BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

Thursday, January 31, 2013, 9:17 AM

Let’s continue with insights about software patenting, from Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011).  The Federal Circuit found that “mere manipulation or reorganization of data” does not satisfy the machine or transformation test (commonly called MOTT).  We can interpret this as saying the court did not believe that the claimed method was anything more than manipulation or reorganization of data, and thus neither performed a transformation of any kind nor required a machine to do so.  I believe this is a troubling precedent.  Extending this to an illogical conclusion, it could be argued that all computer software does exactly this, manipulates and reorganizes data, which viewpoint would invalidate all computer software patents.  Yet, 35 USC §101 Inventions Patentable states, in part, “Whoever invents or discovers any new and useful process, machine… or any new and useful improvement thereof, may obtain a patent therefor…”  We may well ask, at what point does a method expressed as computer software become a “new and useful process” and therefore patentable?  At what point does such a method become more than mere manipulation or reorganization of data?  Is it when an algorithm has been applied to the data, and that algorithm is new?  But, to return to the court ruling, don’t algorithms (even when new) just manipulate and reorganize data?  Perhaps it is when the result of applying the algorithm produces something new and unexpected.  We can’t claim a result, and we can’t claim all possible means of obtaining a result (this would be a single means claim), but we can claim a method and the steps thereof, that produces a result.  When these claimed steps as a whole are novel, and the subject matter is in a patentable class, the method as claimed should be patentable.  This should apply whether or not the method can be expressed as software.  Tying the method to a machine may be helpful in terms of MOTT, but the court has ruled this is not the only test.  This is where the art of claim writing and arguing the claims before the United States Patent and Trademark Office comes in.

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Tuesday, January 29, 2013, 10:27 AM

Patent Practitioners and Writing

Patent practitioners are prolific writers.  Consider that we write patent applications and responses to Office actions all day long, pretty much every day.  Each of these documents is reviewed, revised and (based upon client instruction) sent to the United States Patent and Trademark Office.  Often, each of these documents is perhaps the length of a term paper for a college class, a chapter in a nonfiction book or a technical magazine article.  Yet, for all this writing, sometimes the allowability or rejection of a patent comes down to interpretation of a single word, a phrase, or a subparagraph in a claim, and arguments about same.  Given this, why do we do so much writing?  We write so much, in part, because we do not know in advance which word, phrase or subparagraph (if any) is going to be the most important one in a claim should the claim be litigated.  We write claims sets that we believe are robust and will survive examination and possible tests in courts.  We write dependent claims that surround what we believe are the point or points of novelty in an invention.  The entire claim set must be supported, in the specification of the patent application.  So, we write specifications that explain the details of the invention and that allow claims to be amended during the process of examination, i.e., during patent prosecution.  This is why we write so much in this profession.  I enjoy writing, which is one of the reasons I chose to be a patent agent.

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Tuesday, January 22, 2013, 9:24 AM

Point of novelty

In an invention, what is a point of novelty?  Claims for an invention, in a patent application, should capture one or more points of novelty that show the invention is not something previously known or an obvious variation of what is known.  The legal definitions and arguments about what is known, what is obvious, and what constitutes an invention span volumes of essays, articles, books and court cases.  Colloquially, a point of novelty is that which is different, that which sets apart the invention from other articles, devices, apparatuses, systems, methods, materials and so on.  A point of novelty is that which makes us react, upon seeing the invention, by saying, “Oh, that is clever!”  If we can capture the “that” in a claim, we have well represented the point of novelty, and the claim is ready for inclusion in a patent application.  There are other concerns, of course, such as representing the proper scope of the invention in the claims, and positioning the claims against known art.  But, if a claim does not capture one or more points of novelty, the claim is likely off the mark and should be reconsidered.

