Foundation Patents inventors published patent & ®️ Trademark:
The Better Pooper-Scooper & Color-Tech Resume
CARTRIDGE – BASED POOPER – SCOOPER https://patents.google.com/patent/US11434614B1/en?oq=US+11%2c434%2c614+B1
REP SHEET COLORED RESUME https://tsdr.uspto.gov/#caseNumber=90293040&caseType=SERIAL_NO&searchType=statusSearch
“Novelty” means that an invention is new. An invention isn’t new if it was known to the public before the filing date of the patent application. The novelty requirement prevents prior art from being patented again.
Determining whether an invention is “novel” requires a search of the prior art. Prior art can include prior patents, as well as publications.
“The obviousness” test considers whether an invention would be obvious to someone “skilled in the art.” Initial Test: Is My Invention Patentable?
Under 35 USC 103,
“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”
For example, an improvement to a carburetor must not be obvious to someone “skilled in the art” of carburetors in order to be patentable.
Practical Guide to Filing for a Patent
If you’re an inventor, you shouldn’t publicly disclose, publish, market, sell, advertise, or even discuss your invention with anyone for more than a year without filing a patent application. The USPTO offers a one-year grace period in which to file, after which, you will forever lose your intellectual property rights.
Your utility patent application will either be a provisional application, which sets your priority date and gives you “patent pending” status, or a nonprovisional application, which will be published and will comprise the basis of your issued patent. Read on to learn more about the process involved in filing both types of patent applications.
Provisional Patent Applications
Provisional patent applications customarily a good first step for most inventors. For openers, the USPTO filing fees for a provisional application are about 10% of what a nonprovisional application costs. More importantly, the provisional gives you one year to market and tailor your invention while you prepare to file your nonprovisional application. Just remember that only nonprovisional patent applications are examined by the USPTO, and only nonprovisionals ultimately receive patents.
The Nuts and Bolts of a Provisional Application
A provisional application includes:
- A cover sheet
- A written specification,
- Drawings, and
- The filing fee.
The fee is further reduced if you are a small or micro entity. Claims and oaths are not necessary in the provisional.
Provisional Drawings
Your provisional drawings need not be formal patent drawings with reference numbers, lead lines, and the other technical requirements of nonprovisional patent drawings. At this stage, you can use almost anything you like: screenshots of your website, CAD renderings, your flowcharts, photos, pencil drawings from your lab book, blueprints, or even napkin drawings if they are in PDF format. The only caveat is the drawings must be in black and white.
Provisional Specification
Your provisional specification will describe how to make and use the invention. It must contain as much detail as necessary to show someone of ordinary skill in the art how to make and use the invention without undue experimentation.
Write out all the alternative embodiments (variations) and applications (uses) you can think of. The prize feature of your innovation may turn out to be something you hadn’t initially considered. After all, Play-Doh was supposed to be wallpaper cleaner, the Slinky was supposed to stabilize naval instruments, and Viagra was developed for heart disease.
There’s no downside to wild creativity here; your provisional application will not be published or assigned a USPTO Examining Unit the way your nonprovisional application will.
Nonprovisional Patent Application
For the nonprovisional application, you will surely want to hire a registered patent attorney. Some registered patent attorneys initially charge for generating a Prior Art Search and Patentability Report. Others will simply include this work in their fee for preparing the application.
Your patent attorney will work with you to draft and file a formal specification, including background and a summary of the invention, formal drawings, and usually 20 claims, which ultimately form the boundaries of your intellectual property. When you are satisfied with the application, your patent attorney will file it via the USPTO’s EFS-Web system. The USPTO application fee will usually be paid through your attorney’s USPTO deposit account, which he or she will then pass onto you.
After filing, your patent attorney will then track the progress of your application on the USPTO’s Private Pair system. The USPTO will give various rejections, usually due to obviousness. Your attorney will then charge you to prepare Office Action Responses, usually with claim amendments designed to put your application in a condition for allowance (for issuance and publication in the USPTO Gazette).
Getting Legal Help
If you’ve poured years of development into your invention and it’s starting to sell, then failure to see a registered patent attorney within the year could be fatal. It’s in your best interests to gather your blueprints and your BOMs and go see your local patent attorney.
The Trademark Application Process
Applying for a trademark is straightforward, but not without pitfalls. Almost 75% of all Trademark Applications are refused at least once by the USPTO before they are ultimately abandoned or allowed and entered in the USPTO General Registry of Trademarks.
The USPTO Trademark Electronic Application System, “TEAS,” is easy to access, but difficult to navigate. Unfortunately, TEAS will let you submit an insufficient application, and it does not typically issue refunds. This article will give you an overview of the trademark application process and help you avoid common mistakes, but it’s also important to enlist the help of a skilled trademark attorney..
Items You Will Need to Apply
Before you meet with a trademark attorney, you should have the following materials handy:
- Your business name, and whether you want your company to be the owner of the mark
- The date you began using your mark in interstate commerce
- The date you began using your mark anywhere (for example, with your friends or your with your graphic artist)
- A list of all the goods or services you sell with the mark
- A drawing of the mark, transmittable in electronic form
- At least one “sample in commerce”
Trademark Search and Opinion
Your trademark attorney will begin with a trademark search on the USPTO Trademark Electronic Search System (“TESS”). Your attorney will then write a trademark search opinion, indicating whether any similar registered “live” marks might present consumers with a “likelihood of confusion.” If the likelihood of confusion is low, either because your mark is unique or because similar living marks are in unmistakably different industries, then you should move forward.
Intent to Use Applications
The application “basis” simply means whether you are currently using the mark, or whether you intend to use the mark in commerce. “Intent to Use” applications are for companies that want to hold their place for the word or logo while they prepare to sell the associated product. “Intent to Use” applications must be followed by a “statement of use” within six months of the USPTO’s notice of allowance or the application will go abandoned.
The International Classification
The TEAS system will then ask you to identify your mark’s international class from a list of about 50 different types of goods and services accepted by the World Intellectual Property Organization. You should be able to find your product or service listed in the USPTO’s Acceptable Identification of Goods and Services Manual.
Your Specimen in Interstate Commerce
You must submit at least one specimen of your mark as it is used in the commercial marketplace (e.g., on your product packaging or website). A specimen is generally what consumers actually see when they are trying to purchase your goods or services.
Advertising materials are not acceptable as a specimen, nor are materials used to carry out your daily business, such as invoices or packing slips. The USPTO typically accepts the following specimens:
- A time-stamped, contextual photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
- Product packaging showing the mark as sold in commerce (e.g., detergent soap packaging)
- Signage used in a product display at a store (e.g., a time-stamped photograph of a window display)
- A webpage showing the mark affixed to a product , and also showing purchasing information (e.g. a shopping cart “click to purchase” page).
