EDITORIAL NOTE: What follows are the prepared remarks of David Kappos, Under Secretary of of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, delivered at the Center for American Progress in Washington, DC, on November 20, 2012.  This is reprinted here with permission.  

Thank you, Winnie, for that kind introduction. Good morning, everyone. It’s great to be here at the Center for American Progress. I’m pleased to be able to talk about intellectual property and the role that intellectual property rights play in enabling innovative goods and services to come to market. And specifically, I’m going to focus my remarks on software patents and the so-called smartphone “patent wars,” which have become front page news in the last year or so.

It is increasingly clear that intellectual property, or IP, is a key driver of economic growth, exports, and job creation. IP rights are the global currency for creating value for products and services, for all innovators, in all markets. And the protection provided by patents is critical to the innovation ecosystem. In fact, last spring, the U.S. Commerce Department released a report that found IP-intensive industries support at least 40 million jobs and contributes more than $5 trillion to our economy, accounting for 35 percent of America’s gross domestic product. So it is in this context that we are seeing multi-billion dollar acquisitions of patent portfolios and a number of high profile patent lawsuits, involving some of the most innovative companies on the planet, who are producing some of the most popular technologies ever created.

Means-plus-function claiming has been disfavored (by and large) since at least 1994 when the Federal Circuit handed down its decision in In re Donaldson, where the Federal Circuit sitting en banc explained:

If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.

In other words, if it is not in the specification then the fact that it may be a “means” to accomplish the function does not save you.  Means that accomplish the recited function that are not within the specification of a patent application are not captured by the claims.

Means-plus-function claiming is not very popular in many technical disciplines because of how narrowly limited the claims are to what is specifically disclosed.  Over the years, however, mean-plus-function claiming has continued with various levels of popularity for those who deal with computer-implemented methods (i.e., software).  After all, software is just a series of steps directing a machine (typically a computer) to perform certain processes to accomplish a result.  Thus, “means for” doing something remained a rather descriptive way, at least generally speaking.

Despite the protestations of some, software is patentable in in the United States.  There are some jurisdictions that do not allow for the patenting of software or computer implemented processes, but the law in the United States allows for software to be patented.

Given the software patents are my business, one of the questions I typically receive from an inventor is: What software can be patented? How does one know that what they have is something that can be protected?  The short answer is this: In my experience those who come to me before they start coding always have something that can be patented.  Of course we have to do a search and seek out the available space, but there are some many twists and turns that there is almost always something patentable. Unfortunately, some do the programming first and never approach the design as an engineering problem for which they have a unique solution.  That means no attempt has been made to identify the unique characteristics so what is programmed is many times virtually identical to the prior art.  It doesn’t have to be that way though.

The conundrum created by the Federal Circuit’s joint infringement doctrine and its impact on protecting interactive computer-based technologies got worse last week with McKesson Technologies, Inc. v. Epic Systems Corp. McKesson Technologies involved a patented interactive electronic method for communicating between healthcare providers and patients about personalized web pages for doctors.  Judge Linn’s majority opinion (and a “thin” at majority at that) ruled that, because the initial step of the patented method was performed by the patient while the remaining steps were performed by the software provided by the healthcare provider, there was no infringement, direct, indirect, joint or otherwise of the patented method.

The United States Patent and Trademark Office is radically updating the Patent Bar Examination starting in April 2011.  Since I teach the PLI Patent Bar Review Course that has required John White and I to revise our materials.  One of the new things tested will be the recently released 112 Guidelines, which are full of great information and explanation, particularly relating to computer implemented processes; what many would call software.  Being the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course.  So I thought I would take this opportunity to write, once again, about how to disclose computer implemented inventions to satisfy the disclosure requirements, which are embodied specifically in 35 U.S.C. § 112.

