The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) recently announced that it will host its next Software Partnership Meeting on Thursday, October 17, 2013, at the U.C. Berkeley School of Law in Berkeley, California.

The purpose of the meeting, among other things, is to allow senior USPTO officials to provide an overview of the executive actions related to patent assertion entities and U.S. innovation initiatives called for in President Obama’s executive actions on June 4th. See also, Obama on Patent Trolls — Much Ado About Nothing. Other topics open for discussion will include feedback from the previous Software Partnership roundtables held in Silicon Valley and New York; a summary of the written comments received in response to the January Federal Register notice announcing the Software Partnership; proposed next steps by the USPTO; and an interactive discussion session on strategies to improve claim clarity, such as the use of glossaries in patent applications.

If you cannot attend the meeting live, the event will also be viewable live online through the USPTO website. For those who do wish to attend live, the USPTO announcement explains that space will be quite limited and, as a result, RSVPs must be received by September 27, 2013.

I will be most interested in the report from the call for comments in the Federal Register. At the beginning of January 2013, when the USPTO published the call for comments to get input from stakeholders, I wrote:

Never has the word “stakeholders” been quite so ominous. I certainly hope the anti-patent “stakeholders” don’t show up with actual stakes, or perhaps pitch-forks, and proclaim themselves ready to storm the castle!

See USPTO Seeks Comments on Software Patent Quality.

It seemed to me, when the USPTO posted the call for comments, it was an invitation for all the patent-haters to come out in droves. What has transpired in the ensuing months makes me even more worried. For example, some in Congress want to make “loser pay” provisions apply only to patent owners, and President Obama and the White House have upped the ante by vilifying patent trolls and then taking the extraordinary step of nullifying the exclusion order won by Samsung against Apple at the ITC. Ironically, Apple won an exclusion order against Samsung the following week, which seems to place President Obama in a bit of a pickle. Will he also nullify the exclusion order against Samsung? If he doesn’t, it will look like he is engaging in blatant protectionism, or perhaps cronyism, or both.

In any event, if this Partnership Meeting does not wind up being a patent-hating free-for-all it will only be because of the specific questions asked by the USPTO in the Federal Register Notice. The questions for which the USPTO seeks input are heavy-duty “inside baseball” patent issues, and the USPTO has already cautioned against using the comment process to air irrelevant grievances. They have also stated in the Federal Register Notice that this is not going to be a consensus-building exercise.

The questions the USPTO specifically asked in the Federal Register Notice were:

1. When means-plus-function style claiming under 35 U.S.C. 112(f) is used in software-related claims, indefinite claims can be divided into two distinct groups: claims where the specification discloses no corresponding structure; and claims where the specification discloses structure but that structure is inadequate. In order to specify adequate structure and comply with 35 U.S.C. 112(b), an algorithm must be expressed in sufficient detail to provide means to accomplish the claimed function. In general, are the requirements of 35 U.S.C. 112(b) for providing corresponding structure to perform the claimed function typically being complied with by applicants and are such requirements being applied properly during examination?
2. In software-related claims that do not invoke 35 U.S.C. 112(f) but do recite functional language, what would constitute sufficient definiteness under 35 U.S.C. 112(b) in order for the claim boundaries to be clear?
3. Should claims that recite a computer for performing certain functions or configured to perform certain functions be treated as invoking 35 U.S.C. 112(f) although the elements are not set forth in conventional means-plus-function format?

Let the fun begin! I won’t be in San Francisco for the event live, but I suspect I will be glued to my computer watching it live via the Internet.

Tags: patent, patents, Software, software patent, software patents, USPTO

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