We propose that the U.S. Patent and Trademark Office amend its subject matter qualifications guidelines, and the rest of the related advice, to make clear that claims could be expressly directed to “computer software” consistent with 35 U.S.C. §101. This could bring the Patent Office’s practice in keeping with recent Supreme Court and Federal Circuit case law, also would assist innovators to better protect their software inventions that perform such a crucial part in the present computer-focused market.
The Patent Office’s current guidelines may be performed to discourage or even prohibit direct claiming of pc program. Even where the crux of the invention is directed to software, patentees currently are prompted to take part in a needlessly inefficient and costly claim building process, whereby practitioners try to cover software in a direct manner — with several sets of claims directed to systems that are configured, media, methods, or other similar terminology — rather than simply claiming software itself.
There is no reason to require this type of draftsman’s artistry. Even the U.S. Supreme Court reminded us in Alice that it’s “has long ‘warn[ed] … against’ translating §101 in manners which make patent eligibility ‘depend only on the draftsman’s artwork”’ instead of the true invention. [1]Nevertheless this really artistry is encouraged by the Patent Office rules against direct claiming of software, despite recent Supreme Court and Federal Circuit acknowledgement that claims directed to software are far not excluded from the scope of §101. [2] it’s time to make the Patent Office’s guidelines consistent with the current state of the law.
The Patent Office’s Present Reviews Could Be Interpreted to Exclude Software By the Reach of Patent-Eligible Subject Matter, Which Yields an Wrong Result
According to §2106 of this Manual of Patent Examining Procedure (“MPEP”), a claim to “a computer program per se” isn’t directed to a statutory category of patentability. Based on an investigation of issued patents, the Patent Office apparently has not uniformly implemented this advice to prohibit claims especially directed to pc program. [3] Yet, most patent practitioners appear to see the Patent Office’s guidelines as prohibiting computer software claims, as evidenced by the routine practice of using various types of system, configured system, or press claims — rather than “computer software” claims — to recite what is primarily a software-focused invention.
From the MPEP, the Patent Office cites a 44-year older Supreme Court case, Gottschalk v. Benson, to encourage its advice that “a computer program per se” is outside the range of patentable subject matter. [4] To this extent that the Patent Office interprets its advice to bar all claims into “computer software,” we submit that such an interpretation is wrong. Gottschalk had special details and involved claims directed into a “formula for converting BCD numerals to pure binary numerals” along with the claims in that case would have protected an “algorithm” [5] Further, the Gottschalk claims concerned “a way of programming a general purpose digital computer” and weren’t directed to pc software itself. [6]
Even the Supreme Court (in Alice) and the Federal Circuit, in following instances, have quite recently addressed claims directed to computer software and have concluded that there’s not any subject matter pub under §101. Even the Federal Circuit, addressing Alice at length, clearly and unambiguously established in Enfish that there’s no per se bar to software patentability. Indeed, the Federal Circuit held that claims “directed to software” could be non-abstract and pay a patent-eligible concept, thus requiring no Additional evaluation as to eligibility:
Software can make non-abstract developments to computer technology just as hardware enhancements can, and on occasion the improvements can be accomplished through either path. We thus find no reason to conclude that claims directed to improvements in computer-related technologies, such as those directed to software, are subjective and necessarily analyzed at the next measure of Alice, nor do we believe that Alice so sends. [7]
The Federal Circuit further held that the fact that the patented “advancement isn’t defined with regard to ‘bodily’ parts does not emphasise the asserts,” given that “[m]uch of this progress made in computer technology is made up of improvements to software which, by their very nature, may not be characterized by particular bodily attributes but instead by logical structures and processes.” [8] The Federal Circuit “do[es] not find in Bilski or Alice, or [its own] instances, an exclusion to patenting this huge area of technological advancement.” [9] The system and process claims at issue “directed to an innovative logical model for a computer database” were held to be patent-eligible under §101. [10]
The Patent Office’s latest guidance therefore seems to contradict recent case law concerning software patentability and rather boosts draftsman’s artistry by requiring patentees to counteract their software-based claims by indirectly claiming software through usage of method, system, network, along with means-plus-function claims rather than “software” claims. But the Supreme Court made clear from Alice that it will not give credence into “draftsman’s artwork” to determine what is within the scope of §101, but rather concentrates on the genuine inventive subject matter. [11] Again, software inventions aren’t excluded from §101.
