must be non-obvious, useful, and novel (i.e., something no one
did before). So during the patent examination process, the patent
clerk must determine if the invention is "novel," .
This requires an examination of the current and historical state
of the art to be sure that the invention doesn't already exist.
Unfortunately, there is simply no way for a patent clerk to do
this with 100% certainty. In the case of software, researching
the patent database for "prior art" before 1990 is pointless
because prior art isn't there. "Software patents," which
are a kind of "business process patent," were not recognized
by the USPTO or the courts until 1996 (State Street Bank & Trust
Co. v. Signature Financial Group Inc.) Since software was not
patentable before this time, none of the early pioneering software
technology can be found in the patent database. However, many
early algorithmic and other non-software patents have been "continued"
in ways that attempt to extend them to cover modern software.
US Patent Office has made efforts to look for software prior art
beyond the patent database, but it is impossible - even for skilled
patent examiners - to do a really comprehensive search. As a result,
many software patent applications are granted for technology that
is by no means novel.
a software engineer check that his new program does not infringe
any patent? The flood of patents, and their inconsistent terminology,
make this a virtually impossible task. Furthermore, patent applications
can remain unpublished for some period of time - so a new patent may
appear with no warning just as your product comes to market.
Today, any company (or individual)
making or using software is exposed to the possibility
of a patent infringement suit. In some cases, companies have been formed
for the sole purpose of acquiring and enforcing
a portfolio of software patents. They approach small or medium
sized companies and offer a license. If the offer is declined,
a lawsuit is initiated. The accused has the burden of proving
non-infringement - a very expensive process. Often, the company
pays the license fee, since the cost is less than proving that
they don't infringe. Sometimes several smaller companies form
a group to defend themselves.
patents can surface in various ways:
time of issuance - an inventor can start enforcing a patent
as soon as it is issued, which of course may be years after
the initial application. Amazon sued Barnes and Noble within
3 months of issuance of the "1-click" patent, and
Dr. Michael Doyle, who waited only 10 weeks to sue Microsoft
for infringement of his Eolas patent on February 2, 1999.
Submarine Patents" - a patent that has been dormant for
years suddenly is prosecuted by the owners. A classic example
is the British Telecom hyperlink patent. This patent was filed
in 1976, issued in 1989, but not until 2000 did British Telecom
start "asking to be reimbursed for the use of the technology."
- a recent patent that is a "continuation" of an earlier
patent sometimes recasts earlier technology so that it appears
to cover recent common practices. An example is the Ziarno
patent The original patent described an electronic collection
plate, but Ziarno claimed that the continuation covered charitable
gifts made over the Internet. Since it was a continuation, the
new patent had an invention date of the earlier patent - even
though the commercial Internet may not have existed at the time.
[Incredibly, Ziarno used this patent to sue the American
Red Cross; prior art demonstrated in court by Nuvocom was key
to the Red Cross's successful defense].
Innovation in the software industry
moves much faster than the patent process, so many people have
questioned whether software patents are stifling innovation. Regardless,
until the patent process is changed, they are a fact of high-tech
Business Process Patents
several categories of patents, but the only kind of interest to
us is the "utility" patent. Methods of doing business
became patentable under the utility category due to changes in
patent law in the late 1990's, specifically, State Street Bank
& Trust Co. v. Signature Financial Group Inc., mentioned above.
business process patents involve software, but often the terminology
"business process patent" and "software patent"
are used to describe the same thing. Some early examples are Priceline's
1998 e-commerce patent (sued Microsoft in 1999), and Amazon's
1-click patent (issued in September 1999; Amazon sued Barnesandnoble.com