The patent reform bill, H.R. 5924, transmitted by the President to the Congress in Febuary 1967 and introduced by Representative Kastenmeier, was the result of this effort.

This bill incorporates in section 106 the recommendation of the Presidential Commission concerning computer programs. Section 106 reads as follows: "§ 106. Computer programs not patentable.-A plan of action or set of operating instructions, in whatever form presented, to cause a controllable data processor or computer to perform selected operations shall not be patentable."

The intent of this section is more thoroughly explained in the following analysis of section 106 which appears at page 28 of House document No. 59 (90th Congress, first session):

"Section 106. This section is new and is added to implement the Commission's recommendation IV, paragraph 3, that programs for data-processing machines shall not be considered patentable regardless of how they are claimed or presented to the Patent Office. Uncertainty now exists as to the extent the statute permits a valid patent to be granted on programs.

"Because the term 'program' is inherently indefinite and susceptible to various interpretations, the term is avoided. Instead, 'programs' are described in more generic terms as 'a plan of action or set of operating instructions to cause a controllable data processor or computer to perform selected operations.'

"By providing that such a 'plan of action or set of operating instructions' shall not be patentable, it is intended also that they shall not lend patentability to a more comprehensive system in which a general purpose data processor programed in a certain manner is the novel subcompoent.

"Thus, under the added paragraph, novelty in the 'plan of action or set of operating instruction' shall not, in any way, supply patentability to

"(a) A program claimed as such, that is a plan of action, or set of operating instructions, in whatever form presented, to cause a controllable data processor or system incorporating a controllable data processor or similar system to perform selected operations, or

"(b) A program claimed as a manufacture or machine; that is, a controllable data processor, or as a more comprehensive system incorporating a controllable data processor or similar controllable system, caused to perform selected operations under a plan of action or set of operating instructions, or

"(c) A program claimed as a process involving a plan of action, or set of operating instructions, for the processing of physical data manifestations or information-bearing signals."

Hearings on H.R. 5924, under the chairmanship of Representative Kastenmeier, are now being held by Subcommittee No. 3 of the House Judiciary Committee. In commenting on section 106 before the subcommittee, Commissioner Brenner on April 17 stated:

"The Patent Office has taken the view that computer programs are not patentable under present law, and no patent has been issued on a computer program per se. Section 106 of the bill would codify this interpretation by providing that computer programs are not patentable."

Some concern has been expressed that section 106 may overly simplify an extremely complex problem of legislative definition. Dr. Hornig in his statement before Subcommittee No. 3 made the following observation :

"It has become clear that there are some very genuine and difficult questions of philosophy as well as practicability involved in the patentability of computer programs. It presents a substantial problem of precise definition. Section 106 is an attempt to codify or clarify existing law. Because of the complexity of this matter, the committee may wish to consider the adequacy of the definition contained in section 106."

A number of patent law associations have opposed the elimination of computer programs from the area of patentable subject matter and therefore are opposed to section 106 of H.R. 5924. This opposition is based in part on the premise that certain types of computer programing inventions may be patentable under existing law. There are presently pending appeals to the Court of Customs and Patent Appeals which raise issues relevant to the patentability of computer programs under the present statute. Among these are In re Paul J. Naguin, appeal No. 7963 (C.C.P.A.), In re Charles D. Prater, appeal No. 7987 (C.C.P.A.), and In re George A. Bekey, appeal No. 7954 (C.C.P.A.). While none of these appeals are directly concerned with the patenting of computers programs

per se, the decisions of the court in these cases may have a bearing on the types of subject matter which can be protected under the present statute.

The Presidential Commission, in its recommendation on computer programs. made reference to the copyrightability of computer programs. In January 1965 the Register of Copyrights issued circular No. 31D stating the conditions under which it would accept computer programs for registration. Computer programs were registered by the Copyright Office, in the words of circular No. 31D, "in accordance with its policy of resolving doubtful issues in favor of registration wherever possible ***"

The Patent Office, on the other hand, in accordance with the decision of the Court of Appeals for the District of Columbia in Reynolds v. Aghnides, 356 F.2d 367 (1966), has taken the position that under the patent laws the burden of establishing entitlement to a patent is on the applicant for the patent. This issue is now before the Supreme Court in the case of Brenner v. Hofstetter, 362 F.2d 293 (C.C.P.A. 1966), the Government's petition for certiorari having been granted by the Supreme Court on April 10, 1966.

In the copyright law revision, H.R. 2512, recently passed by the House of Representatives, computer programs appear to be regarded as copyrightable subject matter. While the categories of copyrightable works enumerated in section 102 of H.R. 2512 do not explicitly provide for computer programs, the report accompanying the bill contains the following commentary at page 14:

"The history of copyright law has been one of gradual expansion in the types of works accorded protection, and the subject matter affected by this expansion has fallen into two general categories. In the first, scientific discoveries and technological developments have made possible new forms of creative expression that never existed before. In some of these cases the new expressive formselectronic music, filmstrips, and computer programs, for example could be regarded as an extension of copyrightable subject matter Congress had already intended to protect, and were thus considered copyrightable from the outset without the need of new legislation."

