[9297] in Commercialization & Privatization of the Internet
upcoming hearings on software patents (Fed. Reg. 12/20/93) [LONG]
daemon@ATHENA.MIT.EDU (Software Patent Issue)
Tue Dec 28 03:36:30 1993
Date: Tue, 28 Dec 1993 03:24:38 -0500 (EST)
From: Software Patent Issue <soft-pat@tdr.com>
To: Various List Recipients <nobody@hottest.hell.int>
For those of you worried about software patents, here's your chance to
make comments:
------- Cut Here -------
[Federal Register, Vol. 58, No. 242, Monday, December 20, 1993,
pp. 66347-66353]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Docket #: 931222-3322
Notice of Public Hearings and Request for Comments on
Patent Protection for Software-Related Inventions
AGENCY: Patent and Trademark Office, Department of Commerce
ACTION: Notice of hearings and request for public comments
SUMMARY: The Patent and Trademark Office (PTO) is interested in obtaining
public input on issues associated with the patenting of software-related
inventions. Interested members of the public are invited to testify at
public hearings and to present written comments on any of the topics
outlined in the supplementary information section of this notice.
DATES: Public hearings will be held on January 26-27, 1994, at the San
Jose Convention Center, 408 Almaden Avenue, San Jose, California, and on
February 10-11, 1994, at the Crystal Forum in Arlington, Virginia. Those
wishing to present oral testimony at any of the hearings must request an
opportunity to do so no later than five days before the date of the
hearing at which they wish to testify. Written comments on the topics
presented in the supplementary information section of this notice should
be received by the PTO on or before March 15, 1994.
ADDRESSES: Those interested in presenting written comments on the topics
presented in the supplementary information, or any other related topics,
should address their comments to the Commissioner of Patents and
Trademarks, marked to the attention of Jeff Kushan. Comments submitted by
mail should be sent to Commissioner of Patents and Trademarks, Box 4,
Patent and Trademark Office, Washington, DC 20231. Comments may also be
submitted by telefax at (703) 305-8885 and by electronic mail through the
Internet to comments-software@uspto.gov. Written comments should include
the following information: - name and affiliation of the individual
responding; - an indication of whether comments offered represent views of
the individual's organization or are the respondent's personal views; and
- if applicable, the nature of the respondent's organization, including
the size, type of organization (e.g., business, trade group, university,
non-profit organization) and principal areas of business or software
development activity.
Parties offering testimony or written comments are asked to provide their
comments in machine readable format in one of the following file formats:
ASCII text, WordPerfect for DOS version 4.2 or 5.x, WordPerfect for
Windows version 5.x, Word for Windows version 1.0 or 2.0, Word for DOS
version 5.0, Word for Macintosh version 3.0, 4.0 or 5.x, or WordPerfect
for Macintosh version 2.x.
Persons wishing to testify must notify Jeff Kushan no later than five (5)
days before the date of the hearing at which they wish to testify. Mr.
Kushan can be reached by mail sent to his attention addressed to the
Commissioner of Patents and Trademarks, Box 4, Washington, DC 20231; by
phone at (703) 305-9300; or by telefax at (703) 305-8885. No requests for
presenting oral testimony will be accepted through electronic mail.
Written comments and transcripts of the hearings will be available for
public inspection no later than March 30, 1994, in Room 902 of Crystal
Park Two, 2121 Crystal Drive, Arlington, Virginia. In addition,
transcripts of the hearings and comments provided in machine readable
format will be available after March 16, 1994, through anonymous file
transfer protocol (ftp) via the Internet (address: comments.uspto.gov),
and will be available for Wide Area Information Server (WAIS) searching
after March 30, 1994.
FOR FURTHER INFORMATION CONTACT: Jeff Kushan by telephone at
(703) 305-9300, by fax at (703) 305-8885, by electronic mail at
kushan@uspto.gov, or by mail marked to his attention addressed to the
Commissioner of Patents and Trademarks, Box 4, Washington, DC 20231.
SUPPLEMENTARY INFORMATION
I. Background
Over the past decade, the computer software industry has evolved into a
critical component of the U.S. economy. It is presently the fastest
growing industry in the United States, with 1992 sales in the three core
elements of the software industry -- programming services, prepackaged
software and computer integrated design -- accounting for over $36.7
billion of our domestic gross product. The software industry also has
created jobs at a remarkable rate; since 1987, employment in the software
industry has risen at an annual rate of 6.6 percent and today, the
industry employs about 4 percent of the American work force.
