PRESENTATION BY BERNARD GALLER UNIVERSITY OF MICHIGAN SOFTWARE PATENT INSTITUTE MR. GALLER;: I'll introduce myself. I'm Bernie Galler, Professor of Computer Science at the University of Michigan, and former president of the ACM. But I'm here today as the founder and chairman of the Software Patent Institute in Ann Arbor, Michigan. And I'm speaking here as Software Patent Institute representative. The history of inventions in the software area is not recorded well. There are a few formal journals, such as the Annals of the History of Computing, and some textbooks. But the prior art that is needed by the PTO is not available in many of the forms that more mature fields support. For example, in the fields of chemistry or physics, in addition to a large number of patents available to the PTO, most researchers' results are published in a relatively few journals. This is not the case in the software community. Not only are the results and inventions not published in formal journals most of the time, they usually described if at all, primarily in informal conference reports or newsletters. Add to that the almost complete lack of issued patents before 1981 in this field, and it is clear why PTO examiners have a difficult time finding prior art, even when previous work that is relevant is well-known in the field. There are some repositories of program code, but it's very difficult to extract, or abstract, the innovative and nonobvious algorithms and ideas that are detailed there. What is needed is not the detailed code, but some level of description of what is in that code. Unless the author carefully documents the developing algorithm, the control flow and the data structures, it's very difficult to discover these concepts to understand the underlying process. It is well known, however, that programmers are usually too interested in moving on to the next task to take the time to document the last one. It isn't difficult to understand why software results are so often not published in formal journals. Most of the work in this emerging field has been done outside academia, since software is almost always immediately applicable to the solution of problems that already exist in industry. Of course, there is theoretical work in computer science and compute engineering. But the explosion of computing in our society has led to a corresponding explosion in software techniques in advance of the theory. And in the rush to exploit these techniques, relatively little effort has been devoted to disseminating these results and techniques widely. In fact, even when this kind of information is not regarded as a trade secret, many companies are not particularly anxious to have it made widely available. During the years before 1980, there was much confusion as to the kind of protection that might be available, if any, for software inventions. And there was little incentive for programmers to try to publish their work. Much of the communication that did go on occurred at thematic conferences and workshops. The reports of such conferences constitute a very valuable source of prior art, but they are not readily available to the PTO. Thus, the PTO has found it difficult to identify the relevant sources for prior art, or to collect that prior art into a usable database for the purpose of evaluating patent applications. What are the relevant sources for prior art in the software area? I already mentioned our conference and workshop proceedings from both general and specialized conferences. These are usually sponsored by professional societies such as the ACM and the IEEE, and special interest groups, the sigs, or societies. And the sigs publish newsletters also, often containing nuggets describing new ideas and techniques which eventually prove to be important prior art. Universities such as Michigan and UCLA have for many years offered short courses lasting one or two weeks in which leading edge research results are presented, disclosing new ideas, concepts, and techniques. The notes which are distributed to attendees contain valuable descriptions of such work and in time prove to be important prior art publicly disclosed. Manuals for commercial systems and applications often contain important descriptions of the techniques these systems and applications embody, and are a valuable source of prior art. Such sources would not be readily available to PTO examiners unless the PTO would have the funding to build an extensive library with appropriate indexing for that purpose. A number of software vendors publish internal reports and/or research journals, which are made available to their customers, and are thus publicly disclosed. These reports and journals and other materials used for the education and training of customers often describe innovative ideas and techniques which could be used as prior art if they were available to the PTO examiners. Government sponsored research is often documented in reports generated by the principal investigators and published by the sponsoring government agencies. While these are public documents, it's not easy to know where to look for them. They often contain the earliest reports of significant research and applications in the software area. Another source of material can be found in books published on various subjects in computer science and computer engineering. These include textbooks for the more advanced courses, and research publications from academic institutions. It is not always easy to find the kinds of prior art that examiners need in such books. But if they were on-line instead of only in printed form, it would be much easier to discover which books contain material relevant to a particular claimed invention. Finally, corporate defense of disclosure publications can be important sources of relevant prior art. A company that wants to make sure that a competitor does not obtain a patent covering a process or technique that is essential to its own business might publish a description of that process or technique to have it publicly disclosed without taking the additional step of applying for a patent. And there are well-known examples of this. On the other hand, that company may not be particularly anxious to advertise its discovery or use of that process or technique, so the publication would not be very widely disseminated. There are also well-known examples of that. If indeed a patent is later issued for that process or technique, the company can point to the disclosed art during litigation, but that is a very late stage in the cycle. Companies that rely on defense of disclosure should be encouraged to deposit their published disclosures in a database available to the PTO so the controversial patent