Ignorance, paralysis or expense: The problem of software and business method patents for information architects and web designers

[Note: this is a paper prepared for a graduate course in the IAKM program at Kent State University.]

What is the first step an information architect or web designer makes when designing a web site? Designers are often worried about principles such as giving users control, being consistent, providing feedback, or not relying on users’ memory (Dumas). Or, they are mentally checking off any one of a thousand “top ten mistakes” lists available in books and on the web. They may even start by discussing requirements with clients or conducting usability tests. But chances are, they aren’t at the US Patent Office web site. The last thing most information architects and web designers think about before creating a web site is doing a patent search. And this is becoming a big problem.

The introduction and explosion of software and business method patents relating to website design features presents a major problem to those who design sites, and designers and companies find themselves in three positions: ignorant of the issue, caught up in the “defensive” patent race themselves, or perhaps ultimately paralyzed and unable to continue work.

Background

 

Before tackling the current issues, it’s necessary to have an understanding of patents, copyrights, and their relationship with software and business methods in the past. According to the U.S. Patent office:

“A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office… The right conferred by the patent grant is, in the language of the statute and of the grant itself, ‘the right to exclude others from making, using, offering for sale, or selling’ the invention in the United States or ‘importing’ the invention into the United States.” (“What Are Patents…”)

In order to be issued a patent an item must meet two criteria. First, it must be novel, meaning it was not already known, used or patented by someone else. (“Conditions for patentability; novelty…”). Second, it must be not obvious, meaning it wouldn’t be obvious “to a person having ordinary skill in the art to which said subject matter pertains.” (“Conditions for patentability; non-obvious…”). Many recent web software or business method patents have been attacked on both fronts.

Historically, software has been covered by copyright and has not been patentable. The US Patent office explains:

“Copyright is a form of protection provided to the authors of ‘original works of authorship’ including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.” (“What Are Patents…”)

Copyrights cover the implementation of the idea, not the idea itself. A copyright would cover a homepage and logo, for example, but not the idea of using a logo on a homepage.

History – Software Patents

A patent may be issued for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” (“Inventions Patentable”). Courts have interpreted this to exclude “an abstract idea, principle or force, law of nature or natural phenomenon (In re Alappat).” Therefore no one can patent a mathematical formula, law of physics, or other equation. Computer programs are algorithms, complex mathematical formulas. They were not considered patentable.

In 1981, the Supreme Court ruled that a method of curing rubber that included a computer program was patentable (Diamond v. Diehr, 450 U.S. 175). In this case, it wasn’t the program itself that was patentable, but the entire rubber curing process, even though the software was really the only novel aspect of the invention. This opened the door for software patents, but the rules were not clear. In the 1980s and 90s, a number of courts ruled on software patent cases, and in the early 1990s the Federal Circuit Court tried to figure out when software was patentable and when it was not. “The court stated that the invention as a whole should be examined. Is the invention in actuality only a mathematical algorithm, such as a computer program designed to convert binary-coded decimal numbers into binary numbers? If so, then the invention is unpatentable. However, if the invention utilizes the computer to manipulate numbers that represent concrete, real world values (such as a program that interprets electrocardiograph signals to predict arrhythmia or a program that analyzes seismic measurements), then the invention is a process relating to those real world concepts and is patentable (Tysver).”

Finally, in 1996, the Final Computer Related Examination Guidelines were adopted by the U.S. Patent and Trademark Office. Under these guidelines, software patents must control something outside the software, like a machine, or a rubber curing process, or manipulate more than just numbers (Tysver 2). The numbers must represent real-world measurements, objects, etc. This allows patenting of a wide range of software, web applications, and even web design techniques. Think about it—at the lowest level, all web pages are just a series of 1′s and 0′s. But those numbers are strung together to represent real-world words, images, and other objects. In addition, any web application is designed to allow access to or control something over a network—which means it is controlling something outside of the software itself. The sky’s the limit.

History – Business Method Patents

Historically, ways of doing business have not been patentable. Once a business started using catalog sales or frequent flier miles, anyone else could do so as well (Surowiecki).

In 1998, the U.S. Court of Appeals for the Federal Circuit ruled that business methods could be patented:

“Since its inception, the “business method” exception has merely represented the application of some general, but no longer applicable legal principle, perhaps arising out of the “requirement for invention”–which was eliminated by § 103. Since the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method. (State Street Bank & Trust Co. v. Signature Financial Group)”

This means that ideas such as affiliate programs or navigation with frames are now patentable. Between software patents and business method patents, almost anything any web site does can now be patented.

