the king's friends. As articulated in our Constitution, the idea is to disseminate information.

Further, If Liebel-Flarsheim were applied literally to most EPO claims they would be invalid as well (which is not to say that the CAFC will necessarily stick to the standard they articulated in the US).

According to the Court in LF, if I can come up with a configuration you did not disclose in the body of your application, I can infringe your claims with impunity. It does not matter that my product embodies your claim exactly as claimed.

Worse, the Court could have simply found non-infringement based upon disclaimers by the Patent holder. This is one of those cases where I agree with the decision for the defendant, but believe the logic is incredibly bad.

[Lionel Hutz]

I like to capitalize for no reason in the middle of sentences.

[MaxDrei]

Lionel, sorry, I'm confused. You and I think that the purpose of patents is to disseminate info, JAOI not. Yet you say he is "absolutely" correct. Huh? As to LF, you read it different from me. Maybe we both read into it what we want to read into it? As to pds, again, I feel vindicated. You invent an improvement in a method of trading pork bellies. pds calls that method an advance in technology. I don't. Ask a judge. Who does he agree with? Again, with "obvious". The meaning of the word is very plain. It's not the fault of the word itself, that the caselaw in the USA is byzantine. It ain't at the EPO.

[lee rahn]

My comments are based on Federal Circuit law, not the restrictive policies of the PTO.

I have long felt that patentable subject matter is really a question of claim drafting and usually has no practical effect on the permissible scope of protection. Consider this modification of the page rank claim:

A computer implemented method of scoring a plurality of linked documents, comprising:
[obtaining] downloading to a memory device from an online database a plurality of documents in electronic form, at least some of the documents being linked documents, at least some of the documents being linking documents, and at least some of the documents being both linked documents and linking documents, each of the linked documents being pointed to by a link in one or more of the linking documents;
assigning a score to each of the linked documents in the memory device based on scores of the one or more linking documents in the memory device; and
processing the linked documents in the memory device according to their scores.

I believe this modified claim is directed to statutory subject matter because it recites a memory device and a downloading step. This does not surrender claim scope because almost any computer implemented method that performs the functions recited in the original claim is protected.

A number of years ago Judge Rich wrote an opinion that I believe was precedential. The opinion said that a general purpose computer executing a computer program is a "machine" when it sets up connections between memory and arithmatic units that perform mathematical operations,input terminals, output terminals Each configuration of the computer components is a separate machine. As far as I know, this case has not been overruled.

As a rule of thumb I believe a claim is statutory so long as the claimed subject matter is not so broad that every element of the claim can be carried out by hand, on paper, or in the mind. I have not seen a Federal; Circuit case that is contrary to this rule of thumb.

The reissue statute should solve Google's problem. The type of modification I am proposing would result in a narrowing reissue.

[Robert O'Callahan]

The PageRank patent is not valuable to Google. Their competitors started using it shortly after the work was published (in a journal). And clearly Google's success is not based on patent licensing fees.

These days, Google's superior search quality depends on a large range of innovations, most of which are protected with trade secrecy.

> It will surely be cause for mourning among those who believe that allowing
> patents on cutting edge technologies has served the country well for more
> than two centuries and that a radical departure from the traditional
> approach would be unwise.

For the first thirty years of the software industry, it thrived without patent protection. From our point of view, the explosion of software patents is the radical departure from a working formula.

[Malcolm Mooney]

Lee: "I have long felt that patentable subject matter is really a question of claim drafting and usually has no practical effect on the permissible scope of protection."

Yup. I've long felt the same way, Lee. But certain prosecutors in certain computer-related subfields learn ****really**** slowly because they think their field is "special" and should be excepted from the case law as it is (and has been) applied to other fields. Those computer related subfields are special, of course, but not in the way they think it is.

[Malcolm Mooney]

"I just looked up the numbers. Easy to find, just look at the income statements for the companies. Took me about 5 minutes to do on Yahoo's financial website."

I don't doubt the numbers, pds. I just can't believe you think they support the assertion that it costs as much to develop, test and market a new piece of software as it does to develop, test and market a new therapeutic drug for humans.

[pds]

"I don't doubt the numbers, pds. I just can't believe you think they support the assertion that it costs as much to develop, test and market a new piece of software as it does to develop, test and market a new therapeutic drug for humans."

Did I ever say that it did? Nooooooo. Did I ever imply it? Nooooo. Have I ever thought it? Nooooooo.

I was just giving you some facts to work with. Software companies spend $$$$$ on R&D. As such, don't think a comparison cannot be made, particularly when you look at the overal numbers being spent on R&D.

Also, with this much money on the line, do you think that the software companies are going to go away meekly if some serious push to ban software patents ever gets instituted? FYI ... I treat the USPTO's action as little more that just a PITA that has very little real effect on the number of software patents being issued. As discussed by Lee Rahn above, all the USPTO's sticking points are easily resolved with essentially non-limiting limitations.

As such, 101 rejections (and responses thereto) are just a big game right now. The USPTO likes to change the rules every 12-18 months an applicants either take the easy way out (and amend) or take the hard way (and argue). Either way, 101 has not been, nor will be at any time in the foreseeable future, a serious roadblock to software patents.

It is what it is .....

[Eurodisnae]

Of possible interest, a recent decision from the UK Intellectual Property Office:

Summary
The claims related to a method and apparatus for deciding the tilt angle of antennas in radio communication system. The examiner considered that the claims needed to be restricted to actual use in controlling antennas to avoid exclusion as a computer program, but the hearing officer (considering the mathematical method exclusion also) held that on the basis of VICOM (T 208/84), Astron Clinica [2008] RPC 14, Halliburton v Smith [2006] RPC 2 and Institut Francais &c (BL O/201/03) a step of outputting an optimal tilt angle for use in controlling the tilt angle sufficed to tether the claims to a patentable invention. The hearing officer also accepted that a proposed claim to a computer program product for implementing the method would not be open to objection under section 1(2).

Patent decision
BL number
O/202/08
Concerning rights in
GB 0506607.1
Hearing Officer
Mr R C Kennell
Decision date
15 July 2008
Person(s) or Company(s) involved
NEC Corporation
Provisions discussed
PA 1977 Section 1(2)
Keywords
Excluded fields (allowed)

[Michael R. Thomas]

This is an example of the patent system moving in a retardiff mode their throwing back to an era before the invention of the computer to deny and reject viable new business concepts The basis of granting patents should be marketability the value or worth to the consumer and patentee obviousness is obviously not the determination method eithere because it is easy to say it was obvious after the creation fact ex cept no one could think of it or is would already be on the store shelf.

[MaxDrei]

The reasoning for the allowance of the claims is certainly useful to this reader, at least for "tethering" and "computer program product", given the European prohibition on patenting computer programs as such, and math methods. Somebody did say earlier in this blog that as fast as the US rows away from patenting program products, the Europeans are rowing in the other direction. Eurodisnae, thanks.

[bluenorway.org]

Your analysis is inconsistent:

"Tied to a machine" is defined as the physical and control system qualities THAT DICTATE THE MACHINE'S PHYSICAL OPERATION.

This is applicable to software ONLY in the context as similar to hardware or direct control of hardware such as machine control circuits (which may have machine code implemented) as in CNC control CHIPS, not the computer which might signal the commands or process indirectly.

The "software" you falsely claim does not effect any real world physical system in any context other than a very few (typically physically transmorphic) physical machines which still have a finite physical structure which may apply for patent.

In no way does microsoft control the hardcoded operation or mechanical structure of an intel processor.

FPGAs for example are finite physical systems where their operative qualities are pre determined and the hardware device is never altered or controlled by the code represented within its structure.

The situation is quite simple, except for self optimizing atomic level physical systems (aka similar to organic molecular structures) and hardware that MIGHT have a critical physical system with code (pwm controller, direct drive control, NOT interpreted commands) you assume your claims are invalid.

