How to Patent Software? It is simply ridiculous that after 40 years of debate, we still do not have...

How to Patent Software?How to Patent Software?

““It is simply ridiculous that It is simply ridiculous that after 40 years of debate, we after 40 years of debate, we

still do not have an answer to still do not have an answer to the simple question of the simple question of

whether (or when) software is whether (or when) software is patentable.” patentable.”

Dennis Crouch Dennis Crouch Patently OPatently O blog blog


Remember Remember EnablementEnablement!! Court invalidates Wyeth’s patent on Court invalidates Wyeth’s patent on §112 §112

Enablement Enablement for failing to disclose how for failing to disclose how drug is made.drug is made.

Wyeth argues a clever lab tech could Wyeth argues a clever lab tech could synthesize and screen compound.synthesize and screen compound.

Broad claim has higher burden of Broad claim has higher burden of enablement and high number of routine enablement and high number of routine procedures can create undue procedures can create undue experimentation.experimentation.

Unanimous Summary Judgment in Federal Circuit Claim reads administer an "antirestenosis Unanimous Summary Judgment in Federal Circuit Claim reads administer an "antirestenosis effective amount of rapamycin effective amount of rapamycin


Houstonpatentlaw.comHoustonpatentlaw.com

[email protected]@houstonpatentlaw.com


You don’t patent lines of code.You don’t patent lines of code.

Write claims modeled after logic flow Write claims modeled after logic flow diagrams.diagrams.

Logic flow diagrams can be attached Logic flow diagrams can be attached to specification as drawings.to specification as drawings.

NO YES

NO YES

FIG. 6

Begin a new trip

4

-3

Get time offset between UTC time

and user’s local time

COLLECT UPLOADED FILE INFORMATION

Read a new point from the uploaded file

Get street names and posted speed limits (Fig. 9)

Calculate acceleration for the trip

(FIG. 8)

Finished reading

uploaded file? Save information

about the trips to the database

Does a new trip begin?

(FIG. 7)

Identify violations (FIG.10)

Calculate DSR (FIG.15)

NO

YES

FIG. 8

CALCULATE ACCELERATION FOR A TRIP

Get next pair of points

35-5

Get elapsed seconds between

points

Calculate change in speed

Calculate Acceleration.

Trip finished?

35-4


PatentsPatentsTitleTitle

Specification (description-enablement)Specification (description-enablement)

Drawings (integrated into the Drawings (integrated into the specification)specification)

Abstract (150 word limit)Abstract (150 word limit)

CLAIMS (CLAIMS (Most important, define Most important, define invention and supported by the invention and supported by the specification & drawingsspecification & drawings))


Claim: A one sentence statement of the invention.Claim: A one sentence statement of the invention. Claim includes limitations.Claim includes limitations. Starts with Preamble “A method for …(state Starts with Preamble “A method for …(state

purpose)” “An apparatus for …”purpose)” “An apparatus for …” Transition phrase “comprising”Transition phrase “comprising” Limitations “using a CPU to activate a sensor…;”Limitations “using a CPU to activate a sensor…;”

““sending a signal from the sensor;”sending a signal from the sensor;” ““recording data to the CPU.”recording data to the CPU.”(To practice the invention, these events (To practice the invention, these events

must occur. They are must occur. They are notnot optional.) optional.)

How to Patent SoftwareHow to Patent Software

Claim limitations are instructions for Claim limitations are instructions for action.action.

Have multiple claims.Have multiple claims.


Questions related to patenting Questions related to patenting medical diagnostics related to medical diagnostics related to patenting software.patenting software.

§101 Patent Eligibility§101 Patent EligibilityAbstract Idea?Abstract Idea?Physical Phenomena?Physical Phenomena?Natural Law?Natural Law?

Claim step doing things other that natural law or standard medical practice. Have process include Claim step doing things other that natural law or standard medical practice. Have process include affirmative steps. Have computer complete non-mental step. Use system claims to tie various affirmative steps. Have computer complete non-mental step. Use system claims to tie various components or devices together, including computer using specialized programscomponents or devices together, including computer using specialized programs

How to Patent software?How to Patent software?

