About Members Events News Contact Jobs                                                            Issue 3  | October 16, 2001                          APLF.org                                     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.                       About Members Events News Contact Jobs        	

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