Drafting a Software Patent Application: Techniques and Strategies

1. CS 5060, Fall 2009Digital Intellectual Property Law Drafting a software patent application October 19th Lecture

2. Important disclaimer The purpose of this lecture is to give you a general idea how to draft a patent application for a software patent. Each patent application must be tailored for a particular invention. There is no “one size fits all” patent application. Particular care must be given to the claims, which define the legal rights of the patent owner. It is best to get professional help for drafting and prosecuting a patent application, although any work by the inventor is invaluable.

3. Contents of a patent application Each patent application must include: • Title of the invention • Names of the inventors • A short abstract (150 words maximum) • Specification describing how to make and use the invention, including the best mode contemplated by the inventor at the time of the invention • Claims (not required for a provisional application) • Oath of the inventors Nature of the specification and claims depends on the type of invention

4. Creating a software patent application • The first step is to determine the techniques in a program that are potentially patentable • Could be system as-a-whole, could be a special technique • Better to have a series of applications, rather than one jumbo • The prior art is then examined to determine how the technique might be regarded as novel and nonobvious • Search of issued and pending patents • Search of technical literature • Inventor’s knowledge of the prior art • From this, a claim strategy can be developed to claim the invention broadly while trying to avoid the prior art

5. Describing the technique • Create a flow chart showing the major steps of the overall technique • Create additional flow charts if necessary to elaborate on aspects of the technique • Create figures for any necessary hardware, data structures, or similar items • Include a reference number of anything that might be referred to in the description • Develop unique names for every item in the invention

6. Example flow chart

7. Elaborating on the overall flow chart

8. Write the specification: initial material • Short title for the invention Often “Method and system for …” • Information about prior applications and United States government rights “This application claims priority from Provisional Application Serial No. 60/123456, filed April 1, 2006.” • Field of the invention “This invention relates to text display on a digital computer system, and in particular to the highlighting of information in a hypertext system.” • Description of the related art Just enough to put the invention in perspective

9. Write the specification: initial material • Summary of the invention • If included at all, it should just be a short item highlighting the key aspects of the invention • Some people write it in terms of problems and how the are solved, but that might limit the invention only to those problems • Make it clear that this is not a full description of the invention: “These and other features of the invention will be more readily understood upon consideration of the attached drawings and of the following detailed description of those drawings and the presently-preferred and other embodiments of the invention.” • Brief description of the drawings Fig. 1 is a block diagram of a representative digital computer configuration on which the method of the invention can run. Fig. 2 is a flow diagram showing the major steps of the method of the invention. Fig. 3 is a flow diagram showing the major steps of the presently-preferred embodiment for locating a quoted passage in a source document.

10. “Detailed description of the invention” • Describe each block in the flow chart figures • Indicate not only the way you have implemented it, but also any other way that you can think of, even if it is not better • If the steps can be done in an order not shown in the figures, indicate that • For things illustrated in a figure, don’t use “the” but instead use its full name and its reference number “central processor 102” “step 202” or “selection step 202” • Provide short examples if possible

11. Boilerplate language • End the specification with something like: It is to be understood that the above described embodiments are merely illustrative of numerous and varied other embodiments which may constitute applications of the principles of the invention. Such other embodiments may be readily devised by those skilled in the art without departing from the spirit or scope of this invention and it is our intent they be deemed within the scope of our invention. • Include language to support apparatus and article of manufacture claims Examples are given in the treatise • Most patent attorneys or agents have this in their word processors

12. Claiming in general • Before the first claim, include “I claim:” or “We claim:” or “What is claimed is:” • Each independent claim completes that sentence • Use punctuation, indentation, and possibly numbering to make the claim elements clear • Each claim begins with a preamble, then a transition term (generally “comprising”), and then the elements or limitation • Say as little as possible in the preamble, lest it be viewed as another claim limitation • But this might be a way around the problem of steps a method being performed by different people or outside the United States

13. Claiming in general • Each item in the claim is introduced using an indefinite article (“a widget”), and then referred to with a definite article (“the widget” or “said widget”) • Make sure that you use the same name as you used in the specification • If there are more than one of something, think of unique names for each of them (“flat widget” or “second widget”) and use those names in their full form • Avoid functional claim elements (“means for …”) unless there is no collective term that you can use

14. Claiming the software technique • The primary claims will be for a method(Depending on what the Supreme Court says in Bilski) • That is the most straightforward way of describing the technique • It will make it easier for the examiner to determine patentability • They should be clearly supported by the specification, and preferably by flow-chart figures • Other claims will be for a system and an article of manufacture • These are used to make direct infringers those producing or distributing programs that implement the patented method • Contributory infringement is a problem if there are other uses for the alleged infringing product being supplied • Could be dependent claims following each method claim, but new USPTO rules make that unattractive

15. “Signal” claims • An article of manufacture does not cover a person distributing software over the Internet • Some have suggested claiming a signal carrying the software • On September 20, 2007, the Federal Circuit, in a split opinion, held that a claim to a signal did not fall into any of the four statutory categories: process, machine, composition of matter, or manufacture. The majority felt that an article of manufacture had to be something tangible. The dissent would have found the signal a statutory manufacture.

