ftp.ee.pdx.edu/2014.02.ftp.ee.pdx.edu.tar/ftp.ee.pdx.edu/pub/lpf/issues.article

Internet Message Format | 1992-11-03 | 24KB

From Issues in Science and Technology, Fall 1991:




SIMSON L. GARFINKEL

RICHARD M. STALLMAN

MITCHELL KAPOR


Why Patents Are Bad for Software


     Patents can't protect or invigorate the computer software
     industry; they can only cripple it.


In September 1990, users of the popular XyWrite word processing
program got a disturbing letter in the mail from XyQuest, Inc., the
program's publisher:


"In June of 1987, we introduced an automatic correction and
abbreviation expansion feature in XyWrite III Plus. Unbeknownst to us,
a patent application for a related capability had been filed in 1984
and was subsequently granted in 1988. The company holding the patent
contacted us in late 1989 and apprised us of the existence of their
patent.

  We have decided to modify XyWrite III Plus so that it cannot be
construed as infringing. The newest version of XyWrite III Plus (3.56)
incorporates two significant changes that address this issue: You will
no longer be able to automatically correct common spelling errors by
pressing the space bar after the misspelled word. In addition, to
expand abbreviations stored in your personal dictionary, you will have
to press control-R or another designated hot key."



  XyQuest had been bitten by a software patent--one of the more than
two thousand patents on computer algorithms and software techniques
that have been granted by the U.S. Patent and Trademark Office since
the mid-1980s. The owner of the patent, Productivity Software, had
given XyQuest a choice: license the patent or take a popular feature
out of XyWrite, XyQuest's flagship product. If XyQuest refused, a
costly patent-infringement lawsuit was sure to follow.

  Some choice.

  XyQuest tried to license the patent, says Jim Adelson, vice
president for marketing, but Productivity Software kept changing its
terms. First Productivity said that XyQuest could keep the feature in
some versions of XyWrite, but not in others. Then the company said
that XyQuest could use one part of the "invention," but not other
parts. And Productivity Software kept increasing the amount of money
it wanted. XyQuest finally gave up and took the feature out.

  XyQuest was lucky it had that option. Other firms--including some of
the nation's largest and most profitable software publishers--have
been served with notice of patents that strike to the heart of their
corporate vitality. In one of the most publicized cases, a company
called Refac International--whose sole business is acquiring and
litigating patents--sued Lotus, Microsoft, Ashton-Tate, and three
other spreadsheet publishers, claiming they had all infringed on
patent number 4,398,249, which spells out the order in which to
recalculate the values in a complicated model when one parameter in
the model changes. (Refac has since dropped its claims against all the
companies except Lotus, but only because company lawyers anticipated a
better chance of success if they faced just one opponent.)

  Patent 4,398,249 does not have anything to do with spreadsheets in
particular; the technique also appears in some graphics drawing and
artificial intelligence programs. And the idea that values in a
spreadsheet should be recalculated in the order specified by the
patent is so obvious that it has probably occurred to nearly everyone
who has written a spreadsheet program. But the Patent Office's
standard for obviousness is extremely low; patents have been granted
for ideas so elementary that they could have been answers to problems
in a first-year programming course.

  Practically once a month, the nation's computer networks are abuzz
with news of another patent issued on a fundamental concept that is
widely used. Although the Patent Office isn't supposed to grant
patents on ideas, that's essentially what it's doing with software
patents, carving up the intellectual domain of computer science and
handing little pieces to virtually any company that files an
application. And the practice is devastating America's software
industry.

  If Congress does not act quickly to redefine the applicability of
patent law to computer programs, the legal minefield confronting the
introduction of new computer programs will be so intimidating--and
potentially so costly--that small companies will effectively be barred
from the marketplace, while large, established firms will become
embroiled in litigation that will have a stultifying effect on the
entire industry.


What's being patented?

Software patents do not cover entire programs; instead, they cover
algorithms and techniques--the instructions that tell a computer how
to carry out a specific task in a program. Thousands of instructions
make up any one computer program. But whereas the unique combination
of algorithms and techniques in a program is considered an
"expression" (like a book or a song) and is covered by copyright law,
the algorithms and techniques themselves are treated as procedures
eligible for patenting.

  The judicial basis for this eligibility is tenuous at best. U.S. law
does not allow inventors, no matter how brilliant they are, to patent
the laws of nature, and in two Supreme Court cases
(Gottschalk v. Benson, 1972, and
Parker v. Flook, 1978) the Court extended this
principle to computer algorithms and software techniques. But in the
1981 case Diamond v. Diehr, the Court said
that a patent could be granted for an industrial process that was
controlled by certain computer algorithms, and the Patent Office seems
to have taken that decision as a green light on the patentability of
algorithms and techniques in general.

