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Legal Analysis
First Article
(December 2004): A Potentially New IP: Storyline Patents
Second Article (December 2006): A Patently Novel
Plot: Fiction, Information, and Patents in the 21st Century
A Potentially New IP: Storyline Patents
Reprinted from The Journal of the Patent and Trademark Office
Society, Vol. 86, No. 11.
Abstract
In a series of cases beginning with
Diamond v. Chakrabarty, which made famous the phrase
“anything under the sun that is made by man” to describe statutory
subject matter under 35
U.S.C. §101, the Federal Circuit has clarified that the truly
expansive scope of Section 101 includes computer software, in
spite of a blatant violation of the so-called printed matter
doctrine, now relegated to an historical legal has-been. This
paper posits the existence and allowability under Section 101 of
“Storyline Patent” claims, which aim to protect not the
copyrightable expression of a unique underlying storyline, but the
storyline itself—in the form of either the process necessary to
implement the unique fictional plot in an entertainment medium, or
in terms of the medium itself. Not only should such claims be
deemed statutory subject matter under current U.S. law, but the
public policy rationales for the acceptance of Storyline Patent
claims mirror those of any other type of patent claim.
I. Introduction
In the landmark decision
Diamond v. Chakrabarty, the Supreme Court held that living,
genetically engineered bacteria were within the scope of utility
patent protection under 35 U.S.C. §101, on the basis that Congress
intended statutory subject matter to “include anything under the
sun that is made by man.”
Since then, Section 101, which statutorily includes “any new and
useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof,” has been read to include
computer software,
business methods,
even asexually reproducing hybrid plants,
which would ordinarily be covered by plant patents.
The exclusionary effect of Section
101 is limited to "laws of nature, natural phenomena, and abstract
ideas."
The tension between patent and copyright protection has
historically been addressed by the judicially created “printed
matter doctrine,” which excludes printed matter per se from
patent protection under Section 101, on the basis that
intellectual property protection is already afforded under
copyright law. However, even the patentability exclusions of the
printed matter doctrine have been whittled away by the present
patentability of a storage medium—read: a non-novel storage medium
currently existing in the prior art—containing patentable software
that has no functional relationship to the storage medium itself.
The fact that disk-contained software is “printed matter” that is
both patentable for the method that it executes on a machine as
well as copyrightable for its particular expression of the
machine-executable method is happily embraced by U.S. law.
This IP protection dichotomy is
easily understood when one recognizes that the underlying
functional method that a software relays to a machine is
fundamentally distinct—and valuable in its own right—from the
software’s particular expression (i.e., its code) of that
underlying method. In other words, poorly written software
implementing a valuable new method is nevertheless valuable, in
spite of the code’s quality; vice versa, particularly well written
software implementing an old method is also valuable, in spite of
the method’s archaicness.
Applying analogous reasoning, this
paper will address whether a fictional plot or storyline, itself,
may pass the test of patentability under Section 101. Like
software, a fictional story may include two valuable features: the
underlying storyline and the particular expression of that
storyline. Like software, the latter is clearly protectible under
copyright law. And, like software, the former should be
protectible under patent law.
One goal of this paper is to
convince the reader that for those literary or cinematic works
containing refreshingly original storylines, at least a portion of
the social value of those works is in the storylines themselves,
distinct from the particular expression of those storylines. If
so, public policy dictates a need for legal protection, in the
form of intellectual property rights, for the entire
work—expression and storyline.
II. Patent Law
A valid U.S. patent must satisfy,
at a minimum, the requirements of Sections 101 (“utility”), 102
(“novelty”), 103 (“nonobviousness”), and 112 (“definiteness”) of
35 U.S.C. Passing each of these tests is not equally difficult;
by far the most common bases for final rejection of patent
applications is novelty and nonobviousness. The Section 101
test—i.e., showing that the claimed invention is patentable
subject matter—has the lowest threshold of all.
A. Exceptions to Statutory Subject Matter
Section 101 includes as patentable
subject matter “any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement
thereof...”. In Diamond v. Chakrabarty, the U.S. Patent
and Trademark Office had rejected the applicant’s claims to a
human-made, genetically engineered bacterium on the grounds that
the legislative history of a 1930 Plant Patent Act indicated that
Congress did not intend to cover living things, such as these
laboratory-created microorganisms, within the scope of Section
101. In response, the Supreme Court relied on Committee Reports
accompanying a 1952 Act recodifying the patent laws which
indicated
that Congress intended statutory subject matter to “include
anything under the sun that is made by man,” and thus included
living, genetically engineered bacteria.
While Section 101 should be read extremely broadly, the Court
reminded the nation that specifically excluded from statutory
subject matter are the laws of nature, physical phenomena, and
abstract ideas. As examples, the Court cited naturally occurring
minerals and plants as well as the law of gravity and Einstein’s
famed mass-energy equality E=mc2.
A mathematical algorithm or
equation had historically been treated as an unpatentable law of
nature or abstract idea. See, e.g., Gottschalk v. Benson,
in which the Supreme Court held that claims to a mathematical
algorithm for converting binary code decimal numbers to equivalent
pure binary numbers were unpatentable under Section 101 because
otherwise “the patent would wholly pre-empt the mathematical
formula and in practical effect would be a patent on the algorithm
itself.”
However, the Court in Diamond v. Diehr recognized that the
mere application of a well-known mathematical equation by a
computer to an otherwise patentable process does not of itself
kill patentability, because the applicants “seek only to foreclose
from others the use of that [unpatentable] equation in
conjunction with all of the other steps in their claimed
process.”
State St. Bank & Trust Co. v.
Signature Fin. Group
involved the validity of claims directed to a data processing
system that implemented a mathematical algorithm to perform a
useful business method. The claims were challenged under both the
“mathematical algorithm exception” and “business method exception”
to patentable subject matter.
Regarding the former, the Court
recognized that, fundamentally, every process is or includes an
algorithm. That Congress specifically included “process” within
Section 101 is sufficient to conclude that an algorithm is not
necessarily excluded from the realm of patentable subject matter.
The court concluded that mathematical algorithms unpatentable
under Section 101 are limited to “merely abstract ideas
constituting disembodied concepts or truths that are not
‘useful.’”
The dispositive inquiry, held the Court, is whether the claim
as a whole is directed to statutory subject matter, even if
the claim contains some subject matter (e.g., a mathematical
algorithm) that may not be patentable by itself. Because the
claims were directed to a useful machine implementing the
mathematical algorithm and producing a “useful, concrete and
tangible result,” the claims did not fail under the mathematical
algorithm exception.
Regarding the latter, the Court
clarified that the breadth of coverage afforded by a patent on a
business method should be addressed under Sections 102, 103, and
112. However, a business method is just that—a method—and falls
within statutory subject matter by its very nature.
The Federal Circuit eventually had
to face up to the inevitable truth about computers: that software,
like a mathematical equation, is nothing more than an algorithm
for converting an input into a desired output. Can software, in
and of itself, pass muster under Section 101? Unlike State
Street, in which claims to a useful machine were at issue,
AT&T Corp. v. Excel Communs., Inc. was addressed to a bare
machine-executed process—i.e., software itself—to determine a
value of a primary interexchange carrier ("PIC") indicator in
telephone systems.
Consistent with the continually expanding scope of statutory
subject matter, the Court first trashed any differential treatment
under Section 101 between machines and processes, and held that
the claimed process, implemented by software, is statutory subject
matter because it “applies [a] Boolean principle to produce a
useful, concrete, tangible result without pre-empting other uses
of the mathematical principle.”
The prohibition from statutory subject matter against mathematical
algorithms is truly narrow, and does not apply where it is
“applied in a practical manner to produce a useful result.”
Two cases are instructive on the
meaning of “abstract idea.” First, in In re Warmerdam, the
applicant claimed a two-step process that produced no useful,
tangible result. The Court held that the claims involved nothing
more than the “manipulation of basic mathematical constructs,” in
spite of the fact that the claimed method, in conjunction with
other steps, could produce a useful result. An apparatus
performing the method was found to be statutory subject matter,
but merely “taking several abstract ideas and manipulating them”
does not pass muster under Section 101.
Second, in In re Bonczyk, a pro se inventor had claimed the
following: “A fabricated energy structure for a uniform energy of
the type having a single nature separated to oppose itself by a
precise alternate time duration of existence that creates the dual
nature for supporting and extending the Fabricated energy...”.
The Court held that an incomprehensible claim to an abstract
energy structure failed to fall within any of the four statutory
classes.
B. The Printed Matter Doctrine
Another historical exception to statutory subject matter is known
as the “printed matter doctrine,” loosely defined as the principle
that printed matter (e.g., a book) is not, per se, patentable.
This doctrine rests on shaky legal authority and, in any event,
has been whittled away to an archaic common law has-been. Even
its current application in proving unpatentability over prior art
has become an unpersuasive legal argument.
In In re Gulack, the
applicant claimed a wearable ribbon containing various numbers and
equations, intended to assist the wearer in performing various
arithmetic calculations.
The Board of Patent Appeals and Interferences had overturned the
Examiner’s §101 rejection of the claims under the printed matter
doctrine, on the basis that the ribbon was clearly a statutorily
allowed “article of manufacture.”
The question at issue was whether the printed matter doctrine
prevented the numbers and equations printed on the ribbon from
receiving patentable weight under Sections 102 and 103. In other
words, the printed matter doctrine—what little of it remains
today—relates to the question of prior art, not of
statutory subject matter. The Court stated that “where the
printed matter is not functionally related to the substrate, the
printed matter will not distinguish the invention from the prior
art in terms of patentability,” and held that the ribbon was
patentable because the printed matter was both functionally
related to the ribbon and because the relationship was new and
nonobvious.
In Ex parte Robert W. Carver,
the applicant claimed a stereophonic recording which, when the
recording is played on a stereo player machine, creates sounds in
one location that cancel out certain sound patterns received at an
opposing location.
The court found that the sound information (which is legally
equivalent in this analysis to words on a page) stored on a
recording medium (which is legally equivalent to a sheet of paper)
did not evoke the printed matter doctrine because “the
claims, when considered as a whole... broadly define an article of
manufacture (i.e., the recording in which the sound pattern is
embodied) rather than a sound pattern per se.”
The truly amazing fact, as pointed out by the Dissent, is that the
claimed recording involved a sound pattern recorded on any
one of a variety of possible substrates (records, magnetic tapes,
CDs, etc.) with no functional relationship to the chosen
substrate. Thus, in finding that the claims distinguished over the
prior art, the Court ultimately gave the sound pattern per se
patentable weight and implicitly destroyed the printed matter
doctrine, even as applied to Sections 102 and 103.
The “functional relationship” test
was finally put to rest in In re Lowry, in which the
applicant’s claims related to the storage, use, and management of
information residing in a memory.
First, noting that the printed matter doctrine under Section 103
stood on questionable legal and logical footing anyway, the Court
distinguished the present case over past printed matter cases,
which “dealt with claims defining as the invention certain novel
arrangements of printed lines or characters, useful and
intelligible only to the human mind [as opposed to a machine].”
