The Software Patent Podcast

Making Decisions Series: Marking and Maintenance

Mon, 10 Apr 2023 09:00:14 GMT

After a patent is granted, you still need to take a few steps to keep it alive and enforceable.

In this episode, Robert Plotkin, a software patent attorney and co-founder of the law firm Blueshift IP explains the proactive and ongoing steps needed to keep a patent enforceable. He also explains the challenge of patent marking software products.

Tune in to this seventh episode of the Software Patent Podcast to learn about keeping your patent alive and enforceable.

In This Episode, You Will Learn:

The importance of patent marking (01:12)
Risks related to patent marking (02:21)
Why it's difficult to patent-mark software products (03:39)
What the patent maintenance process entails (07:11)

Let’s Connect!

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Making Decisions Series: The Notice of Allowance

Mon, 27 Mar 2023 09:00:02 GMT

Expanding your patent protection scope gives you more options for monetizing your patent portfolio.

In this episode, Cynthia Gilbert, a software patent attorney and co-founder of the law firm Blueshift IP explains the options available to you after receiving a notice of allowance. She also discusses the benefits of filing a continuing patent application.

Tune in to this sixth episode of the Software Patent Podcast to learn how to expand your patent protection.

In This Episode, You Will Learn:

Options available after receiving a notice of allowance (00:33)
How to expand patent protection (01:21)
The importance of having at least one continuing patent application (04:33)

Let’s Connect!

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Making Decisions Series: Handling Rejections of Your Patent Applications

Mon, 13 Mar 2023 10:00:47 GMT

It is normal for your first patent application not to be granted. In most cases, this signals the start of the negotiation process with the patent office.

In this episode, Robert Plotkin, a software patent attorney and co-founder of the law firm Blueshift IP explains how to handle ungranted patent applications. He also covers why applications are rejected and why you need legal assistance when responding to rejection.

Tune in to this fifth episode of the Software Patent Podcast to learn about handling patent application rejection.

In This Episode, You Will Learn:

Why it's normal for patent applications to be rejected (02:47)
Why you shouldn’t take patent rejection personally (07:10)
Why you should discuss your office action with your attorney (09:00)
The different rejection terminologies (14:15)

Let’s Connect!

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Making Decisions Series: Accelerating Examination: How to Obtain Patents More Quickly

Mon, 27 Feb 2023 10:00:29 GMT

A common complaint among companies and people filing for patents is that the examination process takes too long.

In this episode, Cynthia Gilbert, a software patent attorney and co-founder of the law firm Blueshift IP explains how you can accelerate the patent examination process. She also discusses how you can slow down the process and circumstances where that is beneficial.

Tune in to this Fourth episode of the Software Patent Podcast to learn how to slow down or accelerate the patent examination process.

In This Episode, You Will Learn:

Ways of accelerating the patent examination process (00:48)
How the PPH helps in speeding up patent examination (04:14)
Reasons why someone might want to slow down the patent examination process (06:30)
How to slow down the patent examination process(08:19)

Let’s Connect!

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Making Decisions Series: Should I File in the US, Internationally (PCT), or Both?

Mon, 13 Feb 2023 10:00:30 GMT

An international patent makes it possible to protect your intellectual property in markets outside the US.

In this episode, Robert Plotkin, a software patent attorney and co-founder of the law firm Blueshift IP explains how to approach international patent applications. He also covers how to use a Patent Cooperation Treaty (PTC) and the benefits it provides.

Tune in to this Third episode of the Software Patent Podcast to learn about what’s involved in applying for an international patent.

In This Episode, You Will Learn:

The options available when filing for an international patent (01:25)
How to approach the decision on where to file a patent (03:10)
What a PCT patent application entails (05:21)

Let’s Connect!

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Making Decisions Series: Choosing the Right Type of Patent Application to File Based on Your Business Goals

Mon, 30 Jan 2023 10:00:27 GMT

A provisional patent application is a kind of scaled-down patent application that can be prepared more quickly and is less expensive than a full patent application.

In this episode, Cynthia Gilbert, a software patent attorney and co-founder of the law firm Blueshift IP explains the benefits and limitations of a provisional patent application. She also shares the most common mistakes made while filing for it.

Tune in to this Second episode of the Software Patent Podcast to learn what a provisional patent application can and can’t do.

In This Episode, You Will Learn:

The definition of a provisional patent application (01:39)
The benefits of a provisional patent application (03:00)
Common mistakes made when filing for a provisional patent application (06:10)

Resources:

Four Myths About Provisional Patent Applications

Let’s Connect!

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Making Decisions Series: Collaborating Efficiently and Effectively With Your Patent Lawyer

Mon, 16 Jan 2023 10:00:14 GMT

Welcome to this important conversation on patents.

Patents cover a company's most cutting-edge innovations, often months or years before those innovations go to market.

