The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.
The United States Patent and Trademark Office is radically updating the Patent Bar Examination starting in April 2011. Since I teach the PLI Patent Bar Review Course that has required John White and I to revise our materials. One of the new things tested will be the recently released 112 Guidelines, which are full of great information and explanation, particularly relating to computer implemented processes; what many would call software. Being the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course. So I thought I would take this opportunity to write, once again, about how to disclose computer implemented inventions to satisfy the disclosure requirements, which are embodied specifically in 35 U.S.C. § 112.
The statutory requirements for computer-implemented inventions are the same as for all inventions. That means that in order to be patentable the invention must meet the patent eligibility test in 35 U.S.C. § 101, the invention must be new (§ 102), it must be non-obvious (§ 103) and it must be adequately described (§ 112). Since the United States Supreme Court announced its decision in Bilski v. Kappos, the United States Patent and Trademark Office has continually urged patent examiners to get beyond the § 101 inquiry except in extreme cases. Prior to the Supreme Court’s Bilski decision many examiners would simply see a computer-implemented method and issue a blanket and rather non-specific rejection asserting that the invention was not patent eligible subject matter under § 101. The USPTO focus on getting past § 101 and to the meat of the invention means that such rejections are no longer the norm. It also means that the Patent Office is pushing the real question about whether an patentable invention is presented into the adequate description space pursuant to § 112. Thus, a thorough and complete description is absolutely essential when your invention relates to a computer-implemented method, whether it is software, an Internet processes or a business method.
There are three separate and distinct requirements under the adequate description requirement set forth in § 112, ¶ 1. These are the written description requirement, the enablement requirement and the best mode requirement. We will table discussion of the best mode requirement, which essentially says if you have a preference you need to disclose it. Patent reform efforts may soon eliminate that requirement from the U.S. patent laws anyway. On top of that, during prosecution of the patent application at the Patent and Trademark Office there is no way for an examiner to know if the best mode has been or has not been disclosed. Lack of a defined best mode is a litigation matter
The first paragraph of § 112 contains a written description requirement that is separate and distinct from the enablement requirement. To satisfy the written description requirement, the specification, which is typically referred to as the non-claims portion of the patent application, must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention.
The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Computer implemented inventions are often disclosed and claimed in terms of their functionality. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. Nevertheless, for computer-implemented inventions, the determination of the sufficiency of disclosure requires inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software.
Because a thorough and complete disclosure requires specific information about the hardware as well as the software there is really no practical way to any longer file quick, easy, cheap patent applications directed to computer-implemented inventions. In fact, some patent attorneys and patent agents had taken to telling inventors that software and business methods were not patentable prior to the Supreme Court Bilski decision. That was, of course, inaccurate. The Federal Circuit announced what they called the machine-or-transformation test, which required the claimed process to (1) tied to a particular machine or apparatus (machine implemented); or (2) particularly transform a particular article to a different state or thing. It was never impossible to obtain patent claims on software or business methods even after the Federal Circuit created the machine-or-transformation test, but it did get a lot harder and requires familiarity not only with easy to write method claims, but also requires detailed and sophisticated understanding of the interrelationship and interdependence of hardware and software.
Many probably know that the Supreme Court overruled the Federal Circuit in Bilski v. Kappos, at least to some extent. The Bilski invention was still held to unpatentable as an abstract idea, but the Supreme Court explained that the machine-or-transformation test was not the only test to determine whether a process is patentable. Rather, the machine-or-transformation test was said to be an important clue to patent eligibility. Because after the Federal Circuit announcement of the test it was for a period believed to be the only test, patent applications written to satisfy the machine-or-transformation test quite clearly would satisfy the nebulous looser standard that results from the Supreme Court decision in Bilski v. Kappos. So the machine-or-transformation test still remains the hallmark for patentability of processes. Satisfy the machine-or-transformation test and you are good to go.
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Tags: 112 guidelines, Bilski, bilski guidelines, business method, business methods, computer implemented methods, computer programmer, computer related inventions, computer software, computer technology, Enablement, patent application, patent drafting, Software, software patent, software patents, written description