Today's Date: August 27, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

Patent Turmoil: Navigating the Software Patent Quagmire


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
Blog | Twitter | Facebook | LinkedIn
Posted: July 15, 2013 @ 8:00 am
Tell A Friend!


The law as it relates to software has been in flux over the last 10 years. Many older patent applications simply do not have enough detail to satisfy the current requirements to obtain a patent, although when drafted they would have been sufficient to satisfy the requirements then in place. Describing software as a pure method claim has not worked for a long time despite the fact that in reality software is really a method. Much more than a cursory description of software as a series of steps is required in order to have hope of obtaining patent protection for software.

Indeed, ever since the Federal Circuit en banc decision in Bilski, claims have been required to be tethered to tangible components, such as data storage devices, processors, databases, controllers, servers and the like. Unfortunately, however, the Patent Trial and Appeals Board at the United States Patent and Trademark Office now has taken the position that they will ignore the tangible components within a computer implemented method claim and then look to see what remains before determining whether the claim is patent eligible. See PTAB Kills Software.

Of course, after you remove or ignore the tangible components what remains is a naked process, which is patent ineligible. Thus, deciding to ignore tangible components leads to the inescapable conclusion that no software is patent eligible. Such disingenuous reasoning has the effect of punishing applicants for writing claims as the Patent Office has mandated ever since the machine-or-transformation test was first announced by the Federal Circuit in Bilski. The test announced in SAP/Versata, which was the first covered business method review decision announced by the PTAB, cannot be the correct test, and ultimately the decision (or at least the rationale) will be reversed. Any test that has the net effect of rendering all software patent ineligible, like the SAP/Versata test, is simply not correct as I will explain more clearly below.

But if some Administrative Patent Judges on the PTAB are hostile to software patents, the state of affairs at the Federal Circuit is not much better. The Federal Circuit has been unable to agree on a test for the patentability of software. This culminated on May 10, 2013, in CLS Bank v. Alice Corporation. In that case the Federal Circuit determined that method claims and computer readable medium claims are not patent eligible, but split evenly 5 to 5 on whether system claims are patent eligible. See Federal Circuit Nightmare in CLS Bank. Having a tie relative to system software claims is not acceptable and everyone believes the Supreme Court will step in and decide the case. The 5 Judges who voted no largely did so because software merely allows processes to occur faster than a human could process. That reasoning is deeply flawed and not likely to prevail in the long run. Processes have been patentable for several hundred years and it has always been understood to be a patentable improvement for a process to accomplish a task faster and/or more accurately. The reasoning also ignores the reality that computers can now perform trillions of calculations per second, as is the case with the all-knowing computer known as Watson created by IBM. See Is Watson Still Patent Eligible?.



Have a software innovation to patent?
Experience with software patents and related technologies.
CLICK HERE for MORE INFO or e-mail Gene Quinn


But the USPTO has yet to provide guidance to patent examiners based on the SAP/Versata PTAB decision despite the fact that the USPTO is legally supposed to be bound by decisions of the Board. Versata is reportedly seeking reconsideration and an appeal is virtually guaranteed if reconsideration fails. But still the USPTO leadership is in no hurry to provide guidance to patent examiners, although I’ve been told that patent examiners are already taking matters into their own hands and ruling such things as board games patent ineligible based on the belief that the Federal Circuit and PTAB are significantly cutting back on what is patent eligible.

Still, on May 13, 2013, in a one-page memorandum the Deputy Commissioner of Patents for Patent Examination Policy instructed patent examiners to ignore the aforementioned Federal Circuit decision in CLS Bank v. Alice Corporation because it contains no precedential value. See No Change to Software Patent Eligibility. Patent examiners have been instructed to continue applying the Office understanding as it existed prior to May 10, 2013, and reiterated that software is patent eligible in the view of the USPTO. Thus, the Patent Office has instructed patent examiners to continue to issue software patents on properly drafted claims that incorporate enough tangible components. But can the USPTO really police patent examiners who already were predisposed to not want to issue patents to computer implemented methods?

