The Wall Street Journal has reported that the U.S. Justice Department has sent formal demands to Google, Inc. for information about a settlement deal that would enable the search engine giant to provide millions of books online through its Google Book Search.
The Association of American Publishers and others filed a law suit in 2005 against Google Book Search after Google began scanning US books still in copyright for its database in 2004. The conflict has resulted in a settlement where Google will sell book content online and internet users will be able to search for and buy millions of titles, many of which are out of print. The $125m deal has been deemed the biggest book deal in US publishing history but awaits federal court approval and has now come under scrutiny for possible antitrust violation.
The settlement was given preliminary approval by New York District Judge John Sprizzo in October of last year with a scheduled hearing for June 11, 2009. The speed with which the time table was laid out surprised some as the hearing was scheduled for less than a month after the deadline to file comments on the settlement. Subsequent protesting of the settlement lead to a decision by New York District Judge Denny Chin to extend the objection deadline to Sept. 7, 2009 and the hearing to approve the settlement to October 12, 2009.
Those in support of the settlement argue that it will tremendously aid the publishing industry and society by making books, especially hard to find books, more accessible. However, the argument on the other side is that deal will concentrate too much power in a single entity. The concern is that Google will gain a monopoly over too many books, especially those whose copyright holders cannot be identified. The deal gives Google exclusive rights to these books, called orphan works, as Google will have the right to display and sell these books and save any profit for five years in the event the copyright holder appears. Other companies however will not have this right and would be subject to copyright violation and fines for doing a similar display of orphan works. Additionally, the Google Book Search system will know which books a user has searched, read and purchased and that could raise privacy issues.
Under the deal, consumers using Google books search will be offered free samples of chosen titles, with the option to buy more. It will also allow users to download any of the books already scanned into Google’s database. The Book Rights Registry will take payments from Google and (after a fee) distribute them to authors and publishers. The agreement is similar Apple iTunes music store. The agreement will primarily target universities and organizations which will pay large subscriptions on behalf of students and researchers.
Google Book Search has accumulated and digitalized around 10 million books so far, though only a small portion of most books in copyright are shown online. Google also accounts for about two-thirds of U.S. web searches and brings in about one-third of the money spent on internet advertising in the U.S. This activity has drawn attention by rivals and regulators. Many consider this recent investigation as evidence of efforts by the Obama administration to increase the level of antitrust scrutiny of the technology industry.
The Supreme Court recently granted cert in Bilski v. Doll, which most believe will change the test for patentable subject matter. Supreme Court precedent has carved out three exceptions to patentability under 35 U.S.C. § 101, these are laws of nature, physical phenomena, and abstract ideas. The quintessential law of nature is Einstein’s famous formula: e=mc^2, which is unpatentable subject matter. A patent cannot be granted that merely states this equation, as it would preempt all uses of the formula. What can -and has- been patented is the application and use of equations, for instance the Arrhenius equation in Diamond v. Diehr.
Computers and their applications have changed the world we live in. Many problems are solved by the use of the computer, from communication to commerce, and from filing your taxes to putting a man on the moon. Computers have taken over many tasks such as running your car to running voting booths. Since their creation there has been a melding of hardware and software to accomplish these goals. Many problems that computers can solve can be handled on both the hardware and software levels. Much of the power in today’s general purpose computers is that we do not need specialized hardware to perform specialized tasks. Methods that can be used to solve difficult problems thus can be solved similarly at both the hardware and software levels and so protection for one without protection for the other is meaningless. Especially since the use of these methods on a general purpose computer could require no additional hardware to perform the needed functionality.
I do not want to discuss the anti-competitive effects of patents generally, or to software patents in particular. I have not studied these in depth but will note that since software patents have been granted the United States has continued to be a hotbed for innovation in software industries having many of the largest software firms around the world. But, I also understand that software is special, there exists a vibrant open source community unlike any other field which is willing to innovate without the need for financial incentive and exclusive rights.
A problem that some have with software is that it is merely an algorithm for performing some task. And, that any task performed on a computer can be performed by a person with a pen and paper, given enough time. I both agree and disagree with that argument, as fundamentally it is correct but I believe that it is an oversimplification of what software does. Simple algorithms like converting a number from decimal to binary and back (as seen in Gottschalk v. Benson) can easily be done using either means. But, what about all those applications that are for computer specific purposes that doing them by hand does not solve the actual problem?
