CHARLES TAIT GRAVES
5 stars based on
In intellectual property terms, software is a true hybrid. Although software has its origin in writing, it also possesses functionality, a property that clearly distinguishes it from ordinary writings. To write software, is to formulate instructions for reconfiguring a collection of electronic logic gates and memory cells into a virtual structure capable of accomplishing a predetermined objective. Thus what begins intellectually as a form of coded writing ultimately operates as an electronic network.
The same, certainly, cannot be said combination trade secrets and the logic of intellectual property other types of writings, which are simply not capable of reconfiguring logic gates, but only of expressing intellectual concepts. Similarly, other types of electronic networks are not capable of existing entirely in the form of writings. Software is a hybrid because it both expresses intellectual concepts and has the power to physically implement them with the aid of a computer.
It is the hybrid nature of software that causes its failure to fit neatly into any one existing category of intellectual property, resulting in seemingly endless confusion as to how it may best be protected.
The purpose of combination trade secrets and the logic of intellectual property article is not to place software into any particular category of intellectual property protection, but rather to identify the hybrid nature of software and to demonstrate that the very different intellectual property concepts embodied within software can be coextensively protected by patent, copyright, and trade secret.
This article advocates a prospectively straightforward approach to protecting the various types of intellectual property found in software: As patent protection combination trade secrets and the logic of intellectual property software has experienced a more troubled legal history than copyright or trade secret protection, somewhat more emphasis is placed on historical development in this combination trade secrets and the logic of intellectual property than in the other areas.
Misinformation concerning patent protection for software is widespread. Many programmers still believe that software cannot be protected by patent. A recent law review comment states that case law "suggests that processes that use computers may be patented, but that protection does not extend to software programs themselves," 4 and that "there continues to be no protection under current patent law for the large number of computer programs that are neither embodied in firmware nor related to a process of production.
Confusion regarding the nonpatentability of software is not the fault of academic writers, but has its origin in case law. The most troubling aspect of the case law is the part played in its development by the Patent and Trademark Office PTO because one would think that combination trade secrets and the logic of intellectual property PTO, the nation's only agency empowered to issue patents, would have had an interest in encouraging, rather than discouraging, the patenting of new technology.
Early decisions of the Court of Custom and Patent Appeals the predecessor of the Court of Appeals for the Federal Circuit strongly suggested that the CCPA judged software patentable by the same standards as any other technology.
The first such decision was Gottschalk v. Benson 11 which involved a method for converting binary coded decimal numerals directly into binary numerals for use with a general purpose digital computer. The court stated that, since the mathematical formulas in the claimed process involved had no application except in connection with a computer, any patent "would wholly preempt the mathematical formula and in practical effect would be a patent on the algorithm itself.
In its opinion, the court cited the PTO's lack of classification techniques and search files to combination trade secrets and the logic of intellectual property the supposed burden of examining software applications.
Flookinvolving a method for updating alarm limits during catalytic conversion processes, the Supreme Court set forth its "point of novelty test" that a claim as directed to unpatentable subject matter if the point of novelty lay in the formula or algorithm recited in the claims. This case truely marks the low point for patent protection of software inventions.
Just prior to Flookthe CCPA had expressed its opinion that the "point of novelty" approach was inappropriate, 21 and had set forth its two step Freeman analysis for determining whether a claim preempts nonstatutory subject matter as a whole:.
The Freeman court addressed the confusion regarding the word "algorithm. Finally, in Diamond v. Diehrthe Supreme Court changed direction and upheld the eligibility for patent protection for claims drawn to a process for curing synthetic rubber. The court also addressed the confusion regarding the term "algorithm," rejecting the broad definition espoused by the PTO 32 and affirming the narrow definition set forth in Benson. Though the majority in Diehr attempted to distinguish Diehr from Flook on the grounds that Flook's claimed invention contained insignificant post-solution activity while Diehr's claimed invention transformed or reduced an article to a different state or thing, 34 this distinction is questionable in technical terms.
Stevens' dissent in Diehr provides an excellent analysis of the striking similarity in the method of updating the curing time calculation in Diehr and the method of updating the alarm limit in Flook. Later in Diamond v. Bradleythe Supreme Court affirmed the CCPA in holding that there was no "algorithm" in an invention relating to a firmware module which directs data transfers between registers and memory.
