Many current authors and commentators (though perhaps not as many patent attorneys) contend that the U.S. Patent and Trademark Office (PTO) is fine at examining patents for mechanical devices and pharmaceuticals, but argue that we need a whole new system for examining software inventions best understood by those under 40. They say that the PTO is not set up to examine software patent applications and, as a result, frequently issues patents on trivial improvements to existing practices. Several such authors and commentators have misinterpreted the outcomes of recent court decisions as confirming these notions, when in fact they debunk them.
There is another point of view. As discussed below, although patent examiners are human, and determining whether an innovation is worthy of a patent is a very complex undertaking, when the facts and arguments are scrutinized, the PTO is likely, on balance, doing a pretty good job of examining software patents.
An Apple Inc. patent (8,068,604) that played a prominent role in the company’s smart phone lawsuit with Samsung Electronics Co. has also been cited as an indicator that the PTO is too free in granting software patents. However, the agency tenaciously rejected Apple’s application nine times over almost 12 years, finally concluding that Apple had sufficiently narrowed and precisely defined the metes and bounds of its patent. When challenged with infringement, even Samsung’s monumental efforts could not prove that this patent was invalid. One might suppose that the office’s “decision on the field must stand” for lack of definitive evidence to the contrary.
Complaints about a lax PTO granting patents on old and/or obvious technology are not new. These same complaints have been raised since the 1800s. When John Glidden sought to enforce his patent on barbed wire, he encountered a parade of witnesses who claimed they had seen wire fences with barbs, that his fence was the obvious implementation of a thorn bush and that Glidden’s contribution of twisting the wire to hold the coiled barb in place was a trivial improvement. However, as the Supreme Court explained, it becomes very difficult to remember exactly what one has seen in the past. It becomes even more difficult when one has only a vague, oversimplified understanding of precisely what it is that a patent protects. Writers and commentators often share this shortcoming of not fully appreciating the precise complex interaction of different elements that must be present before the patent they are denigrating can be infringed. If an improvement really is trivial, then the market is free to ignore it. However, as in the barbed wire case, the almost universal adoption of what some call trivial software improvements often establishes just how non-trivial those improvements really are. As the Supreme Court noted: “Now that [the supposedly trivial invention] has succeeded, it may seem very plain to any one that he could have done it as well. This is often the case with inventions of the greatest merit.”