For instance, public key encryption such as RSA was developed as a way to securely encrypt data without first requiring the parties to have created a key to decrypt their communications. Performing the operations by hand or in our mind does not actually solve the problem where it exists, for performing operations on the internet and with computer systems. By limiting the technology to a computer (in a patent’s claims), it does not preempt uses of the algorithm in the mind or on paper, just the method’s use on the machine. This is akin to patenting a new use for a drug. Even though the drug itself may be in the public domain, this new use may be patented. Additionally, there are algorithms that make no sense without a computer system. Programs such as sending email or instant messages have no purpose without interfacing with additional hardware. For this technology to make sense, you must use additional hardware and practicing these algorithms without the use of a computer is pointless.
Software merely makes use of public domain formulas and applies them, just like traditional mechanical inventions. Take a chair for instance. It works by applying the standard laws of physics. Using a computer, or a pen and paper, the chair could be “proven” to work as well, just as a piece of software can be and just as large scale buildings and bridges are. All inventions, mechanical or software based draw upon fundamental principals that themselves are not patentable, but by applying them to solve a problem we move beyond the abstract and into the spectrum of patentability.
Novelty and obviousness also cloud the picture. When we look at the wide spectrum of patentability we see things that immediately make us cringe. Most of the things that make us cringe are because the inventions that we see on this spectrum have been done before. While difficult, it is imperative to separate patentable subject matter from fulfilling all the requirements of patentability, including §§ 102 and 103. Many of the problems that people have with the patenting of software is that the inventions are in the prior art. In this regard, the piece of technology should not be patented, but the class of technology may very fall within the prior art. I see this frequently when discussing patents like the infamous Amazon “1-Click” patent. Most who find that this patent should be invalid think that the technology is obvious.
The patent system is our way of protecting innovation. As we do not know where the next class of innovation is, or how expensive it will be to develop, we should not look to limiting the scope of patentability. Expansive scope has been a cornerstone of our system of patents and enabled the United States to have many technological advances. While not perfect, the patent system is a good trade off of exclusive rights for innovation.
Here is an article on point from CNN.com
"The modern world would not be modern at all without the understandings and technology enabled by science."
Here is a great website devoted to science and why science is important for society in terms of understanding our world, ourselves and the things brought to us by science that we use everyday (and take for granted) .
I would add that not only should society in general be scientifically literate, but those in the patent community could take steps to better verse themselves in basic science concepts for the betterment of the biotech patent field.
Part of my law school experience is to assist in mining patents and categorizing them into topics. I have the most difficult time 1) searching for relevant patents, 2) wading through the search results to confirm relevancy, and 3) categorizing said patents based on keywords. I can appreciate why patent landscape analysis is farmed out to specialized firms.
The biggest issue when searching for relevant patents, or even simply reading a patent to determine its scope, is how patents are drafted. Patent drafters are increasingly coming up with creative (or shady) ways to claim subject matter to ensure broad protection, overcome prior art or avoid 101 rejection. This is how a "vaccine" becomes an "immunological composition for treating and preventing a disease selected from the group consisting of yada, yada, and yada." This is also how it becomes difficult to recognize a relevant patent in a landscape when one is searching for vaccine patents and ends up missing all of the immunological compositions.
Surely a patent applicant can become his/her own "lexicographer" (or lexinographer if you want to play that game) but it seems a patent can be drafted around this or that to the point of absurdity. Of course, one could look to the specification to define the terms in the claims, but from a patent searching perspective, that is not a cost effective strategy.
This seems to become more of an issue in highly technical fields where word substitutions are not intuitive to the nontechnical person. Certainly, in a mechanical patent, the word "fastener' in a claim could understandably be substituted for nail or screw. But is it so obvious to the lay person that "an epitope binding ligand" is synonymous with "antibody?" I don't even want to get into the frustration of decoding that particular example because it actually translates to "a something that attracts antibodies to bind binding binder."
Perhaps technical terms are inherently specific and the only way to broaden them or strategize with them is to make them obscure. And the solution to this obscurity is for the reader of the patent to become more versed in the art of such obscurity in order to understand what a patent is claiming? I don't know. Maybe there should just be a thesaurus of synonyms for commonly used words in a specific technical field that could be consulted. I know that the Word thesaurus has made me a more creative wordsmith.
Here are some fun terms that could define a vaccine: "a prophylactic," "a therapeutic," "an immunological preparation," "a compound for eliciting immune response," "a compound for eliciting neutralizing antibodies," "a polyvalent composition," "a conjugate."