The CCPA further clarified the meaning of the term "algorithm," holding in In re Pardo that the applicants' use of the term "algorithm" to describe the invention is not an admission of nonstatutory subject combination trade secrets and the logic of intellectual property. The inescapable conclusion to be drawn from this case law is that all software claims are eligible for patent protection unless they simply involve the use of mathematical formula to calculate and display a number.
Software patentability is a de facto reality today, as the PTO now commonly issues patents for software inventions. Examples of patented software inventions include a process for a management control system for multiprogrammed data processing, 45 a method of constructing a task program for operating a word processing system, 46 a program that checks for spelling errors, 47 and a program that converts one programming language into another an RPG to COBOL compiler.
A patent for an AC current control system is an example of how close claims can come to reciting calculations and still be accepted by the Patent Office.
This initially favorable court action, together with the issuance of software patents by the PTO, lends considerable support to the premise that software is now generally patentable subject matter.
Stating that software is "patentable" is somewhat misleading because, as has been explained, software is a complex hybrid in terms of the intellectual property concepts it embodies.
More accurately, the intellectual property embodied in the functional aspects of the software is protected by patent. The mode of expression embodied in the code that comprises the software is not specifically protected by patent, but the basic organization of the software and the manner in which it operates are in principle protectable by patent -- assuming all other standard requirements for patentability are met. Thus, while a patent may not protect against copying the mode of expression found in a software code, it would provide the legal right to prevent others from making, using, or selling the claimed software invention.
On the other hand, it is difficult to imagine a situation in which copying a software code would not also result in patent infringement. One of the important advantages of patents over copyrights is that patents protect against independent development, while copyrights only protect against derivation from protected works.
Thus, a broadly claimed software patent could provide protection against a range of independently developed software, including programs achieving similar results with differing code structures, while copyright would provide no protection.
The patent's advantage in broader protection is, to an extent, offset by the significantly higher cost and levels combination trade secrets and the logic of intellectual property difficulty in securing protection relative to the simplicity and low cost of obtaining a copyright.
When basic or valuable software concepts are at stake, however, the cost and effort involved in obtaining patent protection are minor compared to the insurance value of the rights obtained. Copyright protects original works of authorship, 56 meaning the intellectual property embodied in the mode of expression by which intellectual concepts are conveyed.
The originality and creativity of a computer program may lie in the appearance and presentation of software, known as the "look and feel. To constitute copyright infringement, there must be substantial combination trade secrets and the logic of intellectual property between the accused work and the work copyrighted, and that similarity must have been caused by the infringer "copying" the copyright owner's work.
The farthest extension of copyright protection of computer programs can be found in Whelan Associates, Inc. The court of appeals affirmed a holding which broadly defined the expression of an idea in a computer program as "the manner in which the program operates, controls and regulates the computer in receiving, assembling, combination trade secrets and the logic of intellectual property, retaining, correlating, and producing information either on a screen, print-out or by audio communication.
The rationale relied upon in favor of extending copyright protection for computer programs includes: The expansive definition of "expression" in Whelan could be interpreted as extending copyright protection to the internal workings of a computer, not the traditional subject of copyright, 70 and suggesting a substantial area of overlap between patent and copyright protection.
In effect, copyright protection has been stretched combination trade secrets and the logic of intellectual property Whelan to fill the gap left when the courts denied software inventions patent protection.
The equities are particularly important in cases involving misconduct. Prospectively, however, as the intellectual property community accepts the notion that software is patentable, there may ultimately be little need to so stretch the bounds of copyright protection.
It should be noted further that there is no central appeals court for copyrights as there is for patents. Thus, the scope of copyright law in protecting software may vary among the circuit courts of appeals. This fact, and the unusual circumstances of Whelan, suggest that it may not be prudent to conclude that copyright protection will be applied with the same breadth as in Whelan by other courts faced with other factual circumstances. Nonetheless, Whelan is an important precedent when one must rely exclusively upon copyright in software litigation.
One must not suppose that copyright and patent protection are in any way at odds. Copyright protection can mesh very neatly with patent protection to provide a unique continuum of intellectual property protection in the software environment. Copyright protects against literal copying and against slavish imitation of code or mode of expression.
