Court Ruling Clears the Way For Patents On Software

BUILD a better mousetrap and you could always beat a path to the patent office. Develop new computer software and the patent route was more dubious.

Until now.

The United States Patent and Trademark Office is working on new guidelines for reviewing software applications, says spokeswoman Ruth Ford.

The guidelines, which should be available in a couple weeks, are in response to an important ruling, called ``In re: Alappat,'' from the US Court of Appeals for the Federal Circuit. The court, which handles patent cases, late last month found that the patent office had been too restrictive in issuing software patents.The likely result? More software patents, says Peter Trzyna, a software patent attorney with the Chicago firm of Keck, Mahin & Cate. ``With further protection you will have more lawsuits. But you'll also have more royalties, more compensation [for inventors]. So it helps fire innovation,'' Mr. Trzyna says.

The patent office has wrestled with software for more than a decade. In the early 1980s, it patented several computer programs; in the latter half of the decade, it became more restrictive, under the theory that software was merely a set of mathematical equations, which aren't patentable.

``The patent office swings back and forth - sometimes they're being very open toward software systems and sometimes they're very, very tough,'' says Lee Hollaar, a registered patent agent and computer science professor at the University of Utah. ``One of the things `Alappat' does is limit the swing in the negative direction.''Alappat is in line with other recent court decisions. Because it was made in banc, involving all the court's judges rather than the more typical three-judge panel, the ruling represents an unusually strong majority opinion.

``It provides reality therapy to middle management in the patent office that the software problem will not go away,'' says Harold Wegner, director of the intellectual property program at George Washington University in Washington.

Two major problems remain, Mr. Wegner adds. The patent office's collection of prior art in software (on which it judges the originality of an invention) is extremely limited. And no simple classification system exits for the mathematical equations on which the software is based.