James S. Huggins' Refrigerator Door: Click here to go to my Home Page. software patent hearings, federal register notice, san jose patent hearings, alexandria patent hearings, software patent hearings, federal register notice, san jose patent hearings, alexandria patent hearings, qwerty
.
Statement on Software Patents - - - Photo of a gear assembly off of an old barn - - - Original photo copyright Barbara Henry - - - Licensed through iStockphoto.com

Software Patent Hearings

In January and February of 1994, the U. S. Patent Office held hearings on the use of the patent system to protect software related inventions.

This is the text of the Federal Register notice.


[This document was extracted from public sources on the internet. The original was expressed as plain text. In the conversion to HTML, some format changes were made. Care was taken to minimize these and to ensure those that were made did not affect the content.]

[BILLING CODe 3510-16]
DePARTMeNT OF COMMeRCe
Patent and Trademark Office
Docket #: 931222-3322

Notice of Public Hearings and Request for Comments on Patent Protection for Software-Related Inventions

AGeNCY: Patent and Trademark Office, Department of Commerce

ACTION: Notice of hearings and request for public comments

SUMMARY: The Patent and Trademark Office (PTO) is interested in obtaining public input on issues associated with the patenting of software-related inventions. Interested members of the public are invited to testify at public hearings and to present written comments on any of the topics outlined in the supplementary information section of this notice.

DATeS: Public hearings will be held on January 26-27, 1994, at the San Jose Convention Center, 408 Almaden Avenue, San Jose, California, and on February 10-11, 1994, at the Crystal Forum in Arlington, Virginia. Those wishing to present oral testimony at any of the hearings must request an opportunity to do so no later than five days before the date of the hearing at which they wish to testify. Written comments on the topics presented in the supplementary information section of this notice should be received by the PTO on or before March 15, 1994.

ADDRESS eS: Those interested in presenting written comments on the topics presented in the supplementary information, or any other related topics, should address their comments to the Commissioner of Patents and Trademarks, marked to the attention of Jeff Kushan. Comments submitted by mail should be sent to Commissioner of Patents and Trademarks, Box 4, Patent and Trademark Office, Washington, DC 20231. Comments may also be submitted by telefax at (703) 305-8885 and by electronic mail through the Internet to comments-software@uspto.gov. Written comments should include the following information: - name and affiliation of the individual responding; - an indication of whether comments offered represent views of the individual's organization or are the respondent's personal views; and - if applicable, the nature of the respondent's organization, including the size, type of organization (e.g., business, trade group, university, non-profit organization) and principal areas of business or software development activity.

Parties offering testimony or written comments are asked to provide their comments in machine readable format in one of the following file formats: ASCII text, WordPerfect for DOS version 4.2 or 5.x, WordPerfect for Windows version 5.x, Word for Windows version 1.0 or 2.0, Word for DOS version 5.0, Word for Macintosh version 3.0, 4.0 or 5.x, or WordPerfect for Macintosh version 2.x.

Persons wishing to testify must notify Jeff Kushan no later than five (5) days before the date of the hearing at which they wish to testify. Mr. Kushan can be reached by mail sent to his attention addressed to the Commissioner of Patents and Trademarks, Box 4, Washington, DC 20231; by phone at (703) 305-9300; or by telefax at (703) 305-8885. No requests for presenting oral testimony will be accepted through electronic mail.

Written comments and transcripts of the hearings will be available for public inspection no later than March 30, 1994, in Room 902 of Crystal Park Two, 2121 Crystal Drive, Arlington, Virginia. In addition, transcripts of the hearings and comments provided in machine readable format will be available after March 16, 1994, through anonymous file transfer protocol (ftp) via the Internet (address: comments.uspto.gov), and will be available for Wide Area Information Server (WAIS) searching after March 30, 1994.

FOR FURTHER INFORMATION CONTACT: Jeff Kushan by telephone at (703) 305-9300, by fax at (703) 305-8885, by electronic mail at kushan@uspto.gov, or by mail marked to his attention addressed to the Commissioner of Patents and Trademarks, Box 4, Washington, DC 20231.

