How to Patent Software?
“It is simply ridiculous that
after 40 years of debate, we
still do not have an answer to
the simple question of
whether (or when) software
is patentable.”
Dennis Crouch Patently O blog
How to Patent Software?
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Remember Enablement!
Court invalidates Wyeth’s patent on §112
Enablement for failing to disclose how
drug is made.
Wyeth argues a clever lab tech could
synthesize and screen compound.
Broad claim has higher burden of
enablement and high number of routine
procedures can create undue
experimentation.
Unanimous Summary Judgment in Federal Circuit Claim reads administer an "antirestenosis
effective amount of rapamycin
How to Patent Software?
Houstonpatentlaw.com
dmcewing@houstonpatentlaw.com
How to Patent Software?
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You don’t patent lines of code.
Write claims modeled after logic flow
diagrams.
Logic flow diagrams can be attached
to specification as drawings.
COLLECT UPLOADED
FILE INFORMATION
Get time offset
between UTC time
and user’s local time
NO
Finished
reading
uploaded
file?
Begin a new
trip
4
YES
Save information
about the trips to
the database
Read a new-3
point from the
uploaded file
NO
Does a new
trip begin?
(FIG. 7)
YES
Calculate acceleration for
the trip
(FIG. 8)
Get street names and
posted speed limits
(Fig. 9)
Identify violations
(FIG.10)
Calculate DSR
(FIG.15)
FIG. 6
CALCULATE ACCELERATION FOR A TRIP
YES
Trip
finished?
35-4
NO
Get next pair of
points
35-5
Get elapsed
seconds between
points
Calculate change
in speed
Calculate
Acceleration.
FIG. 8
How to Patent Software?
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Patents
Title
Specification (description-enablement)
Drawings (integrated into the
specification)
Abstract (150 word limit)
CLAIMS (Most important, define
invention and supported by the
specification & drawings)
How to Patent Software?
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Claim: A one sentence statement of the
invention.
Claim includes limitations.
Starts with Preamble “A method for …(state
purpose)” “An apparatus for …”
Transition phrase “comprising”
Limitations “using a CPU to activate a sensor…;”
“sending a signal from the sensor;”
“recording data to the CPU.”
(To practice the invention, these events
must occur. They are not optional.)
How to Patent Software
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Claim limitations are instructions for
action.
Have multiple claims.
How to Patent Software?
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Questions related to patenting
medical diagnostics related to
patenting software.
§101 Patent Eligibility
Abstract Idea?
Physical Phenomena?
Natural Law?
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 components or devices together, including computer using specialized programs
How to Patent software?
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Obstacle is whether software is
patent eligible. §101
Natural law
Abstract idea
Natural phenomena
Must show eligibility in claims
Write the claims first
How to Patent Software?
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The Supreme Court reasoned that laws of
nature and natural phenomena fall outside
the statutory categories because those
categories embrace "the basic tools of
scientific and technological work."
Gottschalk v. Benson, 409 U.S. 63, 67, 93
S.Ct. 253, 34 L.Ed.2d 273 (1972).
Abstractness, also a disclosure problem
addressed in the Patent Act in section 112,
also places subject matter outside the
statutory categories. Research Corp
Technologies v. Microsoft (Fed. Cir. 2010)
How to Patent Software?
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The Supreme Court did not presume to
provide a rigid formula or definition for
abstractness. See, e.g., Bilski, 130 S.Ct.
at 3236 (The Court has "never
provide[d] a satisfying account of
what constitutes an unpatentable
abstract idea." (Stevens, J.,
concurring)). Instead, the Supreme Court
invited this court to develop "other limiting
criteria that further the purposes of the
Patent Act and are not inconsistent with
its text." Id. at 3231.
How to Patent Software?
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29. Apparatus for the halftoning of color
images comprising a comparator for
comparing, on a pixel-by-pixel basis, a
plurality of color planes of said color
image against a blue noise mask in which
the blue noise mask is comprised of a
random non-deterministic, non-white
noise single valued function which is
designed to provide visually pleasing dot
profiles when thresholded at any level of
said color images, wherein an output of
said comparator is used to produce a
halftoned image. Research Corp
Technologies v. Microsoft (Fed. Cir. 2010)
How to Patent Software?
