Why software patents are not fixable

In my efforts to educate myself on the patent system, I’ve learned about the requirements for getting a patent, and what sorts of ideas are patentable. One of these requirements is novelty:

 An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application. A patent must also not be obvious to a person of ordinary skill in the field that the patent pertains:

 A patent may not be obtained though the invention … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. But as we’ve seen, time and time again, the U.S. Patent and Trademark Office enforces these (and other) rules extremely poorly, resulting in thousands of patents being issued that most people knowledgeable in their field would immediately recognize as invalid.

 And that’s not new. Bogus patents have been issued for decades. The USPTO has repeatedly shown that they cannot and will not do their job to prevent most invalid patents from being granted. In the field of software, their negligence seems especially egregious. With the rise of patent litigation due in no small part to the “we don’t sue people” Intellectual Ventures and their shell companies (that only sue people), the number of patent applications is likely to increase dramatically over time.

If the USPTO is granting bogus patents because they’re just slipping past overworked patent examiners, it’s only going to get worse. Invalid patents aren’t just funny government slip-ups. (“Oh look, someone patented toast and linked lists! Stupid patent office!”) Since the economics of civil lawsuits, especially patent lawsuits, prevent most cases against small defendants from ever getting near a court, the potential cost to society of issuing an invalid patent is massive.

 If someone threatens your small business with a patent lawsuit, it doesn’t matter whether the patent is valid. Because for you to prove that it’s invalid would take far more time and money than you probably have. The only sensible course of action, the path taken by almost everyone threatened by patent litigation, is to settle with the patent-holder as quickly as possible for whatever amount of money they demand.

Benefits of obtaining a patentability search prior to filing

Although not required by law, a patentability search is extremely helpful.  For about 25%-50% of the cost, this type of search can assist the client and practitioner in assessing the likelihood of obtaining a patent on their idea, and thus is a valuable and necessary step in the patent process.

When the USPTO Examiner receives a non-provisional patent application, the examiner will perform a patent search on the invention as described in the claims, to determine its novelty.  If the practitioner drafts the application without performing an initial search, there is no way to anticipate what is already in the public domain, or what the examiner will discover.

There are two main benefits to obtaining a patentability search prior to filing.  First, it allows the client to research information that is currently in the public domain prior to preparing, filing, and prosecuting a patent application on an invention.  If the information in the public domain completely anticipates the invention, then the patentability search will save the client thousands of dollars spent on drafting, filing, and prosecuting an application for which a patent would not likely be granted. The second benefit to obtaining a search is that it allows the practitioner to draft a stronger application for the client, thus increasing the chances of success in obtaining a patent.

Usually patentability searches are done by a reputable third party or possibly in house at larger firms.  A description of the novel (new) aspects of the invention are clearly described, and depending on the scope and depth of the search, patents, publications, and all other types of prior art are searched via the USPTO, web and many other databases.  Patentability searches can range from a basic knockout search to a comprehensive patentability search.   The basic knockout search is the least expensive and covers the federal databases for patents and printed publications.  The comprehensive search is more in depth (and expensive) and covers prior art references that either alone or in combination are material to the patentability of an invention. The comprehensive search results may include published applications and issued patents, both US and foreign, as well as non-patent literature such as scientific journals and papers.

Once the search results are received, the practitioner can review the information to determine whether the invention created by the client is actually new.  A patent will only be granted for a new invention.  Therefore, if an existing piece of prior art anticipates each and every aspect of the invention, patent protection will not be granted. A search will identify existing prior art in the field and help to determine if the invention is new.  If the patentability search results show that another piece of prior art completely anticipates the invention, then the client will avoid spending money for preparing, filing, and prosecuting the application.

If the search results reveal that not all of the aspects of the invention are known in the prior art references, then the results can assist the practitioner and client in determining the next step moving forward.  The results of the search can be analyzed to determine the scope of protection afforded to the idea and whether it would make financial sense to move forward with the drafting and filing of the patent.  If it is determined that it makes sense to file the patent, then the practitioner can use the results of the search to draft an even stronger application, in essence, reducing the chance of several expensive office actions and possible denial of the patent.

