Dennis Crouch, on his Patently-O site, talks about the disclosure of code in software patent applications.

The issue arises from the CAFC's rulings on the enablement and best mode doctrines under the patent disclosure requirement. Basically, the CAFC has held that software patent apps can simply give high level functional descriptions of inventions, resulting in the issuance of some broadly worded patents with vague property lines, that may require expensive disputes and litigation to resolve.

I'll let Professors Lemley and Burk further describe the CAFC's handling of the disclosure requirement below, but want to note to readers that many criticisms of software patents, especially those critiquing only the patent's claim while ignoring judicial interpretation and USPTO review (integral parts of our common law patent system), really only critique the patent's claim construction, rather than how it meets patenting standards or whether the patent signals innovativeness.

Software patents play important roles in the technology industries, as billions in investments and cross-licensing deals reside on them; thus it would be absurd to draw drastic policy conclusions such as eliminating software patents altogether, when there is no evidence suggesting that this is needed, and before looking at more considered mechanisms through patent reform.

On to Mark Lemley and Dan Burk, who, in Designing Optimal Software Patents, provide their judicial narrative of how disclosure in software patents came to be:

Programming is a highly technical and difficult art. It is simply unrealistic to think that one of ordinary skill in the programming field can necessarily reconstruct a computer program given no more than the purpose the program is to perform…

…the CAFC has held that software patentees need not disclose source or object code, flowcharts, or detailed descriptions of the patented program. Rather, the court has found high-level functional description sufficient to satisfy both the enablement and best mode doctrines...

The (CAFC) in Northern Telecom noted expert testimony to the effect that various programs could be used to implement the invention, and that it would be “relatively straightforward [in light of the specification] for a skilled computer programmer to design a program to carry out the claimed invention.”

… the (CAFC) continued ...that the expression of a desired function into programming language is “a mere clerical function to a skilled programmer.” …descriptions of software are “satisfied by a disclosure of the functions of the software” ...“writing code for such software is within the skill of the art” once functions are disclosed. Thus, there is no need to disclose source code...

posted by Noel Le @ 6:59 PM | Patents

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