IEEE ARTICLE PROPOSES BENSON APPROACH TO DEALING WITH SOFTWARE PATENTS: In this article published in IEEE Spectrum, Ben Klemens calls out for the abolition of software patents, due to the fact that software is inherently intermingled with abstract mathematics, and as such, should not be patentable. The arguments made by Mr. Klemens are particularly relevant to the debate currently going on in Europe, regarding the "technical effect" requirement for software, and the current inability to define it in the Europe.
According to the article, In 1936, Alan Turing described a theoretical computer that is effectively equivalent to every computer in existence today. His design included an infinitely long tape and read/write head, which did different things depending on the data on the tape and the machine's state. Because different states cause the machine to do different things, his contraption is often called a state machine.
Around the same time, Alonzo Church proved that that stuff is mathematics. Church created lambda calculus, a formal means of writing mathematical expressions and also a tool that can be used to program a state machine. That is, any program written in a language such as C is a trivial translation of a set of purely mathematical lambda-calculus expressions.
Taking the two together, the article concludes that state machines—physical objects such as computers—should be patentable, while the states to which they are set—information such as programs and data—should remain unpatentable. By using this distinction, the article posits that pure mathematics would be properly excluded from patent protection, while inventors who design faster and better computing devices receive patents on their inventions.
I disagree with this approach for a number of reasons. First of all, this was the approach taken by the Supreme Court in Benson back in 1972, where the court rejected the applicant's arguments that specific software loaded into a general purpose computer effectively made it a "new" machine, and thus should be patentable. An important basis for the court's decision was that mathematical processes embodied in software was “the basic tools of scientific and technological work,” and allowing such patents would destroy innovation.
While this is undoubtedly a correct statement in principle, there is a difference between the circumstance of baldly claiming a mathematical process as opposed to claiming a process that is partly based on a mathematical or physical process. In fact this distinction was repeatedly revisited by the courts since Benson (and yes, scientists and engineers were very intimately involved with the caselaw development), where it was ultimately determined that this approach would not work.
Devices that work by way of digital electronics are not excluded from the patent system simply because their mechanism of operation can be represented by mathematical formulae. The output of an electronic device or circuit may be approximated to any required degree as a mathematical function of its current state and its inputs; some devices, such as the transistor, embody remarkably elementary mathematical functions. As Judge Newman stated in her concurring opinion in Alappat:
Digital electronic devices implement mathematical manipulations of electronic signals, as chemical structures and reactions implement principles of molecular behavior. An apparatus that is configured to perform specific electronic procedures in accordance with instructions that require numerical measurements and mathematical calculations is no less statutory than any other combination of steps and components. A combination of mechanical or chemical components, structured to operate in accordance with the principles of mechanics or chemistry, does not become nonstatutory because those interactions and reactions follow basic scientific principles. Mathematics is not a monster to be struck down or out of the patent system, but simply another resource whereby technological advance is achieved.If there is a slippery slope, it would be one where Mr. Klemens' test for patentability would be applied to software patents. For, if software was to be entirely excluded from patent protection based on its' cozy relationship with mathematical priciples, there would be nothing to prevent the eventual abolition of virtually all method claims involving circuitry or other "physical" devices. Not a good result, if you ask me.
[O]ne must have a powerful reason to exclude technology from the scope of Title 35. Indeed, the importance of the patent incentive in industrial innovation was the principal factor in the formation of the Federal Circuit. It is thus appropriate constructively to apply statute, precedent, and policy to the variety of inventions that the information age has generated, and to remove the cloud on whether these inventions may participate in the benefits and obligations of the patent system.