Now its time to address physical claims (including intellectual processes applied (agriculture)) as CRIMES AGAINST HUMANITY AND NATURE.

[Nathan Derksen]

From Mr. Duffy:

"The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit."

Nonsense. Distaste for the current state of software patents has nothing to do with distaste for property rights. Patents have their place, but I'm convinced that they are not the best tool for the job when it comes to software. Let the ideas be freely propagated patent-free, and let copyrights protect the expressions of those ideas as they manifest themselves in the code that is written. Would it not be a better state of affairs with regards to advancing technology if Google's process for weighting pages, itself just a mathematical construct, were to be usable by anybody? That's not to say anyone can use Google's code: that's protected by Copyright. Others would have to develop their own code to implement the algorithm, and in so doing would come up with approaches perhaps not thought of by Google. Google would retain the lead until such time as someone else does it better, at which point Google would have to do something innovative to again stay on top. This would do much more to foster the advancement of software than would patent exclusivity.

"It will surely be cause for mourning among those who believe that allowing patents on cutting edge technologies has served the country well for more than two centuries and that a radical departure from the traditional approach would be unwise."

The vast majority of those two centuries were without computers. The
beginnings of the computer era came about through the sharing of information and the establishing of common standards. Individuals and
institutions alike would come up with ways of writing useful software, would publish what they did so others could build on it, which would in turn be available to the creator to further enhance. It is through this kind of process that core parts of the world's current network infrastructure were built: TCP/IP, DNS, POP, the Web browser, and many more. This worked very well without granting any sort of exclusivity other than that afforded through copyrights. In fact, I would argue that an exclusive ownership over any of these technologies would have severely limited their adoption and ability to mature.

While I agree that the one computer-two computer test does not make sense, I applaud the patent office for the direction it is taking.

Disclaimer: The opinions stated here do not necessarily reflect those of my employer.

[Nathan Derksen]

From Mr. Duffy:

"The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit."

Nonsense. Distaste for the current state of software patents has nothing to do with distaste for property rights. Patents have their place, but I'm convinced that they are not the best tool for the job when it comes to software. Let the ideas be freely propagated patent-free, and let copyrights protect the expressions of those ideas as they manifest themselves in the code that is written. Would it not be a better state of affairs with regards to advancing technology if Google's process for weighting pages, itself just a mathematical construct, were to be usable by anybody? That's not to say anyone can use Google's code: that's protected by Copyright. Others would have to develop their own code to implement the algorithm, and in so doing would come up with approaches perhaps not thought of by Google. Google would retain the lead until such time as someone else does it better, at which point Google would have to do something innovative to again stay on top. This would do much more to foster the advancement of software than would patent exclusivity.

"It will surely be cause for mourning among those who believe that allowing patents on cutting edge technologies has served the country well for more than two centuries and that a radical departure from the traditional approach would be unwise."

The vast majority of those two centuries were without computers. The
beginnings of the computer era came about through the sharing of information and the establishing of common standards. Individuals and
institutions alike would come up with ways of writing useful software, would publish what they did so others could build on it, which would in turn be available to the creator to further enhance. It is through this kind of process that core parts of the world's current network infrastructure were built: TCP/IP, DNS, POP, the Web browser, and many more. This worked very well without granting any sort of exclusivity other than that afforded through copyrights. In fact, I would argue that an exclusive ownership over any of these technologies would have severely limited their adoption and ability to mature.

While I agree that the one computer-two computer test does not make sense, I applaud the patent office for the direction it is taking.

Disclaimer: The opinions stated here do not necessarily reflect those of my employer.

[Malcolm Mooney]

pds "Did I ever say that it did? Nooooooo. Did I ever imply it? Nooooo. Have I ever thought it? Nooooooo."

A quick recap:

Upthread someone compared software development and pharmaceutical development and wrote ""Second, the economics of software appear to me to make the initial investment rather low, so that a profit is returned more quickly."

pds took issue with that comment and replied: "I'm guessing that you haven't tried to make money selling software? Come up with a piece of software and try to sell it. . . .My guess is that for the time you spent developing/coding/testing/marketing the software, you would have a greater return on your time spent by working at the local Burger King."

Then pds posted a bunch of numbers where R&D costs for software companies versus big pharma were compiled in a way to make those costs appear similar.

Sorry, pds: your guilty as charged. Drop the argument because it's a loser.

[jbengt]

Google's actual page rank algorithm is a jealously guarded secret, and is therefore most explicilty not patentable. The "page rank patent" is really a misnomer. It's another one of those vague patents that should be rejected on the grounds that it does not explain enough to allow someone skilled in the arts to reproduce anything.

Langemyr's partial diff eq patent is pure math, I didn't think pure math was patentable. Also, again it is over-generalized so that someone skilled in the art can't really reproduce the results without reconstructing a whole lot of the actual processes on their own.

The unavoidable problem with all these rules is that they should really be based on the notion of promoting the progress of science and useful arts, which is not a straightforward problem to solve.

[question]

jbengt says "Google's actual page rank algorithm is a jealously guarded secret, and is therefore most explicilty not patentable."

Is there a statutory provision which says that "jealously guarded secrets" (which have not been commercialized more than a year) are per se not patentable?

Please explain

[coast]

"again it is over-generalized so that someone skilled in the art can't really reproduce the results without reconstructing a whole lot of the actual processes on their own."

One of the quid pro quos of obtaining patent protection is that the applicant provide an "enabling" disclosure. If an enabling disclosure is not provided then patent protection should not have been granted.

[pds]

MM ... what is your obsession with me?

My first comments, which you reproduced, were comparing the returning on investment, in time, for "developing/coding/testing/marketing" software (which will later be distributed out with no restrictions on copying) with the return on investment, in time, for working at the local BK. NOTHING, and I repeat, NOTHING, about that comment was directed towards R&D with pharma. Stop sucking face with Sandy Strawman and try to respond to the comments I actually make.

"Then pds posted a bunch of numbers where R&D costs for software companies versus big pharma were compiled in a way to make those costs appear similar."
Hahahahahahahahahahahahahahahahahaha.

Sure ... either I (or the companies themselves when they reported their numbers in a 10Q/10K to the SEC) magically added a couple of zeros to these R&D numbers for all these software companies so as to artificially inflate their actually R&D numbers.

MSFT spent $7B in R&D on about $51B in revenue last fiscal year.
IBM spent $6B in R&D on about $99B in revenue last fiscal year.
Oracle spent about $3B in R&D on about $22B in revenue last fiscal year.

Pfizer spent $8B in R&D on about $48B in revenue last fiscal year.
Merck spent $5B in R&D on about $24B in revenue last fiscal year.
Bristol-Meyers spent $3B in R&D on about $19B in revenue last fiscal year.

What about these numbers make you think that the numbers aren't similar? For anybody who has looked at the balance sheets and income statements of any Fortune 100 company, these R&D numbers are huge no matter how you want to look at it.

I looked at a few other "big name" US technology companies,
United Technologies spent $1.7B in R&D on about $55B in revenue.
Boeing spent about $4B in R&D on about $66B in revenue.
Raytheon spent about $0.5B in R&D on about $21B in revenue.

For those interested for some more R&D numbers:
http://www.baselinemag.com/c/a/IT-Management/ITs-Top-84-RD-Spenders/
http://www.fiercebiotech.com/special-reports/top-15-r-d-budgets

Yet again, MM, thanks for showing just how uninformed you really are.

[Spispopd]

Good, all patents should be abolished, software or otherwise.

GO PIRATE PARTY!

[jpb]

good riddance to bad rubbish.

software patents are the #1 barrier to innovation in the technology industry, and it's high time we jettison that burdensome albatross at any cost.

