Guest Post by Martin Goetz
In Dennis Crouch's July 29, 2012 Patently-O essay "Ongoing Debate: Is Software Patentable?" he concludes by writing "It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable"
One of the main reasons for this long debated argument about the patentability of software is that the wrong question is being debated. The current debate is mainly on the question "Should software be Patentable? And whether software, in the form of a computer program, is patentable subject matter?" Software is just a means to an end. The debate should be about the invention.
If the debate was on the question "Is an invention that is patentable in hardware, equally patentable if implemented in software?" there would be much less controversy. Hardware implemented inventions have been issued for well over a hundred years, long before the advent of the digital computer.
Back in October 2011 I wrote an article for a UK publication "Should software be patentable? That's the wrong question to ask". Because of the many comments to that article, many of which were critical of my arguments, I was asked for a follow up article "Pioneer Goetz rebuts software patent critics". In these two articles I tried to stress that software (a computer program) is purely part of a proper disclosure
Article 29 of the US Patent Office's application guidelines covering "Disclosure Obligations" states "…An applicant for an invention shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention…."
Clearly, if the best mode is a computer program, then that disclosure would be described through diagrams, flow charts, and descriptive text. In many inventions, the best mode is a combination of hardware and software. (Or if the best mode is not hardware and/or software but cams, pistons, and flywheels or water or wind power, so be it.)
If the Patent Office's examiners focused on the invention, and not on how the invention was disclosed, it would reject many, if not most Software and Business Method Patents. Unfortunately, the Patent Office is bound by a plethora of confusing Supreme Court and lower courts decisions and opinions. Yet, the US Patent Office does have flexibility in how it interprets the US Supreme Court's many rulings. This gets us back to the US Patent Office and its examiners who must be better trained to recognize true inventions. Easily said, and a gigantic challenge for the US Patent Office. But, unfortunately, that is where we are today.
Postscript: Back on November 30, 2009, Patently-O published my blog "In Defense of Software Patents" in response to the editorial "Abandoning Software Patents" by Ciaran O'Riordan, Director of End Software Patents (posted on Patently-O on November 6, 2009) which had as its premise that software companies are trying to protect "software ideas". In that article I commented on the Bilski Opinion as well as gave some concrete examples of software-only patents as well as hardware/software patents. That article also received hundreds of comments, many being negative, and in response in September 2010 I had a follow up article "In Defense of Software Patents - Part 2". Both those articles explained why software companies and other companies should not be denied patent protection on true inventions solely because part or all of the disclosure involves a computer and a computer program. It goes on to describe why many software companies are high technology companies that employ many highly educated people fully capable of inventing.