Patent requirements. (Technote - Software Intelligence).

Whilst the invention of a patentable device is considered to be a self evident road to riches it is anything but. Apart from the protection of the patent on an international basis, often years of development lie between the first protype and the final marketed product. Most inventors have no idea of the criteria that must be met in order that the conception of an idea can meet the specification of a Patent. The following notes were posted on the Internet on this subject and offer one of the simplest definitions applicable to a US Patent. The Editor

Section 101 of the U.S. Patent Act sets forth the general requirements for a utility patent:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title.

In other words, for an invention to be patentable it must: be statutory -be new -be useful and -be nonobvious

Statutory Requirement: The U.S. Patent Statute states that processes, machines, articles of manufacture, and compositions of matter are patentable. This wording appears to cover every useful invention imaginable. To a large extent, this is true. Under this statute, the United States has one of the broadest standards for what is patentable in the entire world. Most inventors, including those in the software and computer fields, do not have to worry whether their inventions are non-statutory. However, there are certain "inventions" which are not patentable under the Patent Act. Examples relevant to the computer and Internet field can be seen from the recent rules issued by the U.S.P.T.O. in connection with software patents. In these rules, the Office stated that the following (admittedly confusing) items were 'clearly non-statutory':

* data structures or programs per se (which are mere information rather than a computer implemented process or specific machine or computer readable memory as an article of manufacture

* compilations or arrangements of non-functional information or a known machine-readable storage medium encoded with such information; or

* natural phenomena such as electricity and magnetism.

These items are considered indistinguishable from abstract ideas and laws of nature, and therefore are unpatentable. However, software patents can usually overcome these categories in one of two ways. First, if the patent requires the software program to operate on data, the invention can be considered a patentable process. Second, if the patent claims the software program in connection with the physical structure of a computer, the invention can be considered a patentable machine.

* methods of doing business, and

Previous interpretations of the statute have also listed the following items as nonstatutory:

* mere printed matter.

There have not been any recent interpretations as to the extent that these two items limit the scope of patent protection for software.

Novelty(Newness) Requirement: In order for an invention to he patentable, it must be new as defined in the patent law. This novelty requirement states that an invention cannot be patented if certain public disclosures of the invention have been made. The statute which explains when a public disclosure has been made (35 U.S.C. Section 102) is complicated and often requires a detailed analysis of the facts and the law. The most important rule, however, is that an invention will not normally be patentable if.

* a the invention was known to the public before it was "invented" by the individual seeking patent protection;

* the invention was described in a publication more than one year prior to the filing date; or

* the invention was used publicly, or offered for sale to the public more than one year prior to the filing date.

Although the United States grants the one year grace period described in the last two rules above, most other countries do not grant such a period. Therefore, it is almost always preferable to file a patent application before any public disclosure of the invention. Most patent attorneys will try diligently to file a patent application prior to any public release or announcement in order to allow international patent filings

Nonobviousness Requirement: If an invention is not exactly the same as prior products or processes (which are referred to as the "prior art"), then it is considered novel. However, in order for an invention to be patentable, it must not only be novel, but it must also be a nonobvious improvement over the prior art. This determination is made by deciding whether the invention sought to he patented would have been obvious "to one of ordinary skill in the art." In other words, the invention is compared to the prior art and a determination is made whether the differences in the new invention would have been obvious to a person having ordinary skill in the type of technology used in the invention.

Useful Requirement: The patent law specifies that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useflil, and therefore would not be granted a patent. In most cases, the usefulness requirement is easily met in computer and electronic technologies.

As can be imagined, the determination of whether a particular change or improvement is "obvious" is one of the most difficult determinations in patent law. In order to make such a determination, an examiner in the patent office will normally review previous patents to find those patents which are closest to the invention in which a patent is sought. If all the features of the invention can he found in a single patent, the examiner will reject the patent as lacking novelty (that is, it is exactly the same as what was previously known and therefore is not new). if no patent contains all of the features, the examiner will attempt to combine two or more prior patents, and attempt to find all of the features in a combination of those prior patents. lithe examiner is successful in finding such a combination, the examiner will generally reject the invention as an obvious combination of items known in the prior art. However, there must be some reason to combine the two references, and often a rejection based on such a combination can be overcome.

* the substitution of one material for another, or

Some changes to known products which would not normally he patentable are:

* changes in size.

Further information on patent law is available from http://www.bitlaw.com/software-patent/history .html

SOFTWARE PATENT DATABASE LAUNCHED

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It is claimed to be the most comprehensive database of value-added software and business method patent data, uniting patent documents from 40 world patent-issuing authorities, scholarly journals, trade and non-technical publications, as well as links to evaluated Web sites. Through one interface, the Database combines search capabilities with comprehensive content and a user-friendly design - making it a resource for information professionals, intellectual property specialists, patent attorneys, software engineers and researchers, and R&D planners. The product is designed to help organisations:

* Reduce the risks of litigation surrounding intellectual property infringement

Halt investments in technologies that have already been patented

* Identity opportunities to utilise existing technology

* Accelerate the patent process with complete information for filing In addition, Derwent Web of Software can help companies increase revenue by promoting the licensing of their patents and collecting royalties on patented technologies.

Comment

The European Patent Office (EPO) has historically not granted patents for computer programmes and business methods. However, an estimated 20,000, patents have been issued on computer programmes due to the exclusion limitation for software programmes with "a technical effect."

Recent court decisions upholding patents on software programmes have however been the catalyst to companies around the globe applying for and obtaining business method patents at a frenzied pace. The United States Patent and Trademark Office reported a record jump in software and business method patent applications from 1,300 in 1998 to 7,500 in 2000. The Japanese Patent Office reported an even more dramatic rise in business method patent applications - approximately 2,500 in 1998, reaching 5,000 applications for the year 2000.

Derwent Web of Software is available via individual or multi-user subscription. Trial subscriptions are available upon request. For more information visit derwent.com/webofsoftware.