  Software patents are now being granted at an alarming rate--by some
counts, more than a thousand are issued each year. Unfortunately, most
of the patents have about as much cleverness and originality as a
recipe for boiled rice--simple in itself but a vital part of many
sophisticated dishes. Many cover very small and specific algorithms or
techniques that are used in a wide variety of programs. Frequently the
"inventions" mentioned in a patent application have been independently
formulated and are already in use by other programmers when the
application is filed.

  When the Patent Office grants a patent on an algorithm or technique,
it is telling programmers that they may not use a particular method
for solving a problem without the permission of the idea's "owner." To
them, patenting an algorithm or technique is like patenting a series
of musical notes or a chord progression, then forcing composers to
purchase a "musical sequence license."


Systems at odds

The traditional rationale for patents is that protection of inventions
will spur innovation and aid in the dissemination of information about
technical advances. By prohibiting others from copying an invention,
patents allow inventors to recoup their investment in development
while at the same time revealing the workings of the new invention to
the public.

  But there's evidence that the patent system is backfiring in the
computer industry; indeed, the system itself seems unsuited to the
nature of software development. Today's computer programs are so
complex that they contain literally thousands of algorithms and
techniques, each considered patentable by the Patent Office's
standards. Is it reasonable to expect a software company to license
each of those patents, or even to bring such a legally risky product
into the marketplace? To make things even more complicated, the Patent
Office has also granted patents on combinations of algorithms and
techniques that produce a particular feature. For example, Apple was
sued because its Hypercard program allegedly violates patent number
4,736,308, which covers a specific technique that, in simplified
terms, entails scrolling through a database displaying selected parts
of each line of text. Separately, the scrolling and display functions
are ubiquitous fixtures of computer programming, but combining them
without a license from the holder of patent 4,736,308 is now
apparently illegal.

  Another problem with patenting software is the amount of time it
takes to do so. The two to five years required to file for and obtain
a patent are acceptable if a company is patenting, say, the formula
for Valium, which hasn't changed in more than 20 years. But in the
software industry, companies that don't continually bring out new
versions of their programs go out of business. Success for them
depends on spotting needs and developing solutions as quickly as
possible.

  Unfortunately, conducting a patent search is a slow, deliberative
process that, when harnessed to software development, could stop
innovation in its tracks. And because patent applications are
confidential, there is simply no way for computer programmers to
ensure that what they write will not violate some patent that is yet
to be issued. Thus XyQuest "reinvented" its automatic spelling-error
correction system and brought the product to market between the time
that Productivity Software had filed for its application and been
awarded the patent.

  Such examples are becoming increasingly common. In another case, the
journal IEEE Computer in June 1984 published a
highly efficient algorithm for performing data compression;
unbeknownst to the journal's editors or readers, the authors of the
article had simultaneously applied for a patent on their invention. In
the following year, numerous programs were written and widely
distributed for performing the so-called "LZW data compression." The
compression system was even adopted as a national standard and
proposed as an international one. Then, in 1985, the Patent Office
awarded patent number 4,558,302 to one of the authors of the article.
Now Unisys, the holder of the patent, is demanding royalties for the
use of the algorithm. Although programs incorporating the algorithm
are still in the public domain, using these programs means risking a
lawsuit.

  Not only is the patent approval process slow, but the search for
"prior art"--the criterion the Patent Office uses to determine whether
an invention already exists at the time of a patent application--is
all but impossible to conduct in the realm of computer software. After
more than 25 years, the Patent Office has not developed a system for
classifying patents on algorithms and techniques, and no such system
may be workable. Just as mathematicians are sometimes unaware that
essentially identical mental processes are being used in separate
areas of mathematics under different terminology, different parts of
computer science frequently reinvent the same algorithm to serve
different purposes. It is unreasonable to expect that a patent
examiner, pressed for time, would recognize all such duplication. For
example, IBM was issued a patent on the same data-compression
algorithm that Unisys supposedly owns. The Patent Office was probably
not aware of granting two patents for the same algorithm because the
descriptions in the patents themselves are quite different even though
the formulas are mathematically equivalent.

  The search for prior art is complicated by the fact that the
literature of computer science is unbelievably large. It contains not
only academic journals, but also users' manuals, published source
code, and popular accounts in magazines for computer enthusiasts.
Whereas a team of chemists working at a major university might
produce 20 or 30 pages of published material per year, a single
programmer might easily produce a hundred times that much. The
situation becomes even more complex in the case of patented
combinations of algorithms and techniques. Programmers often publish
new algorithms and techniques, but they almost never publish new ways
of combining old ones. Although individual algorithms and techniques
have been combined in many different ways in the past, there's no good
way to establish that history.