SUPPLeMeNTARY INFORMATION

I. Background

Over the past decade, the computer software industry has evolved into a critical component of the U.S. Economy. It is presently the fastest growing industry in the United States, with 1992 sales in the three core elements of the software industry -- programming services, prepackaged software and computer integrated design -- accounting for over $36.7 billion of our domestic gross product. The software industry also has created jobs at a remarkable rate; since 1987, employment in the software industry has risen at an annual rate of 6.6 percent and today, the industry employs about 4 percent of the American work force.

The dynamic nature of the U.S. software industry has also served to propel the U.S. firms into a dominant position in the global software industry. U.S. firms hold about 75 percent of the global market for prepackaged software and approximately 60 percent of the world market for software and related services. In 1991, foreign sales of U.S. prepackaged software vendors totaled over $19.7 billion.

Constant innovation has been the key to continued success in the U.S. software industry. As such, it is imperative that our domestic intellectual property systems not only provide an effective stimulus for innovation, but also provide appropriate and effective means for protecting those innovations. Indeed, the continued success of U.S. firms, in both domestic and foreign markets, depends directly on the availability of effective mechanisms to protect software innovations. Without such means, the full value of American innovation cannot be realized.

Intellectual property systems provide the means through which software innovations can be both encouraged and protected. The present framework of intellectual property laws provides three basic forms of legal protection that are most relevant to the development and protection of software; namely, copyrights, patents and trade secret protection. Detailed reviews of each of these forms of protection can be found in the 1992 Office of Technology Assessment report entitled "Finding a Balance: Computer Software, Intellectual Property and the Challenge of Technological Change" (OTA-TCT-527), and in the final report of the Advisory Commission on Patent Law Reform to the Secretary of Commerce (1992). A brief synopsis of these three forms of protection follows.

Software code is protected under copyright law as an original work of authorship. Copyright protection stems automatically from the act of fixation of a work onto a tangible medium. A copyright gives its owner the ability to control the reproduction, adaptation, public distribution, public display and public performance of the software code. Copyrights can be used to prevent others from copying the software program, either through direct duplication or through appropriation of the software's expressive (as opposed to functional) elements. Under U.S. law, copyright owners can also prevent the unauthorized rental of software. Copyright protection cannot be used to prevent the use by others of the functional aspects of software, nor can it be used as a basis for action against independently developed software. In addition, the fair use doctrine under copyright law provides third parties some flexibility in their use of copyrighted works.

Patents can be used to protect processes implemented using software, as well as computer-based systems. The statutory definition of inventions that are eligible to receive patent protection is found in section 101 of title 35, United States Code. This section makes patents available for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." To obtain patent protection, the inventor must apply for protection and proceed through an examination process before the Patent and Trademark Office (PTO). The examination process is used to assess whether the invention for which protection is sought meets all of the statutory criteria for patentability; namely, that the invention is eligible for protection, that it is new, that it is not obvious to a person familiar with the technical field of the invention, and that the invention has been adequately described in the patent application. Patent protection allows the patent holder to preclude others from making, using or selling the patented invention, as it has been defined in the patent claims, for a period of seventeen years measured from the date the patent is granted. Importantly, the party granted a patent must take action to enforce rights provided under the patent--the issuance of a patent does not automatically preclude infringing activity. In addition, the Federal courts have developed a limited exception to liability for infringement for non-commercial experimental use of inventions described in patents. Additional information on the patent process is available in the Manual of Patent examining Procedure (MPeP), in particular, chapters 600, 700 and 2100.

Finally, certain aspects of software can be protected through use of trade secrecy and contractual licensing agreements. Protection of trade secrets in the United States is governed by state, rather than Federal, law. Trade secret laws typically require the party asserting a trade secret right to take reasonable steps to prevent the public disclosure of the information held as a trade secret. Accidental or other public disclosure of a trade secret will eliminate the protection. Absent such disclosure, the trade secret rights will remain effective indefinitely. Trade secret rights can be enforced against parties that unlawfully obtain the information held as a trade secret.

