Dear Ladies and Gents:
Today we continue our discussion of pitfalls to patentability of computer-related inventions. In my previous installment, I addressed the common pitfall of presenting computer related inventions as mathematical formulas. Today we will discuss how you as the intellectual property consumer can reliably evaluate possible patent applications for computer related inventions.
As is true for all inventions, the application must demonstrate that the inventor was aware of all computer-related technical and operational details when the application was filed. A United States utility patent application must disclose each element of hardware and software, as well as how they operate together. The application must also be written so an average person in computer arts can duplicate the invention using only the patent and his or her own knowledge without excessive experimentation.
Consequently, block diagrams and text descriptions are sufficient only if the represented structures are conventional and can be replicated without excessive guesswork. For example, a reference to a prior art microprocessor, without description of operations or programming, is not legally sufficient. Furthermore, if a program is referenced from previously existing devices or methods, that program’s functions must be identical to the functions attributed to that same program in a pending application.
The businessperson must also be aware that a computer programming method with specific apparatus requires a technical disclosure if that apparatus was not previously available. Disclosure of complex hardware or software must be precisely coordinated with other complex assemblies. A mere referral to prior existing art, in an application for an improvement of that art, is risky because technical integration of the prior device and the improvement generally are not self-evident.
Experimentation considered routine, and not excessive, depends upon each case. For example a skilled programmer writing a general computer program within four hours, and referring only to the patent, is reasonable. However, one to two years for a skilled programmer to develop a program based solely upon the patent and his/her own knowledge is excessive.
Finally, the business owner must include that the best version of an invention in the application. Courts have often found patents invalid because this requirement was absent.
My next installment in this series on Intellectual Property Tips for Businesspeople will address the first of five recommendations for businesses, especially startups and entrepreneurial enterprises.
Copyright 2010 Adrienne B. Naumann
All rights reserved.