software

Computer programming languages are interesting in their own right, as they represent humanity's attempts to communicate our ideas to our machines.

Article 6
The Scope of the Protection

(1) [Acts Requiring the Authorization of the Holder of the Right]

(a) Any Contracting Party shall consider unlawful the following acts if performed without the authorization of the holder of the right:

(i) the act of reproducing, whether by incorporation in an integrated circuit or otherwise, a protected layout-design (topography) in its entirety or any part thereof, except the act of reproducing any part that does not comply with the requirement of originality referred to in Article 3(2),

(ii) the act of importing, selling or otherwise distributing for commercial purposes a protected layout-design (topography) or an integrated circuit in which a protected layout-design (topography) is incorporated.

(b) Any Contracting Party shall be free to consider unlawful also acts other than those specified in subparagraph (a) if performed without the authorization of the holder of the right.

(2) [Acts Not Requiring the Authorization of the Holder of the Right]

(a) Notwithstanding paragraph (1), no Contracting Party shall consider unlawful the performance, without the authorization of the holder of the right, of the act of reproduction referred to in paragraph (1)(a)(i) where that act is performed by a third party for private purposes or for the sole purpose of evaluation, analysis, research or teaching.

(b) Where the third party referred to in subparagraph (a), on the basis of evaluation or analysis of the protected layout-design (topography) (“the first layout-design (topography)”), creates a layout-design (topography) complying with the requirement of originality referred to in Article 3(2) (“the second layout-design (topography)”), that third party may incorporate the second layout-design (topography) in an integrated circuit or perform any of the acts referred to in paragraph (1) in respect of the second layout-design (topography) without being regarded as infringing the rights of the holder of the right in the first layout-design (topography).

(c) The holder of the right may not exercise his right in respect of an identical original layout-design (topography) that was independently created by a third party.

(3) [Measures Concerning Use Without the Consent of the Holder of the Right]

(a) Notwithstanding paragraph (1), any Contracting Party may, in its legislation, provide for the possibility of its executive or judicial authority granting a non-exclusive license, in circumstances that are not ordinary, for the performance of any of the acts referred to in paragraph (1) by a third party without the authorization of the holder of the right (“non-voluntary license”), after unsuccessful efforts, made by the said third party in line with normal commercial practices, to obtain such authorization, where the granting of the non-voluntary license is found, by the granting authority, to be necessary to safeguard a national purpose deemed to be vital by that authority; the non-voluntary license shall be available for exploitation only in the territory of that country and shall be subject to the payment of an equitable remuneration by the third party to the holder of the right.

(b) The provisions of this Treaty shall not affect the freedom of any Contracting Party to apply measures, including the granting, after a formal proceeding by its executive or judicial authority, of a non-voluntary license, in application of its laws in order to secure free competition and to prevent abuses by the holder of the right.

(c) The granting of any non-voluntary license referred to in subparagraph (a) or subparagraph (b) shall be subject to judicial review. Any non-voluntary license referred to in subparagraph (a) shall be revoked when the conditions referred to in that subparagraph cease to exist.

(4) [Sale and Distribution of Infringing Integrated Circuits Acquired Innocently] Notwithstanding paragraph (1)(a)(ii), no Contracting Party shall be obliged to consider unlawful the performance of any of the acts referred to in that paragraph in respect of an integrated circuit incorporating an unlawfully reproduced layout-design (topography) where the person performing or ordering such acts did not know and had no reasonable ground to know, when acquiring the said integrated circuit, that it incorporates an unlawfully reproduced layout-design (topography).

(5) [Exhaustion of Rights] Notwithstanding paragraph (1)(a)(ii), any Contracting Party may consider lawful the performance, without the authorization of the holder of the right, of any of the acts referred to in that paragraph where the act is performed in respect of a protected layout-design (topography), or in respect of an integrated circuit in which such a layout-design (topography) is incorporated, that has been put on the market by, or with the consent of, the holder of the right.

Article 7
Exploitation; Registration, Disclosure

(1) [Faculty to Require Exploitation] Any Contracting Party shall be free not to protect a layout-design (topography) until it has been ordinarily commercially exploited, separately or as incorporated in an integrated circuit, somewhere in the world.

