NATIONAL INFORMATION INFRASTRUCTURE
B. PATENT
Development of the NII will depend upon, and stimulate innovation in, many fields of technology, especially computer software, computer hardware and telecommunications. An effectively functioning patent system that encourages and protects innovations in these fields of technology is, therefore, important for the overall success of the NII.
The primary goal of the patent system is to encourage innovation and commercialization of technological advances. To this end, the patent system offers an incentive to inventors to publicly disclose their inventions in exchange for the exclusive right to prevent others from making, using, offering for sale or selling the inventions throughout the United States or importing the inventions into the United States. The patent system serves as an important complement to the copyright system for computer and software innovations by providing protection for functional aspects of these innovations.
Unlike copyright protection which attaches automatically at the moment of fixation, an inventor must specifically request protection by filing a patent application and establish that the invention meets all of the statutory requirements of patentability. Rights are obtained by filing a patent application with the Patent and Trademark Office (PTO), and proceeding through an examination process. To be patentable, an invention must be new,[1] useful[2] and nonobvious.[3] In addition, the inventor must fully describe and disclose the invention for which patent protection is sought in a patent application.[4] If the PTO determines that all the patentability requirements have been met for the invention for which patent protection is requested, a patent will be granted to the applicant.
Patent protection is available in the United States for inventions without differentiation as to the field of technology: "any new and useful process, machine, manufacture, or composition of matter" can be patented.[5] Despite this breadth, certain limits do exist on what can be patented. For example, a person cannot patent a process that consists exclusively of the steps one would follow to apply a mathematical principle to solve a mathematical problem.[6] This restriction is not statutory; instead, it arises from judicial interpretation of the law governing patentable categories of invention, and is based on the notion that one cannot preempt use of laws of nature or mathematical truths. Similarly, one cannot patent an arrangement of information or a writing, as such things do not fall within one of the enumerated categories of inventions eligible to be patented.[7]
Once it is determined that an applicant has requested protection for subject matter that is eligible to be patented, the examination process shifts to evaluate the substantive merits of the invention. This evaluation is performed to determine if the invention is "novel" and "non-obvious." The PTO performs this evaluation by comparing the invention undergoing examination to the "prior art." Generally speaking, prior art includes information that is publicly available prior to the filing date of a patent application.[8] An invention satisfies the novelty requirement if it differs in any material way from what is known in the "prior art."[9] An invention satisfies the nonobviousness requirement if a "person of ordinary skill in the art" would not have viewed the invention as having been obvious in view of the prior art at the time the invention was made.[10] Some flexibility is provided to patent applicants in the United States regarding when they must seek protection to avoid losing patent rights due to prior public disclosure of the invention.[11]
An applicant must also satisfy a number of requirements that govern the contents and form of a patent application. A patent application consists of a specification and claims. The claims of a patent define the metes and bounds of the invention by specifically defining the features of an invention which are protected. Among other things, Section 112 requires that the inventor provide an adequate disclosure of the invention that the applicant has claimed.[12] A disclosure is adequate when it enables a person of ordinary skill to "practice" the invention as claimed without undue experimentation or effort.[13] Section 112 also requires that the inventor disclose the "best mode" of practicing the invention known to him. The requirements of Section 112 serve to ensure that the patent provides a high-quality, technically accurate disclosure of the invention.
Once issued, a patent grants its owner the exclusive right to prevent others from making, using, offering for sale, or selling the claimed invention in the United States, or importing the claimed invention into the United States.[14] A patent owner is given a term of protection that begins on the date the patent is granted and ends 20 years from the date the application leading to the patent was filed.[15] The patent owner must assert these rights against a party that performs any of the acts that would infringe the patent. The patent owner has the initial burden of proving that the accused party infringed one or more of the patent claims.[16] Patent infringement is established by demonstrating that the accused party has made, used, sold, imported or offered to sell a product that falls within the scope of a product patent claim.[17] Similarly, if a patent has been granted on a process, the patent owner must show that the accused party engaged in activity that would infringe the process claims, or that the accused party made, used, sold, offered to sell or imported a product produced using the claimed process.[18] A patent owner's failure to promptly enforce its rights once an infringement is discovered can limit his or her remedies or may even preclude enforcement against that party.
A party accused of infringement can avoid liability by asserting that the patent does not cover the accused product or process.[19] The accused infringer can also assert that one or more of the patent claims is either invalid[20] or that the patent as a whole is unenforceable.[21] Every claim in a patent, however, is presumed valid.[22] Thus, in district court, the party challenging patent validity must demonstrate through clear and convincing evidence that the patent fails to satisfy one or more of the statutory criteria of patentability (e.g., novelty, utility, nonobviousness), or that the application is defective because it has an inadequate disclosure.[23]
1. PATENTABILITY DETERMINATIONS
The NII will have a tremendous impact on the flow of information. As new sources of information are made available and old sources are made more accessible, the accumulated body of knowledge available for use in patentability determinations will expand. This means that more information will be available to influence decisions on the patentability of an invention, whether in the context of the patent examination process or during challenges to patent validity through litigation in the Federal courts.[24 ] Thus, the most significant impact that the NII will have on the patent system will be in relation to issues that are affected by the degree of availability of "prior art."
Over the past twenty years, access to sources of information -- particularly patents and printed publications -- has been vastly improved through the development and use of on-line database services. These services document the existence and content of patents and printed publications, and in some instances, provide access to the complete text and electronic images of such documents. It is important to recognize, however, that the information that can be retrieved through these services invariably exists as an original, paper document disseminated through traditional publication channels (e.g., technical journals or publications, domestic and foreign patent documents).
