Why software patents are trivial

Most software patents are trivial and broad. The reasons are to be found in the patent system itself rather than in the insufficiencies of the examination process. On the one hand, the requirement of "non-obviousness" is not and can not be as performant as many "patent reform" proponents seem to wish. It can work only as one (weak) filter among several, which in combination serve to raise the overall score rate of the patent system, i.e. the ratio of "good patents". The extension of patentability to software comes at the expense of several needed filters. The system has thereby been so badly compromised, that, no matter how the non-obviousness screw is turned, it is unlikely that its score ratio can be raised back to a level that could justify its continued existence.

A problem of law, not of patent examination

By browsing through our European Software Patent Database, you can easily compile a "horror gallery" of impressively trivial and broad patents. It will be much more difficult to find even a single claim object that a programmer would find admirable and possibly worthy of a special exclusion right.

Some people say that this is because the patent offices do not do their job well. If the criteria of "novelty" and "inventive step" aka "non-obviousness" were applied 100% correctly, these people say, software patents wouldn't do much harm. Some have been prophesying for a decade that is only a matter of time until this problem will be solved. However the solution seems further away than ever.

The following dialogue between Ramon Garcia Fernandez, a spanish information scientist, and Steve Probert, deputy director of the British Patent Office, conducted 2000-12-20 on a publicly archived mailing list, goes right to the heart of the problem:

Fernandez:

Probert:

Fernandez:

Probert:

As can be learnt from this dialog, the non-obviousness criterion is not what the naive engineer or programmer thinks it is.

Criteria such as "novelty", "non-obviousness", "technicity", "industriality" may seem intuitively reasonable, and the naive patent professional may believe that they are the very yardsticks of reason.

The naiveté of both the engineer and the patent professional consists in forgetting that "the law is an ass", as the proverb goes.

The primary function of the "non-obviousness" criterion is not to assure what an engineer or programmer thinks is a reasonable "inventive height", but to provide a filter that can be applied by patent examiners in a predictable way.

Applicability and reasonability are two entirely different requirements, which need not not match.

It is enough if the "non-obviousness" filter helps, in combination with other filters, to yield a reasonable amount of "good patents" in the end. Patents will be deemed "good" if the scope of exclusion is felt to be

  1. sufficiently broad to allow the patent owner to at least earn back the patenting costs (costs of patent acquisition and enforcement, disadvantage incurred by disclosure)
  2. sufficiently narrow to avoid imposing unjustified costs on competitors (e.g. to make inadvertent infringment unlikely).

The "non-obviousness" filter is a means of raising the score rate of the patent system, i.e. the percentage of "good patents".

We have proposed means of estimating this score rate for various fields. It seems to be well below 50% in most fields and below 1% when it comes to software and business methods.

Why not just raise the "inventive step" standard?

The Fernandez-Probert dialog illustrates what everybody in the patent trade knows: the criterion of "inventive step" as it stands is not designed to sort out trivial patents by itself, but to help, in combination with other filters, to raise the score rate of the patent system.

It is very difficult to prove that even the most trivial new idea does not contain an inventive step. The EPO's Examination Guidelines of 2001 even admonish examiners to be very critical of such proofs, apparently for good reasons:

The EPO basically treats "inventive step" as an extension of "novelty". In order to prove "lack of novelty", an opponent must point to one single prior art document whose teaching falls into the scope of the claim. If no single document is found, the opponent will try to show that the person skilled in the art would have arrived at the teaching by combining two documents. In this case the claimed invention is said to be unpatentable due to "lack of inventive step".

In the case of software patents, the person skilled in the arts rarely even consults documents. New programming problems occur all the time, and "inventing" a solution on the fly is the normal way to go. Most such solutions are not even published in any information science journal that an examiner might consult for testing their novelty. Rather, the program will usually also function as its own publication --- a form of publication which can pose a severe challenge for the novelty concept of the patent system.

Yet not every innovation in the field of computing is produced on the fly, and some major advances are discussed in some highly-respected journals. So, shouldn't we try to raise the inventivity standard, so that those really resepectable achievements can be singled out for rewarding by a patent (or a patent-like exclusion right)?

Maybe. It sounds almost as tempting as "lasting world peace" and "real socialism".

