Patent Law Practice Center

A Conversation about Software Patents

On March 25, 2013, I spoke on the record with Eric Gould Bear (left) about software innovations, software patents and the trials and tribulations of litigating software patents long after they were first written.

Bear is an inventor on over 100 patents and patent applications in the software space. He has spent over 25 years working with numerous Fortune 500 corporations with respect to assisting them in the creation of new user experiences. He is also a founder of the design studio MONKEYmedia, which recently launched a patent infringement lawsuit against Apple, and which also has a patent infringement lawsuit pending against Sony, Disney and others. Bear is also a testifying software expert witness.

During our one-hour discussion, which published in three parts on IPWatchdog.com, we discussed a number of interesting topics. What appears below are some of the highlights of our discussion.

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Algorithm Disclosure: Best Practices in Software Patents

Essentially, means-plus-function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claim technique that describes structure(s) within the body of the claim itself.

A claim term is functional when it recites a feature by what it does rather than by what it is. There is nothing intrinsically wrong with the use of such claim language, although it is becoming more and more apparent (if it wasn’t already apparent enough) that the Federal Circuit frowns upon means-plus-function claiming.

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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…)

Bilski’s Impact On Software Patents

This post comes courtesy of our friends at DLA Piper, J.D. Harriman (Partner in DLA Piper’s Los Angeles office) and Robert Buergi (Senior Associate in DLA Piper’s Silicon Valley office).

Bilski is a favorable decision for software patents—it broadened patentable processes beyond those that meet the machine or transformation test, and expressly recognized that even some business methods are patentable.  Overall, Bilski will allow properly drafted software method claims to enjoy patentability for years to come.

In the majority opinion, the Court discussed the country’s shift from the Industrial Age to the Information Age, the former being characterized by traditional machines and the latter being characterized by, for example, computer programs.  Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010).  Determining patentability of processes using solely the machine or transformation test “would create uncertainty as to the patentability of software.” Id. (more…)

The Role for Open Source in Paradigm Shifting Innovation

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

My writings about open source and software patents have earned me a special place in the hearts and minds of those who harbor irrational hatred of software patents. But I am here to tell you that open source is not all bad and, in fact, should be embraced. Open source, however, is hardly something new to the patent community. Perhaps it is better to say that where open source software is heading is nothing new, and it will come as a shock to those who hate patents, but patents will be completely necessary in order for the open source community to continue to advance and live up to its full potential.

Of course, many in the open source community simply do not want patents and would rather they go away altogether. They choose to believe that “innovation” is synonymous with “independent creation,” which is just straight up intellectually dishonest. In order to innovate one must create a new device or a new process. Simply stated, copying the work of others is not innovative; and neither is ignoring what others have done and independently creating something with careless disregard of whether it is new or used. (more…)