Obstacle is whether software is Obstacle is whether software is patent eligible. patent eligible. §101§101Natural lawNatural lawAbstract ideaAbstract ideaNatural phenomenaNatural phenomena

Must show eligibility in claimsMust show eligibility in claimsWrite the claims firstWrite the claims first


The Supreme Court reasoned that laws of The Supreme Court reasoned that laws of nature and natural phenomena fall outside nature and natural phenomena fall outside the statutory categories because those the statutory categories because those categories embrace "categories embrace "the basic tools of the basic tools of scientific and technological work."scientific and technological work." Gottschalk v. BensonGottschalk v. Benson,, 409 U.S. 63, 67, 93 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). S.Ct. 253, 34 L.Ed.2d 273 (1972). Abstractness, also a disclosure problem Abstractness, also a disclosure problem addressed in the Patent Act in section 112, addressed in the Patent Act in section 112, also places subject matter outside the also places subject matter outside the statutory categories. statutory categories. Research Corp Research Corp Technologies v. MicrosoftTechnologies v. Microsoft (Fed. Cir. 2010) (Fed. Cir. 2010)


The Supreme Court did not presume to The Supreme Court did not presume to provide a rigid formula or definition for provide a rigid formula or definition for abstractness. abstractness. See, e.g., See, e.g., BilskiBilski,, 130 S.Ct. at 130 S.Ct. at 3236 (3236 (The Court has "never provide[d] The Court has "never provide[d] a satisfying account of what a satisfying account of what constitutes an unpatentable abstract constitutes an unpatentable abstract ideaidea." (Stevens, J., concurring)). Instead, ." (Stevens, J., concurring)). Instead, the Supreme Court invited this court to the Supreme Court invited this court to develop "other limiting criteria that further develop "other limiting criteria that further the purposes of the Patent Act and are not the purposes of the Patent Act and are not inconsistent with its text." inconsistent with its text." Id.Id. at 3231. at 3231.


29. 29. ApparatusApparatus for the halftoning of color for the halftoning of color images comprising a comparator for images comprising a comparator for comparing, on a pixel-by-pixel basis, a comparing, on a pixel-by-pixel basis, a plurality of color planes of said color image plurality of color planes of said color image against against a blue noise maska blue noise mask in which the in which the blue noise mask is comprised of a random blue noise mask is comprised of a random non-deterministic, non-white noise single non-deterministic, non-white noise single valued function which is designed to valued function which is designed to provide visually pleasing dot profiles when provide visually pleasing dot profiles when thresholded at any level of said color thresholded at any level of said color images, wherein an output of said images, wherein an output of said comparator is used to produce a halftoned comparator is used to produce a halftoned image. image. Research Corp Technologies v. Research Corp Technologies v. MicrosoftMicrosoft (Fed. Cir. 2010) (Fed. Cir. 2010)


1. A 1. A machinemachine comprising a computer comprising a computer readable storage device which stores a readable storage device which stores a dither matrix for use in halftoning image dither matrix for use in halftoning image information and a comparator responsive information and a comparator responsive to said computer readable storage device, to said computer readable storage device, said dither matrix comprising at least one said dither matrix comprising at least one array, said at least one array, when array, said at least one array, when thresholded at a number of levels thresholded at a number of levels produces a number of dot profiles, a produces a number of dot profiles, a plurality of said number of dot profiles plurality of said number of dot profiles each having a power spectrum each having a power spectrum substantially characteristic of a blue noise substantially characteristic of a blue noise power spectrum for the level at which power spectrum for the level at which such dot profile is produced.such dot profile is produced.


Must also still show Must also still show

Enablement Enablement §112§112

Novelty §102Novelty §102

Non obviousness §103Non obviousness §103


CLS BANK INTERNATIONAL v. ALICE CLS BANK INTERNATIONAL v. ALICE CORPORATION PTY. LTD (May 10, CORPORATION PTY. LTD (May 10, 2013)2013)

10 Judges can’t decide if software is 10 Judges can’t decide if software is patentable.patentable.

Financial Services/Computer Financial Services/Computer Software caseSoftware case

Quotes medical diagnostics caseQuotes medical diagnostics case Mayo v PrometheusMayo v Prometheus


Law has changed.Law has changed. It was enough to show that the It was enough to show that the

software produced a tangible and software produced a tangible and concrete result.concrete result.

