Seven Golden Rules That Protect You Against Expensive Failures

1. Patenting
CII & Software Inventions
Seven Golden Rules That Protect You Against Expensive Failures
Martin Schweiger
IPR Gorilla Virtual IP Conference
16 June 2021
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2. What to come
• Introduction
• Golden Rule #1: there is no prior art available when you need it most
• Golden Rule #2: be clear about the motives for filing a software patent
• Golden Rule #3: CII Patents involve a lot of painful work
• Golden Rule #4: only genuine programmer-technicians should draft CII Patents
• Golden Rule #5: many CIIs are “Selection Inventions”
• Golden Rule #6: document how your CII Patent application has been drafted with the
end in mind
• Golden Rule #7: there is no Artificial Intelligence (A.I.) and there never will be one
These Golden Rules are interwoven in terms of “risk of failure” and “money & time spent”
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3. Introduction
• Software Patent = Computer-Implemented Invention (CII)
Patent
• The Gold Standard for CIIs: If you make it in the UK then you
make it anywhere
• “Technical Nature/Contribution” of patentable inventions.
Different from country to country. There is no silver bullet.
To the contrary, the result cannot be predicted.
• In short words: one and the same CII invention can be
patented and not patented by the same Examiner,
depending on how the patent application is drafted.
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4. Golden Rule #1: there is no prior art available
when you need it most
You cannot add subject matter to a patent application.
When it comes to the patentability of a computer-
implemented invention, you will not be able to find out useful
prior art before you start drafting that patent application.
Depending on the creativity, knowledge, and grit of the patent
examiner, you will learn a lot about new prior art documents
during examination.
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5. Golden Rule #2: be clear about the motives
for filing a software patent
from a patent strategy point of view:
patents for computer-implemented inventions can be helpful
to promote negotiations for license fees,
but
a lot of effort has to be put in when you want to make these
software patents work for obtaining an injunction.
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6. Golden Rule #3: CII Patents Involve A Lot Of
Painful Work
describe the alleged invention in such details that it can be
understood from the patent application itself – without citing
additional external sources – why you think that it has
tangible advantages
"To understand a new algorithm, run it on paper with a small
sample input."
(Wladston Viana Ferreira Filho, Computer science distilled: learn the art of solving computational
problems, 2019)
Example: G1/19 & T 1227/05
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7. Golden Rule #4: Only Genuine Programmer-
Technicians Should Draft CII Patents
for drafting your patent application, have a patent attorney on
your team who has made a living as a programmer, for an
extended period of time, before they became a patent attorney.
Example: a Pseudo-Inverse Algorithm
https://math.stackexchange.com/questions/75789/what-is-step-by-step-logic-of-pinv-pseudoinverse
"there is no direct formula (or algorithm) for the (left) psuedo-inverse of A, other than the "famous formula"
(A⊤A)−1A⊤ which is computationally expensive. I will describe here an algorithm that does indeed calculate it
efficiently."
Show what is computationally expensive: use of a lot of memory, many steps, etc.
And explain with that data why the invention is less computationally expensive.
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8. Golden Rule #5: Many CIIs are “Selection
Inventions”
for drafting and prosecuting your computer-implemented
invention, have a patent attorney on your team who is an expert
on so-called “selection inventions”. A metallurgist programmer
patent attorney can be very helpful, or a pharmaceuticals
programmer patent attorney.
A patent can only properly be granted for an invention that is
claimed as non-obvious if the invention actually has the alleged
effect.
Alleged advantages over the closest prior art, without offering
support from the specification, canNOT be taken into
consideration in determining the problem which is underlying the
invention and therefore in assessing inventive step/non-
obviousness.
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9. Golden Rule #6: Document How Your CII Patent
Application Has Been Drafted With The End in
Mind
for drafting and prosecuting your computer-implemented
invention, have a patent attorney on your team who has at
least three (3) successful patent litigations under his belt,
better more.
Rookie Mistakes:
- Claiming the system instead of its components
- Claiming a method that of which parts are performed at
different different places, at different times
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10. Golden Rule #7: There is no Artificial
Intelligence and There Never Will Be One
Don´t fall for buzzwords and for people who use them
without the proper attitude.
And if there is A.I., it will not be patentable because it cannot
be described in an enabling way in a patent application.
Although Patent Law could theoretically be extended in order
to allow machines to be named as inventors, that will only
happen after animals are allowed to be named as inventors.
Read more about this here bit.ly/golden-rule-7
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11. Contribution: drafting CII Patents cannot be cheap
• Drafting CII Patents is all about dealing with uncertainty
• Drafting CII Patents is all about experience
• Drafting CII Patents requires creativity: 10% inspiration and 90%
transpiration
• Drafting CII Patents requires sober minds
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