The dynamic nature of the U.S. software industry has also served to propel
the U.S. firms into a dominant position in the global software industry.
U.S. firms hold about 75 percent of the global market for prepackaged
software and approximately 60 percent of the world market for software and
related services. In 1991, foreign sales of U.S. prepackaged software
vendors totaled over $19.7 billion.
Constant innovation has been the key to continued success in the U.S.
software industry. As such, it is imperative that our domestic
intellectual property systems not only provide an effective stimulus for
innovation, but also provide appropriate and effective means for
protecting those innovations. Indeed, the continued success of U.S.
firms, in both domestic and foreign markets, depends directly on the
availability of effective mechanisms to protect software innovations.
Without such means, the full value of American innovation cannot be
realized.
Intellectual property systems provide the means through which software
innovations can be both encouraged and protected. The present framework
of intellectual property laws provides three basic forms of legal
protection that are most relevant to the development and protection of
software; namely, copyrights, patents and trade secret protection.
Detailed reviews of each of these forms of protection can be found in the
1992 Office of Technology Assessment report entitled "Finding a Balance:
Computer Software, Intellectual Property and the Challenge of
Technological Change" (OTA-TCT-527), and in the final report of the
Advisory Commission on Patent Law Reform to the Secretary of Commerce
(1992). A brief synopsis of these three forms of protection follows.
Software code is protected under copyright law as an original work of
authorship. Copyright protection stems automatically from the act of
fixation of a work onto a tangible medium. A copyright gives its owner
the ability to control the reproduction, adaptation, public distribution,
public display and public performance of the software code. Copyrights
can be used to prevent others from copying the software program, either
through direct duplication or through appropriation of the software's
expressive (as opposed to functional) elements. Under U.S. law, copyright
owners can also prevent the unauthorized rental of software. Copyright
protection cannot be used to prevent the use by others of the functional
aspects of software, nor can it be used as a basis for action against
independently developed software. In addition, the fair use doctrine
under copyright law provides third parties some flexibility in their use
of copyrighted works.
Patents can be used to protect processes implemented using software, as
well as computer-based systems. The statutory definition of inventions
that are eligible to receive patent protection is found in section 101 of
title 35, United States Code. This section makes patents available for
"any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." To obtain patent
protection, the inventor must apply for protection and proceed through an
examination process before the Patent and Trademark Office (PTO). The
examination process is used to assess whether the invention for which
protection is sought meets all of the statutory criteria for
patentability; namely, that the invention is eligible for protection, that
it is new, that it is not obvious to a person familiar with the technical
field of the invention, and that the invention has been adequately
described in the patent application. Patent protection allows the patent
holder to preclude others from making, using or selling the patented
invention, as it has been defined in the patent claims, for a period of
seventeen years measured from the date the patent is granted.
Importantly, the party granted a patent must take action to enforce rights
provided under the patent--the issuance of a patent does not automatically
preclude infringing activity. In addition, the Federal courts have
developed a limited exception to liability for infringement for
non-commercial experimental use of inventions described in patents.
Additional information on the patent process is available in the Manual of
Patent Examining Procedure (MPEP), in particular, chapters 600, 700 and
2100.
Finally, certain aspects of software can be protected through use of trade
secrecy and contractual licensing agreements. Protection of trade secrets
in the United States is governed by state, rather than Federal, law.
Trade secret laws typically require the party asserting a trade secret
right to take reasonable steps to prevent the public disclosure of the
information held as a trade secret. Accidental or other public disclosure
of a trade secret will eliminate the protection. Absent such disclosure,
the trade secret rights will remain effective indefinitely. Trade secret
rights can be enforced against parties that unlawfully obtain the
information held as a trade secret.
The focus of the discussions in the three scheduled public hearings will
be the use of the patent system to protect software-related inventions.
There will be three general subject matter areas presented for discussion:
- Use of the patent system to protect software-related inventions;
- Standards and practices used in examination of patent applications for
software-related inventions; and
- Significance of and protection for visual aspects of software-related
inventions.
Questions appearing in section II, below, are intended to focus the
discussion on each of the topics. They are not intended to discourage
individuals from providing written comments on issues they believe should
be addressed that are related to the protection of software-related
inventions. Written comments on matters not presented below for
discussion can be forwarded to the Commissioner of Patents and Trademarks
for inclusion in the records of these hearings, but should clearly
indicate that the comments are general in nature and not directed at the
issues presented for discussion.
