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Limiting Functional Claiming for Software Patents: A solution or an impossibility?

Last Tuesday, February 12th, at the USPTO hearing on software patent quality held at Stanford University, Professor Lemley, of Stanford Law School, presented his most recent thoughts on how to address the problem of overly broad software patent claims, by limiting functional claiming, which he believes is at the core of the problem.  Professor Lemley is definitely on to something, but I’m pretty confident that the notion of limiting functional claiming for software patents is an impossibly unworkable approach to the problem of overly broad software patents.  The reasons are simple.  First, at every level of implementation, whether it be microcode, object code, source code, or higher, the very purpose of all computer software is to control the electronic data processing and storage functionality of a computer system.  So, software patent claims by their nature define electronic functionality, and after one leaves the level of machine-level functionality, the only thing limiting the characterization or description of this functionality is a programmer’s imagination.  Since virtually no programmers or software inventors invent at the level of machine level operation (this is left to operating systems, programming languages, compilers and interpreters, etc..)  there are few if any inventions at this level.  Rather, most all software invention occurs at a higher level of functionality, and in fact a much higher level of functionality and functionality definition.  If the invention occurs at this level, it is pretty difficult to see how any logical rule can limit the scope of the claims to a more detailed level of functional implementation that the programmer would largely be unaware of, that being left to the nuances of the particular language/operating system/compiler/interpreter used by the programmer or publisher.  Furthermore, if we limit the scope of software claims only to machine-level implementations disclosed in the patent, software patents will be of no use to protect anything other than a tiny fraction of software inventions. On a related note, it seems inconsistent with the state of software technology to hold software inventors or claims to an exacting standard of enablement where there is clearly an extremely high degree of what could fairly be called “automated enablement.”

Principal & Chief Innovation Officer

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