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Date: Tue, 16 Oct 2001 20:47:05 -0700 (PDT)
From: info@aplf.org
To: b..sanders@enron.com
Subject: Software: Is It Ready For Patenting? - APLF
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                                                    About Members Events Ne=
ws Contact Jobs                                                            =
Issue 3  | October 16, 2001                          APLF.org              =
                       Software: Is It Ready For Patenting?                =
                                   When Is A Software Invention Actually Re=
ady 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 Fede=
ral 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 Supr=
eme 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 that a software invention was=
 ready  for patenting when one of the inventors 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 t=
he on-sale bar date.    The Robotic Vision case helps illustrate the dynami=
c nature  of patent law used to protect high-tech inventions. It also illus=
trates  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 d=
escribe details of software inventions must  now receive more scrutiny to a=
void inadvertent on-sale bars under  ?102(b).    To discuss the topic above=
 further, please contact the author  Stephen Lesavich, PhD of McDonnell Boe=
hnen Hulbert & Berghoff  (Chicago) at Lesavich@mbhb.com .  http://www.mbhb.=
com .    The information contained in this e-mail is provided for  informat=
ional purposes only and does not represent legal advice.  Neither the APLF =
nor the author intends to create an attorney  client relationship by provid=
ing this information to you through  this message.                       Ab=
out Members Events News Contact Jobs        =09

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