An interview with Microsoft’s Chief Patent Counsel


Micky Minhas (pictured left) is Chief Patent Counsel for Microsoft Corporation. He is also someone that I have known for more than 20 years. Like me, Minhas is a graduate of Franklin Pierce Law Center (now part of the University of New Hampshire). What follows are excerpts from my interview with Minhas, which took place on February 20, 2015. You can read the entire interview here.

Minhas on the current state of the law and why Microsoft has adopted the European technical standard as a safe harbor approach to drafting software patent applications:

MINHAS: I think we’re in a period of uncertainty where many participants in the field are wondering where that line on subject-matter eligibility is. I view this debate as a pendulum that had State Street on one end and now it is swinging or has already swung back to the other side with Alice. That depends on how you interpret and if you see any cohesion among all the cases that we’ve seen. So I think the patent practitioner community is in a somewhat uncertain place with respect to U.S. law. In terms of our patent cases – they have been written to satisfy various standards of patentability. A few years ago we ramped up our foreign filings and recognized that we’re writing this one document, this one patent application, for so many different audiences. We started settling in on the European technical standard as a guide for how to draft, how to cover the innovation from that vantage point, in order to try to write this document that would satisfy the USPTO as well as the EPO, Chinese Patent Office, the Japanese Patent Office, and so on. So for me, what this environment means as a practitioner has more to do with how the patent is drafted and how we capture the innovation, and not really a huge difference about what the underlying innovation is or how it’s implemented.

Minhas on the risk of filing bargain basement specifications, which necessarily cannot be as robust as you need, given the legal requirements today:

MINHAS: I think that’s right. I’m a big proponent of having robust specifications in a patent. Once you start the prosecution process, art gets cited that was previously unanticipated and the market grows around whatever the innovation was originally meant to capture. You need fall-back positions, you need the ability in that application to be flexible. It has to be drafted in a way that was well thought out so it can cover all of those different embodiments. If you’re doing it for a bargain basement price, it’s going to be really hard to get that robust specification you need.

Minhas discussing why he believes the law should be agnostic with respect to whether an innovation is embodied in software versus hardware:

MINHAS: Yes. In the debate, we often hear people talk about what is the right level of protection for software patents. And I think what gets lost sometimes is that how a given company or any inventor decides to embody an invention, whether in a software product or to embody the invention in a hardware product, is often nothing more than a design choice. Whether an innovation is embodied in software or hardware feels like it should be irrelevant to whether or not it’s patentable. The law should be agnostic as to whether it’s embodied in software or hardware. We should let the debate be whether or not this invented concept is worthy of patent protection, whether it be on subject matter grounds or whether it be on 102 or 103 grounds. I don’t see that being discussed very often, but I think it should.

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