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2 nd Annual Information Technology Law Seminar

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

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  1. 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

  2. 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

  3. 14 56 of 350 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

  4. 12 55 of 350 Lawyers: Do you currently practice law full-time? • Yes • No Patenting Software and Business Methods - RJMorris

  5. 15 56 of 350 Everybody: Does your job involve patents? • Yes • No Patenting Software and Business Methods - RJMorris

  6. 15 54 of 350 Everybody: Have you ever written a patent application? • Yes • No Patenting Software and Business Methods - RJMorris

  7. 3 58 of 350 Are you an inventor on any patent applications or patents? • Yes • No Patenting Software and Business Methods - RJMorris

  8. 6 57 of 350 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

  9. 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

  10. Had you heard of the Bilski case before you signed up for this seminar? Yes No 14 44 of 350 Patenting Software and Business Methods - RJMorris

  11. 15 56 of 350 Do you have an opinion on it? • Yes • No Patenting Software and Business Methods - RJMorris

  12. 15 2 of 350 If you have an opinion on Bilski, please first rate your knowledge of patent law. • Excellent • Moderate • Minimal Patenting Software and Business Methods - RJMorris

  13. 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

  14. Page 6-2 to 6-3 and 6-17 The '060 Patent Prior Art Patenting Software and Business Methods - RJMorris

  15. 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

  16. 15 55 of 350 Are you comfortable with the term “PRIOR ART”? • Yes • No Patenting Software and Business Methods - RJMorris

  17. 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

  18. 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

  19. 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

  20. 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 and Discoveries. Patent Law Patenting Software and Business Methods - RJMorris

  21. 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

  22. 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

  23. 12 53 of 350 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

  24. 5 48 of 350 Is there invalidating prior art to the Bilski claims? • Absolutely • Probably • Probably not • No • No opinion Patenting Software and Business Methods - RJMorris

  25. 10 55 of 350 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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