The business patent ruling can be taken to ridiculous extremes. Consider patent number 6,368,227, issued April 9, 2002, which describes “a method of swing on a swing … in which a user positioned on a standard swing suspended by two chains from a substantially horizontal tree branch induces side to side motion by pulling alternately on one chain and then the other.” Although this is not an Internet-related patent, it is a good illustration of the problems inherent with the current system—children in playgrounds all over the country may now be in violation of this patent.

“Lastly, it should be noted that because pulling alternately on one chain and then the other resembles in some measure the movements one would use to swing from vines in a dense jungle forest, the swinging method of the present invention may be referred to by the present inventor and his sister as “Tarzan” swinging. The user may even choose to produce a Tarzan-type yell while swinging in the manner described, which more accurately replicates swinging on vines in a dense jungle forest. Actual jungle forestry is not required.”

Ignorance

Many information architects and web designers are ignorant of the issue and unaware that they may be infringing patents on countless projects. Although there is a vocal opposition to software and business method patents on the web, the issue does not show up on the radar of many information architecture books, sites, or discussions.

O’Reilly’s “Information Architecture for the World Wide Web,” for example, has no entries in the index for patents, intellectual property, or copyright (Rosenfeld). A search of ASIS’s information architecture listserv (SIGIA-L) shows only 9 threads about the issue in the last 4 years. When this topic comes up, posts tend to be more questions than answers. One post referred to Patent number 5,933,841:

“I just finished designing a site with icon-based navigation. What on earth
do I tell my client?” (Smith)

Another wondered about 6,615,226:

“I think you could still do expanding/collapsing forms and not violate the exact conditions of the patent. (But, hey I’m not a patent attorney…)” (Kantrovich)

Yet another was unaware of the issue until approached by a client:

“A client is asking if the navigation we’ve developed for them infringes on
any patents. Has anyone ever heard of a navigation scheme being patented?
Or legal issues arising from the development and use of a navigation
scheme that was similar to someone else’s?

It seemed like a silly question at first (every IA team would require a
lawyer for every project then, wouldn’t they?), but upon thinking about
it, I could see a situation where, for example, a complete duplication of
Yahoo’s hierarchical subject structure might raise a few legal
eyebrows….” (Weinheimer)

Even if an individual or company has a basic awareness of the issue, it is extremely difficult to determine if a particular site, web application, navigation feature, etc. will infringe on a patent. First, software patents are written in a complex legalistic style and aren’t clear exactly what they cover. A look at nearly any software or business method patent makes it clear that any evaluation requires expertise in patent law which many web developers simply don’t have.

Second, software and web site development moves much more quickly than the patent approval process.

“The first thing you might want to try to do to deal with the patent system is find out what patents may cover the program you want to write. This is impossible. The reason is that some of the patent applications that are pending are secret. After a certain amount of time they may get published, like 18 months. But that is plenty of time for you to write a program and even release it not knowing that there is going to be a patent and you are going to get sued.” (Stallman)

Third, the Patent Office receives thousands of applications per year. How can anyone stay on top of so many patents? One particularly onerous way of learning that a particular site violates a patent is when the patent holder threatens to sue. Once this has happened, the information architect has moved into the second category, expense.

Expense

The companies and individuals who are aware of the issue face an expensive proposition. In one case, museumtour.com received a letter from SBC charging that the site violated their patent number 5,933,841. “The letter suggests that any website which has static, linked information (top banners, menus, bottom banners) which are displayed while other sections of the page are displayed as non-static (the area where products appear on most websites) infringes upon the patents they hold.” (“Informal Education Products – SBC.”)

Letters sent out by SBC state that the company believes that any Web site with a menu that remains on the screen while a user clicks through the site may owe it royalties. The New York Times reported that SBC spokesman Jason Hellery “said the company had sent out 30 letters so far, outlining licensing terms of $527 to $16.6 million a year, depending on the annual revenue of the licensee. The initiative is the first by a division SBC formed last year to mine the company’s portfolio of several hundred patents.” (Harmon) The same article quoted David VanderVeer, chief executive of WebCreators Inc., the company that designed the Museum Tour site, saying “We’ve designed hundreds of sites like this. This would affect hundreds of thousands of sites.”

More and more companies and individuals are finding themselves in this situation. Examples are not hard to find. MercExchange LLC won $35 million from eBay based on two patents (Evers).

Even if Museum Tour or WebCreators had thought to do a patent search before using a very common navigation convention, they would fall into the expense category. Patent searches are expensive and time-consuming. One firm will do a U.S. and international patent search for $249 (“Patent Search Express Invention Submission”), but with almost every aspect of a site now patentable, how would they choose what to search for? A single site could be infringing on a large number of patents.

