MR. WARREN:  Mr. Chairman and other distinguished representatives
of the Department of Commerce:

My name is Jim Warren.

First, I am a Member of the Board of  Directors  of  Autodesk,  a
multi_national  software  company  specializing in computer_aided
design.  As a 4OO million dollar company, we have  been  recently
identified  as  the  sixth  largest  PC software publisher in the
world.  I am presenting its recommendations.

Secondly, I have been a computer professional  since  1968,  have
founded  multi_million  dollar  companies  in Silicon Valley, and
have held numerous leadership roles in personal computing  essen-
tially since its inception in the 197Os, in the mid 197Os.

I was founding President of the Microcomputer Industry Trade  As-
sociation,  received  the  Electronic Frontier Foundation's first
Pioneer Award, hold graduate  Degrees  in  Computer  Engineering,
Medical Information Science, Mathematics and Statistics.

I was founding Editor of microcomputing's first$tware periodical,
was founder of the first, first free newspaper and the first sub-
scription newspaper, InfoWorld, and founding host of television's
oldest  Computer  Weekly, as well as founding the world's largest
public microcomputer conventions and chairing them in  the  first
decade of the industry.

My remarks are excerpted from three parts of my  prepared  state-
ment;  namely, principles, pragmatics and some specific recommen-
dations.  I am not speaking as an intellectual_property attorney.
I am speaking as a technological innovator with proven experience
and as a long_time observer of this industry.  I've  written  ap-
proximately  6O  to 7O articles about the future of this industry
that have received wide circulation, in excess of 22O,OOO  copies
per issue.

We all know that software is somehow different  from  all  tradi-
tional inventions.  The difference __ but how does it differ from
the devices that are surely what the framers of the  Constitution
envisioned  when  they mandated patent protection? The difference
is(t all traditional inventions enhance  our  physical  capabili-
ties, whereas software mimics the mind and enhances our intellec-
tual capabilities.  This is what makes  software  different  from
all patentable devices and this is what justifies sui generis.

Let me define what software is for the purpose of our discussion,
based  on its functionality, its utility, the useful character of
its art:  software is what occurs between stimulus and  response,
with  no  physical  incarnation  other than as representations of
binary logic.

The fundamental question is:  Do we want to permit  the  monopoly
possession  of  everything  that  works like logical intellectual
processes?  I hope not.

The mind has always been sacrosanct.  The claim that intellectual
processes  of logical procedures that do not primarily manipulate
devices, as in Diamond vs. Diehr, can be possessed  and  monopol-
ized, simply extends greed and avarice much too far.

What frightens and infuriates so many of us  about  software  pa-
tents  is  that  they  seek to monopolize o,ntellectual processes
when their representation and performance is aided by machine.

I  respectfully  object  to  the   title   of   these   hearings,
"Software_Related  Inventions".   The  title illustrates an inap-
propriate and seriously_misleading bias.  In fact, in more than a
quarter century as a computer professional and observer and writ-
er in this industry, I don't recall ever hearing or reading  such
a  phrase __ except in the context of legalistic claims for mono-
poly where the claimants were trying to twist  the  tradition  of
patented  devices  in order to monopolize the execution of intel-
lectual processes.

To pragmatics.

There is absolutely no evidence whatsoever, not  a  single  iota,
that  software  patents  have  promoted or will promote progress.
And I provide examples in my paper.

Of the thousands of programmers I have known in the last  quarter
century,  I have never heard a single one say they didn't develop
a program because they could not monopolize its functionality.

Of the thousands of programs I have known a0  as  a  multi_decade
industry  observer, I don't know of a single one that was innova-
tive enough to promote progress, much less perhaps qualify for  a
patent as a useful art, that couldn't find funding.

The system was not broken when there were no software patents.

Now, however, there is growing  evidence  that  software  patents
have begun to harm and deter progress.  And I provide a number of
examples, including the company for which I  am  speaking,  Auto-
desk,  holds  some number of software patents and has applied for
others, which, of course, remain secret  under  current  US  law.
However, all are defensive and an infuriating waste of our techn-
ical talent and financial resources made necessary  only  by  the
lawyers' invention of software patents.

Autodesk has faced  at  least  17  baseless  patent  claims  made
against  it  in recent years and has spent over a million dollars
defending itself, with millions more certain  to  pour  down  the
bottomless  patent  pit.   Fortunately, we have the financial and
technical resources to r4f such claims.  We rebutted all but  one
of the claims even before the patent holders could file frivolous
lawsuits and will litigate the remaining claim to conclusion.

Your Office has issued at least 16 patents that we have  success-
fully  rebutted  and we never paid a penny in these attempted ex-
tortions that your Office assisted, but it is an  enormous  waste
of resources that could better be invested in useful innovation.

COMMISSIONER LEHMAN:  Could I ask a question about that?

MR. WARREN:  Out of your time or my time?

COMMISSIONER LEHMAN:  It can be out of your time  __  out  of  my

MR. WARREN:  That's what I was __ oh, okay, thank you.

