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June 13, 2005

A software patent puzzle (part 1)

The controversy over software patents just won't die, with the row over the proposed European Directive on the Patentability of Computer-Implemented Inventions being the latest bit of evidence.

I think this debate is fundamentally misguided, and that the debate may be more fruitfully framed as one about the patentability of computer-generated inventions, not just software. To shed light on this alternative perspective, consider the following puzzle:

You are shown two black boxes that are identical in external appearance and behavior. Each box has an input slot into which an original X-ray print may be fed. After a short delay, each box produces a highly clarified X-ray print in which any tumors are highlighted. The clarified X-rays produced by both boxes are indistinguishable from each other. Assume that the quality of X-ray clarification produced by both boxes is better than that which may be obtained using any preexisting X-ray processing device.

Upon opening both boxes and peering inside, you find in the first box a complex jumble of circuitry and are informed that such circuitry was custom-designed by an expert electrical engineer. In the other box you find a small laptop computer running X-ray image processing software written by a computer programmer. The circuitry in the first box and the software in the second box implement precisely the same X-ray clarification algorithm.

Question: Is there any basis for deeming the circuit-implemented X-ray clarification device to be patentable subject matter, but not the software-implemented clarification device? Post your answers below.

(This hypothetical first appeared in an article that I wrote, but which is not yet available online. All the better -- now you can't cheat!)

Posted by Robert at June 13, 2005 1:00 AM
category: Software Patents



You have a law professor's flair for point-proving hypotheticals. Assuming patentability of the circuit-driven device, I cannot think of a reason why the computer-driven device would not also be patentable. The fact that one machine uses circuitry designed by an electrical engineer and the other uses software designed by a computer engineer seems irrelevant. The bottom line is that in each case a human being has rigged a machine to use the same algorithm to accomplish the same result -- a clarified x-ray.

Both devices in the hypothetical utilize an automated process. There may be a difference as to the degree of automation used by each machine, but the basic human/machine dynamic is the same in both. Indeed, the first machine uses circuitry directly, while the second uses a software code to drive someone else's (i.e. the chip manufacturer's) circuitry. Basing patentability on the degree of automation involved, i.e. on when in the process human input "ends" and machine process "begins" seems like a surefire path to a very slippery slope.

Let's extend the hypothetical to include a third machine, using the same algorithm and producing the same result as the first two. The third machine, like the second, utilizes a laptop computer, but in this case the software was actually "written" by another software program. More specifically, let's assume that the algorithm is the key to the process and that the laptop in the third machine executed an independent program to come up with the optimal algorithm, which, again, turns out to be the same algorithm as is used in the first two machines.

Any effort to set a threshold, whether quantitative, qualitative or both, below which "human input" becomes insufficient for patentability, would be hopelessly arbitrary. Human make machines. The machines that humans make do things. The things that we can make machines do are becoming more and more sophisticated. In fact, as indicated by the hypothetical third box, technology can be set in motion to produce new technology. One is reminded of the "prime mover" theory of divinity. If a human being sets technology in motion, the resulting automation, even automation which is layers removed from the initial technology, seems to me to be the product of human effort. In the hypothetical, circuitry and software are basic elements of the machines, but at the end of the day each is but a machine running a single clarification algorithm.

Now, if you were to open one of the boxes to find a team of x-ray clarification gnomes processing each x-ray as it comes through...


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