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Posts Tagged ‘ patentable subject matter ’

Part 2: A Conversation with Chisum and Mueller

Posted: Friday, Jan 31, 2014 @ 9:45 am | Written by Gene Quinn | 2 comments
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Posted in: Gene Quinn, Interviews & Conversations, IP News, IPWatchdog.com Articles, Patents

Don Chisum

On January 6, 2014, I had an on the record conversation with Donald Chisum and Janice Mueller, both exceptional and well known patent scholars in their own right. Together Chisum and Mueller form the faculty of the Chisum Academy, which offers a three-day intense seminar that is limited to ten (10) participants.

In part 1 of the interview we discussed patent reform and started to discuss patent eligibility, particularly as it relates to software. We pick up the discussion there.

QUINN: In looking back, Justice Stevens’ decision in Bilski had pieces that would have made for a much easier régime to live under because he did say in one in particular area that the innovation in question in State Street was patentable because it was a device.  I’m optimistic that we’re going to get something good out of the Supreme Court in CLS Bank.  But having said that, I’m still worried, because it seems to me that they totally missed the boat in Mayo where they said we’re not going to follow the solicitor’s invitation to let sections 102, 103, or 112 invalidate that claim.  That wasn’t really an invitation, that’s what the statute mandates and up until then Mayo that was always what the Supreme Court had mandated.  So you just never know what you’re going to get from the Supreme Court, but I can’t imagine we’re going to get anything less intelligible than the Federal Circuit en banc decision in CLS Bank.  Now Janice, you have spent a lot of time teaching patent law to students.  How would you describe that decision to people who are new to this field?



A Conversation with Donald Chisum and Janice Mueller

Posted: Thursday, Jan 30, 2014 @ 11:06 am | Written by Gene Quinn | 3 comments
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Posted in: Gene Quinn, Interviews & Conversations, IP News, IPWatchdog.com Articles, Patent Reform, Patents

Don Chisum (left) and Janice Mueller (right) at the United States Patent and Trademark Office.

I’ve known Janice Mueller for a number of years dating back to when she was a full time Professor of Law. Mueller wrote, in my opinion, one of the best summaries of patent law and I recommended it to my patent law students, as well as new practitioners, inventors and entrepreneurs. She has now left full time teaching, but she has not left patent scholarship behind. She is now the author of a patent treatise and she co-teaches in the Chisum Academy with Donald Chisum, who everyone in the patent world knows from his definitive encyclopedia of patent law titled simple Chisum on Patents.

Recently Mueller wrote to me to let me know about the upcoming Advanced Patent Law Seminar that the Chisum Academy will host in Cincinnati from March 5, 2013 through March 7, 2013. I floated the idea of doing an on the record conversation with her and Don Chisum, which they both accepted.

In this two-part conversation we discuss everything patents, from patent reform legislation, to patent litigation abuse, to how the Supreme Court and Federal Circuit are handling patent matters and much more.

Without further ado, here is my conversation with these two preeminent patent scholars.



Patent Eligibility in Unsettled Times

Posted: Thursday, Nov 7, 2013 @ 7:45 am | Written by Gene Quinn | 17 comments
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Posted in: Biotechnology, Gene Quinn, IP News, IPWatchdog.com Articles, Patentability, Patents, Software

Ten years ago if you said that patent eligibility would become one of the most important, hotly debated issues in the patent field most in the industry probably would have thought you simply didn’t know what you were talking about. Five years ago some saw the issues percolating, but still many in the trenches with their day-to-day practice life would likely still have raise a cautious eyebrow and questioned why you thought even the Supreme Court might turn its back on a solid generation of well established patent law. The tone was perhaps cautious, but most couldn’t imagine that the Supreme Court and the Federal Circuit would cease their expansive view of patent eligibility.

Oh how times change!

Today, after several years of substantial turmoil, patent eligibility in a variety of economically significant technologies is extremely uncertain, including software, natural products, medical diagnostics and personalized medicine. It is with great irony that one of the few things we know with any degree of certainty is that business methods are patent eligible. We likewise know that at least some cDNA is patent eligible, except that man-made cDNA that happens to be identical to what occurs in nature. Of course, that raises more questions than it answers.



Divided CAFC Finds Computer System Claims Patent Ineligible

Posted: Friday, Sep 13, 2013 @ 1:23 pm | Written by Darrin Auito | 15 comments
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Posted in: Computers, Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patents, Software, Westerman Hattori Daniels & Adrian

Not surprisingly, the decision of the latest Federal Circuit case on software patent eligibility – Accenture Global Services, GMBH v. Guidewire Software, Inc. – could be predicted from the makeup of the CAFC panel.  Judge Lourie, joined by Judge Reyna, issued the majority opinion that the system claims were invalid.  The Court followed the analysis for determining patent eligibility from CLS Bank,717 F.3d 1269 (Fed. Cir. 2013) and affirmed the district court’s finding that the system claims of U.S. Patent No. 7,013,284 (“the ‘284 patent”) were ineligible.  Judge Rader dissented.

Accenture appealed the district court’s holding that system claims 1-7 and method claims 8-22 were invalid as not directed to patentable subject matter.   Interestingly, Accenture only appealed the ruling on the system claims, thus waiving its appeal on the method claims.



