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Software & Information Technology

Harness Dickey has been involved with the full range of information technologies for decades. We know from first-hand domestic and international experience what it takes to protect the vital IT innovations that drive global commercial expansion. In addition, we are well-versed in the critical overlap between information technology and the services and manufacturing sectors.

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We don’t just dabble in computer and software patents. When we say we wrote the book on software patents, we’re referring to the actual book — Software Patents, now in its third edition. We follow and anticipate the seismic shifts in the law on statutory subject matter. With the recent Supreme Court decisions on patentable subject matter relying directly on precedent from the eighties, our history and depth are important to understanding the current law and charting how it may move forward. The district courts, the Federal Circuit and the U.S. Patent and Trademark Office are all struggling to determine the limits on statutory subject matter, so our forward-thinking approach has proven invaluable.

Strong patents demand both technical and legal expertise. Software and mixed hardware/software inventions are by definition functional at some level. Claiming these inventions requires fully-developed specifications both for statutory subject matter purposes, as well as for potential interpretation under functional claiming rules. As recent Federal Circuit case law demonstrates, it is not enough for a patent attorney to hope that the knowledge of a skilled person in the art will fill in the gaps left in a patent. High-level ideas, described without an understanding of the implementing technology, are unlikely to result in patentable inventions or valid patents. Implementation details need to be drawn out of the inventors and developed into a clearly technical description by skilled attorneys.

Technical writing is not enough. The variety of technical backgrounds of Harness Dickey attorneys are supplemented by continuous review of best practices in legal and formal requirements. By keeping abreast of changes in the law of divided infringement, we can draft claims that are directed to a single infringing entity, and not to multiple independent entities, which can create substantial problems when attempting to enforce a patent. We understand the difference in the extraterritorial application of method claims versus apparatus claims so that an infringer can’t avoid your patent protection simply by moving a server out of the country. The Supreme Court has warned against letting the validity or infringement of patent claims turn on the “draftsman’s art.”  Nevertheless, we see claims invalidated on a regular basis based on the drafter’s lack of clear understanding of the four classes of statutory subject matter and the nuances of each of those classes (such as the law developed for computer-readable media, a subset of one of the classes). We draft claims that provide more than illusory protection — they stand up in court.

We have been involved in nearly every area of information technology. Our lawyers and staff have helped to protect intellectual property in areas such as systems architecture, database design and storage, networking, application development, web services, social networking, security, cryptography, mobile payment systems and cloud computing.

Our clients include domestic and international software, hardware and IT ventures of all sizes, with the common goal of leveraging and safeguarding their innovations. We advise on domestic and international patent prosecution, strategic development and licensing, as well as provide highly effective enforcement and litigation counsel. We prosecute and litigate complex IP matters, assisting our clients in protecting their IP rights from infringement and misappropriation.