by: John R. Harris

The United States Patent and Trademark Office (USPTO) is apparently feeling public pressure to address the perception that it is issuing too many low quality patents on software-related inventions. A number of high-profile events such as the patent lawsuits between Apple and Samsung on smartphones, articles in business magazines and by law professors criticizing the patent system, and the emergence of so-called “patent trolls” have raised the public’s awareness about software patents.

The whole notion of granting patents on inventions that are primarily implemented in software is a complex legal and philosophical quagmire. Major criticisms of software patents include that patents are too often being allowed on trivial improvements or changes, that granted patents are being given excessive breadth in interpretation in litigation, and that software per se should not be considered patentable.

On November 20, 2012, the Under Secretary of Commerce for IP & Director of the USPTO, David Kappos, gave a keynote address to the Center for American Progress about software patents and the USPTO’s important role in that debate.

In that speech, Mr. Kappos emphasized that the patent system is a system of checks-and-balances, and that the USPTO needs public input if the system is to be improved. He called upon the public to participate in improving the system:

“The USPTO administers the laws, while Congress and the courts write the laws and interpret them, respectively. Working together, we can find the right balance for software patents. We can find a balance that ensures market certainty, encourages investment and research and product development, and guarantees that patents issued going forward are appropriately tailored.”

In furtherance of Mr. Kappos’ call for public input for improving the system, the USPTO announced on January 3, 2013, that it will be holding roundtable events in New York City and Silicon Valley in February 2013 to receive comments and have a discussion on software related patents.

Essentially, it appears that the USPTO is restarting its industry partnership about software patents (complaints about software patents are not a new phenomenon – a similar partnership effort was held in the 1990s .) The announcement says that the USPTO intends to form a Software Partnership as a cooperative effort between the USPTO and the software community to explore ways to enhance the quality of software-related patents. (Note that it did not say, eliminate software patents, at least just yet.) Three specific topics have been proposed for public comment and discussion (summarized here for brevity):

TOPIC 1: Can the law relating to “means-plus-function” type patent claims, allowed under 35 U.S.C. § 112(f), be used to limit the manner in which software-type patent claims are interpreted – both during examination and litigation?

This topic stems from an article written in 2012 by Prof. Mark A. Lemley of the Stanford Law School, “Software Patents and the Return of Functional Claiming”, Stanford Public Law Working Paper No. 2117302.

“Means-plus-function” approach is a legally complex mechanism that Prof. Lemley has proposed could be used to force software patent claims to be limited to the specific algorithms disclosed in a patent application, and thus prevent “overbroad” software patents.

TOPIC 2: How can determinations of obviousness or non-obviousness of software inventions be improved?

This is also a legally complex inquiry. The “obviousness” legal mechanism for determining whether a patent should be granted involves a review of prior art relating to the alleged invention, and a judgment whether the differences between the subject matter sought to be patented and the prior art is sufficiently large (non-obvious) to justify a patent. In practice, this judgment is largely subjective and varies too widely and unpredictably between experts, patent examiners, examining groups, and the courts.

TOPIC 3: Could or should certain practices in patent applications themselves (the text and drawings and claims) be used to place the application in the best possible condition for examination? Would the use of these practices assist the public in determining the scope of the claims as well as the meaning of the claim terms in the specification?

This inquiry relates to the content of patent applications – the drawings, flow charts, state diagrams, sequence diagrams, schemas, screen shots, technical description, etc. There is a wide variety of content in patent applications and the manner of presenting the invention to the examiners and to the public. Could the USPTO require more specific and consistent content in a patent application? One specific thought is to require standardized use of known textual and graphical notation systems to disclose algorithms in support of computer-implemented claim limitations, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.

Those who have a stake in the patent system, and in particular software-related patents, should consider participating in these roundtable events and providing comments and suggestions. MMM attorneys have extensive experience with software-related inventions and is prepared to assist with preparation of materials and comments for these roundtables.

This information is presented for educational purposes and is not intended to constitute legal advice. Opinions expressed are those of the author and not of Morris, Manning & Martin, LLP; see disclaimer here. Contact John Harris for more information at jharris@mmmlaw.com