Thursday, October 1, 2009

Non-Patent Prior Art: Screen Shots of Software

I prosecute a lot of software patent applications, and it's not uncommon in my cases for Examiners to use a screen shot of software as prior art. A screen shot isn't a publication, but it is evidence of "known or used by others" under 102(a).

Software typically has a copyright notice with a date, so it's not surprising that an Examiner might rely on that copyright date as the date of public use. But a given version of software has a range of copyright dates. Which date(s) can the Examiner use?

The BPAI discussed this issue in Ex Parte Martinez. The application in that case had a filing date in 2001, and the Examiner presented screen shots of Microsoft Word 2000. One of these screen shots include a copyright message "© 1983-1999". The Board ruled that this copyright notice "provides prima facie evidence that the features of [Microsoft Word] were at least known in the United States in 1999." (Decision, p. 7.)

Note that the Board used the latest date in the copyright range, and not the earliest. Though the Board didn't make this point explicit, it's important. The earliest copyright date tells us nothing, since a copyright date range provides no information  about which particular features of the software were present in which version/at which date.

So if an Examiner uses a screen shot as a reference, the first thing to check is that he/she is relying on the latest date in the copyright range. But you may want to dig further, because sometimes software is released without updating the copyright date. For example, it's common for intermediate releases of software to be updated via a download, and that update doesn't necessarily include a revision of the copyright string. In that case, it's possible that the feature relied upon by the Examiner was added (via the update) after the latest copyright date.

If you have reason to believe that an update was applied after the latest copyright date, does the burden shift back to the Examiner to provide evidence that the feature was present before the update? Another BPAI decision, Ex parte Chen, appears to say Yes.

In Ex parte Chen, the software at issue was Microsoft Word, and instead of deciding on the merits the Board remanded the application to the Examiner to find corroborating evidence of the relevant date of the Word feature at issue. 

We note that the figure 1 includes both copyright information and an indication of what “Service Pack” was present on the computer at the time of the screen shots. While difficult to read it appears that SP-3 (Service Pack 3) was in use at the time of the recordation of the screen shot. From our brief Internet search, Service Pack 1a (SR1a) was available on or about May 12, 2000, Service Pack 2 (SP-2) was available on or about November 14, 2000, and Service Pack 3 (SP-3) was available on or about October 21, 2002. Therefore, if the functionality was not added by Service Pack 3, then the date of the reference should make Microsoft Word 2000 prior art, and if Service Pack 3 added the disputed functionality described/shown, then the date is after the critical date in the instant application and is not prior art.
(Decision, p. 1.)
The Board appeared to say that because the version information indicated that an update had occurred, the burden shifts back to the Examiner. This position is consistent with the idea that a copyright date is prima facie evidence.

What if the screen shot did not indicate that an update had been applied? Could the Applicant still shift the burden back to the Examiner by simply providing evidence that updates were available for that software?

This appears to be the Appellant's position in this case, since the Appellant never mentioned the presence of the Service Pack 3 string in the screen shot. Instead, the Appellant basically argued that online updates to software are common, that the Examiner had not "fully documented the history" of the software relied on, and that the the Examiner bore the burden of establishing that a reference is prior art. (Reply Brief, pp. 15-16.)

The Board didn't comment on the Appellant's arguments, so we don't know the minimum showing required to shift the burden back to the Examiner for better evidence of a "known or used" date. Therefore, it's probably best to do a little digging on your own and see if you can find evidence that an update was applied after the copyright date. For example, the About box in my Mozilla Firefox® browser includes a version number, and the Mozilla® website has a list of all versions and their release dates.


  1. In general I would first attempt to amend around the prior art software, or at least draft some additional claims that overcome the prior art.

    I would hate to receive an allowance based on the Examiner not showing that the feature was there as of the filing date, and then find out many years later that the feature really was there at the filing date. Easy invalidity decision for the jury.

  2. You make a good point.

    I know some practitioners who have a similar view on swearing behind. Namely, don't even think about it unless the art is really close, because if you swear behind then the 1.131 declaration will be under strong scrutiny in litigation. In particular, I'm not sure the diligence evidence in a typical declaration will really stand up to scrutiny.