However, the asserted mind-machine dichotomy is a distinction
without a difference in an electronic world in which books are
often read on a computer screen and printed words and sentences
may optically scanned and read as “useful and intelligible”
commands to a computer. Second, recognizing that its asserted
mind-machine dichotomy may be insufficient, the Court reduced the
printed matter issue to one question: does the claimed method
perform a function?
Of course, it is difficult to formulate a method that does not
perform a function of some kind.
In In re Beauregard,
the applicant’s computer program product claims were rejected as
nonstatutory on the basis of the printed matter doctrine.
During appeal, the Commissioner of Patents, apparently realizing
the futility of arguing the printed matter doctrine, changed the
Patent Office’s position such that “computer programs embodied in
a tangible medium, such as floppy diskettes, are patentable
subject matter under 35 U.S.C. § 101 and must be examined under 35
U.S.C. §§ 102 and 103.” In stating
that no controversy existed, the Court put the printed matter
doctrine, as a whole, to rest.
What is surprising but equally
clear, given the above-discussed law, is that a sheet of paper
upon which patentable software is printed is patentable.
Software is merely a set of instructions to a processor for
performing a method, and may be written in any conceivable
language and on any conceivable substrate. It makes no
difference that the software language used may also be
intelligible to and readable by a human mind. Consider, for
example, a software language that reads like ordinary English. A
sheet of paper is then imprinted with a program software, and is
intended to be fed into a computer processor via an optical
scanner that reads and executes the software’s method, but can
just as easily be read and “executed” by a human person. Make no
mistake. The imprinted sheet of paper is the very epitome of
printed matter. Yet, under In re Beauregard, the imprinted
sheet of paper is a “computer [program] embodied in a tangible
medium,” and must be examined for patentability under Sections 102
and 103. In other words, if the software’s method is patentable,
so is the imprinted sheet of paper.
In fact, a patentable method may
be embodied in a book-bound fictional novel. Because a processor
may be programmed to glean instructions for performing the
patentable method directly from the novel’s words, the novel
itself may be a patentable article of manufacture. Until Congress
legislates otherwise or a high court revives it, the printed
matter doctrine is dead.
III. Storyline
Patents
At the turn of the century,
Writer/Director Christopher Nolan created a masterpiece in
Memento, a motion picture which will serve as a working
example. The motion picture tells the story of Leonard, a man who
was attacked by a perpetrator who raped and killed his wife. The
attack left him brain-damaged and incapable of creating new
memories, so that each hour-long bout of conscious continuity is
accompanied by an initial period of “waking up” and briefly
learning—by looking at often freshly-drying Polaroid pictures—of
his whereabouts, his mission, and his purpose.
To help place the audience in
Leonard’s shoes, the audience too is denied the opportunity to
remember past events: the movie is shown in short segments in
reverse chronological order. Thus, the movie begins with Leonard
finding and killing the supposed perpetrator—a Polaroid in
Leonard’s hand labeled, “Teddy. Don't listen to his lies. He's the
one. Kill him.”—and progresses in reverse to show each of
Leonard’s steps toward identifying and hunting Teddy. The
storyline ends in its chronological beginning when Leonard, in a
saddening and emotionally charged realization that his prospects
for retribution (indeed, for any meaningful endeavor) were
impossibly slim in his hazy world of confusion, intentionally
identifies Teddy, whom he knows is not the real perpetrator, as
his prey.
This structure of the movie—while
gripping and brilliant—may or may not be novel. Nevertheless,
that the method of creating a movie in this manner is statutory
subject matter under Section 101 is indisputable. Further, the
motion picture as a whole, screenplay included, is clearly
copyrightable. What some may dispute is whether the movie’s
underlying storyline, including what is probably a legally novel
and nonobvious (not to mention shocking) plot twist at its
chronological beginning, is statutory subject matter under current
patent law.
How might a claim in a plot or
storyline patent be structured? A court might competently reason
that a story in the abstract is just that: an unpatentable
abstract idea. However, that a book-bound fictional novel is
unpatentable merely by nature of its being printed matter has
been, I believe, refuted by the assertion that such a novel could
be, in a very real sense, a patentable computer program embodied
in a tangible medium—thus, a patentable article of manufacture. A
particularly skilled patent attorney could convert a unique
storyline into a method performed by one of a series of possible
infringers, including: a movie’s writers, directors, actors, and
producers; a theater’s owners and employees; a movie seller’s
owners and employees; a novel’s authors, publishers, and printers;
a bookseller’s owners and employees; consumers of the movie,
novel, or other products; and so forth. Consider an example
claim—which may be dubbed a “storyline method claim”—to a
functional method of implementing Memento’s plot to the
“useful, concrete, tangible result” of producing valuable
entertainment:
A process of relaying a story
having a unique plot, the story involving characters and having a
timeline, comprising:
indicating that a
first character has an inability to retain long-term memories
after a time in the timeline;
indicating that said
first character trusts notes written by said first character;
indicating that said first character believes that
said first character has been wronged by a perpetrator;
indicating that said
first character desires to perform an act of retribution against
said perpetrator;
indicating that said
first character believes that attempting to perform said act is a
futile endeavor; and
indicating that said
first character writes a note to said first character indicating
that a second character, whom the first character believes is not
the perpetrator, is the perpetrator.
The above example, which seems to
catch the essence of the movie’s underlying storyline, looks and
feels like a method—an ordinary, functional, useful method.
Subjective words such as “trusts,” “believes,” “desires,” and
“wronged” should not raise problems of indefiniteness under
Section 112 because the steps actually being performed are
“indicating.” In other words, a step of “desiring” might be
problematic because desiring is an introspective, subjective
mental process that can doubtfully be measured and, nevertheless,
produces no useful, tangible result per se. However, “indicating
a desire” is clear—a jury knows what that looks like,
particularly if the specification gives concrete examples of how
one might indicate a desire, and it produces a useful, tangible
result: an indication.
Notice that the above claim form
is aimed broadly. A director infringes it at least when she makes
a movie implementing the implicitly claimed storyline (and
possibly at other times, such as a showing of the movie); an actor
infringes it at least when he plays his part as the first
character; an owner of a movie theater infringes it at least when
he shows the movie; the consumer infringes it at least when she
plays a DVD containing the movie; and so forth.
Of course, different claim forms
can and should be tested. The author has submitted to the U.S.
Patent and Trademark Office several test patent applications on
novel storylines, utilizing various claim forms and a creatively
distributed lexicon. Regardless of which structures and words, if
any, ultimately pass muster in the Patent Office and subsequent
litigation, the present pursuit is guided by the realization that,
fundamentally, the making of a movie (or writing of a novel or
filming of a television show, etc.) involving a new, nonobvious
storyline requires the performance of certain definite steps.
The combination of the fewest steps necessary to produce a movie
or novel or show having the new storyline is a method that should
be and, consistent with existing law, probably is patentable.
IV. Analysis
The legal analysis is
straightforward. A method is a method and should be examined as
such.
The Supreme Court has made clear that statutory subject matter
includes “anything under the sun that is made by man.”
Unless the claimed invention is merely a law of nature,
a natural phenomenon,
a manipulation of basic mathematical constructs,
an abstract idea constituting disembodied concepts or truths that
are not useful,
or an incomprehensible claim to an abstract energy state,
it is patentable subject matter. There is simply no statutory or
common law exempting from patentability a useful method for
producing entertainment.
Other claim forms, besides
methods, may also be patentable subject matter, such as an article
of manufacture containing the storyline. Consider a claim—which
may be dubbed a “storyline article claim”—to a storage medium,
such as a DVD or video cassette:
A machine-readable storage medium
storing information and configured to cause a machine to perform a
process of relaying a story having a unique plot, the story
involving characters and having a timeline, the process
comprising:
indicating that a
first character...
The above claim format is
substantively indistinguishable from the thousands of computer
program product claims allowed by the Patent Office since In re
Beauregard. If a computer disk containing a functionally
unrelated but independently patentable software is patentable,
should not a DVD containing an independently patentable storyline
(in the form of a method executed by a consumer via her DVD
player) also be patentable? Further, as previously discussed, a
book-bound fictional novel containing a patentable method is
probably patentable simply because the inscriptions in the pages
of a novel just are a computer program—given a computer
programmed to read prose as a software language. A patentable
software program embodied in a tangible medium is patentable.
Analogously, a patentable storyline method embodied in a tangible
medium—e.g., a novel—may also be patentable subject matter.
A storyline method or article
claim, such as the ones offered above, would have all the rights
and responsibilities of any other patent claim. For example, a
patent on a particular software method or software-containing
medium would cover every embodiment of the claimed invention:
whether the software is written in C++, Pascal, or XML, whether
the software is continuous or contains multiple subroutines,
whether the software includes explanatory editorial notes or not,
whether an input is called “I” or “Input4,” and so forth. Each
different expression of the underlying software may be
independently copyrightable, but every expression would be
covered by the patent. Similarly, a patent on a particular
storyline method or storyline-containing article or manufacture
would cover every embodiment of the claimed invention. Every
possible expression of the storyline—whether involving five
characters or ten, whether set in Amsterdam or Chicago, whether
told in the first person by a Nigerian heroine or in the third
person by a Chinese hero, whether embodied in a novel, a script, a
movie, an advertisement, a television program, or a radio
show—would require infringement of the claimed method or article
of manufacture. Again, each different expression of the
underlying storyline may be independently copyrightable, but
every expression would be covered by the patent. Just as a
patent granted on a software method or software-containing medium
effectively covers the underlying software itself, so a patent
granted on a storyline method or storyline-containing article of
manufacture effectively covers the underlying storyline itself.
However, a valid plot or storyline
claim would also have to maintain important responsibilities.
Though the present paper advocates the proposition that storyline
claims—drafted either as the methods necessary to create the
useful, tangible entertainment forms containing those storylines,
or as the articles of manufacture (e.g., electronic or printed
media) actually containing those storylines—are patentable subject
matter under Section 101, that the claims must also pass the other
more stringent tests of patentability cannot be overemphasized.
An old storyline can never be patentable (Section 102). A
storyline obvious to one of ordinary skill in the art can never be
patentable (Section 103). An indefinite storyline can never be
patentable (Section 112). As with any expansion in the scope of
available patent protection, such as that to include so-called
business methods, there is concern that intellectual property
previously commonly owned is suddenly stripped of its public
status. But such is the province of the primary gatekeepers of
patent law: Sections 102 and 103. In other words, there is no
fear that expanding the scope of Section 101 will strip from the
public its property if the property did not already exist.
V. Public
Policy
Chances are quite good that,
guided by existing case law and Patent Office policy, a storyline
method would be treated as just that: a statutory method that must
be evaluated for novelty, nonobviousness, and other statutory
requirements. And, insofar as the printed matter doctrine is
dead, particularly as it applies to a functional method embodied
in a tangible medium, chances are also good that a storyline
article of manufacture (e.g., a DVD or book) would be treated
similarly. However, one cannot avoid that patent law is guided,
both legislatively and in courts, by a public policy that has a
primary aim of increasing the wealth of the public domain by
enticing inventors to invent (and publicize their inventions) in
exchange for limited-term exclusive rights to their respective
inventions, and a secondary aim of fairness to inventors. Are
these aims served by acknowledging that storyline methods and
articles of manufacture are, indeed, statutory subject matter?
