Legal Trends
Patenting the Internet
by George H. Pike
Virtually every window of time can be identified by
its technological advances. The industrial revolution of the 1800s gave way
to the transportation revolution of the early 1900s. The development of synthetics
such as nylon and plastics was followed by an electronics revolution built
on transistors and early computers. As the 20th century wound down, the silicon
chip led to personal computers and chip-driven devices.
But these technological changes pale in comparison to what the Internet has
done to advance the information industry. After 500 years of building on print
technologies, the Internet has restructured this industry in a way that is
unmatched by other fields of endeavor. The transformation brought on by the
Internet, occurring over a fraction of the industry's life cycle, has been
nothing short of—to use the cliché—revolutionary.
Promoting Progress
All of these technological transformations operate within a number of legal
structures. One of the most critical, yet often least understood, of these
structures is patent law. Patent protection, like copyright protection, finds
its origins in Article I, Section 8, of the U.S. Constitution, which provides, "To
promote the Progress of Science and useful Arts, by securing for limited Times
to Authors and Inventors the exclusive Right to their respective Writings and
Discoveries." Copyrights and patents give creators a limited monopoly on their
creativity in order to provide the economic motivation to "promote" and advance
knowledge.
The Internet and its related technologies—such as e-mail, Web browsing,
TCP/IP software, and e-commerce—are protected by thousands of patents.
A recent search of the U.S. patent database (http://www.uspto.gov/patft/index.html) located more than 5,600 patents with "Internet" in the title or abstract. However,
the role of Internet patents has come into question as a number of patents
have been issued to cover routine Internet practices such as media streaming,
hyperlinks, and online test administration.
Federated Searching and the Patent Public Domain
Recently, WebFeat (http://www.webfeat.org) was granted U.S. Patent No. 6,807,539
for its federated search engine technology. The patent specifically applies
to "a method and system for retrieving search results concurrently from multiple
disparate databases, whether such databases be available through the Web, or
other proprietary internal networks." Searching and search engines, however,
have been part of electronic information access for years, even more so with
searching on the Internet. How can such a common technology be patented? Several
of WebFeat's competitors are reportedly considering challenging the patent
on the grounds that federated searching is "considered public domain."
But is there a "public domain" in patent law? University of Pittsburgh law
professor Janice Mueller, author of An Introduction to Patent Law (Aspen
Publishers, 2003), indicated that there isn't, at least not in the same sense
that public domain exists in copyright law. A more accurate analysis, according
to Mueller, is whether the invention in question is novel enough to be considered
previously unknown to the public and, therefore, patentable.
Unlike copyrights, which are considered to legally exist the moment a work
is created, patents are specifically granted by the U.S. Patent and Trademark
Office. The process of obtaining a patent is quite rigorous and can take several
months, or even years. Before the government will issue a patent, examiners
ask themselves three core questions: Is the invention patentable under U.S.
law? Is it novel? Is it nonobvious? If the answer to any one of these three
questions is "no," then the patent cannot be legally issued, or the patent
can be overruled after the fact.
Process, Machine, or Manufacture
The Patent Act provides that any "new and useful process, machine, manufacture,
or composition of matter" or any "improvement thereof" may be patented. Machines,
manufactures, and compositions of matter (largely what might be thought of
as inventions) are the most straightforward categories. Machines and manufactures
are inventions with a part or parts arranged to produce a resulting unique
entity. The individual parts may be raw materials or previously patented parts,
as long as the resulting thing is unique. A jet engine is a machine. A golf
club is a manufacture. Computer hardware is generally patented as either a
machine or a manufacture. A computing device with integrated software was determined
to be a patentable machine. Software may be patented if it is intended to have
a specific function and will produce a tangible result.
More complex and increasingly controversial is the "process" category of
patent. Traditionally, a process is the series of steps used to accomplish
a result. The assembly line method of building a car or the combining of ingredients
with heat to create cured silicon rubber products (my summer job in college)
are traditional examples of process patents. The patent awarded to WebFeat
fits more in this category, as it describes a "method and system" for searching
multiple databases then outlines the series of steps that WebFeat uses to complete
the search.
