Friday, February 17, 2006

Presentation: Software Patents

My paper will discuss reform relating to the protection offered to software based patents. Initially, I take the viewpoint that patent protection for software is justified under the current patent regime. However, I think the protection is too broad and modifications to the current system are needed to curb this protection.

One change I propose is to establish a patent fair use doctrine similar to that established under copyright law. This new doctrine will allow infringing activity to be excused if the activity is determined to be qualified as fair use. Some possible guidelines that will help a court determine if fair use exists are an evaluation of: the purpose of the infringing use, method of use, harm to the patentee by this use, and social benefit because of this use.

Issues that I would appreciate comments on include:
1) Should uses based on commercial incentives completely negate a fair use defense?
2) What if the use is directed toward the commercial end of marketing non-infringing software?
3) Should reverse engineering of software patents be protected under this fair use doctrine?
4) Any other factors the court should consider when determining fair use.

A second change that I propose is heightened disclosure requirements placed on the applicant submitting the software patent application as well as heightened examination practices by the examiners. The disclosure requirements include the applicant performing a prior art search and providing the results to the PTO with the filing of the application. In addition, the applicant is required to disclose the source code within the application in order to satisfy the enablement requirements currently in place. The novel aspects of the source code claimed by the applicant must be distinctly identified since the source code might include numerous lines of code that are not novel.

The heightened examination practices require the examiner to evaluate the techniques put forth by the software. The examiner should not focus on whether these techniques solve a new problem, but whether the techniques themselves are substantially new. Third parties may attack the novelty of the technique by submitting evidence that the techniques were used in the industry before the filing of the application, even though the techniques were never published as prior art.


Blogger duffee said...

Although I think some form of fair use defense can serve an important purpose, I think the result might be greater uncertainty and increases in litigation costs. If it becomes too much harder to enforce a patent, it would be easier to infringe with impunity and there would be less reason to obtain a patent in the first place. So, my suggestion would be to create some concrete guidelines that could at least give patentees and their lawyers some strong indication as to whether they fall within a fair use "safe harbor" or not.

2:09 PM  
Blogger DSomogy said...

I would argue there is a strong economic policy argument for allowing some wiggle-room for reverse engineering. The derivative hardware/software market that followed the development of MS Windows has got to be enormous - and I can only assume that it happened because the third party products were interoperable. The potential gains are so huge as to warrant a smaller scope of rights when it comes to the software that enables the cool modern toys...

2:33 PM  
Blogger jeonghowi said...

I suggested during the class that you research why we don't have the fair use doctrine in patents although we have it in copyrights; and whether your suggestion of adopting the fair use doctrine in computer software patents would erode such rationale.

6:58 AM  
Blogger Syed Ali said...

I hope I am understanding these issues correctly, if not, then you can ignore my post.

Basically, you think that we should have a fair use with patents in order not to stifle creativity? Right now there is a licensing system that is used when others want to use patented work, but whether these license are given is up to the patent holder. You are afraid that if a patent holder won't license to another, then the other won't be able to continue in his work? You are arguing a fair use instead of a licensing system. It seems that the fair use doctrine then would take away a lot of profit that patent holders right now are realizing through their licenses. So you suggested a fee, but then we decided that this was too much like compulsory licenses which are prohibited by law in patents.

If this is correct so far, then I would say that the best solution would be to amend the law and allow compulsory licensing. This would solve the problem of stifling creativity because they could always compel the license, and this would solve the problem of a tremendous loss of profits to current patent holders, becaues they would be paid for the license, even if it is compelled. This would still leave the question of who gets to regulate the prices of the compulsory licenses.

10:45 AM  
Blogger joemama said...


I think your argument for fair use in patent is persuasive, but I'm not sure I favor it. It seems like patent has so many problems currently, that making significant changes to the statutes would only complicate matters. Additionally, even in copyright, where fair use has been in existence for a long time, disputes over what constitutes the defense are oftentimes not easily resolved (e.g., Google book search).

All that aside, if I were going to suggest a single factor for the courts to incorporate in an analysis of infringing uses, it would be the Lanham Act standard of bona fide use in the ordinary course of trade. The reason being that if the use is not substantially commercial, an argument could be made that the harm done was de minimus.

1:31 PM  

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