II. Topics for Discussion
Topic A. Use of the patent system to protect software-related inventions
Dates and Times for Hearings on Topic A:
January 26, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
January 27, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
Location for Hearing: San Jose Convention Center
408 Almaden Avenue
San Jose, California.
The question of patent protection for software-related inventions has
engendered a significant amount of public debate. For example, concern
has been expressed over the appropriate scope of eligible subject matter
(e.g., which aspects of software-related inventions should be eligible for
patent protection, and which should not). Others have expressed concerns
over the effects of providing protection for inventions in which the main
distinguishing characteristic is a software component.
Some guidance on the question of patent eligibility has been provided by
the Federal courts. First, the Supreme Court has instructed the lower
courts to interpret the eligibility standards for patent protection
broadly. In Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), the Court
stated:
The committee Reports accompanying the 1952 Act inform
us that Congress intended statutory subject matter to "include
anything under the sun that is made by man." The subject matter
provisions of the patent law have been cast in broad terms to
fulfill the constitutional and statutory goal of promoting
"the progress of science and the useful arts". Congress
employed broad language in drafting Section 101 precisely
because such inventions are often unforeseeable.
Second, the Supreme Court has held that the mere presence of a computer
software-implemented mathematical algorithm in an invention does not
automatically preclude the invention from being eligible to receive patent
protection. Diamond v. Diehr, 450 U.S. 175 (1981). Finally, through
interpretation of the exclusions from patentable subject matter under
section 101 of title 35, United States Code, the Supreme Court and the
lower Federal courts have provided guidance in determining which aspects
of software-related inventions are eligible for patent protection.
There are three general categories of exclusions to patent eligibility
that are particularly relevant to software-related inventions. The first,
and most commonly applied exclusion, is the exclusion of mathematical
algorithms, per se, from patent eligibility. For a summary of the law
governing this exclusion, and for guidance on how the PTO applies this
exclusion in the context of its examination procedures, see "Patentable
Subject Matter, Mathematical Algorithms and Computer Programs", 1066 O.G.
5, (Sept. 5, 1989) and "Note Interpreting In re Iwahashi," 1112 O.G. 16
(March 13, 1990). Second, methods of doing business are excluded from
patent protection. While no cases have directly applied this exclusion to
deny patent protection for software-related inventions, the exclusion is
relevant for questioning the patent eligibility of processes that are
modeled upon existing business processes but are implemented through a
software-based system. See, e.g., Paine, Webber, Jackson & Curtis, Inc.,
v. Merrill Lynch, Pierce, Fenner & Smith, 564 F. Supp. 1358, 218 U.S.P.Q.
212 (D. Del. 1983). Finally, printed matter, per se, is not eligible for
protection under the patent laws. This exclusion has relevance in the
context of software code "written" onto non-paper media (e.g., magnetic or
optical media capable of storing the software code). See, e.g., In re
Miller, 164 U.S.P.Q. 439 (C.C.P.A. 1969); In re Jones, 153 U.S.P.Q. 77
(C.C.P.A. 1967).
Within these limits, however, is a spectrum of inventions whose patent
eligibility has been questioned. To encourage discussion of what aspects
of software-related inventions should or should not be eligible for patent
protection, interested members of the public are invited to offer their
views on the following series of questions.
1. What aspects of the following examples of software-related inventions
should or should not be protectable through the patent system?
[Note--these are generalized hypothetical examples of patent claims.
They are not intended to prompt comments as to the merits of the
process referred to in the claim (e.g., whether the process is well
known or obvious to a computer programmer). Instead, comments are
desired as to the benefits or drawbacks of granting patents on the
invention defined by the claim, presuming it was new and not obvious to
a computer programmer.]
Example A: a mathematical algorithm implemented on a general purpose
computer:
A computer comprising means for causing the computer to generate a
signal that varies according to application of mathematical
algorithm X to a given numerical input value.
