FALL 2009

Copyright Law

Course No. 9200 703 (and 803) 001 , Course IDs 79436, 79944
MW 4:45-6:15 p.m.
Room W-215
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2007, 2008, 2009   Jay Dratler, Jr.   For permission, see CMI.

Notes and Questions on Patenting Computer Programs

1.  Patent law is a highly specialized and technical field of law.  In these cases, we focus on a single, important aspect of patent law: what sorts of innovations qualify as "inventions" or "discoveries" eligible for patent protection, assuming that they meet all the technical requirements of patent law, namely, novelty, utility, nonobviousness, and proper disclosure.  Patent lawyers speak of this as a question of "patentable subject matter."

2.  Is this question solely a matter of statutory construction, i.e., interpreting the laundry list of nouns appearing in Section 101?  Or does it also have a constitional dimension?

The old English Statute of Monopolies, adopted in 1623, prohibited state-granted monopolies in any item of commerce.  See An Act concerning Monopolies and Dispensations with Penal Laws, and the Forfeitures thereof, 21 Jac. I, ch. 3 (1623), discussed also in Jay Dratler, Jr., "Does Lord Darcy Yet Live?  The Case against Software and Business-Method Patents," 43 Santa Clara L. Rev. 823-836 (2003).  As a limited exception to this general prohibition against monopoly, it had an exception for "any letters patent and grants of privilege for the term of fourteen years or under, hereafter to be made of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures[.]"  See id.  Thus, like our Constitution, this four-century old English statute recognized patents (on "new manufactures") as a limited exception to the general principle of free competition.

Thomas Jefferson was familiar with the Statute of Monopolies.  He wanted to include an explicit prohibition against all monopolies in the Bill of Rights, but James Madison persuaded him to endorse the Patent and Copyright Clause because, in Jefferson's words, "ingenuity should receive a liberal encouragement."  Graham v. John Deere Co., 383 U.S. 1, 8, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 U.S.P.Q. (BNA) 459 (1966), quoting Letter to Oliver Evans (May 1807), V Writings of Thomas Jefferson, at 75-76 (Washington ed.).  In deciding whether or not a particular type of invention is patentable subject matter, should the courts consider whether patenting that type of subject matter is likely to advance the economic goals that have justified patent protection since 1623?  Or should they defer entirely to Congress on the matter?  What if the statutory expression of Congress' intent is murky or ambiguous?

3.  In order to understand the subject-matter controversy over patenting computer programs, it is important to understand precisely what computer programmers do.  Although there are exceptions, computer programmers, by and large, have nothing to do with inventing the computers on which their programs run or the programming languages in which they work.  Nearly all programmers work with computers, computer equipment, and programming languages developed by someone else.  Using these tools (which they did not invent), they sit at keyboards arranging abstract instructions devised by others, with the aid of universal principles of mathematics and logic, to cause machines invented by others to do useful work.  Is this process "inventing"?  That is the crucial question which these cases are trying to answer, and which still roils the computer industry.

4.  Precisely what did Benson claim as his "invention"?  Was it abstract or concrete?  Does that matter?  That is, should the question whether particular subject matter is patentable depend upon whether it is abstract or concrete?  Is that a valid economic criterion for approving a state-granted monopoly (called a "patent" or "Letters patent"), contrary to the general rule of free competition in free markets?  If not, what might be a more appropriate economic criterion?  What distinguishes a self-evidently patentable invention, like a new pharmacuetical with unexpected life-saving properties, from the product of an ordinary business venture that ought to be subject to free competiion?  from a mathematical discovery like Benson's?

5.  Diehr and Alappat are currently the two most important decisions on the question whether computer programs and related inventions are patentable subject matter.  Diehr is the latest pronouncement on the subject by the United States Supreme Court, and Alappat is an en banc decision by the Federal Circuit, the specialized intermediate court of appeals with exclusive jurisdiction over patent appeals.

Both decisions were close calls.  Diehr was a 5-4 decision, and the Alappat court also was badly split.  The reason for en banc review in Alappat had nothing to do with patentable subject matter; it was a procedural question, namely, whether the Commissioner of Patents has the legal authority to "pack" internal tribunals in order to achieve the results he wants in a particular case.  (The en banc court decided he does.)  On the merits of the subject-matter question, the eleven sitting judges divided as follows: six saw the alleged invention as patentable subject matter, two vehemently dissented, and three declined to reach the merits because of their views of the procedural question.  Thus, the holding on the merits in Alappat derived from a bare majority of six, out of the eleven judges sitting. (The listing of judges on page 245 of the Casebook is in error; it neglects to include the eleventh judge, the late Giles Sutherland Rich, who wrote the opinion and joined the majority.  See 33 F.3d at 1530, reproduced at 1994 U.S. App. LEXIS 21129 at *2.)

6.  As you read the two cases, focus on whether Alappat is consistent with Diehr.  First, consider the holding in Diehr.  Was it a broad or a narrow holding?  How did the Diehr Court distinguish its two previous computer-program decisions (Benson and Flook), in both of which it had held computer-program-related inventions not patentable?  What specific criteria or characteristics did the Diehr Court suggest as making such an invention patentable?  unpatentable?  Is the Alappat decision consistent with the breadth of the holding in Diehr?  Did it apply the criteria stated in Diehr, or did it develop new ones?  If it developed new ones, are they consistent with Diehr?  Do they make economic sense?  Were the inventions in Diehr and Alappat sufficiently similar to justify a similar result?  Are there any relevant factual distinctions between the two?

7.  Some who favor patents on computer programs have argued that a computer running any new programs is a "new machine" because it performs new functions prescribed by the program and therefore, ipso facto, is patentable subject matter under Section 101.  Does that "ipso facto" approach make sense?  Is it consistent with Diehr?  Does it make economic sense?  How close did the majority in Alappat come to adopting the "ipso facto" approach?  Is that approach one thing with which the dissenters were particularly concerned?

8.  If you have had computer programming experience, whether inside or outside the classroom, think about the job that you did in programming.  Suppose, for example, that you wrote a program, in a common programming language such as BASIC, to rank students' scores on an examination and to calculate the mean, median, and standard deviation of all their scores.  Did/would you think you were "inventing" as you wrote that program?  Now suppose (as counterfactual as that may seem!) that you were the first person ever to write such a program.  Should your position as "first writer" give you a patent broad enough to exclude anyone else from writing a program for performing the same functions, regardless of whether they used the same code, techniques or algorithms that you had used in your program?

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