This has been over ruled.This has been over ruled. Existing software patents may not be Existing software patents may not be

enforceable. enforceable.


Mayo v. Prometheus Labs (2012)Mayo v. Prometheus Labs (2012) Case does not involve computersCase does not involve computersPatented blood test to “indicate” need for Patented blood test to “indicate” need for

additional dosage (or not) of thiopurine.additional dosage (or not) of thiopurine. Is it patent eligible or mere natural law?Is it patent eligible or mere natural law?


Therefore, the question was Therefore, the question was "whether the "whether the claimsclaims do do significantly more than simply significantly more than simply describe these natural relations"; describe these natural relations"; did they "add did they "add enoughenough" to the " to the natural law to render the claimed natural law to render the claimed processes patent eligible?processes patent eligible?

Claims are key. Write them firstClaims are key. Write them first


Method of optimizing therapeutic Method of optimizing therapeutic efficacyefficacy

(a) (a) administeringadministering a drug a drug

(b) (b) determiningdetermining the drug level the drug level

wherein the level less than X wherein the level less than X indicates a need to increase dosage indicates a need to increase dosage subsequently administered andsubsequently administered and

wherein the level greater than Y wherein the level greater than Y indicates a need to decrease the indicates a need to decrease the dosage subsequently administered.dosage subsequently administered.


Limitations "administering" and Limitations "administering" and "determining" steps were "determining" steps were insufficiently limiting or inventive insufficiently limiting or inventive to confer patent eligibility.to confer patent eligibility.

(Didn’t direct patentee to do (Didn’t direct patentee to do enough beyond natural enough beyond natural law/abstract idea)law/abstract idea)


Because methods for making Because methods for making such determinations were well such determinations were well known in the art, this step simply known in the art, this step simply tells doctors to engage in well-tells doctors to engage in well-understood, routine, understood, routine, conventional activity previously conventional activity previously engaged in by scientists in the engaged in by scientists in the field. field.


Suggestion: Suggestion: If Mayo v. Prometheus If Mayo v. Prometheus utilized a device to test blood for utilized a device to test blood for metabolite and metabolite and directdirect whether to whether to administer additional dosage (or administer additional dosage (or not) based on test results, it not) based on test results, it would have been patentable.would have been patentable.

Why: 1. Operating a machineWhy: 1. Operating a machine2. …2. …Determinative step, directing action Steps in addition to Natural LawDeterminative step, directing action Steps in addition to Natural Law

3. …3. …Stating more than administer practical knowledgeStating more than administer practical knowledge

How to Patent SoftwareHow to Patent Software For example, the "administering" and "determining" For example, the "administering" and "determining"

steps in steps in Mayo Mayo might have appeared to be concrete might have appeared to be concrete

limitations representing true human contributions to limitations representing true human contributions to

the claimed methods; it is difficult to see how giving a the claimed methods; it is difficult to see how giving a

particular particular man-made drugman-made drug to a patient or to a patient or drawing drawing

and testing bloodand testing blood could be considered purely could be considered purely

abstract or preordained. Yet the Court held that those abstract or preordained. Yet the Court held that those

steps failed to render the claims patent eligible steps failed to render the claims patent eligible

because, as a practical matter, they were necessary because, as a practical matter, they were necessary

to every practical use of what it found to be a natural to every practical use of what it found to be a natural

law and therefore were not truly limiting. law and therefore were not truly limiting.


Activities that are human involvement Activities that are human involvement are not limitations removing claim are not limitations removing claim from natural law or abstract idea.from natural law or abstract idea.

Mental steps do not create or contribute to patentabitlyMental steps do not create or contribute to patentabitly

““Bare Bare field of use limitationfield of use limitation will not will not work.work.

