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? 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 [email protected] How to Patent Software? 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? 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? 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 Claim limitations are instructions for action. Have multiple claims. How to Patent Software? 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? 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? 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? 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? 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? 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? Must also still show Enablement §112 Novelty §102 Non obviousness §103 How to Patent Software? 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 Mayo v Prometheus How to Patent Software 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? How to Patent Software? 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 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? 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 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 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? 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 A software program to operate a mobile phone app. (Need more detailed claim limitations) (Map out claim limitations first) How to Patent Software? Claim software controls a machine or device. Can’t merely control a computer or data processor. (However CPU not Show logic diagram controlled by software gathers dust not data. CLS Bank. State the modifications/specialization of the computer in the claims.) The control function must be an important part of claimed activity (not mere add on). How to Patent Software? 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? 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 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 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 Don’t rely on claim preamble. before the transition phrase “comprising” The part that comes How to Patent Software 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 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 Computer software used to control machinery and including scientific equation in the claims How to Patent Software 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 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 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 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 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 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? 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 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 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 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 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 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) "[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 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 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 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 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 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.