Can someone please explain to me the doctrine of equivalents law as it
applies to software patents. I know that the law applies to
infringments by making products simular to the patent and states, "If
two devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape" but its interpretation
varies with the type of patent held.
A clear and complete, workable explanation of how this law applies to
software patents I would rate highly or just won't rate.

P.S. The patent in question does not interfere with any other software
applications :)

Hi, 

This is an interesting question these days, and there is quite a lot
of research and papers out there which explain it in far better terms
than I could do so here. The following is a list of papers which
address your question directly, and then in the next set, links that
apply but not directly. I've chosen these main three on the basis that
they are relatively easy to understand.

The first paper gives a history building up to the first case 1998,
the U.S. Court of Appeals for the Federal Circuit -- State Street Bank
& Trust Co. v. Signature Financial Group Inc. which showed a method
that software could indeed be patented, under certain circumstances.
For a long time the basic thought was that it could not, since most
programs are basically an algorithm and those are not patentable.

How Could Software Patent Law Impact Electronic Commerce?
http://cyber.law.harvard.edu/is98/final_papers/Lee.html

Patents for Software-Related Inventions
http://www.kuesterlaw.com/swpat.html

Software Patent, Computer Law, and Software Protection
http://www.wsrgm.com/software.html


Discussion Links

Cyberlaw -- Software Patents
http://www.cyberlaw.com/cylw894.html

SPI Primer -- THE CHALLENGE OF SOFTWARE-RELATED PATENTS
http://www.spi.org/primintr.htm

Debunkin the Software Patent Myth
http://www.swiss.ai.mit.edu/6805/articles/int-prop/heckel-debunking.html



Query Used
Software Patent law

Thanks, 

webadept-ga

---

Request for Answer Clarification by maed-ga on 09 Nov 2002 07:46 PST

Please reread the question carefully. I am already aware that certain
programs are patentable and what qualifies them to be patentable. The
law in question is called THE DOCTRINE OF EQUIVALENTS and was breifly
explained and quoted. It is the basic patent law to protect a patent
from infringement the way most people try to infringe-by trying to
make something very similar instead of the exact same thing. What I
was asking was how this law would apply to software patents and by
workable I mean something that would give me some kind of an
understanding of what would and wouldn't be considered equivalent.

---

Clarification of Answer by webadept-ga on 09 Nov 2002 08:36 PST

You're right.. I missed that part and got caught up on the wrong
thread. My apologies. I will re-research the question paying more
attention to that specific area and get back to you soon. Just didn't
want you to think I didn't see the Clarification.

webadept-ga

---

Clarification of Answer by webadept-ga on 09 Nov 2002 09:54 PST

Here we go, These articles explain the situation a bit more clearly
and deal with the DOE specifically

IP Bulletin
http://www.slwk.com/bulletins/bullet6.htm
"The problem of predicting infringement under the DOE got even tougher
under Hilton Davis. The court held that the application of the DOE
rests on the substantiality of the differences between the patent and
the accused products or processes. The function-way-result test often
suffices to answer the question of infringement, but it does not end
the inquiry. Now, other evidence may also be relevant to the
substantiality of the differences between the products. Even more
harrowing is that the jury has the sole task of deciding infringement
under the DOE, not the judge. "


WARNER JENKINSON COMPANY, INC., PETITIONER v. HILTON DAVIS CHEMICAL
CO.
http://supct.law.cornell.edu/supct/html/95-728.ZO.html

"What constitutes equivalency must be determined against the context
of the patent, the prior art, and the particular circumstances of the
case. Equivalence, in the patent law, is not the prisoner of a formula
and is not an absolute to be considered in a vacuum. It does not
require complete identity for every purpose and in every respect. In
determining equivalents, things equal to the same thing may not be
equal to each other and, by the same token, things for most purposes
different may sometimes be equivalents. Consideration must be given to
the purpose for which an ingredient is used in a patent, the qualities
it has when combined with the other ingredients, and the function
which it is intended to perform. An important factor is whether
persons reasonably skilled in the art would have known of the
interchangeability of an ingredient not contained in the patent with
one that was." Id., at 609.

http://www.law.berkeley.edu/journals/clr/library/cohen-lemley01.html
Julie E. Cohen & Mark A. Lemley, Patent Scope and Innovation in
Software Industry

"The doctrine of equivalents allows a finding of infringement even
when the accused product does not literally satisfy each element of
the patent, if there is substantial equivalence as to each element.
The test of equivalence is the known interchangeability of claimed and
accused elements at the time of (alleged) infringement. A number of
factors unique to software and the software industry-a culture of
reuse and incremental improvement, a lack of reliance on systems of
formal documentation used in other fields, the short effective life of
software innovations, and the inherent plasticity of code-severely
complicate post hoc assessments of the "known interchangeability" of
software elements. A standard for equivalence of code elements that
ignores these factors risks stifling legitimate, successful efforts to
design around existing software patents. To avoid this danger, courts
should construe software claims narrowly, and should refuse a finding
of equivalence if the accused element is "interchangeable" with prior
art that should have narrowed the original patent, or if the accused
improvement is too many generations removed from the original
invention."


KuesterLaw Technology Law Resource
http://www.kuesterlaw.com/kcasesta.htm

The Appeal of Patents
http://www.clendons.co.nz/library/articles/patents.htm

Amazon.com v Barnesandnoble.com
http://www.law.emory.edu/fedcircuit/feb2001/00-1109.wp.html


query
"doctrine of equivalents" +"software patent"

Thanks, 

webadept-ga