Example: “…determining if an Example: “…determining if an additional dosage of Thiopurine is to additional dosage of Thiopurine is to be administered;”be administered;”Must integrate field of use into claim limitations. It won’t work in the PreambleMust integrate field of use into claim limitations. It won’t work in the Preamble


A software program to operate a A software program to operate a mobile phone app.mobile phone app.

(Need more detailed claim (Need more detailed claim limitations)limitations)

(Map out claim limitations first)(Map out claim limitations first)

How to Patent Software?How to Patent Software? Claim software Claim software controls a machinecontrols a machine or or

device. device. Show logic diagramShow logic diagram

Can’t merely control a computer or data Can’t merely control a computer or data processor. processor. (However CPU not controlled by (However CPU not controlled by software gathers dust not data. CLS Bank. software gathers dust not data. CLS Bank. State the modifications/specialization of the State the modifications/specialization of the computer in the claims.)computer in the claims.)

The control function must be an The control function must be an important part of claimed activity (not important part of claimed activity (not mere add on).mere add on).


Claim the software controls the Claim the software controls the transformation of mattertransformation of matter such a such a molding synthetic rubber.molding synthetic rubber.

Another example: change in the Another example: change in the formulation of a compound.formulation of a compound.

Issue: Is dissolving a solid enough?Issue: Is dissolving a solid enough? Are mixing two solutions enough?Are mixing two solutions enough? YES per USPTO Guidelines More than changing positionYES per USPTO Guidelines More than changing position


Claim your invention as a Claim your invention as a systemsystem comprising multiple devices comprising multiple devices (limitations) including a controlling (limitations) including a controlling software or program code.software or program code.

Claim computer readable storage Claim computer readable storage medium containing software medium containing software described in method steps.described in method steps.


System claim is a listing of the System claim is a listing of the mechanisms that make the invention mechanisms that make the invention work.work.

A system comprising:A system comprising:a) a pulse oximetera) a pulse oximeterb) a data storage device containing data b) a data storage device containing data of a patient’s pulse at rest; andof a patient’s pulse at rest; andc) a processor containing an algorithm c) a processor containing an algorithm for evaluating the measure pulse with for evaluating the measure pulse with the stored pulse data.the stored pulse data.

SampleSample 1. A method for rating driver behavior and operating 1. A method for rating driver behavior and operating

performance utilizing recorded time related data of performance utilizing recorded time related data of motor vehicle operation comprising:motor vehicle operation comprising:(a) electronically recording time marked data at regular (a) electronically recording time marked data at regular periodic intervals comprising periodic intervals comprising

engine start;engine start;vehicle speed; vehicle speed; engine stop;engine stop;

(b) uploading the data to a CPU(b) uploading the data to a CPU; ; (c) determining an excess speed event by the steps (c) determining an excess speed event by the steps comprisingcomprising

(i) determining a first time marked data point recording (i) determining a first time marked data point recording speed in excess of selected limits;speed in excess of selected limits;(ii) determining any sequentially recorded data points of (ii) determining any sequentially recorded data points of speed in excess of selected limits to determine a time speed in excess of selected limits to determine a time duration of the excess speed event;duration of the excess speed event;(iii) evaluating the amount of excess speed for each (iii) evaluating the amount of excess speed for each sequentially recorded data point;sequentially recorded data point;(iv) evaluating the speed event based upon the time (iv) evaluating the speed event based upon the time duration and the amount of the speed in excess of the duration and the amount of the speed in excess of the limit; limit;

Sample claim page 2Sample claim page 2

(d) repeating step c for each next non-sequential data point to (d) repeating step c for each next non-sequential data point to determine a separate excess speed event;determine a separate excess speed event;

(e) determining the duration of the trip;(e) determining the duration of the trip;

(f) evaluating the excess speed events in relation to the trip (f) evaluating the excess speed events in relation to the trip duration; andduration; and

(g) recording the evaluation of the speed events, the trip duration (g) recording the evaluation of the speed events, the trip duration and trip identifier.and trip identifier.