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Friday, January 18, 2013, 8:52 AM

Insights about software patenting: Cybersource Corp. v. Retail Decisions

What are some recent insights about software patenting?  In Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011), the United States Court of Appeals, Federal Circuit looked at US Patent 6,029,154, which is directed to a method for detecting fraud in a credit card transaction over the Internet.  The court ruled “Because claims 2 and 3 attempt to capture unpatentable mental processes (i.e., abstract ideas), they are invalid under §101.”  35 USC §101 covers statutory subject matter eligibility, and informs us that we cannot patent an abstract idea.  However, there is a judicial exception, in that we can (sometimes) patent a practical application of an abstract idea (for example, an algorithm or math, applied to a specific method or apparatus).  We may interpret the court ruling as advising that a practical application of an abstract idea is not patentable if the claim language is written too abstractly.  A claim that is directed to a more concrete set of steps or actions might be patentable.  In other words, when claiming software as a method, we may ask ourselves are the steps or actions which are being claimed described in a sufficiently concrete manner, or are they described in an abstract manner?  There is a sliding scale between abstract and concrete, and the courts seem uncomfortable with this, as applied to methods and particularly to software.  More discussion is merited.

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Thursday, January 10, 2013, 9:12 AM

Drawings support for claim amendments

Claims in a patent application are often amended (with deletions and/or additions) during examination.  In order to avoid adding new matter, there must be support for the claim amendment in the patent application as filed.  Sometimes, an examiner will require literal support for the amended claim language.  This means the examiner will sometimes reject a claim amendment because the actual wording for the amendment is not found in the patent application as filed.  What can we do when this claim language in the amendment is important for the advancement of the application?
One option is to search more carefully in the application as filed, to find suitable language for an amendment.  Usually, this process was carefully followed during the writing of the claim amendment, and sometimes there just aren’t the right words available in the application as filed.
Another option is to state, in an argument, that the drawings clearly show the feature or action that we are claiming in the amendment.  Sometimes this argument suffices.  A variation on this is to amend the specification with a description of the feature or action in the drawing, provided this is clearly shown.  Then, the claims can be amended using a subset of the wording in the specification amendment.  This procedure relies on the drawings and establishes consistent language in the amended specification and the amended claims.

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Software patenting – method, tangible media, and system claims

What are some of the differences, when patenting software, between a claim for a method (which a computer, programmed with the software executes) and a claim for a non-transient, tangible medium (or media) having instructions which, when executed by a computer, cause the computer to perform a method?  What about system claims, for a system that is configured to execute a method?  All of these can be used to claim software, but each has its own scope for what is protected by an issued patent.  Tangible medium claims protect against an infringer selling DVDs, CD-ROMs or software downloads with your software.  Method claims protect against infringers practicing your method, i.e., running your software, and indirectly protect against infringers selling your software so that others can run your software (this is contributory infringement).  System claims protect against infringers setting up a system that runs your software.  Whether your claim set has one method claim and two system claims, or two method claims and one tangible media claim and so on, may depend on what you want to protect.  Or, there may be other factors such as what type of system the software runs on, that may affect your decision as to how to claim.  For example, consumer software would benefit from protection provided by a tangible media claim.  On the other hand, software that would usually be bundled into a machine (e.g., as firmware) might be best represented as a system claim.  Examples of this include industrial controllers, automotive engine controllers, smart appliances and the like.

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Examiner interviews during patent prosecution

When is it worthwhile to request and conduct an Examiner interview?  Many patent practitioners shy away from talking directly with Examiners, perhaps out of concern they might say something impulsively that can be used against the client.  Some practitioners prefer to hold Examiner interviews frequently, in the hopes that issues can be clarified and explored directly with the Examiner.

 I find these interviews useful in cases where an Office action appears way "off the mark", which hints the Examiner may not understand a cited reference or the present claims in an application.  Another benefit of the interviews is gauging the mindset of the Examiner, which can give rise to insights as to what type of approach in terms of arguments or claim amendments might work better than a seemingly dead-ended path.

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Thursday, January 3, 2013, 2:06 PM

A Picture Is Worth 1000 Words in the Hi-Tech Patent World

A well-written patent application might have 6000 words and six drawings.  Remarkably, this roughly corresponds to the old adage, “A picture is worth 1000 words.”  Imagine trying to write a patent application without any drawings.  Alternatively, imagine submitting patent applications with only drawings, but no text.  We need both.  The drawings support the text, the text supports the drawings.  Both drawings and text support the claims, and the claims define the invention.

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