The Hindu Business Line : Tailored fit eludes software

IN fashion shows, one usually asks, "Where're the clothes?" but today, as I write this, the top question is "What's copyright?" especially after a designer threatened legal action against another designer and an actress for `copying' his clothes and using the same for a song sequence in a yet-to-be-released Bollywood movie.

"Does Copyright Provide the Best Protection?" asked Andrew Beckerman-Rodau of Suffolk University Law School, in a paper written more than two decades ago.

According to him, patents, with their attendant time and cost overheads, provided only "a questionable means of protecting software", whereas trade secret law was more effective for the purpose.

An opposite view - that "software is at core a utilitarian artifact, better suited to the protective mechanisms of patent than those of the alternative copyright" - is what you'd find in a March 2005 research paper from Stanford Law School. It is titled Designing Optimal Software Patents, authored by Dan L. Burk and Mark A. Lemley.

"Over the past three decades, the US patent law has come to fully embrace the patentability of computer software," write the authors, and add that this has rapidly become the international standard.

Their complaint, however, is that "the present contours of software patenting are poorly tailored to the realities of the industry, and require adjustment in order to foster software innovation."

Disclosure and obviousness

A relevant read, in the context of what has been happening to Microsoft's Chimney, because the paper discusses at length the doctrines of obviousness and disclosure. Courts there have held that software patentees need not disclose "source or object code, flowcharts, or detailed descriptions of the patented program", and it is enough if `high-level functional description' or what is known as `means-plus-function format' is provided. As a result, little or no detail about programs gets disclosed in the patent.

When applying the `obviousness' doctrine, courts consider if one of ordinary skill in the art can make the patented invention without undue experimentation.

To illustrate, the authors cite a case that involved Amazon.com's `one-click' shopping feature. The court found it to be `obvious' based on "certain references describing the desirability or feasibility of such a system in general terms, and one prior system that delivered data online in response to a mouse click."

Amazon had argued in vain that the one-click feature was `technically difficult to implement'; the court pointed out that the prior art generally described such a system as both desirable and feasible.

Burk and Lemley explain a serious implication: "For a program to be non-obvious to those of such skill in the art, it will have to be an extremely significant advance over the prior art."

Thus, "while disclosure is a minimal hurdle for software patents, obviousness can be a rather tough one." Reason: non-uniformity.

In a few cases courts have rejected efforts to interpret claim language at a high level of abstraction and thus to encompass products across generations.

For instance, in Digital Biometrics Inc vs Identix Inc, "the court construed narrowly a patent claim to `image arrays' storing a two-dimensional slice of video data, which were merged into a `composite array' storing a fingerprint image."

Accordingly, the "defendant's systems, which constructed the composite array directly rather than by using two-dimensional slices, did not create `image arrays' within the meaning of the claims." As if to equalise, there are also cases where the courts found equivalence between "two different types of software programs written in different product generations."

Inappropriate to the industry

The authors forecast that if the current policy were to prevail, the few patents that overcome patent hurdles would "disclose virtually nothing about the detailed workings of their invention and will likely be broadly interpreted to cover a variety of mechanisms for implementing the basic software invention." As a result, the industry will be dominated by "a relatively small number of broad patents".

The paper concludes that such an outcome will be inappropriate for the software industry where rapid, cumulative, and incremental innovation are key characteristics.

"By adjusting the doctrines of obviousness and disclosure to allow narrower but more frequent patenting, as well as by invoking experimental use and related doctrines to permit reverse engineering, courts can tailor the patent system to better serve the innovation needs of software production," prescribe the authors, in support of an innovation-friendly regime.