Source Code versus Object Code: Patent Implications for the Open Source Community
![handle is hein.journals/sccj18 and id is 241 raw text is: SOURCE CODE VERSUS OBJECT CODE:
PATENT IMPLICATIONS FOR THE OPEN
SOURCE COMMUNITY
Daniel Lin,t Matthew Sag,tt and Ronald S. Lauriettt
I. INTRODUCTION
Since the Federal Circuit's 1995 decision in In re Beauregard
and the United States Patent and Trademark Office's (PTO)
subsequent issuance of its Guidelines for Computer Related
Inventions (PTO Guidelines) in 1996, computer programs
embodied in a computer-readable medium are now considered
patentable subject matter under 35 U.S.C. § 101 by the PTO.1
Specifically, patent claims, now commonly referred to as Beauregard
claims, that recite an invention embodied in a computer-readable
medium are readily allowed by the PTO as long as they satisfy the
novelty, non-obviousness, and utility requirements of 35 U.S.C. §§
102 and 103.2 However, the Federal Circuit has never definitely
concluded whether such embodied computer programs are indeed
t Daniel Lin is an associate at Skadden, Arps, Slate, Meagher & Flom LLP in Palo
Alto, CA. He can be reached at dlin@skadden.com.
t Matthew Sag is an associate at Skadden, Arps, Slate, Meagher & Flom LLP in Palo
Alto, CA. He can be reached at msag@skadden.com.
ttt Ron Laurie is a partner and the head of the IP Strategies and Transactions Practice at
Skadden, Arps, Slate, Meagher & Flom LLP in Palo Alto, CA. He can be reached at
rlaurie@skadden.com. The authors would like to thank David Hansen, Fred Kim, Gene Su,
Joseph Yang, and participants at Information Insecurity: Protecting Data in the Digital Age at
Santa Clara University for their helpful discussions and comments.
I. In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) (The Commissioner now states 'that
computer programs embodied in a tangible medium, such as floppy diskettes, are patentable
subject matter under 35 U.S.C. § 101 ....'); Examination Guidelines for Computer Related
Inventions, 61 Fed. Reg. 7478, 7481 (Patent & Trademark Office, U.S. Dep't of Commerce)
(Feb. 28, 1996) [hereinafter Examination Guidelines] (When functional descriptive material is
recorded on some computer-readable medium it becomes structurally and functionally
interrelated to the medium and will be statutory in most cases.). See also 35 U.S.C. § 101
(2000).
2. 35 U.S.C. §§ 102-103.](ViewImageLocal?handle=hein.journals/sccj18&div=16&collection=&method=preview&ext=.png&size=3)
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Source Code versus Object Code: Patent Implications for the Open Source Community
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