editorial

It is, of course, correct that Congress, not the courts, must define the limits of patentability; but it is equally true that once Congress has spoken it is “the province and duty of the judicial department to say what the law is.” Marbury v. Madison,1 Cranch 137, 177 (1803). Congress has performed its constitutional role in defining patentable subject matter in §101; we perform ours in construing the language Congress has employed. In so doing, our obligation is to take statutes as we find them, guided, if ambiguity appears, by the legislative history and statutory purpose. Here, we perceive no ambiguity. The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting “the Progress of Science and the useful Arts” with all that means for the social and economic benefits envisioned by Jefferson. Broad general language is not necessarily ambiguous when congressional objectives require broad terms.

It is argued that this Court should weigh these potential hazards in considering whether respondent’s invention is <447 U.S. 317> patentable subject matter under §101. We disagree. The grant or denial of patents on microorganisms is not likely to put an end to genetic research or to its attendant risks. The large amount of research that has already occurred when no researcher had sure knowledge that patent protection would be available suggests that legislative or judicial fiat as to patentability will not deter the scientific mind from probing into the unknown any more than Canute could command the tides. Whether respondent’s claims are patentable may determine whether research efforts are accelerated by the hope of reward or slowed by want of incentives, but that is all. What is more important is that we are without competence to entertain these arguments – either to brush them aside as fantasies generated by fear of the unknown, or to act on them. The choice we are urged to make is a matter of high policy for resolution within the legislative process after the kind of investigation, examination, and study that legislative bodies can provide and courts cannot. That process involves the balancing of competing values and interests, which in our democratic system is the business of elected representatives. Whatever their validity, the contentions now pressed on us should be addressed to the political branches of the government, the Congress and the Executive, and not to the courts.

Stop all the clocks, cut off the telephone,
Prevent the dog from barking with a juicy bone,
Silence the pianos and with muffled drum
Bring out the coffin, let the mourners come.

Let aeroplanes circle moaning overhead
Scribbling on the sky the message He Is Dead,
Put crepe bows round the white necks of the public doves,
Let the traffic policemen wear black cotton gloves.

He was my North, my South, my East and West,
My working week and my Sunday rest,
My noon, my midnight, my talk, my song;
I thought that love would last for ever: I was wrong.

The stars are not wanted now: put out every one;
Pack up the moon and dismantle the sun;
Pour away the ocean and sweep up the wood.
For nothing now can ever come to any good.

I'm busy researching an article on the limits of patentable subject matter, and I just wanted to jot down a few things without being restricted by the structure of the article. So here goes:

1. There are a lot of resources available on the BustPatents site which are pretty useful for discussing US law.
2. The fine arts/useful arts distinction seems like a good way to patrol the boundaries of the copyright v patents paradigms. The mere intellectual information and printed matter doctrines also seem to perform this function. Part of the problem at the moment is that patent law is spreading into traditional copyright areas like movie scripts.
   
3. I've got a good article which talks about the dual nature of data structures, and how they have both physical and logical aspects, and how this is generally misunderstood by the courts. This article is really great because it explains why software is a problem to some extent in that it also has logical aspects as well as physical aspects.
4. The aforementioned article also underlies the discussion in another article on how movies could become patentable as a result of misunderstanding this dual logical/physical nature in software and data structures. Basically, a printout of a program is patentable on the current US approach, which kind of kills off the printed matter doctrine. Then it isn't much of a stretch for a 'functional' document such as a planned movie structure to be considered similarly patentable.
5. I need to add something in about moving away from a focus on effects to a focus on the contribution. The trouble in Australian law is the idea that you have to focus on the whole of the invention when applying the subject matter test (same as in US law). The problem with this approach is that it ignores the practical impact of the patent. If you have new algorithm on an old computer, and you use the computer to satisfy the physicality requirement, you ignore the fact then that the patent in effect gives a monopoly on the algorithm, because the only use which would be made of it is on a computer. It makes it too easy for patent lawyers to use computers as a simple way of fitting the form of requirements but not the function. This point is tied to the duality of software and data structures as well.
6. On the patenting of fine arts, Ahronian has a website which shows how much art is now under patent. So much for that distinction, hey.

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EU patent fight hots up

Free speech & copyright butt heads (pun intended)

UN University undermines patent stimulate competition argument

Australian Universities should give away their research

"As the Australian policy and management consultant John Howard observes, researchers and research organisations will, except in very rare situations, earn more from being paid for their work (through contracts and consultancy) than from licences and royalties flowing from intellectual property or from income earned in spin-off companies."

This is for the postgrad lunch, but I thought it might prove a useful progress report.

1.  What is the working title of your thesis?

Software, Innovation and Imitation: Tailoring Intellectual Property Solutions to Meet the Needs of the Australian Software Industry

2.  In 100 words or less, describe what your thesis is about.

3.  Why did you chose this topic?

I've worked as a computer programmer for the last 10 years, and figure that there aren't too many people with a foot in both camps who can understand both the law and the technology. So hopefully, I'll be able to find something that others have missed.

