Would software written in a country without software patents constitute prior art in the USA?

Question

If I write an application here in Europe, where we don't have software patents, would an American company be able to apply for a US patent on a technique or algorithm used in the application? What evidence would be required to prove prior art in the event that this happened?

Answer 1

1. First, there are software patents in Europe. In fact with the new US cases on patentable subject matter issues, patent attorneys have told me that in many cases it is easier to get a software patent in Europe than in the US.
2. To answer your question - prior art can come from anywhere around the world and be used to invalidate a US patent or prevent issuance of a US patent application. We have a change in the law in the US to make non-US information easier to use to invalidate US patents. However, this change will only apply to patents and patent applications originally filed on or after March 16, 2013.
3. Under both the old and new law, if you write some software but then keep that software totally secret and hidden within your corporate (or home) walls then it will not count as prior art. This is because the usual touchstone for defining prior art is its public accessibility.

Current U.S. law codified in 35 U.S.C. 102 identifies the available foreign sources of prior art as items "patented or described in a printed publication in this or a foreign country." Under the new law being implemented in 2013, US patents will also be invalidated by prior foreign public uses, sales, and offers for sale.

So, lets say you have an unpatented computer algorithm developed in Germany and the question is whether that program can be used as prior art against a US patent. The answer is maybe, depending upon what has been done with the algorithm.

• Has the alogorithm (or a write-up of how it works) been published in some way? (internet counts, as does a video, as does a poster at an academic conference, ...)
• Has the alogorithm been sold or transferred to folks in the US or publicly used in the US?
• Did the US patentee get the idea from you?

If the answer to any of these questions is "yes" then the algorithm [or publication] can work as prior art against the US application. Otherwise, the answer is probably no. Under the new law, it might also count as prior art if publicly used or sold anywhere in the world.