International Journal of Intellectual Property Law, Economy and Management 1 (2005) 53–57

The University Researcher and Patents
Hiroshi Konno
Chuo University

1. The Era of “Patenting Everything”
Aiming to become an “intellectual property (IP)-oriented nation,” the Japanese government, at the turn ofthe century, adopted IP as its core strategy for industry
revitalization and started applying stronger pro-patent
policies. Their intention was to follow the example of
the United States, which was in the past on the vergeof industrial decline, but had recovered after the 1985
Young Report and its subsequent IP policies.
However, beefing-up IP protection does not always
bring about the most desirable results. Actually, as
illustrated below, the United States is now facing troublesome issues due to excessive implementation ofsuch policies.
The main US strategy was to protect its inventions
by using “pro-patent policies,” which were powerfully
advanced after the establishment of the Court ofAppeals for the Federal Circuit (CAFC) in 1982. It issaid that the CAFC contributed to the dramaticincrease in US patent numbers, and also raised theeyebrows of many engineers because of its generous
rulings toward software patents, which became widely
accepted by 1981.
The “success” of software patents led the way togenetic patents, medical procedure patents, and business method patents. As Professor Pamela Samuelson(University of California at Berkeley, School of Law)
predicted, once software are found to be patentable
there will be no way to keep other prospects from following suit.
Despite numerous objections to the introduction ofsuch systems, many of them have taken root in society,and now the patent seekers are waiting their turn toexpand the scope of patent protection into such fields
as education methods, linguistics, information, andsocial systems. Here we can see the advent of the“Patenting Everything” Era.

ISSN 1349-7723© 2005 IPAJ All rights reserved.

The general reader may find this a little exaggerating, but from the viewpoint of an engineer, who has
over 15 years of experience in software patent issues,
this alarming matter is not groundless in any way.
Lawyers are making thorough step-by-step preparations to establish a fully equipped patent system. One
symbolizing example of this movement is the businessmethod patent that was granted in November 2002.
The U.S. Patent and Trademark Office (USPTO),
after five years of examination, granted a Net-venture,
the DE Technologies, Inc., a business method patent(No. 6, 460, 020) for “an international transaction system for operation over the Internet/Intranet.” This act
was severely criticized from all quarters because,
although the patent involved the standardization of allinternational trade transactions through comprehensive
software, the only novelty about it was the usage of theInternet in performing well-established methods.
Two years prior to the issuance of this patent a
Trilateral Technical Meeting of the JP, US, and EU
Patent Offices was held in Tokyo in June 2000. Herethe JP and EU officials jointly lodged a strong protest
against US patent policies and extracted a concession
for the patenting of computer implemented businessmethods. From this point on, a business method thatmerely places a known human transaction process on
the Internet by using technology that is neither novel
nor inventive would no longer be eligible for patenting.
This trilateral agreement had the effect of settling
down the business model patent boom, but fromwatching past US patent strategies, I knew that it was
still too early to be assured. Although there is still a
possibility that the appellate court will declare the DE
Technologies patent null and void on grounds that
there is no technical novelty, the issuance of the patentis proof enough to show that the USPTO has notchanged its “patenting everything” strategy.

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H. Konno

To this day I have taken various opportunities tointerview experts on the topic of software patents andits extension — business model (method) patents, andfound that many engineers were against these patents.
The most notable fact is that the more outstanding theachievements of the engineers are, the stronger they
are opposed to the current software patent policy of theadministration [1, 2].
However, in Japan, probably because of the lack oflarge software patent disputes, there were very few
people who openly criticized software patenting.
Recently, this situation is slightly changing with thesuccess of Linux and the dissemination of open-source
software. Among small and medium sized software
companies there is a growing concern over software
patents litigation that was triggered by the SCO
Group/IBM dispute, and the Internet is brimming withcriticism over the US patent policies for software andbusiness method patents.
In the following chapters, from the viewpoint of auniversity scientist in the research field of mathematical engineering, I would like to state my opinion inregard to the major issues surrounding the softwareand business model (method) patents.

2. From “Patenting Everything” to“Patenting Anywhere”
In October 2002 there was a CAFC holding that shookthe very foundation of the University community: thecase of Madey v. Duke University [4].
In the United States, just as it is stipulated in article
69 of the Japanese Patent Law, experimental use ofpatents for academic purposes was exempt from
infringement claims and such research activities would
normally fall in the scope of the experimental use
defense under US law. In this case, however, theCAFC dismissed the district court’s ruling and heldthat:regardless of whether a particular institution orentity is engaged in an endeavor for commercial
gain, so long as the act is in furtherance of thealleged infringer’s legitimate business and is not
solely for amusement, to satisfy idle curiosity, orfor strictly philosophical inquiry, the act does not
qualify for the very narrow and strictly limited
experimental use defense. Moreover, the profit or
non-profit status of the user is not determinative.
This means that nearly all of the future technicalresearches that are conducted at research institutions
such as universities will be subjected to the usage ofpatented rights. A new system of “Patenting

