Computers and the patent system: the problem of the second step.

The proper scope of patent protection for computerized algorithms is one of the most controversial questions in modern patent law. Everyone has an opinion. To some, broad patent protection for computer algorithms properly updates the patent system for the Internet age. (1) To others, it signals a dramatic and unwarranted expansion of the scope of patentability. (2) The appropriate scope of protection for computerized algorithms has proved to be a remarkably difficult question. After almost forty years of debate and case law development, (3) we seem no closer to a consensus than when we started.

I will not attempt to resolve this thorny question here. Instead, I want to discuss why the scope of patent protection for computerized algorithms has proved to be so difficult. Why have computers created such a headache for the patent system? My argument is that the invention of the general purpose computer has baffled the patent system by breaking down the traditional one-step analytical framework of new inventions into two analytical steps. Unlike traditional machines and processes, general purpose computers divide the brains of the operation (the algorithm) from the brawn (the hardware). Patent law is ill-equipped to respond to this bifurcation. Instead, patent law's one-step conceptual framework forces us to confront an all-or-nothing choice between two unsatisfying alternatives: either we can grant computerized algorithms too much protection, or too little. Either every algorithm is patentable subject matter, or none are.

More broadly, the computer's bifurcation of brains and brawn restructures the relationship among invention, action, and value that the patent system presumes. The patent laws were designed to encourage inventors to discover and share knowledge about how we can manipulate the physical world. (4) Invent a new mousetrap, and the government will give you a patent. That made a lot of sense back when value and physicality were closely linked. Today, however, general purpose computers have decoupled value and physicality: value now derives more from the software brains than the hardware brawn. So, which do we choose? Physicality or value? Like a three dimensional visitor to a two dimensional world, (5) we are forced to squeeze the new reality into preexisting legal rules, with unexpected results. Either we offer protection to all algorithms, or none. Our difficulty in finding the proper scope of protection for computerized algorithms reflects our grappling with these unsatisfying options.

1. THE ONE-STEP FRAMEWORK OF CLASSICAL PATENT LAW

Imagine the world before computers. In those days, the scope of patent protection was conceptually straightforward. For the most part, you could obtain a patent for two types of inventions: machines and processes. (6) Both machines and processes followed a simple analytical model. You started with some kind of input; you ran the input through the machine or process; and you were left with some kind of output. (7) This one-step, input-to-output conversion characterized every machine and process, no matter how complex.

Consider Eli Whitney's cotton gin, patented in 1794. (8) The cotton gin solved a major problem that had plagued cotton growers worldwide: freshly picked cotton contained seeds and other debris that had to be hand-picked by laborers, who could only yield a few pounds of cleaned cotton per day. (9) Whitney's cotton gin was a mechanical cotton-cleaning machine that separated the cotton lint from the seeds and debris ten to a hundred times faster than a person could. (10) The cotton gin followed a simple analytical model: you began with the uncleaned cotton, ran it through the machine, and were left with cleaned cotton in one bin and debris and seeds in another. (11) You started with input, ran it through the machine, and were left with output.

Thomas Edison's lightbulb provides another example. Edison's lightbulb was a revolutionary machine that cheaply and reliably converted electrical energy into light. To operate the lightbulb, you inputted electrical energy into the machine, the energy excited a filament that glowed brightly, and you enjoyed the illuminating light. Like Whitney's cotton gin, Edison's machine acted as a way of converting input into output; in this case, electricity into light.

Patentable processes followed a similar analytical path. Whereas machines were physical devices that manipulated input into output, processes explained a series of steps that could manipulate input into output. (12) Consider Charles Goodyear's process for treating (or "vulcanizing") rubber, patented in 1844. (13) Goodyear discovered that when he treated raw rubber with sulphur and subjected it to high temperatures and pressures for specific periods of time, the rubber could be transformed from its raw state into a durable, useful industrial commodity. (14) Goodyear did not invent a specific rubber-treating machine; instead, he obtained his patent for the process of treating raw rubber. (15) The analytical framework for his invention was simple: you began with the input of raw rubber, manipulated it through the steps Goodyear had developed, and were left with vulcanized rubber as output.

