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Patentability of Computer Software Instruction As an The John Marshall Journal of Information Technology & Privacy Law Volume 17 Issue 1 Journal of Computer & Information Law Article 5 - Fall 1998 Fall 1998 Patentability of Computer Software Instruction as an "Article of Manufacture": Software as Such as the Right Stuff, 17 J. Marshall J. Computer & Info. L. 89 (1998) Vincent Chiappetta Follow this and additional works at: https://repository.law.uic.edu/jitpl Part of the Computer Law Commons, Intellectual Property Law Commons, Internet Law Commons, Privacy Law Commons, and the Science and Technology Law Commons Recommended Citation Vincent Chiappetta, Patentability of Computer Software Instruction as an "Article of Manufacture": Software as Such as the Right Stuff, 17 J. Marshall J. Computer & Info. L. 89 (1998) https://repository.law.uic.edu/jitpl/vol17/iss1/5 This Symposium is brought to you for free and open access by UIC Law Open Access Repository. It has been accepted for inclusion in The John Marshall Journal of Information Technology & Privacy Law by an authorized administrator of UIC Law Open Access Repository. For more information, please contact [email protected]. PATENTABILITY OF COMPUTER SOFTWARE INSTRUCTION AS AN "ARTICLE OF MANUFACTURE:" SOFTWARE AS SUCH AS THE RIGHT STUFF by VINCENT CHIAPPETTAt TABLE OF CONTENTS I. Introduction ........................................... 90 II. Background ............................................ 92 III. Analysis ............................................... 95 A. Origins of United States Patent Law and Relevant Patent Law Basics From Whence They Came and Where They Seek To Go ............................ 97 1. The Basic PatentabilityInquiry ................. 99 B. A Short History of Software Patentability Up To Article of Manufacture Claims: How the World Started to Change With Alappat .................... 106 C. "Article of Manufacture" Claims in the CAFC and the PT O ........................................... 114 D. The PTO Guidelines ................................ 121 E. What's Wrong With Current Article of Manufacture Practice? What We Are Trying to Achieve With the Patent System ..................................... 127 1. The Useful Arts............................. 129 2. CongressionalAction ........................... 135 3. Can the Current "Software as Article of Manufacture"Practice Get Us There? ............ 139 a. Bounding the Inquiry ....................... 139 b. Scope of the Claim Format .................. 139 c. Understanding Software: Technology, Language or Both? ..... 141 t Associate Professor, Willamette University College of Law. The author gratefully acknowledges a writing grant from the Oracle Corporation. 90 JOURNAL OF COMPUTER & INFORMATION LAW [Vol. XVII F. Software Under the Guidelines ..................... 143 1. Syllogism One .................................. 146 2. Syllogism Two .................................. 146 3. Syllogism One (Over-inclusion).................. 146 4. Syllogism Two (Under-inclusion)................ 150 G. A New Test and a New Syllogism ................... 154 1. Does it Work? Testing the New Syllogism for Consistency With Patent Law Objectives and Practicality..................................... 159 a. Patentable Subject Matter .................. 160 b. Novelty and Nonobviousness ................ 168 c. Administrative Ramifications ................ 176 d. Other Considerations ....................... 177 e. Overall Effect on Software Patentability Outcom es ................................... 177 IV. Conclusion ............................................. 178 A ppendix ....................................................... 179 I. INTRODUCTION The last five years have witnessed a dramatic shift in the approach taken by the Court of Appeals for the Federal Circuit ("CAFC") and, under the CAFC's stern if somewhat incomplete guidance, the United States Patent and Trademark Office ("PTO") to the seemingly intractable problem of determining whether software inventions' qualify as patenta- ble subject matter under the United States patent laws. 2 Beginning 1. Until very recently the discussion primarily focused on inventions which incorpo- rate software. This article treats software "as such," whether standing alone or claimed as part of another invention. References to "software" are inclusive of all manifestations re- gardless of whether the software invention is expressed in a particular programming lan- guage, its functionality described in a written narrative or if it is tied to any particular hardware environment. Claims to software per se represent the most difficult analytical case. Any analysis which deals with that case can be equally applied to situations where software serves as a component in a more complex computer system claim. There are related questions which arise when the claimed invention involves computer readable data. Although these data questions are outside the primary scope of this article the issue is explained and discussed in general terms below. See infra note 242 and accom- panying text. 2. 