[Toby]

What if Google had never applied for a patent, yet still produced search results that the majority of the searching public preferred? Would their primary risk been internal source code theft, resulting in a competing search engine of similar popularity? If patents did not exist, and Google couldn't prove their source code had been stolen, would they still be in business today? I admit that I believe that innovation and creativity are stifled by today's Intellectual Property and copyright landscape. I also recognize, however, that in the case of Google, they built a better mousetrap, albeit a virtual mousetrap.

[Malcolm Mooney]

"What about these numbers make you think that the numbers aren't similar?"

The numbers are similar, pds, but you forgot to divide the numbers by the total number of patent applications filed.

[Robert O'Callahan]

Comparing pharmaceuticals to software doesn't work because software can be protected by copyright but drugs can't.

Comparing R&D budgets also doesn't work. The cost of coming up with "patentable" innovations in the software industry is very low. Most software development expenditure is on grunt work such as QA and debugging which happens *after* the patentable innovation.

For Web companies like Google, where software runs only on their own servers, that software is also effectively protected by trade secrecy. Google and the other Web companies actually need patent protection much *less* than most other companies ... making Google a particularly poor example to use for this blog post.

[Tyrone Slothrop]

I respectfully beg to suggest to Mooney and pds that they, in the vernacuar, GET A ROOM!

[pds]

"The numbers are similar, pds, but you forgot to divide the numbers by the total number of patent applications filed."

We were NOT talking about numbers of patents ... your original comment was "So do I. It's also unbelievable and appalling that anyone would imply that the the costs of developing a new piece of software are remotely near the cost of developing a new pharmaceutical."

Would Window's Vista be considered a "new piece of software"? How about Office 2007? I would wager that Microsoft spent a LOT of money on the R&D for those (BTW: I'm no fan of Vista).

You can easily argue that the "technology" embodied by one pharma patent involves considerably more R&D dollars than the "technology" embodied by one software patent, and I wouldn't dispute that one bit. However, one piece of sophisticated software may involve several hundred patentable concepts. Like many people, you think software and you think a few lines of code, and say to yourself, "how quaint." However, I've read where Microsoft Vista has 50 millions lines of code. Not an insignificant number.

Regardless, the creation of software requires an extremely large amount of R&D. Dismiss the numbers all you want, but you cannot hide from them.

[Nathanael Nerode]

Patents are great. Nothing wrong with patents.

The patents you describe, however, are pure mathematics. They should never have been patentable in the first place. Patenting them threatens free speech and research among other things.

Not being a mathematician or an engineer, you probably don't appreciate this, but the PTO is 100% correct. I expect that Google, including Brin and Page, will frankly be *happy* to be rid of software patents, *including* their own; ask them.

[Nathanael Nerode]

"If Pagerank was un-patentable, it could only be protected as a trade secret and run behind closed doors"

It effectively is. The patent process currently *doesn't require submission of a working model* and *doesn't require a programmer-readable description of the patented algorithm*. Go ahead, try to implement PageRank on your own based solely on the patent! (You're allowed to do so for research purposes such as developing an improved algorithm, according to traditional patent law.) You'll find that you can't.

What precisely did we gain by this patent "bargain"?

[big hairy rat]

"However, one piece of sophisticated software may involve several hundred patentable concepts."

Which of course is precisely why people are skeptical about software patents on a practical level. If a developer needed to review thousands of patents and negotiate hundreds of licensing agreements before writing a line of software then there could be no progress. This problem applies particularly to smaller developers since the big players (IBM, Microsoft etc) can cross license their patent pools and avoid a lot of headaches.

[Willton]

"Is there a statutory provision which says that "jealously guarded secrets" (which have not been commercialized more than a year) are per se not patentable?"

Yes. See 35 U.S.C. 102(c).

[query]

102(c) is abandonment, isn't it, Willton?

[Willton]

Indeed, and there's case law that says if a potential patentee keeps his invention secret, he abandons his right to get a patent. IIRC, case law says that the time period one must keep an invention secret in order to abandon patent rights under 102(c) is 1 year, which tracks 102(b). 102(c) is rarely used in litigation (and I imagine never in prosecution), but it's a way to combat those who try to patent former trade secrets.

[Ji m Sawyer]

> 120. A method for improving refractive ophthalmic treatment comprising:
> * obtaining a first, pre-operative diagnostic measurement
of an individual cornea of an eye;
> * determining a first operative corneal ablation specification
based on the first, preoperative diagnostic measurement;
> * obtaining non-tissue removing perturbation data
from the individual cornea before ablation to obtain
a biodynamic response data from that individual cornea;
> * obtaining a second, post-perturbation, preoperative
diagnostic measurement of the individual cornea;
> * correlating said non-tissue removing perturbation data
with the biodynamic response data gathered from a
statistically significant number of corneas; and
> * establishing an individual customized laser ablation specification
for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

101 subject matter or not?"

Depends -

if that is the entire claim,
then no - not patentable - as no physical transformation occurs.

if the claim continues, with something like,

"and the simulated result of a laser ablation
process, driven by those numbers, is made to appear
on the video monitor of a computer"

then no, not patentable - as no physical transforation occurs.

if instead the claim continues, with something like,

"and an industry standard laser ablation apparatus,
attached to an otherwise general purpose computer,
is then driven by those numbers and thereby corrects
the function of a patient cornea, by transforming
said cornea"

then yes - patentable - as physical transformation occurs,
and the process *requires* the use of a device which,
while said device is itself *standard*, such devices
are *not* expected to be found on garden variety general
purpose computers, at least in the present era.

Seems the patent office is *FINALLY* beginning to
differentiate the specific 'implementation of idea',
from 'the idea itself', even when computers and software
are involved, and this seems like very good news, to me.

Sadly, in Ex parte Wasynczuk, they immediately
punt away most of the gain, getting hopelessly lost in
the "party of the first part" first partaking to party
with the "party of the second part" hoo-hah shuffle
subterfuge gambit, which appears prima facie constructed
for that very purpose - to confuse the reader - hoping
those with authority will err and issue/uphold a patent,
which is what seems to have happened. One can hope that
they (PTO, et al) will catch on sooner, rather than later,
so, being an optimist at heart, I guess I will.

How about you?

-Jim

[Guest]

This makesmethink of how in search for 'profit' everything is given a 'value' for marketing and soon sunshine tans or simple math formulas will be patented and beach goers and math student forced to pay usage fees for those discovered 'processes' of nature that have been in existence for years but never codeified or well described.

[Guest]

This makesmethink of how in search for 'profit' everything is given a 'value' for marketing and soon sunshine tans or simple math formulas will be patented and beach goers and math student forced to pay usage fees for those discovered 'processes' of nature that have been in existence for years but never codeified or well described.

[Mr. Sunshine Tan]

Sunshine tans and simple math formulas are patentable? You have gone off the deep end, Guest.

[Jimmy Crack Corn]

LOL, It doesnt matter. When Google finally Takes over the World, it will own them (and everything else) again anyways.

JT
www.FireMe.to/udi

[Babak]

Google's patents may be in danger, but the suggestion that Google owes it success to the patents it holds is not supported by the evidence.

As a programmer, I have been professionally involved in the search space for over 10 years now, and I am of the [informed] opinion that Google owes its success to better "execution" (implementation in software-speak), not to some IP lock it holds that thwarts would-be competitors from entering the space. Much of Google's "execution" advantage involves trade secrets--the very opposite of patents.

The idea to rank pages based on link information actually predates Google's PageRank "idea". In fact, Jon Kleinberg at Cornell was the first to give the idea a mathematical footing http://www.cs.cornell.edu/home/kleinber/ . His 1997 paper "Authoritative sources in a hyperlinked environment" sparked a lot of interest in the search field. The HITS algorithm he describes in that paper is very similar to Google's PageRank algorithm. I wont digress on technical details, only to note that the intellectual leap from HITS to PageRank (as published under Google's patent) is not that great, and there are likely many paths from HITS to a good ranking algorithm.