No doubt there is the practical
concern that no competent examining unit at the Patent Office
currently exists to examine such patent applications. However,
this concern is not sufficient by itself to exclude otherwise
patentable subject matter from examination. The same issue was
faced—and ultimately addressed via iterative steps of improving
Patent Office examination quality and invalidating non-novel or
legally obvious patents during litigation—several times before,
most notable with the Federal Circuit’s allowance of business
method patents in State St. Bank. The question remains:
should storyline patents be granted?
If the previously offered example
of Memento provides any indication, an embodied story
(whether in a novel, a movie, a television program, a radio show,
an advertisement, etc.) can have two valuable features: the
underlying storyline and the particular creative expression of
that storyline. The underlying storyline of Romeo and Juliet,
at the time of its creation, was neither novel nor excessively
creative. Children of two warring families enduring a tragic love
affair is probably as old as spoken language. But the particular
expression of that underlying storyline is today as brilliant and
beautiful as the day it was written. Conversely, one could
imagine a plot so inventive, so surprising, and so profound that
any expression of it is valuable. Such would be the scope
of a storyline patent.
There is something fundamentally
inventive—in the same way that conceiving of a new rocket engine
design is inventive—about creating a new storyline. The flash of
inspiration is the same. One does not conceive of a new rocket
engine by building a rocket, but one could express
that conceived engine by doing so. Analogously, one does not
conceive of a plot by expressing it, but one could express a
conceived plot. The spark of ingenuity is what gives rise to the
infinitely many ways of expressing an invention—whether in the
form of a tangible rocket engine or a novel—but without the
invention there is nothing to express. A particular rocket engine
is but one of infinitely many embodiments of a rocket engine
invention, just as a particular novel is but one of infinitely
many embodiments of a storyline invention. They are both
inventions in a very real sense, distinct from their possible
expressions.
Consider an analogy to what is clearly patentable subject
matter—an automobile—and how a hypothetical lack of available
utility patent protection would impact the above stated public
policy aims. Assume, for example, an automobile could only be
protected under a design patent (which acts as a sort of
“copyright” on ornamental designs). An inventor, in a flash of
inspiration, conceives of a novel internal combustion engine that
is twice as efficient as existing engines. He attempts to obtain
intellectual property protection on what is the very epitome of a
useful, valuable invention. Sadly, he is a terrible automobile
designer and a particularly bad artist, such that the scope of his
attempted design patent protection is limited to an ugly
automobile that will not sell. Meanwhile, a non-inventor, who is
in contrast a skilled designer and artist, has spent his career
misappropriating the good ideas of others and compiling them into
aesthetically pleasing final products. He learns of the
inventor’s original conception of a highly efficient engine and
incorporates it into his next automobile design. His works, of
course, are protectible under the same design patent laws, the
difference being that the non-inventor’s protection is
infinitely more valuable—after all, given the choice between
two automobiles, both incorporating the novel high-efficiency
engine and identical except for their appearances, every
consumer will choose the more aesthetically pleasing of the two—in
spite of the non-inventor’s outright misappropriation of the
inventor’s good idea. Such a scenario would trump patent law’s
stated aims because, first, would-be inventors of novel high
efficiency engines would have little or no economic incentive to
publicize their inventions (or even to invent at all, particularly
where trade secret maintenance is a practical impossibility), and
second, fairness dictates that the inventor receive protection for
what he really invented: a valuable new engine, not an ugly
automobile.
In the real world, the above scenario does not occur, because the
inventor’s engine invention is protectible by a utility patent.
Without utility patent protection for novel storylines, analogous
scenarios occur on a regular basis with regard to fictional
storylines. Is that why most movies and books relay the same
hackneyed plots over and over again? What inventor, who isn’t
akin to Poe, would endure the time, sweat, and tears to embody his
unique plot into a marginally readable novel or movie script,
protectible only under copyright law, when a skilled, experienced
Hollywood writer could lawfully, without even invoking copyright’s
“derivative” protection, embody the unique plot in a far superior
story?
Inventors are not typically akin
to Poe. In fact, few inventors are skilled at writing at
all—hence the enormous market for $300-an-hour patent attorneys.
How can the public interests of fairness and of encouraging
invention and proliferation of new and useful forms of
entertainment be served if storyline inventions cannot be
protected for what they are? Storylines are not expressions of
anything. A storyline is not conducive, in and of itself, to
copyright protection. A storyline is an invention that may
be embodied in a useful, functional method for relaying that
storyline, or in a tangible medium containing that storyline.
Patent protection for storyline methods or storyline articles of
manufacture is the next logical legal step in furtherance of the
stated aims of patent law.
The following is an excerpt from
one of the author’s several test storyline patent applications
already submitted to the Patent office.
Hollywood has been failing.
Hackneyed plots are commonplace in modern movies and creativity
has been replaced by expensive “special effects.” Elaborate
explosions and sophisticated fight scenes bore even the slightest
intellect where the storyline is confused, dull, or lacking.
There is a substantial need for original, intellectually exciting
plots in all forms of entertainment, such as novels and,
particularly, motion pictures.
Traditionally, patent protection
has provided the economic and moral impetus for technological
improvements in all fields. An inventor is motivated to absorb
the substantial financial, time, and personal costs of identifying
problems with current technologies and inventing solutions to
those problems when he is assured the right to exploit that
invention by excluding others from making, using, selling,
offering to sell, and importing his invention.
Where patent protection is not available or is not easily obtained
or enforced, such as in the typically statist welfare countries of
Central and South America and communist countries such as China,
technological progress is stunted by at least two causes: a)
inventors employed by a company have little motivation to disclose
their inventions to the public, and thus tend to keep their
inventions as trade secrets within the company; and b) independent
inventors have virtually no motivation whatsoever to disclose
their inventions to anyone, because of (justifiable) fears of
expropriation.
In much the same way, the progress
of intelligent fictional plots, particularly of movies, has been
stunted worldwide. Currently, a writer may receive free,
comprehensive, and automatic copyright protection on anything she
writes. If her skill consists primarily of expressing old, stale
concepts in new, creative, exciting ways, then she will benefit
from copyright protection. However, if her skill consists
primarily of inventing new and unique broad concepts, then
copyright protection will only protect one of uncountably many
possible expressions of those new and unique concepts. This
dangerous dichotomy is explained further.
Patents and copyrights aim to
protect different interests. A copyrighted work is a particular
expression or embodiment of a broader concept. For example, a
broad concept might be, “Life is worth living for its own sake,
and the only economic system that respects humans’ right to live
freely for their own happiness, without brute force compulsion to
be sacrificed for the benefit of others, is capitalism.” A
particularly beautiful expression of this broad concept is Ayn
Rand’s Atlas Shrugged, which is subject to copyright
protection. Ayn Rand’s estate does not own all embodiments of the
broad concept—only the single expression embodied by her novel.
In sharp contrast, a patented
invention protects each and every possible embodiment of a broad
invention. Consider a patent on a car. It is not a particular
actual car that is the subject of a patent, rather the wide class
of possible cars that fall within the scope of the patent. In
other words, a particular car is simply one protected embodiment
of the broader patented invention. Because of the broad scope of
rights afforded to a patent owner, one may not receive a patent on
an invention that is old or obvious.
Thus, patent protection and
copyright protection differ substantially on the ease with which
infringement may be avoided. Because a patent protects all
expressions or embodiments of the single broad invention, a
competitor who desires to use or sell the invention without paying
royalties may not; it may only avoid patent infringement by paying
royalties or avoiding the invention altogether. In sharp
contrast, a competitor who desires to use the broad concept
disclosed in another’s work (e.g., book or article) may freely do
so without infringing any copyrights, even when the broad
concept is new and nonobvious. All the competitor must do is
to create a moderately different expression of the broad concept.
It is clear that copyrights
protect those who are good performers: those who sing well,
dance well, write well, act well, and so forth. Copyrights are
based on a system of recognition in which society rewards
performers because they express an old concept in an
original (and hopefully desirable) way, not because they express a
new concept. Of course, many artists do invent original
concepts, but it is their expression of those concepts, not
their creation or invention of those concepts, that
copyright protection rewards.
For example, one who sings a
touching version of “White Christmas” may receive copyright
protection on his performance—not because he invented the concept
of singing about Christmas—not because he wrote the lyrics to the
song—but because his particular vocal expression of it is
original. Further, a woman who writes and performs a love song
may receive copyright protection on both the lyrics and
her performance—not because she invented the concept of singing
about love—but because her particular written expression of love,
and her particular vocal expression of those written lyrics, are
original. Finally, consider the man who invents an entirely new
and nonobvious type of music or method of performing
music. Clearly, copyright law cannot protect his invention. His
only possible recourse—which, to date, has not been tapped for the
field of artistic inventions, such as original movie plots and new
types of artistic expression—is patent protection.
There is no reason—neither statute
nor case law nor PTO practice—why artistic inventions are not
patentable subject matter under 35 U.S.C. §101. In the landmark
decision Diamond v. Chakrabarty, the Supreme Court held
that living creatures were patentable subject matter under the
doctrine that statutory subject matter includes “anything under
the sun that is made by man,” with three exceptions: laws of
nature, physical phenomena, and abstract ideas. According to the
Manual of Patent Examining Procedure, these three exceptions
recognize that subject matter that is not a practical
application or use of an idea, a law of nature, or a natural
phenomenon is not patentable.
Certainly a movie implementing a
unique plot is a practical application or use of the unique plot,
so the unique plot should not be barred patentability under §101.
The invention of a new plot is just that—an invention—not
merely an expression of an existing concept. Similarly, the
practical application or use of any new artistic invention should
be patentable subject matter.
The fact that each particular
expression (e.g., a movie) of a broad artistic invention (e.g., an
original plot) is subject to copyright protection is not unique to
artistic inventions. For example, the software code on a patented
software-containing disk may also be copyrighted. The defining
criterion separating the subject matter of patents from copyrights
is not whether the subject matter is related to art—see the
amusing counterexample of U.S. Patent No. 6,213,778 to Cohen.
Rather, the defining criterion is whether the subject matter is a
broad concept practically applied or used (in which case a patent
is appropriate), or a particular instance, embodiment, expression,
or performance of the broad concept (in which case a copyright is
appropriate).
There is little fear that artistic
creation will be halted due to the enforcement of patent
protection newly applied to artistic inventions. A love song
composer may indefinitely continue writing love songs without
worry of infringing any patent, because the concept of writing
songs about love is old and not patentable. Statute clearly
requires an invention to be new and nonobvious to receive patent
coverage. Thus, even if the broad concept or invention of singing
about love were statutory subject matter under §101, it is as old
as civilization, and would not survive an attack under §§102-103.
In fact, most artistic concepts today are very old—which is
precisely the problem that must be remedied by patent protection
for artistic inventions. Unless patents on artistic inventions
are upheld and enforceable, the great artistic minds of the day
will be compelled to continue composing predictable love songs for
pop stars and slightly altered dialogues for carbon copied movie
plots.