COMMISSIONER LEHMAN:  We have a procedure for  re_examination  of
patents.  It sounds to me like what happened here __

MR. WARREN:  I was about to recommend that.

COMMISSIONER LEHMAN:  Well, we have that now, you know. In  other
words, were those 16 __

It sounds to me like what happened here is that people  basically
threatened you with lawsuits and, you know, you got 8 lawyers all
geared up and basically scared  them  away  before  you  went  to
court,  but  left  it there.  Whereas, one of the things that you
could have done, under our existing procedures, is that you could
have come into the Patent and Trademark Office and petitioned for
re_examination of those patents and have them held invalid.

Did you consider doing that, and, if you didn't, why?

MR. WARREN:  I am certain that we did the least  expensive  thing
that we could do.

And I have no specifics.  You'll have to talk to our legal eagles
on  that,  or have to ask our legal folks on that. But this is an
enormous __

Incidentally we not only invested our financial resources, we in-
vested our technical talent.  Instead of them creating something,
they had to go research prior art to fight  off  these  frivolous
claims.  That ain't right.

Back to my prepared remarks.

That does not reward innovation nor  promote  progress.  Further-
more, software patents can probably deter progress, and I provide
a number of examples.

Finally, there is an intense danger that software  patents  pose  to
our industry's global competitiveness, and I detail how.

To specific recommendations.  Okay, this is the goodies.

Let us agree that those who hold software patents probably prefer
patent  protection __ IBM, I think, is the largest holder and Mi-
croSoft is the second largest __ and those who spend  their  time
and resources creating technical innovation and national progress
rather than creating patent applications and litigation  probably
prefer unfettered freedom to innovate.

Let us also agree that the Constitutional intent __  very  impor-
tant  __ is to "promote progress".  So let us disregard who wants
what for self_benefit and act on  principle.   We  propose  as  a
principle  that those processes that are exclusively intellectual
and exclusively algorithmic, even when mimicked by machine,  must
not be monopolized.

We offer two recommendations, the second having 12 parts,  so  to
speak, the 12 Apostles of redress of the current problems.

The first recommendation@ssue a finding that software, as I  have
defined  it,  implements intellectual processes that have no sub-
stantive physical incarnation,  processes  that  are  exclusively
analytical, intellectual, logical and algorithmic in nature; plus
the clearly stated Constitutional intent to declare that  __  and
use those findings to declare that the Patent Office acted in er-
ror when it granted software patents; declare that  software  pa-
tents  monopolize intellectual and algorithmic processes and also
fail to fulfill the Constitutional mandate to  promote  progress;
declare that software as a mimic of the mind cannot be patented.

Second, until and only until software  patents  are  definitively
prohibited,  reject  or freeze all such applications pending con-
clusive action on the following 12 points:

(1) Redress serious errors of previous administrations.

Issue a finding that there have been extensive and serious errors
of  judgment in a large percentage of software patents granted in
the past and immediately recall all software patD  for  re_review
and possible revocation.

Encourage industry assistance.  And I offer some  comments  about
how and some legislation that's needed.

Make the information available via the Internet and solicit  max-
imum public input.

(2)  Mandate disclosure upon filing.

Issue a finding that it unconstitutionally suppresses progress to
hide  software  threats  in secret filings for one to five years.
Note that most of the other high_tech nations with which we  com-
pete require disclosure upon filing or very soon thereafter.

Require disclosure upon filing or at least within, say,  9O  days
of  filing.   This  will give software developers essential early
warning of possible danger.  It will also allow them  to  provide
badly  needed prior art, perhaps years before the patent might be
granted and become a threat.

Let it be the responsibility of those seeking lengthy  monopolies
to  defend  the  truly  novel  and truly non_obvious character of
their innovations in a public patent_application review  process.
Do  not continue to fH that responsibility onto all other practi-
tioners after the fact.

(3)  Recommendation 3.  Require  disclosure  of  complete  source
code and documentation upon filing.

That will slow this stuff down.

Reiterate that the __ (Laughter).

That was not in my prepared remarks.

Reiterate that the major function of the patent system is to  as-
sure  complete  public disclosure of innovation in order that all
may benefit and progress be promoted.

Issue a finding that software patents require full disclosure  of
complete  original  source  code and complete internal documenta-
tion.  Then require its disclosure,  preferably  upon  filing  or
perhaps  9O  days  later,  but  at least upon the granting of the
software patent.  Note that this implements the "best  mode"  re-

Software patent disclosures in the past have often failed to ful-
fill  this  minimum  requirement; therefore, require such disclo-
sures from all present software patent holders.   Those  who  de-
cline  to  so disclose in a timely manner must have their patents
invalidatLs being improperly granted.

(4)  Prohibit filings after any public exposure.

Issue a finding that most of the nation's  high_tech  competitors
prohibit  patent  filings after any public exposure of their pro-
posed innovation.

Further, find that patentable innovation in software is  unclear,
vaporware is rampant, early disclosure is common, sharing of dis-
closed innovation is almost universal,  and  possibly  infringing
development  using  such  disclosures is almost inescapable.  Use
that finding to prohibit any filing after the date of any  public

Recommendation (5)  Reduce requirements for challenging  software

Find that the evaluation  of  what  constitutes  new,  novel  and
un_obvious innovation in software is highly subjective and essen-
tially impossible for the Patent Office to judge, since  the  Of-
fice does not have the 5O years of prior art that exists.