Example B: a mathematical algorithm implemented on a special purpose
computer:
A computer comprising:
- means for collecting data;
- means for extracting usable data from the collected data;
- means for processing the usable data through application
of mathematical algorithm X=A2 + B2, where A and B are derived
from the extracted usable data;
- a read-only memory used to calculate the squares of numbers
provided to it;
- means for providing to said read only memory numerical values
derived from the extracted usable data;
- means for storing in said read only memory numerical values
derived from the extracted usable data;
- means for obtaining from said read only memory the squares of
numbers provided to said read only memory; and
- means responsive to the output of said read only memory.
Examples C-1 and C-2: A computer-readable medium, such as a disk, on
which is stored a computer program.
[Note: These examples include references to a computer readable
medium as a "tangible" or "physical" embodiment of a
software-related invention. The two perspectives presented in the
examples differ in how the invention is defined. The first example
defines the invention through reference to the actual software
object or source code. The second example defines the invention
through a narrative description of how the program functions.]
C-1. A computer-readable medium, on which is stored a computer
program of instructions comprising [software object or source code].
C-2. A computer-readable medium, on which is stored a computer
program of instructions comprising:
- means for performing function X;
- means for performing function Y; and
- means for performing function Z.
Examples D-1 and D-2: A computer program, per se.
[Note: These examples focus on the computer program, per se, as the
invention, without inclusion of a "tangible" or "physical"
embodiment. Like examples C-1 and C-2, two perspectives are
presented as to how the invention is defined. The first example
defines the invention through reference to the actual software
object or source code. The second example defines the invention
through a narrative description of how the program functions.]
D-1. A computer program of instructions comprising [software object
or source code].
D-2. A computer program of instructions comprising:
- means for performing function X;
- means for performing function Y; and
- means for performing function Z.
Example E: A data structure used in a computer program
A hierarchical tree data structure having elements and possessing
properties and operations.
Example F: A process consisting of a series of computational or
decisional steps that can only practicably be performed on a
computer:
A method of diagnosing an abnormal condition in an individual
comprising:
- collecting data related to the condition of the individual;
- processing the data collected to place it in a structured,
consistent format;
- comparing the processed data to a first database of information
documenting characteristics of normal and abnormal conditions
in patients to determine if an abnormal condition exists;
- upon detecting an abnormal condition, comparing the processed
data to a second database of information documenting
characteristics of the abnormality to determine the precise
nature of the abnormality;
- upon determining the precise nature of the abnormality, comparing
the characteristics of the abnormality to a third database of
information documenting suggested treatment and therapeutic
regimes; and
- collecting and presenting the information from said third database
relevant to the determined abnormality.
Example G: A method of doing business that has been implemented
in a computer program (e.g., an accounting system implemented in
software).
A computer-implemented process comprising the steps of:
- accessing information regarding the name of a patient and
services provided to that patient from an electronic storage
medium;
- associating treatment rendered to a patient with a fee by
comparing the collected data to a database of fees;
- extracting billing data for said patient from said database;
- printing an invoice documenting the fees charged and the
appropriate mailing information for said patient.
2. What impact, positive or negative, have you or your organization
experienced from patents issued on software-related inventions? [Note:
If providing comments on this question, please provide details
regarding the nature of the impact (e.g., the nature of any action
taken by or against you or your organization under a patent, the
results of the action, and the impact of those results on your
activities or operations).]
3. What implications, positive or negative, can you foresee in maintaining
or altering the standards for patent eligibility for software-related
inventions (e.g., consider possible effects, if any, on doing business
or protecting software products in domestic or foreign markets,
conducting research, designing software or modifications thereto,
etc.)?
4. Does the present framework of patent, copyright and trade secret law:
(a) effectively promote innovation in the field of software? (b)
provide the appropriate level of protection for software-related
inventions? [Note: If responding to this question, please describe the
experiences, if any, that you have had with the current system that led
you to your conclusions.]
5. Do you believe a new form of protection for computer programs is needed?
If so, what would be the desirable characteristics of such protection
(e.g., what would be the substantive requirements for obtaining
protection, what procedures would be used to obtain or register rights,
what rights would be provided and how would those rights be enforced, and
how would the new system relate to existing forms of intellectual
property protection)? What would be the drawbacks of a new form of
protection?
Topic B. Standards and practices used in examination of patent applications
for software-related inventions
Dates and Times for Hearings on Topic B:
February 10, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
February 11, 1994; 9:00 a.m. to 12:00 p.m.
