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USPTO Seeks Comment on Software Patent Quality


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: January 3, 2013 @ 5:29 pm
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Earlier today in the Federal Register the United States Patent and Trademark Office (USPTO) announced that it was seeking to form a partnership with the software community to enhance the quality of software-related patents.

Say it all together — Hakuna Matada! That will be a phrase you are going to want to keep handy throughout this article. Whenever you start to get dizzy or nauseated simply say — Hakuna Matada! I find that it sometimes helps, at least momentarily.

From the “oh my gosh, no way, are they really serious” department comes an announcement that the USPTO is forming a Software Partnership that will enable stakeholders to come together through a series of roundtable discussions to share ideas, feedback, experiences, and insights on software-related patents. Never has the word “stakeholders” been quite so ominous. I certainly hope the anti-patent “stakeholders” don’t show up with actual stakes, or perhaps pitch-forks, and proclaim themselves ready to storm the castle! Hakuna Matada!

To kick-off the Software Partnership the USPTO is sponsoring two roundtable events with identical agendas, one in Silicon Valley, and the other in New York City. The Silicon Valley event will be held on Tuesday, February 12, 2013, beginning at 9 a.m. Pacific Standard Time (PST) and ending at 12 p.m. (PST). The New York City event will be held on Wednesday, February 27, 2013, beginning at 9 a.m. Eastern Standard Time (EST) and ending at 12 p.m. (EST).

The Patent Office says that each roundtable event will provide a forum for an informal and interactive discussion of topics relating to patents that are particularly relevant to the software community. So will this be a free-for-all whereby everyone with an opinion, even an ill-formed opinion not based in fact, will be allowed time to rip the patent system and software patents specifically? There is no way of knowing what will actually happen at these roundtable events, and while patents don’t generally generate protests I have sneaky suspicion that we may see something that we have never seen before, which is an unruly crowd of protesters. Perhaps I am worrying to much, we shall see, but we have seen some truly bizarre events and a real fundamental disdain for the patent system coming from numerous academics and many within the media. This could become the patent version of a three ring circus! Hakuna Matada!

The Federal Register Notice does explain that “while public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought.” The fact that the USPTO had to make that statement specifically in a Federal Register Notice suggests to me that they are worried about what might transpire, or that the anti-patent forces or even the media might get the wrong idea about what they are going to try and accomplish.

This is going to open a huge can of worms! I hope the USPTO is ready. I hope the pro-patent community is also ready. Every anti-patent know-it-all will likely surface with their breed of self-righteous indignation, which wouldn’t be so bad if they would then proceed to debate fairly. Go ahead and be pompous if you want, but don’t give me that hogwash about “correlation is not the same as causation.” That is like fingers on a chalkboard! It can essentially be translated: “I know you have a mountain of evidence that suggests you are correct, but I will ignore it all after having announced that correlation is not causation. Therefore, you have no evidence I recognize, which means I win.”  OMG! Hakuna Matada! Hakuna Matada! See, it only works for a while before you start to realize just how poorly things could go in a very high profile way.

The Topics

There will be several topics of discussion at this inaugural Software Partnership discussion. The topics are:

  1. How to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language.
  2. Public identification of additional topics for future discussion by the Software Partnership.
  3. A forthcoming Request for Comments on Preparation of Patent Applications

The USPTO is asking for written comments in response to the first two discussion topics. Written comments on the third discussion topic must be submitted as directed in the forthcoming Request for Comments on Preparation of Patent Applications.

The Roundtables

The USPTO will attempt to accommodate everyone that wishes to make a presentation at the roundtable events. After reviewing the list of speakers, the USPTO will contact each speaker prior to the event with the amount of time available and the approximate time that the speaker’s presentation is scheduled to begin. Speakers must then send the final electronic copies of their presentations in Microsoft PowerPoint or Microsoft Word by February 1, 2013, so that the presentation can be displayed at the events.

The USPTO plans to make the roundtable events available via Web cast. Web cast information will be available on the USPTO’s Internet Web site before the events. The written comments and list of the event participants and their affiliations will be posted on the USPTO’s Internet Web site at www.uspto.gov.