  The inability to search the literature thoroughly for prior art is
crucial, because unless an examiner can find prior art, he or she is
all but obligated to issue the patent. As a result, many patents have
been granted--and successfully defended in court--that are not
"original," even by the Patent Office's definition. It was simply the
case that neither the patent examiner nor the defendants in the
lawsuit knew of the prior art's existence.

  Some members of the commercial software community are now proposing
the creation of a "Software Patent Institute" to identify software's
prior art that existed before 1980. But even if such an institute
could catalogue every discovery made by every programmer in the United
States, it makes no sense to arbitrarily declare that only pre-1980
work is in the public domain. Besides, what would be the purpose? To
allow the patenting of nature's mathematical laws?


Bad for business

Even when patents are known in advance,
software publishers have generally not licensed the algorithms or
techniques; instead, they try to rewrite their programs to avoid using
the particular procedure that the patent describes. Sometimes this
isn't possible, in which case companies have often chosen to avoid
implementing new features altogether. It seems clear from the evidence
of the last few years that software patents are actually
preventing the adoption of new technology,
rather than encouraging it.

  And they don't seem to be encouraging innovation, either. Software
patents pose a special danger to small companies, which often form the
vanguard of software development but can't afford the cost of patent
searches or litigation. The programming of a new product can cost a
few hundred thousand dollars; the cost of a patent search for each
technique and combination of techniques that the new program uses
could easily equal or even exceed that. And the cost of a single
patent suit can be more than a million dollars.

  "I'm not familiar with any type of ligation that is any more costly
than patent litigation," says R. Duff Thompson, vice president and
general counsel of the WordPerfect Corporation. But Thompson's
greatest fear is that software patents will wipe out young,
independent programmers, who until now have been the software
industry's source of inspiration. Imagine what happens, says Thompson,
when "some 23-year-old kid who has a terrific idea in a piece of
software is hammered by a demand letter from someone holding a
patent."

  As for aiding the exchange of information, the expansion of software
patents could mean instead the end of software developed at
universities and distributed without charge--software that has been a
mainstay of computer users in universities, corporations, and
government for years. Many such programs--the X Window system, the
EMACS text editor, the "compress" file-compression utility, and
others--appear to be in violation of existing patents. Patents could
also mean an end to public-domain software, which has played an
important part in making computers affordable to public schools. There
is obviously no way that an author who distributes a program for free
could arrange to pay for royalties if one of the hundreds of
techniques that were combined to create the program happens to be
patented.

  Few programmers and entrepreneurs believe that patents are necessary
for their profession. Instead, the impetus for patents on algorithms
and techniques comes from two outside sources: managers of large
companies, who see patents as a means for triumphing over their
competitors without having to develop superior products, and patent
attorneys, who see the potential for greatly expanding their business.

  Today, most patenting by companies is done to have something to
trade or as a defense against other patent-infringement suits.
Attorneys advise that patenting software may strengthen competitive
position. Although this approach will work for large companies such as
Microsoft, Apple, and IBM, small and even mid-sized companies can't
play in their league. A future startup will be forced to pay whatever
price the giants choose to impose.


Copyright and trade secrecy

The best argument against the wisdom of software patents may be
history itself. Lotus, Microsoft, WordPerfect, and Novell all became
world leaders in the software publishing industry on the strength of
their products. None of these companies needed patents to secure
funding or maintain their market position. Indeed, all made their
fortunes before the current explosion of software patents began.
Clearly patents are not necessary to ensure the development of
computer programs. And for those who want more control over what they
see as their property, the computer industry has already adopted two
other systems: copyright and trade secrecy.

  Today, nearly all programs are copyrighted. Copyright prohibits the
users of a software program from making copies of it (for example, to
give to their friends) without the permission of the individual or
company that licenses the program. It prevents one company from
appropriating another company's work and selling it as its own. But
the existence of a copyright doesn't prevent other programmers from
using algorithms or techniques contained in the program in their own
work. A single software technique can be implemented in different ways
to do totally different jobs; copyright only prohibits appropriating
the actual code that a particular programmer wrote.

  In general, copyrighting and patenting are thought to apply to very
different kinds of material: the former to the expression of ideas,
and the latter to a process that achieves a certain result. Until just
a few years ago, computer algorithms and techniques were widely seen
as unpatentable. And as Harvard University policy analyst Brian Kahin
notes, this is the first time in history that an industry in which
copyright was widely established was suddenly subjected to patenting.

  Indeed, without conscious action by Congress or the Supreme Court,
the most fundamental rule of software publishing--if you write a
program, you own it--will change. The new rule will be that you might
own what you write--if it is so revolutionary that it owes nothing to
any previous work. No author in areas other than software is held to
such an unrealistically high standard.

