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.
There will be several topics of discussion at this inaugural Software Partnership discussion. The topics are:
- How to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language.
- Public identification of additional topics for future discussion by the Software Partnership.
- 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 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:
- 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?
- 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?
- 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!