(2) [Faculty to Require Registration; Disclosure]

(a) Any Contracting Party shall be free not to protect a layout-design (topography) until the layout-design (topography) has been the subject of an application for registration, filed in due form with the competent public authority, or of a registration with that authority; it may be required that the application be accompanied by the filing of a copy or drawing of the layout-design (topography) and, where the integrated circuit has been commercially exploited, of a sample of that integrated circuit, along with information defining the electronic function which the integrated circuit is intended to perform; however, the applicant may exclude such parts of the copy or drawing that relate to the manner of manufacture of the integrated circuit, provided that the parts submitted are sufficient to allow the identification of the layout-design (topography).

(b) Where the filing of an application for registration according to subparagraph (a) is required, the Contracting Party may require that such filing be effected within a certain period of time from the date on which the holder of the right first exploits ordinarily commercially anywhere in the world the layout-design (topography) of an integrated circuit; such period shall not be less than two years counted from the said date.

(c) Registration under subparagraph (a) may be subject to the payment of a fee.

Article 8
The Duration of the Protection

Protection shall last at least eight years.

Here's a summary taken from http://www.tomw.net.au/blog/2006/04/making-australian-software-industry.html

CIIER estimates that in 2004–05, the Australian software product industry employed around 17 000 staff, supported by nearly 7000 development staff, and earned AUD 2.7 billion, of which $830 million went to Australian developers. International markets accounted for $290 million of this revenue, with $226 million going back to the software developers. The industry spends $66 million a year on R&D.

The computer software and services industry includes a large number of small firms. In June 2003, no less than 97% had fewer than 20 employees and 99.6% had fewer than 100. Nevertheless, a relatively small number of larger firms dominate most markets, of which the majority are foreign based multinationals though there are a few relatively large indigenous software firms.

Citation: In re Charles D. Prater and James Wei (1969) 56 CCPA 1376; 415 F.2d 1378

Jurisdiction: US Court of Customs and Patent Appeals

Facts: This was an application for a patent rehearing in relation to an invention concerned with spectrographic analysis. The application contained a machine for carrying out the invention in the form of an analog computer, but it was was envisaged that this invention could also be carried out by a digital computer.

The examiner rejected the appellant's method claims on the basis that the invention as claimed must be considered to be a process, and as such were readable as a mental process which was unpatentable. The examiner cited In re Abrams in support. The apparatus claims were also rejected on the basis that although the applications would have been entitled to claim the analog embodiment of the invention, the claim embraced an obvious modification of a general purpose computer, and hence strayed beyond the bounds of patentable subject matter. Hence the claims did not properly describe the invention as required by ß112. The board affirmed the positon of the examiner.

Outcome: The majority allowed a rehearing.

Ratio: Rich J in dissent said that none of the reasons advances for granting a rehearing was in compliance with the court's rule on rehearings.

Relevance: The majority opinion by Smith J is interesting for the way it deals with Abrams

There are a few juicy quotes by Rich J about software patents.

Quotes:

Smith J

At 1382: "The precedents which have been principally relied on as supporting the rejection of claims of this type are Abrams, supra, and Yuan, supra. As Yuan does little more than follow and adopt Abrams, it is to the latter case that we choose to turn as a starting point for our consideration in some detail of the problem presently before us."

At 1385: "It is important to note that Abrams disclosed no means whatever for performing the claimed steps ... of calculation and comparison. Certainly no analog computer for carrying out these calculations is disclosed in the Abrams' specification and at the time Abrams filed, ... programmable general purpose computers for calculations of this nature were still in the future. Thus, Abrams disclosed a claimed process including steps which could only be performed in the mind insofar as the teachings of the application were concerned. Abrams therefore represents a significant difference ... from the facture situation in the present case in which the teachings of the specification provide a full disclosure of apparatus for carrying out the steps in the claim without requiring any steps to be performed in the human mind. Additional teaching is also provided in the presenta pplication [1386] that the steps can alternatively be performed on other apparatus, i.e., a properly programmed digital computer, which would equally permit the process to be performed without involving steps performed in the mind by those skilled in the art informed of appellants' novel discoveries."

At 1386: "[M]uch confusion in subsequent interpretation of the Abrams decision has been caused by people misreading the decision as conferring judicial sanction upon the 'rules' formulated and proposed by Abrams' attorney. The confusion has arisen because the court, after initially declaring there was no necessity to embrace the rules, apparently adopted Rule 2 towards the later part of the opinion. We believe this later statement was advanced not to show adoption of the rules by the court but merely to point out that even if, arguendo, the court had adopted his rules, Abrams would still not have prevailed in his particular fact situation... The court thus hoist Abrams with his own petard."

