The Problem with Software Patents 


In the third of their series on Patent Failure in Patently-O, Bessen and Meurer consider that software patents and business method patents are in fact part of the problem as, amongst other things, they are very much more likely to be litigated than other patents and the likelihood of litigation is continuing to rise ...


So it does seem that patents on software and related technologies at least have a particular problem with litigiousness. And this problem is central to the poor performance of the patent system generally. In the previous post we highlighted how litigation costs have substantially outgrown the profits that public firms receive from patents outside of the pharmaceutical and chemical industries. In 1999, 38% of the cost of litigation among public firms arose from lawsuits involving software patents; preliminary data suggest that this share has increased since then. Litigation over software patents is clearly a major factor in the poor performance of the patent system. So in a very real way, the overall performance of the patent system cannot be fixed unless the particular problems of software patents are also fixed.

For good reason, they are sceptical of using subject matter exclusion as a cure for the problem.  They suggest that greater focus should be given to attacking indefiniteness and enablement issues.

Find their apercu here.

One might wonder whether Lockwood v Doric would hold out much hope for their proposed solutions in Australia.  For example:

The expression "merit" is derived from Lord Macmillan's speech in Mullard's Case[87]. But, as discussed above[88], "merit" plays no role in the statutory test, and Lord Macmillan's approach is no guide to the meaning of s 40(3). It follows that the test applied by Merkel J was incorrect.

Further, the distinction drawn between those forms of lock release that were "invented" by the Patentee and those that were not has several difficulties.

First, the distinction fails to apply the correct test, which calls for a comparison of the claim or claims with the matter described in the specification - not just with a preferred embodiment.

Secondly, the distinction reveals a confusion between the question "What is the invention here?" - the answer to which is "A new combination of integers including integer (vi)" - and the question whether each integer was an invention or an inventive step (the passage uses both expressions). Claim 1 does not claim a monopoly in any integer by itself. Paragraph (ii) of s 18(1)(b), applied to the patent in suit, requires that the combination claimed in claim 1 involve an inventive step, not that each or any integer involve an inventive step. It is only necessary that each integer form part of a full description of the invention (s 40(2)(a)), and that in their totality in any given claim they be described clearly and succinctly and be fairly based (s 40(3)). All the integers were either conceded or found to be part of a full description and to be clear and succinct. The inventiveness of particular integers is irrelevant, both to the inventiveness of a combination of them and to whether there is fair basing.

Thirdly, the distinction also contradicts (without any reasoning, as Doric accepted) the trial judge's conclusion that the specification taught that a "lock release means" may take "any suitable form"[89] and that, on the evidence, and having regard to common general knowledge in the field at the priority date, the invention was not obvious and involved an inventive step[90]. [74 - 79].


Posted: Monday - 30 June, 2008 at 03:58 PM         |


© 2004-2005-2006 All rights reserved