Complicating matters further, on June 21, 2013, Chief Judge Randall Rader of the Federal Circuit, along with Judges O’Malley and Linn, issued a strong pro-software patent opinion in Ultramercial, Inc. v. Hulu, LLC. So now at least some on the PTAB are exceptionally hostile to software patents, at least 5 judges on the Federal Circuit are extremely hostile to software patents, and cases continue to be decided at the Federal Circuit without the Court having a unified position. More than ever the panel assigned to the case will make all the difference when your computer implemented method claim is reviewed by the Federal Circuit.

What this means is that over the last several months the law as it applies to the patent eligibility of computer implemented invention (i.e., software) has been in tremendous flux. Everyone in the industry believes that the Supreme Court will ultimately have to set the record straight. I believe that may happen within the next 12 months, but there is no guarantee that the Supreme Court will get this right or that they will even answer the critical questions. The Supreme Court is notorious for not answering the critical question presented, choosing rather to allow the lower courts figure it out in the first instance. Why have a Supreme Court if they can’t issue a definitive decision that picks a lane on something as fundamental as patentability? Even when they try and pick a lane they convey the decision in such confusing ways that it is hard to decipher the meaning. In Mayo v. Prometheus, for example, did the Court really mean to overrule generations of patent law and their own precedent when they decided to consider matters of novelty when determining patent eligibility? See Supreme Court Blows Mayo v. Prometheus. And then in Association of Molecular Patholody v. Myriad Genetics did the Court really mean to say that isolated DNA is nonnaturally occurring but still nevertheless patent ineligible? Such a ruling would be inconsistent with Diamond v. Chakrabarty, effectively overruling the main point of that case which stood for the proposition that if what is claimed is nonnaturally occurring it is patent eligible. See SCOTUS Myriad Ruling Overrules Chakrabarty.

Still, it is unthinkable that the Supreme Court would issue a ruling saying software is not patentable. Just two years ago the Supreme Court issued a decision in which 8 of the 9 Justices said that at least some business methods and at least some software are patent eligible. See Doubling Down on Erroneous Federal Circuit Attacks. Furthermore, the Patent Act (i.e., laws enacted by Congress) specifically envision that some software must be patent eligible. For example, the law prohibits tax strategies from being patent eligible, but specifically says that this tax strategy prohibition does not apply to software that embodies a particular strategy. Thus, Congress had to be of the opinion that tax strategy software could be patent eligible. Furthermore, in the America Invents Act (AIA) Congress created the aforementioned covered business method review as a new form of post grant procedure to challenge at least some issued software patents. Had Congress believed that software were not patent eligible it wouldn’t have needed to create the proceeding, nor would it have to seek to expand the covered business method review to apply to all software patents, which is currently a legislative proposal pending.

The fact that software is specifically mentioned in the Patent Act and never listed as something prohibited from being patented is highly significant. A similar rational was used by the Supreme Court in Bilski v. Kappos to find that business methods are patent eligible (i.e., the Supreme Court noticed that Congress had enacted certain provisions of the Patent Act specifically mentioning business method patents, therefore, they had to be patent eligible the Court reasoned).

Despite the turmoil surround software patent eligibility I believe with great certainty that software will remain patent eligible in the United States. The extreme decisions of the PTAB and viewpoints of those on the Federal Circuit opposed to computer implemented methods will not prevail because they are inconsistent with the Patent Act and long-standing patent law jurisprudence. After all, the Supreme Court itself explicitly found software patent eligible in Diamond v. Diehr.

In the meantime, while we wait for the dust to settle, we need to engage in a variety of claiming techniques (i.e., methods, computer readable medium, systems claims, means-plus-function claims and straight device claims). Thus, if you are interested in moving forward with a patent application it will be advisable to file the application with more claims than would have been suggested even a few months ago. Patent attorneys also must spend increased time describing the invention from various viewpoints, which means specifications should increase in size. This all means that there is no such thing as a quick, cheap and easy software patent application – at least if you want to have any hope of obtaining a patent in this climate.

If you need help with a software patent matter please contact me.

- - - - - - - - - -

For information on this and related topics please see these archives:

Tags: , , , , , , , , , , , , , , , , , , ,
Posted in: Bilski, Computers, Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Prosecution, Patent Trial and Appeal Board, Patents, Software, Software Patent Basics, US Supreme Court, 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.

