Posts Tagged: "Patentability"

One Year Post-Bilski: How the Decision is Being Interpreted

This week marks the first anniversary of the Supreme Court issuing its decision in Bilski v. Kappos. The decision held that the machine-or-transformation test is not the exclusive test for patent eligibility, and that the three traditional exclusions of natural phenomena, abstract ideas, and laws of nature still apply. The summary of cases prepared by Attorneys Holoubek and Sterne is excellent! It is absolutely must reading for attorneys prosecuting and litigating in this space.

The Problem with Software Patents? Uninformed Critics!

Listening to those who code complain about patents is nearly hysterical. They still haven’t figured out that by and large they are not innovators, but rather merely translators. Perhaps that is why they so frequently think that whatever they could have come up with themselves is hardly worthy of being patented. Maybe they are correct, but that doesn’t mean that an appropriately engineered system isn’t patentable, it just means that those who code are not nearly as likely to come up with such a system in the first place because they rarely, if ever, seem to approach a project as an engineer would. Rather, they jump right in and start coding. In the engineering world that is a recipe for disaster, and probably explains why so much software that we pay so much money for today is hardly worthy of being called a beta, much less a finished product.

KSR Fears Realized: CAFC Off the Obviousness Deep End

Yesterday the United States Court of Appeals for the Federal Circuit, in a split decision with Judge Lourie writing and Judge Bryson joining, took a step forward in the evolution of the law of obviousness that confirms my worst fears about obviousness in this post-KSR era. It has been argued by many that even after KSR it is not an appropriate rejection, or reason to invalidate an issued claim, that it would be “common sense” to modify elements within the prior art in a wholly new way and then combine the “common sense” modifications. I did agree that was true, at least until yesterday.

Smucker Loses Reexam Battles, But May Win Litigation War

The Board’s analysis might interest patent prosecutors who routinely face rejections based on “applicant’s admissions,” not to mention the applicants who feel obliged to submit hundreds of litigation documents to comply with the duty of disclosure. Similarly surprised will be the litigators who ask whether admissions in pleadings are binding or can be withdrawn, not whether they are admissible. The Board’s refusal, because of lack of resources, to compare Smucker’s accused commercial squeeze bottle with the disclosure of the Seaquist reference is also open to question, especially since there does not appear to be any dispute regarding the structure of Smucker’s commercial nozzle. Reexamination practitioners take note.

The Strange Case of the Animal Toy Patent: Reexam Redux

Two months ago I wrote about one of my favorite patents — The Animal Toy — which is U.S. Patent No. 6,360,693. See Patent on a Stick: Learning from the Animal Toy Patent. Shortly after writing that article, which was not intended to poke fun at the Patent Office but to merely teach a point relative to claim drafting, I received an e-mail from Stephen Kunin, who is a partner at Oblon Spivak, LLP. Steve wrote to me indicating that this patent was reexamined by the Patent Office and none of the claims exited reexamination. This in and of itself may not be very odd, but something didn’t seem quite right.

Patent on a Stick: Learning from the Animal Toy Patent

Claim #1, the broadest claim in this patent, says that this “animal toy” has a solid main section, at least one protrusion and is adapted for floating in the water. While not every stick would infringe claim 1 of this patent, I would venture that there are many which would. No need to worry, however. This patent fell into the public domain on March 26, 2010, for failure to make the first maintenance fee payment. The lesson here, however, is not that the Patent Office occasionally makes a mistake (true though that may be). The fact that a patent can be obtained or has been obtained does not mean that a valuable asset has been obtained, and this “invention” is a wonderfully vibrant example of that.

What is Prior Art?

The trouble with explaining what prior art is stems from the fact that everyone already thinks they know what it is. Conceptually we do not want to issue patents for inventions that are not considered new, which seems fair enough. The trouble is defining what is “new.” For now, let’s just say that prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new.

Now comes the curve ball you have probably been expecting. Not all references, knowledge or events that can demonstrate that an invention is “old” or already known can be used by examiners or during litigation against an invention.

The Information Needed to Avoid Writing Bad Software Patents

Software is now and will remain patentable in the United States. Software patents have been vilified by many, but they have been granted by the United States Patent and Trademark Office and upheld in federal courts across the United States. The much anticipated Bilski v. Kappos decision at the Supreme Court did nothing to slow down the patentability of software, and in fact even the original Federal Circuit decision wound up, as applied by the USPTO, to make it more likely that adequately written software patent applications would be granted and transformed into issued patents. What has changed over the last several years, however, is the amount of detail that must go into a software patent application in order to satisfy the adequate description requirements under US patent law. So don’t listen to anyone who tells you software cannot be patents in the United States; it certainly can, but it isn’t quite as easy as it used to be.