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Suggestions for the USPTO in 2013

The USPTO is hosting roundtables to ask for input from software developers. (details)

Please contribute suggestions to this page to help anyone who will be participating.

What's a valid suggestion?

We have to remember that the USPTO has a very limited role in patent policy. They have to follow the courts. All suggestions have to be compatible with existing court rulings.

One could ask them to simply stop granting software patents, and we could argue based on Supreme Court case law, but that would require them to completely reject their own case law, the case law of the CAFC, and to change their own opinion of software patents. So it's unlikely.

The other thing to remember is that software is only a small part of their work. If you propose an organisational change that will apply to examining all categories of patents, then you enter a very slow-moving system that requires the agreement of the pharmaceutical industry, manufacturing, and many others.

Suggestions

Read rulings where judges invalidate

I’d start by saying that they don’t need to ask the software community. Judges consistantly invalidate software patents, much more than non-software patents, as shown in this study:

Surely the USPTO can read those rulings to see what they’re doing wrong. For a suggestion to be valid, a proposed change has to be compatible with the courts’ case law and be within the USPTO’s scope of competence. Software developers don’t know these things, so it’s very hard to come up with valid suggestions, but judges are trained and experienced in exactly this, and they write a legal reasoning each time they invalidate a patent, so the answer is there in their rulings.

Listen to Supreme Court, not just CAFC

The Supreme Court is over the district courts and the CAFC, and that the USPTO should apply the Supreme Court’s Mayo ruling to remove the computer or storage medium from applications when they’re examining them. Putting software on a computer is a trivial and expected step that shouldn’t contribute to patentability.

Require industry terminology

Third (but I don’t know how much leeway the USPTO has on this), instruct examiners to send unclear applications back to applicants asking for a clearer description using more words that have definitions in the industry. This should “improve clarity of claim boundaries” so that hardware patents (a “point of sale”) stop spilling over into software (online shop).

Don't oppose abolition of software patents

The USPTO has an ongoing lack of resources and raising or lowering standards doesn’t reduce the amount of examination necessary, but narrowing the field of patentable subject would. So, while the USPTO mightn’t have the power to determine what is legally patentable, I’d recommend not being afraid of proposals to remove a sector of any field from eligibility (and we know that software is the only sector for which exclusion is seriously discussed). If this happens, the USPTO will have more resources for improving evaluation quality in the remaining patentable sectors. By removing the least-loved sector, this will also reduce the amount of negative press about patents and curb the increasing discontent with the patent system in general. Everyone will be happier.

Could we abolish any sub-categories of software patents?

Are there categories of software patents which haven't been upheld by the CAFC?

By categories I mean, ways of describing an idea. Eg. software+computer, or system-implemented-via-computer, or algorithm-in-one-domain...

On a computer/mobile device/tablet computer/laptop computer clauses and novelty

Taking a description of a problem and then saying "Solving X problem on a mobile device" should not be a valid patent as it isn't a description of a method in any way shape or form. This equates to patenting ANY and all solutions to the problem by use of a given tool, not how that tool is used to solve the problem. Apple's patent on recognizing text (5946647) and then acting on it for example describes any use of regular expressions on a mobile device to find actionable text. This shouldn't pass muster as it's the quintessentially obvious solution to the problem of recognizing text and performing an action on it. It doesn't become novel by being "on a mobile device". In effect you can't solve that problem and have that UI paradigm without infringing on that patent even though the solution is obvious.

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