Gene has asked me to write an executive summary that conveys the essence of my new book, The Software IP Detective’s Handbook: Measurement, Comparison, and Infringement Detection. While I definitely appreciate his request, I hope I’m not completely successful because that would mean that the two years of nights and weekends I spent writing the book, not to mention the years developing the mathematical algorithms and the methodologies described in the book, could have been done in a single evening.

I’ve personally been working as an expert witness in intellectual property disputes, specializing in software cases, for about 15 years. When I began working in this area, I found that most experts used a combination of off-the-shelf computer code analysis programs, home-grown analysis programs, and lots of long hours and late nights poring over lines of code. Some experts used tools available from universities that are called “software plagiarism detection tools” that produced dubious results even when they executed correctly. Expert reports were then written and rebutted. Arguments often got very technical and detailed and could easily confuse a non-technical judge or jury. Different experts often had different definitions of plagiarism or found different signs that they considered markers for copied code. Some parties to a litigation, and some experts they hired I’m sad to say, seemed to purposely cloud the issue to justify illicit or at least questionable behavior. I decided that a standard measure of software copying that could be objectively tested was needed, and so I developed code correlation.

A little over a year ago the United States Supreme Court issued its decision in Bilski v. Kappos. The critical question presented to the Court for consideration was whether the Federal Circuit erred by creating the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter. The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, but rather that it was an important clue, thereby overruling the Federal Circuit who had earlier ruled that the machine or transformation test was the singular test to determine whether an invention is patentable subject matter.

But what practical effect did the Supreme Court ruling in Bilski v. Kappos have? Truthfully, not much at least in terms of the day to day approach of patent attorneys and the U.S. Patent and Trademark Office.  Certainly, the decision was important in that it preserved the patentability of at least some business methods and preserved the patentability of software, both of which continue to remain patentable in the United States.  What has transpired since the Supreme Court’s decision, however, is not much different, if at all different, than what happened day-to-day prior to the decision.

Earlier this week, on April 5, 2011, Apple, Inc. was awarded U.S. Patent No. 7,921,187, titled “Newsreader for mobile device.”  The patent application was originally filed June 28, 2007, and as a result of delay by the Patent and Trademark Office Apple will be entitled to a patent term that is extended by 830 days.  While patent term extension seems to be a growing problem due to the backlog of applications, let’s not focus on the patent term, but rather look at the core of what is being protected and how this patent was obtained.  I’m not going to defend the patentability of this invention, but rather try use this as an illustration of how to read a patent and search for clues in the file history regarding how and why claims are awarded.  It should also adequately demonstrate how easy it can be to distinguish prior art references and overcome rejections if you know what you are doing or are represented by someone who does.

At least initially, President Obama was keenly interested in exploring how the United States government could use open source software rather than rely on proprietary software. President Obama was so interested in pursuing open source software solutions that on his second day in Office he asked Scott McNealy, a co-founder of Sun Microsystems, to lead his open source charge.  In fact, President Obama reportedly asked McNealy to prepare a report on how the federal government could employ open source software, but as yet, some 26 months later there has been no mention of the report or across the board government adoption of open source software.

Open source advocates praised the fact that President Obama wanted to transition the U.S. government away from proprietary solutions and into open source, but now that the report has seemingly stalled and the White House has done little more than release open source Drupal code, what does the open source community have to show?

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.

In this article we provide a short snapshot of the New Zealand intellectual property (IP) protection scene as it stands today, as well as some upcoming changes.

With a population of just 4.3 million and a remote geographic location, New Zealand (NZ) may often get overlooked when considering a patent or trademark filing strategy.  But did you know that New Zealand is one of the easiest countries in which to do business, and the easiest place in the world to start a business, according to The World Bank (Doing Business report)?  New Zealand was the first to launch an online company registration system back in 1996 and it’s been mandatory since 1998.  Our labor market is flexible and deregulated, with a highly educated and multi-skilled workforce, we have sophisticated telecommunications links and excellent export networks.  We also have low-expense and low-bureaucracy patent and trademark systems compared to those in place elsewhere in the world and the low NZ dollar makes filing for IP protection here even more favorable.

Picking up where we left off in Part 1 —

4.            High Court Rules on Trade Mark ‘Use’

What? A ruling of Australia’s top court on what is required for a trade mark to be ‘used’ in Australia.

Why does it rate #4? For being the more significant one of only two cases yet to be accepted by the High Court under the Trade Marks Act 1995 (the other of which was also decided in 2010).

Although Australia’s current Trade Marks Act has been in-force since 1995, the High Court of Australia (the top court in the land, equivalent to the US Supreme Court) had never granted leave to appeal a decision made under the Act.  Was it, perhaps, that the legislation was so perfect that it did not require interpretation at the highest judicial level?  Or maybe the Federal Court was doing such a good job that no higher review was necessary.  In any event, the situation changed in 2010, when the High Court issued two opinions in relation to the Trade Marks Act 1995.  The more significant of these was E&J Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 addressed the issue of what constitutes ‘use’ of a trade mark in Australia, sufficient to defend against removal of the mark from the register on grounds of non-use.

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.

It is impossible to search for technology related news online anymore without being inundated with the days wave of open source news stories that are seemingly proliferating faster than a human engineered bacterium, which by the way is patentable subject matter in the United States. In any event, “open source” has become the new “cyberspace” or “technological age” or even “telecommunications.” All of these terms are certainly understood by every reader, but part of the beauty of the term is that it can mean all things to all people, without ever really conveying a standardized meaning that everyone can agree with; much like the term “compassionate conservative,” which was so frequently used by the Bush Administration. What is a “compassionate conservative”? I really have no idea, but it sounds like a good thing and something to aspire to! After all, how could being a compassionate anything be bad?

So what does “open source” mean? The term is nebulous at best and confusing at worst.  The term, however, has undeniably become associated with the easy to understand but always misleading term – “free.” Certainly everyone knows the meaning of “free,” a term so universally understood that men (who are from Mars) and women (who are from Venus) both accept the term as meaning the very same thing. Even children understand the meaning of “free,” which leads to a plurality of interesting ironies.