Remembering TCPaul, 2016-2019

Software patent question

Hey, patent lawyers... Some time back, I watched a video jeffm03/30/19
This got me thinking, when a copyright vs. patent is correct 2ski03/30/19
Firstly, software can NEVER be patented. As you say, soft patenttrollnj03/30/19
Right. So, for example, if someone comes up with a file com jeffm03/30/19
I don't know. I'm not familiar enough with computers an patenttrollnj03/30/19
Software can be patented. If the software invention is mere blakesq03/30/19
Yes, but it's the method/process aspect of the software that patenttrollnj03/30/19
As others have said, you can't patent software in the sense malletofmalice03/30/19
us patent no 10,244,497 has the following claim 10, which blakesq03/30/19
The software is stored in a "non-transitory computer readabl malletofmalice03/30/19
No, form of the claims do not matter. The claims have to be imoothereforeim03/31/19
^. Beauregard claims are directed toward articles of manufac interveningrights04/01/19
Courts apply the two step Alice inquiry on patentability. Lo blawprof03/30/19
Yeah this is clear as mud. CN and EP have used categories o imoothereforeim04/01/19
jeffm (Mar 30, 2019 - 9:35 am)

Hey, patent lawyers...

Some time back, I watched a video which made the case against the patentability of software. The essence of the claim was that software is code, and code is math at its core. This, of course, is also true with chemistry, physics, etc. Obviously, the PTO issues software patents.

What must you look for in software which would make it patentable?

Reply
2ski (Mar 30, 2019 - 10:19 am)

This got me thinking, when a copyright vs. patent is correct for IP? ( out of my lane here, but intriguing all the same )

Reply
patenttrollnj (Mar 30, 2019 - 10:45 am)

Firstly, software can NEVER be patented.

As you say, software is code. Meaning that at its core, code is an EXPRESSION that has been RECORDED IN A TANGIBLE MEDIUM. Thus, software obtains copyright (not patent) protection.

This is why you have software and informatics companies throwing around the term "proprietary technology." They don't like to say "copyrighted" software, since copyrights give-off the impression that they're selling books or paintings.

Anyway, what can be patented is a METHOD, thus when people talk about software patents, they're really talking about method patents. Unfortunately, it has become much more difficult to obtain a method patent these days, ever since the Bilski case of 2010.

Note that Bilski wasn't actually about software per se, but there was a whole string of cases since then that seemingly chipped-away at what types of methods can be patented. Personally, I've noticed many more 101 rejections (i.e., the subject matter of the application is not eligible for patent protection) in recent years, as compared to when I started practicing patent law.

Thus, the best way I know to explain it, for software to get patent protection today, it must be specific to a certain type of machine, and it must have some sort of "transformative" affect on that machine. Otherwise, the best you can do is a copyright.

Reply
jeffm (Mar 30, 2019 - 2:24 pm)

Right. So, for example, if someone comes up with a file compression method different than others such as WinZip, etc., is the new compression method patentable?

What about a new method for spreadsheet software which has a 2x faster calculation speed?

Just throwing out a couple of examples...

Reply
patenttrollnj (Mar 30, 2019 - 6:30 pm)

I don't know.

I'm not familiar enough with computers and coding to answer that.

However, to the best of my knowledge, it will depend on what actually takes place in the computer when the method is implemented. In other words, what circuit fires first, what wire is used to carry the signal, etc.

Remember, the software is merely an "instruction" for the computer to follow a specific method. It's the method that must affect the way the computer functions to be eligible for patent protection.

Reply
blakesq (Mar 30, 2019 - 6:40 pm)

Software can be patented. If the software invention is merely an abstract invention, and does not add something significantly more, then it will not be patentable. Software can also be and is Protected by copyright.

Reply
patenttrollnj (Mar 30, 2019 - 6:50 pm)

Yes, but it's the method/process aspect of the software that is patentable.

The code itself can receive copyright protection.

Very often, you would apply for both.

Reply
malletofmalice (Mar 30, 2019 - 8:58 pm)

As others have said, you can't patent software in the sense of "software per se." You can, however, patent the following:

1) A method of doing something, using a computer.
2) A computer or device that is programmed to do something
3) A computer-readable medium (like a hard drive) that stores the software code.

So 2 and 3 above are not software, but physical objects that store software.

When people talk about software patents, they really mean patents that contain one of the above types of claim.

Reply
blakesq (Mar 30, 2019 - 9:57 pm)

us patent no 10,244,497 has the following claim 10, which is a software claim: “10. A computer program product stored in a non-transitory computer readable medium for synchronizing a client clock of a network node to a reference clock, the computer program product comprising software instructions which, when run on one or more processing ...”

Reply
malletofmalice (Mar 30, 2019 - 10:35 pm)

The software is stored in a "non-transitory computer readable medium", which is an article of manufacturer. So the claim is not software per se. At least the patent office didn't think so.

Reply
imoothereforeim (Mar 31, 2019 - 7:56 pm)

No, form of the claims do not matter. The claims have to be substantively patent eligible.

Reply
interveningrights (Apr 1, 2019 - 11:10 am)

^. Beauregard claims are directed toward articles of manufacture.

Reply
blawprof (Mar 30, 2019 - 11:27 pm)

Courts apply the two step Alice inquiry on patentability. Look at some recent Fed Circuit decisions. The answer of course for software is "it depends." There are a lot of patent cases written by Judge Gilstrap out of Texas.

Reply
imoothereforeim (Apr 1, 2019 - 12:38 pm)

Yeah this is clear as mud. CN and EP have used categories on patent eligibility and they work very well. Our SCOTUS said no. Now nobody knows for certain what's patentable and what's not.

Judge Rader probably had the best solution. Everything is patent eligible; all rejections are 103 based.

Reply
Post a message in this thread