Subject: Re: Examples needed against Soft Patents
From: Russell McOrmond <>
Date: Wed, 29 Dec 2004 11:43:05 -0500 (EST)

(Wow -- these are getting longer each time.  As wonderful as these are I 
think we're going to have to slow down a bit.  I suspect we all have 
year-end paid work that needs to get done ;-).

  While there are many arguments against software patents, the one that I
bring to policy makers are not the ones we are using now.  I use two:

  a) Patent policy is *economic* public policy that exists to provide
incentives for innovation.  Different subject matter exists in an entirely
different economic context, and thus economic analysis and not legal
analysis is needed to determine if a specific subject matter class should
be patentable.

  b) While good quality patents may provide incentives for innovation, bad
quality patents act as a chill on innovation.  Unless patent quality above
a certain level (I believe over 90% good quality is a good number) can be
achieved in a specific subject matter, then patents should not be granted
at all.  Patent quality in software within the USPTO has been found to be
approximately 40% to 5% good quality patents.

  Any other arguments get into the economic analysis or into the various
ways that information processes have little in common with processes
involving a manipulation of nature.  While the differences between
intangibles and tangibles, between natural and social sciences, and other
such things may be obvious to me, I will grant that there are many people
who can't tell the difference.  Since these conversations can be quite
long it is not the path that I take unless specifically asked by a policy

On Tue, 28 Dec 2004, Ben Tilly wrote:

> It was not my goal to say that the reasoning above should be
> convincing to you.  It was my goal to say that there are people who
> find that reasoning convincing.  And they're not trivially wrong.

  It is my belief that once someone has an adequate understanding of what
software is that they will then realize that the logic you expressed 
(on behalf of others you have heard it from ;-) is trivially wrong.

> The goal of the patent system is to pay people a temporary monopoly on
> their solution in return for them revealing it.  If the consequence of
> their revealing their solution is that someone else can readily
> implement it, then the temporary monopoly is not very effective, is it?

  This is one of the goals of the patent system -- revealing a process
that would otherwise be kept secret and then possibly "lost" to the

Lets look at this for software:

  a) Do software patents reveal the process to someone skilled in the art?  
How many of us who are software developers know what is claimed when we
read a patent?  If we were writing proprietary software, could we read a 
patent, implement the process, and license the patent?  I would suggest NO 
for most software patents, and that is not just the poor quality (would 
fail useful/novel/unobvious tests) software patents.

  b) Is it possible to *USE* software outside of a private environment 
without revealing the process?  Unlike manufacturing processes there isn't 
a separation between the process and the thing produced through the 
process, as the process is the product.  It it a machine?  No more than a 
thought is a body part.  Is it a chemical composition?  It isn't tangible 
at all, but it is a patent where it is the result and not the process that 
leads to the result that is being patented.

  c) Like other claimed purposes for patents we need to do analysis: is it 
better to provide an exclusive right or to allow things to possibly get 
"Considering the exclusive right to invention as given not of natural 
right, but for the benefit of society, I know well the difficulty of 
drawing a line between the things which are worth to the public the 
embarrassment of an exclusive patent, and those which are not. "
   Thomas Jefferson

  I believe if we as a society did this analysis, rather than leaving it 
to the legal profession to argue over the "true meaning of the word 
technical", then we would conclude that the embarrassment of an exclusive 
patent is far higher in information processes than any perceived benefit.

> I agree that it is an independently implemented solution.  But it is
> clearly a *derived* solution and I don't see the innovation in saying,
> "We don't need to put these physical transistors here, we'll just write
> the same logic in software."  Particularly not with decades of
> engineering experience in moving implementations either way between
> silicon and bytes.

  I believe this looks at the situation backwards.  I believe if you have
hardware that could be so trivially duplicated in software logic on a
generic computer then you would find that the original hardware was not
really worthy of the embarrassment of an exclusive right.  You don't get a
patent on all combinations of physical transistors, but a "new and useful
art, process, machine, manufacture or composition of matter".

  You may have an exclusive right in the form of an industrial design, but
this type of exclusive right is closer to copyright than patents.  While
you are still infringing this right if you simply change the layout on a
circuit board, it would not infringe this right if you solved the same
problem in software logic that was previously implemented in circuit

  It is only a derived solution if you believe that the solution is "the
set of all possible solutions that bring us from A to B".  Claims of that
type would generally be considered too broad and such a patent would be
considered a poor quality patent.  Just because you reached B does not
mean that you went there by the patented process.

  The engineering experience, and possibly the patented processes, would
be in the manufacture of the silicon, and possibly the processes by which
implementations are moved between silicon and bytes.  There are new
learnings about the forces of nature that possibly exist in both cases.