The focus of the discussions in the three scheduled public hearings will be the use of the patent system to protect software-related inventions. There will be three general subject matter areas presented for discussion:

  • Use of the patent system to protect software-related inventions;
  • Standards and practices used in examination of patent applications for software-related inventions; and
  • Significance of and protection for visual aspects of software-related inventions.

Questions appearing in section II, below, are intended to focus the discussion on each of the topics. They are not intended to discourage individuals from providing written comments on issues they believe should be addressed that are related to the protection of software-related inventions. Written comments on matters not presented below for discussion can be forwarded to the Commissioner of Patents and Trademarks for inclusion in the records of these hearings, but should clearly indicate that the comments are general in nature and not directed at the issues presented for discussion.

II. Topics for Discussion

Topic A. Use of the patent system to protect software-related inventions
Dates and Times for Hearings on Topic A:
        January 26, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
        January 27, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
Location for Hearing:
        San Jose Convention Center
        408 Almaden Avenue
        San Jose, California.

The question of patent protection for software-related inventions has engendered a significant amount of public debate. For example, concern has been expressed over the appropriate scope of eligible subject matter (e.g., which aspects of software-related inventions should be eligible for patent protection, and which should not). Others have expressed concerns over the effects of providing protection for inventions in which the main distinguishing characteristic is a software component.

Some guidance on the question of patent eligibility has been provided by the Federal courts. First, the Supreme Court has instructed the lower courts to interpret the eligibility standards for patent protection broadly. In Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), the Court stated:

The committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting "the progress of science and the useful arts". Congress employed broad language in drafting Section 101 precisely because such inventions are often unforeseeable.

Second, the Supreme Court has held that the mere presence of a computer software-implemented mathematical algorithm in an invention does not automatically preclude the invention from being eligible to receive patent protection. Diamond v. Diehr, 450 U.S. 175 (1981). Finally, through interpretation of the exclusions from patentable subject matter under section 101 of title 35, United States Code, the Supreme Court and the lower Federal courts have provided guidance in determining which aspects of software-related inventions are eligible for patent protection.

There are three general categories of exclusions to patent eligibility that are particularly relevant to software-related inventions. The first, and most commonly applied exclusion, is the exclusion of mathematical algorithms, per se, from patent eligibility. For a summary of the law governing this exclusion, and for guidance on how the PTO applies this exclusion in the context of its examination procedures, see "Patentable Subject Matter, Mathematical Algorithms and Computer Programs", 1066 O.G. 5, (Sept. 5, 1989) and "Note Interpreting In re Iwahashi," 1112 O.G. 16 (March 13, 1990). Second, methods of doing business are excluded from patent protection. While no cases have directly applied this exclusion to deny patent protection for software-related inventions, the exclusion is relevant for questioning the patent eligibility of processes that are modeled upon existing business processes but are implemented through a software-based system. See, e.g., Paine, Webber, Jackson & Curtis, Inc., v. Merrill Lynch, Pierce, Fenner & Smith, 564 F. Supp. 1358, 218 U.S.P.Q. 212 (D. Del. 1983). Finally, printed matter, per se, is not eligible for protection under the patent laws. This exclusion has relevance in the context of software code "written" onto non-paper media (e.g., magnetic or optical media capable of storing the software code). See, e.g., In re Miller, 164 U.S.P.Q. 439 (C.C.P.A. 1969); In re Jones, 153 U.S.P.Q. 77 (C.C.P.A. 1967).

Within these limits, however, is a spectrum of inventions whose patent eligibility has been questioned. To encourage discussion of what aspects of software-related inventions should or should not be eligible for patent protection, interested members of the public are invited to offer their views on the following series of questions.

