When Is A Software Invention Actually Ready For Patenting?
The Court of Appeals for the Federal Circuit recently affirmed
a District Court decision of patent invalidity under the on-sale
provisions of 35 U.S.C. §102(b). Robotic Vision Sys.,
Inc. v. View Eng'g, Inc and General Scanning, Inc., 249 F.3d
1307 (Fed. Cir. 2001). The Federal Circuit applied the new two
prong on-sale bar test from Wayne K. Pfaff v. Wells Elecs.,
Inc., 525 U.S. 55 (1998).
In the Pfaff case, the Supreme Court, referred to drawings
and other descriptions of an invention as proof that the invention
is complete and hence ready for patenting. Using the new Pfaff
test, the Federal Circuit held in the Robotic Vision case that a software invention was ready
for patenting when one of the inventors verbally described the invention
to a co-worker in sufficient detail to allow him to practice it,
even though the actual software used to practice the invention
did not exist before the on-sale bar date.
The Robotic Vision case helps illustrate the dynamic nature
of patent law used to protect high-tech inventions. It also illustrates
the caution that must be exercised when attempting to protect
high-tech inventions including methods that are implemented with
software. The conduct of inventors as well as marketing or sales
materials that could describe details of software inventions must
now receive more scrutiny to avoid inadvertent on-sale bars under
To discuss the topic above further, please contact the author
Stephen Lesavich, PhD of McDonnell Boehnen Hulbert & Berghoff
(Chicago) at Lesavich@mbhb.com.
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