Posts Tagged: "patentability requirements"

If U.S. patent eligibility rules were more clear and predictable, the useful art of software development would be more prevalent. The “notorious computer” of the European Patent Office offers a viable option for reaching this objective. This approach would make business less uncertain as to whether not their proposed investments in software could receive patent protection. And reducing this risk would promote the future useful art of software development.

Changing the rules of the game is fundamentally unfair, which would be obvious to everyone if we were talking about football, soccer or playing a board game. Somehow common sense is abandoned when dealing with patents. Changing patent laws in midstream seems particularly un-American, both because it disturbs vested property rights and because it is quintessentially anti-inventor. If we want to maximize a property rights regime it must be certain, stable and predictable. Patents are no exception.

The fact is, patent examiners are struggling with the application of 35 USC 101 in light of the Alice decision just as much as everyone else. Greater uncertainty among both patent applicants and patent examiners surely increases the likelihood of disagreement between them. Thus, the Alice decision will not just increase the number of rejections under 35 USC 101, but is also likely to result in more rebuttals by applicants and more appeals of examiner decisions. A loss in patent examination efficiency, even if small, will act as a headwind against further reductions in patent pendency.

”Whether in a software product or to embody the invention in a hardware product, is often nothing more than a design choice. Whether an innovation is embodied in software or hardware feels like it should be irrelevant to whether or not it’s patentable. The law should be agnostic as to whether it’s embodied in software or hardware. We should let the debate be whether or not this invented concept is worthy of patent protection, whether it be on subject matter grounds or whether it be on 102 or 103 grounds. I don’t see that being discussed very often, but I think it should.”

”A few years ago we ramped up our foreign filings and recognized that we’re writing this one document, this one patent application for so many different audiences. We started settling in on the European technical standard as a guide for how to draft, how to cover the innovation from that vantage point, in order to try to write this document that would satisfy the USPTO as well as the EPO, Chinese Patent Office, the Japanese Patent Office, and so on. So for me, what this environment means as a practitioner has more to do with how the patent is drafted and how we capture the innovation, and not really a huge difference about what the underlying innovation is or how it’s implemented.”

Sadly, this is not an isolated case. I’ve seen similar rejections in a diverse (and utterly random) number of art areas and technologies ranging from predictive computer algorithms, to voice recognition technology, to methods for user-customization of advertising received on a device. While some of the rejected claims were arguably directed to an abstract idea, only a small minority had any apparent connection to “organizing human activity” as that phrase has been used in the case law.

A claim drafted too broadly may not be enabled and hence be invalid. Yet, the temptation to claim broadly often leads the patentee to ignore this risk.

I will be criss-crossing the country again in March 2015, with stops in Washington, DC, Chicago, Michigan, and San Fransisco. What follows is my schedule for the month. If you are in the area come out to say hello.

I do feel that the whole notion of trying to find an “inventive concept” is really challenged. While the Supreme Court went out of its way to say we are really not putting Sections 102 or 103 in here, I think what’s happening is the Courts are basically trying to do that. And they’re looking deeply into prior art in some cases to knock out patents under Section 101 and whittle away the invention, and trying to find the abstract idea by doing a prior art analysis, and I think that’s troubling.

It would be extremely unsettling if the Supreme Court has weakened Judge Lourie’s resolve to independently and properly interpret the Patent Act. If there is another explanation for his flip-flop on matters of patent eligibility I would love to hear it, but so far an explanation for diametrically different opinions has not been forthcoming. I don’t expect Judge Lourie to make a speech or hold a press conference like a politician, but if he is going to make diametrically opposite decisions in the same case, on the same facts, relating to the same claims, he owes litigants and the industry an explanation. Without an explanation it makes the entire process seem nothing more than arbitrary and capricious.

Based on the Supreme Court decision and the Patent Office guidelines it is clear to me that the Alice Supreme Court decision is a major victory for patenting computer-implemented (software) inventions. When the Supreme Court unanimously agreed that the critical issue is whether there is an inventive concept (and not on how an invention is implemented) the Supreme Court finally ended the debate on whether computer-implemented inventions are patentable.

Earlier today the United States Patent and Trademark Office released the promised patent eligible subject matter examples, which together with the recently released guidance will give applicants, patent prosecutors and patent examiners more information about how the USPTO interprets the state of the law in this all important area. The USPTO guidance with respect to biotechnology has been much further…

Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy, went over the highlights of the USPTO interim guidance, explaining “first, we were able to narrow the funnel that we use to determine which claims should be analyzed for subject matter eligibility.” In this regard Hirshfeld was discussing how the USPTO modified the proposed guidance, which was initially released for comment and the guidance that was release in December 2014. In the proposed guidance from March 2014, the USPTO would have had examiners apply the patent eligibility matrix if the claims “recited or involved” a judicial exception to patent eligibility. In the final guidance, Hirshfeld explained, that the USPTO opted for “directed to” language instead, which is narrower than the expansive “recited or involved” standard.

Truthfully, the Supreme Court decision in Alice can only be described as an intellectually bankrupt. The Supreme Court never once used the word “software” in its decision. The failure to mention software a single time is breathtaking given that the Supreme Court decision in Alice will render many hundreds of thousands of software patents completely useless. Ironically, at the end of the day, software patent claims written in typical, industry standard format will result in patent ineligible claims. Yet, at the same time, business methods are patentable. To call this bizarre and inconsistent doesn’t begin to scratch the surface.

Despite the improvements that could reopen the door for important patents in important fields, the Guidelines seem far from perfect. But how could they be, given that they seek to harmonize the mushy judicial activism underlying Section 101 in the first place? Few federal statutes have spawned “judicially crafted exceptions” to flat Congressional instructions like the one in Section 101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”