Executive Intellectual Property Bulletin

U.S. Patent and Trademark Office Liberalizes Software-related Patent Practice

The U.S. Patent and Trademark Office (USPTO) recently implemented new guidelines for internal use in examining applications on software inventions and computer-generated icon designs. In both instances, the USPTO has revised its interpretation of patentable subject matter, making patent protection for software and icons easier to obtain.

In the past, the USPTO maintained a conservative position on the patentability of software, allowing mainstream software patent inventions, but circumscribing the availability of patents for mathematical inventions (i.e., inventions based on a new mathematical algorithm or theory). The new guidelines make it easier for applicants to obtain broader protection for mathematical inventions. Generally, mathematical inventions will be patentable if they are utilized to process data representative of tangible objects or signals found in the "real world". Mathematical inventions that simply manipulate abstract data without claiming some practical application are still considered unpatentable. Thus, the question of patentable subject matter for a software invention turns upon claiming some practical application or use for the software. While this is not a radical departure from past practice, it does constitute a more liberal application of existing case law that should make it easier to obtain patents on mathematical inventions.

Two other aspects of the software guidelines are also of interest. Patents on data structures, a controversial issue in the past, are now permitted, as are patents drawn to computer programs in code form stored on media such as a floppy or optical disk. These so-called "computer program product" patents, for the first time, allow the distributor of an infringing computer program to be sued for direct infringement. In the past, it was only possible to patent software inventions as processes running on a computer system. Such patents could only be infringed directly by an end-user actually running the program, and therefore the non-using distributor of such programs could only be sued as a contributory infringer, or for inducement of infringement.

Based on the liberalization of software patent practice, one can expect a greater number of software-related patent applications to be filed, and an increasing reliance on patents to protect key aspects of software technology.

For more information on this topic and how these new guidelines may affect US industry and trade, please contact Steven W. Lundberg or any one of the other attorneys at Schwegman, Lundberg & Woessner, P.A. at 612-339-0331 or by facsimile at 612-339-3061. The software guidelines can be found in 51 Pat. Trademark & Copyright J. (BNA) No. 1262 at 422-439; the icon guidelines in 51 Pat. Trademark & Copyright J. (BNA) No. 1270 at 624-626. A copy of both guidelines can be viewed and printed from Schwegman, Lundberg & Woessner, P.A.'s Internet Web site.