Earlier this week, Google filed comments with the US Patent and Trademark Office, arguing for more stringent application of established legal norms in order to invalidate overly broad software patent applications that use purely "functional claiming." The term expresses the idea of patenting what something does rather than what it is, a practice that’s discouraged in many other sectors, but seems to be disproportionately more acceptable in the realm of software. In February, Google suggested that functional claims in software ought to be supported by actual algorithms that show how to perform the function in question, a position it has formalized in this submission to the PTO.
Just calling a function a "processor" doesn't give it the necessary structure
A lot of Google’s recommendations hinge on the application of USC 35 112(f), a tenet in patent law designed to prevent purely functional claiming. In the case of electrical and mechanical patents, Google points out, words like "mechanism" and "means for" usually fall short since they don’t provide enough structure to limit the claim to a specific invention. Inventors are made to show how they perform a function to prevent claims that cover every conceivable way of doing the same thing. Google argues that an algorithm ought to be considered the equivalent in the software world, calling it "a critcal component of the relevant ‘structure.’" It also points out that several recent decisions from the Patent Trial and Appeal Board support its position, proving, for instance, that just calling a function a "processor" doesn’t give it the necessary structure to narrow the claim’s scope down to a single invention.
Another example of this kind of ostensibly "structural" language is "a selector that allows the customer to select a software application for rental from said software rental service." The use of "selector," says Google, just obscures the fact that the applicant didn’t provide any real structure in the claim. And while people have recently been ditching traditional "means for" language to avoid a rigorous application of section 112(f), they haven’t abandoned functional claiming. Instead, they've just shifted to this different vocabulary. Google adds that it’s a bad idea to ask people whether they intend for section 112(f) to apply when they're submitting their patent applications — "i.e., to ask whether the patentee would like to opt out of this substantive requirement for patentability."
A nuts-and-bolts explanation of how to perform some function
With so much importance placed on the role of algorithms, Google was careful to explain exactly what it means — a nuts-and-bolts explanation of how to perform some function, not a superficial overview. "Put another way," it says, "an algorithm must identify the inputs, the outputs, and —– critically —– enough detail to allow someone to take the actions necessary to generate the outputs from the inputs."
It stopped short of supporting the EFF's position
Finally, Google has some other suggestions for improving patent quality. It thinks that prior art needs to be more easily searchable, a change that it thinks could make things easier for examiners and reduce the number of invalid patent claims from being issued. It also recommends better standardization of terminology, which it thinks will both make it easier to search for prior art and help reduce the amount of litigation by clarifying an invention’s scope. And while it stopped short of supporting the EFF’s position that software patents ought to include working code, it thinks it’s worth discussing a requirement to include pseudo-code, although it warns that the idea could be unwieldy without a standardized format.
Last month, Google made a pledge to refrain from suing developers, distributors, and users of open source software that infringe on ten of its software patents unless it’s attacked first while decrying the roughly $25 billion that patent trolls are reaping annually from software patent litigation. It’s clear that the Patent and Trademark Office really does want to be seen as a promoter of innovation — now that the deadline has passed for public comment submission, we’ll have to see which, if any, of the many suggestions it will implement.