Location for Hearing: Marriott Crystal Forum
1999 Jefferson Davis Highway
Arlington, Virginia
Different sectors of the software industry have expressed concern over the
ability of the Patent and Trademark Office to examine patent applications
for software-related inventions effectively. Much of the discussion
involves the lack of availability of printed documents, patents, and other
evidence of public use of the invention before the application was filed
(e.g., called "prior art") that can be used by examiners as a basis for
denying the grant of a patent. Factors that have been identified as
contributing to this problem include:
- early programming techniques were not well documented or publicly
available;
- many software programming techniques were kept as trade secrets and not
publicly disclosed;
- locating and obtaining the most relevant prior art is extremely difficult,
due to the widely diverse nature of processes that have been implemented by
computer software-related systems; and
- software is not documented in a consistent, readily understandable format
(e.g., some programs only provide object code, different programming
languages are used, source code is not summarized or documented, etc.).
Concerns other than access to and use of prior art have also been cited.
For example, some concern has been expressed that the standards used by
examiners to assess novelty and/or obviousness over prior art are not
reflective of industry standards, with the effect that patents are granted
for well-known or obvious software techniques. Others have questioned the
closed nature of the examination process, with no public intervention
prior to grant, while some have criticized the current options for
contesting the validity of granted patents (e.g., the PTO reexamination
process or litigation in the Federal courts).
In view of this, the PTO is interested in public input on how to improve
the examination process for patent applications for software-related
inventions. Interested members of the public are invited to offer
comments on the following series of questions:
1. Do patents and printed publications provide examiners with a sufficient
and representative collection of prior art to assess novelty and
obviousness of software-related inventions? If not, how can existing
collections of prior art be supplemented to provide examiners with a
complete collection of prior art?
2. Can an accurate measurement of the ordinary level of skill in the art
in the field of computer programming be derived from printed
publications and issued patents?
3. Should the PTO impose a special duty on patent applicants for
software-related inventions to disclose information relevant to their
inventions (e.g., one that is higher than in other areas of
technology)? [Note: Under current Rule 56 (37 CFR 1.56), all patent
applicants are required to disclose to the PTO any information of which
they are aware that is pertinent to the invention they claim in their
patent application. The standard does not require the patent applicant to
search or locate relevant information and present it to the Office for
consideration. Failure of an applicant to comply with this requirement can
result in the patent being held unenforceable.]
4. Do the standards governing novelty (35 U.S.C. 102) and obviousness
(35 U.S.C. 103), as applied by the PTO and the Federal courts,
accurately reflect inventive activity in the field of software design
and development? [Note: If responding "no" to this question, please
provide your suggestions on standards that could be used to demonstrate
which software innovations should be viewed as "new" and "non-obvious" to
a person of ordinary skill in the field of software design and
development.]
5. Should implementing a known process, technique, system or method of
doing business on a computer be viewed as being novel and non-obvious
if, but for the use of software, the overall process, technique,
system or method is well known?
6. In what ways can the PTO change examination procedures to assess
novelty and obviousness of software-related inventions? [Note: The
following questions are not intended to restrict comments on ways
the PTO can improve the examination process, but are offered only as
a sample of possible changes to the examination process.
- Should the PTO require patent applicants for inventions related
to software to conduct a search of prior art before filing a
patent application, and to include in their application copies
of relevant prior art documents along with a detailed
explanation that points out how the invention claimed in the
application is distinguishable over the supplied references?
[Note: This would make the "special accelerated examination"
practice described in MPEP 708.02 VIII standard practice for
patent applications on software-related inventions.]
- Given the difficulties associated with examiners assessing
procedures from all fields of technology that have been
implemented on a software-based system, should the PTO require
patent applicants to prove that their inventions are distinct
over the prior art aside from the implementation of the
process on a computer?
- Should the PTO be permitted to establish that a software-related
invention is not novel or is obvious using a lower standard of
proof than for other areas of technology (e.g., a standard
less than prima facie)?
A second topic related to patent examination standards and practices relates
to the problem of effectively and meaningfully disclosing software-related
inventions in patents and other printed publications. To fulfill their
statutorily defined function, patent documents must effectively teach a
person of ordinary skill in the relevant field of technology how to make and
use the invention that is protected by the patent. With respect to patents
on software-related inventions, this means that the patent must disclose
enough information to enable the software programmer of ordinary skill to
recreate the invention protected by the patent claims. In practice, several
concerns have been identified. For example, some have questioned the
"disclosure" value of computer program listings that are often included with
patent specifications, given the significant administrative problems these
listings create for the PTO and the widely divergent manner in which
software is written. Others have questioned how best to describe
software-related inventions in general, standardized terms (e.g., not
through program code listings). In view of these points, the PTO invites
public input on the following series of questions regarding disclosure
requirements for software-related inventions.
