Editor: Spike R. MacPhee (spiker@prep.ai.mit.edu)
Assistant Editor: Andy Oram (oram@hicomb.hi.com)
Reproduction of Programming Freedom via all electronic media is encouraged. To reproduce a signed article individually, please contact the author for permission.
Report on "Finding A Balance":, the Congressional Office of Technology's 1992 report on "Computer Software, Intellectual Property and the Challenge of Technological Change."
On May 1 the Congressional Office of Technology Assessment (OTA) issued its long-awaited report on the impact of copyright and patent law on computer programs. This 228-page report is the most comprehensive description to date of the issues of primary importance to The League.
The OTA's mission is to analyze policy questions pertaining to technology in an objective and bipartisan way - not to make policy recommendations. For this reason, the OTA's report does not conclude if patents and copyrights are "good" or "bad" for software or the country as a whole: it simply provides an analysis of the current state-of-affairs and outlines policy options available to Congress.
The OTA's report is therefore likely to be at the heart of any future action taken by Congress on these matters.
"Finding A Balance" is the last in a series of reports that OTA has been issuing on intellectual property law. Other reports have looked at the electronic redistribution of information ("Intellectual Property Rights in an Age of Electronics and Information," OTA 1986), the role of patents in the field of biotechnology ("New Developments in Biotechnology: Patenting Life - Special Report," OTA 1989), and the impact of home copying ("Copyright and Home Copying: Technology Challenges the Law," OTA 1989).
The problem, says OTA, is that there are elements of computer programs that are like literature, and apparently covered by existing copyright laws, while there are other elements that smack of invention and should therefore be covered by patent laws. OTA points out that software is the only thing in American society that can be covered by copyright, patent and trade secret laws at the same time.
The report focuses on four main elements of computer program:
Today there are two schools of thought in the United States of how the situation should be fixed: one school of thought is that Congress should clarify the ways in which copyright and patent law affects computer programs. The second school holds that Congress should create a new "sui generis" approach that deals specifically with computer software.
The OTA disagrees with the statement that "the majority of legal experts and firms in the industry take the position that existing structures like copyright and/or patent are adequate to deal with software." Case law will evolve in the courts, OTA says these experts contend, and "sui generis approaches risk obsolescence as the technology changes."
Instead, OTA says, "despite the advantages, there are questions as to whether this process of accommodation can - or should - continue indefinitely. With respect to software, there may be a point where it becomes preferable to complement or substitute ... the existing structures, rather than extend the scope of copyright to fit certain aspects of software," (p. 8).
Beyond the question of verbatim copying, there is a "fuzzy" line as more and more aspects of a program's design and function are covered by copyright law.
One option for Congress, says OTA, would be not to act and let these matters be resolved in the courts. A way to speed that process would be for congress to establish a special "fast track" inside the court system for intellectual property litigations.
If Congress does want to do something, one of the first things that it could do, says OTA, is to clarify the scope of copyright to either specifically include or exclude "one or more aspects of software, such as:"
Expanding upon the Copyright Law's current language on "subject matter of copyright" by saying that the above are or are not copyrightable subject material.
Another option, says OTA, would be for congress to exempt computer programs from copyright and make them subject to new "sui generis" laws.
Although not an issue of primary concern to the league, the OTA report also covers the question of reverse engineering. OTA calls upon Congress to specifically address the question of reverse engineering -- either through legislation or cooperation with industry -- and clarify whether reverse engineering is considered "fair use" under the copyright law.
OTA suggested that Congress might want to develop a technique for giving "limited rights for incremental software advances that would not be patentable or for aspects of program functionality that fall outside copyrightable subject matter."
"The long-term question of whether patent (or patentlike) protection for computer processes and/or algorithms is socially desirable is separate from the related question of how well current U.S. Patent and Trademark Office (PTO) procedures are working now," (p. 10).On the question of whether or not the PTO procedures are working now, OTA concludes that they aren't.
