Legal Issues

by Mike Masnick

UK Rejects Software Patents That Don't Actually Describe Process

from the a-decent-test dept

One of the reasons that defenders of the current patent system often give for the importance of keeping the system, is the idea that it benefits society by revealing ideas that otherwise would be kept secret. That is, indeed, one of the benefits... if those ideas wouldn't have come out otherwise and if the publication of the patent actually revealed anything about the invention in question. All too often we've seen that this second part is missing. Patents describe something extremely broad and general, so as to reveal as little as possible, but make sure as much as possible infringes on it. It seems like it would be a reasonable "test" of the validity of a patent to see if someone could use just the patent itself to replicate the invention in question. It seems like some judges in the UK agree. The Court of Appeals in England has ruled against two software patents, specifically noting that someone who knows the basic subject area should be able to replicate what's described in the patent with just the patent alone -- and these patents fail that test. In fact, the ruling said: "that the patent was missing vital details, contained wrong equations, demanded a higher level of expertise than allowed and that it relied on material external to the patent." In other words, the patent itself did not actually explain the invention it was trying to cover, but rather hinted at what it might be. With the huge awards for patent infringement going around, an increasing number of patents seem to be written the same way -- so it would be nice to see more examinations of patents that look at this particular factor and whether or not the patent actually does try to explain the invention for others to use, or simply word it broadly enough to catch random infringers.

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  1. identicon
    elislider, 19 Dec 2006 @ 4:33am


    jaysus, finally some sense in the patent world. now maybe the american courts will catch on. one can only hope

    reply to this | link to this | view in thread ]

  2. identicon
    The infamous Joe, 19 Dec 2006 @ 5:03am


    One small step for man...

    reply to this | link to this | view in thread ]

  3. identicon
    Matthew, 19 Dec 2006 @ 5:03am

    Ironically the US courts dealing with the same case found differently and forced the defendants to pay out in the case, saying they had indeed infringed on the patent. If only they'd looked at it in exactly the same way, and judged on whether the patents really did describe the said software, instead of just agreeing it vaguely infringed the vague patent.

    reply to this | link to this | view in thread ]

  4. identicon
    Nobody Special, 19 Dec 2006 @ 5:07am

    Fair test

    Unlike many articles on this site, this represents fairness. It is not (for instance) fair to base the test on market success. And part of the patent system is to protect those who can't get their invention to market, while allowing others to know the invention is available.

    Often this site takes the slant that true innovators are the ones who successfully get a product to market. This just simply isn't the case. Microsoft is a prime example. Many times their "innovations" are really the material of a company they purchased, then put into their packaging.

    But describing a vague process or product that is not workable is definitely NOT the answer. At the very least, a patent holder should be able to produce a working model of what is covered (before the patent is issued). Then patents will protect the little guy who simply can't move from model to market.

    reply to this | link to this | view in thread ]

  5. identicon
    misanthropic humanist, 19 Dec 2006 @ 5:10am

    no winners really

    I was going to submit this yesterday, but anyway here's what I see...

    Halliburton vs Smith was first heard in the US where the judge screwed it up very badly by finding for Halliburton. He clearly had no clue about the technical details of the case. It turns out that the "patent" in question was for an implementation of a fairly obscure torque formula used in the design of drill bits. This formula is quite standard physics and has been known to metallurgists for eons, but was written into said software enabling the rapid development of mining drills. Since Halliburton could not obtain a patent on the physics they tried to gain a competetive advantage by claiming Smith had infinged a software patent by using the same formula in their own design tools.

    However (and here's the complicated bit (no pun)) - Halliburtons patent was vague, alluding only to the use of a particular formula in the domain of drill design. They did not specify the details of the formula or its utility in the patent itself but claimed that this was "implied" and that they held "supporting documentation" referred to by the patent which explained the process. Of course this documentation was not publicly available.

    When the case was heard in the UK they lost. Because the patent did not actually contain enough information for a skilled practicioner in the field to reproduce the solution *from the patent alone*. In other words - claiming you have a patent on a process, but not disclosing that process in detail within the patent is not acceptable.