Tip Regarding Word vs. Design Marks
When applying for a trademark, you must decide if you want to register a simple “word mark” or if you want to register your design, or logo. Since the application fee is the same for a single mark regardless of whether you pick a logo, a simple word phrase, or a combination thereof, you get the most value by registering a “composite” mark, encompassing your words and your logo.
See Your Local Trademark Attorney
Your business name and logo will forever be associated with your product and the goodwill of your company. Searching for similar marks, weighing your options, and preparing and filing a proper trademark application should be handled by a professional trademark attorney.
Enforcing Your Patent
Once you obtain a patent, you have the right to exclude others from making, using, selling or distributing your invention for 20 years from your initial filing date. Enforcement is a tricky enterprise, however. There’s no “U.S. Patent Police.” If you think your patent rights are being infringed by a product in commerce, you should know the steps you can take to enforce your patent.
First, you’ll need to find a patent attorney. Expect to forward an initial retainer, since patent law firms generally do not represent inventor-clients on contingency.
Finding Infringers
If you are a patentee-inventor and you are looking for infringers, there’s no magic trick. Other than scanning the market, the internet, trade shows, and industry periodicals, you might try attending conventions and conferences in your field. You might also consider selling your patent to a “patent troll” whose sole business is finding and forcing settlements with alleged infringers.
What Your Patent Attorney Will Do
Your patent attorney will first offer you an opinion letter comparing the potentially infringing conduct against your patent claims. If your patent attorney thinks you have a “slam dunk” case for infringement, and also believes that your patent will not be invalidated en route to victory, then you should proceed.
Cease and Desist Letters
If you decide to move forward, your patent attorney will start by sending the infringer a cease and desist letter. The letter will notify the infringer about your patent and then suggest they license the technology for a suggested royalty. The letter will conclude with a “final date for response,” after which you promise to sue.
Beware of Patent Misuse
It’s important to know you may not collect royalties before your patent issues. You also cannot collect royalties if your patented technology is not actually used in your competitor’s product.
A significant number of states have already passed laws preventing “bad faith” settlement attempts, condemning them as unfair and deceptive business practices. These laws are designed to stop non practicing entities (NPEs), or trolls, from collecting settlements from companies within the state. Lastly, in your settlement agreement, you may not prohibit your competitor from selling products not covered by your patent, as such clauses hurt competition.
Damages for Infringement
Upon a finding of patent infringement, the court can award you money damages for:
- Lost Profits: This includes damages for collateral sales, price erosion, and accelerated market entry (i.e. what the infringer gained by cheating their way into the market).
- Reasonable Royalty: The typical royalty is the price the infringing party would have been willing to pay to be able to make and sell the patented article in the market.
Other Settlement Factors – Tricks of the Trade
Your infringers have defenses that lessen their desire to sign a licensing agreement. They may be able to change their infringing process or product, and so “design around” your patent. Likewise, your defendant may know of prior art that could invalidate your patent at the Patent Trial and Appeal Board (PATB).
Choose a Registered Patent Attorney
As you can see, patent litigation is a delicate minefield. So if you are an inventor, a patentee or an accused-infringer, it’s in your best interests to find a licensed patent attorney for guidance.
PATENTS FOR HEALTH CARE DEVICES
The Copyright Registration Procedure
If you’ve authored a literary or visual work, a sound recording, a motion picture or a screenplay, you most likely want to Register your work with the United States Copyright Office.
Copyright Registration protects, for your lifetime plus 70 years,
- Fixed works in a tangible medium of expression (i.e. in physical form),
- Original works (not raw copies of another author’s work),
- Works created, at least in part, by the author (i.e. pages ripped from your local phone book don’t count),
- Derivative works and compilations, although these works present special challenges, and so should be Registered with the help of an intellectual property attorney.
Copyright does not protect ideas, but rather the expression of ideas. For example, you can’t copyright the idea of a man who time-travels into the past to save humanity in the future. You can, however, copyright the dialogue in your script entitled “The Terminator.”
Benefits of Registration
A work or art or literature is technically “copyrighted” by an author the moment they paint, write, sing, compose, play, or program it. However, only Registration with the U.S. Copyright Office gives certain legal rights and privileges that can be exercised in federal court:
- The right to bring a copyright infringement suit in federal court,
- The right to notify S. Customs for protection against illegal importation of unlicensed copies, and
- Statutory damages and attorneys fees upon finding of infringement.
The only caveat to federal protection is that you must Register within 3 months of publishing your work.
In contrast, mere “registration” with various guilds, or sending your work to yourself through the mail, still forces the writer to prove damages to a jury and to prove the authenticity of their work.
The Process
If you want to protect and sell your intellectual property, you are best off Registering your work through an Entertainment Attorney, who can also negotiate licensing agreements for royalties.
If you are doing the Registration yourself, goto www.copyright.gov. You may upload your work to the United States Copyright Office electronically via the eCO system for under $100 per work if it is:
- An unpublished work,
- A work published only electronically.
The eCO system will prompt you to:
- Complete an application to Register a new Claim,
- Pay the necessary fee,
- Submit, or upload, your “deposit,” or artistic work.
If your work was published, for example on the internet, and you need to memorialize its original publication form, then you can still use the www.copyright.gov site to do the Application. You will then send your work to the Copyright Office by mail.
The process is almost the same as electronically filing an uploaded work. The difference is, at the end of the eCO process, the eCO system will send you a Shipping Slip link. Print and use one shipping slip per work to submit your deposit to the Copyright Office.
For additional questions, you may contact the U.S. Copyright Office at the Library of Congress in Washington D.C.
Whether you’ve built the better mouse trap or you’re convinced your idea for an app would make millions, you may be asking “should I get a patent?” Like lawyers always say, “it depends.”
There are a number of factors to consider when you’re deciding whether or not to patent your innovation. Read on to learn more about each.
PATENT ELIGIBLE SUBJECT MATTER:
REPORT ON VIEWS AND RECOMMENDATIONS FROM THE PUBLIC
United States Patent and Trademark Office
July 2017
1. The Supreme Court’s Bilski, Mayo, Myriad, and Alice Decisions
Over the past seven years, the Supreme Court has issued a series of decisions— Bilski, Mayo, Myriad, and Alice——that have significantly impacted patent eligibility law and continues to generate substantial public debate.
