April 23, 2014

United States Patent and Trademark Office (USPTO) Software Patent Hearing in San Jose Shows Difference of Opinions

On Tuesday February 12th the USPTO  held a hearing on software patent quality at Stanford University in Palo Alto.  The hearing featured speakers presumably chosen to represent the various divergent views of software patents held by various industry participants and legal experts, including distinguished professors of law to small developers to tech giants.  The speakers included:

Mark A. Lemley, William H. Neukom Professor at Stanford Law School

Colleen V. Chien, Assistant Professor of Law at Santa Clara Law School

Horacio Gutierrez, Corporate Vice President and Deputy General Counsel for Microsoft Corp.

Peter Tennent, IP Counsel IBM

Edward Goodmann, Analyst, Hattery Labs

John Ellis, Independent Developer

Aaron Greenspan, Code X Fellow, Stanford Law School

Tim Molino, Director of Government Relations for the Business Software Alliance

Jeremy Russell, Programmer

Julie Samuels, Staff Attorney, Electronic Frontier Foundation

Jon Potter, President, Application Developers Alliance

Aseet Patel, Esq. Partner, Banner & Witcoff, Ltd.

In a nutshell, it seemed that the large industry incumbents (Microsoft, IBM, BSA) favored improving the existing system using existing legal constructs, as opposed to any sharp departure from well established principles of software patent claim treatment.  Those representing smaller developers/industry participants appeared to be seeking more dramatic reform, while at the same time more or less acknowledging that software patents are not going away.

Professor Lemley and Professor Chien explored the theme of a more aggressive use of the written description and enablement requirements of 35 USC to limit the breadth of software patent claims.

The USPTO is scheduled to hold another hearing on this topic in New York City on Wednesday, February 27th.

© 2014 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

About the Author


Steven Lundberg is a registered patent attorney and a founding partner of Schwegman, Lundberg & Woessner. His practice is focused on patent protection for software, medical and telecommunications technology, and related opinion and licensing matters. Steve received his B.S.E.E. in 1978 from the University of Minnesota, and his law degree from William Mitchell College of Law (J.D., 1982). He has published and spoken widely on software and electronic patent protection, is active in the Computer and Electronics Committee of the American Intellectual Property Law Association, and a co-...


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