 

39 comments
Leave a comment »

  1. I recieved 2 software related patents this year only because my claim steps takes a pure engineering perspective of teaching what instruction steps are exchanging between the hardware computer processor and the hardware computer memory. The claims will not work without the CPU and RAM working together, as the CPU can’t operate without the RAM, and can not be performed manually by a human or group of humans. I didn’t recieve any 101s for the method (except on a non-transitory media requirement for the app claims).

    Practitioners I’ve been in communication with since getting my patents seem to not understand computer science, meaning by default, they just don’t get the claims is a real CPU process working in a real computer archetecture.

    In my opinion, computer/software based patents will need to adopt the detail of disclosure similar to pharmaceutical patents, which are highly respected because exact formulas are used. When I see a computer based claim with only preamble length language, it’s feels to me like practitioners are trying to game the system with too much of a general statement. Patents are supposed to be accademic documents of engineering education, meaning, Patents are supposed to teach others how to explicitly make things that work a certian way. Patents are used today by a culture of lawers who I feel highjacked the spirit of patenting for corporate strategy.

    IMHO, a lawyer should never be in possition to draft a specification from scratch, but should be the editor and arranger of a compliant document for prosecution at the PTO. The person inventing the idea should have the ability to also draft the initial specification themselves, because only an inventor can know how it works, is built, and in intricate details because an inventor is not an inventor until there is at least a personal prototype first.

    Just my views, but when my examiners needed a demo of what I was looking to get, I had one ready to show.

  2. Pro Se – one (critical) point of correction:

    You state “Patents are supposed to be accademic [sic]documents of engineering education.

    That is not true.

    AT ALL – Well, at least to the point of WHY the document exists.

    Patents are legal documents. Patents are not supposed to contain that which is known in the art. That is why you often see such a high “much of a general statement.”

    That being said, I do tend to agree with you that crafting software applications will need a higher degree of sophistication than many such applications exhibit.

    By the way, Gene – I disagree that “software is a method.” I understand the analogy – but I think the analogy has its limitations and – unfortunately – those limitations (as included in court decisions) CAUSE more harm than benefit.

    The harm I see stems from the historical difference afforded the different categories of patent eligibility. That historical bias (and basis) can be traced to Justice Story and the lack of the English patent system (at a critical time) to recognize process patents – something that the US system has always allowed.

    As to the climate – we are in agreement. We “live in interesting times” (with the full compliment of the Chinese proverb intended).

  3. Pro Se,

    Your comment of “The person inventing the idea should have the ability to also draft the initial specification themselves, because only an inventor can know how it works, is built, and in intricate details because an inventor is not an inventor until there is at least a personal prototype first.” is likewise completely incorrect from a legal point of view.

    First – inventors should invent and legal writers should write legal documents. From personal experience, it can be more difficult (and read that as more expensive) to deal with an inventor who fancies themselves a legal document writer – especially when the purpose of the document is misunderstood.

    Second – the legal document is for rights extending forward in time, based on what has been invented at a point of time. Limiting yourself to even a ‘working example’ almost guarantees that you have NOT obtained the proper scope of your rights.

    Third – there simply is no legal requirement that a prototype, much less a working prototype be available prior to filing. In fact, with the passage of the AIA, such is in fact very bad advice to give anyone.

  4. Anon – this is my issue with the patent system:

    The patent system is not a “game” for lawyers, meaning it’s not some kind of intellectual lotto where one expects to “legally” draft a document that can cast a net over how someone may imagine something working years from now.

    The patent system is a way to protect product ideas but also is a bible of product ideas whereas others can learn, create, and license products. That is the text book reason why the patent system exist, the patent system was not created to benefit lawyers, but to benefit engineering inventors, lawyers can only aid and defend that endeavor.

    Most lawyers are not engineers. Lawyers have the specific skills of settling legal issues by understanding the features of the law. The problems with these older computer science patents in my view is the fact that they contain empty engineering logic and just general explanations of how something is “supposed” work. That practice is catching up to an older legal culture as technology continues to evolve and more engineering disclosure is required.

    While there is no requirement to create a prototype, its the only real way to know how something really works. How could Pfizer get a patent for Lipitor without first having made it? Do you think Pfizer could get a Lipitor patent using the way a product manager at a computer company sits down with a staff lawyer and express concepts of something they think will be a good product?

    In my opinion, anything less than a prototype is “guessing” and when that patent ends up in a litigation with real engineers hired to give testimony, holes in the specification and claims invalidates the case.

