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Subject:Software: Is It Ready For Patenting? - APLF
Date:Fri, 19 Oct 2001 21:51:29 -0700 (PDT)

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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 =

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