Oct 022011

To receive patent protection in the United States and most other countries, an invention must be both novel and non-obvious. The test for novelty is relatively easy. A patent examiner must simply show that the invention existed previously to conclude that it is not novel. If the examiner cannot find an example of the invention, then the invention is assumed to be novel. The test for novelty is quite objective, with conflicts limited to determining if the elements of the two inventions are equivalent.

However, when a patent examiner is trying to determine if an invention is obvious, she must decide if a person of ordinary skill in the art who faces that problem that the invention solves would have thought of combining the inventions various elements to create it. This is a highly subjective question, with the answers of different patent examiners varying widely.

The question of obviousness is particularly critical for software inventions. All software inventions, like all inventions, are at some level made up of known elements that have been combined in a new and creative way. However, unlike other inventions that are made of elements from the relatively large set of shapes, materials, molecules, and process steps, software inventions are created from a much smaller set of coded instructions.

Patent examiners are only supposed to combine elements from analogous software implementations. (Other software implementations are usually referred to as art or prior art.) However, in practice what qualifies as an analogous art can vary significantly. Sometimes almost any other software is cited as an analogous implementation. As a result, some very innovative software inventions have had difficulty being granted patent protection because in hindsight almost everything looks like obvious combinations of known elements.

With a broad definition of analogous art, an examiner will often reject a software patent application as obvious by simply finding somewhat similar elements in several other software inventions and then concluding that the combination of these elements would have been obvious to a person of ordinary skill in the art. As a result, three relatively unrelated software implementations may be cited as showing that a software invention is obvious simply because a first implementation has two elements of the invention, a second has three other elements, and a third implementation has one element of the invention, even if the implementations addressed very different problems.

The Court of Appeals for the Federal Circuit, the appeals court for all patent cases, has limited the scope of analogous art that can be used to show that a software invention is obvious. In the court’s Klein decision it concluded that prior art in another field of endeavor is not analogous art unless it is relevant to the entire problem solved by an invention. When this precedent is applied to software inventions, it significantly reduces the set of art that can be used against a software patent application, making it easier for software inventions to get useful protection from copying and imitation.

About the Author:
Scott Thorpe is a Registered Patent Attorney at the law firm of Kunzler Needham Massey & Thorpe.

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