In this episode, Robert Plotkin and Cynthia Gilbert, software patent attorneys and co-founders of the law firm Blueshift IP, set the stage for exciting episodes aimed at demystifying patent decisions. You’ll also hear about our expertise and how we approach patenting when working with clients.

And now, let’s jump into the First episode of the Software Patent Podcast to hear more about collaboration with a patent lawyer.

In This Episode, You Will Learn:

How we approach the patenting process (01:23)
The key role played by patents (03:42)
Our goals with this podcast series (05:03)

Let’s Connect!

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Deep Dive AI - How To Avoid Inadvertently Giving Away Your Valuable AI-Generated Inventions

Mon, 31 Aug 2020 10:00:56 GMT

This four-part series is all about artificial intelligence and understanding the patentability of AI innovations. In the first three episodes, we looked at how artificial intelligence can create super inventors that solve more problems in less time, how AI is enabling them to make their wishes come true, and how sometimes, inventors can create AI-based innovations that they, themselves don’t entirely understand.

If you’ve missed those episodes, go back and take a listen.

Today, in the last part of the series, Robert Plotkin - a software patent attorney, computer scientist and one of the founding partners at Blueshift IP, a U.S. patent law firm specializing in software patents - focuses on how artificial intelligence is making it more critical than ever before for innovative companies to choose between patenting their inventions or keeping them as trade secrets.

Tune in to Episode 04 of The Software Patent Podcast – Deep Dive Series on Artificial Intelligence to find out why your inventions could be compared with The Goose that Laid the Golden Eggs – Aesop’s famous fable – and the aspects you should pay attention to when thinking to patent your AI invention.

In this episode, you will learn:

The story of The Goose that Laid the Golden Eggs. (01:38)
How the fable illustrates perfectly the tension faced by today’s companies that are developing AI. (03:45)
What happens with your AI invention after you file a patent. (05:27)
The alternatives to patenting your AI invention. (06:59)
How your AI technology is comparable with an employee that signs a non-disclosure agreement. (09:01)

Useful Resources:

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Deep Dive AI - AI Creates Inventions That Human Inventors Don't Understand

Mon, 24 Aug 2020 10:00:30 GMT

In the first two episodes of this series, we discussed how artificial intelligence can create super inventors that solve more problems in less time, and how AI is enabling them to make their wishes come true. Now it’s time to see what happens once the AI-generated inventions are built.

Today, Robert Plotkin - a software patent attorney, computer scientist and one of the founding partners at Blueshift IP, a U.S. patent law firm specializing in software patents, focuses on how artificial intelligence is enabling inventors to create inventions in ways that they, themselves, don’t understand – and the impact of that on patent law.

If you want to find out more about this topic, then tune in to Episode 03 of The Software Patent Podcast - Deep Dive Series on Artificial Intelligence!

In this episode, you will learn:

About Robert’s book, “The Genie in the Machine: How Computer Automated Inventing Is Revolutionizing Law and Business” (01:35)
The example Robert used in his book, to demonstrate that AI-generated inventions can be hard to understand, even by their creators. (01:58)
The implications that AI-generated inventions have on obtaining a patent. (03:14)

Useful Resources:

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Deep Dive AI - AI Lets Inventors Make Their Wishes Come True

Mon, 17 Aug 2020 10:00:09 GMT

In our first episode of this series on understanding the patentability of AI innovations, Cynthia Gilbert discussed how artificial intelligence can create super inventors that solve more problems in less time.

Today, in our second episode, Robert Plotkin - a software patent attorney, computer scientist and one of the founding partners at Blueshift IP, a U.S. patent law firm specializing in software patents, focuses on how artificial intelligence is enabling inventors to make their wishes come true – and the impact of that on patent law.

Tune in to Episode 02 of The Software Patent Podcast - Deep Dive Series on Artificial Intelligence to find out how exactly AI turns Edison’s famous phrase, “Genius is 1% inspiration and 99% perspiration”, on its head, thus allowing inventors to focus more on innovation and less on the work involved in the process.

In this episode, you will learn:

An inventor’s process before and after AI came into our lives. (01:23)
How Thomas Edison’s work could have been less laborious if he had AI to help him in the process of inventing the light bulb. (05:23)
How AI shifts the focus from physically building and testing prototypes to the skill of describing the requirements for a successful invention. (07:49)
One significant implication of AI for patent law and companies that want to innovate. (09:53)
The special expertise required for obtaining broad patent protection. (12:06)

Useful Resources:

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Deep Dive AI - How AI Is Creating Super Inventors

Mon, 10 Aug 2020 10:00:49 GMT

Although Artificial Intelligence can be largely used by inventors to boost their inventive skills, this point is often overlooked because people frequently think of AI as something that is replacing human inventors. There are countless examples of jobs actually being eliminated by technology, so this fear is understandable, to a point. But, AI can do so much in helping people solve the world’s most difficult problems, without actually replacing the human factor.

