An introduction to intellectual property law from "Computer Law - High-Tech and Information Law" part two

Because of its length, the chapter is famous in parts. Here is the second part dealing with the change of attitude in the USA

3.3 Changing the approach in the US¹

In Pesach XNUMX:²Diamond v. Diehth From 1981, as mentioned, the Supreme Court of the USA specifically stated that inventions related to software can be patented. In Pasa'd, the appeal was accepted against the patent office's refusal to register as a patent an industrial process for treating synthetic rubber, the innovation of which was data processing with the help of software that would streamline the process.

For the first time in the Supreme Court of the United States of America, it was explicitly established in the Supreme Court of the United States that a patent can also be registered on a mathematical algorithm (which is the basis of computer software), when it does not solve a given or abstract mathematical problem, or repeats a known formula, but when it Applied in a process or assembly that performs a function that the patent laws come to protect (such as an industrial process). It was also determined that the patent application must be examined in its entirety, as a whole.
The most problematic issue in registering a patent on computer software in the US is whether the software is included within the scope of the areas defined by law as patentable. These so-called fields "Statutory subject matter" include:³

1. Processes
2. Machines
3. Articles of Manufacture
4. Compositions of Matter

The basic test in this matter that has been consolidated in the case law since the Diehr Psd is whether the software constitutes a mathematical algorithm in itself, in which case it is not registrable since it does not apply within the scope of these fields.

A test between two stages was adopted for the purpose of examining this question:
Does the registration request repeat, directly or indirectly, a mathematical algorithm. If not, the software is registrable, if so it is still registrable if the algorithm meets one of the following conditions:
It is applied specifically for the purpose of defining or streamlining the process sought for protection.
It is part of a protectable process according to patent laws.

Many judgments were added to the Diehr PSD, mainly by the Court of Appeals for the decisions of the Registrar of Patents (the CCPA, Arkea which has since been revoked) which reiterated this determination. Following Peshad and the additional rulings, the Patent Office also issued a directive in which it reiterates Peshad's approach⁴ . Since Passover and the issuance of the directive, the number of applications filed to register a patent for computer software or software-related inventions has quadrupled (see below).

The registration is usually carried out in patent classification No. 364 whose title is "Electronic computers and data processing systems" and is the "special type for electrical devices and suitable methods for performing data processing operations in which there is a significant change in data or for performing calculation operations" as defined by the US Patent Office.

"Data processing" is defined in this context by the Ministry as "a systematic operation on data in accordance with a set of rules which ends in a significant change in the data."
"Calculation operations" are defined as limited arithmetic and/or logical operations performed on or with signals representing numbers or values."

Today, patenting of inventions related to software is used mainly in the areas of process control, computer applicable business methods and human-computer interfaces.

An examination conducted by the Committee on Property Rights in the Computer Section of the Michigan Bar Association regarding software patents with 'pure' business implications that were received in the USA between 1982 (after the aforementioned Diehr Psd) and the end of 1990 in two of the classification subcategories 364 raised⁵ Because from 5 such patents granted per year in 1982, the number rose to 50 in 1990.

The growing tendency of the Patent Office to register software patents was also recognized in the federal courts in Pasadeh ⁶Merrill-Lynch A federal court confirmed in 1983 - that software that presents a data processing method for the purpose of managing a cash account (CMA Cash Management Account) fell within the scope of the subjects that can be registered for a patent according to the law (Statutory Subject Matter - and therefore the patent registered by the Merrill-Lynch company on the software is valid, This is despite the fact that the application does not specify any device or hardware to perform the management operation itself.

The trend of granting software patents, as well as the conflict between supporters and opponents of this trend, are increasing. The conflict between the parties reached its climax with the granting of a patent to the Compton New Media company for techniques for searching information in databases using the multimedia method, techniques that many companies use. Following the many criticisms from the industry and lawyers, the patent registrar announced in an unusual step that the patent will be re-examined based on new information ⁷.

Among the few lawsuits that have so far dealt with the validity and infringement of software patents, was the famous lawsuit in which Stac Electronics sued Microsoft claiming that the DoubleSpace software - which Microsoft marketed as part of the DOS 6 software - infringes two patents it owns that make up the Stacker personal computer data compression software it owns⁸. After the jurors awarded damages in the amount of 120 million dollars in favor of Stac, and the court issued an injunction and an order instructing Microsoft to return all copies of the software distributed in the world that infringe the patents, the parties reached a compromise, in which Microsoft purchased a portion of Stac shares for a considerable amount.

Despite the continued controversy between supporters and opponents of registering patents on computer software, a number of decisions recently given in the Federal Court of Appeals indicate that the trend to allow the registration of patents on software has strengthened to such an extent that even a formal mention of hardware of any kind qualifies the application for patent registration.

That's about it ⁹Alappat The court (which discussed the matter with a full panel of eleven judges - en banc) determined that an invention dealing with a way to change the degree of illumination of pixels displayed on a screen, so that their undulating movements are less pointed, is an invention of a patentable machine, and not of an inexhaustible mathematical algorithm Eligible for registration.

The court relied heavily on electronic components included in the application, such as filters, ROM memories and arithmetic logic units. The court also ruled that an ordinary computer programmed by new software can be considered a new "machine" as a patent.

