Software and Patent Scope: A Report from the Middle Innings
Author(s): Robert P. Merges
Abstract: In the 1980s and early 1990s, it was commonly said that patents would severely damage the software industry. I review some of these early predictions, and hold them up to the light of actual experience. However judged – by overall industry revenues, by product innovation, or by vibrancy of new firm entry – the industry today appears quite robust. I conclude that the early predictions were wrong. This helps explain why we are experiencing what might be called the normalization of software patents. Now, the frontier legal issues pertaining to software no longer center on whether it should be patentable in the first place. Post-State Street Bank, the interesting questions now concern the details and contours of patent protection for software inventions. As with other technologies, the breadth or scope of software patents is a crucial issue. One of the several doctrines that collectively determine a patent’s scope is the “written description” requirement in patent law. I briefly review the rise of this doctrine after 1995, arguing that in many cases the new doctrine is redundant: traditional principles of enablement are often a better ground for decision. One exception is the line of cases involving misappropriation by claim amendment, but even here a modest extension of enablement principles would achieve a fair result without the cumbersome apparatus of written description. I then look in detail at the recent LizardTech case, which applied the written description requirement to a software patent. This serves as an interesting case study in how software firms are acquiring and using patents in their competitive strategies. The overall theme of the Article is normalization: the legal system is integrating software into the fabric of patent law, and software firms are integrating patents into the competitive fabric of the industry. Proper application of enablement principles will help insure reasonable scope for software patents and thus assist this process of normalization.