The current patent system "over-rewards" the easy part of innovation — coming up with an idea — while taxing the hard part of implementing it.
That’s what a senior patent attorney for Google, Suzanne Michel, said during a public meeting on software patents today. Google is recommending that the US Patent and Trademark Office curb the common practice of using broad language in software patent filings without disclosing actual algorithms.
"The corpus of existing software patents is replete with claims that describe a high-level function and no supporting algorithm," she said.
Show us your algorithms
Michel was speaking about "functional claiming," the increasingly-controversial practice of describing a feature by what it accomplishes rather than by how it works. This is allowed under current patent law, but only when the inventor submits a written description so that the invention, in theory, can be duplicated and the knowledge shared. For software, Google says, that written description should require a supporting algorithm.
Google believes that most software patents should trigger the extra layer of scrutiny that comes when a patent invokes what’s called a "means plus function" claim — that is, when an inventor uses certain key phrases that gloss over structural specifics in order to secure broader functional patent coverage.
If the patent mentions using a "means for calculating" something, for example, he or she is supposed to submit a supporting statement that explains exactly how it’s done — with an abacus, calculator, computer, or whatever. If the phrase "means for" or certain other like phrases are present, the patent examiner is supposed to refer to that extra description.
"We have fallen into a briar patch of formalism based on a hunt for magic words."
The same rules apply to software patents, Michel argued. If a patent describes a "means for" or an equivalent of that phrase, then the specification should require exact details of how it’s done. In the case of software patents, the details would be algorithms. Including an algorithm should limit future claims of infringement by clarifying exactly what the patent is for, Google hopes.
Unfortunately, software patent applicants have long been dodging this requirement by playing legalistic word games, substituting other language for the keyphrase "means for." Instead, applicants use phrases like "computer programmed to," or "selector allowing customers to select" to avoid triggering the clause that would require the disclosure of an algorithm that could limit future claims.
"We have fallen into a briar patch of formalism based on a hunt for magic words," Michel said, and this oversight has led to overly broad patents that fuel litigation and patent trolling, which are "a drag on innovation."
Google stopped short of the Electronic Frontier Foundation’s recommendation that patent applicants must submit working code, which was announced during the USPTO’s first software patents roundtable. At this point, Google is only recommending that algorithms be included in patents that rely on functional claims.
Michel posted her granular recommendations along with broader ideas on the Google policy blog. The company will expand on these recommendations in written comments to the USPTO by mid-March. Google’s ideas would result in narrower patents, but it’s unclear whether the case law supports its argument. The company would still have some work to do in order to convince courts to interpret the patent claims this way.
It's hip to be innovative
Google’s was just one voice among the 15 industry members who showed up to air their grievances at New York University today for the USPTO’s second roundtable, an effort to get feedback and concrete suggestions from the people most concerned about reform.
The other speakers included representatives from IBM, Red Hat, and intellectual property trade associations, as well as individual engineers, all of whom presented concrete recommendations for how the USPTO could improve the patent system.
Multiple presenters mentioned the possibility of issuing separate rules for interpretation that would be specific to software patents. Most, including IBM, thought this was a bad idea and that patent rules should be consistent for all types of patents. (Microsoft, which had a representative speak at the first roundtable, has a similar outlook.)
The USPTO is considering the option of software-specific rules
The USPTO is considering the option of software-specific rules, said Drew Hirshfeld, deputy commissioner for patent examination policy at the USPTO, but it’s a long way from issuing any. "This is the start of what we envision is an ongoing discussion," he said.
The speakers weren’t short on suggestions. Austin Meyer, an engineer who is being sued by Uniloc over what Meyer believes to be an invalid patent, recommended bringing the $17,750 fee for re-examination of a patent more in line with the $100 fee to file a patent. Charles Mauro, founder of a user interface design agency, said the patent office should focus on writing definitions for graphical user interface design. There has been an enormous uptick in these types of patents, which include the "slide to unlock"-style inventions that featured prominently in the Apple v. Samsung case, he said.
Tim Sparapani, an executive at the 20,000-member App Developers Association, recommended more continuing training for examiners to get them up to speed on the latest software advancements. "Six months is a lifetime in our world," he said.
The representatives from the American Intellectual Property Law Association and the Intellectual Property Owners Association recommended, basically, that the current laws be enforced and there be no specific carve-outs for software patents.
The patent office seemed receptive to the feedback and pleased that so many people had shown up with concrete suggestions.
The USPTO wants to be seen as the country’s office of innovation, rather than an obstacle in innovation’s way, said software developer and patent lawyer Charles Duan, who attended the roundtable and has spoken to examiners personally. "Despite what a lot of people say, the PTO does really care about its reputation as a promoter of innovation, which is why they hold these industry partnership discussions," he told The Verge.
Correction: An earlier version of this story said Microsoft was not present at the New York roundtable; in fact, the company had a representative in the audience.