Claim 1 is directed to

A method for providing episodic media, the method comprising:

providing a user with access to a channel dedicated to episodic media, wherein the episodic media provided over the channel is pre-defined into one or more episodes by a remote publisher of the episodic media;

receiving a subscription request to the channel dedicated to the episodic media from the user;

automatically downloading updated episodic media associated with the channel dedicated to the episodic media to a computing device associated with the user in accordance with the subscription request upon availability of the updated episodic media, the automatic download occurring without further user interaction; and

providing the user with:

an indication of a maximum available channel depth,

the channel depth indicating a size of episodic media yet to be downloaded from the channel and size of episodic media already downloaded from the channel, the channel depth being specified in playtime or storage resources, and

the ability to modify the channel depth by deleting selected episodic media content, thereby overriding the previously configured channel depth.

The “podcasting patent” is a continuation of an application filed November 19, 2003. Applicants filed the continuation less than a year ago, in October 2008, and after one false start, successfully petitioned for accelerated examination.

One of the most striking things about the prosecution of this application is that it appears that Applicant did not submit (and the Examiner did not consider) a single piece of “non-patent literature.” In other words, when determining whether these claims were patentable, neither the Applicant, nor the USPTO appears to have considered any publications except patents and patent applications.

As a result, the Examiner never looked at any publications from Dave Winer, who was a major contributor to the development of RSS in the years prior to November 2003. For example, in October 2002 (more than a year before the podcasting patent’s earliest priority date), Dave wrote about “a new tool called RSS Explorer. …. It allows you to browse another Radio user’s subscriptions, and click checkboxes to subscribe.” And by at least mid-2003, the RSS 2.0 specification supported media “enclosures.” Indeed, the Radio Userland application, which shipped in January 2002, was “both a podcast distributor and a podcast client.”

Would an examiner have considered a big chunk of Claim 1 to be obvious considering a combination of these references? Maybe, maybe not. But it seems clear that a giant swath of relevant prior art was never considered during examination, and now that the patent has issued, it’ll cost someone a lot of money to undo that.

In this case, it looks like the applicants effectively used the pre-exam search and support documents to frame the examination around just a few patent applications that the applicants thought (correctly, as it turns out) they could distinguish. As a result, some random dudes you never heard of were granted a probably-undeserved monopoly over a big chunk of an incredibly common mode of media distribution.

Seems likely that the only people who are going to end up benefitting from this patent are the lawyers who will get paid to wrangle over it for the next few years.

If you recall, the Federal Circuit (a court that issues most key patent law rulings) released an important decision, In re Bilski, last October. Initially, many commentators erroneously opined that the decision invalidated software patents. It didn’t. While Bilski curtailed “pure” business method patents (e.g., a method for preparing a tax return), it had very little impact on the ability of an innovator to obtain a patent on software through a careful patent attorney. Indeed, I’ve even seen some office actions in which the examiner himself offered changes to claim language to make the software patent-oriented claim conform to Bilski.

Yesterday, the Supreme Court “granted cert.” This means the Supreme Court wants to review the decision, and it likely also means the Supreme Court was dissatisfied with Bilski.

Indeed, the Wall Street Journal Law Blog quoted Laurence Rogers, an E.E. patent lawyer at Ropes and Gray as saying, “The Supreme Court doesn’t get involved in patent cases unless it sees something it doesn’t like.”

In addition, Joe Mullin at The Prior Art quotes Mark Lemley—intellectual property law glitterati and Stanford law professor—as saying, “They either looked at the Bilski legal test and said it’s an unworkable test, or they looked at their own precedent and decided they didn’t like that.” Prof. Lemley goes on to say, “If you look at other Supreme Court patent cases in recent years, they show no compunction about overturning settled wisdom in the Federal Circuit and courts of appeals.”

Thus, I’m predicting that the Supreme’s Court’s willingness to hear Bilski may be just that—an indicator they’ll overturn it.

In Every Penny Counts, the district court uses Bilski as Judge Newman predicted in her Bilski dissent: “each trial court… will have a blank slate on which to uphold or invalidate claims based on whether there are sufficient ‘meaningful limits’” imposed on the claim by the use of a particular machine.

In Every Penny Counts, the district court analogizes the claimed system to that of Gottschalk v. Benson, 409 U.S. 63, 64-66 (1972), in which a method of programming a digital computer to convert signals from binary-coded decimal to pure binary form was found to be unpatentable. In Gottschalk, the Supreme Court reasoned that because converting binary-coded decimal to pure binary form had no use outside a computer, allowing the patent to stand would “wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.”

