FUNDAMENTALS OF SOFTWARE PATENT PRACTICING

Outline

  1. What a patent is, as a contract with government, as intellectual property; and what some common misconceptions about patents are, about its conception, its magic, its validity.

  2. The computer software invention and its relation with software patents; invention and engineering; discovery and invention; non-statutory subject matter.

  3. The statutory subject matter --- as processes: computer programs and product-by-process; as products: machine (apparatus), manufacture, and composition of matter.

  4. Novelty --- prior art, anticipation, doctrine of inheritance, and use in public, experiment, or secret.

  5. Utility --- useful and operability.

  6. Non-obviousness --- negative rules of invention, non-obviousness standard, analogousness, equivalence, simplicity, predictability, superiority, optimization, and identifying the source of a problem and its solution.

  7. The computer program-related inventions --- framework of laws, patent protection, multinational bodies, and policy.

  8. Preparation of patent applications --- the patent specification: title and abstract, cross-references to other applications, background of the invention, summary of the invention, brief description of the drawings, detailed description of the best mode; duty of disclosure.

  9. Patent claims --- analysis and synthesis: purpose of the patent claims, novel structure, implicit three unities, claim syntax, and claim grammar.

  10. Prosecuting patent applications --- filing, restriction, rejections, correction, and re-examination.


Lecture

1. Patent Low

2. Examination Guidelines for Computer-Related Inventions

3. Novelty

4. Statutory Subject Matter

5. Non-Obviousness

6. Patent Claims

7. Claim Analysis