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Choosing words to use in legal proposals

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You have to choose your words carefully. Some words have developed strange meanings and interpretations. If you're not aware of these, there's a risk that your message will be meaningless.

Note: Outside of legal proposals, clear wording is also essential, but the issues are different. That topic is discussed on the page Terminology recommendations.


Pitfalls to avoid

As such

The words "as such" can make an exclusion meaningless. If you exclude "software as such" from patentability, this can be interpreted as "software, as software" which means that if software is loaded onto a computer, maybe it can be considered "as a device" or if it's executed, it could be considered "as a process", in which case the exclusion would not apply.

The "as such" wording exists in the European Patent Convention and in the legislation of South Africa[1] and Costa Rica.[2]

According to the EPO "If a computer program is deemed to lack technical character [i.e.] it is a computer program as such".[3]

Per se

The USPTO's Board of Patent Appeals and Interferences notes that "there is no authority that we know of which permits software per se to be considered statutory within 35 U.S.C. § 101."[4] and yet, the USPTO approves thousands of software patents per week. Clearly, "per se" makes software exclusions meaningless. The USPTO also uses this term, as of 2009, in the "interim guidelines" regarding patentable subject matters that they published after the 2008 in re Bilski case, while waiting on the outcome of the Supreme Court's Bilski v. Kappos ruling.

In general, per se ("by itself") is very likely to have the same problems as "as such". If a patent office or a court wanted to accept software patents, it would be easy to argue that software+computer is patentable because it's no longer just "software per se".

Solving technical problems

(Main article: Technical solutions, not technical problems)

Using wordings from other countries

If you don't have a legal wording that has been thoroughly examined for faults, one option is to tell politicians that "no patents should be allowed to limit developing, distributing or running software on general-purpose hardware such as a PC".

For developing a suggestion, the wordings used, rejected, or discussed in other countries can serve as a useful starting point - but be sure to check with a local expert. The meanings of words in a legal context often depends on existing laws and court rulings, so the words might not mean what they would mean in a normal conversation, or what they mean in another country.

Controllable forces of nature (EU)

(Main article: Controllable forces of nature)

This term was previously used in German (see Case law in Germany) to exclude software patents. In Japan, a similar term "utilising the laws of nature" was used until 2000. This term was proposed by the anti-swpat movement in the EU for the European Parliament's first reading of the Software Pantents Directive (September 2003).

Applied natural science (EU)

(see EU 2005 proposed amendments)

Post-solution activity (USA)

The Parker v. Flook (1978, USA) decision requires specific types of "post-solution activity" for a patent to be valid.

ESP's briefs for the two Bilski cases have called for confirmation of this requirement

  • "a process must involve significant physical activity"

A wording that has been used repeatedly by the USA's Supreme Court:

  • "insignificant postsolution activity" - should exclude an invention from patentability

Non-computer contribution (USA)

In the dissenting opinion by Justice Stevens for Diamond v. Diehr (1981, USA), he called for:

an unequivocal holding that no program-related invention is a patentable process under § 101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer.

"§101" is the section in the US legislation which defines patentable subject matter.

Non-conventional use of a machine (USA)

From Google's brief in Bilski v. Kappos:

  • "non-conventional use of a machine" or "tied to a particular machine or apparatus in a non-conventional manner"

Florian Mueller suggests that the term "non-conventional use" would be easily stretched by patent lawyers, making this exclusion useless.[5]

Insignificant extra-solution activity

The Obama administration's Bilski brief defined "insignificant extra-solution activity" as "activity that is not central to the purpose of the method". This would not suffice for excluding software patents since, for example, the display of video on a screen could be argued as being central to the purpose of the MPEG video format. A requirement of more than "insignificant extra-solution activity" would only suffice for blocking patents that, for example, do some non-patentable math and then try to get a patent by displaying the result on a computer screen.


The wording in current India law is:

This is not ideal. It depends strongly on the interpretation of "per se".

Groklaw's suggested wording

Groklaw developed language designed to exclude software from patentability in response to UK Patent Office testing of definitions in 2005. The language drew its inspiration from amendments offered by MEPs to the Computer Implemented Inventions Directive. A Groklaw Suggestion on SW Patent Wording. Defined terms are:

  • "technical contribution"
  • "software"
  • "physical device"
  • "carrier"
  • "information"

Untried alternative: let free speech trump

One possible approach is to attack what is the real problem for the vast majority of society, allowing patent infringement for cases where a solution becomes possible using low cost existing devices where the final invention can be or is put together by the user.

Simultaneously clarify that process patents are applicable to areas of sufficiently high capitalization and for building something but only as long as no one discovers a low cost solution creatable by an end user.

The potential loophole that might worry those supporting the traditional patent system is that people would be able to avoid patents by building things at home, but this **should be** allowed as a form of free speech: if you build it using ordinary means, it could not have been patentable.

Once we get to this point, it should be clear that all it takes is for one to figure out a way to create that invention cheaply as an end user (through progress in the art or through existing use of prior art (as in discovery)) to have discovered a way to avoid infringement for others.

The effect of this approach to existing patents is that defining the full scope of a patent, rather than being very broad and be the controlling agent as determined by the patent author and patent examiner, becomes subservient and automatically adjustable to issues like free speech and promoting the progress, allowing new discoveries by society to effectively reduce the anticipated scope automatically.

There is also the side-effect of nullifying attempts to patent software via use or re-definition of "machine", "process", or any other term. The key becomes one of costs of materials as accessible to end users. No longer would the wording on the patent itself be empowered to skirt the intent of the law and end user rights. [or so is the hope]

This possible approach to patent law and practice in the US (unlike the existing practice) agrees with the US Constitution since the patent exclusivity grants would be recognized to be subservient to free speech and to promoting the progress. For the US, this also adds an automatic check on the system over time without any extra burden on Congress or the Courts to keep up with technology while also avoiding writing an unconstitutional ultra-powerful patent law.

To be explicit, the particular case of a patented invention being implemented as a software application (or through new firmware) running on a general purpose computing platform used by consumers and small businesses would not infringe.

We can add more requirements than the above, but the above appears to cover the majority and worst abuses we currently see.

[There are reasons, including research studies and improved and speedier to-market infrastructure created in the past couple of centuries, to suggest that as a precaution the length of patent duration should be lowered (if not dropped to zero) for all or for many types of patents.]

Related pages on en.swpat.org

External links


  1. http://www.cipro.co.za/legislation%20forms/patents/Patent%20act.pdf
  2. http://www.wipo.int/wipolex/es/text.jsp?file_id=217604#LinkTarget_433
  3. EPO EBoA referral G3-08 G3_08_en.pdf
  4. Ex parte Yang-Huffman, Appeal 2007-2130, slip op. at 3 (Bd. Pat. App. & Interf. Oct. 4, 2007) (non-precedential)
  5. "Google's Bilski brief didn't advocate the abolition of software patents". http://fosspatents.blogspot.com/2010/08/googles-bilski-brief-didnt-advocate.html. "One might think that programming a computer is by definition a conventional use because being programmed is what computers are for. Unfortunately, that's wrong. [...] For an example, optimizing the use of the limited number of pixels of a screen (such as by a tab control), accelerating a database operation (such as by a better sorting algorithm), compressing data, encrypting data... all those kinds of achievements go beyond a conventional use of a machine under the logic of patent law." 

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