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Software does not make a computer a new machine

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The "new machine" argument is an attempt by patent lawyers to fool examiners and judges by presenting a non-novel component (the computer) together with a non-patentable component (the software) and get a patent on the combination, even though neither component is actually patentable and the act of putting the software on a computer is trivial and expected.

The patent applications usually mention a computer or a "storage medium". When defending such patents in court, patent lawyers sometimes describe the idea as creating a "new machine" because the computer appears to have gained a new ability, when in reality the computer could always perform these tasks. So, instead of claiming this:

  • a process which does X, using a computer

The patent lawyer writes this:

  • a computer which can do X

This is sometimes called a Beauregard claim in the US.

Contents

[edit] US case law

Those who argue that software can make a new machine sometimes use the "as a whole" phrase from the Diamond v. Diehr ruling by US Supreme Court on 3 March 1981. Ben Klemens refutes this argument in his book Math You Can't Use and in the amicus brief he wrote for the CAFC case in re Bilski.

[edit] In re Alappat (1994)

A patent of this type was upheld by the US CAFC in 1994 in the In re Alappat case. The patent was on using anti-aliasing to improve image display, and the court agreed that "a general purpose computer in effect becomes a special purpose computer".

[edit] In re Beauregard (1995)

In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

[edit] Example "Beauregard claim"

One example given by Patently-O is claim #2 of this patent application:[1]

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

a) obtaining credit card information relating to the transactions from the consumer; and

b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other transactions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:

a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

b) constructing a map of credit card numbers based upon the other transactions and;

c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

[edit] UK case law

From the Symbian ruling by UK Court of Appeal on 8 October 2008 declared that yes, software can turn an old computer into a new machine:

56. Putting it another way, a computer with this program operates better than a similar prior art computer. To say "oh but that is only because it is a better program – the computer itself is unchanged" gives no credit to the practical reality of what is achieved by the program. As a matter of such reality there is more than just a "better program", there is a faster and more reliable computer.

[edit] Analogies

  • "As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat’s “rasterizer.”" (From the minority opinion in the US CAFC's 1994 in re Alappat decision)
  • A basic calculator does not become a new calculator when you punch in a new calculation for it to perform.
  • When you use a record player, you get music. The music might be technical, innovative, new, etc. but no one will ever get a patent on a combination of a record player and music.

[edit] Related pages on en.swpat.org

[edit] External links

[edit] References

  1. http://www.patentlyo.com/patent/2011/08/if-the-software-method-is-not-patentable-then-neither-is-the-computer-readable-medium.html


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