Posts Tagged ‘software patents’

Hyperion Law was on WGBH!

Posted on August 2, 2011 by

I’m excited to share that on July 28th, I had the opportunity to be on WGBH’s TV show, “Greater Boston”! It was thrilling to be on a panel of young entrepreneurs discussing start-ups and then to see the conversation on my televsion set :) Additionally, since public broadcasting and shows from WGBH were such a big part of my childhood, it was a real honor to be able to give back in a small way by contributing to their content. The video of the segment is below.

Can I patent my software?

Posted on July 16, 2011 by

CrossroadsCan I patent software and business methods? This is the first question most clients have, and one of the most common questions I get. But the real question is should you patent your software and business methods?

From a legal perspective, we need to look at two requirements in particular: novelty and obviousness. Regarding novelty, you can usually find a way to write up the invention so that it’s novel – you can add a requirement that it be coded a certain way, or that you take a particular step that is unique to you and you alone (“and then a widget powered by purple hamsters running clockwise does the inventive thing”). But then your competitors will have an easy way to avoid infringing your patent (Use blue hamsters! Or have them run counterclockwise! Or leave them out altogether!). So you and your lawyer need to be able to resolve the tension between ‘broad enough that you’ll be able to cover work-arounds’ and ‘narrow enough for the Patent Office to find the invention patentable.’

Next, you need to address obviousness, which is a big issue for software and business method applications. Why wouldn’t one of your peers be able to easily figure out how to make your invention? Why hasn’t anyone does this already? For a more detailed discussion on obviousness, see this post.
If you and your lawyer can identify solid arguments to overcome novelty and obviousness issues, then you should consider filing the application. If not, you may want to reconsider using patents to protect that feature.

Then there are a number of business questions to consider: Is it worth your time and money to go through the process? What will your business gain from developing patent properties? How will you benefit from this investment in the years before the patent application is approved and a patent issues? For a detailed discussion of some of the biggest business reasons to file a patent, see this post.

If you and your attorney have identified the aspects of your technology that satisfy the novelty and obviousness requirements and you’ve made the business decision that your company will benefit from an application, then, yes, you can file a patent application.


P.S. No hamsters, purple or otherwise, were harmed in the writing of this post!


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Anatomy of a Patent Application

Posted on May 11, 2011 by

We’ve previously looked at the anatomy of different types of patent claims. But, like the claims, the application itself is also not as intuitive to read as we might wish. So let’s take a look at the anatomy of a typical software patent application.


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Believe it or not: Amazon 1-click Patent Shows System Works

Posted on April 26, 2011 by

Keyboard button with the word "learn" on itFew patents have inspired as much confusion, horror or even revulsion as the infamous Amazon “1-click” patent. This patent covers the ability to send a purchaser identifier and a request to order an item to a server, in response to only a single action being performed by a client. I often hear about how ridiculous it is to allow a patent on buying something with one click and how offensive it is that Amazon actually enforced the patent. While there are plenty of ridiculous patents, and plenty of companies taking advantage of the system in truly lamentable ways, there are two big reasons why the 1-click patent is actually proof of our patent system doing the right thing.


Do you remember the Internet in the fall of 1997? We’d barely had search engines for two years, Google hadn’t yet incorporated, and we were just starting to learn about MP3s. This was an era before dancing hamsters and rickrolling, and only a minority of companies had any web presence to speak of. If you approach the idea of 1-click from the perspective of someone trying to shop on-line via dial-up back in ’97, it starts to sound pretty revolutionary. Most sites required many steps to complete a transaction, intentionally modeled after brick and mortar stores with shopping cart interfaces mimicking real-world shopping experiences. So Amazon’s approach passes a litmus test of patentable material – that the patented idea was truly new.


Secondly, Amazon used their patent in a very innovation-friendly manner. Throughout history, patents have played a vital role in helping a new innovator gain a toehold against established ways of doing business. The Amazon patent issued in September 1999; e-commerce was just starting to gain traction, competition amongst e-retailers was intense, and Christmas was coming. In October 1999, Amazon sued Barnes & Noble and overcame B&N’s arguments to convince a court that there was a real question about infringement that B&N had to remove or modify their “Express Lane” feature. Regardless of how the case would go, Amazon was able to keep B&N from capturing all those holiday shoppers who were just starting to figure out they could do their shopping on-line. This is a case where a patent gave a forward thinking, innovative “David” a fighting chance against a “Goliath” – a Goliath doing everything it could to imitate, not innovate.


