C. 35 USCS § 102: Novelty; prior art
How do you demonstrate novelty and lack of prior art in a reasonably discoverable manner?
So many software patents have been issued that it is nearly impossible for software developers to ensure their products are non-infringing. Instead, software companies often release products without vetting them for software infringement at all and then keep their fingers crossed that they won’t be sued for infringement, whether by a “legitimate” patent holder or a patent troll. As an extreme example, Richard Stallman’s opinion piece cited supra quotes an analysis of the Linux operating system that estimated the program may infringe on as many as 100,000 separate software patents. While this is an extreme example considering the size and complexity of the open-source Linux OS, it indicates how difficult it is to develop any program that doesn’t include at least a few patented elements.
Similarly, the validity of a software patent requires that the applicant demonstrate the absence of any identical manifestation of the material for which a patent is sought. The challenges presented to the USPTO in determining the lack of prior art in the ocean of existing software patents is examined infra. A software-patent codebase such as that proposed by the EFF and others would facilitate searches for prior art by software developers and USPTO officials processing software patent applications.
The following are edited excerpts from Lexis case notes relating to 35 USCS § 102.
Test of Novelty and Utility
Under Patent Act of 1952, patentability depends on three explicit conditions: novelty and utility, as articulated and defined in 35 USCS §§ 101 and 102, and non-obviousness, as set out in 35 USCS § 103. Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, 148 USPQ 459.
Novelty and non-obviousness, as well as utility, are separate tests of patentability and all must be satisfied in a valid patent. United States v Adams (1966) 383 US 39, 15 L Ed 2d 572, 86 S Ct 708, 148 USPQ 479.
The subject matter of a patent is, under 35 USCS § 101, limited to process, machine, manufacture, or composition of matter, or improvement thereof, which fulfills three conditions of novelty and utility as articulated and defined in 35 USCS §§ 101 and 102, and non-obviousness, as set out in 35 USCS § 103. Kewanee Oil Co. v Bicron Corp. (1974) 416 US 470, 40 L Ed 2d 315, 94 S Ct 1879, 69 Ohio Ops 2d 235, 181 USPQ 673.
Standard of Utility
The requirement of 35 USCS § 101 that an invention be "useful" is not to be given its broadest reach, such that little or nothing of chemical nature would be found to lack utility; thus, not every "use" that can be asserted will be sufficient to satisfy statute. Ex parte Fisher (2004) 72 USPQ2d 1020.
Rather than setting a de minimis standard, 35 USCS § 101 requires utility that is substantial, i.e. one that provides specific benefit in currently available form. Ex parte Fisher (2004) 72 USPQ2d 1020.
Failure to Use
Failure to use patent for 22 years is strong indication of lack of merit or utility. Rockwood v General Fire Extinguisher Co. (1925, CA2 NY) 8 F2d 682, cert den (1925) 269 US 571, 70 L Ed 417, 46 S Ct 26.
Mere nonuse is not conclusive of nonutility, but can be considered where it extends over considerable length of time. Rown v Brake Testing Equipment Corp. (1930, CA9 Cal) 38 F2d 220, reh den (1931, CA9 Cal) 50 F2d 380.
Failure to manufacture and sell patented device does not always negative utility. Cleveland Automatic Mach. Co. v National Acme Co. (1931, CA6 Ohio) 52 F2d 769.
The court is not impressed by a charge that the patent is “paper patent” never used; if merit lies in it, validity cannot be refused because of lack of use; boycott by users or lack of means of the inventor may account for nonuse; the patent may have gotten into hands not interested in exploiting it. Universal Oil Products Co. v Globe Oil & Refining Co. (1943, CA7 Ill) 137 F2d 3, 58 USPQ 504, affd (1944) 322 US 471, 88 L Ed 1399, 64 S Ct 1110, 61 USPQ 382.
A patent will be protected though the holder never put it into use and it is not necessary that he manufacture the device. Barnett v F. W. Woolworth Co. (1931, DC NY) 56 F2d 418, affd (1932, CA2 NY) 56 F2d 420.
