Software is patentable when and if it can meet the following two part test: Does the claim recite (expressly state or inherently infer) that the software pertains to a method of organizing human activity (including satisfying legal obligations), mathematical formulas or mental processes? If no, then the software claim is patent eligible. If yes, then go to the second part…
Patent Application
Patenting Software – Another Wrinkle
Introduction If you have followed my past postings, you will know I am often trying to explain issues involved in patenting software or computer business methods. Much of the controversy of the last several years has been whether the software or business method is actually patentable subject matter. This has involved discussions of Section 101 and whether…
Patenting Medical Devices
Introduction This article is meant to be read in conjunction with my article Patentability Swamp. In this prior article, I have discussed the newest USPTO Guidelines (October 17, 2019) pertaining to patenting matters that may incorporate patent ineligible material under 35 USC Section 101, i.e., natural law, natural products, natural phenomena or abstract ideas. I have discussed the…
Patentability Swamp
Introduction I have recently posted a blog of mechanical device patents becoming ensnared in the patentability swamp. The swamp is the ineligibility of patenting “natural laws”, “natural phenomena” and “abstract ideas”. This has followed the adverse rulings for patenting medical procedures and business methods. There has been another shift in the ground underlying this swamp. Further guidance was issued from the USPTO…
What NOT to do before you file
Introduction This is an update of my previously published post from January. The key element is to avoid public disclosure of your invention. This article attempts to clarify what NOT to do before you file a provisional or non-provisional application for patent. Remember, once the innovative horse has galloped out (or been lured out) of…
Strategic Response to Rejection
Introduction Many suspect that the patent application process is a bureaucratic morass. The fate of your patent application can appear to be tied to the whims of a faceless patent examiner. It can be. But the astute applicant can expedite the process. Discussion The patent examiner responsible for examining and processing your application is selected by a process…
Mechanical Engineering Patents and Validity Goulash
Introduction If you thought that issues of natural law and abstract ideas were invalidating only medical device and treatment patents, think again. The fog of natural law/natural phenomena/abstract ideas is descending upon “nuts and bolts” mechanical engineering. It is no longer safe to pursue patent protection for vibration dampened drive shafts without encountering “validity goulash”. Discussion Again…
Known Technology is Not Abstract Rev. 2
Introduction On August 26, 2019 I posted an article regarding “Known Technology Is Not Abstract”. In that post I complained of the Federal Circuit determining a patent for an automatic garage door opener as being invalid since it utilized wireless technology and wireless technology was deemed to be a well understood technology and therefore an abstract…
Software Patents
Introduction I recently shared a post stating that computer software is currently the subject matter of approximately 60% of patent applications. This is a 50% increase since 2010. What is patentable computer software? What remains as a vexing problem is the continued muddled status of what comprises patentable software. The Federal Circuit court complains that the US…
APPEALING THE EXAMINER REJECTION
Introduction I recently published a blog regarding the frustrating but common rejection of a patent application based upon the examiner asserting that the invention is obvious. See Overcoming an Obviousness Rejection. Depending upon the individual circumstances, it may be worthwhile for appealing the examiner rejection. Recall obviousness under 35 U.S.C. section 103 can be a subjective exercise or…