Sep 30, 2011 the patent statute requires patent owners who make, offer for sale, or sell products covered by an apparatus patent to provide notice of their rights by marking a patented article, or in some. On friday, september 17, 2010, i had the opportunity to chat with professor mark lemley, who is the william h. Lemley is the author of software and internet law 3. There are approximately 2,185,000 such utility patents utility patent number 4,800,000 was issued in january 1989. Software patents and the return of functional claiming request pdf. Patenteligibility of business methods, software and. It is frequently argued that such claims are overbroad and unclear, and that the aggregation of such claims can result in innovationstifling patent thickets. Functional claiming lemley draft 1 software patents and the return of functional claiming1 mark a. Beginning in the 1980s, a series of administrative, judicial, and legislative actions strengthened the economic value of u. As if all this were not enough, prof lemley remains a practicing lawyer. For this, software users must be able to participate in the development and distribution of the software. Oct 23, 2012 on todays show, we talk with mark lemley, who has some ideas for fixing the patent mess. Robin feldman and mark lemley have posted a very interesting paper on ssrn titled does patent licensing mean innovation.
Whether you challenge a patent at the ptab, in district court in the u. Practical strategies for patent marking of software. Neukom professor of law at stanford law school and the director of the stanford program in law, science and technology. European patents will not be granted for inventions which.
Federal circuit has essentially excused software inventions from compliance with the. On todays show, we talk with mark lemley, who has some ideas for fixing the patent mess. Burk dl, lemley ma 2005 designing optimal software patents, stanford public. The state street case involved a software program that was used to value mutual funds. Others would limit patents to inventions entirely embodied in software or on the software itself as software patents. If perceived intent is the test, then be careful what you intend because if.
As with other property rights, patents may be sold, transferred, or licensed for a third partys use. However, in other jurisdictions which have importance regarding the patents such as european union where there is a common attitude towards patentability among the member states although no total harmonization. Neukom professor at stanford law school and partner in the san francisco law firm. How structural claim limitations can save software patents. Patent quality and settlement among repeat patent litigants. Unfortunately, most of that attention has been devoted to the problem of whether software is or should be patentable subject matter. Sep 15, 2011 for example, regarding thomas edison, lemleys primary case illustrating the socalled myth of the sole inventor, he alleges that sawyer and man invented and patented the incandescent. In usa, for last 30 or more years, courts step by step eliminated the obstacles for patenting business methods and software by applying different tests. Neukom professor of law at stanford law school, where he teaches intellectual property, computer and internet law, patent law, and antitrust. The patentability of software, computer programs and computerimplemented inventions under the european patent convention epc is the extent to which subject matter in these fields is patentable under the convention on the grant of european patents of october 5, 1973. This talk provides an introduction to software patents, and addresses.
The current dilemma and future of software patenting request pdf. Lemley, software patents and the return of functional claiming, 20 wis. This was highlighted in the recent this american life episode on patents, in which a software developer with a patent admitted that he didnt even understand what his own patent said. The patent statute requires patent owners who make, offer for sale, or sell products covered by an apparatus patent to provide notice of their rights by. Mark lemley, rational ignorance at the patent office, 95 northwestern.
Software and internet patents with extremely broad claims seem to be everywhere these days. Mark has been named california lawyers attorney of the year twice. Mark lemley is often coined the most influential person in intellectual property and he is currently a professor at the stanford program in law and he is also the founding partner of a law firm called durie tangri llp and a couple of years ago he also founded lex machina before we talk about his lex machina firm, i want to ask mark lemley. Lex machina was acquired by lexis in december 2015. Foundation for a free information infrastructure ffii. Software patents and the return of functional claiming lex. Lemley, patent scope and innovation in the software. Lemley and carl shapiro f or many years, economists typically conceptualized patents as wellde. Creating a right to reverse engineer patented software. The subject also includes the question of whether european patents granted by the european patent office epo in these fields. Claims for patents often are written using functional, rather than structural, terms. Lemley, software patents and the return of functional claiming,stanford public law working paper no.
Software patents and the return of functional claiming stanford. Tan mau wus post yesterday on mark lemleys software patents and the return of functional claiming questions whether restricting software claims to disclosed implementations will really make a difference. On the one hand, it has been issuing a large number of dubious patents over the past twenty years, particularly in the software and electronic commerce space. This includes two widely discussed categories, software patents and business. Patents approved before 1995 are in force for seventeen years, so all patents since november 1989 are potentially enforceable today. Practical strategies for patent marking of softwarerelated. Patent scope and innovation in the software industry by mark a. Aug 28, 2015 others would limit patents to inventions entirely embodied in software or on the software itself as software patents. How structural claim limitations can save software patents february 9, 2016, 11. Aug 22, 2011 professor mark lemley is the william h. Lemley and carl shapiro or many years, economists typically conceptualized patents as welldefined property rights giving their owners either a monopoly over some market or at least a significant competitive advantage in that market due to control.