There is currently little
motivation for artistic inventors to innovate new plots, themes,
and methods of expression. The value of an innovator’s copyright,
if he in fact embodies his invention in a particular expression
(such as a novel or movie) is far less than the value of the
invention itself, because the invention umbrellas every possible
embodiment. Further, and perhaps more importantly, the value of
his copyright depends on his ability as a performer, not
as an inventor. An artistic inventor who invents a
fantastically original and compelling storyline may not be a
particularly skilled writer. He may, for example, have a very
limited vocabulary and a poor understanding of grammar. Any book
he creates will be avoided by any potential buyer who reads the
first paragraph, such that the copyright value of his extremely
valuable invention is nil. Any Hollywood producer who sees
through the book’s garbled sentence structure to the excellent and
creative plot beneath the surface may steal the only value the
book contained: its inventive plot. The producer may then
moderately alter the expression of the plot in a subsequent
movie—while keeping the plot’s essence fully intact—and obtain
unearned financial benefit from the inventor’s unrewarded
hard work and innovation. If there is any evil that the United
States patent system ought to prevent, it is this.
Said another way: the value
of a singer’s performance or a dancer’s performance or a writer’s
performance or an artist’s performance is in the performance,
while the value of an inventor’s invention is in the invention,
not a single instance, embodiment, expression, or performance of
the invention. The value of a performance is protected by
copyright; the value of an invention is not. An artistic
innovator is given but two choices absent patent protection: to
sacrificially innovate for the unearned benefit of thieves, or to
not innovate. Both options are morally and practically repulsive.
A patent system that sanctions and
defends patents on artistic inventions, such as new and nonobvious
plots, will spur an array of never-seen-before,
never-experienced-before, intellectually inspiring forms of
entertainment. A patent system that lethargically clings to an
as-of-yet unarticulated rule that artistic inventions are not
patentable subject matter because they are not closely enough
related to a mechanical gear or an electronic integrated circuit
will guarantee our nation the same repertoire of mind numbing
movies and dime-a-dozen boy bands.
VI. Conclusion
Case and statutory patent law
provide no binding distinction, with regard to statutory subject
matter, between software methods and storyline methods. Even
tangible media containing unique storylines are so legally
analogous to patentable software contained on functionally
unrelated computer disks that DVDs and novels—the very epitome of
“printed matter”—are probably “articles of manufacture” under
Section 101. Will the Commissioner of Patents or the Federal
Circuit agree? With several test patent applications already
pending in the Patent Office, only time will tell.
To be continued...
Post Script
The Author presently seeks collaboration by a reputable
intellectual property law firm in developing and advancing this
new patent law field, including arguing the patentability of
Storyline Patent claims before the Federal Circuit, if necessary,
and in sharing in new business that may arise from the
allowability of Storyline Patents. For further information, see
www.PlotPatents.com, or contact the Author at info@PlotPatents.com.
450 U.S. 175,
187, 209 U.S.P.Q. (BNA) 1 (1981),
emphasis added.
A Patently Novel
Plot: Fiction, Information, and Patents in the 21st Century
Reprinted from IDEA:
The Intellectual Property Law Review,
Vol. 47, No. 2.
Andrew F. Knight, M.S., J.D.
Abstract
Inventors are challenging the
legally unsupported view that fiction is never the appropriate
subject matter of an issued patent by way of several controversial
“storyline patent” applications recently submitted to the U.S.
Patent and Trademark Office. This paper aims to address various
potential statutory hurdles to the patentability of such
“storyline patents,” such as enablement and definiteness under 35
U.S.C. § 112, the imaginary but oft-cited “technology
requirement,” and potential Constitutional concerns arising under
the First Amendment. Inventors submitting storyline patent
applications will likely overcome such hurdles. Storyline patents
offer the public a far greater benefit-per-cost than any other
type of patent.
I. Introduction
In 2003, the author submitted the
first of several utility patent applications to the United States
Patent and Trademark Office nominally claiming fictional
storylines.
Patentable subject matter is statutorily limited to a “process,
machine, manufacture, or composition of matter,”
and so each storyline patent application claims processes of
relaying a story such as creating and displaying a motion picture
having a unique plot, and articles of manufacture such as DVDs and
books containing information including a unique plot.
Before publication of these storyline patent applications, the
author publicly suggested a form of a storyline patent method
claim that may pass muster under 35 U.S.C. § 101, using the plot
of the motion picture Memento as a representative example:
A process of relaying a story
having a unique plot, the story involving characters and having a
timeline, comprising:
indicating that a first character has an inability to retain
long-term memories after a time in the timeline;
indicating that said first character trusts notes written by said
first character;
indicating that said first character believes that said first
character has been wronged by a perpetrator;
indicating that said first character desires to perform an act of
retribution against said perpetrator;
indicating that said first character believes that attempting to
perform said act is a futile endeavor; and
indicating that said first character writes a note to said first
character indicating that a second character, whom the first
character believes is not the perpetrator, is the perpetrator.
The author argued that these
claims were statutory subject matter under 35 U.S.C. § 101
because statutory subject matter includes “anything under the sun
that is made by man”
and because storyline patent claims do not fall under any of the
delineated exceptions to statutory subject matter such as laws of
nature,
physical phenomena
and abstract ideas
that do not produce a “useful, concrete and tangible result.”
The author argued that an article of manufacture such as a DVD or
a book is so akin to a patentable software-containing substrate,
e.g., a computer disk or CD-ROM that it is probably statutory
subject matter that is not barred by the waning, ineffective
“Printed Matter Doctrine.”
Not surprisingly, the prospect of
patent protection on fictional storylines has piqued the curiosity
of some,
and storyline patents have come under fire by those who
confidently assert that storyline patent applications will fail
for various reasons, including subject matter requirements (35
U.S.C. § 101), novelty and nonobviousness (35 U.S.C. § 102 and
§ 103, respectively), enablement (35 U.S.C. § 112), indefiniteness
(35 U.S.C. § 112), First Amendment concerns and public policy.
This article aims to address these issues to the extent they were
not already addressed in A Potentially New IP: Storyline
Patents.
In Part II, the viability of storyline patents will be evaluated
against the requirements for patentability, namely subject matter
requirements (35 U.S.C. § 101), novelty and nonobviousness (35
U.S.C. § 102 and § 103, respectively), enablement (35 U.S.C.
§ 112), and indefiniteness (35 U.S.C. § 112). In Part III,
potential First Amendment limitations to storyline patents will be
analyzed. Finally, in Part IV, storyline patents will be
addressed in the context of the quid pro quo purpose of
patent law.
II. Requirements for Patentability
Among other requirements, to be
patentable, an invention must be: a) the kind of subject matter
for which Congress intended to reward inventors; b) new and not
obvious in light of prior inventions; c) described sufficiently so
that the invention may enter the public domain; and d) clearly
delineated.
For the reasons discussed below, a storyline patent application
does not inherently fail any of these requirements.
A. Subject Matter Limitations and the Imaginary
Technological Arts Requirement
To be patentable, an invention
must be a “process, machine, manufacture, or composition of
matter”
that is not a law of nature,
a physical phenomenon
or an abstract idea
that fails to produce a “useful, concrete and tangible result.”
The author has previously argued that patent applications claiming
storyline methods satisfy these requirements because “[a] method
is a method and should be examined as such.”
Even the Printed Matter Doctrine, to the extent it contradicts the
allowability of article-of-manufacture software claims,
may not prevent the allowability of article-of-manufacture
storyline claims.
These arguments will not be repeated here.
At least one commentator has
suggested the continued viability of the so-called “technological
arts requirement,” whereby courts in construing the subject matter
requirement have “confined their liberal views to the realm of
technology.”
What is “nontechnology” is anybody’s guess, but this commentator
suggests that works of fiction, music, and “business methods not
implemented with computer technology” may be unpatentable
“nontechnology.”
Desperate for evidence, this commentator cites a dissenting
opinion in binding case law to support the contention that
creative works can never be patentable technologies.
Another commentator has opined that creative works, such as
movies, “satisfy the . . . tests for being ‘useful,’ yet would not
be considered to be patentable subject matter,” because “no one
would imagine obtaining a patent” for such creative works.
In other words, this commentator suggests simply that the creative
nature of creative works, coupled with the lay public’s suspicion
that such works are not patentable subject matter, effectively
precludes their patentability in spite of being “useful.”
However, the following analysis aims to demonstrate that while
many patents relate to what a lay person may deem “technology,”
such a relationship is not a prerequisite to patentability. It will be shown that not only is there no technological
arts requirement, there is no ready means for compartmentalizing
creations into patentable technology and non-patentable
non-technology.
i. The Board of Patent
Appeals and Interferences Has Explicitly Dismissed Any
Technological Arts Requirement.
Carl A. Lundgren filed an
application claiming a business method for compensating a business
manager.
The Patent Office rejected the application on the grounds that the
claimed invention was directed to “an economic theory expressed as
a mathematical algorithm without the disclosure or suggestion of
computer, automated means, apparatus of any kind.”
The patent examiner held that the claims were thus non-statutory
for failing the so-called “technological arts” test under 35 U.S.C.
§ 101.
Upon a request for reconsideration
and rehearing, the Board of Patent Appeals and Interferences (BPAI)
reversed the Examiner’s rejection, on the basis that the
patentable subject matter test requires that a process claim
“produce a useful, concrete, tangible result without pre-empting
other uses of the mathematical principle.”
The Board pointed out that a process is statutory subject matter
unless it is a law of nature, physical phenomenon or an abstract
idea.
The Board ruled that there is not now, nor ever has been, a
separate “technological arts” patentability test under 35 U.S.C.
§ 101.
The Board dismissed the contention that a new technological arts
test is required by any binding decision
and specifically pointed to the Supreme Court's decision in
Gottschalk v. Benson
as evidence that the Court was aware of such a test and had not
adopted it.
While the Lundgren decision
certainly expanded the scope of business method patents, its
reasoning precludes the application of a “technological arts”
requirement to any field of endeavor.
ii. No Technological Arts Requirement Could Be Legally
Cognizable.
Per Lundgren, there is no
“technological arts” requirement for statutory subject matter.
Nevertheless, to the extent that a BPAI decision is not binding on
the Federal Circuit or Supreme Court, neither is likely to invent
such a requirement. This is because, for patentability purposes,
there is and can be no legally cognizable “technology” difference
between an unquestionably patentable device and a device such as a
DVD player loaded with a DVD that creates a fictitious, creative
virtual reality emulating the method implemented by the patentable
device.
Many people may fail to understand
the nature of technology and be tempted to artificially
dichotomize fields of endeavor as either creative or
technological. One who is unfamiliar with science and engineering
might attempt to classify technology as that which involves the
use of screwdrivers, jackhammers, transistors, chemicals, and so
forth, and therefore limit the scope of patentable subject
matter. We suggest that technology is no more than intentional
changes
to the human condition. While until relatively recently in human
history many of these changes were effected with mechanical and
electrical apparatus—the very epitome of patentable subject
matter—there are several dangers to so limiting the word
“technology.” For example, one may be tempted to restrict
patentable subject matter to “technology” that does not entertain
or “technology” that entertains only in prescribed ways such as by
using mechanical gears and engines. A movie thus could not be
patentable either because it entertains or because it entertains
in a manner that is insufficiently technological. Each such
restriction is seriously problematic.