The statutory requirements for computer-implemented inventions are the same as for all inventions.  That means that in order to be patentable the invention must meet the patent eligibility test in 35 U.S.C. § 101, the invention must be new (§ 102), it must be non-obvious (§ 103) and it must be adequately described (§ 112).  Since the United States Supreme Court announced its decision in Bilski v. Kappos, the United States Patent and Trademark Office has continually urged patent examiners to get beyond the § 101 inquiry except in extreme cases.  Prior to the Supreme Court’s Bilski decision many examiners would simply see a computer-implemented method and issue a blanket and rather non-specific rejection asserting that the invention was not patent eligible subject matter under § 101.  The USPTO focus on getting past § 101 and to the meat of the invention means that such rejections are no longer the norm.  It also means that the Patent Office is pushing the real question about whether an patentable invention is presented into the adequate description space pursuant to § 112.  Thus, a thorough and complete description is absolutely essential when your invention relates to a computer-implemented method, whether it is software, an Internet processes or a business method.

What do you think of my jumping buddy over there?  Pretty cool, huh?  Let’s call him “George”.

George is just one example of the enormous number of inventions being made to serve our newly emerging social networking economy.  George was created using a patent pending process called Evolver.  He’s an avatar that can be transported to any number of different full immersion virtual world networking sites.  Many new companies are forming to commercialize these new social networking innovations.  They are also filing patent applications.  They have many challenges ahead of them to get those patents.

Software is now and will remain patentable in the United States. Software patents have been vilified by many, but they have been granted by the United States Patent and Trademark Office and upheld in federal courts across the United States. The much anticipated Bilski v. Kappos decision at the Supreme Court did nothing to slow down the patentability of software, and in fact even the original Federal Circuit decision wound up, as applied by the USPTO, to make it more likely that adequately written software patent applications would be granted and transformed into issued patents. What has changed over the last several years, however, is the amount of detail that must go into a software patent application in order to satisfy the adequate description requirements under US patent law. So don’t listen to anyone who tells you software cannot be patents in the United States; it certainly can, but it isn’t quite as easy as it used to be.

When embarking on a software development project it is critical to understand that in order to both maximize the chance of obtaining a patent, as well as the likelihood of developing a working computer implemented process, you need to approach the task with an engineering mind set, as well as a healthy familiarity with Murphy’s Law.  Anything that can go wrong will go wrong, and once you release the process to end users a human element will complicate what should otherwise be a predictable, linear, machine driven response.  Embrace the uncertainty and challenges because the fact that software rarely, if ever, works like it should is what makes a working process patentable.

Over the last week Scott Adams, the creator of Dilbert, has been out doing himself in a series of laugh out loud funny cartoons. I realize that as a patent attorney my sense of humor is, well… challenged, at least in the view of many who are not in the patent field. That being the case I figured I would share a few of these cartoons with an audience that I figured would be able to appreciate the humor. What is even better is that Dilbert cartoons can be embedded into a blog or website for free, so no copyright infringement was engaged in during the creation or publication of this post.  Which is always nice!

As you can see from the first cartoon in the series, the creator of a project has left the company and his unfinished project is being passed on to the hapless Dilbert.  Scott Adams, through Dilbert, teaches us not only that no one should ever trust Dilbert, but also about the importance of documenting your invention.  I then take this opportunity to also opinion about the impending first to invent changes to US patent laws.   What fun!

February 27, 2010

On Friday, December 11, 2009, two more patents bit the dust thanks to the ruling of the United States Federal District Court for the Northern District of California.  This case came to my attention through Docket Report, which provides a remarkably detailed and informative daily summary of patent litigation events.  In the matter of Fuzzysharp Technologies, Inc. v. 3D Labs, Inc., LTD (Case No: C 07-5948 SBA) District Judge Saundra Brown Armstrong granted Summary Judgment for the defendant and ruled that the relevant claims of U.S. Patent No. 6,172,679 and U.S. Patent No. 6,618,047 were invalid for failure to satisfy the machine or transformation test set forth by the United States Court of Appeals for the Federal Circuit in Bilski.  It seems inevitable that the Supreme Court will alter in at least some way the Bilski test, which Justice Sotomayor continually referred to as “extreme” during oral arguments and which also troubled Justice Breyer and others.  In the meantime, because the Patent Office and District Courts continue to churn these cases, a lot of work will be wasted and money needlessly expended only to have to start all over with a new test.  Talk about ridiculous!