At 1386: "It is also important to consider the two cases, Don Lee and Halliburton, supra, considered to validate the proposed 'Rule 2' [in Abrams' case]. [In Halliburton], the court decided the claims were invalid, saying: 'We think these mental steps, even if novel, are not patentable. Cf Don Lee...' When we trace back to Don Lee, ... the court said 'We conclude that appellee's patent claim No. 1 for a method of computation ... is not patentable. We agree with appellant's contention that such a computation is not `a new and useful art, machine, manufacture or composition of matter` within the meaning of [legislation antecedent to ß101]. Neither is it novel ...' It will be seen that this statement, which appears to be the genesis of the doctrine of the unpatentability of so-called 'mental step' claims, is not only unsupported by any citation of precedent but in its inception was directed to subject matter that was not even novel."

Discussing Cochrance v Deneer quote "A process is a mode of treatment..." at 1387: "This passage has sometimes been misconstrued as a 'rule' or 'definition' requiring that all processes, to be patentable, must operate physically upon substances. Such a result misapprehends the nature [1387] of the passage quoed as dictum, in its context, and the question being discussed by the author of the opinion. To deduce such a rule from the statement would be contrary to its intendment which was not to limit process patentability but to point out that a process is not limited to the means used in performing it."

At 1388: "We find it interesting in Tilghman and directly applicable to our analysis here is the reference... to a process as being 'an act, or mode of acting' and the further recognition that it is 'a conception of the mind, seen only by its effects when being executed or performed.' As such, it seems to us that Tilghman adds a recognizable dimension to Cochrane v Deneer which focuses attention on the mental aspect of process inventions whose patentability we presently determine under the express provisions of the Patent Act of 1952."

At 1388: "[T]he law does not require that a machine, to be patentable, must act on physical substances, for example, an electric meter. It does not seem consistent to impose such a requirement on the other category of 35 USC ß101 -- 'a process' -- without clearly evident and distinguishing reasons which are not thus far apparent."

At 1388: "In the Waxham case the [Supreme Court] said: 'By the use of materials in a particular manner he secured the performance of the function by a means which had never occurred in nature, and had not been anticipated by the prior art; this is a patentable method or process." It is noteworthy in the present appeal that although the appellants' novel calculations [1389] to be performed in the mind of a man might possibly to considered to be in nature, performance of the process of these novel calculations on a computer is by 'a means which had never occurred in nature'."

At 1389: "[W]e find nothing to indicate an intent of Congress or the courts to deny patent protection to process claims merely because they could alternatively be read on a process performed through the mind by the use of aids such as pencil and paper... We do not feel our reasoning need be encumbered by the so-called 'Rules' of Abrams for the reasons we have indicated. However, it is noted that in Abrams, unlike the present situation the claimed process could only be performed in the mind, so far as was apparent from the specification. The Abrams situation may thus be distinguished from that presently before us, in which there is adequate disclosure how the process can be performed ithout mental calculation. This distinction from Abrams leads us to our present holding which is that patent protection for a process disclosed as being a sequence or combination of steps, capable of performance without human intervention and directed to an industrial technology-- a 'useful art' within the intendment of the Constitution-- is not precluded by the mere fact that the process could alternatively be carried out by mental steps."

Rich J (dissenting)

At 1390: "[The Patent Office's] petition, which is most disrespectful in tone, charges us generally with ignoring and overlooking 'important issues' and 'prior adjudications of this court and others, including the Supreme Court.' More particularly, we [1391] are charged with 'Completely [disregarding]' the holdings in certain of our own prior cases. In the guise of demanding by way of a rehearing, 'the right to know why these pronouncements are ignored,' the solicitor is merely asking for further explanation of why we have refused to adopt his desired interpretation of our own utterances. The simple answer is that we did not agree with his desired interpretation. The reasons were fully developed in our opinion."

