Saturday, December 03, 2005

Software Patents

When I was in law school in the mid-fifties of the last century I never took---nor wanted to take---a course in patent law, but I did learn somehow one bit of legal folk wisdom about patents that was current at that time: ''All patents are valid and enforceable, except for those that have been reviewed by the Supreme Court; no patent that has been reviewed by the Supreme Court is valid or enforceable.''

Since the creation of the Federal Circuit in 1982, however, the Supreme Court has had occasion to decide very few patent cases because all the patent cases that would in the old days have been decided by the various different circuit courts of appeal are now all heard by the Federal Circuit and thus there is never any conflict between the circuits and a conflict between the circuits is the usual basis for the Supreme Court deciding to hear a case.

Over the years since 1982 the Federal Circuit has held repeatedly that innovations in computer software---in computer programs---can be patented. The leading case in the Federal Circuit on this subject is In re Alappat, 33 F3d 1526 (Fed. Cir., 1994), even though, way back in 1972, the Supreme Court had held in Gottschalk v. Benson, 409 U.S. 63 (1972), that a claim in a patent application that describes a computer program---a so-called ``algorithm''---is not patentable.

Thus we now have the strange situation where most lawyers, including most members of the patent bar, have to assume that software patents are valid and that the Federal Circuit has in effect overruled the decision of the Supreme Court in Benson even though the Court has never been very sympathetic when lower courts have refused to follow its decisions.

Of late, however, the Supreme Court has evidenced an increased willingness to review decisions of the Federal Circuit in patent cases. When one couples that with the fact that there is more and more evidence these days that software patents impede rather than support the progress of science and the useful arts, I am almost willing to predict that within the next few years the Supreme Court will once again declare that claims in patent applications describing computer programs are not patentable and that therefore so-called software patents are not valid.

It should be noted, however, that that prediction will not come true if no one is willing to bear the expense of taking such a challenge to the Supreme Court or if no one dares to raise in a petition or an appeal to the Supreme Court the fact that there is a conflict between the Court's holding in Benson and the Federal Circuit's holding in Alappat.


Anonymous Laurent GUERBY said...

The recent Microsoft decision to not go before the Supreme Court against the Eolas patent, and to just try to go to the Supreme Court for some peripherical aspect instead of the core of the subject is very revealing of who really benefits from patents. The big corporation don't want yet to get rid of software patents, they estimate (wrongly in my opinion) that they will survive the patent trolls (lawyers who have patents but no product).

Another point is that "freedom" oriented associations like the EFF and the FSF do not want to go to the Supreme Court on a software patent case, they're too much afraid to loose.

When I asked the FSF legal counsel about going to court against a software patent in my home country (France), he went to great length to discourage the action giving the risk.

Another issue is that it's quite hard to find good IP lawyers willing to go against the system that feeds them, at least in France...


6:36 AM  
Blogger aicra said...

Prof. Junger,

Very interesting and useful information!

By the way, I just took the LSAT yesterday. Guess I have a lot to look forward to. I can't wait to take the patent class! :)

8:47 AM  

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