Thursday, February 20, 2014

USPTO - Prior Art Used in Examination of Software-Related Patent Applications – Request for Comments Due March 14, 2014

On December 5, 2013, the USPTO held a software partnership meeting focusing on prior art used in examination of software-related patent applications. See Software Partnership and the Prior Art Federal Register Notice.

This is an important topic, because prior art tells us whether an invention is patentable. Under the America Invents Act (AIA), prior art has an intricate definition, but can be viewed as technology in the same field as the invention or reasonably pertinent to the problem addressed by the invention. When does this technology qualify as prior art? Under AIA, it's technology (short of inventor disclosures) prior to the filing date of any US patent application that cannot claim an effective filing date before March 16, 2013.

As a follow up on January 6, 2014, the USPTO published a Federal Register Notice that sets forth the following questions about prior art for public comment due March 14, 2014:

(1) What specific databases, Web sites, tools and other resources do you find useful in searching for software-related inventions? Please indicate the strengths and limitations of each resource.

(2) What are your concerns regarding the manner in which USPTO examiners formulate and implement search strategies to identify prior art for software related inventions? How should these concerns be addressed?

It will be interesting to see what tools and techniques people share in the public comments in response to question (1). Of course, it is cost effective to search using online databases and Google using keywords, images, and/or classification of the prior art in the US. If one wants to spend more, the search can be extended into other major patent countries or regions such as the Europe, and Japan as well as PCT applications.

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