Increasing the Rate of Allowance for Certain Computer Software Patent Applications

By Glenn Foster

Note: The following represents my opinions after working for eighteen years as a patent attorney for a number of companies and patent law firms, and previously four years as a Patent Examiner. I have prepared or prosecuted over four hundred patent applications as a patent attorney, and have examined approximately a thousand as a patent examiner. This write-up represents my opinions, and not necessarily those of anyone else.

Patents and other Intellectual Properties (Trademarks, Copyrights, Trade Secrets, etc.) are big business. The majority of the U.S. GNP wealth is somehow associated with Intellectual Property. Patents are mentioned in the U.S. Constitution, and patents have been closely tied in with the individual inventor and innovator as with almost every successful corporation and organization. Patent law combines technical and patent law portions, indeed in patent specifications, drawings, and claims; the patent law portion cannot be differentiated from the technical portion. Patent attorneys and agents owe a duty to our clients to use our particular technical and patent law knowledge and skills to draft quality applications that stand a reasonable chance of being allowed. This client duty for a mechanical patent attorney would differ from that for a chemical patent attorney or life science patent attorney.

Currently, many computer software patent attorneys, programmers, and engineers face a low allowance rate for their computer software patent applications. Patent examiners at the USPTO do not want to issue patents they believe contain nebulous patentability. The overall allowance rate for applications covering computer software and business methods within the United States Patent and Trademark Office (USPTO) is less than 20 percent. This low allowance rate which aggravates the pressing backlog problem for examination at the USPTO. Computer Software patent law is a much more recent addition than electrical or mechanical patent law, since the underlying technology is newer. This web page submits an alternative to traditional computer software drafting techniques that have been proven to provide a considerably higher allowance rate.

I am an experienced patent attorney educated, skilled, and trained in the technologies as well as patent laws of each of the electrical, mechanical, computer science practice areas. Through my career, I have demonstrated patent applications drafted in a manner that synergistically integrates multiple ones of these patent laws and technologies (computer software with electrical and/or mechanical) will likely provide for greater innovation and functionality, as well as higher patent allowance rates.

My career interdisciplinary computer software patents that integrate computer software with electrical, mechanical, and/or other fields have an allowance rate well over 50 percent! An interdisciplinary patent application may be defined as one that synergistically integrates the technical and legal aspects of more than one technical area. Most particularly, patent protection of a given computer software application can frequently be expanded by incorporating the functions of the associated electrical, mechanical, electromechanical, mechanical, or other components. In addition to potentially being more enforceable and licensable from the legal standpoint; interdisciplinary patent applications also more accurately reflect innovations within the modern world with their increasing use of processor-based controllers, computers, automated systems, and the like. That is, interdisciplinary considerations within patent law accurately reflect interdisciplinary technological and engineering considerations that often combine computers, processors, or controllers with some device or system of one or more technologies. Modern cars, trains, and aircraft for example are increasingly interdisciplinary; and have been respectively described as computers running on roads, rails, or wings. Many microprocessor-based devices are similarly interdisciplinary, such as medical imagers, fly-by-wire aviation systems, robots, and the like. They require computer software technology to be integrated into the “host” electrical and/or mechanical technology to operate.

Unfortunately, there are few multi-technology engineers, patent attorneys, or programmers who overview many of our most interdisciplinary industries that are not in their field of expertise. To more fully understand the engineering and patent aspects of an interdisciplinary hybrid car, the engineer or patent attorney would need thorough working knowledge of the mechanical technology of the gas engine, the electrical technology of the electric batteries and electric motor, and the computer software of the engine, the batteries, motors, and the engine controls. Correspondingly, an insufficient technical disclosure on any one of these technical/legal triads would weaken the patent disclosure as well as the potential operation of the underlying product or system.

Certain countries, including the U.S., are in the process of reconsidering patent protection (or not allowing in the first place) for computer software or business method claims. Prior to the State Street Bank decision, there were few avenues for computer software patent protection, and one can foresee the USPTO returning to this limited software protection point. The Court of Appeals of the Federal Circuit, within In re Bilski, utilizes the machine or transformation test for computer software. The United States Supreme Court granted Cert for In re Bilski, and the final outcome for computer software and business method claims and applications are far from certain.

