High Technology and the Law
A Legal Perspective on the Open Systems Industry
Software Patents: Protection We Don't Need
By Jonathan Wallace
Software may be a unique class of inventions that shouldn't be patentable.
In recent months, the Java programming language from Sun Microsystems
has taken the industry by storm. Microsoft, Netscape, Borland, Lotus and
dozens of other companies have licensed Java for use in Web browsers and
other products. This new object-oriented language promises to assume a place
next to C++ in importance in our industry and to become the premier language
for World Wide Web development.
There is latent trouble in paradise, however. Here is an excerpt from a
recent press release:
Eolas Technologies, Inc. [of Chicago], announced today that it has completed
a license agreement with the University of California for the exclusive
rights to a pending patent covering the use of embedded program objects,
or "applets," within World Wide Web documents. Also covered is
the use of any algorithm which implements dynamic bidirectional communications
between Web browsers and external applications.
If this patent is issued, Eolas will have the right to demand that Sun,
Microsoft and the others either stop using or distributing embedded Java
applets, or pay it a royalty. If this effort succeeds, the end result will
be the exact opposite of what the patent laws were designed to do.
The U.S. Constitution provides that Congress has the power to "promote
the Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and
Discoveries." Patent and copyright laws are based on this constitutional
authorization. While the copyright law gives a 75-year monopoly on the particular
expression of an idea, patent law gives a 17-year monopoly on the use of
the idea itself.
Let's examine two hypothetical examples to make this clear. Company A publishes
a windowed operating system for personal computers. Company B does the same.
Company A has a copyright in its operating system but no patent. Company
B created its work from scratch and did not copy any of Company A's code,
command set or icons. Company B has not infringed Company A's copyright.
However, if Company A had obtained a patent on its invention, the "idea"
of a windowed operating system for personal computers, Company B would be
unable to field its own completely original product. For 17 years, Company
A would have the exclusive right to be in the windowed OS marketplace, unless
it chose to grant a license to someone else.
Broadly speaking, copyright arose to protect artistic expressions--such
as painting, writing and photography--and patenting grew up to protect the
products of engineering--printing presses, cameras and so forth. Software
is unique because it straddles the boundaries between these two categories.
During the 1980s, courts recognized (at first haltingly, then emphatically)
that software was a proper subject for copyright protection, just like a
book or picture.
Courts were much slower to apply patent protection to software. During the
infancy of the computer software industry, patents were denied on the grounds
that software only solved algorithms, and that an algorithm, as a law of
nature, is no more patentable than the law of gravity.
The breakthrough case was Diamond v. Diehr, in which the U.S. Supreme Court
recognized that a patent should not be denied to an otherwise patentable
process--in this case, a rubber-curing machine--just because software (which
decided when to stop the curing process based on analog readings) was a
part of the invention. By the mid-1980s, the floodgates had broken, and
the U.S. Patent and Trademark Office (PTO) would accept patents for almost
any type of program, as long as it met the twin requirements of being "novel"
Novelty in this usage means that the invention represents something
new, an improvement upon prior art. An applicant for a patent is required
to disclose to the patent examiner any prior related inventions of which
he or she is aware, whether reflected in a patent, a technical article or
some other form of disclosure. A patent can be invalidated at any time after
issuance if "prior art" comes to light which the applicant failed
Nonobviousness is a second hurdle the applicant must still surmount
after showing novelty. There are some inventions which apparently are too
obvious to patent, even though no one else has thought of them before. The
leading case on this issue--taught in law school classes on the subject--involves
the wooden frame that used to be used to drag groceries down the checkout
counter in the days before conveyor belts. It was "novel" but
too "obvious" to patent.
Once the PTO began accepting software patents, it soon acquired a reputation
for accepting almost anything presented to it. It simply didn't have the
track record or the experienced personnel necessary to weed out applications
for software that was not really novel. Everyone in the industry knows that
there are patents floating around (some of them belonging to IBM) that cover
basic, obvious and old innovations in the programming art, such as:
- a data entry screen with mandatory and optional fields;
- a spreadsheet in which each cell has a "next cell" attribute
defining the next cell to which the cursor should jump after data has been
entered in the current cell;
- a word processor that allows you to shade portions of text by enclosing
it within commands that turn shading on and off;
- a "backing store" function that saves the position and contents
of a window when it is not visible.
Not as Simple as It Seems
Some readers may feel that the obviousness of these innovations is a matter
of hindsight. Someone labored to think of them first; why shouldn't the
original inventor be rewarded with an exclusive?
The answer is threefold. First, the individual holding the patent on many
software innovations is not actually the inventor. The PTO is known to have
issued many bad patents in ignorance of prior art that might have been obvious
to examiners skilled in computer science. If the owner of a bad patent brings
a lawsuit against other users of the innovation, they will typically incur
hundreds of thousands of dollars in legal fees, and may even be driven out
of business, before proving that the plaintiff is relying on an invalid
Second, the 17-year monopoly granted by a patent is completely out of synch
with the fast pace of the software industry, where products are obsolete
within a year or two. Third, the early history of our industry proves that
we had far more innovation without patent protection than we would have
had with it.
Some years ago, I attended a talk by Dan Bricklin, codeveloper of Visicalc,
the first spreadsheet program, which was released around 1980. I asked him
if he had ever thought about patenting his product. He replied that he was
eager to but that his attorney had advised him (correctly, based on the
state of the law at the time) that it was not patentable. He added, "In
retrospect, I'm glad I couldn't, because I would have strangled an industry."
Just think about it: If Bricklin had gotten a Visicalc patent, there would
have been no Lotus 1-2-3, no Quattro Pro, no Excel. Does anyone think that
Visicalc, occupying a field with no competition, would have evolved as much
as these other spreadsheets have?
Imagine if every one of the leading software products of the early 1980s
had been patented. You would still be storing your data in dBase; there
might be no Access, Paradox, Sybase or Informix. You would be word processing
in WordStar; WordPerfect, MS Word and FrameMaker would not exist.
Software publishers were always happy with copyrights, until they knew patents
were available. Even today, many industry innovations are only possible
because publishers refrain from getting patents or (in some cases) hold
back from enforcing the ones they have. If NCSA had patented Mosaic, Netscape
and Hot Java would not be possible.
Although some opponents of the present system propose a shorter software
patent of a year or two, the early experience of our industry proves that
software publishers do not need patents to thrive and grow, and that users
receive a wider variety of innovative products without them. The patent
laws should be amended to exempt computer software.
Jonathan Wallace is vice president and general counsel
of Pencom Systems, Inc., in New York City. He can be reached at firstname.lastname@example.org.