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1. A machine comprising a computer
readable storage device which stores a
dither matrix for use in halftoning image
information and a comparator responsive
to said computer readable storage device,
said dither matrix comprising at least one
array, said at least one array, when
thresholded at a number of levels
produces a number of dot profiles, a
plurality of said number of dot profiles
each having a power spectrum
substantially characteristic of a blue noise
power spectrum for the level at which
such dot profile is produced.
How to Patent Software?
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Must also still show
Enablement §112
Novelty §102
Non obviousness §103
How to Patent Software?
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CLS BANK INTERNATIONAL v. ALICE
CORPORATION PTY. LTD (May 10,
2013)
10 Judges can’t decide if software is
patentable.
Financial Services/Computer
Software case
Quotes medical diagnostics case
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Mayo v Prometheus
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How to Patent Software
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Law has changed.
It was enough to show that the
software produced a tangible and
concrete result.
This has been over ruled.
Existing software patents may not be
enforceable.
How to Patent Software?
Mayo v. Prometheus Labs (2012)
 Case does not involve computers
Patented blood test to “indicate” need for
additional dosage (or not) of thiopurine.
 Is it patent eligible or mere natural law?
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How to Patent Software?
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Therefore, the question was
"whether the claims do
significantly more than simply
describe these natural relations";
did they "add enough" to the
natural law to render the claimed
processes patent eligible?
Claims are key. Write them first
How to Patent Software
Method of optimizing therapeutic
efficacy
(a) administering a drug
(b) determining the drug level
wherein the level less than X
indicates a need to increase dosage
subsequently administered and
wherein the level greater than Y
indicates a need to decrease the
dosage subsequently administered.
How to Patent Software
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Limitations "administering" and
"determining" steps were
insufficiently limiting or inventive
to confer patent eligibility.
(Didn’t direct patentee to do
enough beyond natural
law/abstract idea)
How to Patent Software?
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Because methods for making
such determinations were well
known in the art, this step
simply tells doctors to engage in
well-understood, routine,
conventional activity previously
engaged in by scientists in the
field.
How to Patent Software
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If Mayo v. Prometheus
utilized a device to test blood for
metabolite and direct whether to
administer additional dosage (or
not) based on test results, it
would have been patentable.
Suggestion:
Why: 1. Operating a machine
2. …
3. …
Determinative step, directing action Steps in addition to Natural Law
Stating more than administer practical knowledge
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How to Patent Software
For example, the "administering" and
"determining" steps in Mayo might have
appeared to be concrete limitations representing
true human contributions to the claimed
methods; it is difficult to see how giving a
particular man-made drug to a patient or
drawing and testing blood could be considered
purely abstract or preordained. Yet the Court held
that those steps failed to render the claims
patent eligible because, as a practical matter,
they were necessary to every practical use of
How to Patent Software?
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Activities that are human
involvement are not limitations
removing claim from natural law or
abstract idea.
Mental steps do not create or contribute to patentabitly
“Bare field of use limitation will
not work.
Example: “…determining if an
additional dosage of Thiopurine is to
be administered;”
Must integrate field of use into claim limitations. It won’t work in the Preamble
How to Patent Software
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A software program to operate a
mobile phone app.
(Need more detailed claim
limitations)
(Map out claim limitations first)
How to Patent Software?
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Claim software controls a machine or
device.
Can’t merely control a computer or
data processor. (However CPU not
Show logic diagram
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controlled by software gathers dust not
data. CLS Bank. State the
modifications/specialization of the
computer in the claims.)
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The control function must be an
important part of claimed activity
(not mere add on).
How to Patent Software?
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Claim the software controls the
transformation of matter such a
molding synthetic rubber.
Another example: change in the
formulation of a compound.
Issue: Is dissolving a solid enough?
Are mixing two solutions enough?
YES per USPTO Guidelines More than changing position
How to Patent Software?
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Claim your invention as a system
comprising multiple devices
(limitations) including a controlling
software or program code.
Claim computer readable storage
medium containing software
described in method steps.
How to Patent Software?
System claim is a listing of the
mechanisms that make the invention
work.
A system comprising:
a) a pulse oximeter
b) a data storage device containing data
of a patient’s pulse at rest; and
c) a processor containing an algorithm
for evaluating the measure pulse with
the stored pulse data.