At 1391: "[T]he solicitor makes an argument to the effect that we have authorized the granting of a patent which would 'confer upon a patentee the right to exclude others from thingking in a certain manner.' This, we are told, would make the patent statutes, as we have construed them, unconstitutional as in violation of the First Amendment... We did not sanction claims which would preclude people from thinking, Prater did not ask for such claims, and surey no court would ever place such a construction on the claims which were before us... Prater's statement, in objecting to the petition, is that "There is no such thing as mental infringement" and that "thought is still unpatentable." This is unquestionably true.

It contains the following statement about software patents:

"[E]very program is threatened constantly by software patents. We
wish to avoid the special danger that redistributors of a free program will
individually obtain patent licenses, in effect making the program
proprietary. To prevent this, the GPL makes it clear that any patent must
be licensed for everyone's free use or not licensed at all."

For example, "useful, concrete and tangible result" (from State Street Bank). Seems like a sensible requirement. But what exactly does this mean. What does it relate to? Is it really any sort of limitation at all, when interpreted in such a broad manner as to require any physical manifestation at all?

Similarly "artificially created state of affairs", "merely intellectual information"

"Many people confuse the copyright that goes with source code with the patent rights that go with an invention.   The confusion comes from the idea phrase "patents on software."  It's a loaded phrase that can mean a lot of different things.  For example, protocols for interoperation such as TCP/IP and HTTP fall within the realm of software and such protocols could be patented (this becoming a patent on software).  But more often than not, software is an implementation of a business process and it's actually that process that's patented."

Essentially, all of the human effort is mental, and the end result may be completely intangible. In this sense, software is very close to pure thought, which has long been regarded as something that no one can own an exclusive right [over].

Captures my perspective on it fairly well.

At 264: Of the Jacobean phrase, it has been said that since the NRDC case it has been treated as calling for a decision as to what properly falls within the scope of the patent system, rather than  as providing an occasion for investigating the meaning of "manufacture"; WR Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (1st ed, 1981), p166. Cornish continues (at pp 167-168) that two main ideas recur when distinguishing categories of subject matter which may not be patentable. One is that techniques which related to living organisms (including humans) may call for special treatment... [265] The other recurrent theme is that "intellectual conceptions become patentable only to the extent that they have been embodied in technical applications". The present appeal concerns this second aspect.

At 286: [T]he primary judge found against the appellants on [the manner of manufacture issue]. His holding appears in the following passage (at 594):

The material feature of the claimed combination is the means by which Chinese characters are categorised by stroke-type category and stroke order ... and the use of such criteria to retrieve and display Chinese characters. That is, the procedures used to organise and process the data. The other integers of programming and computer hardware are merely conventional means to produce the desired result. ... The formulation of such criteria and their use as rules to organise and process data stored in a database in a conventional computer are the product of human intellectual activity lying in the fine arts and not the useful arts. The claim disposes no method of manufacture within the meaning of section 6 of the Statute of Monopolies and therefore discloses no patentable invention.

The appellants challenge that holding. They renew their submission, rejected by the primary judge, which his Honour had restated as follows:

The [appellants] submit the claim in the petty patent was a combination claim for a new apparatus. The apparatus was a computer processing apparatus for assembling text in Chinese language characters [287] which produces a particular result, namely, the retrieval and display of Chinese characters on screen for assembly in text. Although a number of the integers represented conventional and known computer hardware, display and processing systems including standard processing programs, the combination of those integers was a computer program or apparatus or programs supplying the Chinese character database, stroke-type category criteria and graphic display of Chinese characters created, when programmed, a new machine which operated in accordance with the steps detailed in the claim. It was submitted that the production of some useful effect, in this case the asembly of Chinese characters on a visual display unit, was sufficient to constitute the computer as programmed an invention under the 1990 Act.

At 287: The NRDC case (supra) remains of considerable importance in this field. It is to be noted that the decision changed the direction of the case law not only in Australia, but also in the United Kingdom. Accordingly, British decisions given before the commencement of the 1977 Act remain of particular significance in Australia when construing the 1990 Act. In both countries NRDC was, as Barwick CJ put it in [Joos], a watershed.

At 286: Section 1(2) of the [1977 British Act] declares not to be an invention for the purpose of the statute, anything which consists of: ... (c) a scheme, rule or method of performing a mental act, playing a game or doing business, or a program for a computer. ... However, the subsection goes on to provide that the exclusion operates "only to the extent that a patent or application for a patent relates to that thing as such".