    The patent system is a legal protection for sharing documented academic information, the reason why many universities and R&D departments in corporations hold patent portfolios. I think the views on patenting depend on the intent: it can be used or abused.

  5. Anon – here is an analogy:

    Copyright protects: “Happy birthday to you, happy birthday to you, happy birthday to you, happy birthday my good friend, happy birthday to you.”

    Older practice of software patents: “A computer-implemented method of relaying a message comprising: means for establishing and transmitting a string of characters, the characters comprising a phrase, the phrase comprising at least one word selected from a group consisting of happy, birthday, to, you, my, good, and friend.

    This is why people get up in arms.

  6. Pro Se,

    If you want to classify patents as ‘a game,’ that is something that you are entitled to as your own opinion.

    On the other hand, you are NOT at liberty to get the law wrong and advocate based on an incorrect view of what the law is.

    Most lawyers are not engineers.” This may be true for general lawyers. It is most likely UNtrue for patent lawyers. Most patent lawyers have feet (i.e., training and experience) in BOTH worlds.

    On the flip side of your own statement, most engineers are not lawyers. I repeat – from personal experience, those engineers who do not understand law and want to be legal writers OFTEN cause more headache (including cost) because they do not understand their limitations.

    and more engineering disclosure is required.” – Actually, your legal errors continue: as technology continues to evolve, LESS engineering disclosure is required.

    its the only real way” – While perhaps ‘true,’ it is not the only way – in fact, with the AIA, it is no longer even a recommended way – to obtain legal rights.

    Finally, your view of the interaction of academics and the patent world is plainly incorrect. In fact, until Bahl-Dole came along, the two hardly interacted at all.

    If you want to have a conversation, please get your facts and your law correct first. Sorry if I sound ‘snippy,’ but you are talking from a ‘want’ position and not one based in reality, and you need a strong dose of reality.

  7. Anon – the reality is I hold patents with my name as the inventor issued in 2013, one even on a first office action. Achieving that in this current climate of “uncertainty” in computer patents is not easy.

  8. Anon – are you saying the patent system doesn’t work for anyone besides lawyers? As an engineer that actually build stuff, that’s offensive. Law is only secondary to engineering in my world, and in my world it’s the engineered products that make money, if a product doesn’t exist, a patent is useless.

  9. Pro Se,

    To your comment at 7 – congratulations. You are correct that such is not easy. However, I would temper that congratulations (prospectively, as I have not reviewed the patents you HAVE received) with the thought that you MAY have left valuable rights on the table. Of course, you may not have, or you may have with the awareness and choice to obtain SOME protection now (quickly) and pursue broader protection with continuation applications (a tactic that I recommend, by the way).

    To your comment at 8 – whoa – that is not what I am saying. The patent system works as the patent system works (for lawyers as well as non-lawyers). I think you have confused ‘work for’ with ‘understands.’ Case in point, it is your comment that is really offensive: “Law is only secondary

    Do you realize why that is offensive? Do you realize that my view actually places law and engineering on equal ground (compare my comment about training and experience iin both worlds), but that ANYONE needs to understand the nature of what you are dealing with and to IGNORE that nature (as you iimpliedly do so by placing law as a second class citizen) is to court disaster.

    Clearly, you do not understand all that you NEED to understand about patents if you feel that a patent is useless unless you actually have a product. Aside from the fact that you can generate revenue from others making the product, the ability to keep the ‘space’ clear (no products at all) has value that you are not recognizing.

  10. Pro Se, I am glad you have a patent on a product that makes money. I understand that you have explained your invention in the context of the relationship of a CPU and RAM. What a patent is supposed to do is protect the invention when it is practiced on a different CPU and RAM. Does yours do that?

  11. American Cowboy – generally no one would want to narrow (and kill) a claim to “x86 CPU architecture and DDR3-2400 RAM” only, but in my opinion as Gene expressed in his last paragraph of this article, more disclosure than what has been standard in the past is a good start to offset where the climate currently stands.

  12. Pro Se-

    You say: “Most lawyers are not engineers.”

    That is not true of patent attorneys. Patent attorneys are almost always engineers and scientists.

    You also say that you received a software patent on the First Office Action without a rejection. That is hard to imagine, but if that is true I can guarantee you that your claims are far more narrow than they needed to be and you have not obtained the broadest possible protection to which you are entitled.

