By Greg Aharonian

IEEE Software, Jul/Aug 1999

How much brilliant innovation is there in the software industry? I mean the type of development you might read about in a new IEEE or ACM article or conference paper that causes you to think, "That’s cool!" Probably not much considering software development is more evolutionary than revolutionary, with people constantly sharing ideas and techniques. The steady and collaborative development of Linux and the efforts of the Free Software Foundation typify such development in the Internet era. Isn’t the Internet just an evolution of videotex, albeit with better interfaces and communications protocols? Isn’t C++ and Java object-oriented programming just a gradual evolution of Lisp, Smalltalk, and Simula from the 1980s?

If this is true, software programmers should view the tally of US software patents issued during the last few years with great concern, and some outrage. The number has steadily increased from 1,300 in 1990 to an estimated 22,500 in 1999.

The US Patent and Trademark Office (PTO) is now issuing about 20,000 new software patents every year — a tenfold increase in the last six years. I would point you to an Internet FAQ for more information, but I can’t because I might be inducing you to infringe a patent—US Patent No. 5,842,221 entitled, "Dynamic Frequently Asked Questions (FAQ) System." Patents are supposed to be limited to inventions that are both novel (no one has ever made the invention the same way before) and not obvious. " A claimed invention is unpatentable if the differences between it and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." (In re Dembiczak, 50 USPQ 2d 1614, Fed. Cir. 1999). Considering these inexplicable numbers, the IEEE, the ACM, and similar organizations should ask the PTO on what basis it thinks there are 20,000 novel and not obvious software inventions each year.

The Japanese and European patent offices are demonstrating the same problems, but there are a few well-known reasons why the PTO issues so many patents:

One of the weaknesses of the current patent system is the absence of any searching requirements for patent applicants to prove their inventions are novel and not obvious. Prior to filing a patent application, an applicant is under no obligation to go to a library or access online databases to find prior art. Patent examiners are expected to issue a patent only if an invention is novel and not obvious. Both the PTO and patent lawyers know examiners don’t have enough time, money, or resources to search thoroughly, especially for software applications.

In the last 20 years, more than 700,000 patents have been issued for electronics inventions, such as hardware, software, circuits, optics, and communications. Of these, approximately 80 percent have barely cited a single IEEE, ACM, or SPIE conference paper, journal article, or book. In other words, the PTO has concluded that the inventions were novel and not obvious by examining prior issued patents while largely ignoring all other published literature. Ironically, this literature is searched during expensive litigation and successfully used to invalidate software patents. Tolerance of this evaluation system for this long reflects contempt for both the technology and those who develop it.

In part, patent examiners fail to cite non-patent prior art because they do not have access to an adequate library or database of non-patent materials. Regardless of the reasons, we should question the validity of many patents considering the dearth of materials cited. Some patent applications don’t even cite prior patents. For example, U.S. Patent No. 5,796,943, recently issued for a smart card, cites no prior art at all. As late as May 1999, half of the software patents issued cited no non-patent prior art.

A 1988 COMPCON paper (R. Laurie, "The Patent/Copyright Interface for Software Protection," Proc. Int’l COMPCON, IEEE Computer Soc. Press,1989, pp. 370-5) by a software patent lawyer outlined the same issue a decade ago:

Apparently, little has changed in the last 10 years.

A second reason for the large number of software patents being issued is that the PTO is simply overwhelmed with patent applications. The PTO issues patents for about half of the applications it receives. Therefore, a tenfold increase in the output of software patents means the number of patent applications has also increased about tenfold in the last six years, a rate much higher than the increase in PTO personnel. The high turnover among patent examiners has compounded this problem. A favorable high-tech job market also makes it difficult for the PTO to hire and retain qualified examiners — approximately 66 percent of the current software patent examiners only have a Bachelor’s degree and a few years of industry experience. Where is this flood of patent applications coming from? Surprisingly, many of the companies filing software patent applications are not considered traditional software companies. Based on a sample of 3,300 software patents from 1998, IBM, Motorola, Fujitsu, and Canon were in the top five. These are large, well-established companies with a long history of developing and patenting hardware and software. They use these patent portfolios to extract hundreds of millions of dollars in royalties and control the marketplace, even though the validity of many of their patents is questionable.

Many companies with ample resources to seek out quality patents choose not to. Recently, this has led to an interesting example of game theory and cooperation, because other companies have decided that if they can’t beat the larger corporations by reforming the software patent examination process, then they should join in by filing their own growing sets of patent applications. Much like the larger corporations, they use the impotence of the current patent laws to ignore prior art. Companies that spend $10,000 to $20,000 to obtain a patent should not find it an undue burden to spend 10 percent more to sufficiently search for prior art to insure higher quality.

These problems are compounded by the harried conditions under which patent examiners must analyze patent applications. A software patent examiner at the PTO sent me a private e-mail message to explain the environment:

These ingredients combine in a recipe for explosive growth in software patents. The result is patents of dubious validity. Some PTO patents are actually silly, such as US Patent No. 5,491,779, issued in February 1996 for three dimensional pie charts, and US Patent No. 5,764,906, issued in June 1998 for mapping phrases to URL addresses.

I think it is reasonable to conclude that the quality of issued patents is suffering. However, this is a dilemma for organizations like the IEEE. Many IEEE members belong to large companies, where patent quality is less important than the patent portfolio size. Other IEEE members are independent or work for small companies, where patent quality is very important in order to be taken seriously in the marketplace. Any reform that the IEEE supports will face conflicting interests. For IEEE members in the US, I encourage you to get involved with the IEEE-USA’s Intellectual Property Committee, (http://www.ieeeusa.org/committees/IPC/), to voice your opinion. There should also be more contact between the IEEE and ACM and the software committees of the American Bar Association and the American Intellectual Property Law Association.

As a matter of professional pride, software developers should demand the patent system to respect and pay more attention to non-patent prior art, including the many conferences, journals, books, and Web sites. The members of professional organizations have worked together to provide forums to discuss, share, and advance software technology. Issuing patents without referring to this substantial body of non-patent prior art reflects a lack of respect that should not be tolerated.