If you’re reading this here in Wired, you may have at least a passing familiarity with engineering or computer programming. Me, too: I once studied programming in college, hand-built and programmed a small 8080-based computer, and even wrote some Unix code at AT&T Bell Labs. I’m still no expert here; I just remember one key thing about the engineering mindset:
And therein lies my argument about how to solve the patent problem. Most of the solutions bandied about are like kludgy fixes to a computer program: ad hoc, quick fixes designed to address immediate difficulties without addressing the root cause. Examples include wholesale bans on software patents; caps on damages available for infringement; and shorter patent terms.
Like all kludgy fixes, these solutions to the patent problem are superficially attractive – but they raise as many problems as they purport to solve. For example, if a solution is proposed just for software patents, it will create a whole new set of questions concerning how to distinguish between software and non-software patents (a task few think easy).
More fundamentally: kludgy fixes are tailored to one particular manifestation of a problem … without examining why the problem arose in the first place.
When an engineer wants to fix a malfunctioning computer program elegantly, he or she often begins by asking: What basic function is this program supposed to perform in the first place? For the patent code, the answer is relatively simple: Patents are supposed to create incentives so that people research, develop, and disclose to the public technologies that the public would otherwise not have.
This last caveat is essential to a well-functioning patent system: If patents are easily granted on technologies that would have been developed and disclosed anyway, such patents provide no corresponding benefits for the costs they impose on society. And voilà; we find that patent law already has a doctrine here – the so-called “non-obviousness requirement” – that the Supreme Court has said (Graham v. John Deere, 1966) should be restricting patents to cover only “those inventions which would not be disclosed or devised but for the inducement of a patent.”
So What’s Gone Wrong? And What Should We Do Now?
As is often the case when seeking an elegant solution rather than an ad hoc kludge, a thorough investigation reveals that prior kludges are to blame for the current trouble. While the Supreme Court correctly identified the basic goal of the non-obviousness requirement, neither it nor the lower courts have looked to that goal in deciding cases.
#### John Duffy
##### About
John Duffy is a professor at Virginia Law School; prior to that, he was a research professor at George Washington University Law School. Duffy was identified as one of the 25 most influential people in the field of intellectual property by The American Lawyer. He earned his undergraduate degree in physics.
Instead, the courts have endorsed a set of verbal incantations that are as unhelpful as they are vague. A patent has been held to meet the non-obviousness requirement …
- if the invention shows a “synergistic result”;
- if it were not preceded by a “teaching, suggestion or motivation”;
- if there is no “apparent reason to combine the known elements in the fashion claimed by the patent”;
- and so on.
None of these formulations provides concrete guidance. And all of them distract from the fundamental inquiry into whether patent incentives were necessary to bring about the technology in the first place.
My suggestion, then, is to get rid of such judicial kludges. These vague, ad hoc verbal tests have not only dominated the law governing the non-obviousness requirement, they have distracted decision-makers from engaging in more pragmatic economic inquiry about whether patent incentives were even necessary to induce the innovation claimed by the patent.
I detail this much further with Michael Abramowicz in "The Inducement Standard of Patentability" (Yale Law Journal 120:1590, 2011), but for now I’ll merely highlight three important implications of the approach:
The nonobviousness requirement should bar patents on many software innovations because low costs of innovation plus strong incentives to innovate outside the patent system create a great case for viewing many (but not all) software innovations as legally obvious and thus, unpatentable. The costs of innovating in software are frequently low and falling over time, and incentives other than patent protection (including copyright protection!) are likely to provide very significant non-patent inducements for innovation.
The approach is not difficult to administer, especially given the evidence. Many patent infringement suits – especially in the software industry – target defendants who independently created the technology and never even bothered to seek a patent. That common feature of many suits should itself be considered powerful evidence that patent incentives were unnecessary to induce the innovation, but today such evidence is typically ignored.
The inducement standard promises peace between industries that do and don’t need lots of patent incentives. Consider pharmaceuticals: How often are new therapeutic drugs invented by parties who aren’t seeking patents, and don’t need them to induce their efforts? Not very often at all. The inducement standard helps such industries justify necessary patents ... just as much as it helps other industries justify invalidating unnecessary ones.
This proposal doesn’t require a special fix just for software patents. It’s grounded in the fundamental economic sense undergirding the patent system overall. So let’s forsake passions, politics, and predispositions. Instead, let’s think like good engineers: Embrace an elegant solution that can get rid of all patents, except the ones we need!
Editor's Note: Given the enormous influence of patents on technology and business -- and complexity of the issues involved -- Wired is running a special series of expert opinions on "the patent fix". To help move reform efforts forward, s*ome of these proposals also advocate specific Solutions to the Software Patent Problem (as part of a conference hosted by the Santa Clara University High Tech Law Institute). *
Wired Opinion Editor: Sonal Chokshi @smc90
