UK PTO workshop divides lawyers and engineers over patents

Posted on 8 Apr 2005 at 12:28

The extent of the division between attorneys and software engineers over software patents was crystallised at a series of workshops run by the UK Patent Office.

Delegates comprised a mix of patent attorneys and software engineers and were tasked with testing a number of patent applications against different definitions of the 'technical contribution' criteria. It is this test that determines the approval of software patents in current law and within the formative CII directive on the issue at the EU.

The result resembled in many ways the current situation with that directive: it reached an impasse. Attorney's supported a broad and general description of the terms that they could understand and work with and that, more importantly, wouldn't be rendered obsolete as technology evolves, or fail to cover adequately specific technological fields. Some said they had 'no particular point of view on technical contribution'.

Software engineers were almost unanimous in their derision at attempts to define what constitutes technical contribution yet were equally unwilling to support a patent policy that didn't nail down precisely what and what isn't patentable within software. They said that no definition for technical contribution they had seen 'painted a bright line', between what is and is not patentable.

Yet many of the delegates we spoke to wanted protection for software they had written - they just didn't believe that there exists a definition for software patents that is robust enough to ensure that weak, overly broad in scope and shallow in substance patents, such as Amazon's 'one-click shopping' US patent, won't be granted in the UK or EU.

Richard Carter, a programmer for Bank of America, said that despite the benefits that patent protection offers, the other problems it brings with it mean he'd prefer to not have them at all.

Those problems pull in every direction. Attorneys want a broad definition that will not become redundant with the advent of new technologies. This gives large IT companies the prospect of filing rather tentative, adventurous patents which they can afford to fail in. But any that are granted are extremely powerful - hence the consternation at the patent applications for things like different ways of pressing a button on a PDA. What's bad for the marketplace about this is that only corporations with large enough coffers can afford to play these games.

Software engineers are of course painfully aware of this: they need very precise and detailed legislation that will allow them to assess whether what they are writing is patentable and whether it infringes other patents.

They need this because when they read about dubious patents being granted under the more lackadaisical US patent system they realise that with the best will in the world on the part of the UK and European patent offices, there are actually no safeguards to stop the same happening over here.

Not so, says the patent office. We are the safeguard to prevent us from following broad approach of the US. 'We realise that a patent is an incredibly powerful tool in the marketplace,' said Jeremy Philpott of the UK Patent Office. 'And we don't grant them lightly.'

And so the issue boils down to one of trust and expertise. Even with minutely detailed legislation on patents, is it realistic to expect a software engineer to make a legal judgement on the thousands of patents they could be infringing or whether they have 'invented' something patentable? Likewise, is it realistic to expect a patent attorney to be a technology expert at the same level as the engineer?