  The question we are asking here is if there should be exclusive rights
on the processes embedded within the bytes themselves.

How about the reverse.  Mechanical calculators and later electronic ones
were patentable.  Given they only carried out mathematical problems that
had been carried out in the heads of humans for thousands of years
(obvious prior art in the field of mathematics ;-), then how could these
calculators have been patented?

  Maybe the patent is not "the path to go from A to B", but a new and 
useful way of doing so that is considered entirely unique from previous 
ways of doing this.

  I don't see how implementing "A to B" in hardware, software or wetware
(in our brains) can be considered equivalent.  If they are between
hardware and software, then how can any machine that carried out a task
previously done by humans ever have been patented?

> >   In the past the Canadian courts got this right: software neither adds to
> > nor subtracts from the patentability of an invention.  If you take a
> > patentable machine or manufacturing process that happens to require
> > software to control the process then you still have a patentable
> > manufacturing process.  If you have some existing hardware and the only
> > difference is software, then all you have is the generic hardware and not
> > a "new computer".
> Why do people say, "they got it right" when they really mean,
> "they agree with me", and say, "they got it wrong" when they
> really mean, "they disagree with me"?

  You got me there ;-)

  I read the reasoning from the US courts and the reasoning from that
isolated Canadian decision.  I did not see the logic in the US decisions
which seemed dogmatic, but did see the logic in the Canadian decision.  
I'm not saying that the Canadian courts are better, and there are many
other Canadian decisions I don't see the logic in and don't agree with.

> The Canadian courts decided that the above is how they should interpret
> Canadian law.  To patent owners whose patents are now easily
> circumvented, this decision is unfortunate.

  Public policy like patent policy is not simply about what a narrow
special interest such as patent agents and their clients want, but what is
on balance of all the interests will benefit society.

> And certainly it is within the rights of Canada's legislature to pass
> laws which would make those patent owners far happier.

  Without public consultation?  Without economic analysis?  Without the
simplest of cost/benefits analysis?

  While it is possible to pass legislation without any consultation or 
analysis, I'm not so convinced it is within the rights of a democratically 
elected legislature to abandon their representative roll by doing so.

> Furthermore there is nothing intrinsic in the reasoning for why we
> have patents that suggests it should only apply to hardware.  The
> fact that it does can be seen as just an accident of history.

  It isn't about only applying to hardware, but the need to check for each
subject matter class whether the first principles that justified patent
policy still hold.

  a) will it provide incentives for innovation, or stifle innovation.
  b) is the embarrassment of a patent greater or lesser than the potential
loss of an "invention" due to secrecy or other lack of disclosure.


  Lawyers just look at the word "process" in the definition of an
"invention" and say that anything that can be considered a process should
be patentable.  This means to them that software (which is obviously a
type of process) should be patentable, and if ever asked they would
probably believe that all processes should be patentable including
parliamentary procedures, Robert Rules, acts of parliament, etc, etc....

  Legal analysis involving manipulating the meaning of the word "process"  
to serve the purposes of patent agents is the wrong way to have this
policy evolve, and any evolution must happen through economic analysis.

  Not including economic analysis of subject matter in the patent acts was 
a huge oversight, and one which we as a society must fix in order to 
reduce further embarrassment.

> Likewise in a computer with a piece of software, there has been
> an internal physical rearrangement.

  Just as new thoughts in the brain can be claimed to have a different 
physical arrangement.  This is totally unconvincing to me, and to be 
honest I have never been able to respond to this claim as it seems 
to totally ludicrous to me.

  The idea that a computer with different software in it is a "new 
machine" is something I can argue against as well as I can argue 
against someone who truly believes the world is flat.

  Can anyone else come up with a response to this?

> >   To believe otherwise is to start with the conclusion (patent lawyers
> > wanted a new type of monopoly) and then warp reality to try to come up
> > with a path that leads to that conclusion.
> I do not believe that I started or ended with the conclusion that
> patent lawyers wanted a new type of monopoly.

  You are relaying all the reasons that we have all been exposed to to
justify information process patents.  I don't know that these are reasons
that you independently came up with, and thus your motives for exploration
of these various excuses doesn't suggest why such time was spent to come
up with these excuses.

> It is true that the line of reasoning was intended to result in a
> specific conclusion (that if you accept patents, there is no obvious
> reason to say that you shouldn't have software patents), but the
> intention has no bearing on whether the reasoning is valid.

BTW:  There is another argument we have all heard embedded in there, which
is that any opposition to information process patents is really opposition
to all patents.

