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Important disclaimer
The purpose of this lecture is to give you a general idea how to draft a patent application for a software patent. Each patent application must be tailored for a particular invention. There is no one size fits all patent application. Particular care must be given to the claims, which define the legal rights of the patent owner. It is best to get professional help for drafting and prosecuting a patent application, although any work by the inventor is invaluable.
The first step is to determine the techniques in a program that are potentially patentable
Could be system as-a-whole, could be a special technique Better to have a series of applications, rather than one jumbo
The prior art is then examined to determine how the technique might be regarded as novel and nonobvious
Search of issued and pending patents Search of technical literature Inventors knowledge of the prior art
From this, a claim strategy can be developed to claim the invention broadly while trying to avoid the prior art
Create a flow chart showing the major steps of the overall technique Create additional flow charts if necessary to elaborate on aspects of the technique Create figures for any necessary hardware, data structures, or similar items Include a reference number of anything that might be referred to in the description Develop unique names for every item in the invention
If included at all, it should just be a short item highlighting the key aspects of the invention Some people write it in terms of problems and how the are solved, but that might limit the invention only to those problems Make it clear that this is not a full description of the invention: These and other features of the invention will be more readily understood upon consideration of the attached drawings and of the following detailed description of those drawings and the presently-preferred and other embodiments of the invention.
Describe each block in the flow chart figures Indicate not only the way you have implemented it, but also any other way that you can think of, even if it is not better If the steps can be done in an order not shown in the figures, indicate that For things illustrated in a figure, dont use the but instead use its full name and its reference number
central processor 102 step 202 or selection step 202
Boilerplate language
Claiming in general
Before the first claim, include I claim: or We claim: or What is claimed is: Each independent claim completes that sentence Use punctuation, indentation, and possibly numbering to make the claim elements clear Each claim begins with a preamble, then a transition term (generally comprising), and then the elements or limitation Say as little as possible in the preamble, lest it be viewed as another claim limitation
But this might be a way around the problem of steps a method being performed by different people or outside the United States
Claiming in general
Each item in the claim is introduced using an indefinite article (a widget), and then referred to with a definite article (the widget or said widget) Make sure that you use the same name as you used in the specification If there are more than one of something, think of unique names for each of them (flat widget or second widget) and use those names in their full form Avoid functional claim elements (means for ) unless there is no collective term that you can use
That is the most straightforward way of describing the technique It will make it easier for the examiner to determine patentability They should be clearly supported by the specification, and preferably by flow-chart figures
These are used to make direct infringers those producing or distributing programs that implement the patented method Contributory infringement is a problem if there are other uses for the alleged infringing product being supplied Could be dependent claims following each method claim, but new USPTO rules make that unattractive
Signal claims
An article of manufacture does not cover a person distributing software over the Internet Some have suggested claiming a signal carrying the software On September 20, 2007, the Federal Circuit, in a split opinion, held that a claim to a signal did not fall into any of the four statutory categories: process, machine, composition of matter, or manufacture. The majority felt that an article of manufacture had to be something tangible. The dissent would have found the signal a statutory manufacture.
A method operating on an unsorted list stored in a computer memory A method operating on a digital computer having a disk
Include those steps necessary to distinguish the claimed invention from the prior art
This is not the listing of an algorithm, but a claim Elements will often start with an action term (displaying) and then indicate what is being acted on and possibly naming the result If order makes a difference, use connectives between the elements such as and then
Avoid using the term step lest a claim element be regarded as step plus function
The purpose of a claim is to indicate what you feel should infringe your patent it is not a description of your invention The purpose of a dependent claim is to provide a backup in case prior art is discovered that invalidates a broader claim
Does it be done by reverse engineering, or does it require access to the alleged infringers source code? Penalties for filing an infringement suit without justification May need to show infringement early in the suit
Omission of one or more of the steps Is inadvertent noninfringement possible? Separating the invention into parts (transmitter and receiver) Performing a step in a foreign country
Can be done online through uspto.gov Should be done by an attorney if the invention is assigned to a company
Need to prepare assignments and other forms to accompany the application To represent anybody other than yourself, such as the company or a joint inventor, you need to be a registered patent attorney or patent agent Should have a docketing system to make sure the application is not lost, and can check its status on the USPTO PAIR system
But the more you can help the attorney by searching the prior art and drafting the specification, the less expensive and better the patent will be