I. Introduction
The software business is unlike any other. One of the many ways the software industry differs from traditional service and manufacturing fields is software companies’ approach to patents. With a few major exceptions, the industry appears to be averse to patent suits. Instead, software patents are collected as assets to be used to increase a company’s value (which is particularly important for startups hoping to be acquired) as well as to defend against potential infringement claims.
Also unlike most industries, it is difficult – perhaps impossible – for a software developer to create a product that doesn’t infringe on some patents. Software patents are frequently criticized as overbroad and over-reaching. In a 2006 talk at Google entitled “Are Software Patents Evil?” inventor Paul Graham places some of the blame on an overworked U.S. Patent and Trademark Office. The result is a failure to properly vet software-patent applications, which patent attorneys purposefully craft as broadly as possible in anticipation of having some claims thrown out. The inability to recognize the obviousness of some software-patent claims exacerbates the problem of overbroad patent awards.
With the enactment in 2011 of the Leahy-Smith America Invents Act, Pub. L. 112-29, Congress once again demonstrated its inability to keep pace with technology. While referred to as the Patent Reform Act of 2011, the significant changes the statute makes to Title 35 of the U.S. Code harmonize the U.S. patent process with that of foreign nations: the previous first-to-invent system for patent awards becomes a first-to-file system; and public use and offers for sale by third parties in foreign countries now constitute prior art.
The AIA makes it easier for organizations and individuals to protest bad patent awards. Third parties may now submit prior art to challenge a patent whose application is still pending. One of the three new post-grant challenges is inter partes review, which allows third-party challenges to claims of novelty and non-obviousness to be based on patents and printed publications, with time limits and other restrictions.
A significant number of infringement suits relating to software patents are brought by a small number of companies that don’t actually develop or sell products. Patent trolls, which are also referred to as patent-monetization entities (PMEs) and non-practicing entities (NPEs), are estimated by University of California Hastings College of Law Professor Robin Feldman and others in a recent study to represent more than half of all infringement claims brought against software companies. The AIA has been criticized for not doing enough to combat such abuse of the patent process.
From a potential infringer’s perspective, the sheer volume of software patents dooms any attempt at discovery. Organizations such as the Software Patent Institute facilitate the search for prior art. The Electronic Frontier Foundation and other technology organizations recommend requiring that all software-patent applications include executable program code. In addition to providing a precise description of the operation and scope of the proposed software patent, the codebase would facilitate searches for prior art to discover potential software-patent infringement.
This research project is intended to consider the feasibility and efficacy of a software-patent codebase in relation to recent court decisions. Particular attention is paid to courts’ interpretation of prior art, novelty, and non-obviousness as applied to software-patent infringement claims. The effect of such a patent codebase on the rules and procedures of the U.S. Patent and Trademark Office is also researched.
II. Software Patentability -- a. Intent of USCS Const.Art.I § 8, cl. 8
Also unlike most industries, it is difficult – perhaps impossible – for a software developer to create a product that doesn’t infringe on some patents. Software patents are frequently criticized as overbroad and over-reaching. In a 2006 talk at Google entitled “Are Software Patents Evil?” inventor Paul Graham places some of the blame on an overworked U.S. Patent and Trademark Office. The result is a failure to properly vet software-patent applications, which patent attorneys purposefully craft as broadly as possible in anticipation of having some claims thrown out. The inability to recognize the obviousness of some software-patent claims exacerbates the problem of overbroad patent awards.
With the enactment in 2011 of the Leahy-Smith America Invents Act, Pub. L. 112-29, Congress once again demonstrated its inability to keep pace with technology. While referred to as the Patent Reform Act of 2011, the significant changes the statute makes to Title 35 of the U.S. Code harmonize the U.S. patent process with that of foreign nations: the previous first-to-invent system for patent awards becomes a first-to-file system; and public use and offers for sale by third parties in foreign countries now constitute prior art.
The AIA makes it easier for organizations and individuals to protest bad patent awards. Third parties may now submit prior art to challenge a patent whose application is still pending. One of the three new post-grant challenges is inter partes review, which allows third-party challenges to claims of novelty and non-obviousness to be based on patents and printed publications, with time limits and other restrictions.
A significant number of infringement suits relating to software patents are brought by a small number of companies that don’t actually develop or sell products. Patent trolls, which are also referred to as patent-monetization entities (PMEs) and non-practicing entities (NPEs), are estimated by University of California Hastings College of Law Professor Robin Feldman and others in a recent study to represent more than half of all infringement claims brought against software companies. The AIA has been criticized for not doing enough to combat such abuse of the patent process.
From a potential infringer’s perspective, the sheer volume of software patents dooms any attempt at discovery. Organizations such as the Software Patent Institute facilitate the search for prior art. The Electronic Frontier Foundation and other technology organizations recommend requiring that all software-patent applications include executable program code. In addition to providing a precise description of the operation and scope of the proposed software patent, the codebase would facilitate searches for prior art to discover potential software-patent infringement.
This research project is intended to consider the feasibility and efficacy of a software-patent codebase in relation to recent court decisions. Particular attention is paid to courts’ interpretation of prior art, novelty, and non-obviousness as applied to software-patent infringement claims. The effect of such a patent codebase on the rules and procedures of the U.S. Patent and Trademark Office is also researched.
II. Software Patentability -- a. Intent of USCS Const.Art.I § 8, cl. 8
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