US Supreme Court Building, Washington, DC

On Monday, November 9, 2009, the United States Supreme Court will hear oral arguments in the much anticipated Bilski case, which could well decide once and for all whether business methods and software remain patentable in the United States. I will be in attendance at the oral argument, which will take place after a lunch recess. I will be joined by John White , the creator of the PLI Patent Bar Review Course and patent attorney with Berenato & White. My intention is to write and post throughout the day on Monday, leading up to the oral arguments and then in the afternoon as soon as I an after oral arguments are completed. John and I will then participate in a PLI Hot Topic Briefing on Wednesday, November 11, 2009 from 1pm to 2pm ET. We will be joined on this briefing by Scott M. Alter of Faegre & Benson LLP and Douglas R. Nemec of Skadden, Arps, Slate, Meagher & Flom LLP, both of whom along with John White are co-chairs of PLI’s 4th Annual Patent Law Institute. The title of the PLI briefing is Bilski Supreme Court Arguments: Eyewitness Report and Expert Analysis, and CLE credit is available. As always, PLI Privileged Members may attend for free, as they may do with virtually all PLI programs. Those who are not Privileged Members can also join in the briefing for a standard fee. PLI has also decided to make this briefing and other pre-recorded Bilski presentations freely available to any members of the media who may be interested in obtaining a deeper understanding of the issues surrounding this extremely important case.

On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued a landmark decision in In re Bilski. The United States Supreme Court has accepted the Bilski case and will hold oral arguments on Monday, November 9, 2009. My plan is to be present for the oral arguments, and I have submitted a request to the Supreme Court for press credentials for the day. I still have not heard back from the Clerk of the Supreme Court, and it is my understanding that the Supreme Court has never provided press credentials for those who write primarily online, which is interesting in and of itself given the nature of the Internet and the fact that niche reporting is done far better (typically) by bloggers. Nevertheless, in order to prepare for the Supreme Court oral argument I am picking up the History of Software Patents series. The History of Software Patents Part I appeared in January 2009, and focused on US Supreme Court cases in the software space, namely Gottschalk v. Benson and Diamond v. Diehr. The History of Software Patents Part II appeared in April 2009 and focused on Federal Circuit development of law in Arrhythmia Research Technology, Inc. v. Corazonix Corp., and the supposed demise of the Freeman-Walter-Abele test. Part III now picks with In re Alappat.

Last week I was at the Patent Office interviewing a case along with Mark Malek, who was in town from Florida to talk firm business, look for office space and interview some patent agents regarding coming to work with us.  The interviews lined up for this trip were all “Bilski-related,” in that the CAFC decision in In re Bilski was creating patentability issues.   We learned that the sand is shifting with respect to the way the Patent Office is handling Bilski.  What we learned is that things that we were doing in previous months are no longer acceptable.  It seems that early last week a memo went out from the powers that be to the examiners handling Bilski-related applications, and in the memo it was explained that merely putting “computer implemented method” in the preamble of the claim is not something that will any longer work to overcome a patentable subject matter rejection under 35 U.S.C. 101. It seems that now you need to have “computer implemented method” in the preamble and there must also be positive recitation of “a computer” in the body of the claim.  So the claims will now read something like “a computer implemented method… wherein the above steps are performed on a computer.”  As Mark said, “talk about the Department of Redundancy Department!”

I have long since lost hope that those who are truly anti-patent and anti-software zealots will ever come to accept that software should be patentable. For reasons that are beyond me they will not even admit that software can be patented. Talking to such a lunatic fringe is hardly worth the time it takes, or the adjida it causes, and seems to approximate a real life Monty Python sketch where the people who claim to have the far superior intellect have such narrow minds that even in the face of overwhelming proof they cling to the irrational and simply incorrect view that software is in fact math and everyone knows math isn’t patentable. Yes, the lunacy is high, very high indeed. So high that the only reason worth continuing to write articles like this is to hopefully prevent the overall anti-patent and anti-invention hysteria that seems to be gaining steam. But the real goal is to try and make sure that any policy makers, decision makers and even those who wear black robes and work at that hallowed place on the corner of First Street, NE and East Capitol Street understand that the steam engine of the 21st century is software, and software must be patentable!