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Anywhere” is born, which strengthens the “Patenting
Everything” system.
The limitation of experimental use defense in the
United States has gradually become narrower in theaftermath of the court decisions of Roche Products Inc.
v. Bolar Pharmaceutical Co. Inc. (1984) and Embrex
Inc. v. Service Engineering Corp. (2000). The Duke
University case may well have been a terminus adquem, which a lawyer would have anticipated to happen in due course.
As this CAFC decision was unanimously made infull court, a reversal is highly unlikely for the foreseeable future, and seeking Supreme Court intervention is
also said to be beyond hope.
Through the implementation of the pro-patent
polices since the 1980s, the patent system has thus
been tuned to perfection. The dream of the strong
advocate of US patent strategies, Professor Donald S.
Chisum (Patent Law, Santa Clara University) and thefear of computer scientist Allen Newell have both
become reality, and the long-maintained system of civilization now seems to be facing a serious crisis [7, 8].
Software developers have been voicing their concern
about the “runaway” conduct of the patenting parties,
but it never occurred to the university researchers thatthe patent holders would come barging into the campus (Most of them are still unaware of this).
It so happens that, in the Constitution of the UnitedStates, there is no article that guarantees academic
freedom. In the United States a university is a businessand it is normal practice for the professors to makemoney with their patents through their own companies.
Therefore, it seems to be a weak argument to insist
that all university researches should be exempted fromclaims of patent infringement. But nevertheless, tomost of the university community, the aforementioned
decision would probably appear to be a self-righteous
act on part of the lawyers, which completely lacks the
viewpoint of university researchers.
If a researcher plans to obtain his/her own patent tostart a company for financial gain, it is hard to give
special treatment based on an experimental nature of
the use of patents. However, as far as I know, suchresearchers are a minority even for US universities. In
the field of software and business methods, most of theresearchers still place themselves in the world of academia, and disclose their inventions, not as patents, but
in the form of academic papers.
The experimental use defense to patent infringement
is vital for the development of technology. Take forexample, the Narendra Karmarkar-patent filed by the

The University Researcher and Patents

AT&T Bell Laboratories, which intended to monopolize all the rights of a highly general algorithm of theinterior point method for linear programming. If theDuke University ruling had taken place in the 1980s,
university research activities would have been inhibited and subsequent technological breakthroughs would
not have occurred. Considering the manyenergy/resource and environmental solutions that havebeen provided by such technologies, it is not difficult
to recognize the appalling significance of the Duke
University decision.
For software researchers this decision may have afatal impact because the ambiguity of patent claims inthis field will frequently cause the researcher to unintentionally infringe the patents. For the time being thelenient operation of the law is keeping these issues
from hitting the limelight, but what will happen once
the legislation is strictly applied is anyone’s guess.
For researchers in Japan there is little to worry about
if the effects are limited to the United States. However,with the upcoming incorporation of national universities and the further promotion of patenting in Japan, it
is likely that the same standards for experimental use
will be enforced in the name of harmonization with theUnited States. To counter such external pressures,Japanese researchers should start contemplating theirown persuasive arguments.
If university researchers are to uphold their “academic freedom” they should take this issue more seriously. Leaving this matter to lawyers who feel comfortable with the Duke University Decision would surely
result in a tactless accommodation of possible US
demands.
What can we employ as concrete measures then?
To begin with, Japan should, in an attempt to induce
a new trilateral agreement, collaborate more strongly
with the EU to protest against the “Patenting
Everything” and “Patenting Anywhere” strategies of
the US government. To achieve favorable results in theabove situation the researchers of JP, EU, and US allneed to join forces with the (conscientious) legal profession.
In the event of a deadlock, Japan should take action
to establish its own explicit rules, in which case it will
become absolutely necessary for us engineers to voice
our opinions more actively.
One solution, from the viewpoint of an engineer, isto divide the researchers in two groups for a given
number of years. The first group (type A) will waive
their experimental use defense in return for patent
ownership. The second group (type B) will give up
their patent application practice to keep (as before)

their experimental use exemption status.
University researchers dealing in software and business-method researches generally dislike being
restricted by the patent system, so it is my guess thatmost of them will choose type B.
From the very beginning, it was standard procedurein software science to update or build upon other people’s ideas. The more exceptional a researcher, themore he/she knows that studies are based on achievements of predecessors. If most of the outstanding software researchers are to select type B, the status quo inJapan will hardly change, and on seeing this situation,
the top US software researchers may start moving toJapan to secure their research freedom. Maybe thiswill become a kamikaze for our country’s software
industry.
As for business model patents, if the technicaldimensions of the patents are properly reviewed, theirsituation will be no different from that of software
patents. But if the technical claims are unfit forpatents, such as they were in the case of DE
Technologies, the circumstances will certainly change.
We will have to start dealing with people with a completely different way of thinking.
It is clear how much social disorder an inappropriate
business model patent will cause, from the example of
the Amazon.com’s one-click online ordering method
patent, which brought the largest bookstore chain
Barnes&Noble.com to the brink of bankruptcy. In
order to prevent such cases from occurring in Japan,
we must call for the continuance of rigorous technicalreviews by the Japan Patent Office, in which noninventive business model patents will be rejected.

