- The Washington Times - Tuesday, November 12, 2002

The Supreme Court is about to decide whether to hear a case that, unless overturned, would leave small companies like mine far too exposed to potential thievery. The case, Johnson et al. vs. I/O Concepts, is seemingly about a little-known patent requirement known as enablement. But for newer industries with patents more complicated to understand, the case is critical to shaping future investment and advancement.

The enablement requirement is one of the core concepts in patent law. For society to have access to newer technologies more quickly, an inventor must write a description of the technology in the patent application. It is a description that would "enable" others trained in that trade to make and use the invention. The trade-off is simple. The inventor is given patent protection. Others get to study the new technology and try to improve upon it.

Enablement facilitates progress. But, as in this case, if judges fail to keep up with modern industry, their inability to understand enablement clauses can actually stymie growth.

The software, biotechnology and chemical industries have complex technologies. Therefore, sufficiently describing an invention in an enablement clause, while critical to understanding and sustaining patents, can be challenging. When patents dealt largely with manufacturing items, describing what the invention did and giving step-by-step instructions as to how to build it, was fairly straightforward. Describing software code or a living process, on the other hand, is not. What some in the trade may deem a sufficient explanation for understanding the patented technology, others may not.

The reason the Johnson case is so alarming is that the trial judge, without a trial, invalidated a patent because he did not think the enablement clause described the program. He dismissed the case without a hearing or testimony from live witnesses despite having a sworn statement from a software engineer saying that the enablement clause was sufficient. It is offensive that a judge, who may know the law but not software, could overrule what a skilled person in the software trade could do based on the patent's description. The judge never should have short-circuited the judicial process. The experts should have been heard. The matter should have been decided by a jury.

If courts are going to arbitrarily strike down patents that judges don't understand, it is going to be damaging for small technology companies whose most important assets are their patents. Where larger companies use their might to dominate the market, small businesses secure their place in the market by developing an idea, filing for patent protection and then seeking financial backing to take the idea to market. By unfairly giving away an inventor's work, which could take years and millions of dollars to develop, the courts are going to make it difficult for small inventors to raise capital.

One way for software companies to avoid uncertainty is to put their software code directly into the patent, something small companies prefer not to do because of the risk of being copied. Large companies would not be so afflicted by this predicament, as they often release their source codes to their customers anyway. They allow their customers to go directly into the program to customize the software. Smaller companies, on the other hand, are more apt to prefer working with their customers to refine programs.

While all companies benefit from a strong, reasonable and predictable intellectual property system, small software companies simply cannot live without it especially during these down economic times. With 75 percent of all software purchases being upgrades, the competition over new ideas that represent the remaining quarter is becoming fiercer. With large companies willing to turn over their source codes, companies that need to see cost savings immediately may be less willing to invest in the technology of a small software company, even though it may be better for them in the long run.

If small, innovative software companies cannot survive, corporate America will lose the individual programming attention that only they can offer. Without such customized tools, many businesses will not harness their unstructured data, which represents 70 percent of all corporate data assets. One of the easiest ways for companies to grow out of a recession and generate new jobs is to reduce costs by becoming more efficient and more productive.

Whether or not the U.S. Supreme Court agrees to hear and overturn the Johnson decision may go a long way toward determining the landscape of innovation in America. The patent system was designed to protect inventors at their most vulnerable state when they first develop a product. That is why, while this case is about enablement in patent law, it is more about enabling enterprise.


Brad Anderson is the president of SolArc Inc., based in Tulsa, Okla.

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