"Protecting Ideas Coded as Software under the United States Code"
Dr. Suhrid Wadekar, Associate at Goodwin Procter, LLP
Abstract
Patents protect ideas. A newly developed device, system, or process, or improvements to existing devices, systems, and processes are patentable. A process can be a method of manufacturing or a method of use. The method of use can be implemented as software. Notwithstanding a common misbelief and unlike in some foreign countries, in the United States, software can be patentable. The Supreme Court has stated that only abstract ideas are not patentable; if software implements a concrete process of obtaining a certain result, such a process, i.e., the idea behind the software is patentable. The software code itself may also be protected by a copyright.
In this talk, a general framework of seeking patent protection for innovative ideas will be presented, focusing in particular, on obtaining software patents. Two important requirements of patentability - novelty and unobviousness - will be discussed using examples of software systems. Engineering research, including research in computer science can be incremental. In light of the background, the incremental step may appear to be an obvious, straightforward development, or worse, the very novel step may not be clearly claimed as an invention.
The talk will present strategies to avoid these pitfalls, which can lead to denial of the patent application. A patent can provide a competitive advantage to a business by placing a barrier to entry to other entities. Alternatively or in addition, a patent can generate a stream of revenue for the business that can support on-going research. As such, the talk will briefly introduce technology licensing as an avenue for beneficial use of a patent. Recent changes to the process of obtaining patents under the America Invents Act will also be discussed.
Bio
Dr. Wadekar is an Associate at Goodwin Procter, LLP. He earned his Ph.D. in electrical engineering - systems from the University of Southern California, Los Angeles, in 1998 and J.D., cum laude, from Boston University School of Law in 2009. Dr. Wadekar is registered to practice before the U.S. Patent and Trademark Office. Prior to pursuing a career in law, Dr. Wadekar was an Advisory Engineer/Scientist at IBM, where he worked on software tools and techniques for automatic synthesis of high-performance VLSI chips, and was the recipient of the IBM One Team Award.
At Goodwin Procter, Dr. Wadekar has advised clients on patent-prosecution matters in the fields of digital communication and signal processing including 4G LTE systems, algorithms for multi-processor, high-speed computations, software systems for performance and security enhancement, networking applications, content-distribution systems, MEMS-based systems, and robotic systems. He also provided litigation support in the areas of laser treatment of skin and manufacturing of LEDs, by drafting invalidity challenges to patents asserted against clients, and has participated in IP diligence involving issues related to use of open-source software, during mergers and acquisitions.
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