7. What are the most effective ways to describe software (e.g.,
pseudocode, flowcharts, etc.), and how can they be implemented through the
disclosure requirements for patent applications?
8. What difficulties do patent applicants face in complying with existing
disclosure requirements (e.g., enablement, description, best mode) for
software-related inventions?
9. Should the PTO require patent applicants to conform to a standardized
disclosure format for applications filed on software-related inventions?
10. How should the PTO handle the submission of computer program code
listings? Should the PTO require submission of program code listings?
Should they require submission of code listings in machine readable format
only? Should program code listings be included in patent documents or
should they be made available only through a publicly accessible database?
What hardships would patent applicants face if these requirements were
imposed?
11. Are current rules governing the submission of drawings impeding the
effective description of software-related inventions, and if so, what
changes should be made? [Note: Rule 96 (37 CFR 1.96) governs the
submission of computer program listings].
12. What difficulties might patent applicants face if they were required to
fully satisfy the disclosure requirements of 35 U.S.C. 112, 1st paragraph
(i.e., enablement, description, best mode), without reliance on computer
program listings?
Topic C: Significance of and protection for visual aspects of
software-related inventions
Date of Hearing for Topic C:
February 11, 1994; 2:00 p.m. to 5:00 p.m.
Location for Hearing: Marriott Crystal Forum
1999 Jefferson Davis Highway
Arlington, Virginia
This topic addresses the question of design patent protection for computer
screen elements (e.g., icons and other user interface elements), and the
significance of screen elements in the context of patentability (utility)
of software-related inventions.
Protection of the visual elements of software, particularly computer
screen displays and images, is very important to the software industry.
Recently, questions have arisen whether design patents can be used to
provide protection for such elements. As way of background, a design
patent provides protection for only the appearance of an article, not
for its structural or utilitarian (functional) features. See,
35 U.S.C. 171. This is in contrast to a "utility" patent that provides
protection for new, useful and non-obvious products, processes,
machines, and compositions of matter. In the context of software, some
have argued that design patents could provide much needed protection for
the visual elements of screen displays that give programs their
distinctive "look and feel."
The question of design patent protection for computer screen displays
or images has been raised in a series of recent cases before the Board
of Patent Appeals and Interferences (Board). See,
Ex parte Tayama, 24 U.S.P.Q.2d 1614 (Bd. PA&I. 1992);
Ex parte Donaldson, 26 U.S.P.Q.2d 1250 (Bd. PA&I. 1992);
Ex parte Strijland, 26 U.S.P.Q.2d 1259 (Bd. PA&I. 1992);
Ex parte Donoghue, 26 U.S.P.Q.2d 1266 (Bd. PA&I. 1992); and
Ex parte Donoghue, 26 U.S.P.Q.2d 1271 (Bd. PA&I. 1992).
The Board held in each of these cases that screen displays, standing
alone, are not statutory subject matter.
The Board concluded that, as claimed and described, the designs were
merely pictures, and that "a picture standing alone is not protectable by
a design patent." The Board's conclusions are consistent with judicial
precedent that treats pictures standing alone as not being statutory
design subject matter. This precedent points out that the factor that
distinguishes subject matter eligible for design patent protection from a
mere picture or surface ornamentation per se (i.e., abstract designs) is
"the embodiment of the design in an article of manufacture."
Note that, in dicta, four of the Strijland panel members indicated they
would have concluded that statutory subject matter was present if certain
threshold requirements were met. These are: (1) the specification as
originally filed described and claimed the icon as a design for a
programmed computer system; (2) the specification included drawings
depicting the icon displayed on the monitor of a programmed computer
system and (3) the specification explained how the icon was an "integral
and active component in the operation of a programmed computer displaying
the design."
The Board decisions leave open the question of the threshold requirements
for the protection of screen displays. To assist the Office in evaluating
how to proceed in light of these decisions, public comments are invited on
the following series of questions:
1. Should design patent protection be available for screen displays and
other visual elements of computer software (e.g., should the PTO adopt
the suggestion of the Board in the Strijland opinion that, if properly
presented, screen displays can be statutory subject matter under
35 U.S.C. 171)?
2. If your answer to 1 is "yes" then:
(a) Should the Office adopt the threshold requirements for
statutory subject matter set forth in Strijland? What
alternatives to those requirements would be consistent with
current statutes, regulations and case law?