OTA states that the biggest problem preventing the PTO from carrying out its current mission is a problem of dealing with prior art. PTO is forbidden from issuing patents unless they are "non-obvious" to practitioners in the field and "novel" - that is, have never been implemented before.
The LPF believes that they are mistaken--while this problem does contribute to bad consequences, even a perfect awareness of the prior art would at most eliminate a fraction of them. rms has written an article relevant to this that was in Computerworld and it will be in our next issue.
Because of PTO's problems, OTA says, patents have been issued that are neither non-obvious nor novel.
The PTO has "serious" problems, OTA says, including:
To solve these problems, OTA says, the patent office could "fill in" its database of both patent and non-patent prior art. OTA recommends that the PTO could revise its electronic search system so that examiners can easily pull from the database all software-related patents (currently, OTA says, this is impossible to do). PTO could reclassify its patents in the computer arts. The OTA recommends that PTO may want to perform this reclassification and filling-in in conjunction with the computer industry.
One way to eliminate "land-mine patents" - patents that are filed when the technology is new but granted many years in the future - suggests OTA is to require the PTO to publish all software-related patent applications published after 18 months, whether or not the patents were issued.
In one footnote, OTA reprints a letter from Robert S. Boyer (Professor of Computer Sciences, University of Texas, and an LPF member) recommending that "patent law should be clarified to the effect that a patent is never infringed merely by the use of software on a computer."
OTA notes that "protection of software-related inventions and algorithms by patent is a recent development and is controversial." OTA states that the meaning of the term "mathematical algorithm" (which PTO is forbidden to patent) "has been the subject of considerable discussion and debate." Algorithms are not "mathematical" if they can be stated in terms of operations on things in the "real world."
"Over the past decade, patents have been issued for software-related inventions such as":OTA doesn't reach a conclusion; instead, it always falls back on the technical problems currently facing the PTO in deciding whether or not software is "novel" and "non-obvious."
"To some industry observers, there appears to be variance--or, at least, uncertainty on their part--in how PTO guidelines are being applied during examination," (p. 32).
- linear-programming algorithms
- spell-checking routines
- logic-ordering operations for spreadsheet programs
- brokerage cash-management systems
- and bank-college savings systems
OTA asked PTO to walk it through a typical software-related patent application. PTO refused.
OTA identifies three different policy issues regarding software patents:
"To reduce uncertainties and clarify legislative intent, Congress could explicitly address the question of patentability for software-related inventions and for certain algorithms," (p. 32).This would be a far more difficult problem than defining the scope of copyright, says OTA. "The term 'software patent' does not correspond to any PTO category," (p. 32). Nevertheless, Congress could:
"Option 2.1: Refine the statutory definition of patentable subject matter to provide guidance to the courts and PTO. Legislation might address the extent to which processes implemented in software or "mathematical algorithms" are or are not statutory subject matter. Legislation might also address the issue of special exemptions, such as for research and education."Option 2.2: Exclude software-related inventions and/or algorithms from the patent law and create a special, sui generis protection within a patent framework for some inventions. This latter might have a short term, lower criteria for inventiveness, and/or special exemptions from infringement"
On the question of prior art, OTA says that the database of prior art must be filled in. They suggest:
"Option 2.3: Encourage establishment of a supplementary repository of nonpatent prior art, either public or private."
As the title of the OTA's report indicates, the agencies biggest concern is finding a balance and presenting options for congress.
This report presents Congress with many policy options that are diametrically opposed. For example, it says that Congress could specifically exempt programs from copyright or it could strengthen copyrights on programs.
To order your own copy, send $11.00 (international customers add 25%) to:
Superintendent of Documents
P.O. Box 371954
Pittsburgh, PA 15250-7954
fax: 202-512-2250
Payment may be in the form of check, payable to Superintendent of Documents, GPO Deposit Account #, or VISA or MasterCard (be sure to include your expiration date and authorizing signature.)