Another possibility is patenting “defensively” to cover current designs and structures. This means filing expensive patent applications. The basic filing fee with USPTO is $385.00 or $770.00, depending on size of the company (“Fees, FY2004 Schedule”). Attorney’s fees for these complex patents exceed $10,000 (“FAQ – Jackson Patent Law Office”). Jakob Nielsen put it succinctly:

“I strongly recommend that companies start treating the Web as their primary strategic business driver such that they can take part in this patent bonanza. The smallest hesitation will allow your competitors to collect the patents on everything you need to survive. Futurism is no longer a luxury: it’s a necessary defensive measure to get your patents in place.”

In addition, some recommend that web designers buy insurance to cover possible costs. Patent infringement insurance may be as high as $10,000 a year with a $10,000 deductible (Klein). Those who are aware of the problem, but unable to afford patent searches, defensive patenting, lawsuits or insurance may find themselves unable to create sites at all.

Paralysis

With companies attempting to patent every aspect of their site and service, information architects and designers may find themselves unable to work without large legal risk. It is possible that some will find the software and business method patent issue intractable. In some ways this is the goal of the patent system:

“All patents, of course, stifle competition. That’s why inventors like them. But business-method patents have an especially chilling effect, in that novel approaches to commerce can be ruled off-limits to others.” (Surowiecki)

Examples of how difficult some patents can make site design are not hard to come by. A developer setting up an e-commerce site, for example, knows that many customers will come back more than once, and won’t want to enter all their information again and again. They also want to make shopping as quick and easy as possible. But if they store some information in a cookie and let returning users simply click on the item to buy it, the site might infringe Amazon.com’s patent #5,960,411.

Or imagine a designer setting up a site for a museum. The museum wants 20 pages, all of them fairly long, but they want users to always be able to get to the homepage and any of their five collections. If the designer creates icons for the homepage and each of the sections and uses them as navigation links in a frame, the site might infringe SBC’s patent #5,933,841.

Organizations often have long forms they need visitors to fill out. Some information is already saved, and a lot of the questions are of the form “if you answered yes to question 24, skip to question 30.” Use of little Javascript or DHTML to make parts of the form disabled or disappear based on what the user has chosen or already entered might infringe Amazon.com’s patent #6,615,226.

Worse, some patents cover basic aspects of the web itself. Any browser that uses plugins might violate Eolas patent # 5,838,906, meaning that any use of Flash, Quicktime, or PDF may not work at all in Internet Explorer in the future. A federal jury has already awarded Eolas $520.6 million in damages from Microsoft. (Davis)

 

This last example is particularly interesting because prior art exists which might invalidate the patent. Pei-Yuan Wei started work on the Viola web browser in 1991. He had embedded objects working by December 1992, and he gave a number of demonstrations, including one to SUN Microsystems in May 1993.

“Michael Doyle (Eolas’s CEO and sole formal employee as I understand it), wrote to the net about his technology and eventually intent to patent this. So of course people (including me) wrote back informing him of prior arts. I’m not a lawyer but as I understand it one is supposed to disclose to the PTO any relevant prior art for the PTO examiner to assess. Doyle and I exchange letters, and I told him about this embedded capability in Viola, gave him a paper on viola, which contains pointers leading to more information including even the viola browser source code. Doyle ends up mentioning the browsers Cello and Mosaic, but interestingly not Viola! Now, Viola came before both Cello and Mosaic, and non of those two other browsers had any kind of embedded interactive capability at the core of the discussions.” (Wei)

In court Wei was not allowed to demonstrate his working prior art or tell the jury that Doyle knew about Viola.

Furthermore, web software and business method patents may hurt the web as a whole. David Mowery, an economist at the University of California at Berkeley, explained:

“If you get a lot of letters from attorneys flying around, the risk is that no one has enough certainty of the freedom to invent without getting such a letter. One risk is the overall progress of technical advance starts to slow down.” (Harmon)

Tim Berners-Lee, inventor of the World Wide Web, wrote about this in his book Weaving the Web:

“…in fact they [software patents] are a great stumbling block for Web development. Developers are stalling their efforts in a given direction when they hear rumors that some company may have a patent that may involve the technology.”

Dan Connolly, who works at the W3C with the Semantic Web said patents make development more difficult:

“[Connolly] wanted to invite some developers to come and chat with us, but there were patent issues that just weren’t worth the time and hassle to deal with. Patents are certainly an impediment to ‘technical innovation’ in the sense of new ubiquitous technology. They may have their place in a technology that’s deployable by one particular company alone.”(Clark)

Patents are supposed to encourage innovation, not stifle it. Here the opposite seems true. The Internet and the web experienced incredible growth in the 1990s. It is doubtful that growth and innovation has increased as more patents are filed and more lawsuits are made. James Bessen and Eric Maskin note:

“This suggests a cautionary note regarding intellectual property protection. The reflexive view that “stronger is always better” is incorrect; rather a balanced approach is required. The ideal patent policy limits “knock-off” imitation, but allows developers who make similar, but potentially valuable complementary contributions. In this sense, copyright protection for software programs (which has gone through its own evolution over the last decade) may have achieved a better balance than patent protection.”