I also have some anecdotal evidence that Google's search patents are not the competitive issue. In a recent visit to a Microsoft search lab, I had the opportunity to speak with the search team's technical top dog. The implementation challenge to search, he told me, was not algorithmic. In other words, it wasn't a patent issue. They have the recipe to make the burgers, they can make a few tasty ones in the lab, but the recipe doesn't tell you how to roll out a MacDonalds corporation. A good part of Google's technical lead is in things like scalability, redundancy, stability, storage, etc.

So my point is stop crying wolf. Google would survive without its patents just fine. My world (software), my livelihood, my business--none of it, needs the "protection" offered by this legalistic racket called Patents. Quite the contrary, in software, patents impede innovation, and increase the cost of doing business.

Get off my lawn!

[MaxDrei]

To Jim Sawyer: and does the US "transformation" test give a fair reward to the inventor, when there is no infringement, except by those who operate the laser? Do you not prefer the European approach, which recognises patentability also in the software product that instructs the laser, so that those who make and sell the software are also infringers? Key of course in Europe, where the touchstone of patentability is "technical", is that the software product as claimed must be one that delivers an output that instructs a laser to do its technical job. Business method software products lack any such output.

[Huck Finn]

Jimmy Crack Corn is correct. Perhaps there are industries where patents are wonderful motivators to innovate but software patents gum up the works of software innovation.

Just today I heard the story of a small company that spent months building a great little software system that would help them compete with some large companies. Before launch, they called in the lawyers. This is the point at which the story gets good for the lawyers (I guess the owner of this blog is a lawyer) and bad for the technologists.

It turns out that they had infringed 50 or 60 patents: not those of the big companies that they wished to compete with, but rather patents owned by other big companies in a mostly unrelated part of the industry. Those companies in industry B could not be bothered to negotiate with a small company like my friend's, so my friend was disallowed from competing in industry A.

I've been on the patenting side as well. I've been at small companies applying for patents ("defensively" they always say) and the patent-creation process is a huge distraction from the business of providing value to customers. Usually the bit that can be patented is some low-level technology that is only indirectly interesting to customers. Even if the patented technology is directly of interest to them, the patent itself is not. In fact, the patent creates a monopoly that can only hurt customers.

There are some really interesting software ideas that nobody is implementing, not the patent holders and not third parties. They are in patent-hell limbo.

After 15 years in the software industry, I see no benefit to software patents at all. Benefit to lawyers? Sure. Benefit to customers or software companies? Not at all.

[MaxDrei]

Huck Finn: you and the little boy who pointed out that the Emperor has no Clothes would make a great team. Stand by to be told on this blog that you know nothing, and should shut up. Reply by pointing out that patent attorneys are parasitic on the body of industry and that the dog should be shaking the tail, not the other way around.

That said, a huge proportion of perfectly proper patentable matter, these days, is inseparably computer-implemented. The key problem is "Where to Draw the Line". The EPO President's take, on what's been patentable up to now in the USA, is the "Anything under the sun made by man" definition. You and a great many others share her grave doubts, whether that's optimal, for that worthy aim, of promoting the progress of the "useful arts".

[Phil Karn]

"The Patent and Trademark Office has now made clear that its newly developed position on patentable subject matter will invalidate many and perhaps most software patents."

If only that were true. If only that were true.

Everyone but the patent lawyers would be a lot better off, that's for sure.

[Alsee]

All the way back in 1876 Cochrane v. Deener the US Supreme Court defined a process patent as:
"an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing."
US Supreme Court Gottschalk v. Benson 1972:
"Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines."
In Diamond v. Diehr 1981 the US Supreme Court quoted and reaffirmed both of the above statements, as well as repeating:
"an algorithm, or mathematical formula ... like a law of nature ... cannot be the subject of a patent" (all software is nothing more than an algorithm)
In Diamond v. Diehr 1981 the US Supreme Court additionally warned:
"insignificant post-solution activity will not transform an unpatentable principle into a patentable process. To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection."

Of course tons of software patents are going to get invalidated. By repeated consistent Supreme Court statements it was invalid for the patent office to grant software patents in the first place. They are and always were non-patentable non-inventions. You can no more invent and patent "novel and useful" software than you can invent and patent a "novel and useful" hundred-digit number.

We programmers are protected by copyright. There is some 80%-90% agreement amongst programmers that we neither want nor need double coverage by patents, that software patents are illogical and a harm.

You invent and patent novel physical objects, and you invent and patent and novel physical processes for transform physical materials into something else. You cannot "invent" and patent math. All software is nothing but a fancy stylized math calculation. It's silly to suggest math and calculations should be patentable. Any software can (slowly) be "run" mentally - programmers routinely do so while writing and debugging software. It would be ludicrous to suggest someone could commit THOUGHT CRIME for mentally carrying out a patented software calculation, and there is absolutely nothing non-obvious about using an ordinary pre-existing computer for the obvious and intended purpose of merely more quickly carrying out that exact same non-patentable non-invention mental process.

[Jon Grieg]

Let's not forget how Norbert Wiener, the founder of Cybernetics, defined software. I quote from memory: "A program is a tool that transforms a machine into another machine".

[James]

If the principle of the patent is to promote innovation and convince inventors to disclose their secrets in exchange for a temporary monopoly, we must keep in mind the pace at which information technology evolves. 20 years is "temporary" for a lot of things, but not for software that tends to be obsolete within 6-24 months. We are effectively granting permanent monopolies on the inventions, which in fact dampens innovation.

Software and other intangible ("business process") patents should expire in two years instead of 20. This is plenty of time for an inventor to monopolize and cash in on the technology, and in many cases the technology will be obsolete by the end of the two years. However, in those cases where the utility persists beyond two years, we will have healthy competition within a reasonable timeframe. It is completely unreasonable for Google to own the rights to "Serving advertisements based on content" for 20 years.

[MaxDrei]

.....all well and good guys, but have you thought yet about the vital national interest of "USA, Inc."? Isn't there a widespread perception that the "US nose in front, of the ROW" position must be preserved and that the best way to do it is with a "strong" US patents system, that monopolises for 20 years "every new and non-obvious business and financial computer operation under the sun made by man".

[maus]

"Once you limit patentability to the "how" then you've essentially opened the door to anybody to come up with a different way of implementing the same concept (i.e., the PageRank idea). Why get the patent when it is useless. Second thought, why disclose the idea when any patent obtainable therefrom wouldn't be worth the paper it was printed on. Ooops ... there blows that whole idea about rewarding inventors for their disclosure."

First, the whole point of patents is to protect a different "how". Patents are designed to protect a process or machine. Think how many mousetraps, pencil sharpeners, FOLDING GROCERY BAG DISPENSERS, etc are patented. Or just do a patent search. The idea of patents is not necessarily to protect a unique end result but to protect an innovative way of getting there.

That said, I agree with the posters who have said that the current wave of software "patents" is ridiculous because the patent language is overbroad and would not allow for reproduction of the patented device or process after the expiration of the statutory period. Patent protection is meant to grant a limited monopoly in echange for the disclosure of the information needed to duplicate the patented device or process. That's why you have to submit all kinds of physical diagrams with mechanical patents. The patents quoted above don't describe in sufficient detail the process they are meant to protect. If the software companies want to protect their processes without disclosing them, the appropriate designation would be "trade secret" not "patentable device" - like the recipe for KFC Original Crispy Chicken, or the Coke syrup formula. There have certainly been successful litigations for the protection of Coke's formula without disclosure. However, in order to take advantage of the patent system, that level of disclosure is necessary.