1.1. A method of syncing two or more audio A method of syncing two or more audio tracks to a video stream using a tracks to a video stream using a computer, the method comprising;computer, the method comprising;

• adding at two audio tracks to a digital adding at two audio tracks to a digital library;library;

• processing the audio tracks with a data processing the audio tracks with a data processing algorithm;processing algorithm;

• adding a video stream to the digital adding a video stream to the digital library;library;

• syncing said video stream to said audio syncing said video stream to said audio tracks using a media syncing algorithmtracks using a media syncing algorithm


Achieve limitation in claim to clearly Achieve limitation in claim to clearly not monopolize the abstract idea not monopolize the abstract idea subject of the program code.subject of the program code.

Field of use limitations probably not Field of use limitations probably not sufficient, e.g. blood dialysis. sufficient, e.g. blood dialysis. Integrate limitation Integrate limitation

into body of claim. Talk only of blood dialysisinto body of claim. Talk only of blood dialysis

Don’t rely on claim preamble.Don’t rely on claim preamble. The part that comes The part that comes

before the transition phrase “comprising”before the transition phrase “comprising”


a patent-eligible claim must a patent-eligible claim must include one or more substantive include one or more substantive limitationslimitations that, in the words of that, in the words of the Supreme Court, add the Supreme Court, add "significantly more" to the basic "significantly more" to the basic principle, with the result that the principle, with the result that the claim covers significantly claim covers significantly less.less. J. J. LourieLourie

CLS BankCLS Bank (May 10, 2013) quoting from (May 10, 2013) quoting from Mayo v. Mayo v. PrometheusPrometheus (2012) (2012)

This is importantThis is important..


Strategic structuring of invention Strategic structuring of invention claim to include claim to include limitations/actions of invention limitations/actions of invention process that restrict the claim to process that restrict the claim to a subpart of the abstract idea or a subpart of the abstract idea or natural law. natural law.

This is the definition of your This is the definition of your invention! invention!


Explain limited use of natural law Explain limited use of natural law or abstract idea in specification.or abstract idea in specification.

Use claim limitations to show Use claim limitations to show specific use for a specific specific use for a specific purpose.purpose.


While an abstract idea, law of While an abstract idea, law of nature, or mathematical formula nature, or mathematical formula could not be patented, an could not be patented, an applicationapplication of a law of nature or of a law of nature or mathematical formula to a known mathematical formula to a known structure or process may well be structure or process may well be deserving of patent protection."deserving of patent protection."

Diamond v. Diehr, 450 U.S. at 187Diamond v. Diehr, 450 U.S. at 187 Computer software used to control machinery and including scientific equation in the claimsComputer software used to control machinery and including scientific equation in the claims


1. Method of operating a press with a 1. Method of operating a press with a computercomputer, , comprising:comprising: (a) initiating an interval timer in said (a) initiating an interval timer in said computercomputer,,

(b) constantly determining the temperature,(b) constantly determining the temperature, (c) constantly providing the (c) constantly providing the computercomputer with the with the

temperature, temperature, (d) repetitively calculating in the (d) repetitively calculating in the computercomputer, the , the Arrhenius equation for reaction time which isArrhenius equation for reaction time which is ln v=CZ+xln v=CZ+x

(e) repetitively comparing in the (e) repetitively comparing in the computercomputer each each calculation of the total required cure time calculation of the total required cure time calculated with the Arrhenius equation and said calculated with the Arrhenius equation and said elapsed time, andelapsed time, and

(f) opening the press.(f) opening the press.


It is inappropriate to dissect the It is inappropriate to dissect the claims into old and new elements and claims into old and new elements and then to ignore the presence of the old then to ignore the presence of the old elements in the analysis. This is elements in the analysis. This is particularly true in a process claim particularly true in a process claim because a new combination of steps because a new combination of steps in a process may be patentable even in a process may be patentable even though all the constituents of the though all the constituents of the combination were well known and in combination were well known and in common use before the combination common use before the combination was made. was made. J. RadarJ. Radar

Part of the court urges looking at the claims as a whole. Look at the limitations.Part of the court urges looking at the claims as a whole. Look at the limitations.


A court cannot go hunting for A court cannot go hunting for abstractions by ignoring the abstractions by ignoring the concrete, palpable, tangible concrete, palpable, tangible limitationslimitations of the invention the of the invention the patentee actually claims. J. Radarpatentee actually claims. J. Radar

Claim limitations are important.Claim limitations are important.Broad claims are good but risk patent coverage.Broad claims are good but risk patent coverage.


