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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 To Unsubscribe from this newsletter, please reply to this email with UNSUBSCRIBE in the subject line.
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