Software and Patent Scope: A Report From the Middle Innings

Intellectual Property and Patents

Article Snapshot


Robert Merges


85 Texas Law Review 1627, 2007


This paper looks at whether predictions that software patents would be harmful came true.

Policy Relevance

Any harm done by software patents seems to have been balanced out by benefits. The Federal Circuit has applied the law fairly. But several refinements to principles announced in case law would be helpful. This article indirectly might support the idea that other Circuits could become involved in hearing patent appeals.

Main Points

  • Some observers predicted that software patents would kill the software industry.


  • These predictions have not come true. This is largely because legal factors are not as important as business and technology factors driving software.


  • The most important legal factors are how well the patent discloses the new technique to others, and how broad an area the patent covers, its scope.


  • A patent’s claims should enable another to use the technique. Enablement law can resolve cases like LizardTech v. Earth Resource Mapping better than the Federal Circuit’s concern with written descriptions.


  • The Federal Circuit has applied patent law in the software context to avoid giving one competitor an unfair advantage over another.


  • Patents seem to help firms get capital. Patents do not seem to stop firms from giving software away for free, nor do they generally preclude open source licensing.

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