Outgoing Director of the USPTO, David Kappos, responded to critics of software patents in a recent interview. “To the commentators declaring the system is ‘broken’ I say, ‘give it a rest already, and give the AIA a chance to work.’ Give it a chance to even get started. But we’re not done. Not nearly.”
“Patent protection is every bit as well-deserved for software-implemented innovation as for [other technological innovations]” Kappos stated. However, he also acknowledged that software patent protection must be “properly tailored in scope, so that programmers can write code without fear of unfounded accusations of infringement.”
Mark Lemley of Stanford University offers a way to perform the “tailoring” Kappos is calling for. Lemley suggests there is a current gulf in software patents between what the invention actually is and the broad claims in patent applications. Lemley reminds us the problem is not new, and it was addressed by the U.S. Supreme Court and in the patent law rewrite of 1952 in which Congress allowed patent claims to use functional language to describe an element of their invention. The disconnect here is that use of functional language in a claim does “not permit the patentee to own the function itself…”
Of course, the crack in the dam has now grown to a flood. Broader and broader claims have been allowed, and inventors many times now claim “not only what they invented, but what it does.” Lemley’s solution?
“…by applying the rules of means-plus-function claims to software, we could begin to get a handle on the software patent issue. Indeed, ending functional claiming may be the only way out of the software patent morass. As long as patentees can claim to own the problem itself – not just the solution – defining better boundaries and invalidating obvious patents won’t do much to make the patent mess go away.”
There is a notice in the Federal Register indicating the USPTO recognizes there is a problem with the quality of software patents. They are looking for feedback in the form of comments, and there will be two roundtable events, one in Silicon Valley and one in New York, both in February; the first topic relates to how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language. Our guess is Professor Lemley will have a front row seat.