Comments on Director’s Iancu’s Section 101 Guidance are due today and should be sent to firstname.lastname@example.org.
I hold nine U.S. computer security device recovery and communication patents relating to Findmyphone technology, which helps owners display return or recovery information before or with the lock screen to help get their smartphone, tablet, computer or laptop back. In February, I was notified that my latest U.S. application overcame a 35 USC 101 objection following an amendment that explicitly referenced Director Andrei Iancu’s Section 101 Guidance. My story should provide some hope that the guidance can provide a clearer path for inventors on how to adjust their claims to meet the USPTO’s new high standards to achieve success and satisfy the requirements that Iancu is looking for to ensure stronger U.S. software patents.
As we all know by now, Director Iancu issued new guidelines titled “2019 Revised Patent Subject Matter Eligibility Guidance” on January 7, 2019. The goal of the new guidelines was to help strengthen and make clearer the USPTO’s position on what is necessary in order to achieve a high quality, strong software patent that will avoid a 35 USC 101 rejection. The new guidelines provided instructions to patent examiners regarding how they should analyze patent eligibility questions.
After I had several similar patents granted regarding computer device recovery with no issues, my latest U.S. application 15/864,749 which was filed January 8, 2018, received a 101 rejection on October 2, 2018. On January 24, 2019, my patent attorney, Ansel Schwartz, filed amended claims and included remarks and arguments. On February 19, 2019, we received a Notice of Allowance for the application.
The amendment referenced the new guidelines, as well as the Berkheimer memorandum that was issued on April 19, 2018 by the Deputy Commissioner. Additional case law cited included Data Engine Tech v. Google No. 17-1135 and Finjan, Inc v. Blue Coat Systems, Inc. 879 F.3d 1299 (Fed Cir. 2018).
The Claims as Allowed
The now allowed 15/864,749 application includes method claims, apparatus claims, system claims and computer program claims.
Representative Claim 1 recites:
A method for displaying information to assist with returning a computer comprising the steps of:
activating a processor to display on a display screen on the computer which displays information concerning return information for returning the computer to an owner from data stored in a memory of the computer, the screen displaying return information before or with a lock screen, to facilitate return of the computer and which is maintained on or before or with the lock screen so the return information is visible to anyone viewing the display screen, the lock screen locks the displays screen and protects the computer;
initiating or changing return information which appears on the display through remote communication without assistance by a user with the computer, wherein the changing of the return information is done through an interactive program stored in the memory of the computer which is remotely accessed only by the owner of the computer or the party authorized by the owner to enable the initiating or changing of the display screen;
displaying the screen before or with a security prompt which prevents the user from accessing operatively the computer; and
activating the processor to allow a message to the user.
The arguments we provided to overcome the 101 rejection included:
- illustrating how the claims provided tangible structure to the device;
- background information regarding how this invention solved problems that existed with the device recovery products that were available at the time of the application;
- explanation as to why the invention was not merely an abstract idea but rather provided a real solution to a real-world problem in a novel and unique way.
I now have nine U.S. issued/allowed patents, a European patent granted in Germany, Italy, France, UK, Ireland, and Finland, and an additional European divisional patent application pending.
I feel these new patent eligibility guidelines are helpful in providing inventors with the information necessary to achieve a strong U.S. patent.
Director Iancu’s initiatives to make sure patents are high quality will make all U.S. software patents stronger and this country stronger. This makes so much more sense than cancelling patents through the Patent Trial and Appeal Board years later and after the fact. When the PTAB cancels U.S. patents, it allows foreign countries and foreign companies to copy U.S. inventors’ ideas. I am very grateful the new Director is focusing on making sure patents are high quality in the first place before they are awarded.
I hope all inventors support the Director’s initiatives to make the U.S. patent system stronger and provide comments to email@example.com, which are due today, March 8, 2019.