What's the Deal with Software and Patents?

Lora Bentley

When Microsoft filed a patent infringement lawsuit against GPS maker TomTom not long ago, it raised several questions about software, patents and the effect that open source and other collaboratively developed software is having on the quest to reform the existing patent system. I decided to call on some attorneys who specialize in that area to see if they can shed some light on the details.


Last week I spoke with Phil Marcus, a Maryland attorney and electronics and software engineer who concentrates on intellectual property issues. As a point of clarification, he reminded me that most software is not subject to being patented. Nearly a decade ago, the U.S. Supreme Court decided that certain algorithms or "programming recipes" could be patented as "business methods." (And that may soon be limited further, he said, depending on how the Supreme Court handles a recent decision from the U.S. Court of Appeals for the Federal Circuit that only those "business methods that run on specific machines or somehow "alter matter" can be patented.)


Apart from "business method" patents, then, software is subject to the Copyright Act, which can be found at Title 17 of the United States Code. Some, however, argue that software should not be subject to copyright restrictions either. For them, Marcus says, the market has found a solution:

The open source license allows a user to freely copy code -- or even modify and distribute -- but not to sell it for money or money's worth. That seems to me a reasonable balance, because the writers control whether to license for money or license for free under an open source license.

Given this information, it would make sense that at least some of the patent claims at issue in the Microsoft vs. TomTom case are "business method" patents. And since we don't know yet how the Supreme Court will come down on the recent Federal Circuit decision, or if the issue will be brought before the high court in the first place, the state of software patents will remain in flux unless and until Congress speaks on the issue.


I will be speaking to other patent and software attorneys for their insights in the days to come. Next up: Greenberg Traurig's Heather Meeker.


Stay tuned.

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Add Comment      Leave a comment on this blog post
Mar 6, 2009 1:22 PM Lee Lee  says:

Mr. Marcus does not appear to be registered as a patent attorney with the U.S. Patent and Trademark Office.  As a result, he may not be aware that there are thousands of software patents in the U.S. Europe, Japan, and other countries.  In re Bilski, recently decided by the Federal Circuit is up for cert.  Members of the patent bar hope the Supreme Court takes this case to overturn the Federal Circuit's narrow interpretation of Supreme Court decisions that runs counter to what the Supreme Court has stated in those decisions.

Mar 7, 2009 8:00 PM Phil Marcus Phil Marcus  says: in response to Lee

Lee has I think confounded a patent for a business process or method that is implemented on a computer, on the one hand, with patenting run of the mine code taht no one happened previously to have written.  The latter is adequately protected by copyright.  For a discussion of what has been patentable the past ten years or so, see http://en.wikipedia.org/wiki/Software_patent.

I happen personally to hope the SCOTUS takes the Bilski case and reverses it, because I believe a process/algorithm invention, if novel and not obvious, is worthy of public protection, as a matter of advancing the U.S. economy, (and because the distinction between things visible to humans, and bits and bytes encoded in invisible electron streams was rendered without a difference by the physics discoveries of Einstein, Schoedinger, Bohr and others in the 1920s and 1930s).  Of course, they may take the case and affirm, further destabilizing all those process and algorithm patents.

Finally, yes, I do not prosecute patents, I license them, which does not require licensing by the PTO, just membership in a state bar. 

Mar 8, 2009 12:23 PM PL Hayes PL Hayes  says:

I suggest you look for information on software patent and copyright issues somewhere more reliable in future, Lora. Mr, Marcus isn't even right about Open Source copyright (no FOSS licence disallows sale), let alone the more complex issues concerning software patents.

The leading economists in this area are here: http://researchoninnovation.org (and they are very approachable in my experience).

None of which involve half-baked (mis-)considerations of quantum physics, of course.

Mar 8, 2009 7:16 PM Colin Rooney Colin Rooney  says: in response to Lee

It is true, Lee, that in Europe the European Patent Office has awarded patents for software, but these patents are not legal under European law and so are non-enforceable.  Companies apply for patents from the EPO, regardless, in the hope that if software patents ever do become legal they will have stolen the lead.  But the fight continues in Europe to keep software patents out so it is a mistake to believe that the situation is the same in Europe as in the U.S.


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