Posts Tagged: "patentability requirements"

Abstraction in the Commonplace: Alice v. CLS Bank and its Use of Ubiquity to Determine Patent Eligibility

A troubling aspect of the analysis in the Alice opinion is the suggestion that an invention, once patent eligible, can become patent ineligible simply based on the passage of time and public adoption. Dialogue in the oral argument as well as statements in the Court’s opinion suggest this line of reasoning, which arguably originated in Bilski, has become an accepted principal . . . An invention may initially be susceptible to patenting but may later become ineligible for patenting (as opposed to becoming unpatentable due to lack of novelty or obviousness) as it becomes more adopted, ubiquitous, successful or commonplace. Ubiquity, it would seem, is now the touchstone not only for patentability but for patent eligibility too.

Alice v. CLS Reality: PTO Pulling Back Notices of Allowance

Over the last several days I have heard of an alarming trend from the United States Patent and Trademark Office — Patent Examiners are canceling Notices of Allowance and yanking previously granted claims back into prosecution while citing the United States Supreme Court’s ruling in Alice v. CLS Bank. In some instances granted claims are being pulled back into prosecution only to be rejected as lacking patent eligible subject matter even after the issue fee has been paid. This is an alarming trend that seems to be building steam as virtually everyone who operates in this space is now seeing this happen and/or they are seeing supplemental office actions issued where the pending office action never rejected claims based on patent eligibility grounds.

Ignorance Is Not Bliss: Alice Corp. v. CLS Bank International*

With the Supreme Court’s most recent foray into the patent-eligibility world in Alice Corp. v. CLS Bank International, we now have a complete and utter disaster as to what data processing claims can (or more unfortunately cannot) survive scrutiny by Our Judicial Mount Olympus under 35 U.S.C. § 101. I once had respect for Justice Thomas’ view on patent law jurisprudence, having considered his substandard opinion in Myriad on the patent-eligibility of certain “isolated” DNA claims to be an “isolated” aberration. But having now read his mind-boggling Opinion for the Court in Alice Corp., I’ve now thrown my previously “cheery” view of Thomas’ understanding of patent law jurisprudence completely into the toilet. I have even less kind words to say about the three Justices that signed onto Justice Sotomayor’s disingenuous concurring opinion that accepts retired Justice Steven’s equally disingenuous suggestion in Bilski that 35 U.S.C. § 273 (in which Congress acknowledged implicitly, if not explicitly the patent-eligibility of “business methods” under 35 U.S.C. § 101) is a mere “red herring.” See Section 273 is NOT a Red Herring: Steven’s Disingenuous Concurrence in Bilski.

Ray Niro on Patent Trolls, Obama Administration and SCOTUS

Ray Niro: “The Administration has become a shill for Google — you even have a Google person running the Patent Office. So you have a situation where any number of patents, tens of thousands of patents, are going to be affected by Alice and also by the Limelight decision on split infringement.”

Examiners Begin Issuing Alice Rejections for Software

He says he has seen the below form paragraph twice within a week. Most alarming, in one case the form paragraph came in the form of a supplemental office action, but the original office action, which was outstanding, didn’t have any patent eligibility rejections under 35 U.S.C. 101… Clearly this form paragraph does not come from the initial guidance the USPTO sent to examiners. In that initial guidance Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, told patent examiners that “the basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” Therefore, USPTO told patent examiners that while the framework of the analysis had changed the substance of the analysis had not changed.

Supreme Court’s Latest Patent Case and Software Patentability

The Supreme Court’s Alice decision has again left the IP bar without a clear, repeatable test to determine when exactly a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none,” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). This is perhaps not surprising as Alice is a case more about so-called “business method” patents than software patents! (In fact, three justices in a succinct, 116-word concurring opinion indicated that they would impose a per se ban on patenting business methods!) With respect to software patents, however, we still find ourselves with a myriad of USPTO Section 101 guidelines, flowcharts and presentation slides – the latest of which is a March 4, 2014, 19-pager which may very well get fatter after Alice!

Alice on Software Patents: Preemption and Abstract Ideas

EDITORIAL NOTE: This article is a continuation of Alice, the Illusory Death of Software Patents. We can return to the beginning of the analysis and revisit preemption. As stated, the Court sees § 101 as protecting the big ideas that are fundamental to commerce, science, and technology, patents that would preempt and “block” innovation. The Court realizes that every patent…

Alice, the Illusory Death of Software Patents

With apologies to the great humorist, the report of the death of software patents is an exaggeration. The Court set forth a two-step test grounded in Bilski v. Kappos and Mayo v. Prometheus. While the Court may not have defined a clear boundary for so called “abstract ideas” specifically, it did squarely place this case within the “outer shell” of the law set forth in Bilski and Mayo. In doing so it articulated an approach that focuses not on finding the boundary line, but rather on the core properties of an ineligible patent claim.

