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Is it Patentable?
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   sw-supported process patent
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Jim Serra
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sw-supported process patent
« on: Jun 6th, 2006, 3:54pm »
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I have an invention that provides a huge time/quality improvements for development of certain software systems in a niche market/application. The invention contains several “minor inventions” for solving individual tasks, as well as several known techniques/methods, combined into an “overall concept” which provides an efficient and practical solution for solving a an important task in this niche market. The invention is implemented in software.  
 
Now for the questions:  
- Is it possible to patent a software-supported process? The input to the process is part of the overall invention.  
- Would one patent application for the “overall concept” provide a stronger patent, or would several “minor” patents provide a stronger/more reliable patent protection? What are the pros/cons?  
- Should existing techniques/methods be described in detail, or are references sufficient?  
- Would a patent application be stronger if incorporating software code, or would a description of the software’s function be stronger?  
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JimIvey
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Re: sw-supported process patent
« Reply #1 on: Jun 6th, 2006, 4:52pm »
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on Jun 6th, 2006, 3:54pm, Jim Serra wrote:
- Is it possible to patent a software-supported process? The input to the process is part of the overall invention.

Assuming the process is novel and non-obvious, yes.
 
on Jun 6th, 2006, 3:54pm, Jim Serra wrote:
- Would one patent application for the “overall concept” provide a stronger patent, or would several “minor” patents provide a stronger/more reliable patent protection? What are the pros/cons?

I'm not sure what you mean by "stronger."  It's possible that the overall process and specific components of the process are covered by different claims such that you can cover both.  I tend to think of "stronger" as more impervious to challenge for invalidity, and that's impossible to say from your facts but not likely to be affected by the particular grouping of your innovations into respective patent applications.  Another possible interpretation of "stronger" is claim breadth -- how many things/actions covered as infringing.  That's also impossible to say from your facts and also not likely to be affected by the particular grouping of your innovations into respective patent applications -- except that redundant disclosure might be required to comply with the best mode requirement.
 
The bottom line is the claims, not the number of patents.  You can think of patents as claim buckets.  Whether your claims are carried in 1, 2, 3 or 57 buckets really doesn't matter.  What matters is what your claims cover.  There may be procedural benefits to filing more or fewer applications covering your various innovations; however, in the end, it really doesn't matter.  If you file too few, the Patent Office will force you to split them out.  If you file too many, the Patent Office will force you to link their fates (sort of -- combining them in a way).  Sometimes, they do both in an entirely inconsistent manner.
 
For what it's worth, a little careful strategizing on the grouping of your innovations into one or more patent applications can have significant benefits in getting through the Patent Office, keeping costs down, and managing costs if and when you file outside the US.
 
on Jun 6th, 2006, 3:54pm, Jim Serra wrote:
- Should existing techniques/methods be described in detail, or are references sufficient?

References should be sufficient, generally speaking.  You may find yourself challenged re the sufficiency of your disclosure to enable one of ordinary skill in the relevant technology to make and use the invention, so be prepared to have widely available references handy to back up your assertion that these existing techniques are/were known and available to one of ordinary skill in the relevant technology.
 
In addition, if there's some advantage or benefit realized by using the existing technique/method in your particular new and non-obvious context, you should fully explore that synergy in your disclosure, even if it means rehashing stuff that's known.
 
on Jun 6th, 2006, 3:54pm, Jim Serra wrote:
- Would a patent application be stronger if incorporating software code, or would a description of the software’s function be stronger?  

I would certainly not exclude the latter.  However, inclusion of the former can make any significantly weaken any challenges of your failure to disclosure your "best mode" -- the inventor's/s' references with respect to implementation of the invention.
 
For what it's worth, inclusion of source code is fairly rare anymore, from what I understand.
 
Regards.
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James D. Ivey
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Jim Serra
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Re: sw-supported process patent
« Reply #2 on: Jun 6th, 2006, 5:58pm »
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Thank you for your reply.  
 
Did you mean that including software code can provide an important "best mode" description? If source code is rare in patent applications these days, what is any "best practise" for showing "best mode"?  
 
