477 patent as a whole is unenforceable.47% Every claim in a patent, however, is presumed valid. Thus, in district court, the party challenging patent validity must demonstrate through clear and convincing evidence that the patent fails to satisfy one or more of the statutory criteria of patentability (e.g., novelty, utility, nonobviousness), or that the application is defective because it has an inadequate disclosure. 478 1. PATENTABILITY DETERMINATIONS The NII will have a tremendous impact on the flow of information. As new sources of information are made available and old sources are made more accessible, the accumulated body of knowledge available for use in patentability determinations will expand. This means that more information will be available to influence decisions on the patentability of an invention, whether in the context of considered by a court. The party may also show that the claims are defective in view of Section 112 because they are broader than what is actually supported by the disclosure. 476 A party can also preclude the enforcement of a patent without specifically addressing the validity of the patent. This can occur, for example, if the patent owner engaged in "inequitable conduct" before the PTO (e.g., the inventor withheld material prior art from the patent office or made other misrepresentations intended to mislead the PTO), or misused its patent rights (e.g., in an antitrust context). In both instances, the patent will be unenforceable against any and all infringers, even if the patent satisfies all patentability requirements. 477 478 See 35 U.S.C. § 282 (1988): A patent shall be presumed valid. Each claim of a patent (whether A party can also challenge the validity of a patent in a reexamination proceeding before the Patent and Trademark Office. In such a proceeding, however, the basis for challenge is limited to novelty and obviousness in view of only certain types of prior art, namely, printed publications and patents. 479 the patent examination process or during challenges to patent validity through litigation in the Federal courts. Thus, the most significant impact that the NII will have on the patent system will be in relation to issues that are affected by the degree of availability of "prior art." Over the past twenty years, access to sources of information -- particularly patents and printed publications has been vastly improved through the development and use of on-line database services. These services document the existence and content of patents and printed publications, and in some instances, provide access to the complete text and electronic images of such documents. It is important to recognize, however, that the information that can be retrieved through these services invariably exists as an original, paper document disseminated through traditional publication channels (e.g., technical journals or publications, domestic and foreign patent documents). The NII will dramatically change the way information is prepared and disseminated. It will improve the number, diversity, accessibility and quality of traditional on-line services. It will also foster creation of new forms of "electronic publications" that are different in character from traditional paper-based publications. Examples of such electronic publications include electronic versions of traditional paper-based publications that supplement or reorganize presentation of the content of the paper-based publication; informally prepared documents such as a posting of technical or other information on a particular topic-driven forum; and formally designed and developed 479 Prior art plays a critical role in patentability determinations. It serves to define the state of the art at the time a patent application is filed (e.g., it establishes the level of ordinary skill in the art). Specific items of prior art serve as the basis of denying patentability to a particularly claimed invention, either singularly in the context of novelty or through combination in the context of obviousness. Because of this, it is imperative that all sources of information that relate to an invention be integrated into patentability determinations. electronic publications that are not printed on paper, but are disseminated exclusively through an electronic forum. Electronic publications such as these will supplement the wealth of publicly accessible information that is used in patentability determinations. However, these new types of electronically disseminated documents are different in character from traditionally printed and indexed patents and publications, and as such, could raise questions when used as prior art in a patentability determination, either before the PTO or during litigation. For example, the information contained in electronically-disseminated documents may not be printed originally on paper, and as such, there may be no tangible evidence regarding the date the information was first publicly disclosed or as to the contents of the document as disclosed on that date. There are no uniform guidelines or industry standards presently that govern the memorialization of either the contents or the date of first public disclosure of such documents. A second problem is that the degree of distribution of or public accessibility to electronic documents is not presently measured and may prove unmeasurable. Limited availability of a document can render that document unusable as a source of information as prior art. Both issues, however, are key factors in determining whether a document is in the prior art. 480 A second category of concerns relates to the technical accuracy of electronically disseminated documents. To be a usable and reliable prior art document, the contents of the document must be technically accurate and informative. The types of documents that are disseminated electronically today, however, vary tremendously as to their content and accuracy. Thus, while certain information could be posted on a forum, with a reliable documentation of the date of that disclosure and its contents, it would not be certain that 480 See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (publicly catalogued doctoral dissertation in publicly accessible library properly considered prior art document). peer the disclosure itself is technically accurate and usable as prior art. Informally created documents, such as postings on a forum, are not typically subjected to any form of review or content screening. The lack of quality control could therefore complicate evaluation of information contained in these electronic documents, which, in turn, could affect patentability, particularly in the context of litigation. 2. INFRINGEMENT DETERMINATIONS As noted in other sections of this Report, some questions exist regarding whether or how copyright owners will be able to effectively enforce their rights in their works on the NII. The issues related to the enforcement of copyrights on the NII do not have an analogue with regard to patent protection. This is because each patent provides a precise definition of the nature of activities that will infringe the patent owner's rights. And while some have raised concerns over the ability of patent owners to prove infringement where the infringing activities were facilitated by or conducted on the NII, these concerns do not appear to be well founded. Consider a patent claim covering a new data compression process used for communicating information over the NII. To infringe the patent owner's rights, one would have to perform each of the acts specifically outlined in the process claim. To prove infringement, the patent owner could rely on any evidence that the accused party used the process. This could be done by showing that the accused infringer developed and distributed a software program that, when used by a third party, would infringe the process claim (e.g., the software would require the third party to follow the steps outlined in the process claim and thus lead to infringement of that claim). Alternatively, the patent owner could show that data was distributed over the NII in the compressed format, and then establish the source of the data. Considered fully, it does not appear to be an insurmountable problem for the patent owner to identify infringing parties and establish a sufficient quantum of proof that the accused infringer performed a particular series of acts, which, once performed, infringed one or more patent claims. 3. PATENTABILITY OF SOFTWARE Another issue considered with regard to its relationship to the NII is the eligibility of computer software for patent protection. Computer software-related inventions have enjoyed some degree of protection under the patent system since the beginning of the computer industry. In terms of distinguishing which aspects of software-related inventions could or could not be patented, the courts and the PTO have relied on a number of legal doctrines. Under one of these doctrines, computer program code per se has been held to be ineligible for patent protection because it is a writing that does not fall within one of the enumerated categories of invention. Another of these doctrines provides that processes, including those implemented in software, that are indistinguishable from the steps one would follow in applying a mathematical principle to solve a mathematical problem cannot be patented.481 These two doctrines have served to exclude protection for software-related inventions independent of machines or processes as implemented on a computer. A series of decisions rendered in 1994 by the Court of Appeals for the Federal Circuit has clarified the boundaries of patent-eligible subject matter for software-related 481 - - to The courts developed a test the Freeman-Walter-Abele test distinguish claims covering "mathematical algorithms" from those on products and processes that use or rely upon mathematical principles. See In re Freeman, 573 F.2d 1237 (CCPA 1978), as modified by In re Walter, 618 F.2d 758, 766-68 (CCPA 1980); In re Abele, 684 F.2d 902, 907 (CCPA 1982). See also In re Meyer, 688 F.2d 789, 796 (CCPA 1982). The Patent and Trademark Office has promulgated guidelines for interpreting and applying the two-part test for statutory subject matter for inventions involving mathematical algorithms. See 1106 Off. Gaz. Pat. Office 5 (Sept. 5, 1989) and 1122 Off. Gaz. Pat. Office 189 (Jan. 1, 1991). |