1. What aspects of the following examples of software-related inventions should or should not be protectable through the patent system? [Note--these are generalized hypothetical examples of patent claims. They are not intended to prompt comments as to the merits of the process referred to in the claim (e.g., whether the process is well known or obvious to a computer programmer). Instead, comments are desired as to the benefits or drawbacks of granting patents on the invention defined by the claim, presuming it was new and not obvious to a computer programmer.]

example A: a mathematical algorithm implemented on a general purpose computer:

A computer comprising means for causing the computer to generate a signal that varies according to application of mathematical algorithm X to a given numerical input value.

example B: a mathematical algorithm implemented on a special purpose computer:

A computer comprising:
- means for collecting data;
- means for extracting usable data from the collected data;
- means for processing the usable data through application of mathematical algorithm X=A2 + B2, where A and B are derived from the extracted usable data;
- a read-only memory used to calculate the squares of numbers provided to it;
- means for providing to said read only memory numerical values derived from the extracted usable data;
- means for storing in said read only memory numerical values derived from the extracted usable data;
- means for obtaining from said read only memory the squares of numbers provided to said read only memory; and
- means responsive to the output of said read only memory.

examples C-1 and C-2: A computer-readable medium, such as a disk, on which is stored a computer program.

[Note: These examples include references to a computer readable medium as a "tangible" or "physical" embodiment of a software-related invention. The two perspectives presented in the examples differ in how the invention is defined. The first example defines the invention through reference to the actual software object or source code. The second example defines the invention through a narrative description of how the program functions.]

C-1. A computer-readable medium, on which is stored a computer program of instructions comprising [software object or source code].

C-2. A computer-readable medium, on which is stored a computer program of instructions comprising:
- means for performing function X;
- means for performing function Y; and
- means for performing function Z.

examples D-1 and D-2: A computer program, per se.

[Note: These examples focus on the computer program, per se, as the invention, without inclusion of a "tangible" or "physical" embodiment. Like examples C-1 and C-2, two perspectives are presented as to how the invention is defined. The first example defines the invention through reference to the actual software object or source code. The second example defines the invention through a narrative description of how the program functions.]

D-1. A computer program of instructions comprising [software object or source code].

D-2. A computer program of instructions comprising:
- means for performing function X;
- means for performing function Y; and
- means for performing function Z.

example e: A data structure used in a computer program

A hierarchical tree data structure having elements and possessing properties and operations.

example F: A process consisting of a series of computational or decisional steps that can only practicably be performed on a computer:

A method of diagnosing an abnormal condition in an individual comprising:
- collecting data related to the condition of the individual;
- processing the data collected to place it in a structured, consistent format;
- comparing the processed data to a first database of information documenting characteristics of normal and abnormal conditions in patients to determine if an abnormal condition exists;
- upon detecting an abnormal condition, comparing the processed data to a second database of information documenting characteristics of the abnormality to determine the precise nature of the abnormality;
- upon determining the precise nature of the abnormality, comparing the characteristics of the abnormality to a third database of information documenting suggested treatment and therapeutic regimes; and
- collecting and presenting the information from said third database relevant to the determined abnormality.

example G: A method of doing business that has been implemented in a computer program (e.g., an accounting system implemented in software).

A computer-implemented process comprising the steps of:
- accessing information regarding the name of a patient and services provided to that patient from an electronic storage medium;
- associating treatment rendered to a patient with a fee by comparing the collected data to a database of fees;
- extracting billing data for said patient from said database;
- printing an invoice documenting the fees charged and the appropriate mailing information for said patient.

2. What impact, positive or negative, have you or your organization experienced from patents issued on software-related inventions? [Note: If providing comments on this question, please provide details regarding the nature of the impact (e.g., the nature of any action taken by or against you or your organization under a patent, the results of the action, and the impact of those results on your activities or operations).]

3. What implications, positive or negative, can you foresee in maintaining or altering the standards for patent eligibility for software-related inventions (e.g., consider possible effects, if any, on doing business or protecting software products in domestic or foreign markets, conducting research, designing software or modifications thereto, etc.)?

4. Does the present framework of patent, copyright and trade secret law: (a) effectively promote innovation in the field of software? (b) provide the appropriate level of protection for software-related inventions? [Note: If responding to this question, please describe the experiences, if any, that you have had with the current system that led you to your conclusions.]

5. Do you believe a new form of protection for computer programs is needed? If so, what would be the desirable characteristics of such protection (e.g., what would be the substantive requirements for obtaining protection, what procedures would be used to obtain or register rights, what rights would be provided and how would those rights be enforced, and how would the new system relate to existing forms of intellectual property protection)? What would be the drawbacks of a new form of protection?