    -Gene

  13. Gene – When I say “engineer” I am speaking about a person who come up and build products.

    I would say in general, many of these older patents are considered too broad and this is where the current use of 101 are killing cases these days.

    In 2013 to get a software related patent, there are no choices but to narrow down to at least a real substance, and this is why I gave the opinion that prototypes are important to best know how to narrow enough without killing protection.

    The reason why I say their are no choices but to get lean with claims and disclosure is because now most cases (after all these cases you write about) in the PTO you have to get the approval of 1) Assistant examiner, then 2) Supervisor or Primary examiner, and then 3) a quality control unit that expects the validity quality of the proposed claims.

    This quality control unit will send a software patent BACK to the art unit if it feels it is not valid.

  14. * please excuse typos, im on a mobile device.

  15. *correction: “3) a quality control unit that inspects the validity quality of the proposed claims.”

  16. Gene – here is an example of a first office allowance (this is not mine): 8,250,145

  17. Pro Se,

    Patents are used today by a culture of lawers who I feel highjacked the spirit of patenting for corporate strategy.

    IMHO, a lawyer should never be in possition to draft a specification from scratch, but should be the editor and arranger of a compliant document for prosecution at the PTO. The person inventing the idea should have the ability to also draft the initial specification themselves, because only an inventor can know how it works, is built, and in intricate details because an inventor is not an inventor until there is at least a personal prototype first.

    Completely agree. I believe that given guidance or a set of basic rules, an engineer or computer scientist etc should be able to craft much of the patent document – except for the Claims which I typically come up with the core steps but leave the final to the patent lawyer or agent.

    Finding, or learning that guidance or set of rules is not easy to come by, for obvious reasons.

    One thing you did not mention is prior art search – which I find crucial in truly scoping out the prior art (and understanding the competition landscape).

  18. Pro Se,

    I think it would be costly to work with you. You do not seem to want to listen to what people are telling you.

    That first office action allowances happen is not the point at all.

    The point is whether or not you have left value (and too much value) on the table.

    If you approached this blindly and went as thinly protected (as detailed) as possible – and did so without the ability to broaden protection with continuations – right from the start, you have made an unnecessary – and potentially very costly – mistake.

    On the other hand, you may have made an informed decision and either only aimed for a ‘thin’ patent or employed a continuations-approach. In some very crowded areas, a single shot ‘thin’ patent MAY be advisable, but this is something that should be contemplated with knowledge and discussion – not a blind knee-jerk reaction and a “I slept at a Holiday Inn last night” legal (second citizen) viewpoint.

    By the way, the Facebook patent example you provide has the following family;
    PCT/US11/32566 filed on 04-14-2011 which is Published claims the benefit of 12/764,928
    13/481,001 filed on 05-25-2012 which is Patented claims the benefit of 12/764,928
    13/549,485 filed on 07-15-2012 which is Pending claims the benefit of 12/764,928
    13/551,498 filed on 07-17-2012 which is Pending claims the benefit of 12/764,928
    13/551,508 filed on 07-17-2012 which is Pending claims the benefit of 12/764,928

    This evidences my comment concerning a narrow introductory patent and a continuation to pursue broader claims approach.

    Gene,

    I largely agree with your post at 12 – with the additional caveats I have added. I would also add that some of us ‘legal folk’ have a third leg of business start-up understanding (and even more reason to take ‘offense’ at an engineering-first viewpoint).

  19. jodi,

    We have traded comments on other threads and feel I understand you (probably as well as the internet allows).

    IF an engineer understands their limitations, then a first crack at writing an application may be useful, but most likely will serve as an invention disclosure input to the final product. I hesitate to condone your ‘everything but the claims’ approach, as a good application is (typically) not written piecemeal like that. A good application is written with balance and mirrored reflections between the body of the application, the pertinent drawings, and the claims.

    Good point too on the prior art search. I have run into a fair number of clients who DO NOT WANT ANY search – and there may be business reasons that support that approach (for example, having the mere ability to state ‘patent pending’ to the public or investors at minimum cost); however, for those wanting patents to have teeth (that is, to be able to enforce them), the better the prior art search, the sharper the teeth and the stronger the jaws.

