For a discussion of the anticommons, see michael a. Lex machina 1010 doyle street, suite 200 menlo park, ca 94025 phone. At the confluence of these seemingly unrelated developments is a growing frustration on the part of industry with the role of universities as patent owners. About a month ago, i was asked by some friends about the shift from the firsttoinvent patent system to a firsttofile patent system in the america invents act of 2011 aia. Lemley and carl shapiro f or many years, economists typically conceptualized patents as wellde. Intellectual property thought leader interview with mark lemley. There is an intense debate going on right now about what to do about the high cost of prescription drugs.
His contributions to legal scholarship focus on how the economics and technology of the internet affect patent law, law, and. He is a preeminent scholar of intellectual property law and an accomplished litigator, and an expert on patents, traded secrets, antitrust, and constitutional law. 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. Defending the myth of the sole inventor if you actually read my article you will find that i simply dont say the things they claim i say. How chicago, not silicon valley, is controlling the patent. For large technology companies, having a cheap and quick way to invalidate those patents reduces the cost of the. The results been a raft of lawsuits against companies making any products in this space. Debate on software patents fails to convince silicon. Patent scope and innovation in the software industry scholarship. Software patents and the return of functional claiming stanford. Any resulting market power enjoyed by a patent holder is. A legal debate india 2009, and in analisis economics del derecho 289 chile 2017 spanish translation.
Software patent lawyers are increasingly writing patent claims in broad functional terms. This result seems to be driven by two parallel findings. Patents are rewards for those who have contributed to economic growth through their inventions. Neukom professor of law at stanford law school and the director of the stanford program in law, science and technology. As discussed further below, many large, productive companies associated with positive aspects of the patent system also allowed npes to enforce their patents. Jul 26, 2012 most software patents today are written in functional terms. This was highlighted in the recent this american life episode on patents, in which a software developer with a patent admittedthat he didnt even understand what his own patent said. A claimed step for performing a broad function should be.
The software patent debate sometimes seems awfully onesided. Professor lemley discussed that methodology at the roundtable. Aug 15, 2012 even if it were possible, its not clear that eliminating software patents would be wise. I was involved briefly in the policy debates in the spring of 2011 leading up to the enactment of the aia, and so this query prompted me to share a short essay i wrote in may 2011 on this issue. On todays show, we talk with mark lemley, who has some ideas for fixing the patent mess. Neukom professor of law at stanford law school, a founding partner of the durie tangri llp law firm, and cofounder and board of directors member of the data analytics company lex machina. Oct 07, 2014 everything you need to know about software patents. Tim knight interviews professor mark lemley about patent law and changes to the u. Oct 23, 2012 on todays show, we talk with mark lemley, who has some ideas for fixing the patent mess. Thus, to take just one example, the long debate about whether software was or should be. How chicago, not silicon valley, is controlling the patent debate a new surge in patent lawsuits shows that chicago, not silicon valley, is setting the rules for how patents should encourage. I appreciate you taking time to chat with me, mark. Lemley in the patent crisis and how the courts can solve it, courts should use the tools the patent system already gives them to treat patents in different.
This was highlighted in the recent this american life episode on patents, in which a software developer with a patent admitted that he didnt even understand what his own patent said. A legal debate india 2009, and in analisis economics del derecho 289 chile 2017. Dan burk and mark lemley argue that the courts should refine case law so that software patents describe in detail the protected innovation and are narrower. Passionate opponents carefully explain that software patents hinder innovation and supporters of the status quo ignore their arguments. Software patents have been controversial for decades. Everything you need to know about software patents. While patent law aims to promote innovation by giving inventors the exclusive right to their inventions. I think we can learn something about the raging debate over who is a patent. Supreme court and the second, fifth, seventh, ninth and federal u. We offer some possible explanations for why a group of apparently weak patents nonetheless have so much influence over the patent system, and. The patent crisis and how the courts can solve it request pdf. Tan mau wus post yesterday on mark lemleys software patents and the return of functional claiming questions whether restricting software claims to disclosed implementations will really make a difference. Lemley is an intellectual property thought leader who wears many hats.
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 patents eff urges the pto to diligently apply the methodology of professor lemleys software patents and the return of functional claiming to limit overbroad, functional software patents using 35 u. Meanwhile, vast sums of money that could be used for innovation are diverted by patent lawsuits of competitors seeking to block other competitors and of nonpracticing entities exploiting the system. Lemleys proposal squarely attacks the breadth of software patents. He teaches intellectual property, computer and internet law, patent law, and antitrust. How chicago, not silicon valley, is controlling the patent debate. Recent posts by simon phipps at infoworld and by mike masnick at techdirt have suggested that it would, calling lemleys proposal the software patent solution that will fix. Selected periodical articles patent law research guide. Theres an old saying that everyone complains about the weather, but no one does anything about it. Comments of eff on enhancement of quality of software. Software patents and the return of functional claiming. The opponents to software patents have gained more visibility with fewer resources through the years than their propatent opponents. Time and again, when i talk to people in a variety of industries, their view is that. Lemley, software patents and the return of functional claiming, 20 wis.