Topic B. Standards and practices used in examination of patent applications for software-related inventions

Dates and Times for Hearings on Topic B:
        February 10, 1994; 9:00 a.m. to 12:00 p.m., 2:00 p.m. to 5:00 p.m.
        February 11, 1994; 9:00 a.m. to 12:00 p.m.

Location for Hearing:
        Marriott Crystal Forum
        1999 Jefferson Davis Highway
        Arlington, Virginia

Different sectors of the software industry have expressed concern over the ability of the Patent and Trademark Office to examine patent applications for software-related inventions effectively. Much of the discussion involves the lack of availability of printed documents, patents, and other evidence of public use of the invention before the application was filed (e.g., called "prior art") that can be used by examiners as a basis for denying the grant of a patent. Factors that have been identified as contributing to this problem include:

  • early programming techniques were not well documented or publicly available;
  • many software programming techniques were kept as trade secrets and not publicly disclosed;
  • locating and obtaining the most relevant prior art is extremely difficult, due to the widely diverse nature of processes that have been implemented by computer software-related systems; and
  • software is not documented in a consistent, readily understandable format (e.g., some programs only provide object code, different programming languages are used, source code is not summarized or documented, etc.).

Concerns other than access to and use of prior art have also been cited. For example, some concern has been expressed that the standards used by examiners to assess novelty and/or obviousness over prior art are not reflective of industry standards, with the effect that patents are granted for well-known or obvious software techniques. Others have questioned the closed nature of the examination process, with no public intervention prior to grant, while some have criticized the current options for contesting the validity of granted patents (e.g., the PTO reexamination process or litigation in the Federal courts).

In view of this, the PTO is interested in public input on how to improve the examination process for patent applications for software-related inventions. Interested members of the public are invited to offer comments on the following series of questions:

1. Do patents and printed publications provide examiners with a sufficient and representative collection of prior art to assess novelty and obviousness of software-related inventions? If not, how can existing collections of prior art be supplemented to provide examiners with a complete collection of prior art?

2. Can an accurate measurement of the ordinary level of skill in the art in the field of computer programming be derived from printed publications and issued patents?

3. Should the PTO impose a special duty on patent applicants for software-related inventions to disclose information relevant to their inventions (e.g., one that is higher than in other areas of technology)? [Note: Under current Rule 56 (37 CFR 1.56), all patent applicants are required to disclose to the PTO any information of which they are aware that is pertinent to the invention they claim in their patent application. The standard does not require the patent applicant to search or locate relevant information and present it to the Office for consideration. Failure of an applicant to comply with this requirement can result in the patent being held unenforceable.]

4. Do the standards governing novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103), as applied by the PTO and the Federal courts, accurately reflect inventive activity in the field of software design and development? [Note: If responding "no" to this question, please provide your suggestions on standards that could be used to demonstrate which software innovations should be viewed as "new" and "non-obvious" to a person of ordinary skill in the field of software design and development.]

5. Should implementing a known process, technique, system or method of doing business on a computer be viewed as being novel and non-obvious if, but for the use of software, the overall process, technique, system or method is well known?

6. In what ways can the PTO change examination procedures to assess novelty and obviousness of software-related inventions? [Note: The following questions are not intended to restrict comments on ways the PTO can improve the examination process, but are offered only as a sample of possible changes to the examination process.

  • Should the PTO require patent applicants for inventions related to software to conduct a search of prior art before filing a patent application, and to include in their application copies of relevant prior art documents along with a detailed explanation that points out how the invention claimed in the application is distinguishable over the supplied references? [Note: This would make the "special accelerated examination" practice described in MPeP 708.02 VIII standard practice for patent applications on software-related inventions.]
  • Given the difficulties associated with examiners assessing procedures from all fields of technology that have been implemented on a software-based system, should the PTO require patent applicants to prove that their inventions are distinct over the prior art aside from the implementation of the process on a computer?
  • Should the PTO be permitted to establish that a software-related invention is not novel or is obvious using a lower standard of proof than for other areas of technology (e.g., a standard less than prima facie)?