Diamond v. Diehr (1981) has not been Diamond v. Diehr (1981) has not been overruled and is still cited with overruled and is still cited with approval.approval.

Diehr used a mathematical concept but did "not seek to preempt the use of that equation. Rather, they [sought] only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.“

Claim limitations are important if not key i.e., what you are not claiming as your invention.Claim limitations are important if not key i.e., what you are not claiming as your invention.


Diehr the claimed process Diehr the claimed process incorporating the Arrhenius equation incorporating the Arrhenius equation also called for steps including also called for steps including ""constantly measuring the actual constantly measuring the actual temperature inside the mold," a temperature inside the mold," a step that was said to be new in step that was said to be new in the artthe art..

Therefore Diehr had novelty, a Therefore Diehr had novelty, a §102 §102 topic.topic.

This is important. If you can show something novel, this is good. Consider a patent search.This is important. If you can show something novel, this is good. Consider a patent search.


When assessing computer implemented When assessing computer implemented claims, while the mere reference to a claims, while the mere reference to a general purpose computer will not save general purpose computer will not save a method claim from being deemed too a method claim from being deemed too abstract to be patent eligible, abstract to be patent eligible, the fact the fact that a claim is limited by a tie to a that a claim is limited by a tie to a computer is an important computer is an important indication of patent eligibilityindication of patent eligibility. . See See BilskiBilski, 130 S. Ct. at 3227., 130 S. Ct. at 3227.

This is meaningless guidance. It doesn’t help. Bilski deals in hedge funds.This is meaningless guidance. It doesn’t help. Bilski deals in hedge funds.


The district court concluded that Alice's The district court concluded that Alice's method claims "are directed to an method claims "are directed to an abstract ideaabstract idea of employing an of employing an intermediary to facilitate simultaneous intermediary to facilitate simultaneous exchange of obligations in order to exchange of obligations in order to minimize risk." minimize risk." Id. Id. at 243. at 243.

the parties agreed that Alice's claims the parties agreed that Alice's claims should all be interpreted to require a should all be interpreted to require a computer including at least "a processor computer including at least "a processor and memory." and memory." CLS BankCLS Bank, ,


First, the requirement for First, the requirement for computer implementation could computer implementation could scarcely be introduced with less scarcely be introduced with less specificity; the claim lacks specificity; the claim lacks any any express language to define the express language to define the computer's participation.computer's participation.

Criticism of claim language in CLS BankCriticism of claim language in CLS Bank

Therefore spell out what the computer Therefore spell out what the computer does. does.

How to Patent SoftwareHow to Patent Software 33. A method of exchanging obligations as between parties, each 33. A method of exchanging obligations as between parties, each

party holding a credit record and a debit record with an exchange party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:predetermined obligations, the method comprising the steps of:

(a) creating a shadow credit record and a shadow debit record for (a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory each stakeholder party to be held independently by a supervisory institution from the exchange institutions;institution from the exchange institutions;

(b) obtaining from each exchange institution a start-of-day (b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;balance for each shadow credit record and shadow debit record;

(c) for every transaction resulting in an exchange obligation, the (c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party's shadow supervisory institution adjusting each respective party's shadow credit record or shadow debit record, credit record or shadow debit record, allowing only these allowing only these transactions that do not result in the value of the shadow debit transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at record being less than the value of the shadow credit record at any timeany time, each said adjustment taking place in chronological , each said adjustment taking place in chronological order; and at the end-of-day, the supervisory institution order; and at the end-of-day, the supervisory institution instructing ones of the exchange institutions to exchange credits instructing ones of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutionsinvariant obligations placed on the exchange institutions..


