Should software be patentable? That's the wrong question to ask

Marty Goetz — the man granted the first software patent in 1968 — says a true invention implemented in hardware is equally patentable if implemented in software
Written by Marty Goetz on

It doesn't matter whether a true invention is implemented in hardware or software, it should still be patentable, argues Marty Goetz — the man who was granted the first software patent in 1965.

A New York Times article, A Bull Market In Tech Patents, on Google's purchase of Motorola Mobile in August, said:

"Patents, experts note, work well when an invention can be clearly defined, as in the patents that cover new chemical compounds — a new drug or petrochemical, for example. But a smartphone, they add, is a bundle of information technology, including hardware, software and techniques for sending and receiving voice, data and video.

"In a recent blog post, David Drummond, Google's chief legal officer, wrote that a 'modern smartphone might be susceptible to as many as 250,000 potential patent claims, depending on how broadly those patents and claims were interpreted'."

Many of those claims may be software claims, which may be true inventions, while many may not. Yet anti-patent zealots say all software consists of ideas, mental processes or mathematics and is therefore not patentable subject matter.

Invalidity of certain software patents

What these zealots should be arguing is that many software patents issued by the US Patent Office, including most business-method patents, should never have been issued. With that I heartily agree. In fact the US courts are beginning to recognise that certain classes of software patents are invalid.

But there is a valid class of software developed by the software industry. This industry is made up of thousands of product and service companies. It's recognised as one of the top three manufacturing industries in the world with 2013 revenues forecast at $457bn (£290bn).

Many software product companies can be thought of as high-technology manufacturing entities. Many of their products are state of the art, developed in a competitive, fast-moving environment that requires rapid response to meet user demand.

Highly skilled personnel are employed in these companies and many have advanced computer science degrees, including PhDs. And because of their complexity, many programs are written using software engineering disciplines. When these programs are inventions, patent protection is important to help protect these companies' investments.

But why all this confusion between mental processes, ideas, mathematics, software and inventions? I believe the main reason is that for the past 45 years those for or against software patents have been debating the wrong question. They've been asking: "Is software patentable?"

A very different debate

I believe the debate would have been very different if it focused on the question: "Is an invention that is patentable in hardware, equally patentable if implemented in software?" Recently, Silicon Valley debated the question of software patents and innovation.

I have been involved in this software controversy for many years. It began when I and my small software company, Applied Data Research, applied for a patent in 1965 for a Sorting System. Basically, my invention was a machine process for...

...sorting data on a general-purpose computer with tape drives that could read data in a forward direction, but not backwards — those were early IBM drives.

There were many sorting patents using special-purpose hardware before mine, but none that used a general-purpose computer. The following sorting patents were referenced in my patent application and were described as through and/or circuitry gates, and as methods and apparatus for sorting data: Sorting Device, Fillebrown, 5/1961 #2,985,864; Sorting Apparatus, Guerber, 5/1960 #2,935,732; Apparatus for sorting of Recorded Digital data, Dirks 3/1966 #3,242,466.

The patent was issued on 23 April, 1968, and a computer publication heralded my patent in a page 1 headline, 'First Patent is Issued for Software, Full Implications not Known Yet'. Fortune magazine called it an "unprecedented patent".

Reducing circuitry to a mathematical algorithm

Has there ever been a controversy about whether an invention using hardware circuits is patentable? I doubt it, even though hardware circuits are much like software in that they can be reduced to a mathematical algorithm.

The software products industry is competitive and needs patent protection as much as any other tech industry. Those software doomsayers who say software is just ideas, mental processes or mathematics would change their mind if they examined the different phases of the life cycle of a software product.

During the definition phase software companies describe its functionality, its specifications, the environment in which it must operate, and its operating characteristics. During the design phase, they develop and define all its interfaces, break down the functionality into modules, and do all the engineering so that the product can be properly implemented, maintained and enhanced during its lifecycle.

During the implementation phase the software is debugged, tested, and goes through quality assurance. During the delivery phase there is alpha and beta testing, documentation, installation, and training. Often software companies sell the product to other companies where the software becomes a component of a larger system and is repackaged.

During the maintenance phase the company warrants its workmanship, and guarantees the correction of errors and defects. Finally, during the enhancement phase the software is improved, enhanced, upgraded, and new models, or releases, are announced.

Note that these terms are all consistent with a manufactured product: research, competitive analysis, functionality, specifications, operational environment, operating characteristics, interfaces, modules, engineering, implemented, debugged, tested, quality assurance, alpha and beta testing, documentation, installation, training, OEM, component, system, repackaged, maintenance, warrants, workmanship, guarantees, errors, defects, improved, enhanced, upgraded, and models.

Machine processes are patentable in software

From 1968 until 1980, my previous company, Applied Data Research, filed Amicus briefs in the Prater & Wei, Benson, Johnson, Flook, and Diehr US supreme court cases, in which we argued that a machine process patentable in hardware is equally patentable in software. Here is exactly how we posed a question of law in our 1980 Diehr brief:

"Whether a computerised machine or industrial process that is patentable subject matter under 35 USC 101 when constructed with a hardware program — wired circuits — would also be patentable subject matter when constructed with a stored computer program — ie, firmware or software?"

In summary, it is a fact that software and hardware circuitry are interchangeable.

The US Patent and Trademark Office is in agreement with that question of law. In 1996 it published its Examination Guidelines for Computer-Related Inventions (Final Version)(PDF). The guidelines stated the following in its introduction:

"The guidelines alter the procedure office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in hardware or software."

In summary, it is a fact that software and hardware circuitry are interchangeable. As noted in Hardware/Software Tradeoffs: A General Design Principle? (PDF) the decision to put certain features in hardware and others in software is based on such factors as cost, speed, reliability and frequency of change.

So it is up to the courts and the patent office to put the same constraints and criteria on the issuance of patents that show the preferred implementation of the invention in software as it puts on the issuance of patents where the preferred implementation is hardware circuitry.

Martin Goetz was a founder in 1959 and former president of Applied Data Research, a $200m (£125m) company that was traded on the New York stock exchange before its acquisition by Ameritech in 1986. His company was the first company to sell a software product commercially and was a pioneer of the software products industry. He received the first US software patent in 1968. He testified as an expert witness for the Justice Department in the IBM suit in 1976. In 1989 he was elected to the Infomart Information Processing Hall of Fame along with Bill Gates and in February 2000 was elected to the New Jersey Inventors Hall of Fame. Currently, he is a private investor and management consultant to software product firms.

For the opposite point of view on software patents, read Software patents are legalised extortion by Mike Lee of Appsterdam. 

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