Bilski, decided in 2010, involved a business method for hedging risk. In analyzing patent eligibility, the Supreme Court recognized that § 101 specifies four independent categories of inventions or discoveries that are eligible for patent protection (processes, machines, manufactures, and compositions of matter), but judicia judiciall precedent provides three specific exceptions to patent eligibility for laws of nature, physical phenomena, and abstract ideas. The Court rejected the view of the U.S. Court of Appeals for the Federal Circuit that the so-called so “machine or transformation test” is the exclusive test for assessing patent eligibility of a process. Under that test, a process claim is patent eligible provided it is (1) tied to a particular machine or apparatus, or (2) transforms nsforms a particular article into a different state or thing. The Court explained that although the machine machine-or-transformation transformation test “is a useful and important clue,” it is “not the sole test for deciding whether an invention is a patent patent-eligible eligible ‘process.’” The Court held that the claims at issue were invalid because they were directed to the unpatentable abstract idea of hedging risk in the energy market and added only token postsolution components, namely, use of well-known random analysis techniques to establish inputs. The Court observed that hedging is a long prevalent fundamental economic practice, and that allowing the patent claims “would pre-empt use of [risk hedging] in all fields” and “effectively grant a monopoly over an abstract idea.” The Court, however, left open the possibility that at least some business methods are patent eligible.
Following Bilski, the Supreme Court in Mayo addressed a method for optimizing drug dosages for treatment of autoimmune diseases in humans. The inventors discovered the relationship between the concentration of a metabolite in the blood following administration of the drug and the likelihood that the administered dosage would be ineffective or produce harmful side effects. The inventors obtained a patent claiming a method of determining whether a given dosage level is too low or too high based on the metabolite level. The Court held the claims to be patent ineligible. In analyzing the claims, the Court introduced a two-step framework for distinguishing patent ineligible concepts from patent eligible applications of those concepts. The first step is to consider whether the claims are directed to a judicially recognized exception to patentability, i.e., abstract ideas, laws of nature, or natural phenomena. If so, then the second question is “whether the claims do significantly more than simply describe these natural relations,” i.e., whether additional elements considered separately or as an ordered combination “transform the nature of the claim” into “a patent-eligible application” of the judicial exception. Applying the first step of this framework to the claims at issue, the Court found that the claims were directed to a law of nature: the relationship between the concentration of a particular metabolite in the blood and the likelihood that a dosage of a drug will be ineffective or harmful. Assessing the second step, the Court determined that the claims did not do “significantly more” than describe this natural relationship, i.e., the additional elements considered separately and as an ordered combination did not “transform the nature of the claim” into “a patent-eligible application” of the judicial exception.
At issue in Myriad was the patent eligibility of claims to isolated DNA (genes) associated with an increased risk of breast cancer, and synthetic DNA created from RNA known as complementary DNA (cDNA). The Supreme Court held that the isolated genes “fell squarely within the law of nature exception.” The Court explained that discovering the location of the genes does not render the genes patent eligible, nor does the act of separating them from their surrounding genetic material. While acknowledging that claims to a product “with markedly different characteristics from any found in nature” may be patent eligible, the Court explained that Myriad’s claims to isolated genes lacked such characteristics because they do not rely on any chemical changes resulting from isolation, and are not even expressed in terms of chemical composition. The Court did, however, rule that the claimed cDNAs were patent eligible because they differed from naturally occurring DNA by the absence of intron regions (i.e., non-coding nucleotide sequences).
Finally, in Alice, the Court reaffirmed the Mayo two-step framework and applied it to claims reciting a computer-implemented process, computer system, and computer readable medium for mitigating settlement risk. Under step one of the framework, the Court concluded that the claims were directed to the abstract idea of intermediated settlement. In assessing step two, the Court considered whether the claim elements, individually or as an ordered combination, “‘transform the nature of the claim’ into a patent-eligible application.” The Court referred to the second step as “a search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Looking at the claims at issue, the Court concluded that mere generic computer implementation does not transform the abstract idea into a patent-eligible invention. Thus, the court held the process claims, as well as the claims to the computer system and computer-readable medium, to be patent ineligible.
a. Computer-Related Technologies
In a large majority of cases pertaining to computer-related inventions, many of which involve business methods, the Federal Circuit has applied the framework to find claims to be ineligible. In several cases, however, the Federal Circuit has held claims involving computer technology to be patent eligible. As discussed further below, often eligibility turns on the presence of a technological solution to a technological problem in the claimed invention.
First, shortly after Bilski and prior to Mayo and Alice, the Federal Circuit considered the eligibility of patents directed to a method for rendering half-tone images of a digital image. The court noted that Bilski “refocused this court’s inquiry into processes on the question of whether the subject matter of the invention is abstract.” The court found “nothing abstract” in the claimed processes “for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” Instead, the court found that “[t]he invention presents functional and palpable applications in the field of computer technology.” While acknowledging that algorithms and formulas play a “significant part” in the claimed methods, the court found that they did “not bring th[e] invention even close to abstractness.” Accordingly, the court found the claims to be patent eligible.
Following the establishment of the two-step test in Mayo/Alice, the Federal Circuit applied that framework in DDR Holdings. At issue was a system for generating a composite webpage by combining certain elements of a “host” website with content of a third-party merchant. Specifically, the claimed system provided that when a user clicks on an advertisement for a third-party product displayed on a host website, the user is directed to a hybrid web page that combines the “look and feel” of the host website and product information from the third-party website. Beginning with step one of the two- step analysis, the court found that the claims did not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Instead, the court found that “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court further observed that “the claims at issue do not attempt to preempt every application of the idea of increasing sales by making two web pages look the same.” Thus, the court concluded that the claimed system was patent eligible.
Similarly, in Enfish, the Federal Circuit determined that claims to a data storage and retrieval system for a computer memory are not directed to an abstract idea. The system at issue incorporated a self-referential logical model, which allowed faster searching and more effective storage of data. As an initial matter, the court declined to “read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Analyzing the claimed invention under the first step of the Alice inquiry, the court found that the claims “are not directed to an abstract idea within the meaning of Alice,” but rather “to a specific improvement to the way computers operate, embodied in the selfreferential table.” The court distinguished from situations in which “general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation,” finding instead that “the claims are directed to a specific implementation of a solution to a problem in the software arts.” Because the claims were not directed to an abstract idea under step one, the court did not proceed to step two of the analysis and concluded that the claims were patent-eligible.
In the same year as Enfish, the Federal Circuit issued three more decisions finding computer-based inventions to be patent eligible under § 101. In Bascom, the court considered the patent eligibility of a system for filtering Internet content. Under step one, the court found the claims to be directed to an abstract idea because “filtering content is . . . a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.” Thus, unlike in Enfish, the court proceeded to step two of Alice. While agreeing with the district court that “the limitations of the claims, taken individually, recite [a] generic computer, network and Internet components,” the court found that “the ordered combination of limitations” recites something more—“the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” The court further noted that the claims do not “preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.” Therefore, the court concluded that “the claims pass step two of Alice’s two-part framework.”
