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Hastings Communications and Entertainment Law Journal

Abstract

Intellectual property protection is important to the United States' economic welfare, in particular to the computer industry. This Article briefly overviews the underlying purpose of the United States' patent laws and the confusion present in the law regarding patent protection for computer software and computer-related inventions. It begins its discussion of this confusion with a review of the history of patent protection for these inventions, characterizing the history as "marked by 'stops and starts.'" The initial "starts" are numerous cases from the Court of Customs and Patent Appeals reversing the Patent and Trademark Office's (PTO's) refusal to issue a patent on a programmed general purpose computer. These "starts" are interrupted by a trilogy of cases from the Supreme Courteach case suggesting to varying degrees a move away from protecting computer software inventions. The Article then credits two recent decisions by the Court of Appeals for the Federal Circuit as the "turning point" in patent protection for computer software inventions.

The Article then discusses in detail the PTO's Examination Guidelines for Computer-Related Inventions (Guidelines)-drafted in response to the Federal Circuit decisions. The discussion includes sample claims drawn to a "compression/encryption" example supported with a summary specification. The example is taken from PTO training materials created to train examiners in understanding the Guidelines. In conclusion, the Article addresses critics of patent protection for computer software inventions stating that patent protection offers the computer industry new research and development opportunities. The Guidelines are included as an appendix to the Article.

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