  20. Anon and Gene – I agree with your legal advisories, you are correct. My patents are satisfactory for my needs.

    Jodi – YES! I didn’t go into this much detail and perhaps this will resonate with Anon’s view but claims and finalization (I mentioned it before as editing and arrangement) should be handled by a legal professional.

    The “first draft” of the spec should be provided to the legal professional to at least included the detailed disclosure for the lawyer to structure into an enforceable document.

  21. Pro Se-

    I am not saying that you cannot get a first office allowance. I know it happens, and I have written about it in the past. What is clear, however, is that a first office allowance leaves a lot of claim scope on the table. If you want to get a first office allowance you can, but you had better file a continuation in order to seek the broadest claims you are entitled to receive.

    I will also note that the patent you point to is from Art Unit 2441, which deals with computer networks. Is this a software patent? I suppose it could be characterized as that, but it is not a classic software patent. It is worth noting that if this set of claims were to be examined by the Art Units that handle software patents and business methods they would never be issued. These claims have no chance in Art Units starting with 36xx.

    -Gene

  22. Jodi and Anon – I agree, prior art searches are CRITICAL and I also believe having all possible relevant references that can be found should be printed on the face of the patent. I think the more transparent the applicant, the more transparent the process.

  23. Gene – ok I see your point.. mine are also in the same AU group as the FB example. The FB example does require software to insert the instructions to a processor, for there, the processor delivers that FB system.

  24. Anon – “This evidences my comment concerning a narrow introductory patent and a continuation to pursue broader claims approach.” – I completely agree that this may be the best strategy based on the current climate.

  25. Pro Se, you said:

    When I see a computer based claim with only preamble length language, it’s feels to me like practitioners are trying to game the system with too much of a general statement. Patents are supposed to be accademic documents of engineering education, meaning, Patents are supposed to teach others how to explicitly make things that work a certian way.

    I’m a little concerned when you say “claim with only preamble length language” and relating that with “teaching”.

    My understanding is that the Claims do NOT need to teach anything – it’s up to the rest of of the patent document to do the teaching.

    Sure, some patents may be inadequate in teaching, but that problem won’t come up until infringement trial – or maybe professionals on here will correct me.

  26. Anon, you said:

    I hesitate to condone your ‘everything but the claims’ approach, as a good application is (typically) not written piecemeal like that.

    Well, I’ve never been able to write “piecemeal” – it’s dozens and dozens of iterations of refinements typically over months and months of time. The requirements, the design, the software prototypes, the evaluation of the competitive landscape, the business funding, the patent application, etc… are all done by one person and all feed back into each other. On the one hand, a lot of work, but on the other hand there is no need for internal communications. What I, the software inventor, lack in specialization I more than make up for with consistency and having the left hand in sync with the right. When you have multiple people each performing different roles (as typical in today’s corporate environment) then you end up with all sorts of time & effort spent on communicating, getting others up to speed and in-line, compromises, scheduling, etc… If the software guy can create the design and write the code then why not write the majority or base of the patent application? It’s all about the software innovations and the rest is overhead. Sorry, but I’ve spent enough time in corporate worlds to experience it know it true. There’s a reason MOST corporations slowly rot and collapse under their own weight – all the internal overhead is big part of it.

    In other words, there is no piecemeal or doing it in one-shot. The consistency is inherently built-in because the software inventor wrote it.

    A good application is written with balance and mirrored reflections between the body of the application, the pertinent drawings, and the claims.

    yes, consistency of terminology, understanding of the overall goals, understanding of the invention, understanding of the prior art and competitor landscape, etc… When the inventor writes it, this is inherently there.

  27. Gene,

    Art Unit 2441, which deals with computer networks. Is this a software patent? I suppose it could be characterized as that, but it is not a classic software patent. It is worth noting that if this set of claims were to be examined by the Art Units that handle software patents and business methods they would never be issued.

    Slightly off topic, but is there really such a thing as a “software patent” if they are all tied to hardware?

    No patent I’ve looked at has Claims with no hardware involved and I wonder whether anyone can even claim software patents exist?

  28. Pro Se,

    The patent lawyers I have spoken with were all engineers or computer scientists before. While they haven’t “implemented” something lately, they know what it takes. Partly because of our legal system, they play an important part. Building a mobile app ain’t all that different from programming a mainframe – while they might not now how to setup an IDE or what language to choose etc – they all involve functionality and programming logic.

