Kickstarting an Old Patent System for the New Software Era

by Fenwick & West LLP
Contact

Software patents have been having a rough time of it lately. It seems everyone has something bad to say about them, from the courts to the press, and even some software engineers.

And truly it is software that is being singled out as the villain in the patent universe—Vanity Fair has yet to publish an expose on “the razor blade wars,” nor has the Supreme Court addressed the important question of whether a chainsaw is merely an abstract idea. Patents on starting a car with just one click have seldom been the subject of disdain in the blogosphere.

This nadir, however, presents an opportune time to look for creative solutions to patent protection for software, including a new opt-in alternative for obtaining software patents.

Fundamentally, software is different from other kinds of technologies. Unlike mechanical devices we can see, touch and observe directly in operation, software is invisible, hiding out inside our television sets, smartphones, refrigerators and cars.

While in theory a software innovation should be entitled under the existing patent statutes to the same protection as a new physical machine, the courts and the public often act as though patents on software are allowing applicants to get away with something undeserved. A new kind of windshield wiper blade is clearly worth protecting—we can literally see the improvement. But the software application used to design the blade to have such a high degree of effectiveness? Well, that’s just creating some algorithms—maybe some hard math, but nothing patent worthy.

1. Creating a New Software Patent System

Many in the patent bar and on the courts have struggled mightily for over two decades to articulate the rationale by which existing law should cover innovations in the software industry just as robustly as in the physical world. While those arguments remain valid, there is something to be said for treating software differently for purposes of patent protection. Not because it is less deserving, but because our system for granting and enforcing patents is out of sync with how the industry operates.

The software industry differs from other industries in several respects, and many of those inform how we might design a new software patent system. Some things to consider are speed, enforceability and term.

Consider the pace of software evolution, in which applications are often refreshed, revised and upgraded within periods of months or just a couple of years. Now consider that under the existing patent system, it can easily take three to five years to get an issued patent that can be enforced against an infringer. A new software patent system, therefore, must result in faster issuance of patent rights through a modified examination system. Under the current system, examiners study each claim of each application for both novelty and obviousness. Under a modified system, examiners could simply search for novelty, leaving the question of obviousness to litigation as is now done in New Zealand. Alternatively, software patent applications can be limited to a small number of claims, or the applicant could designate which claims should actually be examined. Software patents would then issue much more quickly, allowing them to be enforced while the innovations they describe are still technologically relevant.

Next, we can adjust the patent term. Today’s utility patents have a term of 20 years measured from their earliest non-provisional filing date. Adjusting for various examination delays and statutory extensions, patents are typically enforceable for about 15 to 17 years. In many industries, patents grow more valuable with time. This is perhaps most true in the pharmaceuticals industry—consider the growth of Viagra and Lipitor sales over their patent term. In those industries, a longer term is key.

Not typically so for software. Innovations in this space typically have limited longevity. One of the standard battle cries against today’s software patents is they end up being asserted years later against unsuspecting defendants through tortured interpretations of their claims that go well beyond the scope of what the inventor originally envisioned. A shorter term for software patents—seven years, perhaps—would address this concern while also mitigating the anticompetitive effect inherent in patents.

The third aspect of a new software patent scheme relates to enforceability. In the existing patent system, all issued patents are presumed by statute to be valid. The onus is on a defendant in litigation to prove otherwise by clear and convincing evidence. A defendant who can prove the patent is invalid escapes paying damages for infringement, but nonetheless is left with a huge legal bill for his trouble.

2. Shifting the Litigation Burden

In a modified software patent system, the tradeoff for a less rigorous examination to obtain the patent is an increased burden on the patent owner in litigation. This may include, for example, a lower standard imposed on the defendant to invalidate—for example, a preponderance of the evidence standard instead of a requirement for clear and convincing evidence. If the examination process does not include an obviousness analysis, then indeed the burden will be on the patentee to rebut a showing of obviousness by a defendant.

Remedies may also be limited—by making injunctions unavailable, for example, or by capping damages. Other reforms currently being discussed in Congress such as a loser-pays system would also serve to limit litigation and encourage settlement.

Of course, many innovations in the software space are pioneering, and applicants may anticipate that they will have long-term value. A software patent scheme would therefore be an opt-in system, allowing the applicant to select the system deemed most appropriate for the invention.

Instead of trying to force the square peg of software innovations into the round hole of a patent system designed for inventions of a prior era, we should take the opportunity to fashion a system that better serves the needs of the software industry and the public as a whole.

Reprinted with permission from the July 17, 2014 issue of The Recorder.

 

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Fenwick & West LLP | Attorney Advertising

Written by:

Fenwick & West LLP
Contact
more
less

Fenwick & West LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!