PTO's Kappos Says Software Patent Critics Should ‘Move Beyond the Flippant Rhetoric'

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Patents on software are “every bit as well deserved” as patents on air flight, the electric bulb, and innovations that enabled the industrial revolution, Patent and Trademark Office Director David J. Kappos said in a Nov. 20 speech in Washington, D.C.

Aiming his remarks specifically at “those reporting and commenting on the smartphone system patent wars as if to suggest that the [patent] system is broken,” Kappos said, “let's move beyond the flippant rhetoric and instead engage in thoughtful discussion.”

The director spoke at a one-hour session sponsored by the Center for American Progress, with a speech he titled, “An Examination of Software Patents.”

Kappos acknowledged the agency's often inadequate or inconsistent examination of software patent applications in the past. He accordingly contended that what the critics are really attacking is an issue of quality examination, rather than a fundamental question of patent eligibility.

He identified multiple ways in which the PTO has resolved some of those quality problems in the past and continues to address quality issues with new initiatives, including those enabled under the America Invents Act.

No Discrimination Against One Form of Innovation.

Kappos highlighted several valuable inventions that integrate hardware and software, including global positioning system (GPS) technology and the da Vinci Surgical System.

“These breakthrough products rely heavily on innovations in both hardware and software,” he said. “Why would we tell the team working on a clamp that holds a scalpel their innovation is worthy of protection, but tell the programmers whose algorithm guides that clamp with unerring precision their innovation is not?”

“Discrimination against a form of innovation that is increasingly critical to technological advancement, indeed that in many areas dominates technological advancement, makes no sense,” Kappos argued.

And to those who contend that the smartphone patent wars are somehow different, the director reminded the audience that such conflicts have occurred throughout the history of patenting in the United States. But, he said, the market ultimately works out the relationships among patent owners and users efficiently.

“As history has shown time and time again, the players ultimately end up agreeing to pro-consumer solutions via licenses, cross-licenses, or joint development agreements allowing core technologies to be shared,” Kappos maintained.

'Quality Is Our Mission.'

Kappos said that critics may have a point about the past, in that “we've struggled over the years at the USPTO with patentability determinations for software-implemented patent applications.” However, he said that was not a problem unique to the PTO. “[I]t is fair to say [that the courts] have struggled as well, at all levels, and for many years, with various tests for patent eligibility and functional claiming and inventiveness standards.”

Nevertheless, the problems do not mean that we should treat software differently than hardware, Kappos said.

“The right point of inquiry is quality,” he contended. “By getting that right, we grant patents only for great algorithmic ideas worthy of protection, and not for everything else.”

As to the PTO's role in that inquiry, the director said, “Quality is central to our mission, … especially for software.”

Toward that end, Kappos cited the following developments at the agency for increasing the quality of software patent application examination:

• In July 2010, the agency updated its examination guidelines for patent eligibility, under 35 U.S.C. §101 .(143 PTD, 7/28/10), “which apply especially heavily in the software area,” according to Kappos. Those guidelines incorporated the Supreme Court's guidance in Bilski v. Kappos, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010) (124 PTD, 6/30/10).

• In September 2010, the PTO updated its examination guidelines on obviousness under Section 103 (124 PTD, 6/30/10). That document included detailed reviews of 24 opinions by the U.S. Court of Appeals for the Federal Circuit published after the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Noting that software programming is often “incremental in nature” and thus “not worthy of patent protection,” Kappos said, “KSR gave us the ability to recognize this valid observation and incorporate it in our examination process.”

• The PTO followed that publication with new guidelines for claim indefiniteness, “an issue that comes up regularly with software patents,” Kappos said. The February 2011 guidelines, in fact, included a section focused specifically on applications that use functional language in claiming computer-implemented inventions, and it provided reasons for rejecting such claims under the written description and enablement requirements of Section 112, as well as for anticipation and obviousness under Sections 102 and 103 .(30 PTD, 2/14/11).

• He noted that in October 2010 the PTO adopted changes to its procedures for measuring the quality of patent examination, including devising a suite of seven quality measures that it makes available for public review.

• Internally, Kappos said, the agency gave examiners more time to review patent applications and, specific to software, “reached out to experts in the software industry to provide technical training to our patent examiners.”


The AIA will provide a further means for the PTO to prevent grants to unworthy software patents, he said, with its provision allowing third party submissions of prior art to assist examiners in reviewing applications that have been published.

He said it was a particular challenge for examiners to find relevant prior software art, because most of it “is in the form of previously written software … and more difficult to understand unless you wrote it.” The AIA now allows anyone to participate in the examination of an application, Kappos said.

AIA Procedures to Correct Issued Patent Mistakes.

For challenges to software patents post-issuance, Kappos touted the availability of reexamination at the PTO. But he saved most of his enthusiasm for the new procedures available under the AIA to challenge issued software patents.

In particular, he first noted that the new post-grant review (PGR) procedure, which will be available for patents applied for on or after March 16, will allow a challenge on any grounds, including patent eligibility and claim clarity, not just based on prior art.

Second, Kappos said that the AIA provision allowing a challenge to a “covered business method” (CBM) should allow the same flexibility--a challenge on any grounds--to software patents issued over the last 20 years. “Since many of the more problematic software patents issued during the last two decades were drafted broadly to cover … the business problems they solve,” Kappos said, “we expect the business method review procedure to be very useful in addressing overbroad software patents issued in the past.”

Critics Should 'Give It a Rest.'

Kappos noted that critics have complained about the AIA provisions, but that, with many key provisions enabled only two months ago, on Sept. 16, the challenge options and the PTO's handling of these challenges need time to unfold.

“So to the commentators declaring the system is 'broken' I say: give it a rest already, and give the AIA a chance to work,” the director argued. “Give it a chance to even get started.”

In closing, Kappos said, “our nation has had a 230-plus year love affair with innovation. … This love affair with innovation has produced the strongest innovation environment the world has ever seen.”

Though he recognized the complex issues involved in software patenting, he argued, “the U.S. patent system is great because it struggles with complex challenges.”

Despite all the complaints over software patents in the last 20 years, the courts and Congress “continue struggling instead,” Kappos said. “And we are a better country--with a better patent system--as a result.”

By Tony Dutra  

Kappos's prepared remarks at

Request Intellectual Property on Bloomberg Law