28 July 2011

Technical Disclosure - E-Commerce and Software

I have recently been dealing with a number of matters related to e-commerce platforms and associated software.

Many applicants are entrepreneurs who have conceived of a plan to achieve some or other efficiency using a customised e-commerce platform.

Such platforms are often defined by various "bolt on" modules that interact to produce the platform or application. This can make a patent attorney's task very difficult. There are usually two reasons for this. Firstly, the client has largely contracted the task out to some developer or development company. Secondly, neither the client nor the developer can easily explain the particular technical difficulties which have been overcome to achieve the product. As a result, we are often presented with a list of advantages or potential outcomes.

Such information is of little use to a patent attorney, apart from perhaps embellishing various technical features of the product. Our Patents Act and equivalents in most countries require that a patent specification must disclose at least one embodiment of the invention. That disclosure needs to be "sufficient". In other words, a reasonably skilled person (whose identification is no easy task) should be able to recreate that embodiment without having to employ inventive faculties.

Clearly, therefore, a list of outcomes or advantages is simply inadequate.

It follows that if you are such an entrepreneur, you need to ensure that some form of communication is set up between your developer and a patent attorney. This will ensure that the patent attorney can be availed of the proper technical information required to prepare an adequate patent specification.

The fact that you may be using a developer may in itself create complications, but that's for another post.

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