I was going through handouts that I sometimes give out to clients and I found this. I made this because clients are sometimes unsure what type of IP protection is best suited for them. This handout breaks down the differences between patents, trademarks, and copyrights in a condensed form. Enjoy.
Who qualifies as an inventor? Under US law, an inventor is someone who contributed to the conception of the invention claimed in the patent application. "Conception" is defined as "the complete performance of the mental part of the inventive act" and it is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice." See Townsend v. Smith, 35 F.2d 292, 295 (CCPA 1929). I will talk more about what is required to show conception next time.
Shifting our attention back to what makes someone an inventor, it is important to note that when conceiving the invention, the inventor can adopt general ideas and suggestions from others (i.e., conduct research) as long as the inventor maintains intellectual domination over making the invention. Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965).
Inter partes review (IPR) is a trial proceeding that was introduced by the America Invents Act (AIA). It became available for all patents on September 16, 2012, regardless of the priority date of the patents. This is a procedure that is conducted before the Patent Trial and Appeal Board (PTAB).
IPR allows a petitioner to challenge the patentability of one or more claims in a registered patent only on a ground that could be raised under Sections 102 (anticipation) or 103 (obviousness), and only on the basis of prior art consisting of patents or printed publications. The petitioner can institute an action after the later of either: 1) 9 months after the grant of the patent/issuance of a reissue patent; or 2) after the post grant review. These deadlines are not applicable to pre-AIA patents.
Every inventor, applicant, assignee, attorney/agent, and whoever else involved in prosecuting a patent application has the duty of candor to disclose prior art that is material to the examination of the application.
Here, "material" means anything that would make the application unpatentable; anything that is contrary to the examiner's position; or anything that would help a patent examiner prosecute the application at hand. Usually, previously registered patents, patent application publications, and other types of publications are cited in an information disclosure statement (IDS). How do you know which previously registered patents, patent application publications, and/or other publications should be cited? Sometimes you just know from conducting your own research when making your invention. But most of the times, you know from conducting a patent search.
Since Alice, many clients have been asking how difficult it would be to register software patents. My first answer to this questions is: patent prosecution for any type of patent applications is a complex process, which means whether or not the invention in question is an apparatus or a computer-implemented method, it may take just as much time and effort to prosecute.
So the real question becomes, how do you deal with the rejections (they will be rejections under 35 U.S.C. § 101)? I've been sort of compiling a list of software patents that recently registered to learn their successes. It is important to note, I think, that you don't always have to be looking for "pure" software patents to look for good examples. You may find it surprising that some hardware patents include logic that is deemed patentable.