The bill further provided in section 102 that copyright protection subsists “in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be preceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."

The report accompanying the bill points out on page 15 that:

"Under the bill it makes no difference what the form, manner, or medium of fixation may be whether it is in words, numbers, notes, sounds, pictures, or any other graphic or symbolic indicia, whether embodied in a physical object in written, printed, photographic, sculptural, punched, magnetic, or any other stable form, and whether it is capable of perception directly or by means of any machine or device 'now known or later developed.'"

Clearly, such forms of expression cover the attributes of the many forms in which a program can be manifested.

The question of the copyrightability of computer programs is under active consideration by the Subcommittee on Patents, Trademarks, and Copyrights of the Senate Judiciary Committee which is conducting hearings on the House-passed copyright law provision.

I will be glad to answer any questions which you may wish to ask or to provide any additional information which you may request.

APPENDIX A

PROTECTION OF COMPUTER PROGRAMS

BIBLIOGRAPHY

Banzhaf, John F. III, "Copyright Protection for Computer Programs", Columbia Law Review, Vol. 64, Nov., 1964, pp. 1274–1300.

Banzhaf, John F. III, "Legal Protection for Computer Programs", Data Processing, July, 1964, pp. 8-12.

Banzhaf, John F. III, Report of Talk, Datamation Magazine, June, 1966. Cary, George D., "Copyright Registration and Computer Programs", Bulletin of the Copyright Society of the United States, Aug., 1964, pp. 362–368. Etienne, Alexander J., "Computer Problems", IDEA (DIGEST) Reporting on the 1964 Annual Public Conference of the Patent, Trademark, and Copyright

Goldberg, Morton David, “Computer Problems”, IDEA (DIGEST) Reporting on the 1964 Annual Public Conference.

Goldberg, Morton David, "Patent and Copyright Implications of Electron Data Processing", IDEA, Vol. 8, No. 1, Spring, 1964, pp. 183–190.

Goldberg, Morton David, "Copyrighted Programs", reported in Business Week, August 22, 1964.

Hamlin, Kenneth B., "Computer Programs Are Patentable", Communications of the ACM, Vol. 7, No. 10, October, 1964, pp. 581 and 582.

Hauptman, Gunter A., "Joint Inventorship of Computers", Comm. of the ACM, Vol. 7, No. 10, October, 1964, pp. 579 and 580.

Jacobs, Morton C., “Commissioner's Report (Re: Computer Programs)”, Journal of the Patent Office Society, Vol. XLIX, No. 5, May, 1967, pp. 372–378. Jacobs, Morton C., "Patent Protection of Computer Programs", Comm. of the ACM, Vol. 7, No. 10, October, 1964, pp. 583 and 584.

Jacobs, Morton C., Report of Talk, Datamation Magazine, June, 1966, p. 85. Jacobs, Morton C., "Patent Protection of Computer Programs", JPOS, Vol. XLVII, No. 1, Jan., 1965, pp. 6–14.

Kates, Joseph P., "Computer Patent Disclosures", Comm. of the ACM, Vol. 7, No. 10, Oct., 1964, pp. 578 and 579.

Katona, Gabriel P., "Legal Protection of Computer Programs", JPOS, Vol. XLVII, No. 12, Dec., 1965, pp. 955-979.

Kurtz, Richard E., "Patents and Data Processing", Data Processing, Nov., 1364, pp. 9-13.

Lawlor, Reed C., "Copyright Aspects of Computer Usage", Bulletin of the Copyright Society of the U.S., Aug., 1964, pp. 572–578.

Lawlor, Reed C., "Copyright Aspects of Computer Usage", Comm. of the ACM, Vol. 7, No. 10, Oct., 1964, pp. 572–578.

McOustra, C. J. C., "Software: Copyright and Other Kinds of Control", The Computer Bulletin in England, Vol. 8, No. 3, Dec., 1964, pp. 96 and 97. Miller, Arthur Professor (for EDUCOM), "The Copyright Revision Bill in Relation to Computers", Comm. of the ACM, Vol. 10, No. 5, May, 1967, pp. 318321.

Rackman, Michael I., "The Patentability of Computer Programs", New York University Law Review, Vol. 38, Nov., 1963, pp. 891-917.

Rackman, Michael, I., "Re: Legal Protection of Computer Programs", JPOS, Vol. XLVIII, No. 4, April, 1966, pp. 275–277.

Richards, D. Carl, "Recent Developments in Patent Law", Patent Procurement and Exploitation, (Southwestern Legal Foundation (BNA 1963)), pp. 106-120. Schiffer, George, "Computers and Copyright Law Revision", Bulletin of the Copyright Society of the U.S., Aug., 1964, pp. 404-407.

Schulman, John, "The Copyright Law-Is It a Roadblock to Information Retrieval?", Bulletin of the Copyright Society of the U.S., Aug., 1964, pp. 369–379. Seidel, Arthur H., "Antitrust, Patent and Copyright Law Implications of Computer Technology", JPOS, Vol. XLIV, No. 2, Feb., 1962, pp. 116–125. Sheers, Edward H. and Encke, Frederick, L., "Copyright of Patents for Computer Programs?", JPOS, Vol. XLIX, No. 5, May 1967, pp. 323–327.