First, there can be no legally
cognizable technology requirement that hinges on whether an
invention entertains. During the Industrial Revolution, many
mechanical devices were invented that increased productivity and
thus provided more people their basic needs by feeding, clothing,
and housing them. For example, Eli Whitney’s invention of the
cotton gin in the late 18th century helped to
proliferate the availability and use of cotton clothing. As
technology improved—the human standard of living improving with
it—technology evolved more to improve human comfort, not just
prospects for bare survival. The invention of modern air
conditioning in the early 20th century by Willis
Carrier is clearly “technology,” even though air conditioning is a
modern convenience that is rarely if ever required for human
survival. Finally, as technology improved the human condition to
a point at which people could live healthily and comfortably in
spite of an abundance of free time, technology evolved to fill
that comfort-induced void with entertainment. Pleasure boats,
recreational vehicles, small airplanes, television, radio, video
games, CD and DVD players and every piece of equipment for every
hobby, sport and recreation imaginable are all forms of
technology, not a single one of which is required for human
survival or comfort. Whether a device has a primary purpose or
use of more efficiently harvesting agricultural products or of
entertaining the user is and should be irrelevant for purposes of
patentability. Indeed, the United States Patent and Trademark
Office has not hesitated to issue thousands of patents all
relating exclusively to entertainment: games,
sports moves
and even methods of creating art.
It follows that the mere fact that fictional storylines entertain
is not enough to classify a storyline method claim as a form of
unpatentable non-technology.
Second, there can be no legally
cognizable technology requirement that hinges on how an
entertaining device or method entertains. Consider a new thrill
ride, such as a roller coaster at a major theme park. The ride
may include thousands of gears, pulleys, chains, hinges, bolts,
motors, electrical actuators, relays, and so forth—i.e.,
patentable subject matter by any definition. Next, consider a
virtual reality ride that accurately but much less expensively and
with far less risk to the rider mimics the thrill ride. The
virtual reality ride consists of a visual display, audio speakers,
and a computer processor executing software programmed to create a
virtual reality via the display and speakers that emulates the
actual thrill ride. The judiciary in AT&T Corp. v. Excel
Commc’ns, Inc.
realized that, for patentability purposes, software performing a
patentable process is indistinguishable from a machine performing
that process. Consequently, the virtual reality ride is
patentable subject matter alongside the actual thrill ride.
Further, that the virtual reality ride is patentable “technology”
has nothing to do with whether it entertains by means of gears and
pulleys or by LCD displays and microprocessors.
Now consider a fictional motion
picture that includes in its plot and corresponding cinematography
indications of a character riding such a thrill ride. For
example, the movie may include video images of the character
riding the thrill ride from the character’s perspective.
In what legally cognizable way does this portion of the movie
differ from the aforementioned patentable virtual reality ride?
It doesn’t. Thus, to the extent that a DVD containing a movie
having a fictional plot is configured to cause a machine such as a
DVD player to generate a virtual reality—and every movie does—it
is patentable subject matter.
A
virtual reality machine is clearly patentable subject matter, even
though it may not be patentable unless the method it executes is
both novel and nonobvious under 35 U.S.C. § 102 and § 103,
respectively. Further, the same virtual reality machine creating
different virtual realities by executing different software
embodiments may be patentable for each different software
embodiment. Analogously, a television connected to a DVD player
loaded with a DVD is a virtual reality machine that is patentable
subject matter under 35 U.S.C. § 101, even if the machine may be
unpatentable for failing the novelty and nonobviousness
requirements. Further, the same machine creating different
virtual realities by playing different DVDs may be patentable for
each storyline embodiment in the different DVDs.
In other words, if a virtual
reality ride is patentable “technology,” a motion picture is no
less patentable “technology” simply for introducing more elaborate
plot elements into the ride—i.e., for making the ride a subset of
the entire plot. A movie is a virtual reality, as anyone who has
ever cried in a movie theater can attest to, and if a virtual
reality ride is patentable subject matter, so is a motion picture.
B. Novelty and Nonobviousness
An invention is not patentable if
it is not new
or “if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art to which said subject
matter pertains.”
One might argue that storylines, which have evolved since the
inception of human communication, are so plentiful and exhaustive
that no storyline method claim could pass the tests of novelty and
nonobviousness. We do not address this argument, as it pertains
only to the quantity of prior art and not the inherent
patentability of fictional storylines.
Parenthetically, an analogy is
instructive. Imagine a world in which fluid pumps (e.g., air
pumps, water pumps, fuel pumps, radial pumps, piston pumps,
turbopumps, etc.) were not thought patentable. One who then
proposed the patentability of pumps would likely face the same
absurd argument—that the mere quantity of existing pumps would
preclude the conception of any new and nonobvious pump. Yet, the
fact that pumps have indeed been invented, designed, and built for
many millennia has not closed the spigot of new, patentable pump
inventions.
While we expect novelty and nonobviousness hurdles to be high to
any would-be plot inventor, one who asserts their
insurmountability must contend that no one in the world will ever
conceive of a patentably distinct plot.
In light of the thousands of
overly broad patents that the United States Patent and Trademark
Office issues every year due to poor and insufficient examination
by an overworked and underpaid staff, many commentators have
criticized the Patent Office’s porosity.
Nevertheless, fear of overly broad and market stifling patent
monopolies is not peculiar to storyline method patents; it is a
symptom of a distressed patent system as a whole.
Efforts to fix the system would be more efficiently aimed at
reducing porosity than at eliminating broad categories of
patentable subject matter, such as entertainment, software,
business methods or storyline methods.
C. Enablement
A patent is not valid if it fails
to “sufficiently disclose an invention to enable those skilled in
the art to make and use it. . . . [A]n examiner may reject a
claim if it is reasonable to conclude that one skilled in the art
would be unable to carry out the claimed invention.”
“One of ordinary skill in the art”
is a term of art that refers to a hypothetical person who is
extraordinarily knowledgeable in the relevant technological art,
but not particularly clever.
As an example, one attorney has suggested that one of ordinary
skill in the art of software engineering possesses: (a) a degree
in software engineering from an accredited university; (b)
professional certification or licensure; (c) a “comprehensive
understanding” of modern software’s object-oriented paradigm; (d)
“competency and proficiency” in a modern programming language; (e)
a basic understanding and familiarity with hardware components;
and (f) knowledge to account for quality, maintenance, and
modification of a software product.
Enablement does not require that the person of ordinary skill be
capable of constructing a particularly valuable, efficient, or
pretty embodiment of the invention—any working embodiment will do.
The pending storyline patent
applications have been charged with failing the enablement
requirement because they
fail to
describe the narrative methods necessary to achieve the stories
that are the object of [the] claimed ‘process.’ [The] patents do
not teach how to tell stories . . . [which are] replete with the
usual narrative elements such as point of view, setting, theme,
[and] characters. . . . [I]nventors of these plots may be poor
writers who are unable to turn their brilliant plot ideas into
stories.
This analysis fails on at least
three levels.
i. One of Ordinary Skill in the Art of Storytelling is
Capable of Creating a Story
from a Detailed Plot Description.
First, each of the currently
pending storyline patent applications includes at least one full
story embodying the claimed invention, including point of view,
characterization, setting, theme, and dialogue. No assertions are
made that the stories in their current forms are marketable as
short stories or economically valuable for their particular
copyrightable expressions. However, enablement under 35 U.S.C.
§ 112 does not require so much.
The disclosures are far more than bare plot descriptions; the
characters even have names. They are, in a word, stories.
Nevertheless, for the moment, it will be assumed arguendo
and consistent with the aforementioned criticism
that each of the applications discloses only a detailed plot
description that somehow falls short of the prized title “story.”
To determine enablement, the level of skill of the hypothetical
“one of ordinary skill in the art” of storytelling must be
determined. Importing comparable characteristics from the art of
software engineering,
perhaps a person skilled in the art of storytelling possesses a
degree in English or writing from an accredited university, a
certification or licensure based on a standardized test in the
field of storytelling, a comprehensive understanding of the
components and features of prose, and a competency and proficiency
in modern and historical storytelling. The currently pending
storyline patent applications are therefore not enabled if and
only if the aforementioned person is incapable of telling
stories “replete with the usual narrative elements such as point
of view, setting, theme, [and] characters”
that embody the claimed inventions, based on the applications’
detailed plot descriptions. Said another way: the argument
against enablement rests on the assertion that one skilled in the
art of storytelling, who likely possesses, at a minimum, a degree
in English or writing, is incapable of creating a developed
story from a detailed plot description. Similar reasoning leads
to the conclusion that a trained chef is incapable of producing a
hamburger from raw ground beef and a roll. Just as an average
seventh grader can cook a hamburger, she also probably knows how
to tell a story based on a detailed plot description. Whatever
abilities one of ordinary skill in the art of storytelling
possesses, they likely exceed the anecdotal talents of a seventh
grader.
ii. A Patent Disclosing an Actual Embodiment of the
Claimed Invention is Self-
Enabling.
Next, consider a patent on a novel
rocket engine. While 35 U.S.C. § 112 does not require so much,
the patent would clearly be enabled if it included step-by-step
instructions so detailed that a common machinist could assemble
the engine through mindless obedience. However, the machinist
must still follow the instructions; merely copying the
instructions gets him nowhere. Now consider a software patent,
claiming both a method and an instruction-containing substrate,
whose specification discloses an actual embodiment of the claimed
software in a modern computer language, such as C++. Unlike a
rocket engine, which is an apparatus that may be assembled from a
set of instructions, software code fundamentally is a set
of instructions,
such that software can be “assembled” from instructions merely by
copying those instructions. In this example, one of ordinary
skill in the art is enabled to practice the claimed invention
simply by verbatim copying the code from the patent to his
computer, saving the code to his hard drive (i.e., an
information-containing substrate), and subsequently executing the
code. By merely copying the code disclosed in the patent, even
the least computer savvy technophobe can almost unconsciously use
the claimed method and make the claimed substrate. Certainly, one
of ordinary skill in the art, arguably a degreed and licensed
software engineering having a “comprehensive understanding” of
object-oriented software and a “competency and proficiency” in a
modern programming language,
would be enabled by far less disclosure than an actual embodiment
of the claimed software, such as a sufficient description of the
software’s “ultimate purpose and functionality.”
Nevertheless, what is enabling to the lay person is enabling to
the skilled artisan—i.e., disclosure of an actual embodiment of
the claimed software is as good as it gets.
Further, the author has previously
suggested that because a modern computer-plus-optical-scanner
system is indisputably capable of reading and subsequently
executing printed software, even where the “software” is written
in normal human language instead of a more efficient and
standardized computer language, a software patent claiming an
information-containing substrate is itself an embodiment of the
claimed software.
In other words, as soon as a person prints or copies an issued
software patent, he has reproduced the invention. To the extent
that an intoxicated monkey is capable of clicking the “print”
button on a computer screen, it is enabled to practice the claimed
invention.