  The U.S. patent system was created because the framers of the
Constitution hoped that patents would discourage trade secrecy. When
techniques are kept secret for commercial advantage, they may never
become available for others to use and may even be lost. But although
trade secrecy is a problem for software, as it is for other fields, it
is not a problem that patents help to correct.

  Many of the useful developments in the field of software consist of
new features such as the automatic correction and abbreviation
expansion feature in XyWrite III Plus. Since it is impossible to keep
a program's features secret from the users of the program, there is
no possibility of trade secrecy and thus no need for measures to
discourage it. Techniques used internally in a software system can be
kept secret; but in the past, the important ones rarely were. It was
normal for computer scientists in the commercial as well as the
academic world to publish their discoveries. Once again, since secrecy
about techniques was not a significant problem, there is little to be
gained by adopting the patent system to discourage it.

  The place where trade secrecy is used
extensively in software is in the "source code" for programs. In
computer programming, trade secrets are kept by distributing programs
in "machine code," the virtually indecipherable translation of
programming languages that computers read. It is extremely difficult
for another programmer to glean from a machine-code program the
original steps written by the program's author. But software patents
haven't done anything to limit this form of trade secrecy. By
withholding the source code, companies keep secret not a particular
technique, but the way that they have combined dozens of techniques to
produce a design for a complete system. Patenting the whole design is
impractical and ineffective. Even companies that have software patents
still distribute programs in machine code only. Thus, in no area do
software patents significantly reduce trade secrecy.


Reversing direction

Many policymakers assume that any increase in intellectual property
protection must be good for whoever works in the field. As we've tried
to show, this is assuredly not the case in the field of computer
programming. Nearly all programmers view patents as an unwelcome
intrusion, limiting both their ability to do their work and their
freedom of expression.

  At this point, so many patents have been issued by the Patent and
Trademark Office that the prospect of overturning them by finding
prior art, one at a time, is almost unthinkable. Even if the Patent
Office learns to understand software better in the future, the
mistakes that are being made now will follow the industry into the
next century unless there is a dramatic turnaround in policy.

  The U.S. Patent and Trademark Office recently established an
Advisory Commission on Patent Law Reform that is charged with
examining a number of issues, including software patents--or what it
prefers to call patents on "computer-program-related inventions."
Unfortunately, the commission's subcommittee on software does not
include any prominent software industry representatives who have
expressed doubts about software patents. But the subcommittee is
required to consider public comment. The commission's final report is
not due until August 1992, so there is still time to make one's voice
heard.

  Although influencing the Patent Office might produce some benefits,
the really necessary reforms are likely to come only through
intervention by the Supreme Court or Congress. Waiting for Court
action is not the answer: No one can force the Supreme Court to rule
on a relevant case, and there is no guarantee that the Court would
decide to change Patent Office practice or to do anything about
existing patents. The most effective course of action, therefore, is
to encourage Congress to amend the patent law to disallow software
patents and, if possible, invalidate those that have already been
awarded. The House Subcommittee on Intellectual Property and the
Administration of Justice, chaired by Representative William J. Hughes
(D-N.J.), should take the lead by scheduling hearings on the subject
and calling for a congressionally sponsored economic analysis of the
effect of software patents on the industry.

  The computer industry grew to be vibrant and healthy without
patents. Unless those who want software patents can demonstrate that
they are necessary to the health of the industry, Congress should feel
justified in eliminating this barrier to innovation.





Recommended reading

Brian Kahin, "The Software Patent Crisis," Technology
Review (April 1990): 53-58.

Mitchell Kapor, Testimony at Hearings before U.S. House of
Representatives, Subcommittee on Courts, Intellectual Property and the
Administration of Justice, of the Committee on the Judiciary (March 5,
1990).

Pamela Samuelson, "Benson Revisited: Should Patent Protection Be
Available for Algorithms and Other Computer Program-Related
Inventions?" Emory Law Journal
(Fall 1990): 1025-1154.

Pamela Samuelson, "Should Program Algorithms Be Patented?"
Communications of the ACM (August 1990):
23-27.




Simson Garfinkel is a senior editor at NeXTWORLD magazine (San
Francisco) and the coauthor of the book Practical UNIX Security.

Richard M. Stallman is one of the founders of the League for
Programming Freedom (Cambridge, Massachusetts) and the recipient of
the Association for Computing Machinery's Grace Hopper Award.

Mitchell Kapor, a founder of the Lotus Development Corporation, is
president of the Electronic Frontier Foundation (Cambridge,
Massachusetts).





Quotes:


The Patent Office is carving up the intellectual domain of computer
science and handing little pieces to any company that files an
application.



The most effective course of action is to encourage Congress to amend
patent law to disallow software patents.