D. 35 USCS § 103: Non-obvious subject matter
So many software patents have been issued that it is nearly impossible for software developers to ensure their products are non-infringing. Instead, software companies often release products without vetting them for software infringement at all and then keep their fingers crossed that they won’t be sued for infringement, whether by a “legitimate” patent holder or a patent troll. As an extreme example, Richard Stallman’s opinion piece cited supra quotes an analysis of the Linux operating system that estimated the program may infringe on as many as 100,000 separate software patents. While this is an extreme example considering the size and complexity of the open-source Linux OS, it indicates how difficult it is to develop any program that doesn’t include at least a few patented elements.
Similarly, the validity of a software patent requires that the applicant demonstrate the absence of any identical manifestation of the material for which a patent is sought. The challenges presented to the USPTO in determining the lack of prior art in the ocean of existing software patents is examined infra. A software-patent codebase such as that proposed by the EFF and others would facilitate searches for prior art by software developers and USPTO officials processing software patent applications.
The following are edited excerpts from Lexis case notes relating to 35 USCS § 102.
Test of Novelty and Utility
Under Patent Act of 1952, patentability depends on three explicit conditions: novelty and utility, as articulated and defined in 35 USCS §§ 101 and 102, and non-obviousness, as set out in 35 USCS § 103. Graham v John Deere Co. (1966) 383 US 1, 15 L Ed 2d 545, 86 S Ct 684, 148 USPQ 459.
Novelty and non-obviousness, as well as utility, are separate tests of patentability and all must be satisfied in a valid patent. United States v Adams (1966) 383 US 39, 15 L Ed 2d 572, 86 S Ct 708, 148 USPQ 479.
The subject matter of a patent is, under 35 USCS § 101, limited to process, machine, manufacture, or composition of matter, or improvement thereof, which fulfills three conditions of novelty and utility as articulated and defined in 35 USCS §§ 101 and 102, and non-obviousness, as set out in 35 USCS § 103. Kewanee Oil Co. v Bicron Corp. (1974) 416 US 470, 40 L Ed 2d 315, 94 S Ct 1879, 69 Ohio Ops 2d 235, 181 USPQ 673.
Standard of Utility
The requirement of 35 USCS § 101 that an invention be "useful" is not to be given its broadest reach, such that little or nothing of chemical nature would be found to lack utility; thus, not every "use" that can be asserted will be sufficient to satisfy statute. Ex parte Fisher (2004) 72 USPQ2d 1020.
Rather than setting a de minimis standard, 35 USCS § 101 requires utility that is substantial, i.e. one that provides specific benefit in currently available form. Ex parte Fisher (2004) 72 USPQ2d 1020.
Failure to Use
Failure to use patent for 22 years is strong indication of lack of merit or utility. Rockwood v General Fire Extinguisher Co. (1925, CA2 NY) 8 F2d 682, cert den (1925) 269 US 571, 70 L Ed 417, 46 S Ct 26.
Mere nonuse is not conclusive of nonutility, but can be considered where it extends over considerable length of time. Rown v Brake Testing Equipment Corp. (1930, CA9 Cal) 38 F2d 220, reh den (1931, CA9 Cal) 50 F2d 380.
Failure to manufacture and sell patented device does not always negative utility. Cleveland Automatic Mach. Co. v National Acme Co. (1931, CA6 Ohio) 52 F2d 769.
The court is not impressed by a charge that the patent is “paper patent” never used; if merit lies in it, validity cannot be refused because of lack of use; boycott by users or lack of means of the inventor may account for nonuse; the patent may have gotten into hands not interested in exploiting it. Universal Oil Products Co. v Globe Oil & Refining Co. (1943, CA7 Ill) 137 F2d 3, 58 USPQ 504, affd (1944) 322 US 471, 88 L Ed 1399, 64 S Ct 1110, 61 USPQ 382.
A patent will be protected though the holder never put it into use and it is not necessary that he manufacture the device. Barnett v F. W. Woolworth Co. (1931, DC NY) 56 F2d 418, affd (1932, CA2 NY) 56 F2d 420.
D. 35 USCS § 103: Non-obvious subject matter
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