Provisional patents explained

A provisional patent application is a type of interim utility patent filed with the USPTO. You can file for a provisional patent without including any formal patent claims, oath or declaration, or any information disclosure (prior art) statement. The keyword in provisional patent application is "provisional". A provisional patent application only gives one year of protection.

After that you must file for a non-provisional patent or abandon your patent. The USPTO created provisional patent applications as a means to establish an early effective filing date for a non-provisional patent application, which helped balance American patent law with the patent laws of other countries. It also allows the term "Patent Pending" to be used.

There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a “provisional patent.” The first thing that needs to be said is that there is no such thing as a “provisional patent.” Instead, what you file is called a provisional patent application. Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.”

Why provisional patent applications a good idea One reason I like to suggest starting with a provisional patent application as a way to initiate the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a small entity.

Many patent attorneys and patent agents will question whether you can really prepare a provisional patent application while spending less time than preparing a nonprovisional patent application. I am here to tell you that it is not only possible but I do it all the time and so do other attorneys at my firm and many other attorneys that I know at other firms. Describe whatever you can, file a provisional patent application and work toward perfecting the invention and seeing if there is a market.

Essential Elements of Patentability

Usually whenever an inventor discusses his invention with patent attorney, the most important elements looked up or analyzed by attorney for determining patentability involves

1. Novelty

2. Inventive step or non-obviousness

3. Capable of industrial application or utility

Along with the above parameters the invention should also be falling under the patentable subject matter and should not form a part of "Invention which are not patentable"

1. Novelty

Novelty (etymologically means either novice/new) is the quality of being new and hence it should not form part of state of art or prior art. It means that the invention should not be anticipated/disclosed in any publication, prior claimed in any invention, used anywhere in the world before the date of filling or the date of priority.

The state of art comprises all matter (published document, prior claims, and use of invention in certain part of world) available to the public before the date of priority. And during evaluation of anticipation by publication, the degree of dissemination is not taken into concern so a single published document or its distribution to a single personnel constitute part of state of art/ prior art.

The test for anticipation from prior art documents is a litmus test for determination of novelty and is also a rigorous one, which involve that prior art document must be entirely contained in a single document & hence cumulative effect of all prior art references available at the date of priority is not allowed.

2. Inventive step or non- obviousness

Once novelty is confirmed, an invention is evaluated for non-obviousness, which involves that the inventive step of an invention should not be obvious to a person skilled in the art, wherein skilled person is an ordinary practitioner aware of common general knowledge in art and has access to everything in state of art.

Inventive step have been dealt in detail in section 2 (1)(ja) of Indian patent act, which set forth that in order to prove inventive step either the invention should be having technical advancement as compared to the existing knowledge available or it should have economic significance as compared to the prior art available.

So an invention is said to be obvious if the prior art provides motivation for invention and by combining the teachings of different prior art available on the date of priority it would lead to the formation of inventive step in claimed invention which is obvious to the person skilled in the art.

Obviousness is a significant hurdle and is highly fact based and the patent office employs numerous indicators in order to access inventive step which comprises of:

1. Complexity of work normally not carried out by research personnel.

2. Invention claim to satisfy a long felt need in the industry.

3. Failure of others to find a solution to the problem in hand.

4. Cheaper & more economical product.

3. Capable of Industrial application or utility

Capable of Industrial application is a common notation for European & Indian patent law, whereas utility is normally considered by patent examiner of USA. Industrial applicability means that the invention is capable of being made or used in an industry, where industry is something which involves any useful or practical activity as distinct from intellectual or aesthetic activity.

On the other hand for determining credibility of a utility patent, application must express a specific, credible and substantial utility.

And in considering the requirement of utility for patents, there are three main factors to review:

1. Operability of the invention;

2. Beneficial use of the invention;

3. Practical use of the invention;

These elements for patentability are essentially the same across all major patent law unions, convention countries and form an important component in determining the fate of an invention during prosecution.