At 289:  In Australia, when the 1952 Act was replaced by the 1990 Act, the new British legislation was not followed. ... This was a matter of deliberate legislative choice. The materials which make this plain are collected and discussed by Burchett J in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 267-270.

Our task thus involves consideration of concepts which have evolved, and are still evolving, in accordance with the classic decision in the NRDC case... [T]he right question thus becomes, is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies? The question is to be answered bearing in mind that the term "manufacture" has applications beyond limits suggested by its etymology, and that any attempt at precise definition of "manufacture" in s 6 is bound to fail. In the NRDC case (at 271), Dixon CJ, Kitto and Windeyer JJ said, in a passage which warrants repetition:

The purpose of section 6, it must be remembered, was to allow the use of the prerogative to encourage national development in a field which already, in 1623, was seen to be excitingly unpredictable. To attempt to place on upon the idea the fetters of an exact verbal formula could never have been sound...

At 290: [T]the phrase "any manner of new manufactures" has been interpreted over time in such a way as to contain within it distinct principles or doctrines concerned with patentability: Advanced Building Systems Pty Ltd v Ramset Fasteners (Australia) Pty Ltd (1993) 26 IPR 171 at 188-190, per Hill J... The essential point is that the grounds of revocation were capable of development by the common law and did so develop: American Cyanamid Co (Dann's) Patent [1971] RPC 425 at 435-436 (Lord Reid), 448-449 (Lord Wilberforce).

...

As this development continued, the phrase "manner of new manufactures" came to represent the residuum of the central concept with which NRDC was concerned, namely what the High Court called the relevant concept of invention.

At 291: [I]n the 1990 Act, manner of manufacture, novelty, inventiveness and utility are stated as distinct requirements of a patentable invention... Yet in the present case there are passages in the reasons of the primary judge (at 593) which suggest he was influenced in the determination of the issue as to "manner of manufacture" by asking whether what was claimed involved anything new and unconventional in computer use.

...

[A]fter the NRDC case the criterion of "manner of manufacture" has required a decision as to what properly and currently falls within the scope of the patent system. ... [I]n so far as "manufacture" suggests a "vendible product", this is to be understood as covering every end produced or artificially created state of affairs which is of utility in practical affairs and whose significance thus is economic (NRDC at 276-277).

...

"The impact of computer technology on the law of intellectual property has raised legal problems which have proved difficult if not impossible to answer within the framework of existing legal concepts..."

The last case relating to computer programs decided in the United Kingdom before the commencement of the 1977 Act was that of the two patent judges, Graham and Whitford JJ, sitting as the Patents Appeal Tribunal in International Business Machines Corporation's Application [1980] FSR 564. ... The software was a program designed to calculate automatically the selling price of stock or shares by comparing a set of buying and selling orders. It was accepted that the scheme was not itself novel, and that a completely standard computer could be programmed to perform it. Nevertheless, their Lordships, speaking as specialist judges of long experience in the field, held that the patent was good. They said (at 572) that what the inventor sought to claim was a method involving the operation or control of a computer, such that it was programmed in a particular way to operate in accordance with the inventor's method. More than "intellectual information" was involved because the method was involved in the program and in the apparatus in physical form.

Re Invention: "a method for producing a visual representation of a curve image from a set of control points
Per Burchett J:

At 220: It was objected that this claim did not define a "manner of manufacture". Rather, claim 1 was said to recite a mathematical algorithm, which it then wholly pre-empted. An algorithm, named for the Arab mathematician whose work on algebra popularised Arabic numerals in Europe, may be relevantly defined as a procedure for solving a given type of mathematical problem.

At 221: In the present case, the delegate referred to later refinements of the Freeman (supra) test.

At 223: Before considering further the precise point, grounded in the United States cases, in reliance on which the delegate refused the application, it is desirable to re-examine the broad principle which is in question. The leading authority is [NRDC], where the High Court considered the patentability of a new process for ridding crop areas of certain kinds of weeds... They pointed out (at 262) that if a new use of a known substance "consists in taking advantage of hitherto unknown or unsuspected property of the material", the situation is that "there may be invention in the suggestion that the substance may be used to serve the new purpose; and then, provided that a practical method of so using it is disclosed and that the process comes within the concept of patent law ultimately traceable to the use in the Statute of Monopolies of the words 'manner of manufacture', all the elements of a patentable invention are present."

