Obviousness in Software

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Chris Hibbert

Bob Purvey (a friend who is both a software engineer and a registered Patent Agent) has written a fairly short paper to explain why the patent office doesn't do a good job screening out "obvious" software patents. He observes that the approach they use for patents on pharmaceuticals seems to do a much better job, and shows how it would apply in software.
One of the reasons this is relevant is that whenever the software industry tries to get the federal government to reform the patent laws (since they're so obviously broken as applied to software), congress is counter-lobbied by the drug companies who argue that patents are crucial to their business model, and without the present system, new drug discovery would whither away. Congress, of course, doesn't understand either industry, so they collect contributions from both sides and do nothing. If the software industry had a more focussed proposal, it would be more likely to get the kind of change that would be useful to it.
Purvey's argument is that when deciding whether an application for a patent on a new drug or medical technique is novel, the examiner is expected to consider whether a Person with Ordinary Skill in the Art (POSITA) would think of that solution, given a suitable description of the problem. If the approach described is one of a handful that the POSITA would think to try, ("obvious to try") then it's obvious enough to be ineligible for a patent. If it's one of a thousand approaches (in the drug business, this is now common in drug discovery) that you'd have to try, with an unknown likelihood of success then it doesn't count as obvious.
The patent office often grants patents on well-known software techniques applied in new contexts. Purvey argues that the "obvious to try" standard would invalidate those patents because software people are trained in abstraction, and it's obvious to all skilled practitioners that previously known techniques are likely to apply in the new context once you describe the problem correctly. The fact that the patent applicant described the problem with non-standard terminology doesn't invalidate the standard tools, and that should be an acceptable argument when suing to invalidate a patent.
As Purvey showed, that's an accepted standard in drug patent trials. A prominent (pharma) case he talked about in the paper hinged on showing that the patent application used non-standard terminology to describe something that was an obvious combination of published techniques. If lawyers attempting to invalidate a patent brought this standard into play more frequently, more patents would be invalidated quickly. And this is an approach that shouldn't have to wait for new action from legislators.

Jaffe & Lerner: Innovation and Its Discontents

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Chris Hibbert

Innovation and Its Discontents by Adam Jaffe and Josh Lerner is a level-headed appraisal of the problems with the current patent system in the US, accompanied by some common sense proposals to address them. In discussions of problems with the patent system, I have said for a while that the problem is that the patent office is issuing bad patents, and argued that people should be careful not to conclude from the effects of these bad patents that patents are a bad idea.

Jaffe & Lerner seem to agree with this point of view. They describe the problems of the patent office as being poor incentive structure in the patent office, compounded by procedural rules in the patent courts that presume that patents are being issued competently. The budget of the patent office has been cut, and the incentives on individual patent clerks push toward easy approval; there is no cost to issuing too many patents, and a high cost to spending extra time reviewing. Once patents get to the patent court, the rules are stacked in favor of the patent holder by a presumption that the patent review was performed competently. All this combines to produce a glut of lousy patents that are hard to attack.

Patents that are easy to earn and hard to dislodge can be a serious drain on innovation, because inventors and innovators necessarily re-use previous ideas in developing new solutions. When only major innovations gain the right to exclude rivals, the incentives ought to encourage inventors to describe their breakthroughs so others can exploit them after the exclusion period, and minor advances don't turn into roadblocks.

One somewhat surprising point that Jaffe and Lerner make quite clearly is that the patent system doesn't have to screen out worthless patents perfectly. As long as it's possible to overturn undeserved patents, allowing too many patents wouldn't be a problem, since most patents don't lead to commercial products. If it's not too expensive to defend against a claim of infringement based on an weak patent, then the system doesn't have to prevent all bad patents. If we can't remove the strong presumption the current system makes in favor of patent holders, the only resolutions would be to look for reforms that prevent bad patents from being issued or to advocate the complete repeal of patents.

Their proposals are much more conservative than this, and if they are adopted relatively intact, they seem to have a fair chance of improving the situation greatly.

Their proposal has three parts: 1) make it possible for people to provide relevant prior art before a patent is granted without precluding the prior art from being used later in court (the current system assumes that prior art that the patent office knew about before granting a patent was correctly considered by the examiner, and so it is excluded from later use in court challenges.) 2) provide escalating levels of review and challenge so that weak patents can be challenged cheaply, and important patents get an appropriate level of review without too strong a presumption about the outcome, and 3) drop the option of jury trials, and move to a system of judges and expert special masters. (Juries seldom understand the issues in a patent case, and the presumptions they are instructed to make lead them to decide for the patent holder whenever they are confused.)

Another argument that the authors make persuasively is that it would be a mistake to advocate different rules for patents in different fields. First, this would have the effect of pushing patenters to couch their patents in whatever terms give them the most advantage. The authors show that this has gone on with respect to the different treatment that business method, pharmaceutical, and software patents get currently. Secondly, if the rules are variable across fields, every lobby will have an incentive to make a case that they are special in some way. We'll all be better off if we can get simple across-the-board reforms implemented that limit patents to real breakthroughs, and make it possible for innovators to proceed without being obstructed by patents on minutiae well-known techniques.

I have no idea what the chances are that these reforms might be considered in the current political environment. It appears that lawyers, as a coalition, like the current system, but it's not clear why any innovative company would prefer it, even if they have a large patent portfolio at present.