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Issue 3 | October 16, 2001
Software: Is It Ready For Patenting?


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 §102(b).

To discuss the topic above further, please contact the author Stephen Lesavich, PhD of McDonnell Boehnen Hulbert & Berghoff (Chicago) at Lesavich@mbhb.com. http://www.mbhb.com.

The information contained in this e-mail is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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