What is keeping the allowance rate of these Computer Software applications so low in the USPTO? I believe numerous computer software and business method patent applications are drafted with insufficient distinction between the various computer software programs being described. Consider that most computer software and business method patent applications utilize flow charts to describe their innovative features. The words of flow charts can be confusing since different software programmers or manufacturers often use different terms to describe very similar software or software functionality. By comparison, most mechanical or electrical devices utilize at least one drawing figure to describe their attributes, and inventions may be more easily discernible. Drawings illustrating mechanical or electrical devices often appear more innovative than the words-alone of flow charts. I believe the flow charts used in many computer software or business method patent applications do not illustrate inventive concepts well in a manner that the patent examiners, courts, licensees, or others can visualize innovations.

Some level of skill in each of these technical areas is an asset for an engineer or patent attorney, if for no other reason than it allows for increased identification of the synergies that exist within a system. While interdisciplinary roles in companies can be critical, often engineers, programmers, scientists become more specialized in their profession and thereby less interdisciplinary. Many successful company founders such as Thomas Edison, Bill Gates, Steve Jobs, Alexander Graham Bell, and Henry Ford were, or became, interdisciplinary. They had vision and knowledge in each technology involved with their fledgling company’s products – in many cases they “wrote the book” of their particular industry.

Crafting interdisciplinary patent applications often require interaction such as brainstorming sessions with engineers and scientists, or others skilled in each technical area being covered by the innovation. Interdisciplinary patent applications often involve fascinating and creative interactions between distinct technical groups. Patent attorneys and inventors are less likely to know what the invention is likely to develop into at the start, since each technological group is uncertain what other technological groups are likely to innovate. Crafting interdisciplinary patent applications often involves acting as a manager and associating innovations from different engineering groups. Inventors in one technological group are likely to feel out of place when dealing with the other technologies of different groups. I have heard repeatedly, for example, “I can confirm the technology in my group, but not the technology in other areas involved in the interdisciplinary application.” Interdisciplinary patents are more likely to be pioneer inventions since the inventive synergism between the distinct inventive groups are more likely to produce something truly unique, and perhaps highly patentable or valuable. The synergism involved with combining different technical disciplines often lead to the increased rate of allowance previously alluded to.

Combining mechanical, electrical, optical, aeronautical, electromechanical, structural, or other components to be controlled or otherwise effected by computer software may enhance the “machine or transformation” aspects as described in Bilski. As a former examiner having examined over a thousand patent applications in the mechanical arts, Bilski’s term “machine or transformation” appears downright mechanical, electrical, or electro-mechanical. Mechanical, and electrical applications currently have a considerably higher rate of allowance than computer software patent applications. As a mechanical patent attorney for Ingersoll-Rand, my rate of allowance rate for mechanical patent applications approached 90 percent, for example.

The first interdisciplinary patent application I drafted involved U.S. Patent No. 5,054,995, entitled “Apparatus for Controlling a Fluid Compression System”. The computer software aspect of this patent comprises a microprocessor (described using flow charts) controlling operation of a mechanical compressor using electro-mechanical systems. As such, this interdisciplinary patent, filed in 1989, would likely satisfy the In re Bilski “Machine or Transformation” test since the mechanical air-compressor can be considered a machine that is controlled by the microprocessor-based computer software. The computer technology was relatively simple by today’s more mature standards; but at its time faced considerable patent law challenges. To prepare and prosecute this patent application, a number of outside counsel were consulted since no internal Patent Attorney had an electrical engineering or computer science legal or technical background. Admittedly, the outside counsel were somewhat perplexed because they had not seen this type of “interdisciplinary” patent application before, as few had at that time; but the outside counsel each confirmed that the application was drafted suitably. This patent was particularly high profile at Ingersoll-Rand, and was awarded the I-R Patent of the Year Award.