Sample
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1. A method for rating driver behavior and operating
performance utilizing recorded time related data of motor
vehicle operation comprising:
(a) electronically recording time marked data at regular
periodic intervals comprising
engine start;
vehicle speed;
engine stop;
(b) uploading the data to a CPU;
(c) determining an excess speed event by the steps
comprising
(i) determining a first time marked data point recording
speed in excess of selected limits;
(ii) determining any sequentially recorded data points of
speed in excess of selected limits to determine a time
duration of the excess speed event;
(iii) evaluating the amount of excess speed for each
sequentially recorded data point;
(iv) evaluating the speed event based upon the time
duration and the amount of the speed in excess of the
limit;
Sample claim page 2
(d) repeating step c for each next non-sequential data point to
determine a separate excess speed event;
(e) determining the duration of the trip;
(f) evaluating the excess speed events in relation to the trip
duration; and
(g) recording the evaluation of the speed events, the trip duration
and trip identifier.
How to Patent Software?
1. A method of syncing two or more audio
tracks to a video stream using a
computer, the method comprising;
• adding at two audio tracks to a digital
library;
• processing the audio tracks with a data
processing algorithm;
• adding a video stream to the digital
library;
• syncing said video stream to said
audio tracks using a media syncing
algorithm
How to Patent Software
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Achieve limitation in claim to clearly
not monopolize the abstract idea
subject of the program code.
Field of use limitations probably not
sufficient, e.g. blood dialysis.
Integrate limitation
into body of claim. Talk only of blood dialysis
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Don’t rely on claim preamble.
before the transition phrase “comprising”
The part that comes
How to Patent Software
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a patent-eligible claim must
include one or more substantive
limitations that, in the words of
the Supreme Court, add
"significantly more" to the basic
principle, with the result that the
claim covers significantly less. J.
Lourie
CLS Bank (May 10, 2013) quoting from Mayo v.
Prometheus (2012)
This is important.
How to Patent Software
Strategic structuring of invention
claim to include
limitations/actions of invention
process that restrict the claim to
a subpart of the abstract idea or
natural law.
This is the definition of your
invention!
How to Patent Software
Explain limited use of natural law
or abstract idea in specification.
Use claim limitations to show
specific use for a specific
purpose.
How to Patent Software
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While an abstract idea, law of
nature, or mathematical formula
could not be patented, an
application of a law of nature or
mathematical formula to a
known structure or process may
well be deserving of patent
protection."
Diamond v. Diehr, 450 U.S. at 187
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Computer software used to control machinery and including scientific equation in the claims
How to Patent Software
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1. Method of operating a press with a computer,
comprising:
(a) initiating an interval timer in said computer,
(b) constantly determining the temperature,
(c) constantly providing the computer with the
temperature,
(d) repetitively calculating in the computer, the
Arrhenius equation for reaction time which is
ln v=CZ+x
(e) repetitively comparing in the computer each
calculation of the total required cure time
calculated with the Arrhenius equation and said
elapsed time, and
(f) opening the press.
How to Patent Software
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It is inappropriate to dissect the
claims into old and new elements
and then to ignore the presence of
the old elements in the analysis. This
is particularly true in a process claim
because a new combination of steps
in a process may be patentable even
though all the constituents of the
combination were well known and in
common use before the combination
was made. J. Radar
Part of the court urges looking at the claims as a whole. Look at the limitations.
How to Patent Software
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A court cannot go hunting for
abstractions by ignoring the
concrete, palpable, tangible
limitations of the invention the
patentee actually claims. J. Radar
Claim limitations are important.
Broad claims are good but risk patent coverage.
How to Patent Software
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Diamond v. Diehr (1981) has not
been overruled and is still cited with
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.
How to Patent Software
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Diehr the claimed process
incorporating the Arrhenius equation
also called for steps including
"constantly measuring the actual
temperature inside the mold," a
step that was said to be new in
the art.
Therefore Diehr had novelty, a §102
topic.
This is important. If you can show something novel, this is good. Consider a patent search.
How to Patent Software
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When assessing computer
implemented claims, while the mere
reference to a general purpose
computer will not save a method
claim from being deemed too
abstract to be patent eligible, the
fact that a claim is limited by a
tie to a computer is an important
indication of patent eligibility.
