This past week in Other Barks & Bites: the USPTO delays the effective date for mandating electronic trademark application submissions and issues a proposed rulemaking on Patent Term Adjustments in light of Supernus; UKIPO report shows that women inventors represent only 12.7 percent of inventors worldwide; trademark dispute leads street artist Banksy to open a retail store; the Federal Circuit upholds the invalidation of method of manufacture claims as being directed to a natural law over a dissent from Judge Moore; the screenwriter of The Terminator files a copyright termination notice; Tesla stock drops after missing analyst expectations on car sales; Seinfeld beats copyright case over Comedians in Cars Getting Coffee; and the Department of Justice tells the Supreme Court not to review Google’s appeal over the ability to copyright Java code.
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.