35 U.S.C. §§ 1-376 (1994). There are a number of requirements relating to the overall patentability of inventions including novelty under 35 U.S.C. § 102 (1994), non- obviousness under 35 U.S.C. § 103 (1994) and the adequate description and enablement of the invention under 35 U.S.C. § 112 (1994). See discussion infra notes 41-70 and accompa- nying text. This article focuses primarily on the patentable subject matter requirement, is software the 'right stuff" under 35 U.S.C. § 101 (1994), but also considers the interaction between the basis for making those decisions and other patentability requirements. See discussion infra notes 47-50, 302-311, 320-338 and accompanying text. 19981 ARTICLE OF MANUFACTURE SOFTWARE with a series of CAFC decisions in 19943 and culminating with the PTO's issuance of its Final Examination Guidelines for Computer-Related In- ventions (the "Guidelines") in 1996,4 the paradigm shifted from a "math- ematical algorithm" based analytic structure5 to an apparatus model driven by the presence or absence of related computer hardware in the 6 claims. Has this new approach finally brought the 30-year quest for a solu- tion to a close?7 Certainly, abandoning the mathematical algorithm ap- proach is a proper, and indeed vital, first steps toward untangling the confusion surrounding the patentability of computer software. And from the applicant's and examiner's perspectives the new regime establishes a more well defined and objective set of requirements which when followed results in much greater certainty in the examination process. 9 Unfortu- nately however, this promising alternative leaves the Gordian knot un- cut. This article examines the current treatment of the increasingly important "article of manufacture" variant 10 of the new hardware model and explains logical gaps that still remain. The results of this inquiry are used as the basis for a proposed new software as implementation versus software as language approach to resolving the software patenta- bility conundrum. 3. See infra notes 95-160 and accompanying text. 4. Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg. 7,478 (1996) [hereinafter Guidelines]. See infra notes 161-191 and accompanying text. 5. See infra notes 76-91 and accompanying text. 6. See infra notes 94-160 and accompanying text. 7. See infra notes 73-191 and accompanying text. The United States is not alone in struggling with this issue. See infra note 278 and accompanying text (discussing develop- ments in European Union law on the subject). 8. A number of commentators have argued the mathematical algorithm approach simply does not work and should be eliminated. See, e.g., Donald S. Chisum, The Patenta- bility of Algorithms, 47 U. Pitt. L. Rev. 959 (1986). I agree with Professor Chisum. See infra note 85 and accompanying text. 9. See infra note 191 and accompanying text. 10. Under the software as article of manufacture format the applicant drafts the claims to include a computer readable medium (such as a diskette or ROM) as the carrier for the computer program instructions. A set of sample claims in this format are attached herewith as an Appendix to this article. By couching the application in these apparatus terms, the applicant hopes to have an invention which primarily involves the creation of a new computer program treated as an article of manufacture. Because an article of manu- facture is an expressly statutory class of patentable subject matter, this treatment virtu- ally automatically clears the pesky § 101 examination hurdle. See infra notes 89-94 and accompanying text. Another common hardware claim format is to include the digital com- puter itself, a § 101 "machine" claim. See infra notes 95-123 and accompanying text. Much of the analysis of article of manufacture claims in this article also applies to these machine claims. The article of manufacture format has broader commercial appeal because of the possibility of direct enforcement against competing software distributors. See infra notes 92-94 and accompanying text. 92 JOURNAL OF COMPUTER & INFORMATION LAW [Vol. XVII II. BACKGROUND The starting point for any software as patentable subject matter analysis must be first principles: the Constitutional policy objective of promoting "progress . of . [the] useful arts" and the nature of software itself." In this framework 12 the normative answer to the ques- tion of"is software patentable subject matter" is straightforward enough; only when the claimed software is in the
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