Shortly thereafter, the Federal Circuit determined that a method for automatically animating lip synchronization and facial expression of 3D characters was patent eligible subject matter. The court concluded that the claimed invention was not drawn to an abstract idea, explaining that “[w]hether at step one or step two of the Alice test . . . a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.” The court viewed the claimed invention to be an improvement that “allow[s] computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Thus, according to the court, “[t]he claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters.” The court further observed that the claim “does not preempt approaches that use rules of a different structure or different techniques.”
Finally, in November 2016, the court issued its decision in Amdocs, determining that a computer readable medium and method for collecting and processing network accounting records over a network is patent eligible. The court first observed that prior decisions had found facially-similar claims to be eligible either under step one or step two. The court then explained that even if the claimed invention “is directed to an ineligible abstract idea under step one, [it] is eligible under step two because it contains a sufficient ‘inventive concept’” by “require[ing] ‘computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.’” In other words, in the court’s view, the claims “recite[] a series of limitations that, when considered individually and as an ordered combination, provide an inventive concept sufficient to confer eligibility.” The court further explained that the claimed invention “is narrowly drawn to not preempt any and all generic enhancement of data in a similar system, and does not merely combine the components in a generic manner, but instead purposefully arranges the components in a distributed architecture to achieve a technological solution to a technological problem specific to computer networks.”
Since the roundtable, the Federal Circuit has continued to issue decisions interpreting the Supreme Court’s recent jurisprudence.
Apple v. Samsung
In 2012, a jury in the Northern District of California returned a verdict of design patent
infringement in the much publicized Apple v. Samsung.
Apple asserted a number of design patents, including one directed to the face of a smartphone. The jury was instructed to use the modified
ordinary observer test and told that “[w]hen the claimed design is visually close to prior art designs,
small differences between the accused design and the claimed design may be important in
analyzing whether the overall appearances of accused and claimed designs are substantially the
same.”
While there is no written reasoning to analyze from the jury’s verdict, a comparison of the prior
art, claimed design, and one of the accused Samsung products offers some insight:
Prior Art Park B. Smith’s Claimed Design Samsung’s Smartphone
Verdict: US design patents only cover what is shown as solid lines. Dotted lines don’t count. The
left image is from Apple’s US design patent D593087. The right image is of a Samsung Galaxy S
4G. The Samsung image is from the court records in Apple v Samsung. The Samsung phone
infringed the Apple patent even though the backs were different because the Apple patent
showed the back as a dotted line and was not claimed.
Takeaway
Following Egyptian Goddess, “the ability to enforce design patents has been enhanced.” “Design
patentees undoubtedly received a significant boost,” and will have a “de facto increase in scope of
protection.” The elimination of the point of novelty test “increases the value of design patents.”
Design Patent Drawing Requirements – Link to USPTO Website and Examples
IS MY COMPUTER-RELATED TECHNOLOGY PATENT ELIGIBLE SUBJECT MATTER
PATENT ELIGIBLE SUBJECT MATTER:
REPORT ON VIEWS AND RECOMMENDATIONS FROM THE PUBLIC
United States Patent and Trademark Office
July 2017
1. The Supreme Court’s Bilski, Mayo, Myriad, and Alice Decisions
Over the past seven years, the Supreme Court has issued a series of decisions— Bilski, Mayo, Myriad, and Alice——that have significantly impacted patent eligibility law and continues to generate substantial public debate.
Bilski, decided in 2010, involved a business method for hedging risk. In analyzing patent eligibility, the Supreme Court recognized that § 101 specifies four independent categories of inventions or discoveries that are eligible for patent protection (processes, machines, manufactures, and compositions of matter), but judicia judiciall precedent provides three specific exceptions to patent eligibility for laws of nature, physical phenomena, and abstract ideas. The Court rejected the view of the U.S. Court of Appeals for the Federal Circuit that the so-called so “machine or transformation test” is the exclusive test for assessing patent eligibility of a process. Under that test, a process claim is patent eligible provided it is (1) tied to a particular machine or apparatus, or (2) transforms nsforms a particular article into a different state or thing. The Court explained that although the machine machine-or-transformation transformation test “is a useful and important clue,” it is “not the sole test for deciding whether an invention is a patent patent-eligible eligible ‘process.’” The Court held that the claims at issue were invalid because they were directed to the unpatentable abstract idea of hedging risk in the energy market and added only token postsolution components, namely, use of well-known random analysis techniques to establish inputs. The Court observed that hedging is a long prevalent fundamental economic practice, and that allowing the patent claims “would pre-empt use of [risk hedging] in all fields” and “effectively grant a monopoly over an abstract idea.” The Court, however, left open the possibility that at least some business methods are patent eligible.
Following Bilski, the Supreme Court in Mayo addressed a method for optimizing drug dosages for treatment of autoimmune diseases in humans. The inventors discovered the relationship between the concentration of a metabolite in the blood following administration of the drug and the likelihood that the administered dosage would be ineffective or produce harmful side effects. The inventors obtained a patent claiming a method of determining whether a given dosage level is too low or too high based on the metabolite level. The Court held the claims to be patent ineligible. In analyzing the claims, the Court introduced a two-step framework for distinguishing patent ineligible concepts from patent eligible applications of those concepts. The first step is to consider whether the claims are directed to a judicially recognized exception to patentability, i.e., abstract ideas, laws of nature, or natural phenomena. If so, then the second question is “whether the claims do significantly more than simply describe these natural relations,” i.e., whether additional elements considered separately or as an ordered combination “transform the nature of the claim” into “a patent-eligible application” of the judicial exception. Applying the first step of this framework to the claims at issue, the Court found that the claims were directed to a law of nature: the relationship between the concentration of a particular metabolite in the blood and the likelihood that a dosage of a drug will be ineffective or harmful. Assessing the second step, the Court determined that the claims did not do “significantly more” than describe this natural relationship, i.e., the additional elements considered separately and as an ordered combination did not “transform the nature of the claim” into “a patent-eligible application” of the judicial exception.
At issue in Myriad was the patent eligibility of claims to isolated DNA (genes) associated with an increased risk of breast cancer, and synthetic DNA created from RNA known as complementary DNA (cDNA). The Supreme Court held that the isolated genes “fell squarely within the law of nature exception.” The Court explained that discovering the location of the genes does not render the genes patent eligible, nor does the act of separating them from their surrounding genetic material. While acknowledging that claims to a product “with markedly different characteristics from any found in nature” may be patent eligible, the Court explained that Myriad’s claims to isolated genes lacked such characteristics because they do not rely on any chemical changes resulting from isolation, and are not even expressed in terms of chemical composition. The Court did, however, rule that the claimed cDNAs were patent eligible because they differed from naturally occurring DNA by the absence of intron regions (i.e., non-coding nucleotide sequences).