Nov 30, 2016 software patents have been controversial for decades. Unfortunately, most of that attention has been devoted to the problem of whether software is or should be patentable subject matter. If courts would faithfully apply the 1952 act, limiting those claims to the actual algorithms the patentees disclosed and their equivalents, they could prevent overclaiming by software patentees and solve much of the patent thicket problem that besets software innovation. Even if it were possible, its not clear that eliminating software patents would be wise. Mark lemley, a technology legal expert and professor at stanford law school, says that while software. The software patent debate is the argument about the extent to which, as a matter of public policy, it should be possible to patent software and computerimplemented inventions.
One concern is that pharmaceutical companies are gaming the patent. Software patents and the return of functional claiming by. Everything you need to know about software patents vox. See also janis, supra note 5, for a lengthy discussion on how equivalents are determined for the purpose of functional claims. Lemley is a professor at stanford law school and an expert on software patents. Software patents andor software development brooklynworks. Universities are engaged in an unprecedented surge in patenting. 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. Lemleys dogged attack on patents where he focuses on all the negative aspects of patents and not the positive aspects that far outweigh the negative aspects is tiring to say the least.
Professor mark lemley has suggested that properly applying 35 u. Dec, 2015 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. Lemley, software patents and the return of functional claiming,stanford public law working paper no. The pto grants nearly 200,000 new patents a year, a number that has roughly doubled over the past 15 years u. The discussion generally centers around whether software is patenteligible subject matter. Particularly in the software context, there are many circumstances in which the. By limiting software patents to their specific way of accomplishing a function, other innovators can develop alternative solutions without infringing the patent. By limiting software patents to their specific way of accomplishing a. Patent quality and settlement among repeat patent litigants. Mar 26, 2012 how chicago, not silicon valley, is controlling the patent debate a new surge in patent lawsuits shows that chicago, not silicon valley, is setting the rules for how patents should encourage. Neukom professor of law at stanford law school and the director of the stanford program in law, science and technology, delivers the 2020 david l. Patent law research guide selected periodical articles search this guide search.
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. Intellectual property rights in frontier industries. Mark lemley and richard epstein debate one of the hottest ip issues today is intellectual property really property. A flashpoint in the 2014 patent reform debate on capitol hill was a. Intellectual property thought leader interview with mark.
And i wanted to talk to you about software patents in wake of the alice decision. Most software patents today are written in functional terms. So its worth noting when a leading patent law scholar proposes a potential solution to the software patent problem, as mark lemley recently did in a new paper. A new balance between ip and antitrust, southwestern journal of law and trade in the americas 237 2007, reprinted in 7 icfai journal of international business law 64 india 2008, in patents vs. Neukom professor of law at stanford university school of law. Ian cockburn explains that inconsistencies between patent rules for software and for biotechnology cause problems in patenting bioinformatics, a combination of the two fields. By limiting software patents to their specific way of accomplishing a function, other innovators can develop alternative. Software and internet patents with extremely broad claims seem to be everywhere these days. They observe that patents on software, and especially patents on business methods which are largely software patents, stood out as being particularly problematic. Functional claiming lemley draft 1 software patents and the return of functional claiming1 mark a. Comments of eff on enhancement of quality of softwarerelated.
The open source community maintains an active voice of indignation when it comes to the harms flowing from bad software patents. Holdup is a primary component of patent litigation and patent licensing today. Lemley s proposal squarely attacks the breadth of software patents. We offer some possible explanations for why a group of apparently weak patents nonetheless have so much influence over the patent system, and some preliminary. Sep 25, 2012 second, in response to aharonians why target software critique, i think lemley would respond that patentees should never be allowed to claim broad functions without limiting algorithms, but that this is only a particular problem now for software claims e. Arguing that it is are professors mark lemley and michael meurer.
For a number of examples involving hundreds or thousands of patents covering a particular technology, see mark a. As biotech worries about deterrence of new innovation and software worries about patent trolls dominate the debates, we may be ignoring. The role of patents in the rise of employee mobility and its role in increasing employees salary is far more relevant. Merges and pamela samuelson introduction to computer technology, network economics and intellectual property, chp.
He points out that the inherent flexibility of computing hardware means that. 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. Software patents have received a great deal of attention in the academic literature. This debate will cut to deep and fundamental questions about why. A claimed step for performing a broad function should be limited to the specific structures disclosed in the.
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