USPTO - Written Description Requirement for Design Applications

The USPTO is hosting a roundtable and soliciting public comments on how the written description requirement should be applied to design applications on March 5, 2014.

As background at the Design Patent Conference Design Day 2013: Designs in the New Digital Age on April 23, 2013, an attendee asked whether an originally disclosed design provides an adequate written description where a new or amended claim is presented or where a claim is made for an earlier effective filing date under 35 U.S.C. 120.

More specifically, the USPTO is considering how the written description requirement under 35 U.S.C. 112(a) is applied to design applications where only a subset of elements of the original disclosure are shown using solid lines in an amendment or continuation application."

See the USPTO Request for Comments and Notice of Roundtable Event on the Written Description Requirement for Design Applications.

Copyright © 2014 Robert Moll. All rights reserved.

Solutions to the Software Patent Problem - Conference Materials

On November 16, 2012, Santa Clara University staged a conference Solutions to the Software Patent Problem. After attending I posted: Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012. 

Today, SCU emailed the conference materials:

View the videos

Where applicable, we’ve posted the speakers’ slides as separately downloadable files. Videos synced with presentation slides and just videos (for those that do not use Microsoft products)

Speaker essays. Also check out the related series of essays published in Wired.com Opinion

Media coverage of the event

Results of the audience polls about which solutions they liked best

Other conference resources

The conference page provides a one-stop inventory of all of these resources.
 
View High Tech Law Institute blog: http://law.scu.edu/blog/hightech/

Copyright © 2013 Robert Moll. All rights reserved.

PTO Struggling with Patentability of Computer Software?

In Avoiding Subject Matter Problems but Creating Written Description Problems, Professor Crouch states  the PTO is struggling with determining the patentability of computer software.

To illustrate he used the prosecution of the recently issued US Patent No. 8,196,213 to Microsoft. The PTO had rejected a claim directed to a computer readable medium, because that medium encompassed "signals" that are unpatentable under 35 USC 101. See In re Nuijten, 500 F. 3d 1346 ( Fed. Cir. 2007).

As background, In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) held computer software embodied in a floppy disk (i.e., a computer readable medium) was a patentable manufacture within the meaning of 35 USC 101.

To overcome this 35 USC 101 rejection, Microsoft added the underlined language in claim 1:

A computer readable storage medium excluding signals including computer executable instructions for securing a computing device, the computer readable storage medium comprising:

• instructions for validating, by a title player effectuated by native instructions, a digital signature of a manager and a digital signature of a managed library;
• instructions for granting, to the managed library, access to native functions of an operating system in response to validating a first digital certificate associated with the managed library; and
• instructions for denying, by the manager, an attempt by a managed application to access a native function of the operating system in response to determining that a second digital certificate associated with the managed application indicates that the managed application is required to access native functions of the operating system through the managed library (emphasis added).

As to whether the amendment was supported, Professor Crouch noted the specification discusses computer storage (e.g., flash, RAM) but not signals. My initial reaction is why do you need to amend the claim to exclude what is inherent in a computer storage medium? All data storage devices have I/O signals. Many patents recite a storage device without reciting that the various inherent features are "excluded."

After setting forth these facts, Professor Crouch asks readers should the PTO reject the amendment for failing to meet the written description of 35 USC 112?

Under US patent law, written description is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.

By this standard, those skilled in the art would understand the inventors had possession of the claimed invention, because they would know the subject matter could be implemented on computer readable storage medium without signals.

Given the PTO prefers we use the "magic words," Microsoft's amendment might be less subject to debate if it recited: "A non-transitory computer readable storage medium ...." See the PTO notice Subject Matter Eligibility of Computer Readable Media.

Also see Patently-O's Survey Response: Does the Amendment Violate the Written Description Requirement? which indicates most readers agreed the amendment met the written description requirement.

Copyright © 2012 Robert Moll. All rights reserved.