The real problem with software patents (which, actually, I favor) is that for years the PTO has permitted patents to go through that do not satisfy the statutory requirements for patents. There are plenty of other protections available under the Patent and Copyright Act for companies that do not want to disclose any information; patents may not be the appropriate forum for these companies. However, using patents currently registered as some sort of benchmark for writing new patents? May not be your best bet in the coming years. That's not a bad thing for either the industry (which needs to figure out what protection is appropriate and use that one, which may not be patents in many cases) or the public (which long ago made a bargain to permit a limited monoply in exchange for information and which is now getting a complete onoply in exchange for just about nothing).

[Eurodisnae]

Alsee

Without necessarily taking a position either pro- or anti-software patents, the following points can be made in reply to your arguments:

Re a process is "an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing."

How does this preclude data from being “the subject matter” of a patentable process? Data is clearly capable of being “transformed and reduced to a different state”.

Re “"an algorithm, or mathematical formula ... like a law of nature ... cannot be the subject of a patent"

But a practical (useful) novel and non-obvious application of an algorithm, mathematical formula or law of nature can be the subject of a patent. This describes most kinds of engineering.

Re “You can no more invent and patent "novel and useful" software than you can invent and patent a "novel and useful" hundred-digit number.”

This just doesn’t make sense. OK, program code is, ultimately, just a number, but that’s not the point. The point is that program code, executed on a computer, makes something useful happen. Software claims define the software in terms of its functionality, not in terms of its code.

[pds]

"Which of course is precisely why people are skeptical about software patents on a practical level. If a developer needed to review thousands of patents and negotiate hundreds of licensing agreements before writing a line of software then there could be no progress. This problem applies particularly to smaller developers since the big players (IBM, Microsoft etc) can cross license their patent pools and avoid a lot of headaches."

The same logic could apply to semiconductors (I have no doubt that Intel's latest chip has probably well over a thousand patentable concepts embodied in it) ... so let's get rid of semiconductor patents as well. I mean come on, given the snail's pace of progress in computers and software the last 25 years, I can easily see why we should ban patents on both.

Heck, why don't we ban patents on pharma as well. The only reason drugs cost as much as they do because is because they are patented. Heck, people are DYING because they cannot afford the drugs.

BTW: I see you are cozying up to Sally Strawman (MM is going to be jealous!!) with your suggest that one needs to "review thousands of patents and negotiate hundreds of licensing agreements." The scope of space occupied by software/computer-implemented inventions is so broad that there is plenty of fertile ground that nobody has touched or seen.

[pds]

"20 years is "temporary" for a lot of things, but not for software that tends to be obsolete within 6-24 months. We are effectively granting permanent monopolies on the inventions, which in fact dampens innovation."

Not good with logic are you? **IF** the software was obsolete within 6-24 months, as you suggest, then what does it matter if the term was for 20 years or 200 years? If the technology is obsolete, who really cares if it is patented or not? Would you really care if some buggy whip, which was patented back in the 1800s, still has some patent term left to it?

Your faulty logic aside, as I noted earlier in this thread, just because a piece of software becomes obsolete does not mean that the underlying technology embodied in the software becomes obsolete.

BTW: If you think 2 years is enough time, then you are OBVIOUSLY not experienced in patents whatsoever. You would be lucky to have the USPTO take a first look at a patent application in 2 years. Based upon my experience, you are looking between 4-8 years to get an issued patent from an application in the software space. But of course, if the technology is already obsolete by that time, as you suggest, then who cares???

[pds]

"20 years is "temporary" for a lot of things, but not for software that tends to be obsolete within 6-24 months. We are effectively granting permanent monopolies on the inventions, which in fact dampens innovation."

Not good with logic are you? **IF** the software was obsolete within 6-24 months, as you suggest, then what does it matter if the term was for 20 years or 200 years? If the technology is obsolete, who really cares if it is patented or not? Would you really care if some buggy whip, which was patented back in the 1800s, still has some patent term left to it?

Your faulty logic aside, as I noted earlier in this thread, just because a piece of software becomes obsolete does not mean that the underlying technology embodied in the software becomes obsolete.

BTW: If you think 2 years is enough time, then you are OBVIOUSLY not experienced in patents whatsoever. You would be lucky to have the USPTO take a first look at a patent application in 2 years. Based upon my experience, you are looking between 4-8 years to get an issued patent from an application in the software space. But of course, if the technology is already obsolete by that time, as you suggest, then who cares???

[pds]

"The idea of patents is not necessarily to protect a unique end result but to protect an innovative way of getting there."

... which is exactly what Google did. They protected a innovative way of getting their result. Your argument seems to be that they didn't protect the more specific way of acheiving result. However, patent law (for any technology) has never required the claim to be directed to the best mode.

If I have a claim to a piece of software, do I need to also claim the operating system it runs on or the type of server? Do I also need to describe the motherboard, memory, and processor as well in the claim?

Similar, if I have a claim to a method of manufacturing a piston (for an engine) using HIP (hot isostatic-press), do I need to specify the heat treat furnace used? Do I need to include in the claim all of the settings?

If nobody has done the broad concept before, then there is no requirement that a claim also include all the additional limitations. A patent specification is required to describe the "best mode" (i.e., the best way the inventor believes the invention should be practiced). However, the inventor is not required to update this "best mode" after the application has been filed or claim the best mode.

BTW: This article must have referenced elsewhere because we've got a lot of newcomers.

[Huck Finn]

PDS: your slippery slope argument is unpersuasive. I'm a software developer. Why should I care whether patents are effective in semiconductors or pharmaceuticals? Let the experts in those areas argue about it. Each industry has its own economics and insofar as the patent system was supposed to "promote the progress of science and useful arts", it is the government's job to make sure the rules do that for all major industries. Most programmers will tell you that software parents are an impediment, not a help.

As MaxDrei said: the tail is wagging the dog. Lawyers are impeding technological progress and frankly the only way anything gets done is because software developers simply do not bother to check whether every idea they come up with might have been patented somewhere before. If we did that, we would have no time for programming. The industry only functions to the extent that people pretend that the patent system does not exist until it bites them in the ass.

[Joshua Strodtbeck]

The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit.

You forgot about another class of people, those who agree with Turing's thesis that an algorithm and its implementation are the same thing, and that most software patents therefore amount to patents on abstract ideas. At best, they amount to patents on using computers to do mathematical computations, but that would fail the obviousness test, since computers are specifically designed to do math. It's like patenting the use of a paintbrush to paint a picture of a particular object, or patenting the use of a glass to hold a particular kind of liquid. We have been at the point for a long time where you can patent the use of a computer to compute this particular set of mathematical expressions, and it's high time the USPTO does something about it. This is good news for this mathematician!

[John F. Duffy]

These are comments from the author, John Duffy.

First, thanks to all for the useful discussion, which I am following. I have few specific comments. I may have to divide these into separate postings because of this blog's word limits on comments. Nonetheless here they are:

1. Langemyr and Wasynczuk are informative opinions by the Board. A number of people have commented that the two Board of Appeals decisions at issue here are not categorized as “precedential,” but are instead only “informative.” That is true, and I appreciate the caveat. It would be a mistake, however, to view Board “informative” opinions as the equivalent of a non-precedential opinion by a court. The Board classifies its opinions into three categories: precedential, informative and routine. See Michael R. Fleming, Chief Administrative Patent Judge, Publication of the Opinions of the Board of Patent Appeals and Interferences (Dec. 27, 2006) (available at http://www.uspto.gov/go/og/2007/week04/patopin.htm). The BPAI’s Bilski decision was itself categorized as an “informative” opinion, so I think it would be a mistake to dismiss informative opinions as inconsequential. Moreover, informative opinions are expressly supposed to “illustrate norms of Board decision-making for the public, the patent examining corps, and future Board panels.” Id. Until the PTO eschews the positions taken in Board’s Langemyr and Wasynczuk decisions, I think the public should assume that these informative decisions do accurately “illustrate norms of Board decision-making.”

