Posts Tagged: "computer implemented methods"

Four years after the Alice decision, we seem to just now be detecting the full impact of the decision. The initial response by the USPTO resulted in an somewhat expected increase in the percentage of applications with eligibility rejections from business-method art units. Three years after Alice, eligibility rejections became much more common across the remaining computer-related technology centers (i.e. 2100, 2400, and 2600)… The sudden increase in eligibility rejections from other computer-related technology centers may have a number of causes. For example, case law from the Federal Circuit and the USTPO began to expanded the application of Alice to inventions that appear abstract despite not being directed to a traditional business-method concept… The increase in the percentage of office actions with eligibility rejections in TC 2100 was much higher than the increase in other computer related technology centers TC 2400 and TC 2600. Given that TC 2100 is a primarily software-focused technology center, this trend discrepancy suggests that post-Alice eligibility assessments performed by software examiners present increased challenges for patenting software based inventions.

If there was a theme that emerged in 2017 it is the necessity to have what is specifically innovative disclosed in the claims. While not a particularly new concept, there were cases in 2017 where the Federal Circuit acknowledged that a patent eligible innovation may well have been disclosed in the specification, but which was not found in the claims. With many legacy software patents the description of the technology (if one actually existed) was only in the specification while the claims were written to be quite broad. The Federal Circuit requires both a thick technical description of the innovation and why it is an improvement (see Enfish) and incorporation of what is innovative into the claims… What follows picks up where my 2016 article left off and provides summary and analysis of the notable software patent eligibility cases decided by the Federal Circuit in 2017.

One of the great aspects of the Unitary Patent is that it follows the normal EPO procedure up to grant. And indeed, the search and the examination processes will be precisely the same as those you’ve been used to with the current EP and PCT procedures, and will be performed by the same examiners. One of the strengths of the EPO is that we allocate examiners to applications according to their technical expertise, regardless of the filing route through which applications arrive. It will only be at the end of the procedure, when the application proceeds to grant, that applicants will have to indicate if they want to have a single Unitary Patent instead of a bundle of patents for individual member states, as is the case for the European patent. So it’s extremely straightforward, cost effective, and much simpler to administer post grant than the current European patent. My impression is that many U.S. applicants already understand the logic and advantages of this very well, sometimes even a little better than European applicants, as the geographical size and the GDP of the market covered by the Unitary Patent is very similar to that of the U.S. patent.

We try to be precise and stick to CII because “software” in itself is a term which lacks precision. It can refer to a high level program, a machine level program, or it can be an executable program. But if we speak about a computer-implemented invention the core of the discussion is rather on the technology. We have a general purpose computer and we program it, and when it runs it executes the instructions and performs certain functions. So the essence of our approach is to ask what the software does. Software of course can do a variety of things, many of which can be totally out of the patentable area if they’re purely abstract or purely business oriented. But when software solves a technical problem you are definitely in the area where a patent is possible. That is the core element of our approach.

The majority determined that the patent claims drawn to a computer memory system did not cover an abstract idea and, therefore, the second step of the Alice test was an unnecessary inquiry… “Our review of the ’740 patent claims demonstrates that they are directed to an improved computer memory system, not to the abstract idea of categorical data storage,” Judge Stoll wrote. “The specification explains that multiple benefits flow from the ’740 patent’s improved memory system.”

As you read about the truly mind-numbing stupidity coming from decision makers, whether it is MRI machines declared to be abstract ideas or diagnostics for various forms of cancer not being patent eligible, realize that the overwhelming bulk of this stupidity relates to inventions you cannot touch or operate in any real world sense. While America’s patent remains adrift, shift innovation into the real world if you are interested in a U.S. patent. Truly groundbreaking advances in computer technologies and in the life science sector should only be undertaken if you have a global patent strategy that does not require obtaining useful patent protection in the U.S.

it is absolutely critical that computer related inventions describe the technology to the greatest extent possible, focusing on as much that is tangible as possible.

In late October, China’s State Intellectual Property Office (SIPO) released a set of guidelines for Chinese patent examiners that revises the last guidelines put in place in 2010. Although SIPO has made the revised guidelines available online in the Chinese language only, analysis of those guidelines by the European Patent Office (EPO) and others indicates that, in some important ways, the new guidelines represent a veritable inverse of the current patent examination environment seen here in the United States… China is about to become friendlier to software patents in particular and patent owners more generally by reducing the complexity of prosecution procedures and making more information publicly available. Given the large number of patent applications being filed with China’s patent office, a high percentage of which are not filed with foreign offices as well, and the growing preference for China as a patent infringement litigation venue, it’s likely that these new guidelines are further proof of the growing divide of IP regimes in the United States and China which, if left unchecked, will probably be to the detriment of the U.S. and its economic prospects in future years.

Part of the problem with the debate over “software patents” has been the near complete failure to accurately describe what these patents protect. Opponents of software patents frequently describe these patents as protecting nothing more than “mathematics” or logic. This is plainly false. Software is a valuable, real-world, technological innovation that is used in everything from vacuums to cars to computers to phones.

The Alice/Mayo framework is the decisional approach adopted by the United States Supreme Court for determining whether a patent claim exhibits, such as software patent claims, embody patent eligible subject matter… Over the last six months the Federal Circuit has provided a great deal of clarity, with 9 judges (Judges Moore, Taranto, Hughes, Chen, Newman, O’Malley, Reyna, Stoll, and Plager) signing on to decisions that found software patent claims to be patent eligible. What follows is a a summary of the significant developments over the last six months.

Join us on Thursday, November 3, 2016 at 2pm ET for a discussion on drafting patent applications to overcome Alice, with JiNan Glasgow of Neopatents and Gene Quinn of IPWatchdog. In addition to taking as many of your questions as possible we will address the following: (1) Brief overview of Alice, Enfish, TLI Communications, BASCOM, McRo and FairWarning IP. (2) What these most recent Federal Circuit cases teach about drafting software patents. (3) How to cope with being unexpectedly assigned to an Art Unit.

This article reviews the 50 years of controversy on software patents. Because there continues to be a cloud over computer-implemented inventions, the article makes the argument, through indisputable facts, that computer-implemented inventions are no different from inventions that have been patented since the beginning of the Patent System in 1790. Finally, the article reviews three innovative patented computer-implemented inventions and explains why the phrase “software patent” is meaningless.

Simply stated, the industry and the public deserve better than Judge Mayer. His anti-patent views so cloud his judgment that he twists, exaggerates and misrepresents in order to attempt to impose his radical views into the law. There is no place for a judge like that. It is time for him to leave the Court. If he chooses not to do that it would seem appropriate for the Court to do what they would with an attorney who grossly exaggerates and mischaracterizes cases and rulings.

Unlike Judge Chen’s breadth-based approach, Judge Hughes appears to adopt the proposal of using the European technical effect ( or “technological arts”) analysis to determine whether a U.S. claim is patent-eligible… The CAFC decides that the above claim indeed is related to an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. This once again approaches the “technical problem” analysis of European law, which at least has the advantage of possessing something of a legal principle about it, as opposed to being a tautology.