Finally, in Alice, the Court reaffirmed the Mayo two-step framework and applied it to claims reciting a computer-implemented process, computer system, and computer readable medium for mitigating settlement risk. Under step one of the framework, the Court concluded that the claims were directed to the abstract idea of intermediated settlement. In assessing step two, the Court considered whether the claim elements, individually or as an ordered combination, “‘transform the nature of the claim’ into a patent-eligible application.” The Court referred to the second step as “a search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Looking at the claims at issue, the Court concluded that mere generic computer implementation does not transform the abstract idea into a patent-eligible invention. Thus, the court held the process claims, as well as the claims to the computer system and computer-readable medium, to be patent ineligible.
a. Computer-Related Technologies
In a large majority of cases pertaining to computer-related inventions, many of which involve business methods, the Federal Circuit has applied the framework to find claims to be ineligible. In several cases, however, the Federal Circuit has held claims involving computer technology to be patent eligible. As discussed further below, often eligibility turns on the presence of a technological solution to a technological problem in the claimed invention.
First, shortly after Bilski and prior to Mayo and Alice, the Federal Circuit considered the eligibility of patents directed to a method for rendering half-tone images of a digital image. The court noted that Bilski “refocused this court’s inquiry into processes on the question of whether the subject matter of the invention is abstract.” The court found “nothing abstract” in the claimed processes “for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” Instead, the court found that “[t]he invention presents functional and palpable applications in the field of computer technology.” While acknowledging that algorithms and formulas play a “significant part” in the claimed methods, the court found that they did “not bring th[e] invention even close to abstractness.” Accordingly, the court found the claims to be patent eligible.
Following the establishment of the two-step test in Mayo/Alice, the Federal Circuit applied that framework in DDR Holdings. At issue was a system for generating a composite webpage by combining certain elements of a “host” website with content of a third-party merchant. Specifically, the claimed system provided that when a user clicks on an advertisement for a third-party product displayed on a host website, the user is directed to a hybrid web page that combines the “look and feel” of the host website and product information from the third-party website. Beginning with step one of the two- step analysis, the court found that the claims did not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Instead, the court found that “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court further observed that “the claims at issue do not attempt to preempt every application of the idea of increasing sales by making two web pages look the same.” Thus, the court concluded that the claimed system was patent eligible.
Similarly, in Enfish, the Federal Circuit determined that claims to a data storage and retrieval system for a computer memory are not directed to an abstract idea. The system at issue incorporated a self-referential logical model, which allowed faster searching and more effective storage of data. As an initial matter, the court declined to “read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Analyzing the claimed invention under the first step of the Alice inquiry, the court found that the claims “are not directed to an abstract idea within the meaning of Alice,” but rather “to a specific improvement to the way computers operate, embodied in the selfreferential table.” The court distinguished from situations in which “general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation,” finding instead that “the claims are directed to a specific implementation of a solution to a problem in the software arts.” Because the claims were not directed to an abstract idea under step one, the court did not proceed to step two of the analysis and concluded that the claims were patent-eligible.
In the same year as Enfish, the Federal Circuit issued three more decisions finding computer-based inventions to be patent eligible under § 101. In Bascom, the court considered the patent eligibility of a system for filtering Internet content. Under step one, the court found the claims to be directed to an abstract idea because “filtering content is . . . a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.” Thus, unlike in Enfish, the court proceeded to step two of Alice. While agreeing with the district court that “the limitations of the claims, taken individually, recite [a] generic computer, network and Internet components,” the court found that “the ordered combination of limitations” recites something more—“the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” The court further noted that the claims do not “preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.” Therefore, the court concluded that “the claims pass step two of Alice’s two-part framework.”
Shortly thereafter, the Federal Circuit determined that a method for automatically animating lip synchronization and facial expression of 3D characters was patent eligible subject matter. The court concluded that the claimed invention was not drawn to an abstract idea, explaining that “[w]hether at step one or step two of the Alice test . . . a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.” The court viewed the claimed invention to be an improvement that “allow[s] computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Thus, according to the court, “[t]he claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters.” The court further observed that the claim “does not preempt approaches that use rules of a different structure or different techniques.”
Finally, in November 2016, the court issued its decision in Amdocs, determining that a computer readable medium and method for collecting and processing network accounting records over a network is patent eligible. The court first observed that prior decisions had found facially-similar claims to be eligible either under step one or step two. The court then explained that even if the claimed invention “is directed to an ineligible abstract idea under step one, [it] is eligible under step two because it contains a sufficient ‘inventive concept’” by “require[ing] ‘computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.’” In other words, in the court’s view, the claims “recite[] a series of limitations that, when considered individually and as an ordered combination, provide an inventive concept sufficient to confer eligibility.” The court further explained that the claimed invention “is narrowly drawn to not preempt any and all generic enhancement of data in a similar system, and does not merely combine the components in a generic manner, but instead purposefully arranges the components in a distributed architecture to achieve a technological solution to a technological problem specific to computer networks.”
Practical Guide to Filing for a Patent
If you’re an inventor, you shouldn’t publicly disclose, publish, market, sell, advertise, or even discuss your invention with anyone for more than a year without filing a patent application. The USPTO offers a one-year grace period in which to file, after which, you will forever lose your intellectual property rights.
Your utility patent application will either be a provisional application, which sets your priority date and gives you “patent pending” status, or a nonprovisional application, which will be published and will comprise the basis of your issued patent. Read on to learn more about the process involved in filing both types of patent applications.
Provisional Patent Applications
Provisional patent applications customarily a good first step for most inventors. For openers, the USPTO filing fees for a provisional application are about 10% of what a nonprovisional application costs. More importantly, the provisional gives you one year to market and tailor your invention while you prepare to file your nonprovisional application. Just remember that only nonprovisional patent applications are examined by the USPTO, and only nonprovisionals ultimately receive patents.
The Nuts and Bolts of a Provisional Application
A provisional application includes:
- A cover sheet
- A written specification,
- Drawings, and
- The filing fee.
The fee is further reduced if you are a small or micro entity. Claims and oaths are not necessary in the provisional.