3. Performance Evaluation of Researchers
using the Patent System
Another question that has been brought to attention inthis pro-IP environment is whether a quantitative
analysis of a researcher’s patenting efforts, in addition
to academic papers, should be used to evaluate academic performance.
Currently, to measure academic performance, thequality and quantity of the researcher’s academic
papers are put to use. After a paper is submitted, referees that are anonymous experts in the author’s academic field will conduct a peer review under a preset
standard, and only those that are deemed to have novelty with accurate facts will be published.
Each paper that is published in a journal equippedwith a reviewing process is counted as one achieved
paper in most academic disciplinary areas. To prevent

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H. Konno

this number from having wings of its own and to quantitatively measure the paper’s influence, the ISI(Institute for Scientific Information) Citation Indexes
and the Impact Factor have been introduced.
For academic papers, such authoritative indicators
exist to evaluate the researcher’s performance. So,
what means are there to measure patenting efforts?
The main purpose of the patent system is to provide
an incentive for technology developments that arenovel and useful to industry by helping them recoup
their investments. The primary yardstick in this case isnamely money. When the Tokyo High Court ruled that
the Karmarkar-patent lawsuit “held no merit,” theword “merit” stood for “financial benefits.”
As for the reviewing process, there is an essential
difference between patent offices and publishers ofjournals. In patenting, even if there may be some doubt
about the novelty and inventiveness of the patent thatis under review, the patent offices will first grant thepatent rights and listen to objections or invalidation trials later on. The current patent system is based on theassumption that an opposing party will sue for annulment. In the United States the average cost for suchlawsuits are in the order of millions of dollars. Even in
Japan, we are faced with a sum somewhere close to ten
thousand dollars per case.
Under this costly system, “useless” patents that are
not worth suing for are left alone. Therefore, there aretons of patents out there in the world that are nonnovel, uninventive, and unsuitable for making money.
Another drawback for using patent indexes: A fairly
talented researcher can easily divide up the ideas in asingle academic paper, flesh them out here and there,
and get away with three or four patents. This isbecause it is easier to pass a patent examination than toqualify a paper in an academic journal. Consequently,
it shows how extremely difficult it is to compare thetwo systems — paper and patent — using the sameindex methods.
A patenting system is based on monetary compensation, whereas a academic system is based on honor andfame; combining the two standards to create a convincing index is quite an impossible task, especially in
our country.

4. Voices of the Engineers
On many occasions, from an engineer’s point of view,
I have been voicing my opinion on various IP issues,
especially in connection with software and businessmethod patents. I strongly believe that we need moreengineers to take keen interests in these issues to56

reflect their opinions on the reform of the IP system,
which is currently being led mainly by the legal profession.
However, as I had expected, the reaction of engineers towards this matter has been extremely slow.
Asking engineers to take interest in legal matters is
like asking for the moon. To begin with, they do nothave any interest in social problems, and even if they
do, they say they are too busy with work to be able tospare any time.
Getting involved in legal matters at that time did nothave any benefit to the researchers in terms of research
performance, and made them run the risk of beinglabeled as a dropout from the engineering community.
Furthermore, they hardly had anywhere to voice theiropinions.
To lawyers, an engineer who is without opinion is
the same as an engineer that does not exist. Even if
lawyers were conscientious, they would have no wayof knowing what was on their minds.
So as it is noted in the “White Paper on Science” [5],even though the silent engineers are supporting thecountry with their inventions, they have to go throughlife as worker ants at the bottom of the social pyramid.
The IP system — notably the patenting system — isa big issue, which surely has a decisive impact on theactivities of engineers. But after witnessing the engineer’s evasive attitude in this matter, Professor
Lawrence Lessig (Stanford Law School) deplores in“The Future of Ideas (Japanese title: Commons) ” [6]that engineers will still not stand up for themselves.
And through the words of Niccolo Machiavelli, he
explains that “their support is indifferent partly fromfear and partly because they are generally incredulous,never really trusting new things unless they have tested them by experience.”
However, it did not take more than a year for this situation to change. Amid the changes of the surrounding
environment, several of the groups of engineers haveswung into motion.
The first among these groups is the IEEE (Instituteof Electric and Electronic Engineers). In the lawsuit ofFesto v. Shoketsu, which was fought for nearly ten
years, an association of 340,000 engineers submitted
an amicus brief that strongly affected the Supreme
Court’s ruling of May 2002.
The point in dispute was the definition of patent
infringement; namely, the difficult problem of determining when two technologies are deemed the same.
There have been two opposing concepts in the UnitedStates regarding this matter. In the “complete bar”
approach the accused invention is considered an

