The software patent solution has been right here all along

Software patents have been an agent of change in open source over the last decade, as I explained in my keynote at the 8th International Conference on Open Source Systems this week. Most notably, the astonishing proliferation of software patents has forced technology companies to spend a lot of time and energy assembling defensive portfolios.

Moreover, software patents are written to cover not just the implementation of an invention but also its function — the idea behind it. The result: a fearsome threat to even the richest corporation, effectively closing whole areas of markets, no matter how innovative the alternative. Open source developers in particular have expressed concern because many of them have no corporate employer to defend them in the event of an attack by a patent holder. Software patents are bogeymen that every open source community must deal with.

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How is the open source community responding to the threat of software patents? Let me count the ways:

• The insertion into open source licenses of both patent grants to accompany source code contributions and patent “peace agreements” that threaten mutually assured destruction to licensees who engage in patent hostility
• The issuance of guidance to community members on how to treat patents and patent threats, such as that created by the Debian project
• The use of contribution agreements to get backup patent protections from contributors, such as that used by the Apache Software Foundation
• The creation of an extensive cross-community, cross-industry defensive patent pool for Linux in the form of the Open Invention Network
• A broad defensive scheme to publish details of innovations in open source so that any future patents claimed against it can be invalidated

What if all this effort could have been avoided simply be re-reading the law Congress wrote and understanding it differently? That’s the amazing claim made by Professor Mark Lemley of Stanford University in a new paper to be presented in October at the University of Wisconsin entitled “Software Patents and the Return of Functional Claiming.”

The fallacy of “functional claiming”

Lemley’s thesis is radically simple: “Most software patents today are written in functional terms,” he writes. “If courts would faithfully apply the 1952 Act, limiting those claims to the actual algorithms the patentees disclosed and their equivalents, they could prevent overclaiming by software patentees and solve much of the patent thicket problem that besets software innovation.”

In other words, when we say patents protect inventions, what we mean is they protect specific solutions to problems, rather than the idea of solving a particular problem. The design for a plough can be patented; the idea of ploughing a field can’t. A specific new drug that stops a headache can be patented; the function of using a drug to stop a headache can’t. Lemley explains how patent applications were increasingly written to go outside these bounds, culminating in a case in the 1940s where a judge finally declared patent claims that attempted to fence off a function — “functional claiming” — as an invalid use of patents.

In response, Congress was lobbied heavily to change the law and once again allow “functional claiming.” After all, it was a lucrative and powerful tool for controlling competition in new markets. Congress introduced the Patent Act of 1952, which reinstated the ability to make functional claims, but imposed conditions on how far they could go. The crucial part of the statute is section 112(f), which says it’s OK to write a patent claim that describes a new use for an existing thing in functional terms. The claim has to identify an established “means” — a thing to be used in a novel way — and can describe a new function for that item.

The reintroduction of functional claiming on these terms wasn’t the disaster one might expect. The new law worked well, greatly reducing the scope of patents claiming ownership of a function; when they were phrased in this way, they could only affect that function in association with the object described in the patent. According to Lemley, patent lawyers in many fields avoid this sort of “means-plus-function” claim language and instead use other linguistic tricks in their attempts to file broad patents.

But in 1952, no one anticipated the problem that would result when this language was applied to software. At some point, a clever patent attorney realized that if “a computer” was used as the “means,” it would present no obstacle to the scope of the “functions” that followed it. While “a computer” sounds specific to a judge, the consequences of Turing completeness mean any computer could be used as the “means.” As a consequence, section 112(f) of the Patent Act was treated as a gateway to patenting just about any idea imaginable in software. Lemley says:

A patentee who claims “means for calculating an alarm limit” is invoking the limits of section 112(f), and the claim will accordingly be limited to the particular software algorithm or implementation the patentee described in the specification. But if the same patentee claims “a computer programmed to calculate an alarm limit,” courts today will read the term “computer” as sufficient structure and will understand the claims to cover any computer that can calculate an alarm limit, however the calculation is programmed.

Taking the statute seriously

The result of this “innovation” was an enormous proliferation of software patents, followed by the eventual emergence of companies whose only role is to extract money from genuine innovators using threats of patent suits. The paper cites Bessen and Meurer’s estimate that patent trolls have cost the economy over $500 billion so far. Lemley estimates that tens, perhaps hundreds of thousands, of patents use this conceptual trick in the field of software to gain patents on ideas — the very act we’re led to believe is impossible.

Lemley surveys a range of solutions others have proposed to this problem, from abolishing software patents (he contends it would be impossible because of the lack of a rigorous definition of “software patent”) to demanding publication of algorithms. But Lemley asserts there is a far simpler solution. He observes that in other areas of patent law, the courts have required that the “preexisting thing” justifying the use of the “means-plus-function” structure to make a patent claim “must be more than mere window-dressing.”

What if, in a future case where a large corporation is defending itself from software patents, it simply asked the court to apply the same logic to those patents? Lemley suggest this means:

… not simply “a computer” but “a computer programmed in a particular way.” Specifically, as recent Federal Circuit indefiniteness cases have shown, patentees will have to disclose the algorithms they use to achieve particular ends, and the patent will be limited to those algorithms and equivalents thereof.

If this argument succeeded and, of course, survived the appeals process, a precedent would be set that a patent using the devious practice of treating a general-purpose computer as if it were a specific device would no longer stand. All existing patents would be affected; Congress would not need to intervene; the software industry could spend that half-trillion dollars on innovation instead of litigation; and most important to me at least, the open source community could rest easy and get back to creating free software.

I encourage you to read Lemley’s paper in full — it is well-written and highly readable. On the way to his conclusion, he eloquently describes why the software patent system is so broken, the damage it’s doing to the economy, and the different proposals to deal with it. While many would would prefer if the entire patent system were swept away, Lemley is in favor of a limited ability to patent software — to mend, rather than end, the system.

Legal experts have been calling for such a solution for some time. According to Andrew Updegrove, a leading lawyer specializing in technology issues and standards:

One of the things that’s often forgotten is that part of the original rationale for granting monopoly rights to first inventors was that, in exchange, those inventors would disclose their inventions in order to share them with the world. The problem today isn’t disclosure anymore (instead, it’s granting patents that shouldn’t issue, and enforcement of valid patents against innocent, independent inventors). That said, anything that narrows patents and prevents them from being asserted beyond reasonable parameters would be a help. What we need now is a case that presents an appropriate opportunity for Professor Lemley’s argument to be presented, and a judge that is willing to accept it.

Could Lemley’s proposal possibly work? Who knows? The law and the courts don’t readily surrender to mere logic. The comments on an article about the paper in the law section of OpenSource.Com suggest other legal professionals have questions about the proposal. To determine the real value of Lemley’s proposal, we needs a future defendant in a patent suit to be bold enough to give it a try. However, many of those defendants may be making too much money from software patents themselves to want to upset the system.

But if it is indeed feasible, it’s an elegantly simple solution to a problem that’s kept open source developers awake all day and affected their programming at night. I hope someone makes the attempt.

This article, “The software patent solution has been right here all along,” was originally published at InfoWorld.com. Read more of the Open Sources blog and follow the latest developments in open source at InfoWorld.com. For the latest business technology news, follow InfoWorld.com on Twitter.