At 224: They said "The truth is that the distinction between discovery and invention is not precise enough to be other than misleading in this area of discussion." These observations seem to be to be as applicable to the laws of mathematics as they are to those of biochemistry.

...

The court's conclusion (at 275) was that "a process, to fall within the limits of patentability ... must be one that offers some advantage which is material, in the sense that it belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour."

At 225: In the present case, it seems to me that the use of the algorithm is not different conceptually from the use of the compounds involved in National Research and Development Corp. Just as those compounds were previously known, so here, it is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers, and, in particular, to the production of [226] the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers and, for that reason, to be inventive. The production of an improved curve image is a commercially useful effect in computer graphics.

Nor, in my opinion, do the United States authorities preclude this view. The Supreme Court of the United States returned to the subject in [Diamond v Diehr] ... Rehnquist J (at 8) said: "It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection". He held (at 9) the mathematical equation was not "patentable in isolation, but when a process for curing rubber is decised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold ... "

...

Similarly here, the formula is applied to achieve an end, the production of the improved curve image. A method of producing that by computer, which is novel and inventive, is entitled to the protection of the patent laws.

At 1020: The specification does not contain any mechanical or electronic details of the construction of a computer. ... Similarly, the specification does not contain any description of any new programming device.
...
The invention described in the specification is, consequently, not a computer since it can be utilised with any kind of computer. It is not a programming medium as such, since any programming medium will do. ... It is therefore concerned with a new way of solving a specified group of mathematical problems or with a new way of programming a computer to solve such problems.

It is obvious from the very definition of 'invention' that a new way of solving mathematical problems is not patentable, no matter how meritorious or ingenious the new solution may be. The same may be said if the solving of problems is to be carried out with the aid of a digital computer. Even in the broader field of programming generally, as distinct from linear programming, the programme must be regarded as being in an advantageous manner and as such, is not patentable.

At 1021: But even if programming were to be considered as being 'a new manner of manufacture', it would still not come within the definition of invention given in the Act  because, as pointed out by Lloyd-Jacob J in Rolls-Royce Ltd's Application, (1963) RPC 251, at page 255:

It must additionally be borne in mind that, even where a manner of new manufacture is disclosed in a patent application, s.6 of the Statute of Monopolies excluded grants which are mischevious to the State by being generally inconvenient.

Computer programming is a relatively young art and, although many strategems and simplifications have been devised so far, a much greater number may be expected to be devised in the future. It would certainly be expected to be mischevious to the State and generally inconvenient if, after investing a million dollars in a computer, the owner were to find himself prevented from operating it efficiently, or in any other manner he may wish, or with any degree of privacy or secrecy he may desire.

It has accordingly been the practice of the Patent Office to refuse applications for patents where the invention consistent merely of a programme or working directions for a known computer.

At 2396: [T]he inventor's contribution appears to lie in the discovery that a flow table, apart from "illustrating history by numbering", contains also sufficient data for a circuit to be constructed. This may have been a very meritorious discovery, particularly in view of the fact that the existence of hidden wiring code within a flow table had probably not been suspected earlier. Nevertheless, the discovery of the code or the code itself cannot be considered as a manner of manufacture.

Invention: "An electronic computer comprising in combination a directly accessible storage, and indirectly accessibly storage, and a control circuit permitting block transfers of information from accessible storage, in which consecutively numbered locations of the indirectly accessiible storage are arranged in  spaced disposition in said directly accessible storage"

At 2393: ... it is clearly apparent that the differentiating feature is not a tangible feature of the computer. ... Even whilst operating, the transient allocation of specific addresses to locations does not alter the nature of the computer as a piece of equipment. Physically, the computer claimed is very much the same as any other computer of the same kind.

It has been implied however, that an approprate spacing of storage locations may have a simplifying effect upon programming procedures. Clearly, the mere programming of a known computer, even optimum programming, is in the nature of a scheme how to use that computer advantageously, and on the basis of the decision of the House of Lords in British United Shoe Company Ltd v Standard Rotary Machine Company Ltd (1918) 35 RPC 33 would nor be patentable. The same may be said about simplification of programming. On the other hand, a new copmuter which would be particularly suited for a specific programme or for a specific group of programmes could be patented.