I have focused on the one-step framework because I think it is the key to understanding how the patent system traditionally approaches the scope of patentability. Although the Patent Act formally describes the scope of patentability in terms of "machine[s]" and "process[es]," the actual administration of the patent system has permitted patents to be issued for any means of "transform[ing] and reduc[ing] an article to a different state or thing." (16) The scope of patentability has been defined by the one-step input-to-output conversion: any way of converting some kind of real-world input into some kind of real-world output can qualify. If the means is a physical device, the invention is a "machine"; if it's not, it's a "process." The statutory right to exclude granted by a patent has been available to any device or procedure that can convert input into output and meets the remaining requirements of patentability such as novelty, non-obviousness, and utility. (18)

II. THE TWO-STEP FRAMEWORK OF COMPUTERS

Now fast-forward to the present. Computers have changed everything. Unlike inventions such as the cotton gin and the lightbulb, computers are general purpose machines that can be programmed to do just about anything. My desktop computer can be typewriter, a numerical calculator, or a pinball machine depending on whether I am running Wordperfect, a spreadsheet, or a game file. What my computer is depends on what kind of software I am running. The hardware itself simply provides a platform for an operating system, which itself provides a platform for software applications. In the place of a single "machine" or "process," general purpose computers have divided the brains of the operation from the brawn. On one hand, you have the physical hardware that executes the instructions, and on the other hand, you have the software that tells the hardware what to do. (19)

A funny thing happens when we try to approach general-purpose computers from the one-step framework of classical patent law. It doesn't quite fit, because the single step has been divided into two. In the computer world, we take the user's input, feed it into the software application running on the hardware, and then the software directs the hardware to perform the necessary steps to create the output. Consider what I did when I wrote this article on my computer. I loaded Windows 95 and WordPerfect onto the computer, and then typed in the article using the keyboard. The software directed the hardware to process the key strokes, resulting in the output of a law review article. The old "machine" has been broken down into two basic parts: the software and the hardware, the brains and the brawn.

This bifurcation of roles poses a difficult problem for the patent system. If the role of a patentable "machine" is now occupied by a combination of hardware and software, what within this new regime should receive patent protection? Should only the hardware be patentable? Or a specific combination of hardware and software? Or perhaps both the hardware and the software should themselves be individually patentable? More abstractly, when technology allows us to divide a machine into its logical component parts, dividing a one-step process into two, which of the parts should be entitled to patent protection? Nothing in patent law offers an easy answer to this question; we're just not used to this new distribution of functional roles. What we are used to is fitting the scope of patentability into the one-step framework. Start with input, end with output. How can general purpose computers fit?

III. ALL OR NOTHING: GENERAL PURPOSE COMPUTERS AND THE ONE-STEP FRAMEWORK

When we try to fit general purpose computers into the one-step framework, we face a choice between only two coherent approaches: either we extend broad patent protection to computerized algorithms, or else, we extend almost no protection to them.

Let's start with the first case, computers as machines. Here, the scope of patentability depends entirely on how we define the machine. Is the software algorithm itself part of the machine, or is it simply part of the input? If we view the software as part of the machine, then the brain of the machine merges into the brawn. The computer acts as a black box, and a computer running one program is a distinct "machine" from the same computer running a different program. This approach creates strikingly broad patent protection for computerized algorithms. By obtaining a patent on a machine that executes a particular algorithm, an inventor earns the right to exclude others from running that algorithm on a computer for the duration of the patent. Because the physical hardware is almost always interchangeable, the patent effectively bestows a right to exclude others from executing the computerized algorithm. And any distinct algorithm will do. If the algorithm manipulates input (whether from the keyboard, mouse, or software file) and produces some kind of output, it can be a distinct "machine" that falls within the scope of patentability.

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