In this four-part series, we’ll look at AI and discuss the patentability in this area. Today, Cynthia Gilbert, a software patent attorney, computer scientist, and one of the founding partners at Blueshift IP – a U.S. patent law firm specializing in software patents – is focusing on how artificial intelligence is creating super inventors and the impact of that on patent law.

Listen to Episode 01 of The Software Patent Podcast - Deep Dive Series on Artificial Intelligence, to learn more about how AI is allowing inventors to be even more creative and solve more problems in less time than before.

In this episode, you will learn:

The popular debate whether AI helps versus replaces the human inventors and who’s right. (01:21)
How AI has helped astronomers to solve problems more easily and become better at their jobs. (02:18)
The advantages of using AI in a repetitive process of generating, testing, and evaluating prototypes. (02:47)
What the patent law requires of an inventor, and how AI influences the legislation changes. (04:23)

Useful Resources:

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Patent Strategy in the Wake of COVID-19

Wed, 06 May 2020 10:00:06 GMT

We are all dealing with unprecedented circumstances right now, and we know that some of your top priorities are keeping your business running, and keeping yourself and all around you safe.

In terms of keeping your business not only running but thriving, we, at Blueshift IP, want to partner with you and develop patent strategies tailored to the current economic environment that will work to maximize the benefits to you and your business.

In today’s episode of The Software Patent Podcast, Robert Plotkin - a software patent attorney, computer scientist, and one of the founding partners at Blueshift IP – focuses on patent strategies in the face of COVID-19 and stresses the importance of taking action before your competitors.

You’ll learn:

The reasons you should invest in patents, regardless of the current economic environment. (01:34)
The restrictions imposed on filing for patent if you have already made your technology available publicly. (03:21)
How we, at Blueshift IP, can help you make targeted and limited investments that will preserve your options in the future. (04:07)

Useful Resources:

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Beyond The Buzzwords Series: Episode 5 - Internet of Things

Wed, 22 Apr 2020 10:00:37 GMT

The Internet of Things – IoT – refers to connecting a wide range of objects and devices to the Internet, in order to make it possible to monitor information about those things and to control what they do.

Today, in the final episode of this series, Cynthia Gilbert, a software patent attorney, computer scientist and one of the founding partners at Blueshift IP – a U.S. patent law firm specializing in software patents – is focusing on an introduction to the Internet of Things and its patentable areas.

Listen to Episode 05 of The Software Patent Podcast – Beyond the Buzzwords series, to learn about the two types of innovators in the IoT space and the areas where there’s more opportunity to identify patentable subject matter.

In this episode, you will learn:

An example of a consumer-focused IoT patent. (01:29)
The opportunities for the innovators who are taking advantage of the benefits of implementing IoT as it was intended to be used. (01:42)
The opportunities for the innovators who are addressing the challenges of implementing IoT and the problems users face with existing IoT infrastructure. (02:30)

Useful Resources:

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Beyond The Buzzwords Series: Episode 4 - Quantum Computing 2

Wed, 15 Apr 2020 10:00:36 GMT

In a previous episode, we provided an introduction to quantum computing and talked a little bit about some of the challenges that quantum computing poses for the patent system, for companies that are inventing in the quantum computing industry, and for patent attorneys.

In today’s episode, Robert Plotkin - a software patent attorney, computer scientist and one of the founding partners at Blueshift IP – a U.S. patent law firm specializing in software patents – focuses on putting quantum computing patents in historical perspective.

Listen to Episode 04 of The Software Patent Podcast – Beyond the Buzzwords series, to find out how the next couple of years are a critical time in which groundbreaking innovators in quantum computing stand to obtain pioneer patents that could shape the industry for decades to come.

In this episode, you will learn:

What pioneer patents are. (02:10)
The meaning of “prior art search” and its importance for the person or company who is trying to obtain a patent. (02:45)
The reasons why now is the best time to file a patent application in the quantum computing field. (04:40)
The advantages a company has when obtaining a patent in quantum computing. (06:20)

Useful Resources:

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Beyond The Buzzwords Series: Episode 3 - Blockchain

Wed, 08 Apr 2020 10:00:48 GMT

Blockchains provide an immutable ledger of data without relying on oversight by a central authority. Its various applications are the center of attention for many innovators, and there are still a lot of challenges to be addressed in this field.

Today, Cynthia Gilbert, a software patent attorney, computer scientist and one of the founding partners at Blueshift IP – a U.S. patent law firm specializing in software patents – is focusing on introducing the blockchain technology and its patentable applications.

Listen to Episode 03 of The Software Patent Podcast – Beyond the Buzzwords series, to learn about the two types of innovators in this space, and the areas where there’s more opportunity to identify patentable subject matter.

Useful Resources:

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Beyond the Buzzwords Series: Episode 2 - Quantum Computing 1

Wed, 01 Apr 2020 10:00:24 GMT

Quantum computers have the potential to perform multiple computations simultaneously.