[John F. Duffy]

2. I presented amicus argument in In re Bilski. Some commenters noted that I did not discuss my presentation of amicus arguments in the pending Federal Circuit en banc case In re Bilski. I wrote this comment on Langemyr and Wasynczuk for the readers of Patently-0, most of whom, I believe, know well that I have previously taken positions on patentable subject matter in Bilski and in other contexts. See, e.g., http://www.patentlyo.com/patent/2008/04/bilski-hearing.html (discussing my appearance for amicus RDC in Bilski); http://www.patentlyo.com/patent/DuffyOnNuijten.pdf (setting forth my paper on the PTO’s position in the Nuijten case); http://www.patentlyo.com/patent/DuffyOralArguments.pdf (setting forth my comments on oral arguments in Nuijten that correctly predicted the final outcome and final vote in the case); http://www.patentlyo.com/patent/supreme_court/index.html (reporting my filing of an academic amicus brief in support of Nuijten’s certiorari petition). My current paper also cites an article in BNA that likewise reported my participation in the Bilski case and my representation of RDC as an amicus. Given how widely known these facts are, discussion of them in this short paper did not seem necessary. Indeed, even the very first comments on Patently-O demonstrated that readers are quite well aware of these facts.

[John F. Duffy]

3. Are Google’s patents valuable? In my paper, I cited certain statements Google made in the company’s SEC filing prior to its initial public offering. These statements, made in formal governmental filings and subject to significant sanctions for misleading statements, seemed to suggest that patents are significant to Google; that the company was in fact using the technology disclosed in the PageRank patent; and that it was somewhat significant that the company obtained an exclusive license to that patent from Stanford. In the absence of other evidence, I take these statements to mean that the PageRank and perhaps other Google patents are valuable properties. I remain, however, open to contrary evidence. If the company has made any statements, especially under penalty of perjury or other sanctions, concerning the value of their patent portfolio (or lack thereof), I would appreciate having those cites.

[John F. Duffy]

4. Are PageRank or other software patents likely to be invalidated after all is said and done? As noted in my paper and as emphasized in some of the posted comments, the PTO’s positions on patentable subject matter are still being tested in the courts, so that remains a significant uncertainty. Also noted in my paper is that the PTO’s concept of a “particular machine” is likely to generate a new vein of litigation as the agency and the courts struggle to define the concept. That too is a significant source of uncertainty. The Board itself drew a distinction in Wasynczuk that Ben Klemens, for example, called “tenuous.” Ben and I agree on this point, even though we otherwise have quite different views on patentable subject matter. Ben expects that the Board’s doctrine will be “superseded by better, fast.” I too hope for that, but I’m not so confident that the hope will be realized quickly. When adjudicators make tenuous distinctions, it tends to make the law more uncertain, as legal actors have difficulty not only in understanding the distinction (so as to apply it in other cases) but also in predicting whether the legal system will generate additional tenuous distinctions as future cases arise. The point of my short paper was to show the extent of the uncertainty and to reveal the powerful doctrinal tool that the “particular machine” doctrine, if it survives judicial review, could give to those seeking to invalidate software patents.

[big hairy rat]

PDS - it is ironic that you accuse me of strawman arguments. You say:

"The same logic could apply to semiconductors (I have no doubt that Intel's latest chip has probably well over a thousand patentable concepts embodied in it)"

If those concepts amount to minor or inevitable advances in digital design then they should not be patentable either. The problem in software is general language seeking broad patents on algorithms which were obvious or inevitable in the near term. The fact that an algorithm may be implemented in silicon on an Intel chip does not make it more worthy of a patent. Pro patent supporters say that the hardware software divide is frequently artificial and I agree but my solution is to invalid a lot of digital design intended for hardware implementation.

You attack me for suggesting "that one needs to "review thousands of patents and negotiate hundreds of licensing agreements."" and say that the scope of space occupied by software/computer-implemented inventions is so broad that there is plenty of fertile ground that nobody has touched or seen."

It may indeed be that I am embarking on terra incognita when I start a new project - but I need to review thousands of patents to make sure and since software tends to be built using fairly standard pieces and concepts (something like 40% of all computer cycles dedicated to scientific computing is spent executing DAXPY as the very innermost loop) the chances of my writing a nontrivial piece of software that does not incidentally reinvent the subject matter of an existing patent may be pretty low. I had a look at the Netflix prize last year and as I recall there are hundreds of patents on collaborative filtering / recommender systems. Anyone hoping to win that prize has to be concerned that they are going to re-invent something which has already been patented.

[Nathanael Nerode]

Joshua Strodtbeck makes the crucial point, and explains clearly where the group of people who are *generally* in favor of patents, but do not want bogus and historically disallowed patents on abstract algorithms, are coming from. Perhaps if Duffy actually listened to and responded to this group of people rather than using the strawman caricature of them as "those who are philosophically opposed to property rights," his article would be more persuasive.

A related point is that, unlike with physical objects, the specifications/blueprints for a "patented" computer program are precisely the same as the program itself; under the patent bargain, we must be free to publish the specifications, so what possible legal justification is there for restricting the sale of the programs? If these patents issue, they should not legally be able to restrict the copying, sale, and production of computer programs (which are simply blueprints); only the execution of programs, or enticing people to run them, could be restricted under traditional patent doctrines. This, of course, is not how the current, broken, patent system works.

It is also critical to note the Duffy, while ignoring the basic problems with abstract algorithm patents, also does not address, in any way, the appalling patent quality of these algorithm patents. Most critically, they almost never provide sufficient disclosure to reproduce the patented algorithm. Any responsible person who wants to guarantee that this sort of patent can issue, must also provide a plan for preventing the current flood of clearly insufficient and unsatisfactory patents which are crippling the industry, and Duffy provides no such proposal.

This is a well-constructed propaganda piece with phrasing suitable for a litigator, but it adds nothing to the debate. Which is unfortunate. I hope to read a more thoughtful piece by Professor Duffy some time in the future; one which addresses the actual issues.

[Nathanael Nerode]

As for Google, it is trivial to show that the amount they lose every year defending against software patent lawsuits vastly exceeds any benefit from the PageRank *patent*. Do not confuse the economic benefit of the *patent* with economic benefit of the PageRank *algorithm*, which Google would have had *for free* rather than by paying Stanford University, had the patent not issued.

A competitor attempting to clone the algorithm to compete with Google would have had to first read and understand the paper (assuming Google published it and didn't keep it a trade secret), then implement it in software independently (without violating copyright -- nontrival), develop its own giant farm of hardware servers to actually run it (very very nontrivial), acquire venture capital to pay for all of this (implausible), and *then* would find itself offering an inferior product to Google's, having gotten there later, in a field which is economically a natural monopoly (search), and would proceed to go bust anyway.

[pds]

"Any responsible person who wants to guarantee that this sort of patent can issue, must also provide a plan for preventing the current flood of clearly insufficient and unsatisfactory patents which are crippling the industry, and Duffy provides no such proposal."

The software industry has really come on hard times in the last 15-25 years. Software must be the slowest growing technology out there. It is as if nothing has changed since the TRS-80, Apple II and the Commodore 64. Those pesky patents ... they certainly have thrown a monkey wrench into the works.

"A competitor attempting to clone the algorithm to compete with Google."
Let's see .... Yahoo, Alta Vista, Lycos, Excite.com were big dogs before Google came along .... however, how did Google actually convince the venture capitalists that they should invest money in the company?

Hmmmmmm .... let me think about this ..... hmmmmmm. Oh yeahh, a little intellectual property goes a way in convincing them that you've got something.

Next time you have an opportunity to talk to a venture capitalist, ask them what they think the value of patents are for a startup.

Big money doesn't send seed capital to small ventures when somebody much bigger with a lot more resources can knock off the product and out-market them. Although the big guys have lots of patents, try surviving (and prospering) as a little guy without one.

