Patents: to file or not to file?

In the previous paper, the author discussed the three criteria for patentability: novelty, usefulness, and nonobviousness and the practical value of obtaining a patent in terms of discoverability - the ease with which infringement can be determined, and in terms of avoidance - the ease with which a potential user of someone's invention could achieve similar results without using that invention. In this paper, the author continues the discussion of the practical value of a patent. Suppose that you have decided that your invention is novel, useful, and nonobvious. Further, suppose that you have decided that your invention is unavoidable (that is, it is the only reasonable way to do whatever it does), and that infringement would be easily discoverable. The remaining questions as to whether to proceed with a patent application are: Who would be likely to use your invention? Based on your answer to #1, what is the value to you of owning the patent? How much will it cost you to obtain the patent? Will your patent stand up in court if it is challenged?.     

Writing the claims for a patent

Most of the body of a patent is written in plain English. The exception is the claims section, which is the section of primary legal importance. The claims determine what aspects of the invention are protected by the patent. Attorneys write claims in claim language, a special style of writing. Claims are difficult to read when you are new to the patenting process and don't understand the basic structure and semantics of claim language. In this paper, the author explains the basic vocabulary and structure of a claim to demystify claim language.     

Prosecuting your patent

It's a near certainty that the first office action on your patent application will be a rejection. However, a patent application lets you deal with a single person: the patent examiner. You will not have to juggle multiple reviewers who independently insist upon mutually conflicting changes. Philip Emma offers advice for prosecuting your patent through to allowance, the granting of your patent.     

Invention documentation: a primer

The paper discusses the importance of maintaining adequate records during the development of an invention. Thorough and accurate records will help to track progress, determine the best course for future work, write reports, and develop papers for publication. From a legal perspective, it is important to keep records to patent an invention. To be patentable, an invention must be new, useful, and not an obvious or routine modification of a prior invention. Court cases have determined that computer programming, if recorded on a machine readable medium (such as a floppy disk), or inventions involving programmed computers can be patented     

Do you know what your license allows?

Before you push a key to load a program and display it on your monitor, ask yourself this question: “Do I have the power to use this program?” Using software requires power-not physical or electrical power-but the legal power of authorized use. If you are not the program's author or owner, you can only obtain this power through a license-a legal document that states your rights regarding use of the program. This may include the right to use or operate the program as an end user; modify the program through deletions, additions or enhancements as a value-added reseller or original equipment manufacturer; or transfer the program to another as an aggregator, distributor or retailer. If you do not have the appropriate legal power, then your conduct is illegal. If you know that you do not have the appropriate legal power, then your conduct, which amounts to software piracy, is criminal     

Patent protection for software in Israel

At first glance, US and Israeli law would appear to permit patent protection for all inventions that involve processes, including those involving software. Certainly, other technical processes or procedures, such as chemical or mechanical processes, have been eligible for patent protection in the US and Israel. US patent law states that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, may obtain a patent therefor. Israeli patent law states that an invention, whether a product or process, which is new, useful, and useable in industry or agriculture and includes an inventive step is a patentable invention. However, in Israel and the US, software and software-related inventions have traditionally been viewed as ineligible for patent protection because of software's resemblance to human thought processes. This has been based primarily on the desire to avoid placing legal restrictions on truly mental processes, such as mathematics. Since the early 1980s, though, US courts and the US Patent and Trademark Office have taken a new approach by favoring patent protection for software-related inventions. The Israeli patent Registrar, however, seems to be wavering between the old and new approaches     

Inventions and the creative process

Patents and inventions, while related (in that the former describes the latter), are orthogonal instruments. A patent is merely a legal document that entitles its bearer to an argument. Although it might contain an invention, this isn’t absolutely necessary. Whether it does is generally the subject of the (aforementioned) argument. That’s what lawyers are for. On the other hand, an invention is an abstract instrument created by the mind, and in the (nascent) information age, machines can also create.     