Analogously, a story is
information such that a story may be “assembled” by copying
another story. Each of the presently pending storyline patent
applications
discloses at least one full story embodying the claimed
invention. Like a self-enabling software patent application
disclosing an actual embodiment of the claimed invention, a
storyline patent application is self-enabling to the extent that
it discloses an actual embodiment of the claimed invention. A
person is enabled to practice a claimed storyline process, for
example, by simply reading the disclosed story to another. No
embellishment or deviation is necessary—just literacy. While the
hypothetical “one of ordinary skill in the art” of fictional
storylines has yet to be described, he is, at a minimum,
literate. Further, where a storyline patent application claims an
information-containing substrate, a person is enabled to construct
the claimed invention merely by printing the patent application.
iii. A Storyline Claim May Be Self-Enabling.
It has been demonstrated that a
storyline patent application disclosure is enabling to the extent
that it includes a detailed plot description, both because one of
ordinary skill in the art can create the claimed story based on
the description, and because any literate person can practice the
claimed invention simply by copying or relaying the
story-containing disclosure. Finally, even a bare plot, such as
the bare plot recited in the elements of a storyline claim, is a
story in its rawest form. 35 U.S.C. § 112 does not require a
storyline patent to enable one of ordinary skill in the art to
create a blockbuster Hollywood hit or a bestselling novel. 35
U.S.C. § 112 does not even require enabling the performance of a
disappointingly executed high school play. A storyline patent
need only enable one of ordinary skill in the art to practice the
claimed invention.
Where the claimed invention is a process of relaying a story
comprising a set of four specific steps, for example, the patent
specification need only disclose how to perform these four steps.
Complex characterization, witty dialogue, and intricate plot
details are simply not necessary to relay a story in its rawest
form.
For example, assume that the
primary plot in Romeo and Juliet
was reduced to a process of relaying a story comprising the
following steps: a) indicating that the family of a first
character is at war with the family of a second character; b)
indicating that the first and second characters fall in love; and
c) indicating that a conflict caused by the first and second
characters’ love causes the first and second characters to kill
themselves. A patent application claiming this plot need not
teach how to write beautifully or to assemble prose in iambic
pentameter. In fact, the activity recited in step a), for
example, is self-reflexive because the phrase “indicating that the
family of a first character is at war with the family of a second
character” indicates that the family of a first character is at
war with the family of a second character. Said another way,
merely reading the above process claim to another tells the
precise story claimed. If the reader is skeptical on this point,
we suggest reading the above process claim to another to determine
if she subsequently identifies the story of Romeo and Juliet.
In other words, while the presently pending storyline patent
applications, each containing developed stories embodying the
claims, are almost certainly enabled, even an application
containing only a bare plot description little fuller than the
claims themselves is likely enabled.
D. Definiteness
A patent claim is not valid if it
is indefinite—i.e., if it fails to “particularly [point] out and
distinctly [claim] the subject matter which the applicant regards
as his invention.”
A patent claim is definite when “a person experienced in the field
of the invention would understand the scope of the subject matter
that is patented when the claim is read in conjunction with the
rest of the specification.”
Further, “[a] claim is not ‘indefinite’ simply because it is hard
to understand when viewed without benefit of the specification.”
In Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
the court held that a claim reciting a front leg portion that “is
so dimensioned as to be insertable” in a region of an automobile
is definite, even though exact dimensions were not claimed,
because “those skilled in the art would understand what is claimed
when the claim is read in light of the specification,” and “[t]he
phrase ‘so dimensioned’ is as accurate as the subject matter
permits.”
A possible charge to the validity of a storyline patent claiming
methods having steps of “indicating”
is that the claims are not sufficiently definite. The charge
likely fails for at least two reasons.
i.
One of Ordinary Skill in the Art of Storytelling Would Understand
the Scope of
the Claims When Read in
Conjunction With the Specification.
Previously, the level of “ordinary
skill in the art” in storytelling was suggested as including a
degree in English or writing from an accredited university; a
certification or licensure based on a standardized test in the
field of storytelling; a comprehensive understanding of the
components and features of prose; and a competency and proficiency
in modern and historical storytelling. Consider the
previously-suggested method claim for the motion picture
Memento
and assume that the claim accompanies a patent specification
including a detailed description of Memento’s plot; the
description may contain a thorough and exhaustive description
written in “patentese,” a complete script, or both. This claim
would be indefinite if and only if the aforementioned “one of
ordinary skill in the art” would not “understand the scope of the
subject matter that is patented when the claim is read in
conjunction with the rest of the specification.”
The first step in the suggested
method claim is “indicating that a first character has an
inability to retain long-term memories after a time in the
timeline.” In determining whether one of ordinary skill in the
art would understand the scope of the invention, the first word to
be considered might be “indicating.” In each of the pending
storyline patent applications, the word “indicating” is clarified:
As well known by those of ordinary
skill in the art, there are many ways to indicate a fact in a
movie or a book without any explicit words to that effect at all:
circumstance, cinematography, subtly suggestive newspaper
headlines, suggestive words by the protagonist or other
characters, etc., can all be indicative of that fact.
One of ordinary skill in the art of storytelling, whatever
expertise she possesses, certainly understands how to indicate
something in a work of fiction. For example, consider the
definiteness of the following step: “indicating that a character
is ill.” One of ordinary skill in the art of storytelling might
demonstrate that a character is ill by any of the following:
describing the character’s ailments; recording a conversation
between two characters suggesting or detailing the ill character’s
illness; describing various implements associated with illness,
such as thermometers, medications, bandages, feeding tubes, etc.;
or describing emotions or emotional dialogue of characters
associated with illness, such as a character crying at the bedside
of the ill character, and so forth. Further, because she knows
how to indicate something, she necessarily understands the
scope of the recited word “indicating” in that she understands
which dialogue and descriptions in a movie script indicate that a
character is ill. Of course, descriptions in the specification of
what constitutes “indicating” (such as explicit statements,
circumstance, cinematography, music tone, implicit suggestions in
the actions and dialogue of other characters, etc.) further
clarify her understanding of the scope of a claim that includes a
step of “indicating.”
Having addressed the word
“indicating,” the remainder of the first step in the suggested
Memento claim would not appear to be problematic. For
instance, one of ordinary skill in the art of storytelling would
understand what it means for a first character to have an
“inability to retain long-term memories after a time in the
timeline,” particularly after reading a detailed description
(which may include the script) of the Memento plot.
Because she knows what it means, she understands the scope of
indicating it. In other words, while there are lots of possible
ways to indicate in a motion picture that a first character cannot
retain long-term memories, one of ordinary skill in the art would
recognize them all as falling within the claimed scope. Since the
remaining steps in the suggested Memento claim have exactly
the same form—i.e., “indicating . . .”—they would not pose any
further issues.
ii. “Indicating” is not Inherently Indefinite
One might argue that the word
“indicating” is inherently indefinite because the object of the
verb is a human mind. In other words, unlike the step “attaching
a transistor to a silicon substrate,” in which physical articles
are the objects of the verb “attaching,” the step “indicating the
angular position of a cylinder” has the human mind as the object
of the verb “indicating.” After all, an indicator light (such as
an automobile dummy light) inherently indicates something to a
person.
This objection fails. First, the
fact that the object of “indicating” or an “indicator” is a human
mind is irrelevant to whether “a person experienced in the field
of the invention would understand the scope of the subject matter
that is patented when the claim is read in conjunction with the
rest of the specification.”
Second, most, if not all, indicators or steps of indicating have
human minds as objects. Nevertheless, the validity of the
thousands of patents having claims including the words
“indicating” or “indicator” has never been called into question on
the basis of the definiteness of these words.
Nevertheless, even if the
judiciary found a problem with the word “indicating,” other verbs
could be used to save storyline method claims from death by
indefiniteness. For example, the step “creating an image” is not
inherently indefinite; a patentable television certainly would
perform a patentable method of “providing the [patentable]
television and creating an image.” Moreover, “creating an image
of a person” is likely no less definite than “creating an image.”
Finally, “creating an image of a person playing baseball” is
probably no less definite than “creating an image of a person”; it
also could be the beginning of a fictional plot. In other words,
the word “indicating” in the pending storyline patent applications
could be replaced with the phrase “creating an image” (or a
comparable phrase) should the former create trouble.
III. First Amendment Concerns
Patents are strange animals.
Debates rage as to whether they are forms of property, monopoly,
or private regulation.
Like property, a patent allows a patentee to exclude others from
using his patent.
Unlike property, a fact often confused by the lay public, a patent
does not give the patentee the right to practice his own
invention, in part because use of his invention may infringe
another’s patent.
If patents are property of some sort, they assume the form of a
property-based legal theory at times, allowing a patentee to seek
preliminary injunction in a court of equity to prevent future
infringement.
They also assume the form of a liability-based legal theory at
other times, only allowing a patentee to seek remedy at law after
infringement if a preliminary injunction would have amounted to an
impermissible prior restraint.
Professor Thomas of Georgetown University Law Center argues that
since patents are drafted by private individuals, patents are more
akin to federal regulation yielding “causes of actions in tort
that applicants write for themselves.”
In any event, a patent gives a patentee, a private actor, the
right to prevent others from making, using, selling, offering to
sell, and importing the claimed invention.
Whether seen as a form of property, monopoly, or private
regulation, a patent gives a patentee the right to prevent others
from acting and, sometimes, speaking. To what extent would free
speech guarantees of the First Amendment clash with storyline
patent rights?
A. Patents and the State Actor Doctrine
Commentators have asserted that
“the initial grant and the enforcement of storyline patents in
specific instances would almost certainly violate the First
Amendment’s free speech guarantee”
without any recognition (or perhaps realization) that the First
Amendment’s guarantee of liberty in speech applies, with few
exceptions, only against the government.
For example, while political speech is arguably the most protected
First Amendment speech, a trespassing speaker being forcefully
ejected from private property would likely find resort to the
Constitution unproductive, no matter how politically charged his
speech. In other words, the First Amendment does not provide a
carte blanche against which any entity may speak at any time,
particularly where private property interests are concerned.
Whether or not a patentee is limited by First Amendment principles
rests largely on the state actor doctrine: “[w]hen the nominally
private party performs a traditional government function, is
controlled by a state entity, or engages in conduct that has been
encouraged or substantially facilitated by the government, then
the constitutional guarantees will apply.”
Currently, no court has addressed the applicability of the state
actor doctrine to patents, a prerequisite to barring issuance or
enforceability of a storyline patent on constitutional grounds.
Professor Thomas discusses the
state actor doctrine as applied in three cases in which a private
entity was granted a license from the government.
In Moose Lodge No. 107 v. Irvis, the Court held that the
mere granting of a state liquor license to a private club does not
convert the licensee into a state actor.
In Jackson v.
Metropolitan Edison Co.,
the Court held that even a heavily-regulated utility enjoying
monopoly status does not act as the state.
Finally, in San Francisco Arts & Athletics, Inc. v. United
States Olympic Committee, the Court held that Congress’
transfer of ownership of the word “Olympic” to a private
corporation did not transform the entity into a state actor.
Professor Thomas concludes that because “[p]atentees are subject
to considerably less government entwinement than any of these
other entities,” a private patentee is likely not a state actor.
