Comments on: How to Patent Software in a Post Bilski Era

By: Gene Quinn

Gene Quinn — Thu, 30 Jul 2009 06:55:47 +0000

Doug-

I don’t have any samples I can provide at the moment because they are not issued, at least since the latest memo from PTO hierarchy. This is a moving target, and what was OK several months ago is now not OK. I can tell you this though. If you write claims that were allowable under State Street and include “a computer implemented method” in the preamble, and then “wherein the above steps are carried out on a computer” you should be fine. Of course, that is assuming all of the above steps are carried out on a computer. I can envision in the future need to define a specific purpose computer, but this has been working for us lately.

I hope this helps.

-Gene

By: Doug

Doug — Wed, 29 Jul 2009 23:41:03 +0000

Do you have examples of software type claims that you believe would survive Bilski scrutiny? If so, please post. Thanks

By: Samir Raiyani

Samir Raiyani — Tue, 28 Jul 2009 20:57:35 +0000

My colleagues at Dolcera (http://www.dolcera.com) have reviewed over 2000 office actions, and created a database of over 100 Bilski-related USPTO office actions just in the software field. The results are summarized in the following slideset: http://www.dolcera.com/wiki/images/Dolcera.ppt

By: Mate Srsen

Mate Srsen — Tue, 07 Jul 2009 10:08:44 +0000

Wow. This is insightful.

I’ve never actually read an article written by a software patent lawyer until now. It’s fascinating. I think the only thing I can do here is congratulate you, Mr. Quinn, on your strong stomach. You must need it in your line of work.

By: Tim Casey

Tim Casey — Sun, 05 Jul 2009 16:17:50 +0000

I have been patenting software for 23 years and do not see Bilski really changing how I go about doing it. The problem with Bilski is that whoever wrote the application wrote the specification and claims as though the software was disembodied, i.e., not tied to any type of hardware or not resulting in a clear transformation of an input to an output. We went through the same issue with attempts to patent algorithms long ago and it was resolved in much the same way that the Fed. Cir. has ruled in Bilski. I can only imagine that Blski’s appeal to the S. Ct. has more to do with someone trying to cover themselves than it really represents a disagreement with the Fed. Cir. decision. If you don’t write the specification correctly in the first place, get a 101 rejection, and have a statutory bar with respect to fixing it with a CIP, then you eithr give up or appeal it as far as you can.

Is the S. Ct. going to rule software is unpatentable? Not likely, they do not have a history of ruling in that fashion, i.e., “anything under the sun made by man” is patentable subject matter. What they are more likely to do is reitterate the rules that are to be applied to patenting software, much like what they did with respect to the obviousness standard in KSR.

Will it change anything? Only if you didn’t know how to write a software patent in the first place. So, in that context, I agree with Gene completely. The problem with software patents is incompetent patent attorneys/agents. If you don’t know how to do something, you don’t do it (I don’t do life sciences and phara work because I am a BSEE and don’t know enough about those areas to be competent), but you don’t need to tell your clients that life sciences or drugs can’t be patented, you just refer them to someone who specializes in that type of work.

Tim

By: Adam

Adam — Tue, 30 Jun 2009 19:20:01 +0000

Gene, I was really hoping you weren’t condoning dishonesty. In the future, I won’t mistake that kind of sincerity for a joke.

By: Gene Quinn

Gene Quinn — Tue, 30 Jun 2009 14:01:21 +0000

Adam-

It is indeed scary that you cannot tell whether my comment is a joke or not.

Attorneys are paid to do for others what they could do for themselves if they had the knowledge and sophistication. So if courts want to try and prevent this sort of thing they are welcome to, but they do need to realize that patent attorneys are perhaps the most creative types of attorneys and will simply figure out ways to get around whatever requirements are put into place. The only thing that would prevent the patenting of an invention that is software related is if the Supreme Court says no process patents period. If they don’t say that software will be continued to be patented, in intellectually dishonest ways that suggest the magic is in the hardware.

-Gene

By: New Here

New Here — Tue, 30 Jun 2009 02:09:48 +0000

My hope is the USSC will rule that software is off the patent table. Seems that little has been written about the loop-holes that are allowing software patents that offer nothing more in value then happy owners, sad.This problem can be over if software patents end; no software patents no loop-holes. Too simple ?, I agree, what continues to happen at the PTO is too simple as well, the passing of software patents through because a magic word or two is included in the claims, that ends as being patents that hold tricks, then value, sad.How would one feel if you, were to find out the doctor is, because of a few “tricks” ?. Oh silly me, thats not the same thing, however it is, the impact on people’s lives is great when that, that is not what we believe it is, is given some form of power. Having the courts as boxing rings with the winners that go the 15 rounds, is of no value and the cost to everyone in one form or another, is too too high.

By: Noise above Law

Noise above Law — Mon, 29 Jun 2009 19:39:51 +0000

It’s equally scary that the statement CAN be taken as a joke or an earnest reply in response to what is happening to the Law as it falls to the agenda of the Office.

By: Adam

Adam — Mon, 29 Jun 2009 18:47:42 +0000

“which might mean that we have to start protecting software as a machine, which is intellectually dishonest and naive, but who cares as long as your client’s innovations are protected!”

It’s scary that I couldn’t tell if this was a sarcastic joke or not.