I have recently returned from a trip to the United States, where I delivered a presentation at the American Bar Association's summer conference covering Australian patent practice. I also spoke at a number of firms and corporations in Silicon Valley. During the trip, I had a number of interesting discussions with practitioners and attended a very useful lecture on drafting software patent specifications.
The purpose of this post is to give you some of my thoughts on preparing software patent specifications in the United States and Australia. Recent developments in the United States has made the need for searching and proactive patent preparation clear.
Changes at the United States Patent and Trademark Office (USPTO)
The United States Commissioner of Patents and Trade Marks, John Doll, was a guest speaker at one of the conference lunches. He spoke of an accelerated examination procedure that was about to be implemented by the USPTO. More information concerning the accelerated procedure can be found here.
In short, the USPTO is prepared to guarantee that a first office action (patent examination report) will issue within 12 months from filing the application provided a number of conditions are met. The most important condition is that the Applicant must carry out a search. The results of the search must be provided in a statement at the time of filing and the Applicant must explain how the invention is distinguished from the results of the search. The specification can also include no more than twenty claims, and only three of those claims can be independent. The conditions are a lot more extensive and amount almost to the Applicant carrying out its own examination (surprisingly, the USPTO will not be reducing its fees if this procedure is selected).
I have mixed feelings about this new procedure, but I understand the problem faced by the USPTO. It is simply caving in under the massive influx of patent applications particularly in the software / business method category. Those practitioners that have been involved in the preparation of specifications covering software products will appreciate the difficulties involved with identifying the invention and then describing it. It would follow that examining such patent applications would also be extremely difficult and time-consuming. As a result, applicants in the software / business method categories have been told recently that it may take up to five years or more for a first office action to issue. Given the fast pace of software development, this is simply an untenable position.
Making it Easier
During the conference, one of the speakers gave some tips on how to speed up the prosecution of a United States software patent application.
First of all, a search is strongly recommended. The search results should be described in a background section so that the Examiner can understand the field of the invention. A good background also helps to provide a point of reference when defining the invention. It is usual practice for the background section to describe the disadvantages associated with the known technology. If the background section contains the search results, such a description can be made all the more meaningful. Practitioners need to be careful here, of course. An in-depth description of prior art is useful but can also provide material for a revocation action.
Secondly, the specification should point out why the invention is patentable in light of the search results. Clearly, this should help the Examiner to understand the relevance of the elements or integers of the claims and make his or her job easier. Some practitioners may disagree, pointing out that this may provide a road map for a revocation action against the patent. That may be so, but I believe that the advantage of having an decent and relatively speedy examination outweighs any prejudice against the applicant resulting from this approach.
Thirdly, the specification should employ simple and clear language. Words that are unique to the field of the invention should be defined in a "Definitions" section of the patent specification. The purpose of this is to avoid the need for the Examiner to waste time looking up meanings of words. Practitioners need to make sure that all words used are free of any ambiguity. If there is a possibility of ambiguity, either a definition should be provided or a different word used.
Fourthly, and controversially, the speaker mentioned that practitioners should limit the number of claims. The scope of the search and examination carried out by the Examiner is determined by the claims, particularly the number of independent claims. By limiting these, the scope of the search can be determined more quickly by the Examiner.
Fifthly and finally, as many drawings as possible should be filed together with the patent application. In fact, if possible, it should be possible to comprehend a working example of the invention just by looking at the drawings. In the case of software patent applications, the drawings should include system diagrams, flowcharts and block diagrams that illustrate preferred embodiment/s of the invention to the reader. This will make life a lot easier for the Examiner.
Tricks up our Sleeves?
In Australia, we have the option of requesting, at no extra cost, expedited examination. This will speed up examination. If we follow the guidelines for making it easier described above, examination should proceed quite rapidly.
Our innovation patent system provides a neat mechanism for obtaining early enforcement of patent rights. I have discussed our innovation patent system in my post of 4 May 2005. While that post points out the dangers of the system, an innovation patent can be very useful when used in concert with a standard patent application.
It is possible to file a divisional patent application for an innovation patent from a standard patent application. This is useful if the Applicant wishes to enforce patent rights before the standard patent is granted, due to the relatively quick prosecution of the innovation patent application. Provided the alleged infringement can be described in the specification of the parent application, the claims of the innovation patent can be crafted to capture the infringement. This is an extremely effective tool and we have used it on a number of occasions to enforce clients’ patent rights during prosecution.
The filing of software patent applications has become a key strategy of most R&D firms in Silicon Valley. At the moment there is a quest among many of these firms to develop a way in which patents can be granted quicker while still being subject to a decent examination and thus a stronger presumption of validity. Instead of simply complaining about the problems of backlog and poor examination, practitioners can and should find ways to engage the problem in a constructive manner.