16. The software method claim • Introduce initial conditions or system requirementsin the preamble • “A method operating on an unsorted list stored in a computer memory…” • “A method operating on a digital computer having a disk …” • Include those steps necessary to distinguish the claimed invention from the prior art • This is not the listing of an algorithm, but a claim • Elements will often start with an action term (“displaying”) and then indicate what is being acted on and possibly naming the result • If order makes a difference, use connectives between the elements such as “and then” • Avoid using the term “step” lest a claim element be regarded as “step plus function”

17. Remember the purpose of a claim • The purpose of a claim is to indicate what you feel should infringe your patent – it is not a description of your invention • The purpose of a dependent claim is to provide a backup in case prior art is discovered that invalidates a broader claim

18. Remember the purpose of a claim • You should think about how to detect infringement • Does it be done by reverse engineering, or does it require access to the alleged infringer’s source code? • Penalties for filing an infringement suit without justification • May need to show infringement early in the suit • You should always be thinking about how a claim could be avoided • Omission of one or more of the steps • Is “inadvertent noninfringement” possible? • Separating the invention into parts (“transmitter” and “receiver”) • Performing a step in a foreign country

19. NTP ‘960 patent method claim 18. A method for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising: transmitting the originated information originating from the one of the plurality of originating processors to a gateway switch within the electronic mail system; transmitting the originated information from the gateway switch to an interface switch; transmitting the originated information received from the gateway switch from the interface switch to a RF information transmission network; transmitting the originated information by using the RF information transmission network to at least one RF receiver which transfers the originated information to the at least one of the plurality of destination processors; and transmitting other originated information with the electronic mail system from one of the plurality originating processors in the electronic mail system to at least one of the plurality of destination processors in the electronic mail system through a wireline without transmission using the RF information transmission network; and wherein the originated information is transmitted to the interface switch by the gateway switch in response to an address of the interface switch which has been added to the originated information at the one of the plurality of originating processors or by the electronic mail system and the originated information is transmitted from the interface switch to the RF information transmission network with an address of the at least one of the plurality of destination processors to receive the originated information which has been added at the originating processor or by either the electronic mail system or the interface switch.

20. NTP ‘960 patent system claim 1. A system for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising: at least one gateway switch in the electronic mail system, one of the at least one gateway switch receiving the originated information and storing the originated information prior to transmission of the originated information to the at least one of the plurality of destination processors; a RF information transmission network for transmitting the originated information to at least one RF receiver which transfers the originated information to the at least one of the plurality of destination processors; at least one interface switch, one of the at least one interface switch connecting at least one of the at least one gateway switch to the RF information transmission network and transmitting the originated information received from the gateway switch to the RF information transmission network; and wherein the originated information is transmitted to the one interface switch by the one gateway switch in response to an address of the one interface switch added to the originated information at the one of the plurality of originating processors or by the electronic mail system and the originated information is transmitted from the one interface switch to the RF information transmission network with an address of the at least one of the plurality of destination processors to receive the originated information added at the originating processor, or by either the electronic mail system or the one interface switch; and the electronic mail system transmits other originated information from one of the plurality of originating processors in the electronic mail system to at least one of the plurality of destination processors in the electronic mail system through a wireline without transmission using the RF information transmission network.

21. A possible claim form solution? Instead of -- A method comprising: step A, step B, step C, and step D. Consider using -- A method using the results of step A, step B, and step C comprising: step D. Arguably, only step D needs to be performed in the United States, but steps A, B, and C help distinguish the claim over the prior art.

22. Filing the application • Can be done online through uspto.gov • Should be done by an attorney if the invention is assigned to a company • Need to prepare assignments and other forms to accompany the application • To represent anybody other than yourself, such as the company or a joint inventor, you need to be a registered patent attorney or patent agent • Should have a docketing system to make sure the application is not lost, and can check its status on the USPTO PAIR system • But the more you can help the attorney by searching the prior art and drafting the specification, the less expensive and better the patent will be