Background on this Initiative

The Federal Register Notice explains:

Software-related patents pose unique challenges from both an examination and an enforcement perspective. One of the most significant issues with software inventions is identifying the scope of coverage of the patent claims, which define the boundaries of the patent property right. Software by its nature is operation-based and is typically embodied in the form of rules, operations, algorithms or the like. Unlike hardware inventions, the elements of software are often defined using functional language. While it is permissible to use functional language in patent claims, the boundaries of the functional claim element must be discernible. Without clear boundaries, patent examiners cannot effectively ensure that the claims define over the prior art, and the public is not adequately notified of the scope of the patent rights. Compliance with 35 U.S.C. 112(b) (second paragraph prior to enactment of the Leahy-Smith America Invents Act (AIA)) ensures that a claim is definite.

There are several ways to draft a claim effectively using functional language and comply with section 112(b). One way is to modify the functional language with structure that can perform the recited function. Another way is to invoke 35 U.S.C. 112(f) (sixth paragraph pre-AIA) and employ so- called ‘‘means-plus-function’’ language. Under section 112(f), an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material or acts in support thereof, and shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. As is often the case with software-related claims, an issue can arise as to whether sufficient structure is present in the claim or in the specification, when section 112(f) is invoked, in order to satisfy the requirements of section 112(b) requiring clearly defined claim boundaries. Defining the structure can be critical to setting clear claim boundaries.

The Specific Questions

If this does not wind up being a patent-hating free-for-all it will be because of the specific questions asked. The questions for which the USPTO seeks input are heavy duty inside-baseball patent style. Those who are not thoroughly steeped in patent law, patent prosecution and the reality of software patent and claiming techniques will simply not be able to offer meaningful input. Of course, that never really seems to stop the patent illiterate from taking a ridiculously absurd and indefensible position, but one can hope the USPTO will do at least something to police presentations to make sure they don’t become an opportunity to forward some anti-technology, anti-innovation, anti-patent ideology.

The questions the USPTO has specifically asked for help with are:

  1. When means-plus-function style claiming under 35 U.S.C. 112(f) is used in software-related claims, indefinite claims can be divided into two distinct groups: claims where the specification discloses no corresponding structure; and claims where the specification discloses structure but that structure is inadequate. In order to specify adequate structure and comply with 35 U.S.C. 112(b), an algorithm must be expressed in sufficient detail to provide means to accomplish the claimed function. In general, are the requirements of 35 U.S.C. 112(b) for providing corresponding structure to perform the claimed function typically being complied with by applicants and are such requirements being applied properly during examination?
  2. In software-related claims that do not invoke 35 U.S.C. 112(f) but do recite functional language, what would constitute sufficient definiteness under 35 U.S.C. 112(b) in order for the claim boundaries to be clear?
  3. Should claims that recite a computer for performing certain functions or configured to perform certain functions be treated as invoking 35 U.S.C. 112(f) although the elements are not set forth in conventional means- plus-function format?

Let the fun begin!

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Posted in: Computers, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Software, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

14 comments
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  1. Gene, Your reading of an ulterior motive into one aspect of the FedReg notice misses a legal nicety. Why would the PTO caution that the meetings won’t try to reach consensus? The legal reason is that if they did, round tables would start looking like advisory committees, which carry with them lots of legal requirements, including OMB clearance. The PTO would make this explicit assurance in a FedReg notice to assure those within the Executive Branch who might look over its shoulder that it isn’t coming close to that line.

  2. JToupin-

    Excellent point.

    I am not all that familiar with the legal requirements associated with advisory committees to the government. Are there any resources you can point to? I’d love to publish an article on that topic if anyone has interest.

    Thanks.

    -Gene

  3. How about “a computer method comprising” … or is that just too simple and straightforward? At this point in the information age, the meaning of the word “computer” ought to be sufficiently definite and clear, don’t you think? And while they’re at it, allow computer science graduates to qualify to sit for the patent bar. And hire Examiners with a computer science background. Just a thought.

  4. Hakuna Matada, Hakuna Matada…

    Having been to several of the USPTO Round Tables (Business Methods, Green Tech, and others) these meetings are mostly about USPTO talking to themselves while being able to say something along the line of, “we have had input from Apple, Google, …add whatever appropriate corporate name dropping that floats your boat here…” As noted in the Federal Register, it also means, thanks for telling us what you think, we intend to ignore you.

