In his recent opinion piece for Wired, Stanford law professor and renowned patent expert Mark Lemley warns of the negative direction patent law has been taking in recent years. Namely, the laws today pay more attention to what the patentee claims — not what he or she actually invented — as the lawyers drafting the claims have “a natural tendency to broaden” as much as possible to assure a strong and safe case for clients. This is especially true, Lemley says, for software and internet patents.
Inventors faced the same situation in the mid 20th century. “These patentees were claiming to own not a particular machine,” writes Lemley, “but the goal itself” (his emphasis). The Supreme Court eventually rejected such broad claiming, and in 1952 Congress rewrote the Patent Act to allow patentees to claim only the particular means of implementing the goal.
But according to Lemley, broad functional claiming has made its comeback in computer technology, as the nature of software and programming is more loosely translatable under U.S. patent law. In addition, he asserts, “this is partly because of the way the means-plus-function claim rules have been interpreted by the Federal Circuit. Patentees have been able to write broad functional claims without being subject to the limitations of section 112(f).”
As a result of this looser interpretation — and the resulting ability of patentees to “claim ownership not of what they built, but of what it does,” Lemley says, the courts have become overrun with “suits purporting to own everything from international electronic commerce to video-on-demand to voice over the Internet to emoticons to means of hedging commodity risk. Mind you,” he adds, “the claims aren’t that defendants used their method of implementing electronic commerce or video on demand: the argument is that defendants used the idea itself.” The result has also been the patent thickets that make it so difficult to launch these types of technologies.
“Ten different people might come up with ways of communicating voice over the Internet, but if each can claim to own the concept itself, there will be lots of overlapping patents with broad claims,” Lemley explains.
Lemley compares this environment to a very dissimilar situation for patents surrounding drug development, where companies can patent a specific treatment, but certainly not the idea of curing cancer. “In any other area of technology, we wouldn’t permit the sorts of ludicrous claims that appear in thousands of software patents,” he argues. “Pharmaceutical inventors don’t claim ‘an arrangement of atoms that cures cancer,’ asserting their patent against any chemical in any form that achieves that purpose. Pharmaceutical patent owners invent a drug, and that drug is what they’re entitled to patent. But in software, broad claims of the ‘curing cancer’ form are everywhere.”
The good news is that fixing the problem requires no new laws, just a more sensible interpretation of existing ones, Lemley contends. “Simply by applying the rules of means-plus-function claims to software, we could begin to get a handle on the software patent issue. Indeed, ending functional claiming may be the only way out of the software patent morass,” he writes. “As long as patentees can claim to own the problem itself — not just the solution — defining better boundaries and invalidating obvious patents won’t do much to make the patent mess go away.”
He continues: “If an inventor claims to own any means of using a computer to solve a problem, we should read that claim as being limited to the particular algorithm s/he wrote to solve the problem and ones like it…. Didn’t write an algorithm (or code)? Then it’s an invalid patent.”
While acknowledging this course of action would narrow the scope of software patents, and in some cases unfairly so, Lemley contends that the benefits of his approach far outweigh the drawbacks. “With one fell swoop — without changing the patent statute and without invalidating existing patents — we may be able to solve most of the software patent problem,” he concludes.