  I'm an example of someone who believes that proper economic analysis
done on each subject matter area would reveal entirely different results.  
And I do believe that there are subject matter areas where patents do
promote innovation, and where th embarrassment of a 20 year monopoly is
lesser than the loss of something learned through an invention.

  This isn't to suggest that only information process patents would be
different, but that there would be quite a bit revealed as different
between machines/manufacturing processes and pharmaceuticals (compositions
of matter).  Just as there are different business/incentive models
possible for innovation in information processes where exclusive rights
are simply not beneficial, I believe that there are appropriate arguments
that need to be made in pharmaceuticals as well.

> I just want to be sure that I understand what you're saying.  You
> mean that patent lawyers went to court and did their job - they
> presented their clients' cases as convincingly as they could.  In
> fact they presented the cases so convincingly that the judges
> were convinced!
> I'm not entirely sure what is supposed to be wrong with that.

  I'm not saying that the lawyers on behalf of the patent filers didn't do
their job.  I am suggesting that the other half of the case, the people on
the side of "the people" such as government lawyers, government
economists, public policy analysts, etc, etc -- that these groups who are
supposed to protect our collective interests did not do their job.

  This is a case where public policy was changed to benefit a very special 
interest.  I don't expect the patent lawyers to ever consider the public 
interest in their work, but I do expect public servants in the government 
to do so.

  And IMNSHO these public servants did not do their job, and still have 
refused to do their job.

> There is a rationale to patents.  We can argue until the cows come home
> about whether patent law says that software should be covered, or
> whether the omission is just a historical accident.  But the underlying
> economic question is whether patents do what they are supposed to do.  
> Or (in a related vein) whether they will do what they are supposed to do
> if they are applied to software.
> That is not a simple question.  But it is critical.

  The underlying question is a bit different, which is that the economic
question about whether patents do what they are supposed to do must be
done on a per subject-matter category basis.

  It is not a simple question, it is a critical question, and all that 
people like me are asking for is that the government do their job and seek 
to answer this question before granting new types of patents.

> Obviously a physical court house can't do that.  But it is possible
> to literally turn software into hardware - take software and build a
> custom piece of hardware that does exactly what that software
> would do, in the exact same way, but will do nothing else.

  I simply don't understand this logic: If you can go from A to B using
software, and can go from A to B using hardware, then the hardware and
software are equivalent.

  Patents were never intended to be an exclusive right on "all possible
methods to go from A to B", they are a disclosure of something learned
(traditionally about the forces of nature, but that is being eroded) as
part of the inventive process.

> Analogies can enlighten, but they can also mislead.  The division
> between software and hardware is not nearly as straightforward as the
> division between court houses and laws. If it were then there could be
> no question about whether it is legal to circumvent a patent on a
> physical device by building an emulation of that device in software.  
> But there can be and there is.

  You are starting with the conclusion that going from A to B via software
is the same as going from A to B via hardware, and calling it
circumvention of the patent.  Since I simply do not see these as the same,
I cannot see one as a circumvention of a potential patent on the other.

> You speak as if there were only one set of lawyers present. I've heard
> that there are generally at least two.  And at least one set should have
> been present with the intention of trying to make the dividing line as
> clear as possible.

  See above -- there should have been two highly motivated set of lawyers,
one representing "we the people". While I get the impression from the
Canadian case that such balance existed and that the judge provided some
very convincing reasoning in his conclusion, I did not see this in the US

  The largest reference in the US cases seemed to be a discussion about
patents intended by parliament to be on "everything under the sun made by
man".  We can then get into the question of what "made by man" means and
whether that requires manipulation of the forces of nature for the
creation of intangibles or whether that could have reasonably been
interpreted to include pure intangibles like information processes.

  We could get into that question -- but the government lawyers in the USA 
didn't bother.

> If the dividing line was truly as obvious as you're making it out to be
> in talking about court houses and acts of parliament, then shouldn't
> they have found it easy to clear up any attempt at confusion?

  Was there anyone in that courtroom as motivated as practitioners in the 
art to having good public policy in this area?  I think the answer to that 
was no.

  There were lawyers representing patent agents who obviously have a 
strong motivation to increasing patentability.

  There were lawyers representing patent offices, which also have a 
motivation to increase patentability.

  I didn't see evidence of other interventions.

  The conclusion reached is not surprising given the circumstances of the 
case.  The problem I have is that the circumstances were very wrong for 
trying to set good public policy, and there was nobody in that courtroom 
representing the public interest.

 Russell McOrmond, Internet Consultant: <> 
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