Provisional Drawings
Your provisional drawings need not be formal patent drawings with reference numbers, lead lines, and the other technical requirements of nonprovisional patent drawings. At this stage, you can use almost anything you like: screenshots of your website, CAD renderings, your flowcharts, photos, pencil drawings from your lab book, blueprints, or even napkin drawings if they are in PDF format. The only caveat is the drawings must be in black and white.
Provisional Specification
Your provisional specification will describe how to make and use the invention. It must contain as much detail as necessary to show someone of ordinary skill in the art how to make and use the invention without undue experimentation.
Write out all the alternative embodiments (variations) and applications (uses) you can think of. The prize feature of your innovation may turn out to be something you hadn’t initially considered. After all, Play-Doh was supposed to be wallpaper cleaner, the Slinky was supposed to stabilize naval instruments, and Viagra was developed for heart disease.
There’s no downside to wild creativity here; your provisional application will not be published or assigned a USPTO Examining Unit the way your nonprovisional application will.
Nonprovisional Patent Application
For the nonprovisional application, you will surely want to hire a registered patent attorney. Some registered patent attorneys initially charge for generating a Prior Art Search and Patentability Report. Others will simply include this work in their fee for preparing the application.
Your patent attorney will work with you to draft and file a formal specification, including background and a summary of the invention, formal drawings, and usually 20 claims, which ultimately form the boundaries of your intellectual property. When you are satisfied with the application, your patent attorney will file it via the USPTO’s EFS-Web system. The USPTO application fee will usually be paid through your attorney’s USPTO deposit account, which he or she will then pass onto you.
After filing, your patent attorney will then track the progress of your application on the USPTO’s Private Pair system. The USPTO will give various rejections, usually due to obviousness. Your attorney will then charge you to prepare Office Action Responses, usually with claim amendments designed to put your application in a condition for allowance (for issuance and publication in the USPTO Gazette).
Getting Legal Help
If you’ve poured years of development into your invention and it’s starting to sell, then failure to see a registered patent attorney within the year could be fatal. It’s in your best interests to gather your blueprints and your BOMs and go see your local patent attorney.
The Trademark Application Process
Applying for a trademark is straightforward, but not without pitfalls. Almost 75% of all Trademark Applications are refused at least once by the USPTO before they are ultimately abandoned or allowed and entered in the USPTO General Registry of Trademarks.
The USPTO Trademark Electronic Application System, “TEAS,” is easy to access, but difficult to navigate. Unfortunately, TEAS will let you submit an insufficient application, and it does not typically issue refunds. This article will give you an overview of the trademark application process and help you avoid common mistakes, but it’s also important to enlist the help of a skilled trademark attorney..
Items You Will Need to Apply
Before you meet with a trademark attorney, you should have the following materials handy:
- Your business name, and whether you want your company to be the owner of the mark
- The date you began using your mark in interstate commerce
- The date you began using your mark anywhere (for example, with your friends or your with your graphic artist)
- A list of all the goods or services you sell with the mark
- A drawing of the mark, transmittable in electronic form
- At least one “sample in commerce”
Trademark Search and Opinion
Your trademark attorney will begin with a trademark search on the USPTO Trademark Electronic Search System (“TESS”). Your attorney will then write a trademark search opinion, indicating whether any similar registered “live” marks might present consumers with a “likelihood of confusion.” If the likelihood of confusion is low, either because your mark is unique or because similar living marks are in unmistakably different industries, then you should move forward.
Intent to Use Applications
The application “basis” simply means whether you are currently using the mark, or whether you intend to use the mark in commerce. “Intent to Use” applications are for companies that want to hold their place for the word or logo while they prepare to sell the associated product. “Intent to Use” applications must be followed by a “statement of use” within six months of the USPTO’s notice of allowance or the application will go abandoned.
The International Classification
The TEAS system will then ask you to identify your mark’s international class from a list of about 50 different types of goods and services accepted by the World Intellectual Property Organization. You should be able to find your product or service listed in the USPTO’s Acceptable Identification of Goods and Services Manual.
Your Specimen in Interstate Commerce
You must submit at least one specimen of your mark as it is used in the commercial marketplace (e.g., on your product packaging or website). A specimen is generally what consumers actually see when they are trying to purchase your goods or services.
Advertising materials are not acceptable as a specimen, nor are materials used to carry out your daily business, such as invoices or packing slips. The USPTO typically accepts the following specimens:
- A time-stamped, contextual photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
- Product packaging showing the mark as sold in commerce (e.g., detergent soap packaging)
- Signage used in a product display at a store (e.g., a time-stamped photograph of a window display)
- A webpage showing the mark affixed to a product , and also showing purchasing information (e.g. a shopping cart “click to purchase” page).
Tip Regarding Word vs. Design Marks
When applying for a trademark, you must decide if you want to register a simple “word mark” or if you want to register your design, or logo. Since the application fee is the same for a single mark regardless of whether you pick a logo, a simple word phrase, or a combination thereof, you get the most value by registering a “composite” mark, encompassing your words and your logo.
See Your Local Trademark Attorney
Your business name and logo will forever be associated with your product and the goodwill of your company. Searching for similar marks, weighing your options, and preparing and filing a proper trademark application should be handled by a professional trademark attorney.
Enforcing Your Patent
Once you obtain a patent, you have the right to exclude others from making, using, selling or distributing your invention for 20 years from your initial filing date. Enforcement is a tricky enterprise, however. There’s no “U.S. Patent Police.” If you think your patent rights are being infringed by a product in commerce, you should know the steps you can take to enforce your patent.
First, you’ll need to find a patent attorney. Expect to forward an initial retainer, since patent law firms generally do not represent inventor-clients on contingency.
Finding Infringers
If you are a patentee-inventor and you are looking for infringers, there’s no magic trick. Other than scanning the market, the internet, trade shows, and industry periodicals, you might try attending conventions and conferences in your field. You might also consider selling your patent to a “patent troll” whose sole business is finding and forcing settlements with alleged infringers.
What Your Patent Attorney Will Do
Your patent attorney will first offer you an opinion letter comparing the potentially infringing conduct against your patent claims. If your patent attorney thinks you have a “slam dunk” case for infringement, and also believes that your patent will not be invalidated en route to victory, then you should proceed.
Cease and Desist Letters
If you decide to move forward, your patent attorney will start by sending the infringer a cease and desist letter. The letter will notify the infringer about your patent and then suggest they license the technology for a suggested royalty. The letter will conclude with a “final date for response,” after which you promise to sue.
Beware of Patent Misuse
It’s important to know you may not collect royalties before your patent issues. You also cannot collect royalties if your patented technology is not actually used in your competitor’s product.
