Patrick Muffo Published in Intellectual Property Today
“The Unintended Effects of a Patent Office Memorandum – How the USPTO Is Facilitating a Loophole to Software Patent Infringement”

An article co-authored by Chicago Intellectual Property attorney Patrick Muffo was published in the September 2011 issue of Intellectual Property Today. The article discussed the implications of a memorandum interpreting In re Nuijten, in which the U.S. Court of Appeals for the Federal Circuit held that a signal per se is not patentable subject matter under 35 U.S.C. §101. Since the verdict, the U.S. Patent and Trademark Office (USPTO) has published several internal documents explaining how patent examiners should implement the Federal Circuit’s holding. Most recently, a memorandum instructs USPTO patent Examiners to insist that all “Beauregard claims,” or claims related to computer-readable media, be limited to “nontransitory” computer-readable media. The authors of the article worry that the memorandum may create opportunities for potential copyright infringers to avoid liability for violating patents.

“The recent USPTO memorandum has caused patent applicants to narrow Beauregard claims beyond their intended scope,” assert the authors. “Although seemingly innocuous, the requirement of narrower claims has potentially allowed would-be infringers to cleverly avoid infringement by temporarily embedding pirated software in a volatile memory and permanently storing the software outside the United States.”

To prevent such piracy, the authors advise,  “Practitioners should be careful to consider other possible options, such as specification amendments or explanatory remarks, before blindly adhering to a misleading USPTO memorandum.”