Right now, they are on the verge of becoming commercially viable products that could be used to tackle the most challenging problems in computing, so companies that massively invest in the field deal with the challenge of which patents to focus their attention and their resources on.

Today, Robert Plotkin, a software patent attorney, computer scientist and one of the founding partners at Blueshift IP – a U.S. patent law firm specializing in software patents – focuses on another buzzword that you’ve probably heard for the past year or so: quantum computing.

So, listen to Episode 02 of The Software Patent Podcast – Beyond the Buzzwords series, to understand the challenges and opportunities posed by this topic for patent law and strategy.

In this episode, you will learn:

The difference between a quantum computer and a classical one. (01:25)
What a qubit means and what is the practical importance of it. (02:15)
The advancements in the field so far. (03:31)
The opportunities and challenges of quantum computing, from a patent perspective. (04:15)

Useful Resources:

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Beyond the Buzzwords Series: Episode 1 - Intro and AI

Wed, 25 Mar 2020 10:00:48 GMT

AI has been applied to everything from natural language processing to computer vision to robotics to machine learning, and its reach and impact is growing every day. Obtaining patent protection for AI requires special expertise in both patent law and AI technology.

Robert Plotkin and Cynthia Gilbert, the founding partners at Blueshift IP – a U.S. patent law firm specializing in software patents – join you in a new series, where they discuss, in each episode, specific buzzwords that you’ve probably heard, and they help you understand the challenges and opportunities posed by that topic for patent law and strategy.

So, listen to Episode 01 of The Software Patent Podcast – Beyond the Buzzwords series, where they focus on an introduction to patents and artificial intelligence.

In this episode, you will learn:

What AI is and how has it evolved over the past five years. (00:55)
The two kinds of AI innovators – AI users and AI developers. (01:55)
The two key questions AI innovators should explore as they start evaluating their inventions for patentability. (04:35)

Useful Resources:

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Why Patents are Worthless Until They Become Invaluable

Mon, 14 Oct 2019 10:00:15 GMT

On today’s episode, I’m going to share with you a really common misconception about software patents that hurts a lot of companies, puts them at risk and causes them to lose out on a lot of profit.

I hear many high-tech entrepreneurs, business owners, managers and people in positions of power say:

"Patents are worthless. They stop competitors from copying you, but our competitors aren't copying us. Our main problem is developing and selling our products, not stopping copiers. What we need to succeed is first-mover advantage and a great marketing and sales operation, not expensive, worthless patents."

In this episode, you will learn about:

How to protect your commercial success and viability of innovation in the marketplace from competitors are likely to swoop in. (1:55)
How patent law works very differently than copyright and trademark law. (2:28)
When the timing of filing for a patent has different stipulations in the US and internationally. (3:38)
Patents are valuable for protection of your company’s success. (5:25)
Why we file patent applications for our clients a year or more before they launch their first corresponding product. (5:55)

If you were under the impression that patents aren't valuable, I hope that this brief explanation helped you to understand that although patents may appear to be worthless in the early stages of your product development, they become invaluable as soon as your product becomes commercially successful--which is precisely when you need a patent and when it would have been too late to seek patent protection if you had not already initiated the process.

At Blueshift IP, we obtain strong, broad, and defensible patents for our software clients everyday. Contact us now to find out how we can help you to obtain patents for your business.

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How to determine whether software is patentable - Part 6

Mon, 07 Oct 2019 10:00:59 GMT

After having such a positive response to our four part series on How to determine whether software is patentable, we’ve added two more bonus parts to this series that will cover another criterion that you can use to evaluable whether your software is likely to be patentable. This is the sixth and final part of the series.

If you’re an inventor, an executive at a high tech company or a patent lawyer outside the US, this instalment will at least help you to make a first pass determination of whether your software is worth considering for patent protection.

In this episode, we will focus on the criterion on whether your software requires or benefits from the use of multiple computers or devices to work. If your software does work better when it's distributed along multiple devices, that does place your software in a stronger position. This is only another criterion to take into account, but not necessarily required. We often obtain patents for software that runs on a single computer or device.

In this episode, you will learn:

If your software does benefit from executing across multiple devices, this can make it easier for you to obtain a patent on that software [2:08]
A common pitfall in patent applications for software that executes across multiple devices but just isn't valuable [3:35]
Why it's important to have a patent attorney fluent in software patent law to write this patent to make sure it's technically valid and legally broad enough [4:01]

I hope you have enjoyed and benefited from this series of podcasts on how to determine whether your software is patentable. Feel free to use this series of podcasts as a checklist when trying to determine whether to pursue patent protection for any new software. And reach out to us at Blueshift IP: Software Patent Experts, for guidance and help in obtaining software patents in the U.S.

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How to determine whether software is patentable - Part 5

Mon, 23 Sep 2019 10:00:05 GMT

If you’re an inventor, an executive at a high tech company or a patent lawyer outside the US, this installment will at least help you to make a first pass determination of whether your software is worth considering for patent protection.

