Collecting the information necessary to prepare a patent application covering a computer related invention can be quite challenging.  Typically, most computer related inventions today relate at least in some way to software, which is at the core of the challenge.  This software challenge stems from the fact that the software code is not protected by patent law, but rather how the software operates is protected.  This means that the description needs to be one that can be replicated by others regardless of how they choose to write code to accomplish the necessary tasks.

A patent does not need to be a blueprint, but it needs to direct.  For example, you do not need to provide the code for the scripts, although that is certainly one way to make sure it is described adequately.  What you need to do is provide enough description so that someone who is “skilled in the art,” which is a legal term that refers to those who would be expected to possess the knowledge and understanding appropriate to comprehend the invention, can make and use the invention after reading the patent application.  In order to satisfy the patent law description requirements the explanation of the software in a patent application must give the programmer enough information to be able to sit down and know how to write the code having only read the description contained in the patent application.

UPDATE: See Sadly, Invention Submission Alive & Well

The United States Patent and Trademark Office has announced that it is adopting new rules relating to a variety of issues that impact who can engage in representation of clients before the PTO, both on the patent and the trademark side of the Office. These new rules, which will go into effect on September 15, 2008, will end the reign of terror brought to us by unscrupulous invention submission companies and other invention scams. Three cheers for the Patent Office!

The rule that strikes at the heart of the invention submission companies is new Rule 11.5(b), which states:

Practice before the Office includes, but is not limited to, law-related service that comprehends any matter connected with the presentation to the Office or any of its officers or employees relating to a client’s rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for the grant of a patent or registration of a trademark, or for enrollment or disciplinary matters. Such presentations include preparing necessary documents in contemplation of filing the documents with the Office, corresponding and communicating with the Office, and representing a client through documents or at interviews, hearings, and meetings, as well as communicating with and advising a client concerning matters pending or contemplated to be presented before the Office. Nothing in this section proscribes a practitioner from employing or retaining non-practitioner assistants under the supervision of the practitioner to assist the practitioner in matters pending or contemplated to be presented before the Office.

Over the years I have received quite a number of e-mail inquiries and telephone calls from inventors who are looking for information and advice. Typically, the initial communication starts off with the inventor saying that they have an invention that they know will be well received in the market and that they are looking for a patent attorney who can represent them. They request that a patent attorney call them as soon as possible to move forward. This is a red flag for a patent attorney and understanding why will help you become a more sophisticated consumer of legal services.

John McCain has a broad and cohesive vision for the future of American innovation. His policies will provide broad pools of capital, low taxes and incentives for research in America, a commitment to a skilled and educated workforce, and a dedication to opening markets around the globe. He’s committed to streamlining burdensome regulations and effectively protecting American intellectual property in the United States and around the globe.

John McCain Will Push For Greater Resources For The Patent Office. The increased workload at the United States Patent and Trademark Office threatens to undermine the quality of our patent examinations. New resources to hire and train quality examiners are needed to ensure timely, predictable and effective patent review.

On Monday, August 4, 2008, the United States Court of Appeals for the Second Circuit issued an important decision that sets the stage for Cable companies and Satellite TV providers to sell technology that will allow for the archiving of recorded television shows in digital format.  This decision overrules an earlier decision by a federal district court that ruled in 2007 that Cablevision could not pursue the technology because it would infringe the copyrights owned by content creators.  While this decision is a big victory for Cable and Satellite TV companies I would suspect that this matter will ultimately make its way to the United States Supreme Court before it can finally be put to rest.  My prediction is that if and when it does reach the US Supreme Court the decision of the Second Circuit will be upheld.

I am frequently asked the same or similar question with respect to patent applications by independent inventors — How much information do I have to include in a patent application?  Sometimes this question is prefaced by something like — I have the concept but I am no scientist and I don’t know how to actually create the invention.

The first thing to understand is that to be an inventor you need to have an invention.  This is a critical starting point because you cannot patent or protect an idea or a concept.  True, all inventions start with an idea, but an idea is not something that can be protected by any form of intellectual property protection.  Said another way, you simply cannot patent an idea or concept.  You also cannot copyright or trademark an idea or concept, but those are topics for another day.