Patents 2.0

There are big problems with patents, especially software patents. It takes too long to get patent protection, particularly for fast-moving high-tech industries. Protection often goes beyond what is needed to prevent competitors from usurping new techniques, lasting about two decades and blocking even those who independently invented the technology. And the current limited examination--dictated by application fees--often doesn't give the examiner time to find and consider important "prior art," so that questionable patents are granted.

But scrapping software patents altogether is not the solution. Instead, I propose that a new form of intellectual property be considered that gives reduced benefits in exchange for speedy protection.

The debate over patents is in full swing as the U.S. Congress debates the Patent Reform Act of 2005 [see "Patent Reform Cacophony," Invention, IEEE Spectrum, December 2005]. Some have proposed replacing patents with copyright [see "New Legal Code," Invention, August 2005]. But it's been tried before, and it doesn't work.

Before software patents became common, copyright cases were going well beyond protecting programs from literal copying. In 1986, Whelan v. Jaslow used copyright law to give patentlike protection to a program's file structures and flow of information--its "structure, sequence, and organization"--but without any of the requirements, such as stating the scope of the invention, needed for getting a patent.

With patents, it is possible to determine what is protected, since the patent contains claims indicating the scope of protection. For copyright, the scope of protection beyond direct copying must often be determined through expensive litigation. And while patent protection lasts 20 years, admittedly a long time for software, the term of a software copyright can be a staggering 95 years or more.

One of the most important aspects of patent protection is its disclosure requirement. The technology being patented must be described in detail, and it can be added to the prior art used to examine later patents or serve as a source of information to those interested in a particular technology. Software patents have remained a problem in the United States partly because there was a period when the U.S. Patent and Trademark Office was viewed as hostile to them. So techniques from the early period of computer applications are not in the patent office's prior art collection, thus increasing the likelihood of its issuing bad software patents.

What is needed is a new form of protection that can be used in lieu of a patent or until a patent is granted. IEEE-USA, through its Intellectual Property Committee, currently chaired by Andrew Greenberg, has long recognized the need for a new form of protection for fast-moving technology, and a number of countries have a "petty patent," which provides limited, short-term protection. Australia, for example, recently revised its patent laws to create an "innovation patent" [see "Patents Lite: Aussies Pioneer a Cheap and Easy Way to Protect Inventions," Invention, November 2004].

However, because the innovation patent appears simply to trade off a reduced term for a lower standard of patentability, and petty patents often exclude technologies such as software where they could have the greatest benefit, they should not be adopted as a way of addressing software patent problems.

Instead, a new "limited patent" should be developed that grants protection from the moment the technology is first used in commerce. The primary purpose of the limited patent would be to provide immediate protection for technology that--once on the market--could otherwise be copied by a competitor before regular patent protection could be secured. Inventions not actually available in the marketplace would not be protected.

Protection would last for four years, enough time to establish a market and about the time required to process a regular patent application today. That would allow inventors to have immediate protection against knockoffs of a technology even as they try to get broader protection by meeting the more stringent requirements for a conventional patent. It would also encourage further innovation, because new features could get their own four-year protection.

The primary criterion for granting the limited patent should be novelty. People should not receive protection for things that are already available to the public. The novelty-only criterion also avoids the problems associated with trying to prove or disprove that something is "obvious" in light of the prior art. Regular patent protection requires that the invention be different from past inventions in a way that would not have been obvious to a person with ordinary skills in the art of the invention. Often, though, because of the limited resources available for an examination determining that difference, this criterion is more a goal than a reality.

For the limited patent, demonstrating nonobviousness would not be required, with one caveat: simply implementing an existing process or method on a computer or storing it on some new medium would not result in a novel invention, unless there is something special in how the computer is being used or the information is being stored.

In fact, no examination--beyond a check to see that the minimum filing requirements are met--would be performed before issuing a registration number, which the patent owner would be required to use alongside the invention to gain protection. Because there would be no official determination of novelty, there would be no presumption of validity for the limited patent. Anyone who pays an examination fee and submits prior art showing the protected item is not novel could challenge the limited patent.

Should the patent owner try to sue an alleged infringer, an examination for novelty would be the initial step in any litigation. At the time of the filing of a lawsuit, the proceeding would be stayed pending the patent office's examination. That exam would take less time than a regular patent examination, because obviousness would not be considered. In addition, the alleged violator of the protection would be able to provide prior art for the examiner to consider, evidence that would substantially reduce the cost and duration of litigation, particularly when there is evidence that protection should not be granted because the technology isn't novel.

Because the goal is to prevent knockoffs, it would protect against these who were aware of technology in the market. Showing that the technology had been independently created before the patentee's first commercial use would be an absolute defense. But it would be a personal defense; the patent would still be valid against others who cannot show substantial development of their products prior to the patented product's introduction.

Although such limited patent protection is clearly beneficial in its own right, it would also provide the opportunity to raise the bar for getting a regular patent. Better patent examination will require a substantial increase in fees to pay for the greater time spent by an examiner searching prior art and reviewing the application.

Once, software developers didn't file applications on their advances, because they didn't believe that patent protection was available, resulting in a gap in the prior art collection. We are still paying for that gap in terms of patents being issued on old techniques, and we cannot afford to have that happen again.

Reducing the filing fee for the limited patent would encourage filings, building the patent prior art collection. At the same time, a substantial increase in regular patent fees would pay for a dramatic improvement in examination quality, perhaps even permitting the examination of all applications by a team of examiners, instead of just one. Such a fee increase also could reduce the workload on the patent office, since many inventors might opt for the lower-cost, and immediate, protection of the limited patent and not go for a full patent at all.

Stretching copyright to provide an alternative to patents for fast-moving technologies such as computer software is not the solution, as we learned in a number of much-criticized cases before software patents became common. Congress instead should create a new, limited protection that protects against knockoffs without overreaching.