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Patents Pending

Recognizing the complex, rapidly evolving nature of software innovation, the US Patent and Trademark Office (PTO) has formed a partnership with the software community and is holding two “roundtable” discussions this month to solicit input on how best to improve the quality of the software-related patents it issues. I spoke for BSA today at the first of these roundtable discussions, held on the campus of Stanford University in Silicon Valley, and my message was simple: The ability to patent software is critical for promoting innovation, but the process can always be improved. Software is no different from any other class of invention in that regard.

The PTO will never be a perfectly tuned machine, because patent examiners are human beings who will always have to weigh evidence and make judgments. But there are plenty of ways to make the system better. BSA is working to find sensible improvements and avoid extreme measures that can do far more harm than good.

For example, the PTO’s current proposals to limit how claims are written and interpreted appear to go too far. A patentee should be allowed to draft claims in a manner that best describes the boundaries of his or her invention. So long as you comply with Section 112 of the US Patent Act, which requires accurate descriptions of inventions, you should not be limited to a specific way of drafting a claim simply because it is directed to software.

This is not to say that the PTO cannot do more. It should:

  • First, the PTO should work with the patent bar to provide patent examiners, especially those in software units, with additional training, resources, and guidance with respect to Section 112. Better-trained and equipped examiners will clearly help improve the system.
  • Second, the PTO should encourage examiners to more vigorously scrutinize claims under Section 112. For example, examiners should be encouraged to conduct a full analysis to ensure that a broad claim is justified by the description of the invention — and examiners should be encouraged to require patentees to provide clear definitions of ambiguous claim terms.
  • Finally, the Software Partnership should engage in a robust discussion on the best ways to aid the technology industry in developing common descriptions for software-related technologies, because they will continue to play an integral part in driving the modern economy.

Computer software is ubiquitous in our society, used not just for word processing and spreadsheets but also for designing bridges, diagnosing diseases, and directing our energy infrastructure. Most of the technologies that we use every day depend on software — from cell phones to antilock brakes, airplane flight controls, and pacemakers.

Since Diamond v. Diehr more than 30 years ago, the principle that software-implemented inventions qualify as patentable subject matter has been settled law. The software industry that has grown up relying on this well-settled principle has become a major contributor to the US economy — now adding close to $300 billion in value to the country’s GDP. Sensible reforms can further improve the system and bolster an important engine of innovation for years to come.

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