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Date: Wed, 17 Oct 2001 17:26:59 -0700 (PDT)
From: info@aplf.org
To: michelle.cash@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 in the Robotic Vision case th=
at a software invention was ready  for patenting when one of the inventors =
verbally described the invention  to a co-worker in sufficient detail to al=
low him to practice it,  even though the actual software used to practice t=
he invention  did not exist before the on-sale bar date.    The Robotic Vis=
ion case helps illustrate the dynamic nature  of patent law used to protect=
 high-tech inventions. It also illustrates  the caution that must be exerci=
sed when attempting to protect  high-tech inventions including methods that=
 are implemented with  software. The conduct of inventors as well as market=
ing or sales  materials that could describe details of software inventions =
must  now receive more scrutiny to avoid inadvertent on-sale bars under  ?1=
02(b).    To discuss the topic above further, please contact the author  St=
ephen Lesavich, PhD of McDonnell Boehnen Hulbert & Berghoff  (Chicago) at L=
esavich@mbhb.com .  http://www.mbhb.com .    The information contained in t=
his e-mail is provided for  informational purposes only and does not repres=
ent legal advice.  Neither the APLF nor the author intends to create an att=
orney  client relationship by providing this information to you through  th=
is message.                       About Members Events News Contact Jobs   =
     =09

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