Obtaining a Software Patent: Navigating Current Challenges
Getting a product patent today is simpler than it was only a year back in most Art Units at the United States Patent and Trademark Office (USPTO), on account of the Federal Circuit’s choice in Berkheimer v. HP Inc., 881 F.3d 1360 (Bolstered. Cir. 2018) and the USPTO’s direction to patent analysts on the Berkheimer choice.
Evolution of Software Patent Laws
All things considered, acquiring a software patent is more troublesome than it was five years back, and significantly more troublesome than it was ten years prior. The patent laws identifying with programming have been in a condition of close steady motion throughout the most recent decade.
Key Considerations for Software Patent Success
In order to have the best chance at obtaining a software patent, and at having that patent endure any post concede difficulties after it is issued, it is fundamentally critical that the depiction of the innovation be as total as conceivable at the season of recording the primary patent application.
The Importance of Clear and Complete Description
This implies the portrayal should obviously distinguish the creation as of the very beginning, regardless of whether you record a temporary patent application, since a temporary patent application should totally explain the development with enough detail to fulfill 35 U.S.C. 112 so as to give need.
Software Patent Lighthouse Cases
The Software Patent Lighthouse Cases are crucial for understanding how to identify and describe a software-related innovation. These cases offer valuable insights for patent drafters aiming for successful outcomes.
DDR Holdings: Focusing on Improvements
As Judge Chen explained in DDR Holdings, for software patent claims to be eligible, they must not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Claims should focus on improvements rooted in computer technology.
Enfish LLC v. Microsoft Corp.: Emphasizing Enhancement
In Enfish, the Federal Circuit clarified that claims enhancing the functioning of a computer may not succumb to the abstract idea exception. The focus should be on improvements to computer functionality, with a clear explanation of what makes the invention superior to prior art.
McRo v. Bandai Namco Amusements: Role of Rules Engines
PC-implemented methods rely on rules engines to define the who, what, where, when, why, and how. Incorporating well-defined rules into the specification is crucial, as seen in McRo, where the Federal Circuit found the lip synchronization technology patent qualified based on the specific, claimed features of the rules.
Reading into Specifics from Cases
While the law prohibits impermissible reading into cases from the specification, there are permissible instances for definitions and disclosure of technologies. Finjan, Inc. v. Blue Coat Systems is a prime example, emphasizing the importance of defining pioneering technologies in the specification.
Design Patents for Graphical User Interfaces
Graphical user interfaces can receive both design and utility patents. In the realm of Patent Law, Core Wireless Licensing S.A.R.L. v. LG Electronics showcases how specific improvements over conventional methods can lead to patent eligibility. Clear definitions of these improvements within the context of Patent Law are necessary to make a difference in determining patent eligibility and validity.
Thorough Description and Recent Judicial Decisions
If the importance of a thorough description defining the core uniqueness of the innovation in the specification hasn’t shone through yet, the Federal Circuit’s recent decision in Ancora Technologies, Inc. v. HTC America, Inc. (Fed. Cir. 2018) should help cut through the fog. Relying on Enfish, Judge Taranto emphasized the importance of describing the technology fully and clearly, including asserting its uniqueness, while avoiding obviousness rejections.
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