Marketing only goes so far ... ask Pets.com, e-Toys, Kozmo.com, etc.....

[Citizen Anon]

With the depreciating U.S. dollar and the constipated, inept U.S. patent office, backed-up by greedy lawyers, we've decided to enjoy the benefits of living on U.S soil, develop our software here, but our company is established off-shore. Software patent lawyers and the USPTO can all kiss our butts. The only down-side is we pay more taxes to our host country rather than our home nation. Considering the corruption of our government and misuse of funds... that's probably not so bad.

[Wesley Parish]

Excuse me, folks, but from what has been disclosed of the Google Page Rank algorithm reminds me of the method many scientists use to rank a fellow scientist. It would be obvious to the PTO, too, excpet they weren't thinking at the time they read "the first claim in U.S. Patent No. 6,526,440 (issued Feb. 25, 2003), which discloses an improved search engine technology, does not even expressly include the limitation that the process must be computer implemented". Because, if as I guess, it is merely the computer-implemented form of status ranking used by academics from time immemorial - your value as a scientist is ranked by your peers in that if they quote your material, they value it; if they don't, they don't value it - then the patent is valueless and void, because it is a method of status ranking as old as scientific publication. I wish Prof. Duffy would consider whether or not this online publication is going to contribute to his status ranking, and is thus in material breach of the Google Page Ranking patent. And what is the sole difference between being ranked by one's peers on the number of links created by citations by one's peers, and a computer ranking web pages on the number of links created by other pages' authors? How much, Prof. Duffy, are you willing to pay Google, to have other academics rank you in academic publications? Just to prove you can put your money where your mouth is?

[MaxDrei]

Not just scientific publications Wesley. This is how civil law jurisdictions (by that I mean Asia and mainland Europe) advance their jurisprudence. Not by Binding Precedent but by peer review and citation. Best example the by now thousands of decisions on obviousness, taken over 30 years at the European Patent Office, in inter Partes disputed post-issue opposition proceedings between parties such as Kimberly-Clark and P&G, or Boeing and Airbus. By now, there are 24 equal rank Boards of Appeal that revoke patents for the whole of Europe, in three twitches of a pen, with no recourse to any higher jurisdiction, and with no Binding Precedent. They get it right by the same process that a scientific theory grows in authority. But US patents have an assymetric advantage. Once granted by the USPTO, they have a Statutory Presumption of Validity, and cannot be found invalid until somebody comes up with enough evidence to clearly (NB the Statute says "clear and convincing")convince a tribunal (utterly ignorant of patent law) that the USPTO got it wrong. No wonder "tech" eg Microsoft, found inescapable the logic that "Till the law changes, we need for our very survival a pile of patents bigger than those of all the others. We have to do this, even though, like Leonardo, we disagree with the premise peddled by our tormenters". Many look to Congress to fix the broken system, but members of Congress themselves have difficulty grasping how patent law works. That's fully understandable. As the Irishman said, when asked by a passing motorist the way to Dublin "That's very difficult. You have picked a bad place to start from". So with patent law reform. Back in the 1970's Europe had an advantage. No one Member State was powerful enough to impose its patent law on all the rest. What we got was a New Model Patent Law, starting from a plain white sheet of paper. But that option isn't open to the United States, is it?

[Leopold Bloom]

"Excuse me, folks, but from what has been disclosed of the Google Page Rank algorithm reminds me of the method many scientists use to rank a fellow scientist. ... Because, if as I guess, it is merely the computer-implemented form of status ranking used by academics from time immemorial - your value as a scientist is ranked by your peers in that if they quote your material, they value it; if they don't, they don't value it - then the patent is valueless and void, because it is a method of status ranking as old as scientific publication."

Uh-huh. Scientists aren't documents, are they, even if they write them? And the inventors were clever enough to apply this approach to ranking documents retrieved in response to a search query. Seven years later, looking backwards, you're able to see a vague resemblance. Congratulations - you've just demonstrated "hindsight reconstruction."

[MaxDrei]

Well, Leopold, I have to agree with you, that, with hindsight, everything seems obvious. Prof Duffy points out exactly that, quoting Milton (if memory serves, Paradise Lost) in his recent Paper published in November 2007 Texas Law Review. But, then again, there's an awful lot of people pointing out that doing by computer what hitherto was always done without a computer, is hardly a flash of genius but, rather, something lying plumb in the road (latin: ob Via) of technological progress. So, what we need is to examine whether the state of the art, at the date of the claim, contained any hint or suggestion to solve the objective technical problem (making search engines perform better) by Page Ranking. Matter of evidence, wouldn't you say? Two sides to the debate? May the best evidence win, in a fair balanced fight, I say.

[big hairy rat]

"Well, Leopold, I have to agree with you, that, with hindsight, everything seems obvious."

That's not really correct. Not everything is obvious in hindsight. Haven't you ever read a paper and been left thinking: "Wow, that's really clever". If everything was obvious in hindsight there would never be that sense of wonder at reading something truly novel.

[Malcolm Mooney]

"Next time you have an opportunity to talk to a venture capitalist, ask them what they think the value of patents are for a startup."

The average venture capitalist is not very bright and tends to lag behind the times about five to ten years.

[Malcolm Mooney]

Leopold: "And the inventors were clever enough to apply this approach to ranking documents retrieved in response to a search query."

Why is that "clever"? Seems to me to be about as clever as putting up an umbrella when it rains.

If there was any cleverness in Google's idea, it was whatever solution they devised (or borrowed) for doing the actual determination of what is being linked/quoted across a significant swath of the internet.

[ironcislip]

"thinkfeeldo" --"You're all missing the point. Most patents are derived from an observation of something already in existence." - could that result from requirement that patent be published? how about the massive increase in "defensive patents"?
"Very few are truly original." - according to you.
'In the not too distant future we will come to acknowledge them as one of our greatest mistakes realising they have been largely responsible for slowing human progress. TFD" - wow, human progress has been slowed - do tell!

you have anything empirical to support this? it doesn't exist. that we have several dominant software companies that have been successful in swallowing smaller innovators can hardly be viewed as a "mistake" ... a huge uptick in patent purchase activities has been sorely needed to provide liquidity to a previously illiquid "market ... and guess who the main purchasers are?

that many entrepreneurs and software developers failed (often at the advice of VCs) to seek patent protection is equally "responsible for slowing human progress" if not far more to blame ...

asked before - why is is that copyright & trademark protection experience increased protections? & WHY do large IT/CE/Content folks pool patents? what is an industry standard? what is meant by "open"?

this is business & patents present the most appropriate challenge to the status quo - that was precisely the point of the system!!!

please point me to a patent that meets your "standard" of quality ...

[ironcislip]

Huck Finn (ironic given your author was a huge proponent of IP protection - yes, even if that was not the wrod at the time though "patent pirate" most certainly was) "PDS: your slippery slope argument is unpersuasive. I'm a software developer. Why should I care whether patents are effective in semiconductors or pharmaceuticals? Let the experts in those areas argue about it. Each industry has its own economics and insofar as the patent system was supposed to "promote the progress of science and useful arts", it is the government's job to make sure the rules do that for all major industries. Most programmers will tell you that software parents are an impediment, not a help."

Experts? What experts? Patent Law should be technology-neutral - it is "promotion of the useful arts" - And, no you need not care but please do provide an example of how software patents have caused you any issue versus say a DRM (patented software) in accessing some content you purchased? Where did the patent cause the issue?

Slippery slope to what? Another Patent Reform Act to more fully gut inventor rights? Say "hi" to Tom!

[Malcolm Mooney]

"Patent Law should be technology-neutral - it is "promotion of the useful arts""

So why can't we patent an old piece of paper with a new recipe written on it? After all, food is useful.