While there is a line of cases suggesting a more liberal view of
the state actor doctrine where more compelling rights violations
are involved (such as a libel action for political speech against
a state official
and racial discrimination),
the decision to apply the state actor doctrine to a particularly
difficult patent case may infect every future patent
enforcement suit “with the entire panoply of constitutional
defenses.”
Therefore, a court would most likely view a patent as a
private-property right akin to enabling a real-property owner to
eject a trespasser who is loudly denouncing the government, in
spite of the trespasser’s compelling rights to freedom of
political speech.
The aforementioned commentators
miss the boat entirely by (1) ignoring the state actor doctrine
and (2) citing Harper & Row Publishers, Inc. v. Nation
Enterprises
as standing for the proposition that the First Amendment tempers
intellectual property rights (specifically, the Copyright Revision
Act of 1976) “by permitting free communication of facts while
still protecting an author’s expression.”
In Harper, the Court repeatedly mentions “First Amendment
values” while holding that unauthorized use of President Ford’s
memoirs was not a “fair use” under Section 107 of the Copyright
Act.
However, in spite of First Amendment-style dicta and consistent
with the fact that the state actor doctrine was not applied, the
Court’s decision was grounded in the Copyright Act—not the First
Amendment.
The Court refused to allow the First Amendment to “expand[] the
doctrine of fair use to create what amounts to a public figure
exception to copyright.”
In other words, not only is there a dearth of binding case law
holding that a patentee is a state actor restricted by the First
Amendment, but case law actually suggests the opposite.
B. The Generally-Accepted Presumption that Patent Rights
are not Limited by First Amendment Rights
While the specific
issue of whether or not a patentee is a state actor restricted by
constitutional free speech guarantees has never been litigated,
and even if the state actor doctrine is momentarily (but
impermissibly) ignored, the following analysis aims to demonstrate
that Congress, the Judiciary, and private entities all act under
the apparently generally-accepted presumption that a patentee is
not so restricted.
i. Section 271 Includes Restrictions
on Otherwise-Protectable Commercial Speech
While patent law is not ordinarily
perceived to involve restricting speech or expression, the Patent
Act specifically limits at least some commercial speech by
granting a patentee the right to prevent others from offering to
sell a patented invention.
In DeSantis v. Hafner Creations, Inc.,
the district court held that a magazine advertisement—which is
commercial speech ordinarily protected under the First Amendment—for
an allegedly-infringing gun holster was an infringing offer for
sale actionable under Section 271(a).
Further, the Federal Circuit held in 3D Systems, Inc. v.
Aarotech Laboratories, Inc.,
that mailing letters to four companies describing products for
sale and their prices was an infringing offer for sale, whether or
not the letters created a contractual offer.
Thus, Section 271(a) ensures a patentee the right to curtail
certain otherwise-protected commercial speech—namely commercial
speech amounting to an offer for sale of a patented invention.
First Amendment defenses were never raised in these cases.
Apparently, asserting that a privately-acting patentee is a state
actor subject to First Amendment limitations sounds ludicrous even
to defendants.
ii. The Patent Office Regularly Issues, and Private
Entities Regularly Enforce, Patents that Inherently Restrict
Speech
Methods of creatively painting may
be patentable.
In addition, methods having the steps of querying a respondent,
instructing a person to act,
or engaging others to answer and discuss open-ended questions
may be patentable. One issued patent relating to home improvement
includes a claim step of “presenting the design ideas to a
client.”
“[M]ethods of teaching language, music, vocabulary acquisition,
dialogue writing, and mathematics” have been patented in various
forms.
In each of these patents, execution of the claimed invention does
not merely include the possibility of speech—it requires
speech or expression in some form. In some cases the invention
requires expression which, when fixed in a tangible medium of
expression,
is protected under the Copyright Act.
While the Patent Office is not the
final arbiter to determine if the First Amendment applies to
patents, it acts as a rulemaking agency of the federal government
charged with upholding the Constitution.
To the extent that the Patent Office regularly issues patents that
are so intertwined with speech that use of the patents requires
expression—and in many cases even copyrightable creative
expression—it implicitly asserts that the First Amendment is not a
concern to the patent system.
Furthermore, the following
examples suggest that private litigants employing high-priced
attorneys do not seem to think highly enough of the argument that
the First Amendment is applicable to private patentees to argue
it. In 2001, a federal court issued a restraining order
prohibiting Juno Online Services, Inc. from practicing a patented
method of competitor NetZero, Inc.
The patent, which claimed a method of displaying advertisements in
floating windows,
is inherently and intimately intertwined with otherwise-protected
commercial speech; First Amendment concerns did not arise,
however.
First Amendment concerns may be
relevant, however, in evaluating a patentee’s rights to the extent
that a preliminary injunction could amount to an impermissible
prior restraint. While the specific case has not yet arisen,
working analogies are instructive on the conflict between the
First Amendment and other intellectual property rights. For
example, a company may recover against a defendant who unlawfully
expropriates and disseminates a company’s protected trade secrets;
in other words, a citizen has no First Amendment right to freely
speak such secrets.
Nevertheless, prior restraints are considered so heinous a form of
censorship, even when one has threatened to disseminate valuable
trade secrets, that “courts generally do not allow preliminary
relief that restricts free speech” because “[a]ny short-term
restriction of free speech that might ultimately be adjudicated
constitutionally protected speech is unacceptable to a court.”
Applying this analogy to the patent arena, a defendant’s appeal to
the First Amendment is likely to be successful, if at all, only on
the question of a preliminary injunction preventing the defendant
from speaking in an infringing manner.
iii. The Patentable and
Copyrightable Nature of Software Teaches that Free Expression
Fails to Restrict a Private Patentee’s Rights
Software is often touted as
enjoying the privileged status of intellectual property that may
be protected under both patent and copyright law.
For example, a software patent claim might include an
information-containing substrate configured to cause an
appropriately-configured machine to execute the software’s
function. An actual embodiment of the software in the form of
code (usually written in a modern programming language) is a
fixation in a tangible medium of expression that is copyrightable.
In other words, the expression of the actual embodiment is
copyrightable while the idea embodied on a physical substrate or
apparatus is patentable. The dual nature of software protection
is easily understood by recognizing that software, fundamentally a
set of instructions,
is no more than information. In that respect, software is
comparable to the information found in a copyrightable novel,
song, or newspaper article.
However, like a novel, the
information in software is subject to—and in fact at times
actually requires—creative expression. If a novel is the creative
embodiment of a raw plot, software is the creative embodiment of a
raw function. More particularly, software is expression that is
indeed protected by the First Amendment,
but it is also capable of private restriction via patents and
copyrights.
In Bernstein v. United States
Department of State,
a Ph.D. graduate student studying electronic encryption challenged
the requirement that he obtain a license to publish encryption
software, which was allegedly controlled by the Arms Export
Control Act.
He contended that the software was protected First Amendment
speech and the Arms Export Control Act served as an impermissible
prior restraint on this speech.
The district court agreed with Bernstein on the basis that “[t]he
statutory language, along with the caselaw of numerous circuits,
supports the conclusion that copyright protection extends to both
source code and object code” and “[f]or the purposes of First
Amendment analysis . . . source code is speech.”
The court specifically rejected the contention that functionality
reduces First Amendment protection by pointing out that
“[i]nstructions, do-it-yourself manuals, recipes, even technical
information about hydrogen bomb construction are often purely
functional; they are also speech . . . . Like music and
mathematical equations, computer language is just that, language,
and it communicates information either to a computer or to those
who can read it.”
Bernstein
was directed to restrictions imposed by the federal government on
First Amendment speech; software is a subset of protected First
Amendment speech.
While Bernstein asserts that all software code (even
object code)
is protected First Amendment speech,
no court has ruled that these protections are applicable in
limiting the rights of private copyright and patent holders
attempting to recover for damages against an infringer, no matter
how expressive or creative the infringing software is.
Software may itself be a form
of expressive speech. For example, consider a security technology
developer who patents software for encrypting information to
prevent unauthorized copying. A rogue citizen, protesting the
American regime of strong intellectual property protection, uses
the patented software without a license to create and prolifically
distribute decrypting software that overcomes the developer’s
patented encryption scheme. The protestor’s software is itself
political speech that infringes the developer’s patent. While
this precise issue has never been litigated, common sense
instructs that the developer would be able to recover for patent
infringement.
Patent law does not look to the purpose behind an
infringer’s act.
Unlike copyright law’s fair use, educational, and other
statutory-infringement exceptions,
such exceptions are notoriously absent from patent law. One who
infringes a software patent for good reasons or bad, for profit or
nuisance, for charged political propaganda or for fun, is still an
infringer.
In addition, software may be the
result of a primarily expressive effort – e.g., 99%
creative and 1% functional—and nevertheless be fully protected
under patent law. For example, because writing software is as
much art as science, a particular computer function may be
implemented by uncountably many software embodiments.
Software engineering students in the course of fully understanding
this fact might engage in a coding competition in which the
student who drafts the most complicated, convoluted, and confused
code for a predetermined
simple function wins. Yet, no matter how much creativity and
expression were involved in such coding, the resulting software
would infringe a patent if it executed the claimed method.
Finally, software may include
otherwise-protected expressive speech without restricting a
copyright or patent holder’s rights. Consider a would-be
infringer who includes otherwise-protected First Amendment speech,
such as politically charged messages, between the lines of
copyrighted or patented source code. To the dismay of the
infringer who planned on bypassing the patent by invoking the
First Amendment, patent law contains no statutory infringement
exceptions.
Moreover, the First Amendment is probably not a limitation on a
software patentee suing for damage recovery.
In essence, if software is speech
for First Amendment
purposes,
and it is also subject to private appropriation via both copyright
and patent law,
common sense demands that the former not kill the latter. While
some commentators seem bothered by the apparent conflict between
the simultaneous protection and private restriction of certain
speech,
their confusion (but probably not their indigestion) may be
assuaged by recognizing that a private patent owner bringing a
lawsuit to recover damages against an infringer is, as previously
discussed, not a state actor restricted by the First Amendment.
C.
Protected Speech Versus the Patent System
While binding case law suggests
that—and government and private entities act as if—a patentee is
not a state actor limited by the First Amendment, there is a far
more persuasive reason that patentees should not be limited by the
First Amendment: a binding decision that a patent owner is a state
actor whose enforcement activities are trumped by any First
Amendment concerns would all but annihilate patent rights.
Essentially, any time a potential infringer dressed up a patented
apparatus or method with a sufficient quantity of creativity,
expression, or otherwise-protected First Amendment speech, he
would avoid liability.
Consider, in the
software arena, a would-be infringer who writes a fictional short
story. The story is then fed to a creatively-designed compiler
that converts the fictional story to object code that causes a
computer to execute a patented method. Is the fictional story
protectable First Amendment speech? Indubitably. For example,
the United States would be prohibited from censoring or
controlling publication of the short story based upon its content.
