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2 nd Annual Information Technology Law Seminar. Patenting Software and Business Methods By Roberta J. Morris Lecturer, Stanford Law School. Patenting Software and Business Methods. Preliminary questions Can you? Should anyone be allowed to? But first: who are YOU?

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2 nd annual information technology law seminar

2nd Annual Information Technology Law Seminar

Patenting Software and Business Methods

By Roberta J. Morris

Lecturer, Stanford Law School

Patenting Software and Business Methods - RJMorris


Patenting software and business methods

Patenting Software and Business Methods

  • Preliminary questions

    • Can you?

    • Should anyone be allowed to?

  • But first: who are YOU?

  • And second, what do you now about patents in general and the Bilski case in particular?

Patenting Software and Business Methods - RJMorris


Are you

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Are you:

  • A lawyer who is registered to practice before the PTO

  • A lawyer who is not registered to practice before the PTO

  • A registered patent agent

  • None of the above

Patenting Software and Business Methods - RJMorris


Lawyers do you currently practice law full time

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Lawyers: Do you currently practice law full-time?

  • Yes

  • No

Patenting Software and Business Methods - RJMorris


Everybody does your job involve patents

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Everybody: Does your job involve patents?

  • Yes

  • No

Patenting Software and Business Methods - RJMorris


Everybody have you ever written a patent application

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Everybody: Have you ever written a patent application?

  • Yes

  • No

Patenting Software and Business Methods - RJMorris


Are you an inventor on any patent applications or patents

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Are you an inventor on any patent applications or patents?

  • Yes

  • No

Patenting Software and Business Methods - RJMorris


How many patents have you looked at other than the one in my materials

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How many patents have you looked at (other than the one in my materials)?

  • Zero

  • A few (less than 10)

  • Some (less than 100)

  • Many

Patenting Software and Business Methods - RJMorris


Timeliness

Page 6-2

Timeliness

October 30, 2008: The Federal Circuit decides In re Bilski, 545 F.3d 943 (en banc)

Today is October 29, 2009.

Tomorrow: Happy Birthday, In re Bilski.

November 9, 2009: The Supreme Court hears oral argument in Bilski v. Kappos

Patenting Software and Business Methods - RJMorris


Had you heard of the bilski case before you signed up for this seminar

Had you heard of the Bilski case before you signed up for this seminar?

Yes

No

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Patenting Software and Business Methods - RJMorris


Do you have an opinion on it

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Do you have an opinion on it?

  • Yes

  • No

Patenting Software and Business Methods - RJMorris


If you have an opinion on bilski please first rate your knowledge of patent law

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If you have an opinion on Bilski, please first rate your knowledge of patent law.

  • Excellent

  • Moderate

  • Minimal

Patenting Software and Business Methods - RJMorris


Patent truths

Patent Truths

Page 6-2

Truth 1. A patent is a right to exclude, not a right to do.

Truth 2. Just because the Patent Office grants you a patent over your competitor's older patent does not mean you do notinfringe.

Truth 3. To decide if patent X is valid, look at patent X's claims. To decide if patent Y is infringed, look at patent Y's claims.

Patenting Software and Business Methods - RJMorris


The 060 patent

Page 6-2 to 6-3 and 6-17

The '060 Patent

Prior Art

Patenting Software and Business Methods - RJMorris


2 nd annual information technology law seminar

TERMS OF ART

  • I use the Mona Lisa to indicate

  • TERMS OF ART.

    • Use such terms carefully.

    • They don’t always mean what you think they mean.

    • Anyone who DOES know what they mean may misunderstand you if you misuse them.

FEEL FREE TO ASK ABOUT

Patenting Software and Business Methods - RJMorris


Are you comfortable with the term prior art

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Are you comfortable with the term “PRIOR ART”?

  • Yes

  • No

Patenting Software and Business Methods - RJMorris


Claim 1 of the 060 patent

Page 6-3 and 6-31

Claim 1 of the '060 Patent

The application was filed in 1996. (See page 6-17, left column next to “(22)”.) That makes any art up to 1995 “prior.”