In this episode, I will focus on whether your software brings about an improvement to computer technology. If your software does bring about an improvement, this will weigh in favor of your software being patentable in the US, although it isn’t a guarantee. If your software does not improve computer technology, it is a factor to take into account. At Blueshift IP, we’ve been able to get patents granted for our clients whose software doesn’t necessarily improve computer technology.

In this episode, you will learn:

What it means for software to improve computer technology [2:52]
An example for software to compute an improvement to technology [4:39]
What to do when you’re evaluating your own software [6:55]

This can be a tricky criterion to apply so it’s really important to retain competent patent counsel who is up to date on the latest nuances of this law.

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How to determine whether software is patentable - Part 4

Mon, 16 Sep 2019 10:00:02 GMT

This is the fourth and final part in a series of podcasts on how to determine whether your software is patentable. If you are an inventor, an executive at a tech company, or a patent lawyer outside the U.S., this will help you to at least make a first pass determination of whether your software is worth considering for patent protection. In each podcast in this series, we cover one criterion that you can use to evaluable whether your software is likely to be patentable.

During this episode, I will focus on whether your software controls something physical that is external to a computer. One reason that I waited until the final instalment in this series to cover this criterion is that I did not want to give the impression that your software needs to control something outside of the computer in order to be patentable. I find that many people falsely assume that external control is required for patentability, even though this is not true.

In this episode, you will learn:

If you attempt to patent software that controls something physical outside a computer, you will nearly always avoid receiving an “abstract idea” rejection, which will make the task of obtaining the patent much easier.
If you do happen to have software that controls something outside of the computer, then that weighs very strongly in your favor. It will make your life a lot easier in getting a patent granted on your software.
Why it’s really important for you to work with a patent attorney who specializes in software patents

I hope you have enjoyed and benefited from this series of podcasts on how to determine whether your software is patentable. Feel free to use this series of podcasts as a checklist when trying to determine whether to pursue patent protection for any new software. And feel free to reach out to us at Blueshift IP: Software Patent Experts, for guidance and help in obtaining software patents in the U.S.

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How to determine whether software is patentable - Part 3

Mon, 09 Sep 2019 10:00:07 GMT

This is part 3 in a series of articles on how to determine whether your software is patentable. If you are an inventor, an executive at a tech company, or a patent lawyer outside the U.S., this will help you to at least make a first pass determination of whether your software is worth considering for patent protection. In each podcast in this series, we cover one criterion in each episode that you can use to evaluate whether your software is likely to be patentable.

In the podcast episode, you will learn:

How to avoid the most common pitfalls when it comes to obtaining software patents
How to maximize the value of your software patent portfolios
Whether your software solves a problem that is necessarily rooted in computer technology or solves that problem using a solution that’s necessarily rooted in Computer Technology
DDR Holdings vs Hotels.com case in the Federal Circuit

One way to determine whether some new piece of software solves a problem that is necessarily rooted in computer technology is to determine whether it solves what we sometimes call a technical problem. An example of what would be considered a solution to a technical problem is software that solves the problem of how to transmit data over the internet using a particular networking protocol. That is a problem that is necessarily rooted in computer network technology even though the broader problem of transmitting messages is something that you could say is not necessarily rooted in computers because people send paper letters by postal mail. As you might guess from this, there is room for judgment and creativity in how you define the problem, and that is another reason that I strongly recommend that you work with a patent attorney who specializes in software patents when trying to evaluate these criteria. You might look at a piece of software that sends messages over a network and say that the problem is “how to send messages over a network more efficiently” and conclude that this problem is not necessarily rooted in computer technology. If, however, you define the problem more narrowly as the problem “how to send messages over the internet using networking protocol X,” then you might conclude that the same software is solving a problem that is necessarily rooted in computer and networking technology just by defining the problem differently.

One other way to demonstrate that your software is not an abstract idea, and therefore is eligible for patent protection, is to show that the way in which the software solves the problem is necessarily rooted in computer technology, even if the problem in general is not necessarily rooted in computer technology. Proving this requires both a solid technical understanding of the invention and a nuanced understanding of the law.

I hope you’ve found this criterion for determining whether your software is patentable to be useful. Join us next time for the fourth, and final, installment on how to determine whether your software is patentable.

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How to determine whether software is patentable - Part 2

Mon, 02 Sep 2019 10:00:45 GMT

This is part 2 in a series of articles on how to determine whether your software is patentable. If you are an inventor, an executive at a tech company, or a patent lawyer outside the U.S., this will help you to at least make a first pass determination of whether your software is worth considering for patent protection. In each podcast in this series, we cover one criterion that you can use to evaluable whether your software is likely to be patentable.