Why if the Patent Office, under the guise of §101, encourage patentees to jump through linguistic hoops that the Supreme Court has announced meaningless for purposes of §101? Instead, the Patent Office’s advice ought to be updated to reflect the concept, now resolved, that software is inside the range of patentable subject matter[12] and allow software to be immediately maintained subject to existing case law protections. [13]
A Change into Patent Office Guidelines Would Be the Most Effective Way to Advertise Clarity and Consistency With Respect to Software Inventions
The computer technologies community must have certainty that their crucial software creations –assuming all other requirements of patentability are met — may be maintained and secure in a straightforward way. This has additional significance today because of its U.S. market, which, with fought with production in the recent years, increasingly depends upon intellectual property and technical know-how. Given the value of software, it makes no sense to burden companies in their quest to innovate, and safeguard their patentable inventions, and further contribute to the U.S. market.
In light of the foregoing, a few commentators have indicated extensive changes to §101 so as to address recent confusion and make clear that software innovations are patentable. By way of example, David Kappos, former director of the U.S. Patent and Trademark Office, recently called for §101 to be abolished. [14] Kappos contended, among other things, that §101 unnecessarily places U.S. innovators at a competitive disadvantage vis-à-vis other nations with respect to software, stifling production. [15]
It is true that any confusion about §101 would function as an obstacle to software creation. However, as opposed to taking the more extreme measure of amending or perhaps eliminating §101, we rather submit that the Patent Office could resolve confusion by amending its rules discussed above, consistent with recent Supreme Court and Federal Circuit law.
With this simple change, inventors can directly assert software in their patent applications rather than deploying different claim sets to indirectly pay their software-based creation. The numbers and types of issued patent claims might accordingly be simplified and compact, as might resultant practices such as claim construction, patent prosecution, patent litigation and post-grant Patent Office procedures. Efficiencies of the time and money would result. Further, by allowing patentees to immediately assert what is thought to be the genuine invention, the Patent Office and courts would be able to more easily focus on the true purported invention, assess its scope, and examine its own patentability, validity, legitimacy and/or enforceability.
With the above change, software innovators could also rest assured that should a different company made or marketed infringing software the issue could be addressed via a straightforward suit targeting the creating or sale of the software itself. This stands in contrast to current efforts to apply method, system or media claims that indirectly goal software, even though it may be the software that truly embodies the crucial inventive concepts. [16]
For the foregoing reasons we think that the Patent Office should consider amending its relevant guidelines concerning patentability of claims directed to “computer software” in order that software may be immediately maintained.
[1] Alice Corp.. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2360 (U.S. 2014).
[2] See, e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2355-60).
[3] See, e.g., U.S. Patent No. 6,832,726 (separate claim 1 directed to “Computer applications including computer readable code …”).
[4] MPEP §2106 (citing Gottschalk v. Benson, 409 U.S. 63, 72 (1972)).
[5] Gottschalk, 409 U.S. at 71-72.
[6] Id. In 65.
[7] Enfish, 822 F.3d at 1335. [8] Id. In 1339.
[9] Id. (emphasis added). [10] Id. In 1330.
[11] Alice, 134 S. Ct. at 2360.
[12] As an example, the Patent Office guidelines could signify that software is made or fabricated in the meaning of §101. See 35 U.S.C. §101 (covering any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”).
[13] The current body of case law will continue to govern the issue of whether any particular invention (software or otherwise) impermissibly covers an abstract thought or preempts that an whole area, and similar investigations.
[14] Visit here.
[15] Id.
[16] The issue whether the selling of a product embodying a brand new invention can immediately infringe a system claim was raised into the Supreme Court in a 2013 request for writ of certiorari. Mirror Worlds v. Apple Inc. , 2012 U.S. Briefs 1158 (U.S. Mar. 21, 2013). The Supreme Court denied certiorari, and therefore didn’t resolve the issue.
source http://www.lighthousecomputersolution.com/time-for-pto-to-permit-immediate-due-to-computer-software/
No comments:
Post a Comment