Under the epc, and in particular its article 52, programs for computers. Using structural claim limitations to protect software patents. The results been a raft of lawsuits against companies making any products in this space. Patent scope and innovation in the software industry by. An improved interpretation of articles 522 and 3 of the european patent convention. Software patents a patent provides an exclusive legal right to an invention for a limited period of time, in exchange for public disclosure of that innovation. Lemley2 commentators have observed for years that patents do less good and cause more harm in the software industry than in other industries such as pharmaceuticals.
Patent scope and innovation in the software industry by mark. Comparing innovation in the united states, israel, india, europe and other regions scholars assess the role of software patents in development. He received the california state bars inaugural ip vanguard award. Lemley and shapiro have written extensively about the interplay between patent issues and standardsetting, including the oftcited article patent holdup and royalty stacking.
In most countries patent rights fall under civil law and the patent holder needs to sue someone infringing the patent in order to. He is also the author of seven books, and 119 articles on his subjects of interest. Unfortunately, lower courts have radically reinterpreted the laws through decisions such as state street, in ways that have greatly harmed software developers and software users we need to abolish software patents, because there is a vast amount of evidence. Eff told us that there are no serious efforts aimed at eliminating software patents as opposed to reforming the patent system. See software patents and the return of functional claiming by lemley. Interview with mark lemley, facebook as a service of process. Free and open source software licensing and the mystery of licensors patents 7 not restrict other software. It issues many more patents than its counterparts in. Patent scope and innovation in the software industry scholarship. Sep 25, 2012 second, in response to aharonians why target software critique, i think lemley would respond that patentees should never be allowed to claim broad functions without limiting algorithms, but that this is only a particular problem now for software claims e. Here is a link to the paper, and here is the abstract. Lemley, patent scope and innovation in the software in. For this, software users must be able to participate in the development and distribution of. The subject also includes the question of whether european patents granted.
What is the role of software patents in spurring innovation. The problem of bad patents the patent and trademark office pto finds itself caught in a vise. In a study of patents litigated in the united states more than eight times over a tenyear period 106 patents, allison, lemley andwalker 2009 walker, 2011 showed that plaintiffs in lawsuits. Software patents andor software development brooklynworks.
Neither has the eu, which has industryspecific rules for compulsory licensing of. Interview with mark lemley, facebook as a service of. Software patents in europe we are working towards a world where software does what software users want it to do. Patent law has a general set of legal rules to govern the validity and infringement of patents in a wide variety of technologies. The patent crisis and how the courts can solve it, dan l. Georgetown law faculty publications and other works. For example, regarding thomas edison, lemleys primary case illustrating the socalled myth of the sole inventor, he alleges that sawyer and man invented and patented the incandescent. Lex machina 1010 doyle street, suite 200 menlo park, ca 94025 phone. Lemley and carl shapiro or many years, economists typically conceptualized patents as welldefined. In their new paper, titled a simple approach to setting reasonable royalties. Tim knight talks to mark lemley about patent law patentology. Lee van pelt thanks to mark lemley for providing the.
Jul 26, 2012 most software patents today are written in functional terms. Recent posts by simon phipps at infoworld and by mike masnick at techdirt have suggested that it would, calling lemleys proposal the software patent solution that will fix. The patentability of software, computer programs and computerimplemented inventions under the european patent convention is the extent to which subject matter in these fields is patentable under the convention on the grant of european patents of october 5, 1973. This was highlighted in the recent this american life episode on patents, in which a software developer with a patent admittedthat he didnt even understand what his own patent said. A patent is a form of intellectual property that gives its owner the legal right to exclude others from making, using, selling and importing an invention for a limited period of years, in exchange for publishing an enabling public disclosure of the invention. A commonly offered justification for patent trolls or nonpracticing entities npes is that they serve as a middleman facilitating innovation, bringing new technology. Since the article 52 exclusion has effectively vanished, this text examines what makes examination of software invention difficult and what leads to such energetic opposition to protecting inventive activity in the software field. Software patents and the return of functional claiming by. We recently came across a new paper written by noted scholars mark lemley and carl shapiro that we thought was worth passing along. He teaches intellectual property, computer and internet law, patent law, and antitrust.
Lemley is a professor at stanford law school and an expert on software patents. How i discovered strong patents are critical for america. Software patents and the return of functional claiming. With roughly eighty thousand software patents already issued, and the federal circuit endorsing patentability without qualification, those questions are for the history books. A number of people look at the problem and say, abolish software patents, says mark lemley, a patentlaw professor at stanford university and a founding partner at intellectualproperty law. Software patents under the european patent convention. Patent scope and innovation in the software industry. Software patents under the european patent convention wikipedia. Most software patents today are written in functional terms. Wheeler 20081201 revised 20110802 historically, the u. The patent and trademark office pto finds itself caught in a vise. We argue that patent law needs some refinement if it is to promote rather than impede the growth of this new market, which is characterized by. If courts would faithfully apply the 1952 act, limiting those claims to the actual algorithms the patentees disclosed and their equivalents, they could prevent overclaiming by software patentees and solve much of the patent thicket problem that besets software innovation.
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