[Citizen Anon]

I've reviewed enough software patents now that I've come to realize that most are patently offensive. After marking out the gobbledygook, lawyer double-speak, you can get to the real meat of the patent. You'll find it describes some marvelous (thick sarcasm on that word) innovation of using a "computer system" to "store data" in a "database", or even more innovative, "computer algorithm" to manipulate data stored in a database. The solution to all this junk is simple. Issue copyrights on the compositions, the literary works, that talented software developers compose. The code is beautiful when well-written and junk other-wise. Well written code when published for public consumption should be protected, but like any great book, developers or authors should be inspired, but not merely plagiarize the work for profit. Unless of course the original author has placed the "open-source" composition into the public domain to help other author create wonderful compositions.

[Anita K]

I cann't understand why an electronic medium (a webpage) is considered different from a physical medium such as a printed paper or a book though both provide the same information to the reader. Why is physical existance so inportant in patent law whereas the end result remains same for bot i.e. getting information.. can anyone clarify please.

[MaxDrei]

Anita, to get a patent out of the USPTO you need to define in the words of a "claim" the area monopolised by your patent, in such a way that there is nothing old or obvious inside the "metes and bounds" (cute old-fashioned lawyers' phrase, that) of your definition. A claim is nothing more than a list of "elements". The more unrelated elements in your list, and the more recently developed things in your list, the harder it is for the PTO to prove that the combination of things in your list already existed, or was obvious. The debate above includes argument whether you can turn an old "book" or "web page" into a patentable book (or web page) just by reciting in the claim that some new, non-obvious and useful cooking recipe is written on it. At least, that's how I understand it. BTW, the reason why the new recipe isn't patentable in Europe is because it isn't a solution to a "technical" problem. Does that make sense to you?

[MaxDrei]

Anita, to get a patent out of the USPTO you need to define in the words of a "claim" the area monopolised by your patent, in such a way that there is nothing old or obvious inside the "metes and bounds" (cute old-fashioned lawyers' phrase, that) of your definition. A claim is nothing more than a list of "elements". The more unrelated elements in your list, and the more recently developed things in your list, the harder it is for the PTO to prove that the combination of things in your list already existed, or was obvious. The debate above includes argument whether you can turn an old "book" or "web page" into a patentable book (or web page) just by reciting in the claim that some new, non-obvious and useful cooking recipe is written on it. At least, that's how I understand it. BTW, the reason why the new recipe isn't patentable in Europe is because it isn't a solution to a "technical" problem. Does that make sense to you?

[MaxDrei]

Sorry for the double post, readers. No idea how that happened.

[Malcolm Mooney]

maxdrei "BTW, the reason why the new recipe isn't patentable in Europe is because it isn't a solution to a "technical" problem. Does that make sense to you?"

No. Is alphabetizing a list of ingredients a "technical problem"?

[MaxDrei]

Sorry it doesn't make sense to you Malcolm. As to your question, I can't see how arranging a list of ingredients in alphabetical order can solve a "technical" problem. Maybe we are at cross-purposes. I was trying to help Anita K, whereas I suppose you are trying to assist further upthread. If the point you are making is the Aharonian one, that "technical", like "obvious", is undefined by the Statute, you're right.

[AllSeeingEye]

Thanks for demonstrating your technical competence Max.

To Anita, a web page arguably becomes "physical" when it is displayed on a screen. That aside, I would ignore the hackneyed analogies to pieces of paper with recipes foisted by the likes of Leopold Mooney.

[ironicslip]

MONEY - fact remains - Google is now in the patent purchasing game to compete with Intellectual Ventures/patent trolls/innovators ergo patents are valuable enough for Google to work all sides of the intellectual property landscape - counterpoints raised above come largely from folks who may not like patents (and those who simply don't understand patentability)

As if on predictable cue, your question ignores the point that the patent system should be "useful arts"-neutral - but since you already know what is innovative & don't suffer any of the hindsight oh-so-plentiful in this thread & massively messaged by those who say they know better ... How about we parse what I think you are trying to say:

Money: "So why can't we patent an old piece of paper with a new recipe written on it? After all, food is useful."

Is food a "useful art"?
Why would you want to patent the "old piece of paper"?
For educational purposes to train would-be chefs?
Perhaps that has already been patented (now in the public domain thanks to the public notice function, again ignored by most posters - however crappy you or others may think the patent - it was paid for by the applicant and is yet another piece of knowledge for all the world to use or not): US Pat 3,799,550?
We can call the "old piece of paper" a board game, no, or must it be a machine? Say, US Pat 7,044,466?

Maybe you have identified a dark horse trend, even with all the copyright & trademark protection and attention paid to ingredients of would-be candidates baking cookies & BBQ'ing whatever, at least the average person is asking the right questions & helpfully avoiding your prejudice against patentable subject matter, take a look - http://www.foodandwine.com/articles/new-era-of-the-recipe-burglar -

How about using all of this with a machine coded for certain improvements in recipes: Method & system in control of coating color recipe http://www.patentstorm.us/patents/7097346/description.html - Is that novel & useful? Ever run a restaurant? A chain of them? How about a franchise operation with layers of revenue streams from a variety of licenses with different rights agreed to by the parties? You know like splits for allowable improvements in a given menu as directed by the franchise? To whom does that improvement belong?

Will a recipe that is most effective in removing trans fats - or even identifying them in ingredients at low cost- be a "useful art" - or does that cut into the bio field you so dearly hold as the one true area of innovation (even if the FDA, not open communications networks, as per the software arts, is the bottleneck/gatekeeper for such innovation - of course, no partisan involvement to maintain neutrality over pharma - no fixed pricing for the "food" to back-end the R&D) - But trans-fats means more drug development! So, what to do?

And, a favorite resource IMHO to educate all people about patents - Uncle Phaedrus, Finder of Lost Recipes (What No Motorcycle Maintenance?) - on the difficulty of patenting a recipe ... http://www.hungrybrowser.com/phaedrus/m0910M07.htm

Remember to not go backwards, Money-hindsight: MPEP 2106 STILL states:

"Prior to evaluating the claimed invention under 35 U.S.C. 101, USPTO personnel are expected to conduct a thorough search of the prior art. Generally, a thorough search involves reviewing both U.S. and foreign patents and nonpatent literature. In many cases, the result of such a search will contribute to USPTO personnel's understanding of the invention. Both claimed and unclaimed aspects of the invention described in the specification should be searched if there is a reasonable expectation that the unclaimed aspects may be later claimed. A search must take into account any structure or material described in the specification and its equivalents which correspond to the claimed means plus function limitation, in accordance with 35 U.S.C. 112, sixth paragraph and MPEP § 2181 through § 2186."

Analogous art queries may help you in your decision to patent, no? :: MPEP 2141.01 (truncated) See, for example, Ex parte Bland, 3 USPQ2d 1103 (Bd. Pat App. & Inter. 1986) (Claims were drawn to a particulate composition useful as a preservative for an animal foodstuff (or a method of inhibiting fungus growth in an animal foodstuff therewith) comprising verxite having absorbed thereon propionic acid. All references were concerned with absorbing biologically active materials on carriers, and therefore the teachings in each of the various references would have been pertinent to the problems in the other references and the invention at hand.)

Any novel & nonobvious steps in your recipe - like that new anti-stick, cheese-doodle (tradename?), cotton candy you've been hawking at the summer fair? or is that a summer festival? Someone mentioned your involvement with BK Lounge - you think they have patents? Dell has some fairly well-known patents on order taking directing the manufacture of computers - maybe you have special coded recipe paper with coupons, affinity points & the like which has options that you can feed into one of your BK Lounge machines & the food manufacturing apparatus gets it right - user-controlled food manufacture for fast food - remember to have your "old piece of paper" contain trans-fat identifiers ...

Now about that relevance index you punted on ... How apropos we are in a thread about search ...