PublishedJanuary 4, 2013

USPTO Accepting Comments on Software Patents

Yesterday, the United States Patent and Trademark Office (USPTO) issued a Federal Register notice on software patent issues, announcing several roundtables and a written comment period.  The roundtables will be held February 12, 2013 in Silicon Valley, and February 27, 2013 in New York City, and they will be webcast.  To speak at the roundtables, participants must register by February 4, 2013.  Written comments are due March 15, 2013.

The first sentence of the summary indicates that the USPTO wants to work with the software community, which is encouraging:  “The United States Patent and Trademark Office (USPTO) seeks to form a partnership with the software community to enhance the quality of software-related patents (Software Partnership).”

Another paragraph recognizes the inherent challenges of software patents:

Software-related patents pose unique challenges from both an examination and an enforcement perspective. One of the most significant issues with software inventions is identifying the scope of coverage of the patent claims, which define the boundaries of the patent property right. Software by its nature is operation-based and is typically embodied in the form of rules, operations, algorithms or the like. Unlike hardware inventions, the elements of software are often defined using functional language. While it is permissible to use functional language in patent claims, the boundaries of the functional claim element must be discernible. Without clear boundaries, patent examiners cannot effectively ensure that the claims define over the prior art, and the public is not adequately notified of the scope of the patent rights.

This particular notice is focused on several topics—Topic 1: Establishing Clear Boundaries for Claims That Use Functional Language; Topic 2: Future Discussion Topics for the Software Partnership; Topic 3: Oral Presentations on Preparation of Patent Applications—but they also added that people are invited to also “identify future topics for discussion” in their comments.  The notice says that this information will be used to help train patent examiners, which will be a key way to fix the system, because many problems stem from examiners granting broad patents due to not having enough resources or adequate prior art.  These patents then can be acquired by patent trolls, and used anticompetitively as weapons in the courts.

While the notice did not fully recognize the flaws in the patent system — recall USPTO Director David Kappos’ speech in support of software patents last month — it does address the public commentary and stakeholder feedback about quality of patents, specifically those that are software-related, and “insight based on court cases in which software-related patents have been the subject of litigation.”  (For more on these cases, check out our Document Center.)

We look forward to the opportunity to voice our concerns with the systemic problems of software patents.  We will do a broader post on this in the future with our recommendations.

Ali Sternburg

, CCIA

Ali Sternburg is Vice President, Information Policy at the Computer & Communications Industry Association, where she focuses on intermediary liability, copyright, and other areas of intellectual property. Ali joined CCIA during law school in 2011, and previously served as Senior Policy Counsel, Policy Counsel, and Legal Fellow. She is also an Inaugural Fellow at the Internet Law & Policy Foundry.

She received her J.D. in 2012 from American University Washington College of Law, where she was a Student Attorney in the Glushko-Samuelson Intellectual Property Law Clinic, President of the Intellectual Property Law Society, Senior Symposium Chair and Senior Marketing Manager for the Intellectual Property Brief, and a Dean’s Fellow at the Program on Information Justice and Intellectual Property.

She graduated from Harvard College in 2009 where she studied Government and Music, wrote her senior honors thesis on “Theoretical and Legal Views on U.S. Government Involvement in Musical Creativity Online,” and interned at the Berkman Center for Internet & Society at Harvard Law School.

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