    Someone should NOT need to build or manufacture to get a patent. Myself, I work better by implementing prototypes that are have the meat and potatoes figured out and could/should be easily turned into software product or service – but I recognize that some can/do envision the entire system in their head. Isn’t this part of specialization and the division of labor? Don’t we already have designers architects and programmers?

    Sorry to hear that you got something allowed in first office action! Terrible news because the U.S. patent system is a negotiation for what you deserve. You likely are way too narrow and easy to work around. Corporations will prey upon any weakness.

  29. Jodi-

    You raise the $64,000 question about whether software patents even exist. I think it is fair to say that what we are trying to protect is software, but with the various rulings we really aren’t able to say that it is software. That is why in the first paragraph I wrote:

    “Describing software as a pure method claim has not worked for a long time despite the fact that in reality software is really a method.”

    The frustrating thing lately is that Bilski said tie it to a machine, presumably so that mental processes aren’t patent eligible. But why not just say that rather than come up with all the nonsense? In any event, after we come to terms with the software having to run on a machine, which really isn’t a limitation in the real world sense (at least yet) the PTAB says in SAP/Versata that they will ignore the tangible components that are conventional and all that is left is a naked method that isn’t patent eligible. So if the PTAB view of the world prevails software can’t be protected. Only new hardware can be protected. And after we acquiesce and claim these things like the Courts and USPTO tell us. How is that SAP/Versata decision fair?

    I agree with you though. Claims that do not mention hardware can’t be patented.

    -Gene

  30. Yep. If I invent a hammer with a differently shaped head – it has a head just like all other hammers, but differently shaped so that it is new, differently useful and non-obvious, the PTAB, if it follows SAP/Versata would say it I just an unpatentable idea. Pfffffffffffffffft … I lose.

  31. jodi,

    To your comment at 26, I am talking about the balance of the technical and legal. As I have made clear: most engineers do not have that balance. Patent Attorneys, on the other hand, mostly do.

    I see that you do understand this with your later posts.

  32. Jodi – in line with Anon’s view about the FB patent family, the first one went a few rounds but the second was a continuation Track 1 more broad than the parent and granted in only 6 months…

  33. “despite the fact that in reality software is really a method.”

    Gene, re your comment #29

    I respectfully submit that you don’t understand how “words” work in the human brain.

    Forget for a moment the word “software”.

    Let’s tackle the word, “Apple”.
    Let’s say I assert that most apples have a tart taste.
    But you disagree and contend that most apples have a sweet fruit taste.

    The reason may be that I mostly eat tart apples and that forms my underlying (non-linguistic) experience for the thing I refer to in my mind as “apples” while you eat mostly sweet apples.

    This experience differential applies also to the word “software”.
    Different people have different experiences with what they refer to as “software”.

    We are but blind men dancing around the elephant.

  34. step back,

    You may have the tail.

  35. Step back,

    If all computer patents are tied to some hardware, then it doesnt matter what you include or exclude from definition of software.

  36. Anon
    Better the tail than the nearby holey part of the anatomy.

    I can hear the neighboring blind man exclaim, “Gee, software is like a dark smelly cave that goes on and on” (Query: How does he know it is “dark”?)

  37. While you do not get that part, your proximity to the eventual bodily functions will no doubt ‘color’ your experience…

    ;-)

  38. Anon,
    Very true.
    The guy who got the elephant’s trunk proclaims that software is nothing more than a hollow Shell.
    However, at my end, the missing “kernel” sometimes drops out.
    When it hits me in the head I get to say, excuse the language, That’s some heavy she8.
    ;-)

  39. jodi@35

    Sorry. I don’t understand what you are trying to say.

    When I went to school they taught us that there are certain basic “machines” like the ramp, the lever, the screw and the pulley.

    However, the anti-patent judges appear to have never gotten that lesson (or to have gone to a reality based school). So when they talk about “general purpose” computers and when they talk about tying to a “particular machine”, I have no WTF idea of what they speak about. Then again, even if you do try to make a square knot connection to a “particular machine”, they are so anti-software they will yank it out and say you were just using some clever draftsman’s tricks. The bottom line is that they hate any patent that smells like it’s a software one, period.