See Bilski, 130 S. Ct. at 3227.
This is meaningless guidance. It doesn’t help. Bilski deals in hedge funds.
How to Patent Software?
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The district court concluded that Alice's
method claims "are directed to an
abstract idea of employing an
intermediary to facilitate simultaneous
exchange of obligations in order to
minimize risk." Id. at 243.
the parties agreed that Alice's claims
should all be interpreted to require a
computer including at least "a processor
and memory." CLS Bank,
How to Patent Software
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First, the requirement for
computer implementation could
scarcely be introduced with less
specificity; the claim lacks any
express language to define the
computer's participation.
Criticism of claim language in CLS
Bank
Therefore spell out what the
computer does.
How to Patent Software
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33. A method of exchanging obligations as between parties, each
party holding a credit record and a debit record with an exchange
institution, the credit records and debit records for exchange of
predetermined obligations, the method comprising the steps of:
(a) creating a shadow credit record and a shadow debit record for
each stakeholder party to be held independently by a supervisory
institution from the exchange institutions;
(b) obtaining from each exchange institution a start-of-day
balance for each shadow credit record and shadow debit record;
(c) for every transaction resulting in an exchange obligation, the
supervisory institution adjusting each respective party's shadow
credit record or shadow debit record, allowing only these
transactions that do not result in the value of the shadow debit
record being less than the value of the shadow credit record at
any time, each said adjustment taking place in chronological
order; and at the end-of-day, the supervisory institution
instructing ones of the exchange institutions to exchange credits
or debits to the credit record and debit record of the respective
parties in accordance with the adjustments of the said permitted
transactions, the credits and debits being irrevocable, time
invariant obligations placed on the exchange institutions.
How to Patent Software
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for every transaction resulting in an exchange
obligation, the supervisory institution adjusting
each respective party's shadow credit record or
shadow debit record, allowing only these
transactions that do not result in the value
of the shadow debit record being less than
the value of the shadow credit record at any
time, each said adjustment taking place in
chronological order; and at the end-of-day, the
supervisory institution instructing ones of the
exchange institutions to exchange credits or
debits to the credit record and debit record of the
respective parties in accordance with the
adjustments of the said permitted transactions,
the credits and debits being irrevocable, time
invariant obligations placed on the exchange
institutions.
How to Patent Software
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Bilski v. Kappos, Supreme Court
(10-30-2010)
Business method claims invalidated.
No computer process claims (though
clearly utilized)
Invalidate some(?) software and
many business method patents.
Retains machine-transformation test.
How to Patent Software
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Research Corp Technologies v.
Microsoft (Fed. Cir. 2010) Post Bilski
A functional and palpable application
in computer technology
Some claims require physical
components
Research Corp v. Microsoft (page 2)
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"[I]nventions with specific
applications or improvements to
technologies in the marketplace are
not likely to be so abstract that they
override the statutory language and
framework of the Patent Act"; and
The incorporation of algorithms and
formulas does not prevent patent
eligibility.
How to Patent Software
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USPTO Guidelines to Examiners
Each claim reviewed as a whole.
Examiners not to focus solely on §101.
No court has found patent eligibility
where machine-transformation test not
met.
Does not repeat Court language that
computer is a clue of patentable subject
matter.
Repeats quote from Diehr, i.e.,
applications of abstract idea can be
patentable (machine-transformation
test).
How to Patent Software
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USPTO Guidelines
Factors that point to patent eligibility of
abstract idea are:
Claim limitations of practical application
of idea.
Claim to suspect abstract idea involves a
particular machine.
Claim limitations describe particular
elements of machine.
Integral use of machine in operation of
method.
How to Patent Software
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USPTO Guidelines
Transformation of particular substance.
Type or extent of transformation.
Need more than change in location.
Describe substance specifically and not
generically.
Abstract idea evidenced by mental
activities.
How to Patent Software
SUMMARY
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Have software do something, control
a machine or process.
Make the software a part of a multicomponent system.
State real limitations on the
purpose/use of the software. Claim
less than broad abstraction-law of
nature.
How to Patent Software
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Don’t have the software merely
indicate a condition but have it
control something.
Don’t limit software/claim to
algorithm, show integral application
of algorithm to method.