USPTO Guidance on Alice v. CLS – Software Still Patentable

At least initially, the USPTO instructions to examiners seems extremely patentee friendly, which I must say comes as a surprise given the largely anti-patent rhetoric that has come from the White House over the last 16 months. Indeed, the USPTO has told examiners that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.” Hirshfeld also told examiners: “[T]he basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” Therefore, nothing has changed as far as the USPTO is concerned.

SCOTUS Rules Alice Software Claims Patent Ineligible

On Thursday, june 19, 2014, the United States Supreme Court issued its much anticipated decision in Alice v. CLS Bank. In a unanimous decision authored by Justice Thomas the Supreme Court Court held that because the claims are drawn to a patent-ineligible abstract idea, they are not eligible for a patent under Section 101. In what can only be described as an intellectually bankrupt opinion, the Supreme Court never once used the word “software” in its decision.

The Patentability of Software: Myths, Facts and a Proposed Test

There are those who argue against the patentability of software as a whole – never mind finding a test as to what software (or computer-implemented) claims should be patentable. We disagree. Why? Well, the notion that software should not be patentable necessarily indicates that the software industry itself is not capable of innovation worthy of patent protection! Yet, in a country where patent rights are guaranteed by the Constitution, should not all fields of innovation be treated equally under the law? Should we not avoid becoming a country where one field of endeavor (e.g., pharmaceuticals or electronics) is deemed more “patent worthy” than other fields (i.e., computer science and information technology)!? To answer these questions in the negative seems silly to us.

Dolly the Cloned Sheep Not Patentable in the U.S.

Earlier today the United States Court of Appeals for the Federal Circuit ruled that Dolly the cloned sheep, and any other genetic clones, are patent ineligible in the United States because the “claimed clones are exact genetic copies of patent ineligible subject matter.” — The holy grail of personalized medicine, at least with respect to organ transplantation, is to create an organ that is identical to what occurs in nature. Now we know that if that is accomplished the resulting organ will not be patentable. That being the case, why is anyone going to spend the billions, or possibly trillions, of dollars it will require to make this branch or personalized medicine a reality? Without possibility of exclusive rights research will dry up.

USPTO to Host Forum to Solicit Feedback on Guidance for Determining Subject Matter Eligibility of Claims Involving Laws of Nature, Natural Phenomena, and Natural Products

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will host a public forum on May 9, 2014 at the USPTO headquarters in Alexandria, Virginia, to solicit feedback from organizations and individuals on its recent guidance memorandum for determining subject matter eligibility of claims reciting or involving laws of nature, natural phenomena, and natural products (Laws of Nature/Natural Products Guidance). The Laws of Nature/Natural Products Guidance implemented a new procedure to address changes in the law relating to subject matter eligibility in view of recent Supreme Court precedent.

The “Useful Arts” in the Modern Era: For SCOTUS on CLS Bank

Many, many, many patents have issued to cover the physical elements and intuitive steps to make this familiar sequence possible and increasingly reliable and refined. Mechanical elements, i.e., rotating shafts with a gears on each end, have been replaced by a toothed wheel and magnetic sensor and a wire, but the information about where the engine is in its cycle of rotation is the same… To illustrate to the lay person that just because software is the ”tool” being used to “do” things, we are still ”doing” the same things in the same ways for the same reasons. To wit: That, in the modern era, the execution of the ”useful arts” is done using software does not change what is done or the fact that it is a ”useful art”; and, the patentability thereof should be unaffected simply because we ”do” it differently now as compared with how we ”did” it then.

Missed Opportunities for Alice, Software at the Supreme Court

It seems undeniable that Alice missed many opportunities to score easy points. Indirect arguments were made by Alice that didn’t seem very persuasive. Indeed, if one is to predict the outcome of the case based on oral arguments alone it did not go well for Alice today. Only three things give Alice supporters hope after this oral argument as far as I can tell. First, the government seems to be asking the Supreme Court to overrule precedent in Bilski that is not even four years old, which simply isn’t going to happen. Second, the egregious overreach and outright misleading nature of the CLS Bank argument should raise a legitimate question or two in the mind of the Justices. Third, the reality simply is that at least the systems claims recite numerous specific, tangible elements such that it should be impossible to in any intellectually honest way find those claims to cover an abstract idea.