A second topic related to patent examination standards and practices relates to the problem of effectively and meaningfully disclosing software-related inventions in patents and other printed publications. To fulfill their statutorily defined function, patent documents must effectively teach a person of ordinary skill in the relevant field of technology how to make and use the invention that is protected by the patent. With respect to patents on software-related inventions, this means that the patent must disclose enough information to enable the software programmer of ordinary skill to recreate the invention protected by the patent claims. In practice, several concerns have been identified. For example, some have questioned the "disclosure" value of computer program listings that are often included with patent specifications, given the significant administrative problems these listings create for the PTO and the widely divergent manner in which software is written. Others have questioned how best to describe software-related inventions in general, standardized terms (e.g., not through program code listings). In view of these points, the PTO invites public input on the following series of questions regarding disclosure requirements for software-related inventions.

7. What are the most effective ways to describe software (e.g., pseudocode, flowcharts, etc.), and how can they be implemented through the disclosure requirements for patent applications?

8. What difficulties do patent applicants face in complying with existing disclosure requirements (e.g., enablement, description, best mode) for software-related inventions?

9. Should the PTO require patent applicants to conform to a standardized disclosure format for applications filed on software-related inventions?

10. How should the PTO handle the submission of computer program code listings? Should the PTO require submission of program code listings? Should they require submission of code listings in machine readable format only? Should program code listings be included in patent documents or should they be made available only through a publicly accessible database? What hardships would patent applicants face if these requirements were imposed?

11. Are current rules governing the submission of drawings impeding the effective description of software-related inventions, and if so, what changes should be made? [Note: Rule 96 (37 CFR 1.96) governs the submission of computer program listings].

12. What difficulties might patent applicants face if they were required to fully satisfy the disclosure requirements of 35 U.S.C. 112, 1st paragraph (i.e., enablement, description, best mode), without reliance on computer program listings?

Topic C: Significance of and protection for visual aspects of software-related inventions

Date of Hearing for Topic C:
        February 11, 1994; 2:00 p.m. to 5:00 p.m.

Location for Hearing:
        Marriott Crystal Forum
        1999 Jefferson Davis Highway
        Arlington, Virginia

This topic addresses the question of design patent protection for computer screen elements (e.g., icons and other user interface elements), and the significance of screen elements in the context of patentability (utility) of software-related inventions.

Protection of the visual elements of software, particularly computer screen displays and images, is very important to the software industry. Recently, questions have arisen whether design patents can be used to provide protection for such elements. As way of background, a design patent provides protection for only the appearance of an article, not for its structural or utilitarian (functional) features. See, 35 U.S.C. 171. This is in contrast to a "utility" patent that provides protection for new, useful and non-obvious products, processes, machines, and compositions of matter. In the context of software, some have argued that design patents could provide much needed protection for the visual elements of screen displays that give programs their distinctive "look and feel."

The question of design patent protection for computer screen displays or images has been raised in a series of recent cases before the Board of Patent Appeals and Interferences (Board). See, ex parte Tayama, 24 U.S.P.Q.2d 1614 (Bd. PA&I. 1992); ex parte Donaldson, 26 U.S.P.Q.2d 1250 (Bd. PA&I. 1992); ex parte Strijland, 26 U.S.P.Q.2d 1259 (Bd. PA&I. 1992); ex parte Donoghue, 26 U.S.P.Q.2d 1266 (Bd. PA&I. 1992); and ex parte Donoghue, 26 USPQ2d 1271 (Bd. PA&I. 1992). The Board held in each of these cases that screen displays, standing alone, are not statutory subject matter.

The Board concluded that, as claimed and described, the designs were merely pictures, and that "a picture standing alone is not protectable by a design patent." The Board's conclusions are consistent with judicial precedent that treats pictures standing alone as not being statutory design subject matter. This precedent points out that the factor that distinguishes subject matter eligible for design patent protection from a mere picture or surface ornamentation per se (i.e., abstract designs) is "the embodiment of the design in an article of manufacture."

