Obtaining a software patent today is easier than it was just a year ago in most Art Units at the United States Patent and Trademark Office (USPTO), thanks to the Federal Circuit’s decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), the USPTO’s guidance to patent examiners on the Berkheimer decision, and more recently the Revised Patent Eligibility Guidance published by the USPTO at the beginning of 2019. Still, obtaining a software patent is more difficult than it was five years ago, and much more difficult than it was ten years ago.
The patent laws relating to software have been in a state of near constant flux over the last decade. In order to have the best chance at obtaining a software patent, and at having that patent survive any post grant challenges after it is issued, it is critically important that the description of the invention be as complete as possible at the time of filing the first patent application.
In order to adequately identify and describe a software-related invention to stand up to the scrutiny it will receive today drafters must take into consideration the lessons from the “lighthouse” cases. When the Federal Circuit to applies and analogizes the facts of these cases and claims to the claimed invention it leads to a finding that the claim is patent eligible. Thus, you need to draft your specification and claims with the teaching of these critically important cases in mind.
Join Gene Quinn, patent attorney and the President & CEO of IPWatchdog, Inc., on Thursday, February 14, 2019, at 12pm EST for a free webinar discussion Drafting Software Patents: Lessons from Key Lighthouse Cases. Joining Gene will be John White, patent expert, lecturer and partner with Berenato & White, and Megan McLoughlin, patent attorney with LexisNexis IP.
In addition to answering as many questions as possible, panelists will address: