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The Patent Process

The Patent Process. Robert P. Simpson, Esq. Simpson, Simpson & Snyder, L.L.P. 5555 Main Street, Williamsville, NY 14221 Telephone: (716) 626-1564 rsimpson@idealawyers.com. Nostradamus Award Winners.

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The Patent Process

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  1. The Patent Process Robert P. Simpson, Esq. Simpson, Simpson & Snyder, L.L.P. 5555 Main Street, Williamsville, NY 14221 Telephone: (716) 626-1564 rsimpson@idealawyers.com

  2. Nostradamus Award Winners • “Inventions have long since reached their limit, and I see no hope for further development.” Julius Sextus Frontinus, highly regarded Roman engineer of 1st century A.D. • “Everything that can be invented has been invented.” Charles H. Duell, Commissioner of Patents, urging President McKinley to close the U.S. Patent Office in 1899.

  3. PATENT STATISTICS • Over 6,000,000 U.S. Utility Patents issued to date • Over 300,000 patent applications filed annually; of which about half will mature to patents • Approximately 1,000,000 lawyers in U.S. • Approximately 25,000 registered patent attorneys and agents • Approx. 2200 Patent Examiners (10 to 1 ratio)

  4. What Is An Invention? • An invention is any new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereof. 35 U.S.C. 101

  5. Two Necessary Elements of Invention • Conception • Reduction to Practice • Actual (prototype) • Constructive (on paper)

  6. What Is A Patent? • U.S. Patent

  7. Rights Conferred By A Patent • A patent conveys the right to exclude others from: • making, using, or selling the patented invention for the term of the patent.

  8. Requirements for Patentability • To be patentable in the United States, the invention must: • Be Novel; • Be Useful; and, • Have been “non-obvious” to one having ordinary skill in the pertinent art at the time the invention was made.

  9. Non-obviousness • Does the prior art, considered individually or collectively, contain sufficient teaching, suggestion, or motivation such that the claimed invention would have been obvious to one having ordinary skill in the art at the time the invention was made?

  10. Publish or [Perish] Patent • Bars to Patentability • In the U.S., you have one year from publication, public use or offer of sale to apply for patent. • Canada also has one year grace period • Almost no other country has such a generous grace period.

  11. Proving Date of Invention • The importance of laboratory (invention) notebooks • Hardbound – not looseleaf • Indelible ink • Dated and witnessed by at least two others who understand the invention • Save postage – don’t mail it to yourself!

  12. How to Assist Patent Attorney • Provide complete as possible description of invention (both text and drawings, electronic file if possible) • Disclose all pertinent prior art of which you are aware, but never call anything “prior art” • Advise of all potential statutory bars (sales, publication, public use) • Be patient as attorney comes up to speed on invention

  13. What May Be Patented? • The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.”

  14. What Cannot be Patented • Laws of nature; • Natural phenomena; • Abstract ideas.

  15. Diamond v. Diehr450 U.S. 175 (1981) • Certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application.

  16. Patentability of Software (Stage 1) • Gottschalk v. Benson, 409 U.S. 63 (1972), holds that method claims directed to computer program for converting binary-coded decimal (BCD) signals into pure binary signals was unpatentable. They were “so abstract and sweeping as to cover both known and unknown uses” without any apparatus.

  17. Patentability of Software (Stage 2) • Freeman-Walter-Abele test (1970s – 1994): • 1. Determine whether the claim recites an algorithm. • 2. Analyze the claim as a whole to determine if it wholly preempts use of the algorithm. • 3. Determine if the algorithm is applied in any manner to physical elements.

  18. Patentability of Software (Stage 3) • In re Allapat, 33 F.3d 1526 (Fed. Cir. 1994) • Apparatus claims to rasterizer held patentable because mathematical algorithms were transformed into practical application.

  19. Printed Matter Rejection • “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. Although the printed matter must be considered, in that situation it may not be entitled to patentable weight. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983).

  20. Business Method Rejection • Hotel Security Checking Co. v. Lorraine Co., 160 F.2d 467 (2d Cir. 1908). • Use of a duplicate sheet of paper and slip by waiters and waitresses to prevent theft. • Holding of court based on novelty and not eligible subject matter for patent.

  21. In re Patton, 127 F.2d 324 (CCPA 1942) • Claimed invention was directed to nationwide system of fire protection against aircraft bombing attacks. • “In this connection it is sufficient to say that a system of transacting business, apart from the means for carrying out such system, is not …patentable subject matter.”

  22. Warmerdam, Lowry & Beauregard • In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994). The “Bubble Case”. Court expressly holds that data structure, in the abstract was not eligible subject matter for patent.

  23. In re Lowry, 32 F.3d 1579 32 USPS2d 1031(Fed. Cir. 1994) • PTO rejected claim to “data structure” under printed matter doctrine. • Court held that “data structures are specific electrical or magnetic structural elements in a memory … data structures provide tangible benefits … They are not analogous to printed matter.” The Court reversed the PTO.

  24. In re Beauregard, Order No. 95-1054 (Fed. Cir. 1995 • Invention as claimed by IBM inventors related to computer program stored on a floppy disk, program designed to “fill a polygon”. • PTO rejected claims initially based on printed matter doctrine, then “changed its mind” while on appeal. No case or controversy before court, so case was remanded to the PTO.

  25. WWW (1990)

  26. Examination Guidelines for Computer-Related Inventions • On June 2, 1995, Bruce Lehman, Commissioner of Patents and Trademarks, announced new guidelines for Patent Office examiners to follow in examining software related inventions. The final guidelines were published on February 29, 1996, and became effective March 29, 1996.

  27. State Street Bank & Trust v. Signature Financial Group • 1. Freeman-Walter-Abele test is dead! • 2. Business method ground of rejection is dead! • 3. Mathematical algorithm rejection is clarified. • 4. PTO Guidelines are affirmed.

  28. Enablement • “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, … to make and use the same …” 35 U.S.C. 112

  29. USPTO Action Plan • On March 29, 2000, the Patent Office announced an action plan for business method patents which includes greater efforts to search and find prior art and a second level review of all allowed applications.

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