4.  Explain the type of work you are doing (e.g. theoretical, empirical, etc).

It's largely theoretical (most IP research seems to be), although I do intend to try and gather some empirical data to support my hypotheses.

5.  Have you applied (or do you intend to apply) for an ethics clearance?

No.

6.  What have you done so far on your thesis?

Read almost every software patent case in the US and Australia back to about 1850. I've published one article on the topic.

7.  What is your favourite way to procrastinate from working on your thesis?

• Surf the Internet - starting with Slashdot.org (News for Nerds)
• Drinking coffee
  

• Writing software

8.  What is one thing that would make writing your thesis much easier?

A sane theory of the limits of patentable subject matter.

9.  What is the hardest thing so far about writing your thesis?

Writing words that I want to keep.

10. If you weren't writing about your current topic, what other topic would you choose and why?

Something on the relationship between free speech and copyright in software.

The Mono project could be considered an interesting case study in reverse engineering which would demonstrate the lead time to be expected on a large scale software development project. I think it took a a year to 18 months to release the 1.0 version after Microsoft .NET was released (including substantial APIs which made reverse engineering much easier). In that time, MS had released a new version of .NET and was well on the way to the next version. It illustrates that in software, independent creation is still a slow process.

Also, it is interesting because .NET is a patented technology, but I doubt that there would be any evidence to suggest that the Mono project relied on the patent document in order to implement the technology. I've read it, and it is extremely vague.

Finally, the positive competitive effects of an open source project are evidenced by the project - it brings .NET technology to competitor platforms, circumventing Microsoft's monopoly (and typically anticompetitive lock-in strategies).

In re Schrader, a US case decided at about the same time as IBM, talks about how the Freeman-Walter-Abele test (which still lives on in the US) requires a 'technologically useful effect'. This is of course very similar to the 'economically useful effect' test set out in NRDC. Thus it would seem to be possible to interpret NRDC in a way which is compatible with US jurisprudence on software patents.

I guess my main gripe is that Burchett J, rather than making use of the attempt to distinguish between discovery and invention in the field by reference to US jurisprudence, and the practice of the Australian Patent Office, chose to rely on a 20 year old UK patent case (Re Burrough's Application) because it followed NRDC. Burchett J points out that in NRDC the court point out that the distinction between discovery and invention can be in practice difficult to determine. So his answer seems to be that it is better to just give up and take a wide interpretation of the NRDC requirements. This is why Christie & Syme declared Australia to have the most liberal test in the world for algorithm patents.

Just because a job is difficult doesn't mean that you shouldn't bother.

There will be a lot of marking next week, so I thought I'd better wrap up my thoughts for the week.

1. The book "The Digital Dilemma" was a real find. It says that it gives an framework in which to analyse the impact of the informationn age on intellectual property thinking. Could be a useful tool. At the very least, it is a well written and interesting book of which I can't wait to read more.
2. Had a good chat with Di about the importance of trade secrets to software. It is something which she thinks I should school myself in more. Mentioned the Maggbury v Hafele case and David Brennan (who gave the guest lecture on it in IP last year and who might have written it up into an article). It seems like there is a gap in the literature which would allow further discussion of the benefits/disadvantages of this paradigm. Also, if the anti-sw-patent group want no patents, does this mean that more proprietary software development companies would end up using trade secrets? How could this be good.
3. Had a good chat thismorning with Daniel Stewart from ANU about software patenting. It helped to discuss some of my ideas with someone who was across the area. One interesting question he asked was whether I thought that you could draw a line in the sand between software inventions which matched the patent paradigm and should be patentable, and those which should not be patentable. Also discussed the one-to-many ratio of patents to software products.

That's it - I'm sure there was more but I can't remember it. Anyway, this should help reload after exam marking :)

Having your cake and eating it too

I've been doing a little bit of digging into trade secrets and the importance of them to software. Then it hit me - there is a real overlap issue between patents and trade secrets for software. The inspiration for this idea came from this page, combined with what I read about the problems of overlapping protection in the "mutant copyrights and backdoor patents"  but I think the idea is fairly original...

The idea is that the source code of software is generally kept secret, and is hence a trade secret unless disclosed (that is then, for all proprietary software). This means that when proprietary software vendors apply for patents, they not only get the statutory monopoly period associated with the patent, but they also get to keep the source code monopoly as a trade secret in perpetuity. Thus the usual bargain wherein the public get the benefit of having useful information released into the public domain at the end of the patent monopoly period is actually not happening completely, because the implementation which gave rise to the patent is still protected by trade secret law.

This gives real strength to the proposition that the disclosure requirement for software patents should require a disclosure of source code of the implementation of the patented algorithm.