AIA Oddities: Tax Strategy Patents and Human Organisms

Posted: Thursday, Sep 12, 2013 @ 8:30 am | Written by Gene Quinn | 2 comments
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Posted in: America Invents Act, Gene Quinn, IP News, IPWatchdog.com Articles, Patents

 EDITOR’S NOTE: This article is Part 3 in the America Invents Act: Traps for the Unwary series. I will be speaking on this topic at the AIPLA annual meeting on October 24, 2013. CLICK HERE to register for the AIPLA annual meeting.

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Everyone in the industry knows that over the past several years there have been numerous patent eligible subject matter issues raised and decided (to some extent) in the United States Supreme Court, the Federal Circuit and in the Patent Trial and Appeals Board at the USPTO. None of these cases are what I am referring to here in this section. In perhaps lesser known fashion Congress made two significant, but limited, statutory changes to what is considered patent eligible subject matter.

1. Tax strategy patents

The first of two noteworthy changes relates to tax strategy patents, which became effective on September 16, 2011.

In a bizarre circumstance Congress chose not to render tax strategy patents patent ineligible under 35 U.S.C. 101. Rather they chose a far more convoluted route. Tax strategy patents are still patent eligible subject matter pursuant to Section 101, but for purposes of evaluating an invention under section 102 or 103 of title 35, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, is deemed insufficient to differentiate a claimed invention from the prior art.

The deeming of tax strategies, known or unknown, as being within the prior art does not does not apply to that part of an invention that (1) is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or (2) is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor. Thus, you can still patent technologies, including software related innovations, that relate to the preparation of tax filings and the like.



Software May be Patented in Asia, but the Details Remain Unclear

Posted: Wednesday, Jul 17, 2013 @ 10:00 am | Written by Chris Neumeyer | 2 comments
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Posted in: China, Chris Neumeyer, Federal Circuit, Guest Contributors, International, IP News, IPWatchdog.com Articles, Patents, Software, US Supreme Court

In the United States, attorneys, judges and others have struggled for decades to determine when, if ever, computer programs or software should be eligible for patent protection.  In the 1960’s the U.S. Patent Office declared that software could not be patented.  Since then, a series of court decisions have rejected that view and established that one may definitely patent software in the U.S., although the exact requirements remain unclear and critics increasingly demand that it should not be patentable.

As a starting point, 35 U.S.C. §101 provides that any new and useful process, machine, manufacture, or composition of matter, or new and useful improvement thereof, is eligible for patent protection, subject to other requirements of the Patent Act (that is, §101 is just the threshold test for patentability).  Congress has never stated any limitations to the patentable categories of §101 and case law has only recognized three categories of exceptions – subject matter that may not be patented: laws of nature, physical phenomena and abstract ideas.  Computer software is often found to be ineligible on the ground that it comprises abstract ideas, but courts have struggled to provide a precise formula or definition for abstract ideas.



Patent Turmoil: Navigating the Software Patent Quagmire

Posted: Monday, Jul 15, 2013 @ 8:00 am | Written by Gene Quinn | 39 comments
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Posted in: Bilski, Computers, Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Prosecution, Patent Trial and Appeal Board, Patents, Software, Software Patent Basics, US Supreme Court, USPTO

The law as it relates to software has been in flux over the last 10 years. Many older patent applications simply do not have enough detail to satisfy the current requirements to obtain a patent, although when drafted they would have been sufficient to satisfy the requirements then in place. Describing software as a pure method claim has not worked for a long time despite the fact that in reality software is really a method. Much more than a cursory description of software as a series of steps is required in order to have hope of obtaining patent protection for software.

Indeed, ever since the Federal Circuit en banc decision in Bilski, claims have been required to be tethered to tangible components, such as data storage devices, processors, databases, controllers, servers and the like. Unfortunately, however, the Patent Trial and Appeals Board at the United States Patent and Trademark Office now has taken the position that they will ignore the tangible components within a computer implemented method claim and then look to see what remains before determining whether the claim is patent eligible. See PTAB Kills Software.

Of course, after you remove or ignore the tangible components what remains is a naked process, which is patent ineligible. Thus, deciding to ignore tangible components leads to the inescapable conclusion that no software is patent eligible. Such disingenuous reasoning has the effect of punishing applicants for writing claims as the Patent Office has mandated ever since the machine-or-transformation test was first announced by the Federal Circuit in Bilski. The test announced in SAP/Versata, which was the first covered business method review decision announced by the PTAB, cannot be the correct test, and ultimately the decision (or at least the rationale) will be reversed. Any test that has the net effect of rendering all software patent ineligible, like the SAP/Versata test, is simply not correct as I will explain more clearly below.



AMP v. Myriad: Getting Beyond the Hype and Hyperbole*

Posted: Sunday, Jun 16, 2013 @ 9:35 am | Written by Eric Guttag | 11 comments
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Posted in: Eric Guttag, Gene Patents, Guest Contributors, IP News, IPWatchdog.com Articles, Patentability, Patents, USPTO

Justice Clarence Thomas delivered the opinion of the Court in Myriad.