In the podcast episode, you will learn:

How the U.S. Patent Office is very strict about rejecting patent applications that could, even in theory, be performed by a human instead of a computer.
The kind of things you must describe about your software in the application to the Patent Office
The kinds of data to provide
Why it’s important to hire a patent attorney specialising in software patents

If you are a patent attorney outside the U.S. with a client who has developed new software, then this is a good time to consult with a U.S. patent attorney to further evaluate the software for patenting. If you find that your client's software doesn't satisfy any of the criteria on the checklist described in this series of articles, then it means that your software is probably not patentable in the U.S. There may, however, be features of the software that you have overlooked, in which case you may need to dig further or even further develop the software and then reevaluate it for patenting.

Stay tuned for our next article about how to determine whether software is patentable, in which we’ll describe another factor to consider when evaluating your software for patenting.

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How to Determine Whether Software is Patentable - Part 1

Mon, 26 Aug 2019 10:00:01 GMT

This is the first in a series of podcasts on how to determine whether your software is patentable. If you are an inventor, in management at a high tech company, or a patent lawyer outside the U.S. this will help you to at least make a first pass determination of whether your software or your client’s software is worth considering for patent protection. If you’re like most people, you will probably be surprised by much of what you read here because there are many common misconceptions about the patentability of software. In particular, I’ve found that many people underestimate how patentable their software is and, as a result, they overlook seeking patent protection that could be extremely valuable. I hope this series of podcasts helps you to avoid this and other pitfalls.

The criteria I'll give are just general guidelines. They are not hard and fast rules, but we have found these guidelines to be extremely helpful to us when evaluating our own clients’ software for patenting in the U.S. through our many years of experience specializing in U.S. software patents. Although these suggestions are based on U.S. patent law, you may find that they are also helpful to a certain extent in other countries.

In today's article, I'll focus on one factor that weighs in favor of patenting software. That is, if the software you or your client have developed includes any kind of new automated decision making, then that weighs in favor of the patentability of the software. What do I mean by automated decision making? I'm referring to even a single decision within the software that is performed automatically by the software. It could be as little as one instruction in the code. This does not necessarily have to be a complex or sophisticated kind of decision making. It just needs to be some decision made within the software that is automated, or, in other words, a decision made by the computer where it evaluates some data and then makes a decision. If when the data has one property, the computer does one thing; and when the data is another property, the computer does another thing, that is an automated decision. That's the basis of an “if-then” statement within software code.

One reason I point this out as a factor to consider when evaluating software for patenting is that many inventions and software comes across my desk from clients, potential clients, and foreign law firms where the description of the process performed by the software just includes a sequence of steps. Such as; Step A + Step B + Step C + Step D.

In that case, the process just performs the above sequence of steps. When you have a process like that, which always performs the same steps in the same order, it is less likely that you have an invention that is going to satisfy patent law’s non-obviousness requirement. The non-obviousness requirement requires there to be something unexpected about the invention and, in most cases, an invention will be more likely to be non-obvious when the invention carries out at least one automated decision.

Automated decision making within software also often helps to avoid or overcome what is referred to as an “abstract idea” rejection in the U.S., sometimes called a “Section 101 rejection,” a “patentable subject matter rejection,” or a “patent eligibility rejection.” Very often if the method that you are trying to patent just has a sequence of steps without any automated decision in it, the Patent Office will view that as a method that could (at least in theory) be performed by a human, or that is not inherently tied to a computer or another machine. Whereas if there is a step in the method that involves making a decision automatically by a computer and then having the computer automatically perform one of two different actions depending on the outcome of the decision, then it is more likely to be seen by the Patent Office as a method that is inherently tied to a computer and less likely to be capable of being performed manually. Again, this is not a guarantee, but it is one reason why having an automated decision making step is helpful.

If, in addition to having an automated decision making step, your software contains what is called a “loop” in computer science, your software will also be less likely to be rejected for being an abstract idea. This means that one or more steps in the method are performed repeatedly and automatically. A loop also helps to make the argument to the Patent Office that the method is inherently a computer implemented method and therefore is not an abstract idea and not the kind of process that could be performed manually by a human. It is these kinds of arguments that help us both to overcome or avoid abstract idea rejections and help to increase the likelihood that we can convince an examiner that the software is not obvious.

In summary, when evaluating whether some software that you or your client has developed might be patentable in the U.S, ask yourself whether that software includes at least one automated decision making step, such as an “if then” statement, which is sometimes called a branch or conditional statement in computer science. In the rest of the series, each article will point to an additional factor that weighs in favor of patentability. By the time you have read all of these podcasts you will have a solid checklist that you can use when evaluating your software or your client’s software.

To determine whether or not your software is patentable, it is best to leave the final decision to a registered patent attorney who has expertise in software patents. If you review the checklist provided in these podcasts and find that your software or your client's software satisfies one or more of the guidelines in the checklist, then it may be a good idea for you to go to a patent attorney and get further advice about whether to pursue patent protection.

You can visit our website at www.blueshiftip.com for more information.