Note that, in dicta, four of the Strijland panel members indicated they would have concluded that statutory subject matter was present if certain threshold requirements were met. These are: (1) the specification as originally filed described and claimed the icon as a design for a programmed computer system; (2) the specification included drawings depicting the icon displayed on the monitor of a programmed computer system and (3) the specification explained how the icon was an "integral and active component in the operation of a programmed computer displaying the design."

The Board decisions leave open the question of the threshold requirements for the protection of screen displays. To assist the Office in evaluating how to proceed in light of these decisions, public comments are invited on the following series of questions:

1. Should design patent protection be available for screen displays and other visual elements of computer software (e.g., should the PTO adopt the suggestion of the Board in the Strijland opinion that, if properly presented, screen displays can be statutory subject matter under 35 U.S.C. 171)?

2. If your answer to 1 is "yes" then:

(a) Should the Office adopt the threshold requirements for statutory subject matter set forth in Strijland? What alternatives to those requirements would be consistent with current statutes, regulations and case law?

(b) Would adoption of the Strijland threshold requirements require more detailed design application specifications in order to meet the description, enablement and best mode requirements of 35 U.S.C. 112, paragraph 1?

(c) Would adoption of the Strijland threshold requirements affect the patentability of design applications claiming type fonts designs? Are type fonts distinguishable from screen displays for the purposes of 35 U.S.C. 171?

(d) What is the article of manufacture that can be considered ornamented by icons, screen displays, menus, dialog boxes, etc., and how can these articles be illustrated to comply with 37 CFR 1.152?

3. What protection would design patents for screen displays provide that is not already provided by copyright and trademark law?

4. Have you or your organization encountered situations where copyrights or trademarks have failed to provide adequate protection for visual elements of software that could have been addressed through use of design patent protection?

5. Are images displayed on a television screen legally distinguishable from the same image displayed on a computer monitor?

6. Does a description in a specification indicating how a displayed image is an "integral and active component in the operation of a programmed computer displaying the design" provide a workable line between statutory and non-statutory design subject matter?

A second facet of the discussion of visual elements of software is the significance of those elements in evaluating whether a software-related invention is deserving of utility patent protection. Specifically, how should visual elements of a software-related invention be evaluated, in the context of the invention as a whole, during examination and for judicial assessments of validity? The focus of this question is not whether the software-related invention should be eligible for protection under the utility patent law (for discussion of this question, see topic A, above). Rather, it is focused on the significance of visual elements of software in determining whether a patentable improvement has been made to a previously known process or article of manufacture. To assist this discussion, consider each of the following questions in the context of two machines, each having multiple hardware components and one software component that guides the operation of the machine. The only difference between the two machines is that the "new" machine employs different visual display elements in its software component.

7. Should the "new" machine be considered "novel" in view of the different visual elements used in the software component?

8. If viewed as making the machine as a whole "novel", should the visual display elements of the "new" machine justify a conclusion that the product as a whole could be non-obvious to a person of ordinary skill?

9. If you answered yes to questions 1 or 2,

(a) Which field of technology should be used to determine the ordinary level of skill for assessing the question of obviousness (e.g., software programming, software interface design, field of technology for the machine, other) ?

(b) How should the visual display elements be evaluated (e.g., ease of use, functions they provide, etc.)?

(c) What aspects of the visual display should be compared and/or considered?

III. Guidelines for Oral Testimony

Individuals wishing to testify must adhere to the following guidelines:

1. Anyone wishing to testify at the hearings must request an opportunity to do so no later than five days prior to the date of the hearing at which they wish to testify. No one will be permitted to testify without prior approval.

2. Requests to testify must include the speaker's name, affiliation (if any), phone number, fax number (if available), mailing address, and the questions in each topic that the speaker intends to address in his or her testimony.

3. Speakers will be provided between 7 and 12 minutes to present their remarks. The exact time allocated per speaker will be determined after the final number of parties testifying has been determined.

4. Speakers must provide a written copy of their testimony for inclusion in the record of the proceedings no later than the last date of the hearings at which they are testifying (e.g., either January 27 or February 11, 1994).

5. Speakers must adhere to guidelines established for testimony. These guidelines will be provided to all speakers no later than two days prior to the date of the hearings.