There’s no denying that there’s a lot to fix about the patent system – the Patent Office needs funding to hire and retain better-trained Examiners and to eliminate the current backlog; the patent term for software patents could stand to be shortened significantly. But just as important as the nay-saying is to focus on the times when the system does exactly what it’s supposed to do – promote progress.


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Anatomy of a System Claim

Posted on April 6, 2011 by

Keyboard button with the word "learn" on it As we discussed last time, claims are the moral equivalent to the property description and plot plan in a real estate transaction that specify the boundaries of a parcel of land – to truly understand what intellectual property is actually covered in an issued patent, you must look to the claims.


There are a couple of different categories of claims. Last time, we looked at method claims – a set of steps that describe how to do something inventive. If a competitor is to infringe the claim, they must perform each of the steps in the claim. A system claim provides a different approach to protecting the invention. Instead of protecting the steps taken to execute an inventive process, we protect the novel components that carry out those steps. In addition to protecting truly novel aspects of the widgets that the invention relies on, the system claim provides a way of protecting the invention in the event that a competitor doesn’t actually take each of the steps listed in a method claim but they’ve copied the novel widget.


Let’s take a look at the anatomy of a system claim:
System Claim Diagram


Next time, we’ll discuss how to read the rest of the patent.


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Making Sense of Patent Claims

Posted on March 19, 2011 by

Keyboard button with the word "learn" on itIn a patent, the claims define what that patent actually protects. Claims are the moral equivalent to the property description and plot plan in a real estate transaction that specify the boundaries of a parcel of land – to truly understand what intellectual property is actually covered in an issued patent, you must look to the claims.


To the uninitiated, many patents in the same subject area look and feel the same, and it can be difficult to tell what exactly a patent covers and what it doesn’t cover. Whether you’re a start-up founder, a business lawyer working at a tech company, a software engineer, or really anyone working in an innovative area of technology, reading a patent can be a frustrating experience. However, understanding the layout of a typical claim can help make reading them more manageable.


The first thing to know is that the claims are found in the very back of the patent. Anything you read in the abstract or in the main body of the patent may or may not actually be a protected part of the patent. This main body, also called the specification, is supposed to inform the reader about the subject matter and provide details about making or using the overall invention. So the first thing to do when reading a patent is to flip to the very last few pages where the numbered claims are listed.


Patent-ese is like a computer programming language. And, as with most programming languages, it looks weird or just plain wrong if you’re trying to read it as if it was actually English. Let’s take a look at the anatomy of a method claim, a common type of claim:Method Claim diagram


Next time, we’ll look another common type of claim, the system claim.


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Is Your Software Invention Obvious?

Keyboard button with the word "learn" on itThe question of whether software is patentable is a red herring. Software has been held patentable for decades and, in a June 2010 case on the issue, the Supreme Court passed on the opportunity to change that. Reasonable people can have philosophical disagreements as to whether software should be patentable but as of this writing software is in fact patentable. However, whether or not something is the kind of invention we *can* patent is just the first test. An invention also has to be useful and new and not obvious.

Obviousness is the big question for software. To evaluate obviousness, we can begin by imagining a smart college junior majoring in CS or EE, sitting in a cube one morning and looking at a giant monitor showing a bunch of windows open to every potentially relevant web site, article, everything related to your invention. If, staring at all those documents, and without too much experimentation, the college student can come up with your invention, say by lunchtime, you need to seriously examine what you are defining as “the invention” and consider whether a patent on that invention is the best way of protecting your intellectual property.

Why couldn’t a smart college student mash up all the known technologies that already exist and come up with your invention? That’s the question to ask yourself in evaluating your innovations. Sample answers include:

1. Every one doing anything relevant at the time was focused on solving problem X but the problem our invention solves, problem Y, wasn’t on anyone’s radar screen because [insert compelling reason here]. And solutions for problem X fail to address problem Y because [insert compelling reason here].
2. You wouldn’t combine any of the known technologies because half of them relied on factor X and the other half explicitly said they avoided the need for factor X (“teaching away” from X).
3. Even if you could technically mash up all of the known solutions, you’d still be missing critical component X, without which the innovative step of Y couldn’t occur.

Frequently, inventors go through this exercise and realize that they originally defined the “the invention” too broadly. Then they identify a number of specific points of novelty in their work for which they have compelling arguments against obviousness. With those specific points in mind, inventors and their attorneys can then craft a patent application with claims that can stand up to an obviousness inquiry.