Patenting Software and Business Methods - RJMorris


2 nd annual information technology law seminar

  • The snowflake indicates something that

    • is true, more or less,

    • could be VERY complicated if you went into it deeply, and

    • might melt if you touch it.

  • FEEL FREE TO ASK ABOUT SNOWFLAKES.

  • OTHERWISE, JUST BELIEVE.

Patenting Software and Business Methods - RJMorris


Claim 1 of the 060 patent1

Claim 1 of the '060 Patent

Page 6-4 and 6-31

  • An apparatus

  • for predicting a sales probability

  • for a sales account

  • at a stage within a sales cycle,

  • comprising:

    • means for determining

      • a current stage

      • of the sales cycle

      • for the sales account;

    • means for calculating

      • an account control level

      • for the sales account;

    • and

    • means for correlating

      • a sales probability

      • based upon

        • said current stage

          • of the sales cycle and

        • said calculated account control level.

Consider this claimed invention.

What was unknown as of 1995?

  • Claim elements using the words “means for” (aka “means plus function”)

    • READ ON

    • ARE LITERALLY INFRINGED BY

    • ARE ANTICIPATED BY

  • the structures described in the specificationand theirequivalents.

  • 35 USC 112 p 6

Patenting Software and Business Methods - RJMorris


The law

The LAW

Page 6-5 to 6-6

Was this word INTENDED to exclude some INVENTIONS?

The Constitution:

ARTICLE I. Section 8.

The Congress shall have Power *** [clause 8] To promote the Progress of

Science and useful Arts,

by securing for limited Times to

Authors and Inventors

the exclusive Right to their respective

Writings andDiscoveries.

Patent Law

Patenting Software and Business Methods - RJMorris


The law1

The LAW

Page 6-6

Were these words INTENDED to exclude some INVENTIONS?

They have been around in patent statutes since ~1623.

35 USC 101. Inventions patentable.

Whoever invents or discovers

any new and useful

process, machine, manufacture,

or composition of matter,

or any new and useful improvement thereof,

may obtain a patent therefor,

subject to

the conditions and requirements of this title.

Patenting Software and Business Methods - RJMorris


Claim 1 of the bilski application

Claim 1 of the Bilski Application

Page 6-9

  • (b) identifying market participants

    • for said commodity

      • having a counter-risk position

      • to said consumers; and

  • (c) initiating a series of transactions

    • between

      • said commodity provider and

      • said market participants

    • at a second fixed rate

    • such that

    • said series

      • of market participant transactions

    • balances

    • the risk position of said series

      • of consumer transactions.

  • A method for managing

    • the consumption risk costs

    • of a commodity

    • sold by a commodity provider

    • at a fixed price

  • comprising the steps of:

    • (a) initiating a series of transactions

      • between said commodity provider and

      • consumers of said commodity

        • wherein said consumers

          • purchase said commodity

          • at a fixed rate

          • based upon historical averages,

        • said fixed rate corresponding to

        • a risk position of said consumer;

Patenting Software and Business Methods - RJMorris


Whose opinion in in re bilski is closest to your own

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Whose opinion in In re Bilski is closest to your own?

  • Majority (Michel)

  • Concurrence (DYK, joined by LINN) : "organizing human activity“ is unpatentable under 101

  • Dissent by Newman

  • Dissent by Mayer: overrule State Street and AT&T

  • Dissent by Rader

  • None

  • No opinion

Patenting Software and Business Methods - RJMorris


Is there invalidating prior art to the bilski claims

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Is there invalidating prior art to the Bilski claims?

  • Absolutely

  • Probably

  • Probably not

  • No

  • No opinion

Patenting Software and Business Methods - RJMorris


Should this invention be patentable

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SHOULD this invention be patentable?

Ignore the law as it is, and assume Bilski's claims are valid over the prior art and are fully enabled.

  • Yes

  • No

  • No opinion

  • I can’t answer because the assumptions are too unbelievable.

Patenting Software and Business Methods - RJMorris


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