Even if lawmakers wanted to seriously tinker with the existing patent system and "raise the inventivity standard", as has become a mantra in some "patent reform" proposals, they would encounter enormous practical difficulties:

fuzziness of "invention height":

triviality by sequentiality:

Incommensurate blocking effect due to non-triviality:

The broken regulative: technicity, industriality

Traditionally there has been one other criterion that has helped if not to sort out trivial ideas then at least to significantly lower the ratio of trivial patents: the requirement of "technicity" or "industriality", which limits the patent system to applied natural science and matter-producing industries, more precisely defined as the requirement that forces of nature be part of the problem solution which is rewarded by the patent. In most countries of the world this requirment has in one or the other wordings been part of the patent law tradition at least until recently. The European Parliament has reaffirmed this requirement in September 2003 by voting for a strict definition of the concepts "invention", "technical" and "industrial" along these lines. This criterion excludes those "post-industrial" innovations that are based only on abstract calculus and do not require experimentation. Finding a new causal relation between natural forces and a physical effect is usually much more costly than finding a new mathematical relation.

While mathematical relations are composed of tiny functional elements that combine to a perfect whole, the physical world is causal rather than functional, and the whole is not the sum of the parts. Material phenomena may be described by mathematics, but such description is at best an approximation. Even a system of lego bricks will usually not work out the way you you may have built it in your mind. The more the system becomes complex, the more deviations can accumulate into unforeseeable effects. Undisturbed cleanrooms exist only in the world of ideas.

When the patent system is no longer limited to industrially applied natural science, its score rate plummets. Software is an art of abstraction and software patents come as a result of an opening of the patent system toward the abstract and functional, a proliferation of "function claims", i.e. the patenting of unspecified "means" to achieve some so-called "technical effects". This means that problems and not solutions are claimed. Since no new causal chain between material means and material results is involved, it becomes difficult for the patent applicant to claim his "invention". It will usually be neither permissible nor economically rewarding to claim the specific mental steps by which a computing problem is solved. Rather, the patentee will try to claim the input and output (i.e. the "technical effects") of the operation. However, unlike in chemical patents, there are no "surprising effects" to be claimed. Everybody knows that a computer can output calculation results to the screen. The only difficulty lies in knowing how to tell the computer to do it, and that is routinely left to the thousands of creative programmers, who, if allowed to do so, could independently devise hundreds of different creative solutions, all of which produce the claimed "technical effect", but none or few of which are disclosed in the patent description. These and similar problems have been analysed in detail by some of the patent examiners who are struggling with them (see Dr. Swen Kiesewetter - Köbinger 2000: Über die Patentprüfung von Programmen für Datenverarbeitungsanlagen, Softwarepatente ohne Grenzen and Dr. Swen Kiesewetter-Köbinger: Stellungnahme zur Patentierbarkeit von Softwarekonzepten). There is moreover a literature of mathematicians and epistemologists who explain in detail why the models are broken (see Tamai 1998: Abstraction orientated property of software and its relation to patentability) when the requirement of technical character (concreteness and physical substance) is given up. The german Federal Court of Justice already warned of this in the concluding remarks of its Disposition Program decision of 1976, which laid the foundations for the non-patentability of software in Germany:

As foreseen by the Federal Court in 1976, the introduction of software patents has opened a can of worms. It has not only removed the only viable criteria for limiting the scope of patentable subject matter, but also broken the models of the patent system on which requirements such as novelty, non-obviousness and enabling disclosure are built. It has overturned the balance of the patent system, leaving it behind in a state of inconsistency and dysfunctionality.

The European Parliament's vote has given the patent community a chance to repair its system. By reintroducing the requirement of concreteness and physical substance (technical character), the score rate of the system can perhaps be brought back to acceptable levels. Due to the unwieldiness of the system, there may not be many such chances. If this chance is missed, people in a large majority of disciplines may soon be voicing doubts about the legitimacy of the whole system and pressing for radical reform in unforeseeable directions. Judging from the cyclical movements of the patent system during the last two centuries, it would not be surprising if a failure by the patent institutions to seize their chance could open the way to the strongest anti-patent wave that history has seen so far.

Further Reading

Report on Software Patents by Joaquin Seoane (professor of the Universidad Politécnica de Madrid) and Ramon Garcia Fernandez

Enlightening Advice of a Patent Lawyer to Software Companies (cf Claus Dendorfer 1998: Patente und der Schutz softwarebezogener Erfindungen)

Bronwyn H. Hall & Rose Marie Ham: The Patent Paradox Revisited

Lester C. Thurow 1997: Needed: A New System of Intellectual Property Rights: Squeezing today's innovations into yesterday's system simply won't work

Newell 1986: The Models are Broken

Gregory Aharonian: The Patent Examination System is Intellectually Corrupt

Third Paradigm between Patent and Copyright Law

Why software patents are trivial (last edited 2011-09-18 00:59:59 by mages)

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