1. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 1 2 nd Annual Information Technology Law Seminar Patenting Software and Business Methods By Roberta J. Morris Lecturer, Stanford Law School

2. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 2 Patenting Software and Business Methods Preliminary questions –Can you? –Should anyone be allowed to? But first: who are YOU? And second, what do you now about patents in general and the Bilski case in particular?

3. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 3 Are you: A.A lawyer who is registered to practice before the PTO B.A lawyer who is not registered to practice before the PTO C.A registered patent agent D.None of the above

4. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 4 Lawyers: Do you currently practice law full-time? 1.Yes 2.No

5. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 5 Everybody: Does your job involve patents? 1.Yes 2.No

6. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 6 Everybody: Have you ever written a patent application? 1.Yes 2.No

7. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 7 Are you an inventor on any patent applications or patents? 1.Yes 2.No

8. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 8 How many patents have you looked at (other than the one in my materials)? 1.Zero 2.A few (less than 10) 3.Some (less than 100) 4.Many

9. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 9 Timeliness October 30, 2008: The Federal Circuit decides In re Bilski, 545 F.3d 943 (en banc) Today is October 29, 2009. Tomorrow: Happy Birthday, In re Bilski. November 9, 2009: The Supreme Court hears oral argument in Bilski v. Kappos Page 6-2

10. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 10 Had you heard of the Bilski case before you signed up for this seminar? 1.Yes 2.No

11. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 11 Do you have an opinion on it? 1.Yes 2.No

12. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 12 If you have an opinion on Bilski, please first rate your knowledge of patent law. 1.Excellent 2.Moderate 3.Minimal

13. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 13 Patent Truths Truth 1. A patent is a right to exclude, not a right to do. Truth 2. Just because the Patent Office grants you a patent over your competitor's older patent does not mean you do not infringe. Truth 3. To decide if patent X is valid, look at patent X's claims. To decide if patent Y is infringed, look at patent Y's claims. Page 6-2

14. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 14 The '060 Patent Prior Art Page 6-2 to 6-3 and 6-17

15. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 15 FEEL FREE TO ASK ABOUT I use the Mona Lisa to indicate TERMS OF ART. Use such terms carefully. They don’t always mean what you think they mean. Anyone who DOES know what they mean may misunderstand you if you misuse them. TERMS OF ART

16. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 16 Are you comfortable with the term “PRIOR ART”? 1.Yes 2.No

17. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 17 Claim 1 of the '060 Patent Page 6-3 and 6-31 The application was filed in 1996. (See page 6-17, left column next to “(22)”.) That makes any art up to 1995 “prior.”

18. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 18 The snowflake indicates something that is true, more or less, could be VERY complicated if you went into it deeply, and might melt if you touch it. FEEL FREE TO ASK ABOUT SNOWFLAKES. OTHERWISE, JUST BELIEVE.

19. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 19 Claim 1 of the '060 Patent Page 6-4 and 6-31 1. An apparatus for predicting a sales probability for a sales account at a stage within a sales cycle, comprising: means for determining a current stage of the sales cycle for the sales account; means for calculating an account control level for the sales account; and means for correlating a sales probability based upon said current stage of the sales cycle and said calculated account control level. Claim elements using the words “means for” (aka “means plus function”) READ ON ARE LITERALLY INFRINGED BY ARE ANTICIPATED BY the structures described in the specification and their equivalents. 35 USC 112 p 6 Consider this claimed invention. What was unknown as of 1995?

20. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 20 The LAW Page 6-5 to 6-6 The Constitution: ARTICLE I. Section 8. The Congress shall have Power *** [clause 8] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings andDiscoveries. Patent Law Was this word INTENDED to exclude some INVENTIONS?

21. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 21 The LAW Page 6-6 35 USC 101. Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Were these words INTENDED to exclude some INVENTIONS? They have been around in patent statutes since ~1623.

22. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 22 Claim 1 of the Bilski Application Page 6-9 A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; (b) identifying market participants for said commodity having a counter-risk position to said consumers; and (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

23. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 23 Whose opinion in In re Bilski is closest to your own? 1.Majority (Michel) 2.Concurrence (DYK, joined by LINN) : "organizing human activity“ is unpatentable under 101 3.Dissent by Newman 4.Dissent by Mayer: overrule State Street and AT&T 5.Dissent by Rader 6.None 7.No opinion

24. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 24 Is there invalidating prior art to the Bilski claims? 1.Absolutely 2.Probably 3.Probably not 4.No 5.No opinion

25. Oct. 29, 2009Patenting Software and Business Methods - RJMorris 25 SHOULD this invention be patentable? Ignore the law as it is, and assume Bilski's claims are valid over the prior art and are fully enabled. 1.Yes 2.No 3.No opinion 4.I can’t answer because the assumptions are too unbelievable.