A more recent innovation that has particularly invaded the Internet and e-commerce
world is the "business methods" patent. Considered a form of process patent,
this allows patent protection for any unique method for engaging in a particular
business activity. This type of patent is a child of the e-commerce world,
having been first accepted in 1998 with patents involving software-based management
of mutual funds and the use of computer codes to identify telephone calling
plans. Since then, thousands of business method patents have been issued including
ones to cover online auctions, e-commerce shopping carts, finance and payment
systems, online advertising, digital rights management, and search engine structures.
Intellectual Property as an Asset
Process and business methods patents share the greatest responsibility for
the rise of patent controls on the Internet. The Internet's underlying technology,
the navigational tools that have made the Internet (semi-)manageable, and the
e-commerce marketplace are all entitled to—and in many cases have received—enforceable
patent protection.
Analysts can point to a number of reasons for this, beyond the growth of
the Internet itself. The dot-com boom, bust, and recent re-boom can be seen
as largely riding on the strength of intellectual property assets. Those assets
are often collateral for bank loans, venture capital, stock options, and stock
offerings and must be heavily protected. It is, in one sense, a vicious—or
positive—circle. The growing Internet spawns more patented technologies,
processes, and methods, which spur further growth of the Internet, and so on,
and so on.
The WebFeat patent, therefore, is not unique as a process patent. But many
critics and competitors have asked: "Didn't database searching exist before
WebFeat's patent?" "Isn't searching a common Internet practice?" "What is unique
about what WebFeat is doing?" The critics and competitors are asking the correct
questions. If WebFeat's form of database searching process is not unique, then
it isn't entitled to a patent.
Novel and Nonobvious
Patent law looks at one or both of two standards to determine whether something
is unique enough to be patented: Is it novel and/or is it nonobvious? Novelty
equates with newness. The invention or process needs to be new in the sense
that it wasn't previously known in the general marketplace of ideas. Novelty
is determined by comparing the proposed invention with the "prior art," or
the body of knowledge that is available to the public at the time of invention.
Prior art includes previous domestic and foreign patents, unpatented inventions
or processes, writings or descriptions of inventions or processes, etc. Prior
art, however, may not necessarily include trade secrets, proprietary processes,
research notes, or other publications that are not generally available to the
public.
Nonobviousness is a related, but somewhat broader, idea. It is not enough
to say that something is merely new; inventors must go further and prove that
their creation arose out of some spark of imagination. My kids, for example,
have a standard purple Nerf football. A slightly larger blue foam football
may be "new," but it isn't really unique. But if you put grooves on the thing
and a set of fins on the back so it is easier to throw (check your local toy
store), then you have something that is an invention beyond the Nerf football,
and it could qualify as a nonobvious invention.
As with novelty, nonobviousness is determined by evaluating the prior art.
Similarity between the new item and prior art will not necessary derail a patent
or cause one to be overruled later. Many inventors will reference previous
patents upon which they have built their new invention when they apply for
a patent. The key is whether the new invention or process is different enough
in both form and function from the existing or previous sources to qualify
as a nonobvious variation or extension of the original.
WebFeat will contend that its federated searching process is novel and nonobvious
when compared with the existing body of search engine knowledge. WebFeat's
competitors must show something more than the mere existence of database searching,
even multidatabase searching, if they want WebFeat's patent revoked. However,
if WebFeat developed something that is novel and nonobvious, then it is entitled
to the rewards of its labors. That is what the Constitution intended.
Everything Is New, or Is It?
The patent conundrum is that, in one sense, nothing is new. Everything is
built on something that existed before and, therefore, is an extension of that "prior
art." On the other hand, everything is new. Human history never repeats itself,
and, as existing things are used in new ways or for new purposes, the "progress
of science and the useful arts" continues. In the world of Internet progress,
the speed of growth, the complexity of the underlying technologies, and the
nuances of patent law make it very difficult to distinguish the level of innovation
that merits patent protection.
It may be that the continuing growth of the Internet belies concern about
patent law. If patents were such an inhibitor, then how did the Internet and
technology in general make the leaps of the last decade, and how will they
make the leaps that will surely come? Patents may provide a foundation for
the Internet, but true innovation can trump patents when the inventive mind
puts itself to the test.
Stay tuned for next month's follow up: Global Technology vs. Local Patent
Standards.
George H. Pike is director of the Barco Law Library and assistant professor
of law at the University of Pittsburgh School of Law. His e-mail address is pike@law.pitt.edu.
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