Is software still patentable?

Phil Hunt of Rylander and Associates PC answers the question, is software still patentable in light of the recent court ruling in his Vancouver Business Journal article.

Lawyer Kurt Rylander | Top Attorney Patent Application

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Patent Laws' Fall from Grace-Part III-A Graceless Mess

President Obama signed the Leahy-Smith America Invents Act ("2011 AIA") into law on September 16, 2011, making the largest change to patent law in half a century. The last whole sale change to patent law was the 1952 Patent Act. That act provided for the one year statutory bar related to inventions on sale, printed publications, and public use--also known as the one year grace period.

The sea-change represented by the 2011 AIA, is felt keenly in the change to the one year grace period. Simply put, it is no longer clear what falls within the one year grace period, or whether it is even available at all.

The 2011 AIA states in pertinent part that there is NO grace period with a highly complicated, and currently un-interpreted, exception:

"§102. Conditions for patentability; novelty

"(a) NOVELTY; PRIOR ART. A person shall be entitled to a patent unless—

"(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;...

***

"(b) EXCEPTIONS. …(1) … A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

"(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

"(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

This “exception” to an exception inserts a lot of ambiguity into the one year grace period. What is the difference between “the disclosure”, the “claimed invention” and “the subject matter disclosed”? What is a “public disclosure”? What does it mean that the disclosure can be “by another who obtained … directly or indirectly from the inventor”?

For example, does the “disclosure” or the “subject matter disclosed” have to be enabling (within the meaning of 35 USC Sec. 112) in comparison to the eventually “claimed invention”? Is a “public disclosure” of the “claimed invention” or of the “subject matter”, or “other”? And is the “public disclosure” the same thing as a “patent[]”, “printed publication”, a “public use”, a product “on sale”, or something “otherwise available to the public”? What is covered by the category of a disclosure “by another who obtained…indirectly from the inventor”? Does this cover illicit acts? Breaches of non-disclosure agreements?

It took the Supreme Court over 10 years to substantively rule on key sections of the 1952 Patent Act. If it takes over 10 years to get clear and final guidance on the questions above, inventors will be in a state of limbo until after 2022. This guarantees years of litigation and attorneys’ fees. A graceless mess indeed.

Patent Laws' Fall from Grace-Part II-A Foreign Lack of Grace

The one year grace period provided in U.S. patent law for at least the past half century never coincided with foreign patent law. In short, there is, and remains, a lack of a clear foreign grace period. Some countries provide the same one year grace period (prior to the most recent change in September 2011), but for different activities, other than offer for sale or public use. Some countries offer a grace period for offers for sale or public use, but for a shorter time period. Some countries offer no grace period. Keeping up with all the different countries and their differing, or nonexistent, grace periods can be a momentous task---among other things, other countries pass and modify laws the same as our country--so to a certain extent, a moving target aspect exists.

This complexity was somewhat mitigated, but also exacerbated, by the international treaty that provided that filing a foreign patent application within one year of filing a domestic patent application (and claiming priority to the domestic patent application) allowed the foreign application to have the effective date of the domestic patent application, i.e., one year earlier.

The result of that treaty was the creation of two one year bars. The US public use/offer for sale one year bar, and the foreign patent filing claiming prior to the US patent application one year bar. but the foreign patent application may not have the same grace periods that the US patent application enjoyed, so even though the foreign patent application was filed within one year of the US patent application (and claimed priority to it), the foreign application may still be invalid if the inventor engaged in public use or offers for sale within the one year prior to filing the US patent application, even though the US patent application would not be invalid. Confused enough? It's like a bizarre Rube Goldberg machine.

As a general rule, with many exceptions that your patent attorney will have to research, do NOT rely on the existence of any foreign grace period.

Patent Laws' Fall from Grace-Part I: The Golden Age

For at least half a century, U.S. patent law provided a fairly clear one year grace period from public use of, or offer for sale of, a utility invention before a patent application on the invention was required to be filed. In other words, the inventor could publicly use and/or put the product for sale on the marketplace and not lose any domestic patent rights, so long as the patent application was filed within 365 days of the very first time the use was public or the product was offered for sale. The consequences for violating this grace period were lost of patent rights--the invention became dedicated to the public and free for all to use.

This strict grace period was enforced after-the-fact. The inventor was required to swear in a declaration, under penalty of Federal criminal law, that the inventor would disclose all material information to the patent office--public use or offers for sale more than year before filing the application being clear material information.

If the inventor didn't tell the patent office, no one was the wiser--until litigation erupted and the inventor tried to enforce the patent in an infringement suit. Then a well funded defendant with a competent legal team would investigate every nook and cranny, interview friends and relatives, and quite possibly turn up the undisclosed public use or offer for sale. The patent would likely be held invalid, and the inventor might even have to pay the defendant's gargantuan legal fees. Thus were the strictures of the one year grace period enforced.

That was then. The Leahy-Smith America Invents Act signed into law on September 16, 2011 changes all that, as discussed in the following posts.