April 13: Unix User's Association of Southern California - software patents speech by Paul Eggert (eggert@twinsun.com)
April 27: Computing Professionals for Social Responsibility, LA Chapter - software patents speech by Paul Eggert.
April 27-30: XWorld Conference and Exhibition, New York - LPF materials brought by David B. Lewis, uunet!craft!david@uunet.uu.net
Summary by Mark R. Nelson, 73650.312@CompuServe.COM
Our voicemail number is temporarily down; the subcontractor who provided voicemail service to our snailmail mailbox company abruptly went bankrupt; we are attempting to recover the number from them and provide more reliable service to you without obsoleting our stocks of LPF materials with the voicemail number on them.
Additionally, the complaint seeks redress for Apple's accusation that Quorum, in helping independent software developers (ISVs) migrate their Macintosh-compatible applications to other platforms, induced those ISVs to violate licensing and confidentiality agreements with Apple. Apple's assertion implies that developers have knowingly or unknowingly included Apple proprietary information in their independent source code. Quorum believes Apple cannot assert any ownership of application source code created by independent software developers.
The complaint centers on the allegation that Quorum Latitude, a cross-platform compatibility tool that enables Macintosh-compatible applications to run on other computer platforms, violates Apple patents on "pull-down menus" and "Color QuickDraw" and Apple's copyrights. Latitude relies solely on the use of Motif or Open Look for pull-down menus and uses Adobe Display PostScript or SunSoft NeWS for screen rendering, and therefore could not infringe on Apple's patents or copyrights.
Quorum asks the United States District Court for the Northern District of California to rule that Quorum has not infringed any copyrights or patents of Apple and to prohibit Apple from making further assertions that Latitude violates any Apple intellectual property rights.
"From the very beginning of our technology development, we have carefully avoided any perceived or actual infringement of Apple's intellectual property rights," said Sheldon Breiner, president and co-founder of Quorum. "For Apple to accuse us of impropriety is to discredit the technical innovations we have achieved in our Quorum Compatibility Engine and Latitude product."
"Like any other independent developer, we read publicly available information such as Inside Macintosh and then wrote some innovative software," said R. Martin Chavez, co-founder and chief technical officer. "The Compatibility Engine simply liberates Macintosh-compatible applications to run on other platforms without touching any of Apple's Macintosh technology."
Quorum Latitude is based on a core technology called Quorum Compatibility Engine. When an original Macintosh-compatible application makes a call to any systems facility, the Compatibility Engine responds by rerouting the request to a similar service resident on computers using the UNIX operating system. For screen display, the Compatibility Engine redirects Macintosh-proprietary QuickDraw calls directly into Display PostScript or NeWS. The PostScript language is a hardware-independent imaging language that supports any range of display, resolution and output devices...
Check out page 248 of the June issue of Windows. There is a promotion for a shareware program called Macblaster written by Earl Gehr. It is a game that pits your PC against a fleet of attacking Macs. The Macs zip across the sky trying to destroy your PC by dropping copyright bricks. The object is to blast all of the Macs before they hit your PC with a copyright. Hmmm, interesting tactic indeed.
League-tactics@prep.ai.mit.edu is for discussion of LPF directions and is not moderated.
The partial decision dropped the case against Hewlett Packard. It also dropped most of the case against Microsoft, but not all.
The reason given by the judge was that Microsoft's old contract with Apple gave Microsoft the right to do most of the things covered by the suit. The judge did not rule on the question of whether the style of a user interface can be copyrighted at all, so the decision would have no effect if Apple (or someone else) were to sue someone other than Microsoft in the exact same way.
A few weeks ago a story circulated on the Internet that the partial decision in the Apple versus Microsoft case had been withdrawn. According to Microsoft, this was untrue; the partial decision still stands. However, we cannot regard it as final, since Apple will probably appeal.
Addendum: Apple asked the judge to reconsider his partial decision and he agreed to reconsider. So it's possible the decision will be changed by the trial court.