If considering a patent for a software-assisted process, to what extent should process input (user input, file formats, etc) be made part of claims? Would file formats etc typically need to be detailed?
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JimIvey
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Re: sw-supported process patent
« Reply #3 on: Jun 6th, 2006, 7:07pm »
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on Jun 6th, 2006, 5:58pm, Jim Serra wrote:
Did you mean that including software code can provide an important "best mode" description? If source code is rare in patent applications these days, what is any "best practise" for showing "best mode"?  

It's pretty clear that "best mode" does not necessarily require disclosure of source code.  However, there's no penalty for disclosing too much, and disclosing source code can pretty much remove all doubt as to compliance with the best mode requirement.  
 
As for best practices, there really aren't any.  Each patent has its own set of circumstances.  Each applicant has their own IP strategy (or at least ought to).  A determination as to whether to include source code should be made on a case-by-case basis -- including risk assessment and cost/benefit analysis.  If you expect to assert your patent(s) against large, well-funded companies and demand hundreds of millions of dollars in damanges, be prepared for your own multi-million-dollar court battle and including source code may be cheap insurance.  However, if you'd like a patent with no apparent deficiencies and hope to ask for just enough settlement money to not provide a strong incentive to challenge in court (particularly attractive strategy if you have many potential licensees/infringers), source code may be unnecessary.
 
on Jun 6th, 2006, 5:58pm, Jim Serra wrote:
If considering a patent for a software-assisted process, to what extent should process input (user input, file formats, etc) be made part of claims? Would file formats etc typically need to be detailed?

First of all, you have to realize that what ought to be included in a claim is very fact specific.  One of the reasons I don't mind giving full and complete answers here for free is that I know that the real answer as to what gets put in paper requires professional assistance.  There's nothing that I can post here that will give you an answer that you can take directly to the Patent Office.  It's just the nature of the beast -- no easy answers.
 
Having said that, let me give a decent attempt at a general answer.  When crafting your claims, think of things that you want to prevent others from doing.  Is it okay for them to use your exact system albeit with a different file format?  My guess is "no" -- so don't put that in your claim(s).  However, suppose your file format is the only thing that's different from conventional systems and provides a unique and valuable advantage.  Remember, your claims must recite something that's new and non-obvious.  In short, you can't craft your claims to stop people from doing conventional or even obvious things.  If your file format is the only novelty, you really have no reasonable choice but to include your file format -- at least the novel aspects of it -- in the claim(s).  
 
I think I need another FAQ or article for this next part....  There are two distinct (but related) parts to an application -- that which you give and that which you receive.  The Specification is your offer to the US -- publication of your technological advance.  The Claims are what you hope to receive in return -- defining exactly what you can exclude others from making, using, selling, or importing.  Enablement and best mode are requirements for the Specification.  Your Specification will have all sorts of details that do not affect the scope of your claims.  You patent covers what your claims say they cover -- that's the 98% answer.  
 
In essence, a patent says this:  Now that I've told you all this (the Specification's technical disclosure), I get that (the right to prevent others from making, using, selling, or importing anything described by your claims).
 
Don't confuse what must go in your Specification with what ought to be included in your Claims.  
 
Regards.
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Isaac
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Re: sw-supported process patent
« Reply #4 on: Jun 6th, 2006, 7:52pm »
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on Jun 6th, 2006, 7:07pm, JimIvey wrote:

It's pretty clear that "best mode" does not necessarily require disclosure of source code.  However, there's no penalty for disclosing too much, and disclosing source code can pretty much remove all doubt as to compliance with the best mode requirement.

 
While disclosing source code might answer some best mode questions regarding implementation issues, there is still the question of whether the inventor has even coded up what he considers to be the best mode for practicing the invention.   For most software based inventions the level of abstraction at which the invention activity occurs is so divorced from actual code that the term "software patent" seems almost inappropriate.
 
I don't have personal experience litigating, but I'm skeptical that providing source code is likely to help the patentee.  
 
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Isaac
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