for every transaction resulting in an exchange for every transaction resulting in an exchange obligation, the supervisory institution adjusting each obligation, the supervisory institution adjusting each respective party's shadow credit record or shadow respective party's shadow credit record or shadow debit record, debit record, allowing only these transactions allowing only these transactions that do not result in the value of the shadow that do not result in the value of the shadow debit record being less than the value of the debit record being less than the value of the shadow credit record at any timeshadow credit record at any time, each said , each said adjustment taking place in chronological order; and adjustment taking place in chronological order; and at the end-of-day, the supervisory institution at the end-of-day, the supervisory institution instructing ones of the exchange institutions to instructing ones of the exchange institutions to exchange credits or debits to the credit record and exchange credits or debits to the credit record and debit record of the respective parties in accordance debit record of the respective parties in accordance with the adjustments of the said permitted with the adjustments of the said permitted transactions, the credits and debits being transactions, the credits and debits being irrevocable, time invariant obligations placed on the irrevocable, time invariant obligations placed on the exchange institutionsexchange institutions..


Bilski v. Kappos, Supreme Court Bilski v. Kappos, Supreme Court (10-30-2010)(10-30-2010)Business method claims invalidated.Business method claims invalidated.No computer process claims (though No computer process claims (though clearly utilized)clearly utilized)Invalidate some(?) software and Invalidate some(?) software and many business method patents.many business method patents.Retains machine-transformation test. Retains machine-transformation test.


Research Corp Technologies v. Research Corp Technologies v. Microsoft (Fed. Cir. 2010) Post BilskiMicrosoft (Fed. Cir. 2010) Post Bilski

A functional and palpable application A functional and palpable application in computer technologyin computer technology

Some claims require physical Some claims require physical componentscomponents

Research Corp v. Microsoft (page 2)Research Corp v. Microsoft (page 2)

"[I]nventions with specific "[I]nventions with specific applications or improvements to applications or improvements to technologies in the marketplace are technologies in the marketplace are not likely to be so abstract that they not likely to be so abstract that they override the statutory language and override the statutory language and framework of the Patent Act"; andframework of the Patent Act"; and

The incorporation of algorithms and The incorporation of algorithms and formulas does not prevent patent formulas does not prevent patent eligibility.eligibility.


USPTO Guidelines to ExaminersUSPTO Guidelines to ExaminersEach claim reviewed as a whole.Each claim reviewed as a whole.

Examiners not to focus solely on Examiners not to focus solely on §101.§101.

No court has found patent eligibility where No court has found patent eligibility where machine-transformation test not met.machine-transformation test not met.

Does not repeat Court language that Does not repeat Court language that computer is a clue of patentable subject computer is a clue of patentable subject matter.matter.

Repeats quote from Diehr, i.e., applications Repeats quote from Diehr, i.e., applications of abstract idea can be patentable of abstract idea can be patentable (machine-transformation test).(machine-transformation test).


USPTO GuidelinesUSPTO GuidelinesFactors that point to patent eligibility of Factors that point to patent eligibility of

abstract idea are:abstract idea are:

Claim limitations of practical application of Claim limitations of practical application of idea.idea.

Claim to suspect abstract idea involves a Claim to suspect abstract idea involves a particular machine.particular machine.

Claim limitations describe particular Claim limitations describe particular elements of machine.elements of machine.

Integral use of machine in operation of Integral use of machine in operation of method.method.


USPTO GuidelinesUSPTO GuidelinesTransformation of particular substance.Transformation of particular substance.Type or extent of transformation.Type or extent of transformation.Need more than change in location.Need more than change in location.Describe substance specifically and not Describe substance specifically and not

generically.generically.

Abstract idea evidenced by mental Abstract idea evidenced by mental activities.activities.

How to Patent SoftwareHow to Patent SoftwareSUMMARYSUMMARY

Have software do something, control a Have software do something, control a machine or process.machine or process.

Make the software a part of a multi-Make the software a part of a multi-component component systemsystem..

State real State real limitationslimitations on the purpose/use on the purpose/use of the software. Claim less than broad of the software. Claim less than broad abstraction-law of nature.abstraction-law of nature.


Don’t have the software merely Don’t have the software merely indicate a condition but have it indicate a condition but have it control something.control something.

Don’t limit software/claim to Don’t limit software/claim to algorithm, show integral application algorithm, show integral application of algorithm to method.of algorithm to method.

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