The Patenting of Computer-related Inventions
Speaker:
Jean Macheledt, Registered Patent Attorney, and a founding partner of the Fort
Collins and Boulder patent, trademark, and copyright law firm Macheledt Bales
LLP formed in 1996 at www.mbj-law.com
Bio:
After years studying and working in Minnesota, Colorado, and Texas-in the
areas of engineering and law, and more engineering-Jean became a registered
patent attorney licensed to practice before the US Patent & Trademark Office,
as well as licensed to practice law in both Colorado and Minnesota. Jean's
engineering experiences include working at University of Minnesota MechE
particle tech lab and for Prof. Clausen's IT tutor group, Hewlett-Packard
Company, and as quality manager for a Houston-based medical device
manufacturer. Jean's prior corporate law experience includes Patent Counsel
for The Gates Corporation in Denver and General Counsel and Corp. Secretary
for Otsuka Electronics USA, Inc.
Abstract
Background: Patent Laws and Copyright Laws
We'll first distinguish two types of patent applications: provisional
vs. utility. In a utility patent application, the focus is on "claims" (found
at the end of the patent), but both types of applications have drawings and
substantive technical description. By way of comparison, a brief summary of
US Copyright Laws will point out that original written expression (as
"literary works") in the form of printed/displayed code, code/programs copied
onto media, screen displays or other graphical representations, may be
protected in a more-limited fashion.
A brief history: So what is "statutory subject matter?"
While the US Supreme Court has held that one can patent any new and useful (1)
process, (2) machine, (3) manufacture, or (4) composition of matter "under the
sun that is made by man"---this is not without limitation. Subject matter not
within one of the four statutory invention categories or which is not "useful"
in a patent sense is not eligible to be patented. The subject matter courts
have found to be outside the four statutory categories of invention includes:
abstract ideas, laws of nature and natural phenomena. As you can image,
determining whether an applicant is seeking to patent an abstract idea, a law
of nature or a natural phenomenon has proven to be challenging. Here is where
the debate has focused in the software vs. mathematical algorithms arena-we
will explore this. A claim that merely recites the manipulation of an
abstract idea, mathematical operation(s)/ algorithm(s), or naturally occurring
phenomena, without more, is not patentable. See, for example, Mackay Radio &
Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939) ("While a
scientific truth, or the mathematical expression of it, is not patentable
invention, a novel and useful structure created with the aid of knowledge of
scientific truth may be.").
Value of Patenting
Benefiting from the patent process is not guaranteed. Nevertheless, in certain
industries, developing at least some type of patent portfolio is a
prerequisite to success (e.g., maintaining market position for any length of
time)---the 'sleeping giant'. As time permits, discussion and dialogue will
take place relating to how a legitimate, well thought out patenting strategy
can benefit product marketing efforts, research & development of
next-generation technology, and efforts to obtain corporate-sponsor funding
and solid investment, and can add value to technology as well as create an
opportunity to generate interest in inventors' research (via world-wide, text
searchable publication medium at www.uspto.gov). While the benefits of
patenting can be great, there are instances where a patent strategy includes
patenting only selective improvement technologies, or where patenting is
simply not worth the cost, time and effort. Bring your questions!