Future Directions

Three possibilities when dealing with a specific patented technique: avoiding the patent, licensing the patent, or trying to overturn it in court (Stallman). None are sure-fire methods. The problems in identifying patents and what they actually cover has been described above, so it is not likely any company or individual will be able to avoid anything any patent might cover. Licensing may be possible, but the patent holder is not required to license the patent and may charge whatever they want for it. A patent may be overturned in court, but lawsuits are expensive and time-consuming.

But the issue is so far reaching that invalidating each problematic patent one at a time seems unlikely. The future is not completely bleak. There are a number of ways in which the current problems could be fixed, either from the top down or bottom up.

The U.S. Patent Office is considering a number of options as part of their 21st Century Strategic Plan to deal with the growing number of applications, the growing pendancy period, and the need for higher quality prior art searches (Kazenske, 283). One possibility is outsourcing prior art searches. The Patent Office would ensure that each contractor is competent and would be able to fire any contractor at any time. Contractors would have to prove that they are not only able to perform the required searches, but have knowledge of the subject.

The US Federal Trade Commission released a report, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, in October 2003 that was critical of the current system. The FTC recommended creating a new system for challenging patents to replace the time-consuming, expensive proposition of challenging every one in federal court. The report also recommended changing the standard for invalidating a patent from “clear and convincing evidence” to the preponderance of evidence (DeSanti). Both recommendations would make it easier to invalidate bad patents but would not address their issuance in the first place.

Outside of the United States, the European Parliament voted in September to make software explicitly unpatentable in the European Union, but the vote still may be set aside (“Software Patents: Breakthrough in the European Parliament”).

Software and business method patents present a real problem for information architects and web designers, and the future is unclear. Where do information architects go from here? With companies spending millions on patents and litigation, there’s no telling what’s next.

Works cited

Berners-Lee, Tim. “Machines and the Web.” Weaving The Web. Excerpted in “WTW Chapter 13 – Machines and the Web.” World Wide Web Consortium. 23 July 2003. <http://www.w3.org/2001/10/Patents-wtw-excerpt.html>

Bessen, James, and Eric Maskin. “Sequential Innovation, Patents, and Imitation.” Massachusetts Institute of Technology. January 2000. <http://www.researchoninnovation.org/patent.pdf> (7 December 2003).

Clark, Kendall Grant. “XML.com: Patent Wars: The W3C Strikes Back [Oct. 17, 2001].” XML.com: XML From the Inside Out. 17 October 2001. <http://www.xml.com/pub/a/2001/10/17/strikes-back.html>

“Conditions for patentability; novelty and loss of right to patent.” U.S.Code. 2000 ed. Title 35, Sec. 102. <http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=browse_usc&docid=Cite:+35USC102>

“Conditions for patentability; non-obvious subject matter.” U.S.Code. 2000 ed. Title 35, Sec. 103. <http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=browse_usc&docid=Cite:+35USC103>

Davis, Trey. “UC, Eolas win verdict against Microsoft in Web browser case.” The University of California Office of the President. 11 August 2003. <http://www.ucop.edu/news/archives/2003/aug11art1.htm> (7 December 2003).

DeSanti, Susan S. “FTC Issues Report on How to Promote Innovation Through Balancing Competition with Patent Law and Policy.” Federal Trade Commission. 28 October 2003. <http://www.ftc.gov/opa/2003/10/cpreport.htm>. (7 December 2003).

Diamond v. Diehr, 450 U.S. 175

Dumas, Joseph S., and Janice C. Redish. A Practical Guide to Usability Testing. Portland, OR: Intellect Books, 1999. p 56.

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In re Alappat, 33 F.3rd 1526, 1552 (Fed. Cir. 1994)

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State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. Jul. 23, 1998).

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Weinheimer, James. “SIGIA-L: (no subject)” SIGIA-L Mail Archives. 14 August 2000. <http://www.info-arch.org/lists/sigia-l/0008/0057.html> (7 December 2003).

Wei, Perry Pei-Yuan. “Personal Comments on Eolas vs Microsoft, and the Viola Prior Art.” Pei’s Home Page. <http://www.xcf.berkeley.edu/~wei/viola/aboutEolasMicrosoft.html> (7 December 2003).

“What Are Patents, Trademarks, Servicemarks, and Copyrights?” United States Patent and Trademark Office Home Page. U.S. Patent Office. 16 November 2003. <http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm>

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