strategies for patenting software- based inventions in the ...€¦ · software and business method...

Strategies for Patenting Software-based Inventions in the U.S.

Presented by: Tonya Drake

~ Fish & Richardson P.C. (617) 956-5986 [email protected]

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Six Practical Tips to Effective Software Patents

1. Include thoughtful and relevant figures 2. Draft means-plus-function claims wisely 3. Include system claims 4. Draft claims from varying viewpoints 5. Consider §101 when drafting method claims 6. File an information disclosure statement

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Figures provide the backbone of a patent application. – A complete set of figures can be beneficial both in

prosecution and litigation. – Software is often complex and hard for the PTO and juries

to understand. – Good figures can convey a compelling story to an examiner

and jury. However, software patents often include only flow charts. Do - spend time generating a well-planned set of figures. Don’t – rely only on flow charts.

Include thoughtful and relevant figures

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Use visual concepts of the big picture to:

Provide an introduction to the main concepts. Speak to the examiner and jury. Help the expert testify.


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Use system figures to: Support system claims. Let jury see something tangible. Help to clarify the different players.


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Use Flow Charts to: Provide details of the software’s functionality.


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Use Swim Lane Diagram to: Help the application drafter keep the parties straight. Provide another angle for looking at the flow chart.


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Use Screen Shots to: Help the jury and examiner put a “face” on the invention. Disclose things that you were not even aware of.


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U.S. patent law provides for “pure” functional limitations. – Benefit – Often more difficult for accused infringer to obtain

summary judgment. – Downside – More uncertainty.

Do - Use “means for” limitations sparingly. Don’t - Make each limitation of a claim a “means for” limitation.

Draft means-plus-function claims wisely

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Example of poor use of mean-plus-function Example of good use of mean-plus-function


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Means-plus-function claims require appropriate disclosure of structure in the specification.

– Structure = algorithms that corresponded to the functions. • WMS Gaming v. Int’l Game Tech.

– Structure = more than a general purpose computer. • Blackboard v. Desire2Learn (Fed. Cir. 2009)


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Do - Ensure proper §112 support for all means-plus-function limitations.

– Include more than a black box system diagram. – Include a flow chart and/or description of the algorithm

that is used to perform the function.


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Example:


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Problem: It is very easy to move software around (e.g., to foreign countries), and to split it up onto multiple computers. NTP v. RIM: System claims can be infringed if part of the system is ex-U.S., but method claims are only infringed if the whole method is performed inside the U.S.

– A patent with only method claims can be circumvented by performing a portion of the method outside the U.S.

Include system claims

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Do - Include “real” system claims. – “Real” system claims can provide varying claim coverage

from the method claims. – Such claims can include limitations related to hardware

“capable of” performing a particular function. Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010)

Don’t – Rely only on Beauregard claims and revised versions of method claims.

Include system claims

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Software and business method inventions often have multiple players. Do - Consider the infringer when drafting claims. Do - Ensure that all claim limitations are performed by a single entity. Don’t - Have the user as a necessary party for infringement.

Draft Claims from varying viewpoints

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Do - Draft separate claims from the perspective of multiple different players.


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User computer

Networking server

Other user

Other user

A system, comprising: a user computer configured to send requests from a first user to establish electronic relationships with a plurality of other users; a networking server configured to: process the requests; receive communications posted by the first user, and send communications from other users to the user computer based on relationships between the first user and the plurality of other users.


Don’t – Require multiple players in a single system claim.

Example claim requiring multiple players

jad10

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Do - Try to draft separate client-side claims and server-side claims. Don’t – Mix both client-side and server-side limitations in a single claim.


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Client Side Server Side

A method, comprising: receiving, from a first user, requests

to establish electronic relationships with a plurality of other users;

providing data corresponding to the requests to a server system; and

receiving from the server system communications posted by the one or more other users,

wherein the communications have been selected by the server system to be delivered only to users who have relationships with the other users.

A method, comprising: receiving, from a computing device,

requests to establish electronic relationships with a plurality of other users;

receiving communications from a plurality of other users;

determining whether the first user has a defined relationship with the other users; and

providing the communications based on a determination that the first user has a defined relationship with the other users.

User computer

Networking server

Other user

Other user

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35 U.S.C. § 101 is an continuously moving target. Do - Ensure the specification is drafted to allow future claim amendments based on changes in the case law.

Consider §101 when drafting method claims

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July 2010 – USPTO issued guidelines for subject matter eligibility of process claims in view of Bilski. Factors weighing toward eligibility:

– Recitation of machine or transformation.

– The claim is directed toward applying a law of nature.

– The claim is more than a mere statement of a concept.


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Examples of the USPTO’s application of the guidelines


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Tips for drafting claims to satisfy 101 – Do - Add “computer-implemented” to the preamble. – Do - Add “using/by/on a processor”, “on/with/in a memory”,

and other machine limitations in the body of the claim. – DON’T - Simply add “by a computer” to each limitation,

made a determination of the features in which the recitation of the computer or processor is most appropriate.


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Think about the “Trial Truth.” Strengthen the patent for litigation by ensuring relevant prior art is considered by the examiner. Do – remind and educate inventors about their duty to disclose. Don’t – Delay collection of relevant documents from the inventors.

– Collect documents at the time the patent is drafted.

File an information disclosure statement

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Summary of Recommendations


Thank You Tonya Drake

Associate Fish & Richardson P.C.

strategies for patenting software- based inventions in the ...€¦ · software and business method...

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