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Date: Fri, 19 May 1995 10:44:36 +0000
To: rdshydur@MIT.EDU
From: rah@shipwright.com (Robert Hettinga) (by way of oldbear@arctos.com (The Old Bear))
Subject: SOF_pat

Richard:
  This was forwarded to me by a colleague and I thought that it would
be of particular interest to you, the e-club, any other folks within 
your usual orbit.
  Cheers,
     Will
     oldbear@arctos.com

----------begin forwarded text----------
>From: John Young <jya@pipeline.com>
>Date: Sun, 14 May 1995 13:38:21 -0400
>To: rah@shipwright.com
>Subject: SOF_pat
>
>
>Responding to msg by rah@shipwright.com (Robert Hettinga) on
>Sun, 14 May  7:23 AM
>
>
>   The New York Times
>   May 8, 1995, p. D2.
>
>
>   Patents [Column]
>
>
>   By Sabra Chartrand
>
>
>   Guidelines are being prepared to evaluate software, but
>   only if it is part of a floppy disk or a computer.
>
>
>   Washington. The Patent and Trademark Office is looking anew
>   at the way it judges software inventions.
>
>
>   The agency does not patent mathematical formulas,
>   scientific principals, laws of nature or mental processes.
>   And for a long time, computer software had been considered
>   too close to mental processes. Software was treated like
>   printed material that happened to be on a disk and not
>   paper -- and, as such, not patentable.
>
>
>   But now the agency says that rulings last year in the Court
>   of Appeals for the Federal Circuit, the court that hears
>   appeals of rejected patents, made it plain that software
>   should be patented if it is part of a product like a floppy
>   disk or computer. So for about a month the agency has been
>   working on new guidelines for evaluating software
>   inventions that it expects its examiners to be following by
>   this summer.
>
>
>   "Software is such an important aspect of the country's
>   economy today that we're taking the court's admonition,"
>   Nancy Linck, the agency's senior attorney, said. "The real
>   change the guidelines will make is to provide protection
>   for software programming as an article of manufacture, as
>   in a floppy disk."
>
>
>   In other words, software may be patented, but not alone.
>   Computer code, by itself, is still too abstract to win a
>   patent. But software that causes computer hardware to
>   perform a specific function is not.
>
>
>   "The software program itself has to be embodied in a
>   tangible medium, like a floppy, that is useful, new and
>   non-obvious," Ms. Linck said. "The real hard question is
>   whether to limit it in some way to use. A mathematical
>   algorithm in the abstract, even if it's embedded in a disk,
>   may not be patentable."
>
>
>   The move to adopt new guidelines appears to fit neatly into
>   Commissioner Bruce Lehman's plans to reshape patent rules
>   and regulations to give American businesses a competitive
>   edge in worldwide markets for high-tech products. And Ms.
>   Linck said the agency's ideas had won support from the
>   software industry.
>
>
>   But as late as December, the agency was still resisting
>   software patents. It was in court then, defending its
>   decision to deny a patent for data structure in memory --
>   a floppy disk, for example. The agency did not think the
>   invention qualified.
>
>
>   "The Patent and Trademark Office attempted to rqect the
>   claims as not patentable," recalled Barry N. Young,
>   an intellectual property lawyer from California who
>   represented the inventor's appeal. "They said 'all you have
>   is a memory with a data structure stored on it.' "
>
>
>   "They would not," he continued, "give patentable
>   significance to that because that would give weight to the
>   content, which would be analogous to patenting a book. We
>   argued that the claims did not cover the content of the
>   information, but specifically covered the data structure in
>   terms of the hierarchy of elements."
>
>
>   The court agreed, and overturned the patent office's
>   rejection of the patent. Ms. Linck said the ruling was a
>   benchmark for the agency.
>
>
>   The ruling came after another case last fall "reaffirmed
>   the proposal that when you put new software programming on
>   an old computer, you make it into a new machine and
>   therefore a patentable machine," Ms. Linck added.
>
>
>   The two rulings occurred as other court findings seemed to
>   restrict the kinds of copyright protection available to
>   software inventions. So just as it got harder to get a
>   copyright, winning a patent became easier.
>
>
>   Some question whether any software is eligible for a patent
>   just because it is embedded in a disk or a computer.
>
>
>   "Suppose you have information stored, something like an
>   encyclopedia-type data base," Mr. Young said. "It has a
>   flat structure; it's not hierarchical; it's only
>   information in categories. That kind of arrangement of data
>   is clearly not patentable."
>
>
>   The re-evaluation follows a couple of years of tumultuous
>   software debate at the Patent and Trademark Office. A
>   patent issued in 1993 to Compton's New Media created an
>   uproar from software developers who argued that the
>   technology was commonplace and complained that patent
>   examiners did not know enough about software. The patent
>   office agreed there was truth to that -- at the time of the
>   Compton application, a degree in computer programming did
>   not meet the agency's education requirements for examiners.
>
>
>   The firestorm compelled Commissioner Lehman to hold public
>   hearings on software-related inventions and to order a
>   re-examination of Compton's patent. The agency was deluged
>   with advice and research material from people in the
>   computer industry pointing the examiners toward proof that
>   Compton's technology was in the public domain. As a result,
>   the patent office voided Compton's patent.
>
>
>   The agency also started hiring computer programmers as
>   examiners, and began to expand its library of software
>   manuals, textbooks and reference materials. Then came the
>   court rulings that software could be patented.
>
>
>   Specifics of the new guidelines have yet to be decided, but
>   Ms. Linck said she expected they would at least make it
>   clear that software was patentable when part of a floppy
>   disk, a computer or as an element of a process.
>
>
>   Those are fairly broad requirements, and some skeptics have
>   pointed out that such software could include music and
>   literature on disk. But Ms. Linck said that at the very
>   least the guidelines would make it impossible to patent
>   songs or novels.
>
>
>   "Just how we will reject those claims isn't clear yet," she
>   added. Ms. Linck said that when the guidelines were ready,
>   they would be published in the Federal Register and the
>   Official Gazette of the Patent and Trademark Office so that
>   the public could comment on them.
>
>
>   [End]