    Unlike the FTC/DOJ Patent Assertion Entity Workshop, which made it very clear that there were many more complex issues than the patent-hating crowd was ready to deal wit , this meeting is sure to be a free for all. Most of the patent-haters won’t even understand the issues. It will certainly be like the FTC Meeting – a meeting of the full-employment for patent lawyers union.

    There is also something amusing as having a meeting to discuss software patents with an organization that has some of the worst software on the planet earth. Who knows how many software patents USPTO is infringing!!

    Book your hotel rooms now.

  5. It would seem to me that before the USPTO can hold these meetings, the agency needs to declare itself the exclusive owner of the Dictionary and the final arbiter re meanings of words like “software” and “structure”. Until they do that, we will be merely trying to establish stable orbits around constantly shifting planetoids and we will never have a fixed position.

  6. To respond to Ron Hilton’s comment: Unless it has changed, Computer Science graduates have been permitted to sit for the patent bar since around 1993. See Category A on page 6 of http://www.uspto.gov/ip/boards/oed/GRB_March_2012.pdf. In addition, most Computer Science courses can be used to accumulate 40 credits under Option IV on page 7. There are exceptions. See paragraph X on page 8.

    As to Patent Examiners, if a candidate has a four year degree in Computer Science, the path is smooth. The problem arises when the PTO HR people see an application from someone with accumulated course work but a degree not in Computer Science. So maybe that is the point Ron is making..

  7. It still seems like Computer Science is accorded a somewhat second-class status, with extra hurdles like accreditation and other exceptions. I wonder how many Examiners have a CS background at this point.

  8. You may be right but unless the PTO HR has been totally negligent, no one should have been hired as an Examiner in the CS group who does not have a degree or equivalent in CS (and this latter is made rare by a misreading of the rules by the HR people). If you have solid evidence to the contrary, as opposed to mere supposition, please publish that evidence.

  9. I missed you reference to accreditation. Are you claiming that the PTO has Examiners in other groups which Examiners obtained qualification in other than accredited institutions? Are you claiming that someone who took a class in SNOBOL (a real language) programming at Ed’s Computer and Storm Door Company should be given credit for that class the same as someone who took C++ at an Ivy or Big Ten university? Please explain.

  10. All degrees are required to be from an accredited institution, but for Computer Science alone there is an additional layer of accreditation required (look at the footnote). Regarding the hiring of Examiners, the bias against CS is admittely anecdotal. As far as I know there are no published hiring statistics, which is why I asked the question.

  11. By “additional layer of accreditation”, do you refer to the requirement that courses be regular academic courses with labs, etc. rather than the type of courses often run by trade schools in which a language is presented in lecture format but the student does not have to program?

    You may have a point that PTO HR has a bias against Computer Science. The biggest problems relate to applicants who did not major in CS but are using accumulated course work to qualify. If the course presented for evaluation is from an accredited institution, the actual content does not show up on the transcript. Consider course Credit by Examination only? There would be no labs or other work. How would PTO HR know?

    Another burden imposed on some applicants is that PTO HR employees have, due to a misunderstanding of how to parse the language, added a requirement that the applicant have taken a course in statistics.

  12. Here’s what the footnote says about the additional accreditation requirements for Computer Science:

    *Acceptable Computer Science degrees must be accredited by the Computer Science Accreditation Commission (CSAC) of the Computing Sciences Accreditation Board (CSAB), or by the Computing Accreditation Commission (CAC) of the Accreditation Board for Engineering and Technology (ABET), on or before the date the degree was awarded. Computer science degrees that are accredited may be found on the Internet (http://www.abet.org).

    These requirements are in addition to the accreditation of the university itself.

  13. Those accreditation requirements, if I’m not mistaken, mean that Princeton University CS (for one example) doesn’t qualify as accredited. The USPTO puts a lot of faith in accrediting organizations that may be a group of third-tier professionals trying to deny credit to fourth-tier schools. Many of the top universities are just not interested in jumping through hoops to get that accreditation.

  14. To follow-up to CS guy’s comments, I completely agree. The USPTO finds CS degrees from DeVry University more acceptable than those from large list of well-known, long-established, and even ivy league research universities.

    They took the easy route — just use an accreditation like ACM. However, the accreditations are so arbitrary and meaningless that many schools do not play along, or have ones that aren’t adopted by the PTO.

    So yes, in the USPTO’s eyes, a CS degree from UMD, Princeton, UPenn, and others are given less weight than degrees from diploma mills. Good job!