Michael J. Foycik Jr., Esq.

You may already know the patent hurdles facing inventions related to electonics.  Over the last few years, the federal appellate courts have sharply limited what is and is not a patentable electronic invention. 

At one major example, the case In re Bilski limited electronics and software claims to those that require hardware.  Here's a very short listing of objections that have recently been seen: mere data-gathering is not a sufficient role for the device; the device is not truly needed to execute the invention and merely carries out the steps; and the device employs transformative steps that require no particular machine.  Those are major hurdles to overcome.  Yet, there are more such hurdles.

But, that's actually very good news for inventors in electronics!   With fewer patents, it is easier for a new one to dominate a valuable technical area.  Or, if you have a late inventive entry into a field and worry that you may be too late, an absence of patents could allow you in.  And, of course, your invention may be the one to prevail, if your attorney knows what to do.  

Any why is any of the above good news?  Simple – most of the problems are in how the invention is being claimed, not in the invention itself.  Many times, the invention itself could well be patentable, if claimed correctly.  If your patent attorney knows the case law, you could do well!

Here's an example of what the knowledgeable patent attorney can put into a good claim.  For a method claim using a computer or electronic hardware, the claim should recite a step of providing the computer or electronic hardware.  But that's not usually enough: it also helps to add something worthwhile about the computer or electronic hardware into the preaamble of the claim.

By “worthwhile” in the above, I mean something related to what distinguishes the invention over the prior art.  It may also be useful or even necessary to also add a worthwhile “whereby” clause toward the end of the claim, mentioning the computer and the inventive distinction or result.  Finally, even these things may not be enough – sometimes the recitation of the computer or electronic hardware must be put into other locations, where other elements may be “adapted for” or “used with” the computer or electronics hardware. 

I believe this is good news for inventors who know what they're doing.  Take advantage if you can!