Corporate Counsel's Guide to

Software Patents

Developing strategy, drafting & prosecuting applications, and safeguarding your property

Wednesday, May 24, 2006

About

Gather the tools to construct a more efficient and effective patent, and achieve maximum profitability

When it comes to software patenting, it's an uphill battle for any IP counsel. The patent process is long and the patent generally doesn't outlast the short lifespan of the software, bringing into question a patent's whole economic worth. Deciphering which legal issues apply to software is a question that has not yet been sorted through, and no court has ever decisively held what constitutes a patentable software invention. And drafting the patent application and pushing it through the archaic channels of the PTO process can prove to be laborious and frustrating.

That's just the beginning. There are the ever-present issues with "patent trolls," problems with the hesitation internationally to offer patent protection for software, the expanding field of players when it comes to patent strategy, a question as to what constitutes lack of enablement, determining what is prior invention and what is new, and the ability to understand effectively the scope of IT claims.

With the software patent industry seemingly in chaos and virtually no one stepping to the forefront for guidance, American Conference Institute has assembled a publication from the Corporate Counsel's Guide to Software Patents forum, offering a unifying strategy to clarify the patent process and show how all these apparently distinct issues are connected. This ACI publication is a selection of presentations from experts in the field on how to:
  • Neutralize patent trolls' methods, motivations, and reasons for being
  • Avoid unnecessary and expensive lawsuits
  • Identify the most useful protection and licensing base
  • Educate clients on foreign legal issues and enforcement environments
  • Devise a patent strategy that fits future case law
  • Recognize ambiguous or poorly drafted patents
  • Protect patents in a climate where the preference is to not have them
  • Gauge the needs of the technology and other industries
  • Clarify the boundaries of Open Source practice
  • Recognize what is significant Open Source patent politics
  • Categorize and organize prior art for effective examination
  • Determine when software art is "being used in practice"

Contents & Contributors

About

Gather the tools to construct a more efficient and effective patent, and achieve maximum profitability

When it comes to software patenting, it's an uphill battle for any IP counsel. The patent process is long and the patent generally doesn't outlast the short lifespan of the software, bringing into question a patent's whole economic worth. Deciphering which legal issues apply to software is a question that has not yet been sorted through, and no court has ever decisively held what constitutes a patentable software invention. And drafting the patent application and pushing it through the archaic channels of the PTO process can prove to be laborious and frustrating.

That's just the beginning. There are the ever-present issues with "patent trolls," problems with the hesitation internationally to offer patent protection for software, the expanding field of players when it comes to patent strategy, a question as to what constitutes lack of enablement, determining what is prior invention and what is new, and the ability to understand effectively the scope of IT claims.

With the software patent industry seemingly in chaos and virtually no one stepping to the forefront for guidance, American Conference Institute has assembled a publication from the Corporate Counsel's Guide to Software Patents forum, offering a unifying strategy to clarify the patent process and show how all these apparently distinct issues are connected. This ACI publication is a selection of presentations from experts in the field on how to:
  • Neutralize patent trolls' methods, motivations, and reasons for being
  • Avoid unnecessary and expensive lawsuits
  • Identify the most useful protection and licensing base
  • Educate clients on foreign legal issues and enforcement environments
  • Devise a patent strategy that fits future case law
  • Recognize ambiguous or poorly drafted patents
  • Protect patents in a climate where the preference is to not have them
  • Gauge the needs of the technology and other industries
  • Clarify the boundaries of Open Source practice
  • Recognize what is significant Open Source patent politics
  • Categorize and organize prior art for effective examination
  • Determine when software art is "being used in practice"

Contents & Contributors


PATENT TROLLS: ARE YOU ABOUT TO CROSS THE BRIDGE?
Joseph Bach, Sughrue Mion PLLC
PATENT TROLLS
Mark Holmes, PatentBridge LLC

PATENT AND COPYRIGHT STRATEGIES FOR PROTECTING SOFTWARE
Rich Kim, Morrison & Foerster

COPING WITH THE DIFFICULTIES IN PATENTING SOFTWARE
Michael P. Dunnam, Woodcock Washburn LLP

DEVELOPING A SOFTWARE PATENT CLAIMING STRATEGY
Stuart Hemphill, Dorsey & Whitney LLP

CHALLENGING LIMITS AND PROBLEMS WITH INTERNATIONAL PATENT LAWS
Lothar Determann, Baker & McKenzie
Arien Ferrell, Intuit Inc.

CLARIFYING SOFTWARE PATENT LITIGATION PROBLEMS
Richard H. Doss, Quinn Emanuel Urquhart Oliver & Hedges LLP
Michael T. Zeller, Quinn Emanuel Urquhart Oliver & Hedges LLP

MAKING THE CASE FOR SOFTWARE PATENTS
Wilburn Chesser, Arent Fox PLLC
Nicholas Godici, Birch, Stewart, Kolasch & Birch (Former Commissioner for Patents USPTO)

EXPLOITING YOUR PATENT PORTFOLIO THROUGH PATENT LICENSING (OR SALE)
Joseph Yang, Cryptography Research, Inc.
Roxana H. Yang, PatentEsque Law Group LLP

HOT TOPICS IN PATENT LITIGATION
Richard S. Meyer, McGuireWoods LLP
Lynn E. Eccleston, McGuireWoods LLP
Jonathan E. Thomas, McGuireWoods LLP

ENABLEMENT AND WRITTEN DESCRIPTION FOR SOFTWARE
Esther Kepplinger, Wilson Sonsini Goodrich & Rosati

DISTINGUISHING WHAT IS NEW FROM A "PRIOR INVENTION"
Roger Kennedy, Oracle
Behrooz Shariati, Jones Day



DOCUMENT TYPES: PRESENTATIONS AVAILABLE: 0