In Every Penny Counts, the district court quotes Gottschalk, stating, in a conclusory manner, that the system at issue “‘has no substantial practical application except in connection with’ computers, cash registers, and networks….”

However, this reasoning misses the mark because unlike Gottschalk’s binary conversion algorithm, many of the claimed elements could certainly have practical application outside a computer. For example, a computer is not practically required to “determin[e] an excess payment on the basis of the determinant established by the payor,” nor is a computer practically required to “apportion[] at least a part of the excess payment amount said accounts on the basis of the excess determined.”

On this point, at least, Gottschalk seems distinguishable. In Gottschalk, the Supreme Court implicitly recognized that entities other than digital computers by and large have little need to engage in a binary decimal conversion process. For example, few of us humans routinely deal with raw binary representations of numbers or other data. However, human beings do routinely perform such accounting tasks as those performed by the claimed computing means in Every Penny Counts. Thus, unlike the claims at issue in Gottschalk, the claims at issue here would arguably not be in practical effect a patent of the algorithm itself.

Admittedly, in a credit card system as large as Bank of America’s, it may not be cost-effective to have a human perform the claimed elements. Accordingly, the claims at issue may indeed cover most commercially feasible implementations of a process, but that still seems to be a far cry from Gottschalk, in which the claims would have completely preempted a mathematical formula.

In the end, maybe the district court reached the right outcome, and maybe it did not. However, the claims at issue seem distinguishable from those of Gottschalk, and if the district court had not employed this faulty analogy, it is not clear that it could have reached the same outcome.

To address these “abusive” practices, as of April 2010, the EPO will require that a divisional application be filed either:

• within two years of the first communication from the Examining Division regarding the earliest application in a family; or
• within two years of any objection from the Examining Division regarding a lack of unity of invention for any application within the family.

In Europe, a divisional application is the only allowed form of “continuing” application,  so the new rules will force patent applicants to identify discrete patentable inventions disclosed within their specification somewhat earlier than the current rules allow. The new rules may also make it difficult for patent applicants to spread out prosecution costs in Europe.

The issue here is essentially a semantic one because the legal definition of ‘idea’ might not jive with how some commonly view what an idea is. Since it’s possible to define ‘idea’ in various ways, let’s use some terms that are less ambiguous. So, as far as the law is concerned, it is NOT possible to patent a concept, but it is possible to patent an invention.

The difference is that an invention has been “reduced to practice” in one way or another, whereas a concept has not. In the legal sense, a concept is merely an envisioned problem solution. An invention, however, relates to an actual embodiment of a problem solution, which typically takes the form of a designed product or method.

For example, let’s assume that the light bulb has not been invented, and you come up with the idea of a glowing glass bulb to replace gas lights. Kudos to you, but your patent attorney is going to tell you that you don’t yet have an invention, and that you need to actually describe how this amazing new device might actually work.

At this point, you go back home and write up a description of how your bulb would be configured; you draw a picture of its design; or maybe you even build a prototype. Regardless of what you do, the concept must be “reduced to practice,” which means that you have a prototype built (actual reduction to practice) OR file a patent application describing it so that an average person in the field of endeavor could make and use your invention (constructive reduction to practice).

So, how developed should an invention be before it can be constructively reduced to practice? Naturally, how much you need to have your idea developed varies depending on the technology field, and your patent attorney can tell you if you are there yet. To give you some reference, I’ve drafted full patent applications based on a few sentences of disclosure, while others have required hundreds of pages and hours of discussion.

The take-away message here is that an “idea” must be developed from conception to the point of invention by “reduction to practice” if you want something that’s potentially patentable. Moreover, patents typically relate to an actual product or method, and the broad concept or idea of such a product is not what is patentable.

And for those of you who have some qualms about how the terms ‘concept,’ or ‘idea’ or ‘invention’ are defined by patent law, just focus instead on the characteristics that move something from the unpatentable to patentable column. In the end, regardless of whether you call it an idea, thought, inspiration, concept, or invention, you must reduce it to practice before it’s worthy of filing for a patent.

All Bilski does is change the requirements for obtaining business method and software patents. Unfortunately, these new requirements will make obtaining a business method patent, without some computing steps, quite difficult. However, while many people have suggested that the case will make it equally hard to obtain software patents, they’re wrong.

So, what’s the big change? The Court redefined and clarified requirements for what is and isn’t patentable. In the process, it said only methods applying to a particular machine or a transformation of physical objects are patentable. Lawyers call this the “machine or transformation” test. This new test is a little different, a little clearer, and a bit tougher than those older standards.

What didn’t change? The language used in the patent’s claims has always been the most important consideration, and the recent decision underscores this. Software patents are made up of claims. Claims define exactly what infringes the patent. It is the language of the claims that needs to pass the machine or transformation test just mentioned, not every part of the patent application.