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Four Myths About Provisional Patent Applications

Mon, 08 Jul 2019 10:00:58 GMT

You’ve likely heard about provisional patent applications… But do you really understand what a provisional patent application is and what protection it provides—and doesn’t provide—to your company? This is how many companies waste their money handling provisional patent applications the wrong way.

In the final episode of our series, we will uncover 4 myths underlying the common misuse of provisional patent applications:

All You Need is a “Quick and Dirty” Provisional Patent Application
You Can Apply for A “Provisional Patent”
Provisional Applications Cost Less than Nonprovisional Applications
Provisional Applications Must Be Filed First

If you have any questions about patent law or software patents or would like to connect with us, you can reach us at www.blueshiftip.com

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How To Comply with your Duty of Disclosure

Mon, 01 Jul 2019 10:00:36 GMT

Patent law has many traps for the unwary client because it is unique in many ways. We outlined some of these key pitfalls in a the last episode to educate and to further minimize the risks that could potentially arise. One of the most important things for you to know about as a patent owner is the "duty of disclosure"—your legal obligation to notify the US Patent and Trademark Office (USPTO) about "prior art." Failure to comply strictly with the duty of disclosure can cause your patents to be invalidated. I’ve put together a list of tasks client should do to comply with the duty of disclosure and how law firms should help you to comply with the duty of disclosure so that you don’t put your company’s patents in jeopardy.

When you submit a patent application, you—and your law firm—have a legal obligation to submit all relevant prior art that you and we know about to the USPTO. In this context, "prior art" is any information about an invention or similar inventions that existed at or before the time of filing a patent application for the invention, such as:

publications—such as patents and patent applications owned by you or your competitors, journal articles, and websites;
public uses of products (such as at trade shows), such as the product covered in the patent application, or similar products from you or competitors; and
sales and offers to sell the product covered in the patent application, or similar products from you or competitors.

We also discuss three things you need to do to comply with your Duty Of Disclosure:

A Strange and Strict Requirement
The Deadly Consequences of Failing to Comply with the Duty of Disclosure
How To Fulfill Your Obligations Under the Duty of Disclosure

There are so many ways a software patent can be valuable to you. For further information, you can connect with us via our website at www.blueshiftip.com

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How to Avoid Key Patent Pitfalls

Mon, 24 Jun 2019 10:00:00 GMT

Even sophisticated high-tech companies often get tripped up by common pitfalls in the patent process, and lose critical legal protection for their innovative technology as a result. The patent process is complex and frequently changes—especially in the world of software patents. In my own law firm, we often find ourselves navigating through a minefield of potential traps for our clients in order to maximize legal protection for them and to avoid forfeiting their rights.

In this episode, we discuss three of the most common mistakes that high-tech companies—and their law firms—make when seeking patent protection and how to avoid making them. These are:

Patents Are Not Copyrights or Trademarks
Overlooking International Protection
Misusing Provisional Patent Applications

It’s important for you to know about these pitfalls even if you’ve never applied for a patent because you could unintentionally forfeit your patent rights if you don’t take preventive measures in advance.

There are so many ways a software patent can be valuable to you. You can connect with us with any questions via www.blueshiftip.com

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One Huge Mistake That Could Invalidate Your Patent

Mon, 17 Jun 2019 10:00:40 GMT

After your company has made a significant investment of time and money in obtaining a patent, the last thing you want to happen is for your patent to be invalidated because of a mistake that could have been avoided. In this episode, we will describe the importance of listing the right people as inventors on every patent application in order to avoid this devastating consequence.

Unfortunately, in my experience in software patent law, I have found that all too often our clients tell me that their previous patent law firms did not educate them about how to pick the right people to be listed as inventors on their patent applications, or failed to tell them that listing the wrong inventors can kill their patents.

Furthermore, even in our law firm, we’ve found that many clients mistakenly assume that practices that are accepted in universities for listing authors on research papers or in corporations for listing people on conference presentations also apply to listing inventors on patents. Nothing could be further from the truth.

In this episode, we discuss:

The legal definition of an "inventor," on a patent
The consequences of failing to list the right inventors on your patent
How to avoid invalidating your patent

And yet all of these catastrophic results can be avoided with some careful planning. It’s the exact reason that I put out this free content with guidance on the patent process to ensure that the correct inventors are listed on every patent.

There are so many ways a software patent can be valuable to you. For any questions, you can reach out to us via our website at www.blueshiftip.com

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3 Reasons Why You Need Patent Protection

Mon, 10 Jun 2019 10:00:41 GMT

Do you assume that your business has enough intellectual property protection because you have copyrights, trademarks, and trade secrets? Did you know that by not obtaining patents you may be leaving a critical gap in your company’s intellectual property? Even with copyright, trademark, and trade secret protection, your company may still be vulnerable to lawsuits, to being copied by competitors, or worse, to being forced to stop using your own software because it has been patented by someone else.

