Patent Law Practice Center

The Demise of a High-Tech Economy

In a blog post from March 2014, Marian Underweiser, IBM’s Counsel for IP Law Strategy & Policy, wrote:

Computer implemented inventions, particularly in software, form the basis for innovation not only in the technology products we use every day, such as laptops and smartphones, but in everything from cars to surgical techniques to innovations that increase efficiency and production in factories. Strong and effective patent protection for these innovations in the U.S. has fostered a fertile environment for research and development and, as a result, the US is the undisputed leader in the software industry.

But will the U.S. be able to maintain its position as the leader in the software industry under a patent regime that seems openly hostile toward software innovators?

Unfortunately, many simply won’t believe what IBM says because, as one of the most innovative companies in the world, they are also the top patent filer ever year. IBM is a company that spends $6 billion annually, year after year, on research and development, so they have a bias. But the Government Accountability Office does not have a vested interest and, in a 2013 report, they concluded that between 50% and 60% of all patent applications filed seek protection for innovation related to software in one way or another. That means that at least half of all innovations could potentially be lost due to the Supreme Court’s failure to follow the enacted patent statutes and instead act as a super legislature that despises all things patent. The Alice decision will likely be viewed in years to come as a devastating decision for high-tech entrepreneurs and start-ups.

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Yahoo! Gets Fantasy Sports Software Patent

Online fantasy sports games, such as fantasy football, baseball, hockey, golf, and automobile racing, are extremely popular. In fact, this past weekend marks the start of the playoffs in my fantasy football league. Unfortunately, I did not make the playoffs this year. Darn injuries and under-performing “superstars”!!!

In any event, it is not at all uncommon to file fantasy sports related patents and patent applications. I myself have had occasion to draft a patent application (soon to be allowed) on a fantasy sports invention. So, a fantasy sports-related patent or application always grabs my attention.

If you are not familiar with fantasy sports, allow me to provide a bit of a primer. A user creates a fantasy team comprised of players that are associated with real-life players. The user’s fantasy team may compete against fantasy teams of other users, with specific scoring rules. When your player does something good, such as scores a touchdown or kicks a field goal, positive points are scored. When your player does something negative in real life, such as an fumble or throws an interception, points are subtracted.

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Apple Patents Digital Handshake Between Devices

On April 23, 2013, Apple obtained U.S. Patent No. 8429407, titled Digital Handshake between Devices.

Creating a secure connection between two devices that are in close physical proximity allows users to share a great deal of digital content. Instead of showing a webpage or document to another person by turning the screen towards them, a user could choose to send the info directly to another device, preventing people from having to crowd around a small device screen to see. The same is true of videos and pictures. Also, some applications allow users to interact with other nearby devices for money transfers or to play a game.

Apple was granted the right to protect the system of creating a secured connection between devices laid out in this patent. It would allow an iPhone to create a bar code or alphanumerical code that can be scanned by the camera of another device. Once the “digital handshake” has taken place, other phones can also scan the key that was generated by the device to connect with the other devices as well.

As Claim 1 describes, Apple has gained legal protections over:

“A method for establishing a communications path between a first device and a second device, comprising: capturing an image of the second device using the first device; extracting, from the image, a first key associated with the second device; selecting from a plurality of processes a process to be used for generating a digital handshake key; generating the digital handshake key using the selected process with the first key; and establishing a communications path with the second device using the digital handshake key.” (more…)

Patent Drafting: Defining Computer Implemented Processes

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. (more…)