Are business methods still patentable? It’s going to be hard. The Court said that only business method claims that apply to a particular machine or perform some transformation on physical objects will patentable. For a “pure” business method patent, this might be a tough test to pass.

Can I still get a software patent? Yes. As mentioned, the language employed in the claim of the application is critical, and those claims need to pass the machine or transformation test. So, as an alternative, consider writing the claims to include additional elements of the computer in order to pass the first alternative of that test. For example, you might want to include language such as “a processor A, a processor B, and a processor C.” Alternatively, your claims could involve a transformation of data that represents real life objects. In any event, Bilski changed the world of patents a bit, but it clearly did not eliminate software patents—as long as you are careful about how you write your claims.

The complete text of In re Bilski

The United States Patent and Trademark Office

When to file a provisional patent application

When time is short

Revealing your invention to the public may destroy some patent rights, making it essential to get a patent application filed before your invention is revealed.  For example, if after 1 year no patent has been filed, the public disclosure may prevent you from getting a patent in the U.S. Provisional patent applications do not always require all the information needed for a nonprovisional patent application, which may take months to complete.  Provisional patent applications can be completed in just weeks, and sometimes even days.

When money is short

If your budget is tight, a provisional patent application may be a better option as well. The cost for an attorney to prepare a provisional patent application is also significantly less (sometimes less than a third of that for a nonprovisional application).  Also, filing fees for provisional patent applications are less than a quarter of those for nonprovisional patent applications.

When a later patent expiration date is important

Even if you have the time and money to file a nonprovisional patent application, if you want your patent to expire at a later date, it still may be best to file a provisional patent application. The 1-year term of a provisional patent application does not count against the full 20-year term of a patent.

What you need in order to file for a provisional patent application

• Descriptive title of the invention
• Inventor(s) full name(s), residence information, and citizenship
• Date of conception (when the idea was conceived)
• First successful reduction to practice (when you first made a concrete example of the invention, if ever)
• First successful test (if tested)
• Oral and written descriptions of the invention
• Date of first sale or offer for sale
• Publications—such as journals, other printed publications, or Web sites (date and name of publication and/or nature of publication)
• If applicable, dates for any planned public disclosures of invention
• Technical description of the invention, including the following:Statement of problem solved by the invention; statement of previous attempts to solve the problem and why they failed; references to any known attempt(s), both published and unpublished, by others to solve the problem; and a written description of the invention, including drawings or sketches.

Preparing to file for a provisional patent application

1. Create a disclosure of some kind. This starts the application process. The disclosure can either be a document that describes the invention in detail, a meeting with a patent attorney, or some combination of the two.

2. Get or create a detailed description and drawing of the invention. The disclosure may be used as part of this process.

3. File the application with the United States Patent and Trademark Office. Most patent applications can be filed online; a confirmation of patent pending status and the application’s serial number are usually sent less than a minute after the application has been filed.

Once the application has been filed, the application process is complete. Provisional patent applications are filed and kept secret by the U.S. Patent and Trademark Office, but they are not reviewed.

What a provisional patent application may cost

Basic filing fees change on regular basis, so it’s best to check with the United States Patent and Trademark Office for an updated fee list. In general, though, you will be charged $110–$210.  Additional fees may be charged for longer provisional patent applications. You do not need to have a patent attorney in order to file the application; you can file it yourself. However, because incomplete or inadequate applications can be rejected by the United States Patent and Trademark Office, it can be helpful to hire a patent attorney, who is required to have a technical background. Attorneys’ fees depend on their experience and areas of expertise.

Additional resources:

United States Patent and Trademark Office

Provisional patent application

Despite the amount of artistic expression and innovative design involved, artists and industrial designers who produce stylized useful objects such as, furniture, containers, appliances, tools and clothing articles cannot protect their work through copyright registration. However, the products are protectable through the registration of a US design patent. A design patent protects the ornamental design of an article of manufacture that is new, original and non-obvious.

The design patent gives the owner the right to prevent others from making, using, or selling a product that so resembles the patented product that an “ordinary observer” might purchase the infringing article, thinking it was the patented product. The owner is given a monopoly on the design for a period of 14 years. In many cases, a design patent can also be protected as trade dress, extending the registrant’s monopoly on a design for all eternity.

The classic example is the design of the Coca Cola bottle, which was registered as a design patent in 1915. While the patent has long since expired, because Coca Cola was able to use it exclusively for several years, it was able to obtain a trademark registration for the shape of its bottle, foreclosing any competition in the soft drink industry with respect to that design.