Far too many business owners expose themselves to these risks because they think software can’t be patented – or simply because they misunderstand how critical software patents are. If you think copyright protection is all you need, you are likely to be sorely mistaken – and it could have serious consequences for your company.

Here's some topics that are discussed in this episode:

The two types of risk that you could potential face if you fail to successfully patent your inventions - specifically software.
3 Reasons why you need patents for your innovative software, even if you have copyright, trademarks or trade secrets.

Obtaining software patents requires special expertise in both patent law and computer technology. At Blueshift IP, our attorneys are recognized as software patent experts. Our founding partners, Robert Plotkin and Cynthia Gilbert, have computer science degrees and combined experience of over three decades specializing in software patents, all of which are necessary to create strong and defensible software patents.

You can visit our website at www.blueshiftip.com for more information.

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Letting Your Business Plan Drive Your Patent Strategy

Mon, 03 Jun 2019 10:00:23 GMT

Every day I work with clients to understand their business plan and then design and implement and execute a patent strategy that promotes their business goals. This is quite different from how lots of companies and patent law firms obtain patents, which involves using a cookie-cutter approach to apply for patents on every new technology that is developed. In contrast, the business-focused approach that we use to obtain patents for our clients results in producing patents that are much more valuable to the company because they are targeted specifically at promoting the company’s business goals from the beginning of the process, which results in a much greater ROI.

In this episode, we discuss:

How your business plan can drive your patent strategy
How Start Up companies can really benefit from patents when thinking about their exit strategy
How Patent applications and patents on your asset sheet will add significant value when going for a next round of investment

There are so many ways a software patent can be valuable to you. You can connect with us with any questions via www.blueshiftip.com

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The Myths About Software Patenting - Part 2

Mon, 27 May 2019 10:00:07 GMT

As Software Patenting can be quite complex and peculiar, there are a lot of misconceptions and myths held about it which deter Startup Founders and Corporations from filing for a software patent. In the last episode, Cynthia started to cover the most common and dangerous myths about software patenting.

In this episode, we will discuss the following myths:

It’s only important to obtain patents if you plan to sue competitors for infringement and litigation
Obtaining patents on software is somehow immoral and that it locks up innovation
Once you hire someone to work for you, your rights are protected simply because you’re paying them

It's important to discuss these myths as it could well be the belief that's stopping you from filing for a Software Patent and obtaining the protection you need for your invention.

You can find out more on our website at www.blueshiftip.com

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The Myths About Software Patenting - Part 1

Mon, 20 May 2019 10:00:16 GMT

As Software Patenting can be quite complex and peculiar, there are a lot of misconceptions and myths held about it which deter Startup Founders and Corporations from filing for a software patent.

This is why we are covering this over two parts.

In this episode, here are some of the myths that will be addressed:

You can only patent groundbreaking or breakthrough inventions
You can only patent an entire product
Software cannot be patented
Wait until your company is more mature to start obtaining patents

If you have any questions, you can connect with us via our website at www.blueshiftip.com

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How To Know When Patent Protection is Valuable For You

Mon, 13 May 2019 10:00:59 GMT

Patent protection can be extremely valuable in protecting against competitors but it’s not always appropriate. For companies who have developed inventions that were expensive, complicated, or somewhat tricky to develop, but at the same time, are easy for competitors to copy once they see those inventions - this is where a patent is extremely valuable.

If you’re developing technology that has a single defining feature, how easy would it be for a competitor of yours to copy and include that feature in their products without your permission and without having to pay you? If that scenario would be devastating to your company, than that feature is critically important to patent.

This is the kind of feature that is the “invisible gold,” that’s right under your nose. Like many other companies, you could be missing out on obtaining patents that your company could use to block your competition or to defend your company against costly and time-consuming patent infringement lawsuits from your competitors.

In this episode, we talk about:

If software patents can be so valuable to most businesses, then why do so many companies overlook the opportunity or have misconceptions that cause them not to even try to patent certain software?
Misinformation and lack of guidance and specialized expertise.
Some examples of advice we give to clients on how to maximize the protection they receive from their patent portfolio:

For more information, visit Blueshiftip.com

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The Software Patent Podcast

Sun, 05 May 2019 23:38:16 GMT

The Software Patent Podcast was created to educate innovators and business people about how they can maximize the legal protection they obtain for the software they develop using patents, and because we’ve found that many innovative companies fail to maximize the value of the patent protection they obtain as the result of misconceptions they hold about patents and by failing to take some simple steps to systematically protect their products and services. As a result, many companies leave protection on the table and expose themselves to the risk of infringing their competitors’ patents without having any patents in their own arsenal that they can use to protect themselves.

Patent protection for software can be extremely valuable in protecting your company against competitors, but you need to integrate your company’s patent strategy with your overall business strategy. We have also found in our experience that patent protection tends to be most valuable to protect a company’s core technologies and technologies that were expensive or complicated to develop but which are easy for your competitors to copy once they see those technologies in use.

Sources:

Webiste: www.blueshiftip.com

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