USPQ "Attempts to Obtain Computer Program Patents" in USPQ Advance Sheets, Vol. 141, No. 6, May, 1964, pp. III and IV.

Wessel, Milton R., "Legal Protection of Computer Programs", Harvard Business Review, March-April, 1965, pp. 97–106.

Mr. REYNOLDS. We have had a number of applications recently for patents on computer programing design and processes and there are no judicial decisions that are directly in point as to whether this constitutes patentable subject matter so we thought it would be advisable to formulate guidelines to be followed by the Patent Office until we get judicial decisions to guide us.

Mr. BROOKS. You did read the bill?

Mr. REYNOLDS. The present bill, you mean?

Mr. BROOKS. H.R. 5924.

Mr. REYNOLDS. Yes, surely. Of course that is not in effect, now. Oh, yes, we read that.

Mr. BROOKS. If that is signed

Mr. REYNOLDS. Then we will have no problem.

Mr. BROOKS. That would eliminate the problem because it very clearly states computer programs are not patentable.

Mr. REYNOLDS. That is right.

Mr. BROOKS. It lays the question to rest.

Mr. REYNOLDS. That would solve our problems.

Mr. BROOKS. In the meantime

Mr. REYNOLDS. We have to operate under the present law.
Mr. BROOKS. You are fighting with the wolf.

Mr. REYNOLDS. That is right. It is at the door. So we published these guidelines last summer and had a hearing on them and just about as we were to give them further study in view of the comments we received, the Presidential Commission made its recommendation that these not be patentable and the patent reform bill just mentioned was introduced so we are more or less marking time to see what will happen there, but we are operating under the guidelines that we did propose. Now essentially under the present law it has been held that a method to be patentable must produce some tangible result as it must alter the condition or form of some physical object so that purely mental processes such as methods of doing business or method of extracting cube root would not be patentable subject matter.

It has also been held that printed matter is not patentable as such. So that as we understand it, computer programing processes per se are not patentable. That is the line which we propose to take until somebody tells us differently anyway.

Mr. BROOKS. Don't hold your breath.

Mr. REYNOLDS. Well, that is right.

Mr. BROOKS. Does the Patent Office contemplate the issuance of any patents on programs under present statutory authority?

Mr. REYNOLDS. No. As I say, not unless the courts reverse us and tell us to. We are not allowing them now. There are several pending now in the Court of Customs and Patent Appeals that involve this question more or less directly and it is possible that within a year or so we may have a court decision that will tell us something about it but in the meantime we have to act on these applications and that is the theory.

Mr. BROOKS. Would you give us a little statement on the status of those cases?

Mr. REYNOLDS. Yes. They are mentioned in our statement.
Mr. BROOKS. All right.

Mr. REYNOLDS. There are three of them there.

Mr. BROOKS. Good.

Mr. REYNOLDS. Now we our personal feeling from a purely selfish point of view is that it would be quite a burden on us if these things should suddenly be held patentable. It s our understanding that there are a considerable number of applications that would be filed almost immediately if a holding were made that this was patentable as subject matter and they would be very difficult applications to examine partly because they are very technical but partly because we do not have the prior publications that would be necessary to consider. We would have to try to acquire them and classify them. In order to examine an application we would have to read through most of these issued publications and the situation is further complicated by the

cording to different systems of computer notations so that it would be a very difficult thing to read an application and visualize just how you would express that idea in each of these systems and then look for prior publication that might disclose it.

Mr. BROOKS. And compound the personnel shortage problem.

Mr. REYNOLDS. Yes. We have very few of them. Even if we had it would be quite a manpower problem. As you know, we have a very substantial backlog now which we are just beginning to reduce and if something like this were to hit us it would almost submerge us I am afraid. So from a purely selfish view we do not like it.

Of course, we realize that is not controlling on policy but it is a factor that ought to be considered. Now I think that is about all except this question of whether these can be copyrighted. That is not our province but as we understand it the present and proposed laws would allow copyright of programs to a certain extent. Of course, that does not give the same type of protection that a patent does. It would only protect you against copying. It would not prevent one who independently thought of the same process from going ahead and using it. So it is not quite equivalent to patenting but it does give some protection and maybe that is all they are entitled to. We hope it is.

Mr. BROOKS. We hope to hear from the Copyright Office in the morning.

Mr. REYNOLDS. I think that is about all I have to say unless you have some questions?

Mr. BROOKS. I believe that with your statement, your position seems clear. I think it is well taken. I hope we can pass that legislation and eliminate your problem entirely in this field. I want to thank you very much. We enjoyed having you and appreciate your statement.

Mr. REYNOLDS. Thank you. It has been a pleasure.

Mr. BROOKS. The hearing will be recessed until 10 a.m. in the morning when we will hear Dr. Hornig from the White House, and Mr. George Cary from the Copyright Office.

(Whereupon, at 4:10 p.m., the subcommittee was recessed to reconvene at 10 a.m., Thursday, July 20, 1967.)