Thursday, May 10, 2012

Computer Implemented Inventions - the Steampunk Test

Thursday, May 10, 2012
Computer implemented inventions are often the subject of increased scrutiny at the Patent Office. Debates about software patents and business method patents contribute to this state of affairs, as does the very fact that computers themselves are flexible data processing machinery. To wit, since computers can perform so many functions so easily, is it obvious to implement a particular one of these functions? 

An oft-cited guiding principle concerning computer implemented inventions comes from the 1981 case between Schlumberger Canada Ltd. and the Commissioner of Patents, and states that the presence of a computer cannot effect the "transforming into patentable subject-matter [of] what would, otherwise, be clearly not patentable.” However, and conversely, merely using a computer to implement an invention should not count against the merits of the invention. 

As some readers will know, Steampunk is a science fiction genre in which steam power, intricate systems of gears, sets of ornate control levers, dials and generally shiny brass gadgets are used in place of modern electronics, computers and other machines. This imaginative genre not only entertains and sparks the imagination, but also allows one to re-frame questions about patentable subject-matter, novelty and obviousness, which so concerns us when pursuing patent protection. 

Specifically, the next time you are considering the patentability of a computer-implemented invention or developing claims for one, try the following conceptual exercise. First, re-envision the invention in its “steampunk” form. Replace power supplies with a coal-powered steam engine, computer programs with intricate systems of mechanisms and gears, and user interfaces with knobs, dials and levers. Cut away all the mental and legal clutter that surrounds computer technology, peek inside the machine, and consider its overall function in a Sepia-toned world. Re-frame patentability questions. For example, you might ask “Are there any particular new and inventive functions provided in the internal workings (gears) of the steampunk version of the invention?” or “Assuming that all of its basic building blocks (e.g. steam engines, gear systems, etc.) were known, would the steampunk version of the invention be patentable as a new combination of known building blocks?” You might also want to try writing a patent claim that covers both the original and the steampunk version of the invention. 

Stepping back from an invention and revving up your imagination can be a great way to generate ideas, expand inventive concepts, and avoid some of the subject-matter pitfalls surrounding computer implemented inventions. Just don’t expect the Patent Office to grant you a patent for your steampunk version without a working model.