A schedule providing approximate times for testimony will be provided to all speakers no later than the morning of the day of each hearing. Speakers are advised that the schedule for testimony will be subject to change during the course of the hearings.

IV. Other Information

For information regarding accommodations in the San Jose area, or for information regarding the San Jose Convention Center facilities, individuals can contact Joseph R. Hedges of the Office of Economic Developmentof the City of San Jose. Mr. Hedges can be reached by phone at (408) 277-5880; by fax at (408) 277-3615, or by mail addressed to 50 West San Fernando Street, Suite 900, San Jose, California 95113.

Bruce A. Lehman Assistant Secretary of Commerce and Commissioner of Patents and Trademarks


Statements and Policies on Software Patents

Adobe Systems Statement On Software PatentsAdobe Systems Statement On Software Patents: Opposition to software patents in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_adobe)

Autodesk Statement On Software PatentsAutodesk Statement On Software Patents: Opposition to software patents in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_autodesk)

Borland International Statement On Software PatentsBorland International Statement On Software Patents: Opposition to software patents in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_borland)

IBM Statement On Software PatentsIBM Statement On Software Patents: Support for the system in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_ibm)

Intel Statement On Software PatentsIntel Statement On Software Patents: Support for the system in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_intel)

Microsoft Statement On Software PatentsMicrosoft Statement On Software Patents: Support for the system in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_microsoft)

Mitch Kapor's Congressional Testimony On Software PatentsMitch Kapor's Congressional Testimony On Software Patents: Opposition to software patents in congressional testimony by Mitch Kapor, founder of Lotus.  (software_patent_kapor)

Oracle Software Patent PolicyOracle Software Patent Policy: Well written. Reportedly "withdrawn", but worth reading.  (software_patent_oracle)

Silicon Graphics Statement On Software PatentsSilicon Graphics Statement On Software Patents: Support for the system in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_sgi)

Software Patent HearingsSoftware Patent Hearings: In January and February of 1994, the U. S. Patent Office held hearings on the use of the patent system to protect software related inventions. This is the text of the Federal Register notice.  (software_patent_hearings)

Sun Microsystems Statement On Software PatentsSun Microsystems Statement On Software Patents: Not opposition but not outright support either. Call it "concerns". A statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_sun)

Synopsys Statement On Software PatentsSynopsys Statement On Software Patents: Opposition to software patents in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_synopsys)

Taligent Statement On Software PatentsTaligent Statement On Software Patents: Support for the system in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_taligent)

Time Warner Cable Statement On Software PatentsTime Warner Cable Statement On Software Patents: Not opposition but not outright support either. Call it "concerns". A statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_timewarner)

Videodiscovery Statement On Software PatentsVideodiscovery Statement On Software Patents: expressions of the problems for a small firm. A statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_videodiscovery)

Wind River Systems Statement On Software PatentsWind River Systems Statement On Software Patents: Opposition to software patents in a statement at a Public Hearing on Use of the Patent System to Protect Software Related Inventions, Wednesday, January 26, 1994 at the San Jose Convention Center.  (software_patent_windriver)

The extra text menu links (previously here) are being removed in the site redesign.
Browser and search engine improvements have eliminated the motivation/necessity for them.

This page created:
before
Fri, 25.Oct.2002

Last updated:
16:20, Sat, 10.May.2014

. . .

NOTICE --- SITE  UNDERGOING REWRITE - SEE LINK BELOW FOR DETAILS

 Explanation of the rewrite: New Page Layout.
 Check out my blog: My Ephemerae
 Yes ... I want you to link to my site Please link to me
 Want to email me? I'd love to hear from you.
 I have begun tutoring in the South Houston, Texas area.

. . .
software patent hearings, federal register notice, san jose patent hearings, alexandria patent hearings, software patent hearings, federal register notice, san jose patent hearings, alexandria patent hearings, qwerty . . . software patent hearings, federal register notice, san jose patent hearings, alexandria patent hearings, software patent hearings, federal register notice, san jose patent hearings, alexandria patent hearings, qwerty