Thus the combination of available copyright and patent protection would appear to make software the most protectable of all technology -- a far cry from its position a decade ago. Trade Secret law has also been relied upon to partially fill the void left when software was denied patent protection by the courts. The Uniform Trade Secret Act presents the following definition of a trade secret:. Under this basic definition of trade secret, it is clear that a computer program including logic, structure, and organization can qualify for trade secret protection as long as it is not generally known.
Similarly, if software is developed for sale on a limited basis, contractual or licensing provisions can easily be provided to maintain trade secret protection. But in mass marketing software to over-the-counter customers, it is certainly questionable as to whether an adequate degree of secrecy can be maintained, 74 or whether any contractual trade secrecy provisions can be enforced to the extent traditionally required for trade secret protection.
The concept of "shrink-wrap licensing" was developed in an intriguing attempt to accommodate the situation. Due to the dubious common law basis for enforcing shrink-wrap trade secret clauses, 76 states such as Louisiana have enacted laws to give these clauses legal effect. Just as in the area of copyrights, the "shrink-wrap" extension of trade secret law to protect mass marketed software might be interpreted as a response to a perceived lack of adequate protection by patent.
Indeed, in some circumstances such as low cost, short life span or unpatentable software, such inexpensive protection may be all that is economically justified or available. But for more valuable, more unique software where patent protection is available, shrink-wrap licenses may be needed only while patents are pending, or not at all. Trade Secrets and Patent Disclosure. Patent protection may, of course, coexist with trade secret protection. As trade secret protection is relinquished to the extent an invention is disclosed in a patent application, there is sometimes motivation to minimize the disclosure made in a patent application in order to obtain broad patent protection and yet retain significant trade secret protection.
In software terms, this can mean a patent disclosure that does not reveal any code. In the case of In re Sherwood, 81 disclosure of the listing of the program was found unnecessary to satisfy the best mode requirement because an outline of the methodology used was combination trade secrets and the logic of intellectual property, and detail of the code was considered to be within the ability of typical programmers.
On the other hand, in White Consolidated 82 a patent was invalidated for failure to comply with the disclosure requirements under 35 U. However, in White Consolidated no effort was made to disclose the missing software, other than an attempt to incorporate it into the patent by reference. Since the software in question was considered a trade secret and was not publicly available, the Court correctly concluded that the patent was invalid. Had the patent included a software disclosure of the level found in the Sherwood case, it may be assumed that the patent in Combination trade secrets and the logic of intellectual property Consolidated would have been found valid.
Regarding this disclosure question, it is well established law that there is no need to describe any invention in the detail needed for direct production.
To require an applicant for a software patent to provide a complete program listing would raise the standard of disclosure for software inventions far above that for any other technology. Furthermore, all trade secrets in the program listing would be lost through publication.
In general, therefore, it is consistent with well established law that complete program listings should not be required to satisfy statutory disclosure requirements in software combination trade secrets and the logic of intellectual property applications. Combination trade secrets and the logic of intellectual property of algorithms and techniques of attaining results sought must be described, but nothing further, as long as an ordinary skilled programmer could be expected to draft a workable code with no more than a reasonable degree of difficulty based upon the disclosure.
Block diagrams, flow charts and top-down diagrams are presently considered the preferable means of disclosing a program, as a person does not have to understand any particular computer language to understand such diagrams. Combination trade secrets and the logic of intellectual property, the disclosure questions for software inventions appear to be resolving themselves to a degree.
Disclosure must be sufficient for one of ordinary skill in the art, at the time of the invention, to make and use the invention without "undue experimentation. Furthermore, today's rapid spread of computer technology in schools and even homes will assure continued growth in the level of sophistication among those of "ordinary skill. Now that the courts and PTO have abandoned their excessive concern over the job of examining software applications, patent protection is presently available for virtually all software inventions.
Patent, copyright, and trade secret law will again be able to resume their traditional scopes and continue their complementary relationships, particularly in protecting intellectual property embodied in software. The author gratefully acknowledges the assistance of Donna L.
Angotti, a law review student at Georgetown University Law Center. On Computer Software, Res. Comment, Combating Software Piracy: