Software patents are a growing problem for the software industry. In 1998 and 1999, the US Patent and Trademark Office (PTO) will issue 40,000 software patents, ten times the number issued in 1992 and 1993. Software patent litigation is, not surprisingly, growing rapidly as well, with some of the larger software patent applicants (such as IBM, which will acquire about 1200 software patents in 1998) asserting their patent portfolios to derive tens or hundreds of millions of dollars in royalties. Often those with the most active software patenting strategies are not considered to be software companies, suggesting a sort of class warfare between one generation of the computing industry and the next.

In the middle of this mess is the PTO, which most  people  in the computer community believe is not competent to examine software patents. Some of the more notorious such patents include the Compton’s multimedia patent (which the PTO itself declared invalid), and the Freeny E-data electronic commerce patent (which will probably be invalidated by the courts in 1999). Software patent examiners do not have enough time, money, and resources to properly examine software patent applications, and in some cases are not technically proficient enough to assess the technology. (To be a patent examiner, all you need is a bachelor’s degree in engineering, preferably with a few years’ industry experience.)

Thus it is important for the software industry to start educating itself about the patenting process. Unfortunately, the few books written to date about software patents tend to be directed toward lawyers and avoid stating any controversial opinions. What is needed is a book for software engineers that is a good mix of law and software. Nichols is an Oracle database consultant, with degrees in computer science and law, so it is not surprising that he was able to write a good mix of law and software concepts. As such, I can strongly recommend the book for both lawyers and software engineers.

Chapter 1, “Introduction,” includes a nice review of some of the history of the software industry and a basic discussion of the nature of patentability. It ends with a review of some of the classic software patent cases, such as Benson, Flook, and Diehr. Nichols uses a minimum of legal and software jargon.

Chapter 2, “Algorithms Inventions and Software,” starts with a nice discussion of automata theory and software engineering, which will be familiar to most programmers and informative for most lawyers. A discussion of programming paradigms and the nature of a program follows. The chapter ends with a short review of automatic source code generators in light of the question of who is the inventor.

Chapter 3 will help software engineers understand how the law is applied to software concepts, and will help lawyers understand how the software world thinks about how the law is applied to software. Nichols introduces the two fundamental concepts of patentability--obviousness and novelty--then puts forth a list of considerations for these two concepts: novelty, nonobviousness, prior art, preferred embodiment, enabling disclosure, skilled practitioner, undue experimentation, scope, claims, infringement, and protection alternatives. He analyzes four patents in light of these criteria: patents for text searching, an object-oriented database, a source code diagrammer, and a sorting algorithm. Anyone teaching software patent law should get permission to redistribute this chapter.

Chapter 4, “The Software Patent Controversy,” is a review of some of the many arguments that are heard in many forums--patents versus copyrights, reverse engineering, and so on.

Chapters 5, 6, and 7 summarize the problems and put forth a few solutions; they are nice reviews but not definitive. Chapter 5 puts forth one solution, the proposal by Samuelson, Davis, Kapor, and Reichman (circa 1995), which I and others criticized for a variety of reasons, and which Nichols himself says has more problems than solutions. The next edition should remove the chapter--it detracts from the excellence of the rest of the book.

The one weakness of the book is that the author does not spend much time talking about the main problem of software patenting--the inability of the PTO to supply examiners with enough time, money, and resources to do their jobs, and the sad practice of many applicants who take advantage of this by not searching and by playing claims drafting games. Other than that, Nichols’s book is well worth reading if your work will be affected by software patents.