- 1 - William Penn Chapter AIIM An Overview of Patents, and Computer- and Internet-Related Issues Presented by Steven Meyer, Esq. Woodcock Washburn LLP

- 1 - William Penn Chapter AIIM

An Overview of Patents, and Computer- and Internet-Related Issues

Presented by

Steven Meyer, Esq.

Woodcock Washburn LLP

for the William Penn Chapter AIIM

November 13, 2003


Agenda

What is and is not a Patent Purpose of a Patent What is Patentable What are the Parts of a Patent Process of Inventing and

Getting a Patent


Agenda

Internet Access to Patents The Rest of the World Software-Related Patents Patent Information on the Internet


What is not a Patent

Copyrights -- protect expressions of ideas Trade Secrets -- anything that is kept

secret by an entity for strategic or business advantage; only a secret as long as it is kept a secret.

Trademarks -- anything that identifies source of origin of a good or service in commerce

®®


What is a Patent

A grant from the US government that allows patentee to prevent another from making, selling or using the invention as it is claimed in the patent

A reference that is available to define the state of the art and to prevent others from patenting what is already known in the prior art.


Purpose of a Patent

Competitive advantage over competitors can’t make the patented invention can’t get their own patents

Use patent as money-making device by selling or licensing patent

Useful as “cross-licensing ammunition”


What is Patentable

Inventorship Utility

Process, Machine, Manufacture,Composition of Matter

Novelty Non-obviousness


The Parts of a Patent

Specification -- detailed description of preferred embodiments of invention

Claims -- numbered paragraphs at end of patent -- set forth legal metes and bounds of patent right granted

Drawings -- illustrate preferred embodiments of invention and show every element recited in claims


Process of Inventing and Getting a Patent

Do not assume what you are doing is NOT patentable.

Get a patent attorney Disclose what you are doing in

terms of structure and function Attorney can do patentability

search



Based on search, attorney opines on patentability

Decide whether to prepare and file patent application

Patent attorney drafts patent application: claims, specifications, and drawing, and sends draft to inventor(s) / client



Based on feedback, attorney prepares final draft and sends out with formal papers: declaration and assignment

Application filed with U.S. Patent & Trademark Office (PTO) in Washington, D.C.



Patent application can take 6-12 months OR MORE to receive substantive response (Office Action) -- computer-related applications can take longer.

Office Action - written report from PTO with opinion on patentability based on prior art search for claimed invention

Can allow / reject some or all claims



Applicant(s) respond to Office Action as necessary

Hopefully, after some back-and-forth, claims and application are allowed



Patent is granted....

... or not granted


What about the Rest of the World?

Most every other country in the world has a patent system AND many countries have joined multi-national patent organizations

Under Paris Convention, can foreign-file US application in any signatory country or body (EPO, WIPO)

Rules on patentability are similar, procedures can vary Examining vs. non-examining countries


BUT

US – first public disclosure of invention starts one-year grace period within which patent application must be filed (if not already), else BARRED

Rest of World (for most part) – NO grace period, for most part – public disclosure without application on file is BAR


Patent Cooperation Treaty

Simplifies and reduces the cost of obtaining international patent protection

Can file one PCT application to simultaneously seek protection for an invention in most countries

Result is NOT a patent, but . . . .


Software-Related Patents

Software-related inventions ARE patentable BUT only in certain formats

NOT patentable: Method performed by computer WITHOUT

any physical post-computational activity Data structure



Patentable: Computer-readable medium with method

thereon for being performed by computer, or with data structure

Computer running method thereon The difference? Physicality vs.

Etherealness



Why Physicality? Longstanding ‘tradition’ that patents are for things you

can see or touch, or for methods that produce things that you can see or touch For most of the 19th century a U.S. patent application had to

include a working model of the invention

This has eased significantly -


A Primer on Patentable Subject Matter

Section 101 of the Patent Statute - 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 . . .


