These issues often arise in discussions of patentable subject matter and software:
What constitutes a software patent? Some suggest that almost any patent on an invention implemented by a computer is a software patent. Others would limit patents to inventions entirely embodied in software or on the software itself as software patents.
What is the role of software patents in spurring innovation? Comparing innovation in the United States, Israel, India, Europe and other regions scholars assess the role of software patents in development. Additionally, investors rely on patents in determining whether to invest in new ventures, and innovators utilize patents to bargain over their rights with producers and distributors.
The scope of patent protection varies. In most countries it is intentionally broad. Studies find that countries with strong software industries tend to provide broad protection for software. However, failing to distinguish clearly between software patents and patent business methods implemented by computers, such as patents on financial models, has some asking whether business methods or software should be patentable.
The effects of the U.S. Supreme Court Bilski decision on the patentability of both software and business methods leave the exact contours of patent-eligible subject matter uncertain. The Supreme Court did not categorically bar business method patents, but it emphasized the rule that “abstract” subject matter is not patentable. This suggests that patents on both software and business methods in the U.S. may be harder to obtain in future.
Within the open source software community, some argue that software should be protected only by copyright. Many proprietary software developers believe that categorical exclusion or discrimination against computer-implemented inventions is inappropriate.
With a significant backlog in software and computing patent applications in a fast-moving industry (up to 40 months from submittal to initial consideration), many ask whether the U.S. and other patent offices have the resources needed to examine applications in a timeframe commensurate with the relevant commercial life of much software.
Software patents are often criticized for being vague, as software innovations must be described in functional, rather than physical, terms. Discussions arise about how to clarify such patents by increasing the specificity of claims or by tying them more closely to real-world processes and technologies.
TAP Academics policy issues involving patentable subject matter and software patents:
James Bessen of Boston University School of Law has written many works relating to empirical analyses of software patenting and litigation over such patents.
John Duffy of George Washington University Law School holds degrees in physics and law, often taking a positive view of the role of both software and business method patents.
Rebecca Eisenberg of the University of Michigan School of Law writes about the patent system, science, and biotechnology.
Mark Lemley of Stanford Law School has authored many works about the patent system and patent reform, a number of which focus on issues surrounding software patenting.
Josh Lerner of Harvard Business School writes on a broad range of topics relating to patents, several focused on business method patents.
Ronald Mann of the Columbia Law School has focused on many of these issues, including the role of patents in facilitating access to capital by software firms.
Robert Merges of the UC Berkeley School of Law looks at the history of software patents and the patent system, concluding that on the whole the system works well.
Pamela Samuelson of the UC Berkeley School of Law writes about copyright and patent law, with a frequent focus on software patents.
These sources are a good place to start in understanding issues with patentable subject matter and software patents. John Allison, Abe Dunn and Ronald Mann warn that software patent skeptics’ outlook may not be objective, but stems from their choice of business model, in “Software Patents, Incumbents, and Entry.” Robert Merges concludes that software patents have done more good than harm in “Patents, Entry and Growth in the Software Industry.” Martin Campbell-Kelly also takes a positive view in “Not All Bad: An Historical Perspective on Software Patents.” Pamela Samuelson expresses skepticism about software patents in “Revisiting Patentable Subject Matter.” John Duffy looks at the consequences of getting rid of software patents in “The Death of Google’s Patents.” Rebecca Eisenberg relates how living things became patentable in “The Story of Diamond v. Chakrabarty: Technological Change and the Subject Matter Boundaries of the Patent System.”
The U.S. Supreme Court issued a ruling in Bilski and Warsaw v. Kappos
in June 2010. Some thought the Supreme Court might decide that business methods, at issue in Bilski
, could not be patented. However, the ruling did not reject business method patents.
To see a calendar of events of relevance to TAP academic work, please see the TAP Events page