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Vol. 21 No. 5 — May 2004

"Commercial interests and activities are the best things that could have ever happened to the Internet."

"Commercial interests and activities are the worst things that could have ever happened to the Internet."

I think both statements are true. Business and industry, particularly the information industry, have been able to utilize the Internet and Internet-based technologies to deliver products, services, and content to more people at less cost than ever before.

However, there's a dark side: spam; annoying pop-up ads; data-mining and privacy concerns; and the erosion of fair use, first sale, and other copyright exemptions. These issues affect how people use the Internet and influence the direct and indirect costs associated with that use. Unfortunately, another potentially negative issue is emerging. There are an increasing number of questionable patent claims that cover Internet technologies and techniques, and permission must be obtained for their use.

Patenting Web Tools

In recent months, some have claimed that ubiquitous Internet tools such as streaming audio and video, advertising delivery, online testing, SSL for credit card transactions, launching in-browser applications, and even the hyperlink are patented.

In one such claim, which was reported in the March 26 issue of The Chronicle of Higher Education, Test Central, Inc. contacted several academic institutions claiming that its online test-taking patents were being violated. Test Central further indicated that it was entitled to fees for the use of its patent. A review on the U.S. Patent and Trademark Office Web site shows that Test Central was granted a patent on "a method of making a test with images and sound files and posting the test online for potential test-takers."

Patent law is one of the most specialized areas of legal practice. Attorneys who practice patent law are required to take an additional, separate examination, and many have advanced degrees in engineering and the sciences. Similarly, the process of obtaining a patent is quite complex. Unlike a copyright, for which you simply complete a registration form, a patent must be approved and issued by the government. This process can take years.

Process and Design Patents

When we think of patents, we generally associate them with "things" or inventions. Patents can also be obtained for processes or methods. These can be defined as an order, arrangement, or sequence of steps in a unique pattern that achieves a desired result. This definition also applies to computer programs. The programming code can be and often is protected by copyright, but the specific series of steps that the program carries out can be patented as well. Patents can also be obtained for designs (for example, the design of the Statue of Liberty is number 11,023) and new uses for known substances.

In order for an invention or process to be patented, it must meet certain minimum legal standards. First and foremost, it must be "novel," or something previously unknown as a specific invention, process, or design. A previous patent, patent application, publication, public use of the invention, or process is considered "prior art," and the patent application would be denied. The inventor is not required to be aware of the prior art. The only requirement is that it exists. The subsequent discovery of prior art can cause a patent to be revoked, or it can be used as a defense against infringement.

Non-Obvious

Another minimum standard is that the thing or process must be "non-obvious." This is one of the more complex parts of this area of law. An invention cannot be patented if it's merely the extension or perfection of an old idea, would have been obvious to anyone with skill in that subject area, or utilizes different parts to achieve the same end. A process cannot be patented if it's an enlargement or change in an existing idea, a restructuring or rearranging of elements of a process that achieves the same end result, or an application of an old process to a similar subject with no change in result. The core element of this concept is not that the new idea should simply be different from the old, but that the new idea must be different in a way that makes it distinct and unique.

These two concepts are at the core of the disputes over recent Internet patent claims. The Test Central patent, which was filed in 1999 and granted in 2003, outlines a series of steps designed to develop, post, administer, secure, charge and distribute revenue for (if desired), and manage an exam or assessment through the use of host and remote terminals coupled to the Internet. While Test Central offers a series of online test-management products and services in the form of Web templates and secure hosting, the alleged infringement activities do not involve the use of the company's specific products, just online testing as an activity.

Is It Patentable?

The question then is whether online testing is even patentable. Many schools can claim that they were involved in some form of online testing prior to 1999. This raises issues of novelty. Posting a test on a secure Web site or even developing a template for constructing a test are fairly obvious extensions of posting other content or developing other templates, thus challenging the non-obvious factor. At this point, however, the patent is valid and will remain so until a court rules otherwise.

The difficulty is that what we might think of as a "thing" called the Internet is actually an enormous collection of patented, nonpatented, and patentable inventions and processes. Many of these patents are enforceable and indeed have been enforced (often behind the scenes) and addressed through licenses and contracts that are passed down through ISP fees and e-commerce transaction costs. The Internet needs patent protection in order to develop as an effective commercial and social tool. However, if that effectiveness is to be retained, those who would use the Internet must be equally diligent that patents are both legitimate and fairly administered.