Patenting inventions in combinatorial chemistry

I have intended to provide an overview of some patent strategies for protecting intellectual property in the combinatorial chemistry arts, along with examples taken from recently issued patents. The opinions in this paper are those of the author, and are not intended to be relied upon as legal advice. Specific questions about any particular patent or invention should be discussed with competent counsel before action is taken. If you would like to look at the patents discussed in this article, they are available on-line at http:?www.patents.ibm.com/boolquery and at other locations.     

Be careful about disclosing your invention

US patent laws are designed to reward inventors for their discoveries, encouraging them to patent-and hence, disclose to the public-their inventions as soon as possible. So the patent laws, in effect, solicit inventions for the public in return for a temporary monopoly for the inventors. As an integral part of this, US patent laws prohibit anyone from patenting an invention that has been in the public domain for more than one year. During that year, inventors can exploit their invention. However, patent laws in most other countries do not allow this one-year grace period. Therefore, anyone seriously considering patent protection outside the US must not place the invention in the public domain before filing a patent application. US patent laws specify that, to remain free from the public domain, two main criteria must be satisfied. First, the invention must not be disclosed to the public and must be kept confidential. Second, the invention cannot be sold, offered for sale, or commercially used in an unrestricted manner. Other countries generally use these criteria, as well. Inventors seeking patent protection in foreign countries should not disclose, sell, or offer for sale an invention before filing a patent application. Inventors interested only in a US patent should not disclose, sell, or offer for sale the invention for more than one year without filing a US patent application. Of course, there are exceptions. For example, an inventor can generally disclose an invention as part of a confidential disclosure agreement or confidential understanding between parties     

Intellectual property protection: everything you've always wantedto know

This article examines the legal issues affecting people who spend a lot of time in the computer hardware/software arena. It discusses some of the basic patent-application disclosure requirements which inventors must satisfy. These requirements enumerate what inventors must include in the patent application to meet the US Patent Office's definition of a “fully described” invention. To more clearly demonstrate some of the prominent issues I discuss examples from a patent attorney with both a professional and personal interest in the acquisition of intellectual property rights for computer-related inventions     

The mathematics of patent claim analysis

In patent law most of the crucial legal questions such as patentability and infringement are linked to the patent claims. The European Patent Office regards patent claims as a set of independent features which are examined separately in a more or less formal way. The author has found that this approach allows for developing a simple mathematical model which treats patent claim features as logical statements and patent claims as compound statements wherein the individual statements are connected by logical connectives. The proposed mathematical model provides a uniform system for examining various legal questions that are dealt with separately under current case law, moreover, it allows for developing an expert system for resolving complex legal situations and for automating the evaluation of a large number of patent claim variants that is currently not possible.     

Achieving Certainty in an Age of Uncertainty

In an era where the private domain is being rapidly replaced by the use of public networks, most notably the Internet, how can you be sure that your counterparty is really who he/she claims to be and how can you achieve contractual enforceability? In this article, we outline the Identrus model and its applicability for those responsible for the treasury function in companies worldwide.     

What is patentable?

This article gives attention to patents, which are the legal manifestations of creation. A patent is a legal document that entitles its holder the right to prevent others from making, using, or selling the invention during the term of the patent. The specific invention being protected must be clearly articulated in legal claim language.     

Inviting participants in standard setting

Your daughter is having a birthday party. She wants to invite most of the kids in her class. But a few troublemakers exist. Billy, for example, always disrupts the party: knocking the birthday cake onto the floor spilling ice cream over your Persian rug, stepping on the cat's tail. Must you invite Billy, too! Not in the US: the First Amendment gives you a constitutional right to freedom of association. You don't have to invite troublemakers and other undesirables (as you subjectively define that term) into your home. As far as the law is concerned, your home is your castle. Billy's only recourse is to get his mother to phone you and complain, and you can be unresponsive. Billy has no possible legal claim against you for invidious discrimination. Now, suppose that you are setting a standard for a new bus or optical disk format. Does the principle that your home is your castle apply! That is problematic     