    Halliburton appealed, Judge Jacob found against them and denied then leave to appeal again. Case closed.

    This does not represent a victory against software patents.

    It represents a victory against vague patents which do not ultimately promote innovation by publishing methodology. Halliburton tried to have it both ways, to hold a patent on a process but hide the details of that process.

    The losers are still you, me and the rest of the industrialised world since none of us can legally try to write and sell a *better* piece of drill design software using a well understood but unpatentable physical principle. The interpretation of this as a "software" patent allows them to patent the unpatentable. Meanwhile, a simple copyrighting of the source code would have served the purpose of protecting Halliburtons R&D investment and forced Smith to write their own interpretation of the physics formulas.

    reply to this | link to this | view in thread ]

  6. identicon
    Bumbling old fool, 19 Dec 2006 @ 5:26am

    Here's a stupid question...

    Why isn't anyone suing the USPTO for failing to perform due dilignence in the review of patents before granting them?

    Kudos to the UK for this one.

    reply to this | link to this | view in thread ]

  7. identicon
    Matthew, 19 Dec 2006 @ 5:40am

    Re: finally



    reply to this | link to this | view in thread ]

  8. identicon
    `Zidane Tribal, 19 Dec 2006 @ 6:05am


    i try to keep out of the patent arguments, but for once i am glad some sense has been seen. as a brit i often read news about US patent lawsuits and shake my head at the sheer stupidity of them, its good to see that, at least here in the uk, such patent litigation is still reaching some stumbling blocks.

    now if only they could implement this at the patent application stage....

    reply to this | link to this | view in thread ]

  9. identicon
    Pixcavator, 19 Dec 2006 @ 7:04am


    "It seems like it would be a reasonable "test" of the validity of a patent to see if someone could use just the patent itself to replicate the invention in question". This test is IN THE DEFINIITON of patentability in the US. To clean up the mess, the USPTO should just follow the law.

    reply to this | link to this | view in thread ]

  10. identicon
    Sanguine Dream, 19 Dec 2006 @ 7:09am

    Re: Fair test

    Actually I get the sense that most of the articles here give just the opposite slant you mention. They often point out how big business will do anything (including rewritting the law) stop the real innovators (usually small timers) from making any money.

    reply to this | link to this | view in thread ]

  11. identicon
    Thomason, 19 Dec 2006 @ 7:13am

    It is

    This too is a req'mt in U.S. patent law, which requires the applicant to describe "the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art make and use" it.
    Apparently, the enablement defense never was seriously pressed in the U.S. suit over this patent.
    You are correct, it's a good rule, and software patent applications that are conceptual and not enabling should be tossed.

    reply to this | link to this | view in thread ]

  12. identicon
    Enrico Suarve, 19 Dec 2006 @ 9:31am

    Re: no winners really

    True enough but the one thing this trial does show is that the buggers will not always be able to get away with it

    Its also a nice high profile refresher course in how these things are SUPPOSED to work since the US patent office can't usually be bothered doing their jobs properly

    Yey to Judge Jacob - I hope he went home to a huge brandy and fine cigars

    PS it was also refreshing to see someone shove one up Halliburton being the big global planet fuckers that they are ;0)

    reply to this | link to this | view in thread ]

  13. identicon
    Anonymous Coward, 19 Dec 2006 @ 3:04pm

    Re: Here's a stupid question...

    I believe that in the US one must first get the government's "permission" to sue it.

    reply to this | link to this | view in thread ]

  14. identicon
    Anonymous Coward, 19 Dec 2006 @ 3:06pm

    Re: patentability

    To clean up the mess, the USPTO should just follow the law.
    Who's to make them and what is their punishment if they don't?

    reply to this | link to this | view in thread ]

  15. identicon
    maria a, 20 Dec 2006 @ 6:22pm

    Re: patents

    Like i said, the only real winner here is osama bin laden. what is everyone waiting for? i'd like to know Coca-cola;s secret formula, too! And tase all of those UCLLA students if they can;t stand being in their kitchen. i agree with anonymos -- what is thier punishment for, anyway?

    reply to this | link to this | view in thread ]

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