most likely will not be granted at all. Well, the Software Patent Institute is a nonprofit institution dedicated to providing information to the public, to assisting the PTO and others by providing technical support in the form of educational and training programs, and to providing access to information and retrieval sources. The primary goal of the Software Patent Institute is to provide the best available information as to prior art in the software field for utilization by the public and the PTO. We applaud the efforts by Dr. Dobb's journal of Miller Friedman publications to make its articles available on CD ROM. And the efforts of Ziff/Davis Publications to put a number of recent computer-related publications on CD ROM, as well as the efforts by the IEEE and the ACM to make available abstractive computer science articles. We also applaud the efforts of those who are working to identify, collect, and distribute copies of the patents they consider software-related, especially since many of the patents that have been identified come from a large number of PTO classes. These efforts are valuable contributions to the overall effort to document the history of software technology, and to make the results available in online form. The Software Patent Institute, for its part, is tracking these efforts carefully so that our collection supplements rather than duplicates these other efforts. To track the history of an exploding industry with rapidly developing technology is a massive undertaking that will require significant efforts by a number of organizations. We are committed to being one of them. The Software Patent Institute also provides an educational resource from which the PTO and the public can obtain an enhanced understanding of the nature of software, of software engineering, and of the history of the discipline and its relationship to the patent process. Several lectures have already been given to the examiners of the PTO on aspects of software history and techniques. And several more are scheduled during the next few weeks and the coming months. We will have a professor from Carnegie Mellon there next week, and a professor from Michigan there the week after that, lecturing to the examiners. And we hope to continue that. We plan to offer our first one-day session on related topics to patent professionals and the general public sometime this spring. Although there is a current debate on the overall desirability of having software patents, the Software Patent Institute has deliberately taken no position on that question. We recognize that the patent system is in place, and working, but that there is currently a problem regarding software-related patents. We are dedicated to helping alleviate that problem independent of longer-range considerations that must eventually be resolved. The Software Patent Institute has asked people throughout the software industry, government, and academia, to contribute descriptions of software techniques and processes to the Software Patent Institute database. These descriptions form the content of the SPI database, and have now been made available for computer-aided searching by the PTO, and by members of the Software Patent Institute. Access by the general public will follow shortly. The SPI database already contains many examples of each of the kinds of relevant prior art outlined above, and it is growing rapidly. Our recommendation to this panel is to issue a strong recognition and endorsement of this kind of activity by the Software Patent Institute and by others, and to encourage the PTO to take advantage of the services of the Software Patent Institute as much as possible. We strongly believe that the PTO can and will do a better job than it has if it has the right tools and the right information. I thank you for being able to talk to you, and I certainly would answer questions. COMMISSIONER LEHMAN;: Thank you very much, Professor Galler. One of the issues that came up earlier today was the whole question of the classification system that we have right now, that it very rapidly gets out of date. And this makes it very difficult for examiners even to take advantage of the information that's already in our patent files. Obviously you're struggling with that, working with that, as you try to organize this new database. Maybe you could expand on that, about, do we have a problem? What's the nature of the problem? And maybe you have some suggestions about it. MR. GALLER;: Well, for the time being we're providing full text search with whatever words the patent examiners know about. What's really needed down the line, though, is a thesaurus kind of help, which says, if you're looking with this term, you really ought to be looking for those, also, and here are some additional suggestions. Here are some related articles or entries that you may not have thought about, but they might be close to what you want. There are an awful lot of database techniques that are well-known here which we certainly will start to use once we have a process that is working and bringing in the revenue that we need to keep going. But is this kind of -- well, two things. One is, the database service can provide such help. Here are some suggestions for what you want to do. The other thing is, as we give these lectures and other people give lectures, and the examiners become more technology-knowledgeable, they themselves will expand their knowledge of how to search. What are the relevant terms? What are the relevant things they ought to be knowing about? The classification that the PTO has doesn't help. You know, from the computer science point of view, it's not a very good classification. But it exists. And we can hope to help map it into more coherent, technology-based classifications. And we certainly plan to do that. COMMISSIONER LEHMAN;: Thank you very much. We look forward to cooperating with you and working with you. MR. GALLER;: Thank you. COMMISSIONER GOFFNEY;: Bernie, Jerry Goldberg, who is the director of Group 2300, certainly endorses your activity, as do we. He wasn't here, wasn't able to get here today, but he has told me a lot about your work, and it's certainly appreciated. MR. GALLER;: Well, he's been very helpful to us in helping us understand the problems of the Patent Office, absolutely. COMMISSIONER GOFFNEY;: Thank you. COMMISSIONER LEHMAN;: Thank you very much. We're getting there. Finally, unless Professor Fryer has arrived -- he hasn't. I know him personally, and I don't see him. Then finally, we're at Gregory Aharonian, who has waited very patiently for two days now. He was also in San Jose.Back to the index of speakers for Arlington
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