While interdisciplinary software patents do likely contain flow charts, many of such flow charts are generalized to describe the machine or transformation aspects of the “controlled” or otherwise affected mechanical or electrical portion. As such, the interdisciplinary flow charts would not be as confusing as conventional computer software flow charts that suffer from less concrete computer software description. I have successfully followed the basic legal/ technical framework established by U.S. Patent No. 5,054,995 across many different interdisciplinary computer software applications of different technologies, yielding consistently high allowance rates.

A technical background or education, as well as patent law experience and skill in each of the electrical, mechanical, and computer science fields, has allowed me to craft applications that are more suitable in each of these technical areas. Such confusion or uncertainty would be expect to result not only from the multiple technologies of interdisciplinary patent applications, but also the multiple patent laws (e.g., computer software patent law, electrical patent law, and mechanical patent law).

Interdisciplinary patent applications can be expected to increase the scope of patent protection, innovation, as well as the allowance rate. Though the amount of time necessary to prepare interdisciplinary patent applications may be greater than single-technology patent applications because of the detail of the increased technical synergy, I have found they often involve less prosecution time because the innovations will often become more evident to the examiner, inventors, engineers, potential licensees, or potential infringers. Interdisciplinary patent applications almost always justify some additional premium payment, since the inventors, managers, examiners, and attorneys are more likely to see considerable innovation in at least one of the technologies.

While interdisciplinary techniques have, through my career, demonstrated their increased allowance rate as well as their increased value by covering a variety of inventions more completely and accurately, they do face challenges. For example, the patent attorney has to be skilled in each of the patent law and technology areas. Inventive teams have to be formed across multiple technologies, and each inventor must feel somewhat confident of the other engineers/ programmers experience and judgment. These interdisciplinary techniques require a buy-in from upper management, without whose understanding such techniques may be viewed as non-traditional and are more likely to be doomed to failure. Also, the review process of such applications may be challenging since there are relatively few truly interdisciplinary patent attorneys or engineers. In reward for pursuing such interdisciplinary applications, innovative features are easier to find since interdisciplinary areas are less completely “mined”. This will likely provide more inventive patent applications that will be more accepted within the USPTO during a period that more patent examiners are desperately seeking innovative features in certain patent applications.

I believe the patent bar owes our clients/ customers better service for computer software and business patent applications than our current low allowance rates. Interdisciplinary patent applications provide one proven technique that can be used to increase such rates. I append a number of my patent writing samples to the end of this document, most of which may be viewed as interdisciplinary. Comments or suggestions to the author can be addressed to gbfoster@comcast.net.

Examples of Interdisciplinary Patent Applications

U.S. Patent No. 6,654,511 – entitled Optical Modulator Apparatus. One of a set of patents I prepared relating to transmitting optical signals through the thin upper silicon layer of a silicon on insulator (SOI) wafer, modulating that optical signal, as well as coupling the optical signal to the waveguide to get the optical signal in and out of the waveguide. This patent could be used as a platform to build an optical computer.

U.S. Patent Nos. 7,623,625 and 7,627,085 – related to Compton Scattered X-Ray Visualizing, Imaging, or Information Providing (which I drafted and, on one, was a co-inventor). Also prepared a set of fluorescence imaging patent applications. Compton Scattering technology is used in modern airport security detectors. This Compton Scattering imaging device provides for localized depth imaging through tissue such as with a scope, or larger scale depth imaging using lower doses than other X-ray imagers.

U.S. Patent Nos. 6,258,220 – Electro-Chemical Deposition System. One of Applied Materials first ECD, or electroplating, patent applications. Applied Materials now uses this technology extensively for metalization during semiconductor processing.

U.S. Patent Application S/N 20070080798, entitled Mote Device Signal Aspects and related to motes, which are minute sensor/control devices. A number of motes may be distributed throughout an area to define a mote network, some of which can communicate with each other. The energy level of such motes can be determined, and thereupon such devices that fall below a device battery threshold can be marked, such by changing at least one color or surface feature. The user or automatic device can thereupon collect and/or recharge the energy-depleted devices.