Nevertheless, if the First Amendment could trump the private
patentee’s rights to recovery for infringement, the protected
story could, and presumably would, proliferate among those who
used the story for the software code it contained, without any
reward to the patentee. Similarly, consider the software pirate
who inserts politically-charged (but nonfunctional) messages
throughout patented software code and distributes the code without
authority from the inventor, knowing that his protected political
speech will always overcome a charge of patent infringement. Said
another way: whether or not all software code is inherently First
Amendment-protected speech,
all software code can be converted into First
Amendment-protected speech, whether by using the code as
speech, expressively writing it, embedding it with
speech, or reading it as speech. Thus, if the First
Amendment kills a patentee’s right to recover for infringement of
his software patent, then he has, de facto, no patent
rights at all. Every valuable software patent would be lawfully
infringed via the First Amendment loophole.
The above examples
do not only apply to software patents. Most, if not all, patented
processes, machines, manufactures, and compositions of matter
could be converted into First Amendment-type speech. Consider,
for example, a would-be infringer of a valuable patented consumer
product who, while otherwise impermissibly manufacturing the
product, needlessly but expressively shapes or dresses the product
to invoke the First Amendment trump against patent infringement.
Subsequently, he could profit from selling the pirated product
without paying any royalty to the inventor. Consider a would-be
infringing user of a pirated video camera who asserts that her
regular artistic uses of the camera constitute a First Amendment
bar against patent infringement recovery by the uncompensated
inventor. Consider a would-be infringer who manufactures, sells,
and profits from a patented airplane. To escape the obligation to
pay or even notify the patentee, he hires an artist to paint a
First Amendment-type message on the side of each plane. The
examples are endless, as virtually every patent could be
infringed in a manner that was expressive, creative or otherwise
protectable under the First Amendment. In such a regime, to the
extent that a patented invention is made or used in any First
Amendment-protected context, the inventor would go unrewarded for
her contribution, and patent rights would exist in name only.
IV. Quid Pro Quo and Conclusion
In 1880, Thomas Edison was
incentivized by a robust patent system to conceive of the electric
light bulb.
The seventeen years
paid in patent exclusivity to Edison by the American populace in
exchange for public disclosure and commercial availability of the
incandescent bulb is indisputably dwarfed by royalty-free public
use after his patent expired, which was over one-hundred years
ago. However, while the value of the electric light bulb will,
given sufficient time, likely dim to more efficient light sources,
a compelling fictional plot is an unbreakable diamond that will
die only with humanity. If the electric light bulb’s astronomical
bang per buck is the poster child of a successful patent law
regime at its best, how much more impressive would a regime be
that induced inventors to create value having effectively infinite
life, all for the low, low price of less than seventeen years of
exclusivity?
Even the most liberal critics of
the U.S. patent system—e.g., those who oppose software patents and
patents on essential pharmaceutical products—do not seem to doubt
that information-processing apparatus, such as silicon
microprocessors, should be (and are) patentable. Amazingly,
because of the exceptionally short market life of each patentably-distinct
microprocessor improvement relative to the patent system’s
twenty-years-from-filing monopoly grant, a patentee effectively
owns that improvement for its entire useful life.
Of course, microprocessors are the extreme example, but virtually
every inventive field of endeavor is rife with inventions whose
valuable life ended or will end before expiration of the
associated patent.
In fact, the incandescent light bulb’s useful life in excess of a
century is the exception, not the rule.
In sharp contrast, the useful life
of a fictional plot unarguably exceeds the life of any patent on
it and, as suggested, could be effectively eternal. While
personal vehicles powered by steam are almost certainly a distant
memory never again to reemerge, an incredibly good storyline is
likely to reappear generation after generation until humanity
ceases to exist. If the purpose of the patent system is quid
pro quo, whereby the public obtains the benefits of prolific,
incentivized inventing coupled with early public disclosure in
exchange for a limited private property right, then how can one
argue that the patent system succeeds in cases where the entire
value of the invention is enjoyed during the patent term, but
fails in cases where the value extends long after the patent term?
One may argue that a patented
microprocessor is still valuable to the public even when the
particular microprocessor is obsolete, because the public
disclosure allowed other inventors to improve on the device.
While that may be true, that argument is no less potent in the
case of patented storylines. In other words, on sum, the price
per benefit paid by the public for storyline patents is
necessarily and significantly less than that for all other
patents. If the concept of quid pro quo is to have any
meaning and credibility in the U.S. patent system, then storyline
patents are at least as beneficial as other patents to the
American public.
In spite of various concerns to
the contrary, storyline patent applications probably do not
inherently fail any statutory test, even if many particular
applications would fail under at least one of the definiteness,
novelty, and nonobviousness standards. Further, First Amendment
concerns will probably fail to prevent the issuance and
enforcement of storyline patents, in part because a patentee is a
private actor enforcing private property rights, and in part
because the extent to which the First Amendment forecloses
storyline patents is the extent to which the same rule of law
would predictably destroy the entire patent system. Concerns
about stifling creativity, patent overbreadth, and destructive
economics induced by the litigiousness of so-called “patent
trolls” are generic to the patent system as a whole. If these
dangers and economic costs are indeed outweighed by reciprocal
benefits to the public, then champions of the U.S. patent system
will recognize that storyline patents have the potential to impart
at least the same net benefit as other patents.
Ex parte Carl A.
Lundgren, No. 2003‑2088, 76 U.S.P.Q.2d 1385, 1385 (Bd. Pat.
App. & Int. 2005).
See id. at 1387
(citing In re Musgrave, 431 F.2d 882, 893 (CCPA 1970),
In re Toma, 575 F.2d 872, 877–78 (CCPA 1978), and Ex
parte Bowman, 61 U.S.P.Q.2d 1669 (Bd. Pat. App. & Int.
2001) (non-precedential)).
Lundgren, 76
U.S.P.Q.2d at 1387.
This does not imply, of
course, that the virtual reality ride is patentable, for it
may fail other statutory requirements—e.g., the virtual ride
may have been obvious in light of existing prior art, a
failure under 35 U.S.C. § 103.
In re Buchner, 929
F.2d 660, 661 (Fed. Cir. 1991); see also 35 U.S.C.
§ 112 ¶ 1 (2006).
In fact, disclosure of a
working embodiment is not even necessary if one skilled in the
art can practice the invention without undue experimentation.
See, e.g., Atlas Powder Co. v. E.I. Du
Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)
(holding that disclosure in the patent of numerous salts,
fuels, and emulsifiers that could form thousands of emulsions,
without commensurate teaching as to which combinations would
work, did not fail enablement, even where some of the claimed
combinations were inoperative).
Extremely skilled software
engineers are capable of drafting code so complicated and
confusing as to convolute the software’s true function to
prevent reverse engineering and maintain trade secrets. While
disclosure of such code would enable one of ordinary
skill in the art to practice the claimed invention—merely via
copying and executing the code on a computer—disclosure of
only such code in a patent application would not satisfy
the quid pro quo purpose of patent law, and would
likely fail both the written description and best mode
requirements of § 112. For an interesting discussion of the
difference between the enablement and written description
requirements, see Robert Greene Sterne et al., The
Written Description Requirement+, 37
Akron L. Rev. 231
(2004). Further, if one of ordinary skill in the art were
enabled to practice the claimed invention only by
copying the disclosed code (such as where the code is
meticulously convoluted for trade secret purposes), a
Constitutional issue could arise under Article I, Section 8,
Clause 8 (authorizing Congress to award patents and
copyrights), because the entire value of such code would
arguably be fully protected under Copyright law, and thus
would not be eligible for additional protection under patent
law. However, to the extent that one of ordinary skill in the
art is enabled to practice the invention in copyrightably
distinct ways—e.g., by providing him the tools to create
different code having the same underlying function—this
Constitutional issue should not arise.
Unfortunately, a poor
understanding by the Federal Circuit of the nature of software
has led to the disastrous but previously unrecognized result
that the mere printing of an issued software patent is also an
infringing “making” of the claimed invention under § 271.
See Software, Components, and Bad Logic, supra
note 12, at 512. For this reason alone, software should
be patentable only as processes or complete computer systems,
not simply as information-containing substrates. The
currently pending storyline patent applications each claims
information-containing substrates, such as books and DVDs,
with the recognition that while such apparati should not be
patentable, they are probably no less patentable than
currently allowable software apparati.
S3 Inc. v. nVIDIA Corp., 259
F.3d 1364, 1367 (Fed. Cir. 2001); see also Miles Labs.,
Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (“If
the claims read in light of the specification reasonably
apprise those skilled in the art of the scope of the
invention, § 112 demands no more.”)
See, e.g., Creo
Prods., Inc. v. Presstek, Inc., 305 F.3d 1337, 1342 (Fed. Cir.
2002) (discussing the definiteness of claims reciting
“receiving position information indicating the angular
position of said cylinder” on grounds other than the
definiteness of the word “indicating”); see also
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 937
(Fed. Cir. 1987) (discussing the validity of claims reciting
“continuously indicating the position of an item to be sorted”
on grounds other than the definiteness of the word
“indicating”).
See, e.g.,
Alison Marcotte, Concurrent Protection of Products by
Patent and Trade Dress: Use of the Functionality Doctrine in
Marketing Displays, Inc. v. TrafFix Devices, Inc., 36
New Eng. L. Rev.
327, 357 (2001).
407 U.S. 163, 175–78 (1972)
419 U.S. 345, 358–59 (1974).
483 U.S. 522, 544 (1987).
See N.Y. Times Co. v.
Sullivan, 376 U.S. 254, 283 (1964) (holding that the First
Amendment bars a libel action against a newspaper for
publishing an advertisement about a public official acting in
his official capacity).
See Shelley v.
Kraemer, 334 U.S. 1, 20 (1948) (holding that judicial
enforcement of private racially-restricted covenants
constitutes state action). Shelley’s holding has been
considerably narrowed by subsequent decisions and its
precedential value has been limited. Thomas, supra
note 94, at 602. Further, both New York Times Co. and
Shelley were decided amidst a nation torn by politics
of race. The judicial determination of the viability of
storyline patents, on the other hand, is unlikely to be so
influenced.
Harper & Row Publishers,
Inc., 471 U.S. at 559–60; Thomas, supra note 94, at
600.
Id. at 1379; see
Beckerman-Rodau, supra note 87, at 35.
E.g., Software,
Components, and Bad Logic, supra note 12, at 494.
But see Patrick Ian
Ross, III. First Amendment c) Computer Programming
Language: Bernstein v. United States Department of State,
13 Berkeley Tech. L.J.
405, 409–10 (1998) (arguing the insufficiency of the
Bernstein court’s analogies between software and other
speech, such as music). Further, for a hearty discussion on
the distinction between software-as-function and
software-as-expression, and whether or not software is speech
for First Amendment purposes, see Dan L. Burk,
Patenting Speech, 79
Tex. L. Rev. 99
(2000).
See, e.g.,
Mark A. Lemley & Eugene Volokh, Freedom of Speech and
Injunctions in Intellectual Property Cases,
48 Duke L.J. 147,
149–51 (1998).
The Patent Act of 1861 increased the term of a patent grant from 14 to 17 years from issue. Effective
June 8, 1995, U.S. patent law was amended to change the patent term to twenty years from the earliest
effective filing date. See 35 U.S.C. § 154 (2006). Because a patent typically issues more than three years
after filing, the effective available patent term for applications filed after June 8, 1995 is often less than seventeen
years.
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