The University Researcher and Patents

infringement only when the applied technology iswithin the literal scope of the patent claims. On theother hand, the “flexible bar” approach is a scheme tocapture infringes, which may be beyond literal terms,
but are still very similar or equivalent to the patented
invention.
So where do we draw the line to define the scope ofsimilarity? This is a problem that has been occupying
the minds of the legal professions for a long time. The
Supreme Court, in its Festo decision, adopted the“foreseeable bar” approach that was proposed in theIEEE-USA’s amicus brief as a scheme to cope withthis problem. For details of the trial please refer to [3].
What I wish to stress here is the fact that a proposal,
submitted by a group of engineers in collaboration
with (technically minded) lawyers, succeeded in giving a significant clue to the solution of this difficult
legal issue.
The second group of engineers consists of European
engineers that have been organizing rallies since lastyear in protest to the EU patent policies. Under theleadership of the United Kingdom, which had full support from the United States, the European Parliament
was deliberating a directive to facilitate the installmentof software and business method patents. The passageof this legislation would mean the advent of theAmerican “Patenting Everything” Era in Europe.
It was the Foundation for a Free Information
Infrastructure (FFII), a European alliance of Linuxengineers, that stood up against this patent inflation
movement. Founded in 1999, it was a deviant group of
10,000 to 20,000 members in the spring of 2002. But
by July 2003 the membership exceeded 150,000, andtheir protests resulted in the temporarily postponementof the vote on legislation. Their supporters are still
growing in number and as of January 2004 they are anorganization of more than 300,000 members.
Holding a large rally in Brussels, FFII urged themembers of the EU Parliament not to yield to the pressure of the United States. As a result to this the directive was rejected in October 2003 (This movement
was covered daily in the European media, but not asingle word was printed in the Japanese newspapers).
To a software patent promoter this would surely
symbolize Europe’s backwardness. But even in the
United States there are many people who support thismovement. Unlike large companies armed with substantial patent portfolios, small and middle sized software companies are vulnerable to this pro-patent policy and some have to even move their business baseoffshore in order to survive.

The third example of this new movement is seen in
Japanese engineer groups. In 2002 the Intellectual
Property Association of Japan (IPAJ) was establishedto provide a forum where engineers may exchange
their views on IP issues. Researchers can now submit,
through this institution, their studies on legal mattersthat will be evaluated as academic performances (Thismeans that this paper will also be counted as a formal
academic paper). The fact that 1500 engineers andjournalist attended the 2003 Research Presentation of
IPAJ tells us the height of interest in this matter.
The Transdisciplinary Federation of Science andTechnology was also organized in 2003 by interlinking
forty academic institutions. Each institution delegateda member to the Intellectual Property Committee of
this federation, which would have been impossible for
an individual institution to stage, considering the sizeof the talent pool. It was only made possible after theestablishment of a federation of more than
60,000 members.
As it was in my case, engineers could only acknowledge the presence of the IP problem through their own
experiences. I now look forward to the day suchassertive engineers start rebuilding the lawyer-driven
society by using the Internet as one of their main
weapons.

Bibliography
[1]
[2]

[3]
[4]

[5]

[6]
[7]

[8]

Konno, H., The Direction of Patent Businesses(Japanese), Iwanami Shoten, Publishers (2002).
Konno, H. & Nakagawa, J., Protection ofSoftware/Algorithm Rights (Japanese), Asakura
Shoten (1996).
Takaoka, R, When the Patent Rule Changes(Japanese), Nikkei Business Publications, Inc. (2002).
Tamai, K., “Academic Research and Intellectual
Property in the 21st Century” (Japanese), Gakujutsu
Geppo (Japanese Scientific Monthly), 56, 9–17
(2003).
The Mainichi Newspapers, Science Environment
Division, White Paper on Science (Japanese),
Kodansha (2003).
Lessig, L., “The Future of Ideas” (Japanese translation: Yamagata, H., Commons, Shoyusha (2002).
Chisum, D., The Patentability of Algorithms,
University of Pittsburgh Law Review, 47, 1009–1019(1986).
Newell, A., “The Models are Broken! The Models are
Broken,” University of Pittsburgh Law Review, 47,
1023–1031 (1986).

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