Copyright and work made for hire

Legal and policy aspects of information-technology use and development are discussed. Undoubtedly the most important and powerful legal right you can have as a program writer is to own the copyright to your software. If you have written the program without being hired to do so, you can claim the copyright, usually without complications. The courts have established that programs are no different from any other literary creation. You may claim a copyright just as an author may claim a copyright to a story. Moreover, you don't have to register the copyright; it is automatically in effect when you create the program. But what if you have been hired by someone to write a program? Do you own it, or does the party who hired you? The answer lies in an analysis of the work-made-for-hire doctrine in copyright law. The law maintains that when the program is created by a person employed by another party, the program is considered work made for hire, and the party for whom the work was prepared is the author and has the copyright. This is generally the case unless the parties involved have a written agreement to the contrary     

How to select a technology lawyer

Investigating your technology law needs may save you money and headaches down the lines. IT professionals are dealing more with outside vendors and consultants. In these transactions, it is vital to protect your intellectual property (IP). One of the best ways to do this is to use the appropriate “legalese”. Poorly written nondisclosure agreements (NDAs), contracts, memorandums of understanding, and other legal documents can sink a business. Large corporations usually have sizable legal staffs to protect their interests. It's the smaller firms that need the most help. If you are making technology decisions at smaller companies, be aware that: (i) any dealings you enter into without legal representation automatically put you at a disadvantage, and will appear to the opposing parties as a sign of weakness; (ii) protecting technology today can substantially increase its future value-for example, the value of America Online is greatly enhanced by its recognizable trademark; (iii) some law firms will work at reduced rates if they believe in your technology and you agree to retain their services in the future (after you hit the big time). The article gives advice on how to select an appropriate lawyer     

Intellectual property protection for multimedia application. 2.Putting the pieces together

In its recently published guidelines (60 Fed. Reg. 28778, June 2, 1995), the US Patent and Trademark Office (PTO) said computer software programs stored in a tangible medium, such as a floppy disk, are patentable and must be examined to determine whether the substance of a computer-program related invention is a significant advance over prior technical achievement justifying the grant of a patent. In the past, the PTO had simply refused to examine the substance of such an invention. The PTO attributed its new approach to recent decisions by the Federal Circuit Court of Appeals, which decides all patent appeals, favoring the patenting of software-related inventions. The paper discusses the items affected and considers multimedia applications     

Online monitoring: security or social control?

Imagine your big brother habitually following you around "for your own good" and snooping into everything that you, a mature adult, choose to do. Now imagine discovering that he couldn't do so if you wore blue socks rather than brown. Wouldn't you switch to blue socks as a matter of principle? Online monitoring today presents a similar situation. You can indeed modify your online conduct to preserve your privacy almost as easily as you can change socks.     

A Wearable User's Dashboard and Turn Signals

Walking with a wearable computer should be more like driving a car. With a car, much of the attention is dedicated to the environment around you: looking for pedestrians, watching for stop signs, and staying in your lane. Occasionally, when everything looks clear, you might look at the speedometer, fuel gauge, or radio station displayed on the dashboard. These displays are arranged and designed so that you can monitor the car's state with a glance. Yet the displays don't intrude-the author determines when and how often he looks at them. He manages his own attention.     

The evitability of software patents

Responding to Kenneth Nichols' article in Computer (“The Age of Software Patents”, April 1999, pp. 25-31), the author disputes the two claims: “software patents are neither inherently good nor bad” and “software patents are here to stay.” The author thinks software patents are not impersonal technology, but rather a part of an intellectual patent system that is a social artifact. Because all social artifacts are fair game for judgments, software patents fall into that category. Not only does the author think it reasonable that an interested party examine the ethics and morality of any branch of the legal system (of which software patents and copyrights are a part), but he feels professionals in relevant areas have a social duty to do so. After exploring several arguments for software patents and copyrights, the author settles on the evitability of software patents, though he points out this does not ensure they will be avoided. However, he thinks there are good arguments for avoiding software patents for other more practical and just forms of monopoly for software