Change the standard for invalidating software patents from a  re-
quirement  for  "clear and convincing evidence" to no presumption
of validity at allPwhich is usually the case if the experience of
well_funded  defendants who can do the adequate research, such as
Autodesk, is any measure.

(6)  Reduce the protection period.

Issue a finding that  17_year  software  protection  patents  are
clearly  unreasonable where, in an industry where significant in-
novation can often be created  in  months,  most  innovation  has
minimal  costs  relative to traditional inventions, manufacturing
and distribution is trivial, products can be shipped within weeks
of  being finalized, great profits can be attained in less than a
year, the life of a product typically is only a  few  years,  and
all  of the growth of the industry, from inception to Diamond vs.
Diehr in 1981,  was  barely  three  times  the  17_year  monopoly

Shorten the one_time protection period to no more than, say,  two
years.  Sui generis is justified.

(7)  Replace __ wow, I'm still in the green __ or no I'm  not  __
or have I run out of time?

COMMISSIONER LEHMAN:  I was giving you your maximum.

MR. WARREN:  Oh, sorry Tt that.  May I finish the  other  remarks
very quickly?

(7)  Replace first_to_invent with first_to_ file.

Issue a finding that this nation  is  almost  alone  in  granting
monopolies on the basis of first_to_invent.  If the patent system
is justified and public disclosure has merit, then  encourage  it
by     awarding    monopolies    only    on    the    basis    of
first_to_file_and_disclose, but, of course, retain the  principle
that prior art always invalidates a patent.

(8)  Declare that useful intellectual  communications  cannot  be

This is the look and feel issue.  We don't  want  to  protect  it
under patent any more than we want to protect it under copyright,
when they are not primarily aesthetic and not primarily  artistic
and  not  primarily for controlling equipment. And I address that
more properly.

(9)  To promote continuing progress, mandate cross licensing.

If you  are  going  to  grant  monopolies  over  our  algorithmic
processes,  then  at  least  mandate  that  we can use them under
license from the monopolists.  And I sXst how.

In particular, we suggest mandatory licensing rates  not  exceed-
ing,  say,  5 percent of a licensee's profits prorated across all
cross licensers for a given product.

(1O)  Provide a nationally accessible prior_art collection.

I'm sure you heard that from 5O other people.  If you don't  have
the resources to do it __ and make it available across the Inter-
net __ if you don't have the resources  to  do  it,  then  inform
Congress  that  you are unable to perform your assigned functions
without endangering national progress.

(11)  Exercise much greater due diligence with regard to software

You must stop leaving it up to endless threats,  defenses,  court
battles  among  those  who can afford them to ascertain which few
patents might be valid, which is too often determined only by the
relative wealth of the combatants.

(12)  And finally, create a large public advisory body, a commis-
sion  of  volunteers who are technologists, those who produce the
nation's     progress     in     this     area,     not      just

Seek them from a broad spectrum of software publishers, great and
small producers, including individuals.

These recommendations require Congressional action, and this  in-
dustry  has  been politically asleep, but continuing software pa-
tent debacles are beginning to awaken it, most especially its in-
novators, and we certainly have the financial resources, the com-
munication tools and the tenacity to seek effective redress as we
finally organize and choose to act.

However, the needed Congressional action can be  greatly  facili-
tated  by  supportive  recommendations  from  your Office. Please
draft them soon.  But not cloistered inside the Washington  Belt-
way, rather with extensive Internet circulation of all drafts and

Let us stand on each others' shoulders rather than on  each  oth-
ers' toes.

Thank you.

COMMISSIONER LEHMAN:  Thanks very much, Mr. Warren.  We gave  you
a few extra minutes there __

MR. WARREN:  I appreciate that.

COMMISSIONER LEHMAN: __ because of my intervention.

I want to tha`ou for coming out here.  I think we'll look at your
recommendations  very  carefully  and I think with regard to this
idea of, first of all, I hope you will appreciate the  fact  that
we're not inside the Beltway right now __

MR. WARREN:  Every two days outside we appreciate.

COMMISSIONER LEHMAN:  __ we have a little capacity  to  innovate,
even  Washington  lawyers can come up with a few good ideas every
once in awhile.

And secondly, I think that we do need to have  closer,  a  better
means  for  communicating  directly with the innovative community
and not just for patent lawyers, and so we need to  do  a  little
innovative  work to figure out the mechanisms for doing that our-
selves and I really appreciate your comments.  Thanks.

MR. WARREN:  Ask us for help __ I mean all of the industry __ and
we will help.

Thank you.

COMMISSIONER LEHMAN:  Next I'd like to  ask  Mr.  Michael  Glenn,
from  the Intellectual Property Section of the State Bar of Cali-
fornia, to step forward.  Maybe he can defend the lawyers.

Back to The San Jose Index

Forward to Mary O'Hare and Michael Glenn