A significant number of states have already passed laws preventing “bad faith” settlement attempts, condemning them as unfair and deceptive business practices. These laws are designed to stop non practicing entities (NPEs), or trolls, from collecting settlements from companies within the state. Lastly, in your settlement agreement, you may not prohibit your competitor from selling products not covered by your patent, as such clauses hurt competition.
Damages for Infringement
Upon a finding of patent infringement, the court can award you money damages for:
- Lost Profits: This includes damages for collateral sales, price erosion, and accelerated market entry (i.e. what the infringer gained by cheating their way into the market).
- Reasonable Royalty: The typical royalty is the price the infringing party would have been willing to pay to be able to make and sell the patented article in the market.
Other Settlement Factors – Tricks of the Trade
Your infringers have defenses that lessen their desire to sign a licensing agreement. They may be able to change their infringing process or product, and so “design around” your patent. Likewise, your defendant may know of prior art that could invalidate your patent at the Patent Trial and Appeal Board (PATB).
Choose a Registered Patent Attorney
As you can see, patent litigation is a delicate minefield. So if you are an inventor, a patentee or an accused-infringer, it’s in your best interests to find a licensed patent attorney for guidance.
The Copyright Registration Procedure
If you’ve authored a literary or visual work, a sound recording, a motion picture or a screenplay, you most likely want to Register your work with the United States Copyright Office.
Copyright Registration protects, for your lifetime plus 70 years,
- Fixed works in a tangible medium of expression (i.e. in physical form),
- Original works (not raw copies of another author’s work),
- Works created, at least in part, by the author (i.e. pages ripped from your local phone book don’t count),
- Derivative works and compilations, although these works present special challenges, and so should be Registered with the help of an intellectual property attorney.
Copyright does not protect ideas, but rather the expression of ideas. For example, you can’t copyright the idea of a man who time-travels into the past to save humanity in the future. You can, however, copyright the dialogue in your script entitled “The Terminator.”
Benefits of Registration
A work or art or literature is technically “copyrighted” by an author the moment they paint, write, sing, compose, play, or program it. However, only Registration with the U.S. Copyright Office gives certain legal rights and privileges that can be exercised in federal court:
- The right to bring a copyright infringement suit in federal court,
- The right to notify S. Customs for protection against illegal importation of unlicensed copies, and
- Statutory damages and attorneys fees upon finding of infringement.
The only caveat to federal protection is that you must Register within 3 months of publishing your work.
In contrast, mere “registration” with various guilds, or sending your work to yourself through the mail, still forces the writer to prove damages to a jury and to prove the authenticity of their work.
The Process
If you want to protect and sell your intellectual property, you are best off Registering your work through an Entertainment Attorney, who can also negotiate licensing agreements for royalties.
If you are doing the Registration yourself, goto www.copyright.gov. You may upload your work to the United States Copyright Office electronically via the eCO system for under $100 per work if it is:
- An unpublished work,
- A work published only electronically.
The eCO system will prompt you to:
- Complete an application to Register a new Claim,
- Pay the necessary fee,
- Submit, or upload, your “deposit,” or artistic work.
If your work was published, for example on the internet, and you need to memorialize its original publication form, then you can still use the www.copyright.gov site to do the Application. You will then send your work to the Copyright Office by mail.
The process is almost the same as electronically filing an uploaded work. The difference is, at the end of the eCO process, the eCO system will send you a Shipping Slip link. Print and use one shipping slip per work to submit your deposit to the Copyright Office.
For additional questions, you may contact the U.S. Copyright Office at the Library of Congress in Washington D.C.
Whether you’ve built the better mouse trap or you’re convinced your idea for an app would make millions, you may be asking “should I get a patent?” Like lawyers always say, “it depends.”
There are a number of factors to consider when you’re deciding whether or not to patent your innovation. Read on to learn more about each.
TEST FOR DESIGN PATENT INFRINGEMENT
PATENT ELIGIBLE SUBJECT MATTER:
REPORT ON VIEWS AND RECOMMENDATIONS FROM THE PUBLIC
United States Patent and Trademark Office
July 2017
1. The Supreme Court’s Bilski, Mayo, Myriad, and Alice Decisions
Over the past seven years, the Supreme Court has issued a series of decisions— Bilski, Mayo, Myriad, and Alice——that have significantly impacted patent eligibility law and continues to generate substantial public debate.
Bilski, decided in 2010, involved a business method for hedging risk. In analyzing patent eligibility, the Supreme Court recognized that § 101 specifies four independent categories of inventions or discoveries that are eligible for patent protection (processes, machines, manufactures, and compositions of matter), but judicia judiciall precedent provides three specific exceptions to patent eligibility for laws of nature, physical phenomena, and abstract ideas. The Court rejected the view of the U.S. Court of Appeals for the Federal Circuit that the so-called so “machine or transformation test” is the exclusive test for assessing patent eligibility of a process. Under that test, a process claim is patent eligible provided it is (1) tied to a particular machine or apparatus, or (2) transforms nsforms a particular article into a different state or thing. The Court explained that although the machine machine-or-transformation transformation test “is a useful and important clue,” it is “not the sole test for deciding whether an invention is a patent patent-eligible eligible ‘process.’” The Court held that the claims at issue were invalid because they were directed to the unpatentable abstract idea of hedging risk in the energy market and added only token postsolution components, namely, use of well-known random analysis techniques to establish inputs. The Court observed that hedging is a long prevalent fundamental economic practice, and that allowing the patent claims “would pre-empt use of [risk hedging] in all fields” and “effectively grant a monopoly over an abstract idea.” The Court, however, left open the possibility that at least some business methods are patent eligible.
Following Bilski, the Supreme Court in Mayo addressed a method for optimizing drug dosages for treatment of autoimmune diseases in humans. The inventors discovered the relationship between the concentration of a metabolite in the blood following administration of the drug and the likelihood that the administered dosage would be ineffective or produce harmful side effects. The inventors obtained a patent claiming a method of determining whether a given dosage level is too low or too high based on the metabolite level. The Court held the claims to be patent ineligible. In analyzing the claims, the Court introduced a two-step framework for distinguishing patent ineligible concepts from patent eligible applications of those concepts. The first step is to consider whether the claims are directed to a judicially recognized exception to patentability, i.e., abstract ideas, laws of nature, or natural phenomena. If so, then the second question is “whether the claims do significantly more than simply describe these natural relations,” i.e., whether additional elements considered separately or as an ordered combination “transform the nature of the claim” into “a patent-eligible application” of the judicial exception. Applying the first step of this framework to the claims at issue, the Court found that the claims were directed to a law of nature: the relationship between the concentration of a particular metabolite in the blood and the likelihood that a dosage of a drug will be ineffective or harmful. Assessing the second step, the Court determined that the claims did not do “significantly more” than describe this natural relationship, i.e., the additional elements considered separately and as an ordered combination did not “transform the nature of the claim” into “a patent-eligible application” of the judicial exception.
