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Is it Patentable?
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   sw-supported process patent
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JimIvey
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Re: sw-supported process patent
« Reply #5 on: Jun 6th, 2006, 11:26pm »
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I agree that disclosing source isn't a panacea, but I'd say that for many cases disclosing source code removes nearly all best mode issues.  In cases in which the inventor has made a mock-up demonstration (to illustrate a concept rather than to actually implement the invention) -- it's possible the source code is not accurately representative of currently contemplated best mode.  However, if developement is on-going and for its intended audience, the source code would most likely represent all implementation details that the inventor(s) prefer(s) at that time.  I think that things the inventor(s) might hope to implement later aren't subjectively preferred at the time of filing but are instead areas of intended further research.  If they were truly preferred, they'd be implemented.  Who intentionally writes crappy software in hopes of implementing it properly later?  Who has that kind of time for wasted effort?
 
I'll give an example to illustrate my point.  Suppose the invention requires (or is best with) some sort of data compression.  Suppose the current version uses some conventional compression technique, such as PKZIP, but the inventors believe that something else would be better.  That's not a problem unless the inventors actually know what is preferred, i.e., which other technique is best.  Typically, the reason they don't use the best compression technique for their particular application is because they haven't yet decided what the best technique is.  You're only required to disclose best mode if there is one.  
 
Now, sometimes Isaac's point is right on.  Suppose they know what compression technique they'd really like to use but it's not available for free and/or  they haven't taken the time to write it up.  Then, source code -- lacking that particular compression technique -- would possibly be insufficient to meet the best mode requirement.
 
However, for most of the cases in which the source code is in use by its intended audience or diligently on its way there, disclosing source code would most likely take care of all best mode issues.  This is particularly true if the developers are good about putting currently contemplated future plans in comments in the code.  I just think it's really tough to argue that the inventors had a different, preferred mode firmly in mind (no experimentation or further investigation needed) but chose to implement something inferior.  I don't think that believing that you'll eventually make the software better, despite not being sure exactly how, is at all fatal to having met the best mode requirement.
 
Regards.
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James D. Ivey
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Bill Richards
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Re: sw-supported process patent
« Reply #6 on: Jun 7th, 2006, 4:55am »
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I want to thank Jim and Isaac for their cogent remarks on this subject; I'm enjoying reading them and find them very educational.  So, in the interest of continuing to expand, let me offer this:
At least in my non-legal experience with system development, here's what happened.  A problem was defined that management wanted solved.  For example, "We need a payroll system."  The system designers would then develop the flow of the payroll system.  That is, how data would get into the system, how they would be stored, the general modules (e.g., tax calculations, SS deductions, etc.), the general relationships of those modules, reports, etc.  Then, the software developers (used to be called programmers) would take over and effect the system designed by the system designers.  The system designers were typically people with accounting backgrounds and very little programming background.  The software developers were generally not accountants.
Does this change the landscape (clarify, muddy), or am I just rambling?
« Last Edit: Jun 7th, 2006, 4:56am by Bill Richards » IP Logged

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Re: sw-supported process patent
« Reply #7 on: Jun 7th, 2006, 6:10am »
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on Jun 7th, 2006, 4:55am, Bill Richards wrote:
I want to thank Jim and Isaac for their cogent remarks on this subject; I'm enjoying reading them and find them very educational.  So, in the interest of continuing to expand, let me offer this:
At least in my non-legal experience with system development, here's what happened.  A problem was defined that management wanted solved.  For example, "We need a payroll system."  The system designers would then develop the flow of the payroll system.  That is, how data would get into the system, how they would be stored, the general modules (e.g., tax calculations, SS deductions, etc.), the general relationships of those modules, reports, etc.  Then, the software developers (used to be called programmers) would take over and effect the system designed by the system designers.  The system designers were typically people with accounting backgrounds and very little programming background.  The software developers were generally not accountants.
Does this change the landscape (clarify, muddy), or am I just rambling?

 
The question here might be who the inventor is.  If the inventor is someone who has not written any code, then the best mode might well have nothing to do with the code.  In fact, a patent application might well be viable before any code has been written.   On top of that the CAFC has said that the written description requirement for software inventions is generally satisfied with a description of functionaliy.  
 
I don't believe the general practice is to provide source code.  I don't recall a single instance of examining a patent application in which source code  was included (I examined computer networking technology which primarily involved software based inventions).    
 
I agree with Jim that in many cases the source code does encompass the best mode.   However it's also fairly settled  that failing to disclose the source code is not considered hiding the best mode.  Keeping the source code confidential might provide some business advantages without providing any significant weakness in the patent.
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Re: sw-supported process patent
« Reply #8 on: Jun 7th, 2006, 8:46am »
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The first concern that pops into my mind as I read the elaboration on the hypothetical software system is that it seems all conventional -- not novel or non-obvious.  From what I understand (and I'm no expert here), business processes like payroll are primarily defined by the surrounding legal environment (employee relations law, tax law, etc. -- not IP) and by conventional accounting practices.  What may make such a system unique (and therefore maybe novel) is that the company/client typically has legacy systems with specific file formats and APIs.  
 
For example, let's say that the point of novelty is that, rather than importing spreadsheet material in Excel, OpenOffice.org, CVS, or gnumeric file formats, your system imports spreadsheet material in SuperCalc and/or Quatro Pro file formats.  No other payroll system does that (hypothetically).  But, what would an ordinary software engineer working in the business operations software space do when faced with (i) a program that can import an OpenOffice.org spreadsheet (or an Excel spreadsheet if that's all you got) and (ii) SuperCalc spreadsheet that needs to be imported?  If we can't convince an examiner (not just any examiner, but the one examining your application) that the answer to that question is not obvious, you're not going to get a patent on that.
 
The good news is this:  your original post mentions "huge time/quality improvements for development of certain software systems."  That sounds non-obvious to me (assuming it's claimed right).  It doesn't sound like routine engineering to adapt a known process to a very similar process.
 
Just to be clear on where I stand on disclosing source code, I typically explain the pros and cons like I did here and let the client decide.  In the past 12 years or so, not one client has opted to include source code.  It's clearly not necessary and, for my clients thus far, any benefits haven't been perceived to outweigh the costs.
 
Regards.
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