At 907: Walter should be read as requiring no more than that the algorithm be "applied in any manner to physical elements or process steps" provided that its application is circumscribed by more than a field of use limitation or non-essential post-solution activity. Thus if the claim would be "otherwise statutory" id., albeit inoperative or less useful without the algorithm, the claim likewise presents statutory subject matter when the algorithm is included.

...

The goal is to answer the question "What did the applicants invent?" If the claimed invention is a mathematical algorithm it is improper subject matter for patent protection, whereas if the claimed invention is an application of an algorithm, s101 will not bar the grant of a patent.

At 764: The problem here, as we see it, is not one of computer-related inventions per se; it is one of mathematics-related inventions.

In the computer arts, §  101 problems tend to center around the use of mathematics in the claims, which define the invention for which patent protection is sought.  This is a natural consequence of the nature of computers.  A computer is nothing more than an electronic machine. It is characterized by its ability to process data, usually by executing mathematical operations on the data at high speeds.  By virtue of the speed with which computers operate, they are capable of executing complex or otherwise time-consuming calculations in fractions of a second.  Their use [**15]  in technology is analogous to the use of mechanical devices, such as levers, which provide mechanical advantage in inventions of a mechanical nature; they make possible, or practicable, the solution of mathematical problems which are impractical to solve manually due to the inordinate amount of time manual solution would consume.

A computer is not mysterious to one skilled in the art; it is merely a distinct type of machine. It will facilitate understanding the applicability of patent law to computer-arts inventions if it is kept in mind that the issues under §  101 in this area have arisen because the function of the computer has been to perform mathematical operations.  The problems revolve about the role of mathematics in the claimed inventions.

fn 4: For the purposes of this opinion, we use the word algorithm in the above-defined sense to refer to methods of calculation, mathematical formulas, and mathematical procedures generally.  We strongly disagree with the position taken by the PTO, see Petition of Commissioner of Patents and Trademarks for Certiorari, Diamond v. Bradley, No. 79-855 at 10-11, that the word algorithm as applied by the Supreme Court in §  101 cases is not limited to mathematical algorithms, but extends to the general meaning of the word which connotes a step-by-step procedure to arrive at a given result.  In re Chatfield, 545 F.2d 152, 156 n. 5, 191 USPQ 730, 734 n. 5 (CCPA 1976), cert. denied, 434 U.S. 875 (1977). Such a proposition, if accepted, would have the effect of totally reading the word "process" out of §  101, since any process is a step-by-step procedure to arrive at a given result.

At 765: Since a statutory invention may employ a scientific truth, a decision as to whether the invention utilizing such truth is statutory must necessarily rest on the relationship which the truth or principle bears to the remainder of the invention as claimed.

...
The solicitor has suggested ... a "point of novelty" approach to s101. Under such an approach, an invention would be non-statutory if the mathematical algorithm in the claim, as an embodiment of scientific truth, is at the "point of novelty" of the claim.

If this approach were to be adopted it would immeasurably debilitate the patent system. ... As an illustration ... we offer the example of certain improvement inventions, wherein the improvement resides in the application of scientific truth... [A] strict "point of novelty" approach to [such inventions] would place them, as a class, outside the coverage of s101 – and to no purpose.

At 767: In order to determine whether a mathematical algorithm is "preempted" by a claim under Freeman, the claim is analyzed to establish the relationship between the algorithm and the physical steps or elements of the claim.  In Benson and Flook, no such relationship could be found; the entire claim was, in each case, drawn to the algorithm itself.
...
Once a mathematical algorithm has been found, the claim as a whole n9/ must be further analyzed.  If it appears that [**24]  the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims), the claim being otherwise statutory, the claim passes muster under §  101. If, however, the mathematical algorithm is merely presented and solved by the claimed invention, as was the case in Benson and Flook, and is not applied in any manner to physical elements or process steps, no amount of post-solution activity will render the claim statutory; nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm.

At 768: Both the examiner and the board refused to separately consider applent's apparatus claims because the method and apparatus claims were deemed indistinguishable. This problem arises in computer-arts inventions when the structure in apparatus claims is defined only as "means for" performing specified functions... If the functionally-defined disclosed means and their equivalents are so broad that they encompass any and every means for performing the recited functions, the apparatus claim is an attemt to exalt form over substance since the claim is really to the method or series of functions itself.

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.

• Lemley, M & O'Brien "Encouraging Software Reuse" (1997) 49 Stan L Rev 255