In the matter ¹⁰Lowry The court ruled that data structures stored in computer memory represent electrical or magnetic structures in computer memory that can cause a tangible improvement in the computer's functioning, and are therefore eligible for registration and are not abstract information; The court also ruled that the doctrine of printed material (which states that in order to register a patent on printed information a functional connection must be shown between it and the paper on which it is printed) does not apply to information processed by a machine.

also in the matter ¹¹Beautiful eyes The court ruled that computer software embedded in diskettes is a service for patent registration and the doctrine of printed matter does not apply to them.

on the other hand ¹²Found The court ruled that an invention detailing a method for calculating the distance between two points in some abstract space repeats a mathematical algorithm and contains nothing beyond the mathematical algorithm, and therefore is not eligible for registration. Unlike in the Alappat matter, the invention did not specify anything beyond flow charts regarding the method of mathematical calculation, and there was no reference to the hardware underlying the invention or on which the invention is applied.

Following the uncertainties that arose in connection with software patent registration, the Patent Office held long discussions, which included conferences and hearings in order to formulate a position on the issue, and following them published in February 1996 a final version of instructions, which were intended to guide the office's examiners in examining the suitability of applications for registration. ¹³ The guidelines have no normative status, and were formulated based on the laws established in the courts.

The guidelines facilitate the qualification of software patent registration, and they include the following presumptions, which the office will assume when examining the eligibility of the application in its entirety for registration:

• A computer or any other programmable device whose operations are controlled by a computer program or other form of software shall be considered a 'machine' under the law.
• Memory read by a computer which can instruct the computer to act in a certain way when used by the computer will be considered an 'article of manufacture' according to the law.
• A series of specific execution steps that will be performed by or with the help of a computer will be considered a "process" according to the law.

3.3.1 The provisional application procedure - Provisional Application

Since June 1995, patent applicants in the US have had an efficient and inexpensive tool available to them, which gives the applicant many advantages, especially for start-up companies that develop new technology that is in its initial stages. This tool is the provisional application procedure, which was introduced into the American patent law as part of the law for the implementation of agreements ¹⁴GATT.

The provisional application is a procedural procedure that precedes the regular patent application by a period of up to one year, the purpose of which is to allow the applicant in the US to benefit from the statute of limitations of that year, during which he can submit a patent application in any other country that is a member of the Paris Convention (even before submitting an application the patent itself in the USA). The date of submission of the provisional application is 'caught' by the applicant, and thus he can prevent the registration of an identical patent both in the USA and in the other countries that are members of the Paris Convention, and this before investing the considerable time and money required to submit a normal patent application.

The provisional application is an inexpensive procedure (the registration fee costs between 75 and 150 dollars), and is formally simple: there is no need to describe the required claims and there is no need to attach an Information Disclosure Statement, but rather the description of the invention and its application and use in a concise and clear manner, so That a person skilled in the field of the invention will be able to understand and use the invention (general diagrams and drawings will still be required).

If a normal application for patent registration is not submitted within a year, the provisional application is automatically void. The application and the information contained in it are not published in any official publication and the application is not even examined by the examiners of the patent office, so that if the applicant decides not to proceed with the registration of a patent, no sensitive information from his point of view is disclosed. The examination period begins only from the date of submission of the regular application.

Recently, many doubts have been raised about the strength of the protection provided by the provisional application, in light of a particularly important decision made by the extended appeals committee of the European Patent Office. Resolution G 02/98 does not refer, of course, to temporary requests, but the law stipulated in it is relevant and applies to such requests as well.

As a matter of fact, the decision discusses the scope of the protection granted by the right of first refusal (which is granted in other countries by virtue of submitting an application for a patent in one country), in light of the fact that between the submission of the first application for a patent, and the submission of the additional applications, additional knowledge accumulates that may lead to changes in the application. In the committee's decision, a very narrow rule was established, according to which the right of first refusal will only be recognized if the subject of the claim derives directly and clearly from the description of the original request.
It follows that a provisional application, being a preliminary application, will have to be very detailed in order to grant a right of way, and in fact, approach in terms of the level of detail in the description to the level of a normal patent application.

Comments

1. For a preliminary discussion, see: 1988, D. Bender, Software Protection, White & Case, New York CJ Millard, Legal Protection of Computer Programs and Data, London 91.p, 1985
2. See note above.
3. Title 35 USC (1976) Section 101
4. Manual of Patent Examining Procedure, 1983 Section 2110
5. Survey of US Business Software Patents, State Bar of Michigan, 56th Annual meeting, September 25-27, 1991.
6. Paine, Webber, Jackson & Curtis v. Merrill, Lynch, Pierce, Fenner & Smith, Inc. 564 F. Supp. 1358 (1983)
7. For coverage of the issue, see the New York Times, from January 3, 1994.
8. Stac Electronics v. Microsoft Corporation, Case No. USDC C-93-0413-ER (Bx).
9. 33 F.3d 1526 (Fed. Cir. 1994).
10. 32 F.3d 1579 (Fed. Cir. 1994).
11. no. 95-1054 1995 WL 286698 (Fed. Cir. May 5, 1995).
12. 42 F.ed 1376 (Fed. Cir. 1994).
13. The guidelines can be found on the website of the US Patent Office, at: http://www.uspto.gov.
14. the Uruguay Round Agreement Act, Pub. Law 103-465 (1994) within the framework of the law, the duration of the patent protection period was also changed: from a period of 17 years starting from the date of registration of the patent before the old law, to a period of 20 years starting from the date of filing the patent application.

* Naomi Ami Asia is a lawyer, Office Naomi Asia & Co. The office of attorney, patent editors and notary serves, among other things, as the representative of the BSA organization (the organization of software companies that deals with copyright issues of software companies) in Israel.

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