(b) Would adoption of the Strijland threshold requirements
require more detailed design application specifications in
order to meet the description, enablement and best mode
requirements of 35 U.S.C. 112, paragraph 1?
(c) Would adoption of the Strijland threshold requirements
affect the patentability of design applications claiming
type fonts designs? Are type fonts distinguishable from
screen displays for the purposes of 35 U.S.C. 171?
(d) What is the article of manufacture that can be considered
ornamented by icons, screen displays, menus, dialog boxes,
etc., and how can these articles be illustrated to comply
with 37 CFR 1.152?
3. What protection would design patents for screen displays provide that
is not already provided by copyright and trademark law?
4. Have you or your organization encountered situations where copyrights
or trademarks have failed to provide adequate protection for visual
elements of software that could have been addressed through use of design
patent protection?
5. Are images displayed on a television screen legally distinguishable from
the same image displayed on a computer monitor?
6. Does a description in a specification indicating how a displayed image
is an "integral and active component in the operation of a programmed
computer displaying the design" provide a workable line between
statutory and non-statutory design subject matter?
A second facet of the discussion of visual elements of software is the
significance of those elements in evaluating whether a software-related
invention is deserving of utility patent protection. Specifically, how
should visual elements of a software-related invention be evaluated, in
the context of the invention as a whole, during examination and for
judicial assessments of validity? The focus of this question is not
whether the software-related invention should be eligible for protection
under the utility patent law (for discussion of this question, see topic
A, above). Rather, it is focused on the significance of visual elements
of software in determining whether a patentable improvement has been made
to a previously known process or article of manufacture. To assist this
discussion, consider each of the following questions in the context of two
machines, each having multiple hardware components and one software
component that guides the operation of the machine. The only difference
between the two machines is that the "new" machine employs different
visual display elements in its software component.
7. Should the "new" machine be considered "novel" in view of the different
visual elements used in the software component?
8. If viewed as making the machine as a whole "novel", should the visual
display elements of the "new" machine justify a conclusion that the product
as a whole could be non-obvious to a person of ordinary skill?
9. If you answered yes to questions 1 or 2,
(a) Which field of technology should be used to determine the
ordinary level of skill for assessing the question of
obviousness (e.g., software programming, software interface
design, field of technology for the machine, other) ?
(b) How should the visual display elements be evaluated (e.g., ease
of use, functions they provide, etc.)?
(c) What aspects of the visual display should be compared and/or
considered?
III. Guidelines for Oral Testimony
Individuals wishing to testify must adhere to the following guidelines:
1. Anyone wishing to testify at the hearings must request an opportunity
to do so no later than five days prior to the date of the hearing at
which they wish to testify. No one will be permitted to testify without
prior approval.
2. Requests to testify must include the speaker's name, affiliation (if
any), phone number, fax number (if available), mailing address, and the
questions in each topic that the speaker intends to address in his or
her testimony.
3. Speakers will be provided between 7 and 12 minutes to present their
remarks. The exact time allocated per speaker will be determined after
the final number of parties testifying has been determined.
4. Speakers must provide a written copy of their testimony for inclusion
in the record of the proceedings no later than the last date of the
hearings at which they are testifying (e.g., either January 27 or
February 11, 1994).
5. Speakers must adhere to guidelines established for testimony. These
guidelines will be provided to all speakers no later than two days
prior to the date of the hearings.
A schedule providing approximate times for testimony will be provided to
all speakers no later than the morning of the day of each hearing.
Speakers are advised that the schedule for testimony will be subject to
change during the course of the hearings.
IV. Other Information
For information regarding accommodations in the San Jose area, or for
information regarding the San Jose Convention Center facilities,
individuals can contact Joseph R. Hedges of the Office of Economic
Development of the City of San Jose. Mr. Hedges can be reached by phone
at (408) 277-5880; by fax at (408) 277-3615, or by mail addressed to 50
West San Fernando Street, Suite 900, San Jose, California 95113.
Bruce A. Lehman
Assistant Secretary of Commerce and Commissioner of Patents and Trademarks
