Software Is Not Necessarily Business Method
Section 101 of the patent statutes (Title 35 of the U.S. Code), broadly outlines the categories of what is patentable subject matter. These include "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." A business method falls into the "process" category, but claims in patents directed to software can be written as a process, machine, or manufacture. However, people commonly confuse software patents with business method patents. These are different things, and although the distinction can be difficult to discern because businesses today rely on software so much, the distinction is likely to become important over time because of the U.S. Supreme Court opinion in Bilski.
Continue Reading...Software and Business Methods Remain Patentable
Software companies that desire patent protection on their innovations or previously spent considerable effort in procuring patents received good news today. The Supreme Court in its Bilski opinion today held that business methods and software can be patentable, but Bilski's claims are not.
Continue Reading...Two More Smartgrid-Related Patents
EDSA Power Analytics recently received two smartgrid-related patents:
- 7,729,808 System for comparing real-time data and modeling engine data to predict arc flash events; and
- 7,693,608 Systems and methods for alarm filtering and management within a real-time data acquisition and monitoring environment
Research-In-Motion Settles With Motorola
In late February, Motorola filed an ITC Section 337 action against Blackberry maker Research-In-Motion. On Friday, Research-In-Motion announced that it has ended all worldwide patent disputes with Motorola.
Continue Reading...USPTO Proposes Three-Track Patent Examination Process
The USPTO today proposed a three-track patent examination process. Further details will be announced in a notice to be published in the Federal Register tomorrow, but preliminary information is available at the USPTO web site:
- Track I: prioritized examination
- Track II: traditional examination under the current procedures
- Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.
The USPTO believes that this will reduce pendency of applications.
Continue Reading...What To Do When Patent Is Potentially Invalid?
Sometimes, one becomes aware of a patent that may be invalid. As an example, there is presently an online uproar about U.S. Patent No. 7,028,023, which is directed to a type of linked list. Linked lists are data structures that computer programmers commonly employ to store information that needs to be accessed sequentially.
Claim 1 of this patent recites:
1. A computerized list that may be traversed in at least two sequences comprising:
- a plurality of items that are contained in said computerized list; and
- a primary pointer and an auxiliary pointer for each of said items of said computerized list such that each of said items has an associated primary pointer and an associated auxiliary pointer, said primary pointer functioning as a primary linked list to direct a computer program to a first following item and defining a first sequence to traverse said computerized list, said auxiliary pointer functioning as an auxiliary linked list to direct said computer program to a second following item and defining a second sequence to traverse said computerized list.
Some people in the online community believe that this patent could be invalid in view of various prior art, including "skip lists." (As a coincidence - one of my assignments during my undergraduate education at the University of Toronto was to implement skip lists -- before an article explaining the data structure first published in 1990 -- as a favor to the author.)
Assuming that these people are correct and the patent is invalid, what should you do?
- If the patent has not been asserted against you, then you may choose to implement the claimed technology assuming that you can invalidate the patent later.
- If the patent is (e.g., later) asserted, you may
- request the U.S. Patent & Trademark Office to reexamine the patent based on the prior art;
- use the prior art to invalidate the patent during trial; or
- notify the patent owner that you have prior art that could invalidate their patent.
Each approach has advantages and disadvantages. As examples, the reexamination may invalidate the claims, but may result in narrower claims that are valid and that you may still infringe; the court may be convinced by the patent owner that the prior art does not invalidate the claims; or by identifying the prior art, you may give the patent owner a head start in claim construction arguments to use during trial.
As is usual, which of the many options you choose will depend on the facts of the case.
Precision in Patent Assignments
During friendly mergers of corporate entities, legal departments and attorneys can sometimes let their guards down when conducting diligence or drafting language for agreements. For example, they may fail to precisely draft patent assignments. Doing so can have undesirable results many years later.
That may be what happened in Tyco Healthcare Group L.P. v. Ethicon Endo-Surgery, Inc. Four years into the patent infringement case, the defendant (Ethicon) filed a motion to dismiss the case because, according to Ethicon, the plaintiff (Tyco Healthcare) did not own the asserted patents.
Tyco Healthcare (now Covidian) had acquired various patents many years earlier. An agreement executed during the acquisition assigned all assets and patents except "patents and patent applications relating to any pending litigation" to Tyco Healthcare. The assignor also entered into a settlement with Ethicon on the same day to settle a patent dispute. Neither the assignment nor the settlement agreement identified the patents that each contemplated.
The court agreed with Ethicon and dismissed the case without prejudice because it could not tell from the documents whether the patents now asserted related to the settlement with Ethicon and so were unintentionally left off the assignment to Tyco Healthcare.
Even when transactions are friendly, attorneys should draft patent assignments with precision. One way to be precise is to specify by number which patents and patent applications are being assigned and/or which are not. Moreover, the assignments should be recorded with the United States Patent and Trademark Office as quickly as possible so that the world can easily determine to whom a patent is assigned.
India Liberalizes Returns on Technological Investments
There are several ways to increase the value of a patent portfolio. One is to ensure that patented claims cover the evolutionary path of the relevant technology. A second is to be sure to file patent applications (after receiving foreign filing licenses) in jurisdictions where the technology could have competitors or markets.
One market that is seen as being increasingly important is India. A billion people live there and an increasing number of them are entering the middle class. The inevitable off-shoring trend, though painful to many in the U.S. and Europe, has been a boon to people there. They are demanding products and services they could not previously afford and, because of the popularity of American media, their demand for foreign brands is seemingly insatiable.
Although foreign companies have seen India as a source of cheap labor and a potential future market for several years, they have limited their direct investments because of India's rules that restricted royalty payments without prior government approval and lax enforcement of intellectual property rights. The government of India on Wednesday announced a liberalization of the royalty payment rules.
With this announcement along with improved enforceability of intellectual property, India is setting itself up for a bright future on the world stage.
