Bilski Blog

Comments on USPTO’s Interim Patent Eligibility Guidance (Part 3)

 By: Robert R. Sachs 

See Part 1 and Part 2. 

 

Interim Guidance: Summaries of Patent Eligibility Cases

The Interim Guidance provides succinct summaries of various Supreme Court and Federal Circuit decisions.  As explained by the Office at the January 21, 2015 Patent Eligibility Forum, these summaries were provided as an initial attempt to give examiners examples and explanations of eligible and ineligible claims.

While a laudable and creative effort, there are several problems with this approach.  As acknowledged by the Office at the Patent Eligibility Forum, the case law is “apparently inconsistent.”  Yet, the Interim Guidance does not admit that this fact, and instead presents the cases as if they are all consistent with each other.  This creates a false impression in the minds of the examiners that the evaluation of patent eligibility is a precise and deterministic exercise—as evidenced by the “flowchart” on page 9. 

Worse, it overlooks the fact that statements made in cases such as Parker v. Flook or Alice, can be easily used to demonstrate that presumptively eligible claims in Diamond v. Diehr are ineligible.  For example, Alice’s prohibitions on well understood, routine and conventional steps, and Flook’s exclusion of pre-solution (“data gathering”) and post-solution activity eliminate all but the “repetitively calculating” and “comparing” steps, since it was found by the examiner and the Board that the rests of the steps of the claim were conventional.  Diehr, 450 U.S. 175, 208 (1972).  The claim was directed to the abstract idea of using a mathematical algorithm, the Arrhenius equation, to control a chemical process.  This abstract idea was implemented on generic computer, claimed only at the highest level of generality, without identifying any inventive hardware.  Thus, the claim should have been ineligible.  David Stein provides an excellent demonstration of how Alice invalidates Diehr. 

Comments on USPTO’s Interim Patent Eligibility Guidance (Part 2)

See Part I

By: Robert R. Sachs

  The Preemption Requirement

Preemption is the core concern that drives the Court’s “exclusionary principle”.  The Supreme Court in Alice stated:

We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612 (upholding the patent "would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea"). Laws of nature, natural phenomena, and abstract ideas are “"the basic tools of scientific and technological work."” Alice, at 2354.

Patents on “building blocks of human ingenuity” “would risk disproportionately tying up the use of the underlying" ideas, and are therefore ineligible for patent protection.”  Id. at 2354-2355. (internal quotations and citations omitted).

Again, many of the commentators on the June 2014 Preliminary Guidance identified preemption as a primary concern that must drive the patent eligibility analysis, including parties on opposite sides of the patent eligibility debate: ACLU, AIPLA, BSA IEEE, Microsoft, Public Knowledge, Trading Tech, and six law firms and individuals.  The Interim Guidance only mentioned preemption as result from the examiner identifying claim elements that “amount to significantly more than that exception,” rather than the core inquiry that drives the entire eligibility analysis.[1]

Comments on USPTO’s Interim Patent Eligibility Guidance (Part I)

By: Robert R. Sachs 

 On December 16, 2014 the USPTO issued its 2014 Interim Guidance on Subject Matter Eligibility. In the introduction, the Guidance states that it “is responsive to the public comments received pertaining to the March 2014 Procedure and the June 2014 Preliminary Instructions.”  The Office received comments from forty seven submitters in response to the Preliminary Instructions.[1]

To its credit, the Office responded to a number of the concerns raised by the submitters. Most importantly, as noted at the January 21, 2015 Patent Eligibility Forum, the Interim Guidance altered the explanation of the Mayo test from the Preliminary instructions to state that “the application of the overall analysis is based on claims directed to judicial exceptions (defined as claims reciting the exception, i.e., set forth or described), rather than claims merely “involving” an exception.”  The Office also provided succinct explanations of some of the Supreme Court and Federal Circuit eligibility cases, and most importantly, included a treatment of DDR Holdings, LLC v. Hotels.com, L.P., the first post-Alice Federal Circuit case to find patent eligible subject matter in computer-implemented inventions.

In Parts 1 and 2, I will focus on the analyses and recommendations that were raised by a significant number of submitters and that the Interim Guidance did not adequately address. In Part 3, I will analyze the various ones of the patent eligibility case summaries and examples provided by the USPTO, and offer some overall observations about the Office’s approach to guiding the examiners through the “murky morass” of Section 101.[2]

Twenty-Two Ways Congress Can Save Section 101

By: Robert R. Sachs 

 In the seven months since Alice Corp. Pty. v. CLS Bank Int’l was decided, over one hundred patents have been invalidated for claiming ineligible subject matter, more than the total number of patents invalidated under Section 101 in the past five years. Based on pending district court motions and Federal Circuit appeals, in the next six months we are likely to see another hundred patents invalidated. While the Supreme Court has advised the lower courts to “tread carefully in construing this exclusionary principle lest it swallow all of patent law,” the behavior of the lower courts, including the Federal Circuit, has instead been to ply the legal pen as broadsword to cut down whatever software or business method patent stands before them.  As delightful as this trend may be to patent defendants, it has created enormous consequences for companies that rely on patent protection to protect crucial technology assets, including the loss of business contracts, disrupted partnerships, and increased difficulty in obtaining venture funding.  It is time for Congress to act.[1]

In this essay, I propose twenty-two ways Congress can amend the patent law to restore the balance it created in the 1952 Patent Act.  As a starting point, here are the existing relevant statutory provisions:

35 U.S. Code § 100 – Definitions

100(a) The term “invention” means invention or discovery.

100(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

100(j) The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent.

35 U.S. Code § 101 - Inventions patentable

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. 

Post-Alice Patents in Ecommerce, Banking and Finance

By: Robert R. Sachs 

 Where are the post-Alice business method patents?

Between January 1, 2015 and January 23, the USPTO issued 247 patents in class 705, the overall business methods classification.   I reviewed the file histories of every single one of these patents.  I found only four that had post-Alice Section 101 rejections.  Between October 1, 2014 and December 31, 2014 there were 872 class 705 patents issued.  I found none (zero) that had post-Alice rejections.

In both groups, the vast majority had no Section 101 rejections, or if they had any, they were pre-Alice, based on Bilski.  The vast majority of these pre-Alice rejections were made before 2014, some as far back as 2011--and yet the notice of allowances only came in mid or late 2014.  As you likely know, the pre-Alice rejections were easily overcome by adding "processor" limitations to the method claims, and adding "non-transitory" to computer program product claims.

Generally, the rejections themselves were the form paragraphs we've all seen, with little or no specific  analysis of the alleged abstract idea, and zero discussion of the limitations of the claims with respect to "inventive concept," or why the claims limitations do not recite "significantly more" than the abstract idea itself. 

On the other hand, the responses varied:

1. Form rebuttal, the claims are not abstract. 
2. Failure of examiner to make prima facie case of ineligibility.
3. Substantive arguments that claims are not abstract and include inventive concepts.
4. Failure of examiner to make prima facie case, along with substantive arguments that the claims were not abstract and include "inventive concepts."

What follows is a detailed look at each of the cases.