The NII will dramatically change the way information is prepared and disseminated. It will improve the number, diversity, accessibility and quality of traditional on-line services. It will also foster creation of new forms of "electronic publications" that are different in character from traditional paper-based publications. Examples of such electronic publications include electronic versions of traditional paper-based publications that supplement or reorganize presentation of the content of the paper-based publication; informally prepared documents such as a posting of technical or other information on a particular topic-driven forum; and formally designed and developed electronic publications that are not printed on paper, but are disseminated exclusively through an electronic forum.
Electronic publications such as these will supplement the wealth of publicly accessible information that is used in patentability determinations. However, these new types of electronically disseminated documents are different in character from traditionally printed and indexed patents and publications, and as such, could raise questions when used as prior art in a patentability determination, either before the PTO or during litigation. For example, the information contained in electronically-disseminated documents may not be printed originally on paper, and as such, there may be no tangible evidence regarding the date the information was first publicly disclosed or as to the contents of the document as disclosed on that date. There are no uniform guidelines or industry standards presently that govern the memorialization of either the contents or the date of first public disclosure of such documents. A second problem is that the degree of distribution of or public accessibility to electronic documents is not presently measured and may prove unmeasurable. Limited availability of a document can render that document unusable as a source of information as prior art.[25] Both issues, however, are key factors in determining whether a document is in the prior art.
A second category of concerns relates to the technical accuracy of electronically disseminated documents. To be a usable and reliable prior art document, the contents of the document must be technically accurate and informative. The types of documents that are disseminated electronically today, however, vary tremendously as to their content and accuracy. Thus, while certain information could be posted on a forum, with a reliable documentation of the date of that disclosure and its contents, it would not be certain that the disclosure itself is technically accurate and usable as prior art. Informally created documents, such as postings on a forum, are not typically subjected to any form of peer review or content screening. The lack of quality control could therefore complicate evaluation of information contained in these electronic documents, which, in turn, could affect patentability, particularly in the context of litigation.
2. INFRINGEMENT DETERMINATIONS
As noted in other sections of this Report, some questions exist regarding whether or how copyright owners will be able to effectively enforce their rights in their works on the NII. The issues related to the enforcement of copyrights on the NII do not have an analogue with regard to patent protection. This is because each patent provides a precise definition of the nature of activities that will infringe the patent owner's rights. And while some have raised concerns over the ability of patent owners to prove infringement where the infringing activities were facilitated by or conducted on the NII, these concerns do not appear to be well founded.
Consider a patent claim covering a new data compression process used for communicating information over the NII. To infringe the patent owner's rights, one would have to perform each of the acts specifically outlined in the process claim. To prove infringement, the patent owner could rely on any evidence that the accused party used the process. This could be done by showing that the accused infringer developed and distributed a software program that, when used by a third party, would infringe the process claim (e.g., the software would require the third party to follow the steps outlined in the process claim and thus lead to infringement of that claim). Alternatively, the patent owner could show that data was distributed over the NII in the compressed format, and then establish the source of the data. Considered fully, it does not appear to be an insurmountable problem for the patent owner to identify infringing parties and establish a sufficient quantum of proof that the accused infringer performed a particular series of acts, which, once performed, infringed one or more patent claims.
3. PATENTABILITY OF SOFTWARE
Another issue considered with regard to its relationship to the NII is the eligibility of computer software for patent protection. Computer software-related inventions have enjoyed some degree of protection under the patent system since the beginning of the computer industry. In terms of distinguishing which aspects of software-related inventions could or could not be patented, the courts and the PTO have relied on a number of legal doctrines. Under one of these doctrines, computer program code per se has been held to be ineligible for patent protection because it is a writing that does not fall within one of the enumerated categories of invention. Another of these doctrines provides that processes, including those implemented in software, that are indistinguishable from the steps one would follow in applying a mathematical principle to solve a mathematical problem cannot be patented.[26] These two doctrines have served to exclude protection for software-related inventions independent of machines or processes as implemented on a computer.
A series of decisions rendered in 1994 by the Court of Appeals for the Federal Circuit has clarified the boundaries of patent-eligible subject matter for software-related inventions. In one decision, the Federal Circuit concluded that an "old" memory that was "reconfigured" through the storage thereon of a "data structure" (an ordered arrangement of information) constituted a patentable invention.[27] In other cases, both before and after this holding, the Federal Circuit concluded that a data structure, per se, and as incorporated into a process without any additional physical elements or steps in the process, did not create patentable subject matter.[28] The combined effect of the cases suggests that software can transform unpatentable objects into patentable ones and as such must be given weight in patentability determinations, but information per se and abstract ideas continue to be treated as non-statutory subject matter. The trend -- as far as can be ascertained -- is to provide a broader eligibility for software aspects of inventions than was available previously.
While there may be some degree of uncertainty relating to the precise boundaries of patent-eligibility for software, this alone does not suggest that this topic should or even could be resolved by the Working Group. Finer resolution of the boundaries of patent-eligibility for software could result in greater or more restricted protection for software. Whatever the result, the ramifications run far past those that must be considered in the context of the NII. Changes affecting patent eligibility for software-related technologies will affect more than simply the software innovation that will develop incident to development and use of the NII. And resolution of these boundaries of protection under the patent law for software will not directly affect the significant development efforts underway now related to the NII. Considered from a different perspective, development of the NII may lead to more software development, particularly related to telecommunications and networking, but it will not present unique issues in terms of patent eligibility for software.
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