At issue in Myriad was the patent eligibility of claims to isolated DNA (genes) associated with an increased risk of breast cancer, and synthetic DNA created from RNA known as complementary DNA (cDNA). The Supreme Court held that the isolated genes “fell squarely within the law of nature exception.” The Court explained that discovering the location of the genes does not render the genes patent eligible, nor does the act of separating them from their surrounding genetic material. While acknowledging that claims to a product “with markedly different characteristics from any found in nature” may be patent eligible, the Court explained that Myriad’s claims to isolated genes lacked such characteristics because they do not rely on any chemical changes resulting from isolation, and are not even expressed in terms of chemical composition. The Court did, however, rule that the claimed cDNAs were patent eligible because they differed from naturally occurring DNA by the absence of intron regions (i.e., non-coding nucleotide sequences).
Finally, in Alice, the Court reaffirmed the Mayo two-step framework and applied it to claims reciting a computer-implemented process, computer system, and computer readable medium for mitigating settlement risk. Under step one of the framework, the Court concluded that the claims were directed to the abstract idea of intermediated settlement. In assessing step two, the Court considered whether the claim elements, individually or as an ordered combination, “‘transform the nature of the claim’ into a patent-eligible application.” The Court referred to the second step as “a search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Looking at the claims at issue, the Court concluded that mere generic computer implementation does not transform the abstract idea into a patent-eligible invention. Thus, the court held the process claims, as well as the claims to the computer system and computer-readable medium, to be patent ineligible.
a. Computer-Related Technologies
In a large majority of cases pertaining to computer-related inventions, many of which involve business methods, the Federal Circuit has applied the framework to find claims to be ineligible. In several cases, however, the Federal Circuit has held claims involving computer technology to be patent eligible. As discussed further below, often eligibility turns on the presence of a technological solution to a technological problem in the claimed invention.
First, shortly after Bilski and prior to Mayo and Alice, the Federal Circuit considered the eligibility of patents directed to a method for rendering half-tone images of a digital image. The court noted that Bilski “refocused this court’s inquiry into processes on the question of whether the subject matter of the invention is abstract.” The court found “nothing abstract” in the claimed processes “for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” Instead, the court found that “[t]he invention presents functional and palpable applications in the field of computer technology.” While acknowledging that algorithms and formulas play a “significant part” in the claimed methods, the court found that they did “not bring th[e] invention even close to abstractness.” Accordingly, the court found the claims to be patent eligible.
Following the establishment of the two-step test in Mayo/Alice, the Federal Circuit applied that framework in DDR Holdings. At issue was a system for generating a composite webpage by combining certain elements of a “host” website with content of a third-party merchant. Specifically, the claimed system provided that when a user clicks on an advertisement for a third-party product displayed on a host website, the user is directed to a hybrid web page that combines the “look and feel” of the host website and product information from the third-party website. Beginning with step one of the two- step analysis, the court found that the claims did not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Instead, the court found that “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court further observed that “the claims at issue do not attempt to preempt every application of the idea of increasing sales by making two web pages look the same.” Thus, the court concluded that the claimed system was patent eligible.
Similarly, in Enfish, the Federal Circuit determined that claims to a data storage and retrieval system for a computer memory are not directed to an abstract idea. The system at issue incorporated a self-referential logical model, which allowed faster searching and more effective storage of data. As an initial matter, the court declined to “read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Analyzing the claimed invention under the first step of the Alice inquiry, the court found that the claims “are not directed to an abstract idea within the meaning of Alice,” but rather “to a specific improvement to the way computers operate, embodied in the selfreferential table.” The court distinguished from situations in which “general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation,” finding instead that “the claims are directed to a specific implementation of a solution to a problem in the software arts.” Because the claims were not directed to an abstract idea under step one, the court did not proceed to step two of the analysis and concluded that the claims were patent-eligible.
In the same year as Enfish, the Federal Circuit issued three more decisions finding computer-based inventions to be patent eligible under § 101. In Bascom, the court considered the patent eligibility of a system for filtering Internet content. Under step one, the court found the claims to be directed to an abstract idea because “filtering content is . . . a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.” Thus, unlike in Enfish, the court proceeded to step two of Alice. While agreeing with the district court that “the limitations of the claims, taken individually, recite [a] generic computer, network and Internet components,” the court found that “the ordered combination of limitations” recites something more—“the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” The court further noted that the claims do not “preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.” Therefore, the court concluded that “the claims pass step two of Alice’s two-part framework.”
Shortly thereafter, the Federal Circuit determined that a method for automatically animating lip synchronization and facial expression of 3D characters was patent eligible subject matter. The court concluded that the claimed invention was not drawn to an abstract idea, explaining that “[w]hether at step one or step two of the Alice test . . . a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.” The court viewed the claimed invention to be an improvement that “allow[s] computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Thus, according to the court, “[t]he claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters.” The court further observed that the claim “does not preempt approaches that use rules of a different structure or different techniques.”
Finally, in November 2016, the court issued its decision in Amdocs, determining that a computer readable medium and method for collecting and processing network accounting records over a network is patent eligible. The court first observed that prior decisions had found facially-similar claims to be eligible either under step one or step two. The court then explained that even if the claimed invention “is directed to an ineligible abstract idea under step one, [it] is eligible under step two because it contains a sufficient ‘inventive concept’” by “require[ing] ‘computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.’” In other words, in the court’s view, the claims “recite[] a series of limitations that, when considered individually and as an ordered combination, provide an inventive concept sufficient to confer eligibility.” The court further explained that the claimed invention “is narrowly drawn to not preempt any and all generic enhancement of data in a similar system, and does not merely combine the components in a generic manner, but instead purposefully arranges the components in a distributed architecture to achieve a technological solution to a technological problem specific to computer networks.”
Since the roundtable, the Federal Circuit has continued to issue decisions interpreting the Supreme Court’s recent jurisprudence.
USEFUL BLOGS AND PATENT WEBSITES
https://napp.memberclicks.net/napp-blog
https://patentlyo.com/patent/2008/06/ron-slusky-five-2.html
https://calawyersforthearts.org/
https://pct.wipo.int/authpage/signin.xhtml?goto=https%3A%2F%2Fpct.wipo.int%3A443%2FePCT%2F
https://justpatentlaw.blogspot.com/
http://andruslaw.com/news/newsletters/march-2016-newsletter]
http://www.inventorsupdate.com/design-patents-the-first-arrow-in-your-quiver/
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