Transcript Recent Trends in Software/Business Methods Patents
Software Patents – a US perspective
November 26, 2006
5/1/2020
Agenda
US Patent Law basics Software Specification Drafting Statutory Subject Matter Types of Claims for Software Conclusion 5/1/2020
Agenda
US Patent Law basics
Software Specification Drafting Statutory Subject Matter Types of Claims for Software Conclusion 5/1/2020
Sources of U.S. Patent Law
Authority: United States Constitution Clause 8 of Section 8, Article I Statute: Title 35, United States Code Implementation: Title 37, Code of Federal Regulations Interpretation: United States Court of Appeals for the Federal Circuit
Title 35, U.S.C.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
§ 101
U.S. Court of Appeals for the Federal Circuit (CAFC)
Created in 1982, by the merging of the U.S. Court of Claims and the U.S. Court of Customs and Patent Appeals.
The court hears appeals in cases from the Patent and Trademark Office, and cases relating to U.S. patent law from federal district courts.
Software Specification
Statutory Requirements Enablement Written Description Best Mode
Enablement
Legal Standard Must enable one skilled in the art to make and use the invention Practical Consideration Software varies considerably Simple graphical user interface Parallel processing architecture Operating Systems and Databases Application software for a specific domain
Enablement
Practical consideration Role of the program Interaction with the application carrying out the program Complexity of the program Should target a typical software developer • • • • • Who is a typical software developer What level of experimentation required – Normal Debugging would be considered routine Programming details not needed Source code not needed Function may be sufficient
Enablement
A skilled artisan should be able to design the code Detailed functional Spec is often available Could be a good starting point Flow charts A very good starting point for process claims Block diagrams A very good starting point for “system claims” Broad flowchart/block diagram for independent claims Zoom into individual boxes/blocks for possible dependent claims
Statutory Requirements
Written Description Convey to a skilled artisan that the inventor possessed the invention Best Mode
Agenda
US Patent Law basics Software Specification Drafting
Statutory Subject Matter
Types of Claims for Software Conclusion 5/1/2020
Recent cases relating to 35 USC §101
ATT v. Excel (1999) State Street Bank (1998) In re Beauregard (1995) Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
In re Beauregard (1995)
"Program Product" A computer readable medium with instructions for causing a particular operation on a computer is a statutory article of manufacture.
Computer readable medium + Instructions Program Product
Program Product
Computer readable medium: Floppy Disk Hard Disk (fixed or removable) CD Chips (ROM-RAM) Tape Cartridge with Integrated Circuit (IC) Internet Download?
Instructions Source code Header files Object class libraries HTML Object code Executables
State Street Bank (1998)
A computer including a mathematical algorithm or embodying a method of doing business, and directed to a useful application of the algorithm / business method, is a statutory machine.
ATT v. Excel (1999)
A method for use in a telecommunications system ... comprising the steps of: generating a message record..., and including, in said message record, a primary interexchange carrier (PIC) indicator having a value which is a function of ... .
ATT (continued)
"the judicially-defined proscription against patenting of a 'mathematical algorithm,' to the extent such a proscription still exists, is narrowly limited to mathematical algorithms in the abstract" "[I]t is now clear that computer-based programming constitutes patentable subject matter so long as the basic requirements of §101 are met."
ATT (continued)
"[T]he focus is understood to be not on whether there is a mathematical algorithm at work, but on whether the algorithm containing invention, as a whole, produces a tangible, useful, result."
Review of State Street
State Street "[T]he transformation of data ... by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces 'a useful, concrete and tangible result' " "We take this opportunity to lay this ill-conceived [method of doing business] exception to rest." 5/1/2020
New Section 101 Guidelines
What qualifies as the statutory subject matter
Ex parte Lundgren (
2088 ) Appeal No. 2003 Section 101 Guidelines issued in 2005 (Guidelines101_20052026.pdf which can be located at www.uspto.gov
) 5/1/2020
New Section 101 Guidelines
Step 1: The Examiner must determine if the invention falls in one of the enumerated statutory subject matters – namely process, machine, manufacture, or composition of matter 5/1/2020
New Section 101 Guidelines
Step 2: Is invention in an exluded subject matter – namely a law of nature, a natural phenomenon, or an abstract idea Practical Applications and results tied to real world are excluded from step 2 5/1/2020
New Section 101 Guidelines
Two alternate ways to determine if an invention is directed to a “practical application.” First – does the invention transforms an article to a different state or thing Second – does it produce a “useful,” “tangible” and “concrete” 5/1/2020
New Section 101 Guidelines
Useful – specific, substantial and credible result Tangible – real word result Concrete - repeatable 5/1/2020
Agenda
US Patent Law basics Software Specification Drafting Statutory Subject Matter
Types of Claims for Software
Conclusion 5/1/2020
Hand-held Game Unit Processing Individual Game Unit User Interface Hand-held Game Unit Processing Individual Game Unit User Interface Central Game Unit Server Central Data Store Processing
Potential Infringers/Licensees
Overall System Developers Individual Developers CGU IGU HHU DigiPok Character Developers Individual Users Pro Hand-held Unit IGU UI Pro Hand-held Unit IGU UI CGU Data Store Pro
Potential Infringers/Licensees
Individual Program Developers for New and Existing DigiPok Characters Software Sellers Communication Service Providers Hosting Service Providers Game Parlors Pro Hand-held Unit IGU UI Pro Hand-held Unit IGU UI CGU Data Store Pro
Purposes of Claim Drafting
Maximize the number of potential Direct Infringers Maximize the number of potential Contributory Infringers Infringing activity should occur entirely in US Avoid having to rely on PPAA Personal Jurisdiction in as many states as possible
Weapons in our Arsenal
System Claims A computer system for..
Covers a special purpose dedicated computer Covers a general purpose machine with software loaded in RAM A special purpose machine according to In re Allappat Method Claims A “computer-implemented” method of
Weapons in our Arsenal
In re Beauregard Claims A computer program product for enabling a computer to..
Covers any medium in which software is hard-coded System claim covers only the computer with RAM loaded and ready to perform a task.
Data Transmission Medium A computer-readable data transmission medium containing a data structure series of interactions between components of the system
Weapons in our Arsenal
Data Structures on a disk (In re Lowry claims) A computer readable medium containing a data structure for...
Data Transmission Medium A computer-readable data transmission medium containing a data structure series of interactions between components of the system
Weapons in our Arsenal
Computer with a memory comprising instructions User Interface A method in a computer system for displaying..
Methods based on interactions with the computer Communication Method Sequence of events in a typical session
Agenda
US Patent Law basics Software Specification Drafting Statutory Subject Matter Types of Claims for Software
Conclusion
5/1/2020
5/1/2020
THANK YOU
Chidambaram S. Iyer Partner, Sughrue Mion PLLC 2100 Pennsylvania Ave Washington DC 20037 [email protected]
1-202-775-7542