BUT

Body of case law beginning in the 19th century established as NOT PATENTABLE inventions amounting to: Mathematical Algorithms Business Methods

Initially, many software-related patent applications were rejected on both of these bases


HOWEVER

New View - “ANYTHING UNDER THE SUN THAT IS MADE

BY MAN” can be the basis for patentable subject matter Chakrabarty, 447 U.S. 303 (1980) The Harvard Mouse case

NOT MADE BY MAN - “LAWS OF NATURE, NATURAL PHENOMENA, AND ABSTRACT IDEAS” Diehr, 450 U.S. 175 (1981)


In re Alappat

33 F.3d 1526 (Fed. Cir. 1994) (in banc) The first crack in the dam The technology at issue: A way to create a

smooth waveform display in a digital oscilloscope. To overcome the jaggedness caused by the limited resolution of a CRT display, Alappat's invention provided an algorithm for properly setting the illumination intensity of display pixels.


Holding:

The Court of Appeals reversed the Patent Office rejection of the claim under § 101 as being directed to a mathematical algorithm.

Recited claim limitations represented elements that performed a mathematical algorithm, BUT the claimed invention as a whole was directed to a combination of interrelated elements which combine to form a “new machine.”


In Summary:

An old computer is a “new machine” if it is programmed in a new way.

Such a “new machine” is patentable subject matter, even if the novelty is tied to a mathematical algorithm, if it produces a “useful, concrete and tangible result.”


State Street Bank & Trust Co. v. Signature Financial Group, Inc.

149 F.3d 1368 (Fed. Cir. 1998) The dam breaks Patent Claims - Directed to “Hub and

Spoke” Financial System that allows several mutual fund “spokes” to pool their resources in a single portfolio “hub”


Court’s Finding:

“[T]he transformation of data, representing discrete dollar amounts, 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' -- a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.”


HOLDING

“[C]ertain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, i.e., 'a useful, concrete, and tangible result.'”


ALSO

The Business Method Exception Is DEAD


SO –

A software-related inventions can be the basis for patentable subject matter if USEFUL as a practical application of technology: Production of a smooth waveform on a

rasterizer monitor. In re Alappat Transformation of electrocardiograph signals

from a patients heartbeat. State Street Bank


BUT

Courts and the PTO have interpreted State Street Bank and Alappat as still requiring software-related claims to recite something physical or something that produces a physical result



Real-World Reason for Physicality An almost irrational animosity to patent

applicants that don’t really ‘make’ anything yet make oodles of money doing it – the Microsofts of the world This despite the fact that the Microsofts are much

more likely to be patent defendants than plaintiffs



Animosity in PTO patent examination process Weak rejections based on type of subject matter Weak rejections where the Examiner can only say the

claims are ‘too broad’ Rejections where rationale is that ‘any computer can be

programmed to do that’

Fortunately, most of these rejections can be overcome, but takes time and money



NEVERTHELESS Microsoft has almost 3000 US patents, most

relating to software Microsoft intends to file 1800 US patent

applications this fiscal year



US vs. Rest of World – US – PTO and Courts have grudgingly

allowed computer-related inventions to be patentable, and only in last 5-10 years or so

Rest of World – still significant pockets of incredible hostility to computer-related inventions, almost to point of irrationality


US Patent Info on Internet

http://www.patentfetcher.com/ http://www.uspto.gov/patft/index.html

Can search by Patent Number, Inventor, Assignee, Title, Abstract, Claims, Agent, etc.


World Patent Info on Internet

http://ipdl.wipo.int/ From the World Intellectual Property

Organization http://ep.espacenet.com/

From the European Patent Office


A Word of Caution

Could be charged with ‘knowledge’ of any patent you find from searching on the Internet or elsewhere

IF you ‘know’ of a patent AND you are found to infringe AND your knowledge of the patent while infringing is proven, could be liable for WILLFUL infringement – monetary damages could be trebled


Questions???

Documents

- 1 - William Penn Chapter AIIM An Overview of Patents, and Computer- and Internet-Related Issues Presented by Steven Meyer, Esq. Woodcock Washburn LLP