USPTO Director discusses future of software patents, plans to step down

The week of Thanksgiving was an active one for USPTO Director David Kappos.  Just before the holiday, Kappos touted the value of software patents in a keynote address to the Center for American Progress.  Then, just as the workweek resumed, several sources reported that Kappos plans to end his tenure at the USPTO  in January 2013.

On the topic of software patents, in his November 20 address Kappos asserted that software should be no less patent-eligible than any other type of invention.

Using electronic devices such as smartphones and tablets as an example, Kappos explained that such devices can “have many patented components and features,” including hardware, software and designs.  Despite this, he noted that “software patents have tended to be the focus of controversy.”

To challenge this controversy, Kappos explained:

Let me be clear:  patents aren’t issued merely for lines of code.  Patents are issued for process and apparatus, which are determined to be novel and non-obvious.  Patents  . . .  are available to protect innovations, such as those enabling automated language translation, voice recognition, and video compression, all involving major technological advances, all of which can be implemented in software.

As another example, Kappos asked that if several patent applications were filed for a robotic surgical system:

Why would we tell the team working on a clamp that holds a scalpel their innovation is worthy of protection, but tell the programmers whose algorithm guides that clamp with unerring precision their innovation is not?

Kappos acknowledged that the USPTO has “struggled” with patentability determinations for software.  However, he noted that improvements are underway with the implementation of Section 101 guidelines for subject matter eligibility in 2010, Section 112 guidelines for review of claim clarity in 2011, workflow improvements that give the USPTO’s patent examiners more time to review patent applications, and over 17,000 hours of technical training to examiners in FY2012.

Kappos also noted that recent changes spurred by the America Invents Act provide additional ways to help ensure software patent quality.  These changes include rules that allow third parties to submit prior art against pending patent applications for USPTO consideration.

Less than a week after delivering the keynote address, several sources — including IP Watchdog, LegalTimes and Patently-O — reported that Kappos plans to leave the USPTO in January 2013.   A new director has not yet been named.  However, the new leadership — which will include Michelle Lee as director of the USPTO’s new Silicon Valley office — will likely to continue making software patents a focus of process improvement initiatives in the years to come.

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