While these patents are spread across all industries, a large percentage are concentrated in the information technology it industries, and others in biotechnology. To provide one additional solution, mark lemley has gotten enormous traction arguing for the elimination of functional claiming in software patents i. Against this backdrop of disbelief and denial, i spoke with professor mark lemley on august 28, 2014. Neukom professor of law at stanford university school of law. He is a preeminent scholar of intellectual property law and an accomplished litigator, and an expert on patents, traded secrets, antitrust, and constitutional law. At the same time, ignoring patents is hardly the optimal solution. Ten things to do about patent holdup of standards and one not to mark a. An alternative definition for software patents by allison a nd lemley is an invention that is completely embodied in software, even if the claims of the patent refer to a sy stem or article. While patent law aims to promote innovation by giving inventors the exclusive right to their inventions. Sure, moving forward, we have ideas about what needs to be in the disclosure, but you cannot add new matter to an application or issued patent, and software patents are now all about the technical disclosure.
Theres an old saying that everyone complains about the weather, but no one does anything about it. A proposal from stanford professor mark lemley that would change software patents and a call for the open source community to be a part of the software patent solution. Lee van pelt thanks to mark lemley for providing the. Lawyerlaw professor mark lemley has argued for years that, even as there are very clear problems with software patents, the answer is not to merely exclude software from being patentable. Not only does professor lemley fall squarely in the line of distinguished intellectual property scholars who have given the kastenmeier lecture at the university of wisconsin law. Software and internet patents with extremely broad claims seem to be everywhere these days. If perceived intent is the test, then be careful what you intend because if.
How structural claim limitations can save software patents law360, new york february 9, 2016, 11. How structural claim limitations can save software patents. Commentators have observed for years that patents do less good and cause more harm in the software industry than in other industries such as pharmaceuticals. Lemley and carl shapiro f or many years, economists typically conceptualized patents as wellde. Lemley encourages strict application of the algorithm requirement to police. He teaches intellectual property, computer and internet law, patent law, and antitrust. Polk wagner abstract this article delves into issues surrounding the relationship between technology and the patent law.
The illogic of the algorithm requirement for software patent claims. Recent posts by simon phipps at infoworld and by mike masnick at techdirt have suggested that it would, calling lemley s proposal the software patent solution that will fix software. While there is some truth to each of these criticisms, the real problem with software patents lies elsewhere. For a number of examples involving hundreds or thousands of patents covering a particular technology, see mark a. Put another way, patentees claim to own not a particular machine, or even a particular series of steps for achieving a goal, but the goal itself. Lemley s proposal squarely attacks the breadth of software patents.
Lemley teaches intellectual property, computer and internet law, patent law, trademark law, antitrust law and remedies. By limiting software patents to their specific way of accomplishing a function, other innovators can develop alternative solutions without infringing the patent. Interview with mark lemley, facebook as a service of process, fasttrack ctm applications. We recently came across a new paper written by noted scholars mark lemley and carl shapiro that we thought was worth passing along. Neukom professor of law at stanford law school and the director of the stanford program in law, science and technology. I suggest some ways we might move towards a compromise a robust. For example, the prominent patent scholar mark lemley has speculated that a majority of the software patents being litigated right now are invalid under alice. Most significantly, there are substantial differences between industries in the likelihood of patent litigation. Software patent lawyers are increasingly writing patent claims in broad functional terms. Patent scope and innovation in the software industry. It has been a real pleasure talking to you and i hope we can hear from you sometime in the future with updates on software patents or any other topic that might be interesting. For example, a patent on a new use for an existing drug is directly infringed by each individual patient taking the drug for the new use, or perhaps by the doctors who. Intellectual property in the new technological age 2018. Stanford law school designing optimal software patents mark a.
Ignoring patents, then, may be a workaround that allows the innovation system to function in the face of overbroad patent protection. Lemley argued that many software patents use functional claiming, which is patenting a software function basically, the problem that needs to be solved rather than a specific way to implement that function the innovators solution to the problem. A central fact about the information technology sector is the multiplicity of patents that innovators must deal with. Lemley is a professor in the usa who has published many papers and articles on patents and software patents his articles contain useful information and he highlights interesting problems. Lemley3 the software patent cases stand as a testament to the ability of law to adapt to new and innovative concepts, while remaining true to basic principles. Patents in the mechanical, computer, and medical device industries are significantly more likely to be litigated, for example, than patents in the chemical and semiconductor industries. Professor mark lemley talks about the impact of court rulings on software patents and the tech industrys pressure on congress for reform. They are worth reading, but his suggestions are minimal. He teaches intellectual property, computer and internet law, patent law, trademark law, antitrust, and remedies. Software patents and the return of functional claiming by. Lemley march 2005 this paper can be downloaded without charge from the social science research. Software patents and the return of functional claiming1 mark a. Lemley is a professor at stanford law school and an expert on software patents. There is a perception that bad software patents are breaking the patent system.
Much criticism of software patents is rightly aimed at the use of abstract claim language to cover a wider range of technology than the patentee invented and disclosed. Fixing software patents by actually applying existing. Director, program in law, science and technology 2004 present. Interview with mark lemley, facebook as a service of. See software patents and the return of functional claiming by lemley.
Lets create a concreteness standard for abstract software. Lemley and shapiro have written extensively about the interplay between patent issues and standardsetting, including the oftcited article patent. Software patents and the return of functional claiming. Lemley, software patents and the return of functional claiming, 20 wis. Tan mau wus post yesterday on mark lemley s software patents and the return of functional claiming questions whether restricting software claims to disclosed implementations will really make a difference. Technology, as well as a founding partner of the law firm of durie tangri llp, which he has been practicing with since 2009.
For example, currently we allow patent claims in the form a computer programmed to achieve this result or a computer. This cited by count includes citations to the following articles in scholar. Indeed, hundreds of thousands of patents cover semiconductor, software, telecommunications, and internet inventions. Ten things to do about patent holdup of standards and one. They have pointed to a variety of problems and offered a variety of solutions. The results been a raft of lawsuits against companies making any products in this space. Mark lemley of stanford, in software patents and the return of functional claiming, suggests that many software claims are essentially functional claims, where a function is claimed instead of a structure, and that functional claims are responsible for many of the issues surrounding software claims. Lemley2 commentators have observed for years that patents do less good and cause more harm in the software industry than in other industries such as pharmaceuticals. Recently, patent scholar mark lemley has renewed attention to software claims under 35 u.
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