by Robert J. Sayre
Colleague, Travis Johnson and I will be fielding patent-related questions at the Venture Cafe in Kendall Square, Cambridge, MA, from 4-5 pm this Thursday, 17 April 2012. Please stop by. Colleague Cynthia Gilbert will join us again next month.
Thanks to everyone who stopped by for last month's Q&A, which was a great success.
And sorry posting has been light thus far this year, though I have been quite busy with WIPO-related work, including coauthoring a patent-strategy book and teaching patent-drafting in Bangkok, Thailand.
by Robert J. Sayre
Per a request from Inovia, I recently wrote a guest for their Foreign Filing Blog, entitled, "Inside Perspective on Patenting at the African Regional Intellectual Property Office", where I shared some insights that I thought readers would find interesting and useful.
Expect more reports from visits to developing-world patent offices soon. Meanwhile, best wishes for a happy and prosperous 2012.
by Robert J. Sayre
"This American Life" on NPR is a great show; and I was quite surprised (and delighted) to see that their most-recent episode focused on patents, "When Patents Attack." Give it a listen, as the program is certainly thought-provoking and offers some interesting insights, particularly with respect to patent litigation in the Eastern District of Texas. I was also delighted to hear my WIPO-teaching colleague, Tom Ewing of Avancept, featured as an expert on Intellectual Ventures (starting around the 40-minute mark).
Nonetheless, as is all too typical, the program is off-target in at least some respects when blasting the patent system. Citing ridiculous patents certainly is popular sport, though it seems no one ever actually reads the purportedly "ridiculous" patents that are cited. For example, when speaking with a so-called, expert, David Martin, they quote him lambasting US Patent No. 6,080,436, entitled “Bread Refreshing Method” (issued in 2000), as covering the making of toast. Well golly gee, wasn't toast already known and doesn't this show how ridiculous and out-of-control the US Patent and TM Office is? Yup, . . . and they move on.
Except it isn't true. A quick look at the claims will tell you that. Among other limitations, claim 1 of this patent requires "setting the temperature of the heating elements between 2500 F. and 4500 F." Does your toaster operate at 2500 degrees Fahrenheit or above? Here's a hint: most traditional heating elements would melt in that temperature range. So suffice it to say that's not a traditional toasting temperature. Maybe the patent is valid or maybe it isn't; but if someone (even respected media) tells you that toast was patented in 2000, well, they're dead wrong, though it does make for compelling press.
Getting to the heart of this episode, though, the program calls into question the ethics of "non-practicing patent holders." Should someone be able to obtain a patent, not practice it, and instead merely try to license the invention to a bigger entity? As a general principal, yes, the inventor absolutely should have that right. The inventor is often not the best person to take a product to market. Many inventors do not have the skill set or resources to mass produce a popular invention, themselves. And, like it or not, we live in a world where ideas, alone, are commodities of value--true inventors should be rewarded whether they bring the invention to the market or whether someone else does. This framework allows for greater specialization and focus.
Of course, sometimes patents are wrongly issued, as the examiner is human and may not always find the best prior art. Over 7 million patents have been granted by the US Patent and TM Office, so no doubt that at least a few stinkers have slipped through; and the patent system will, of course, have to adapt to a rapidly changing marketplace. Though any suggestion that obtaining a patent is easy is patently false, as only a minority of US patent applications are allowed without receiving a final rejection.
Does Intellectual Ventures provide a net benefit to society? Having no direct interactions with them and never having evaluated any portion of their patent portfolio; I, frankly, do not know. Regardless, we need not look far to find many other patent-licensing entities that do provide a clear benefit--our nation's universities, which spin an extraordinary amount of new technology out into the marketplace to drive our nation's economy--though big media would rather focus on "trolls." The patent system certainly isn't perfect, and the results aren't always fair. Though somehow the wonderful stories of inventors living the American dream of capitalizing on their patented inventions seem to get less press than ridiculous suggestions that the US Patent and TM Office is issuing patents on traditional breakfast items here in the 21st century. Sigh, . . . perhaps I need to acclerate my blogging again to share such stories for balance.
by Robert J. Sayre
Is it possible for an old technology company to put together what is essentially a 13-minute commercial describing their contributions to society and make it compelling and engrossing? Yes, it is.
America's top patent recipient, IBM, put together a beautiful film covering it's 100 years of existence and the remarkable string of world-changing innovations it has delivered:
IBM received an astounding 5,896 US patents in 2010. I do not represent IBM, though I am proud to draft US patent applications and responses for another of America's top five corporate patent recipients.
Congratulations, IBM, on setting a remarkable example as to how a company can utilize patented technology to make a huge impact on our world, through its own efforts and via licensing.
by Robert J. Sayre
For years, I have been banging the drum to try to get the USPTO to better broadcast news items via email and RSS. In the 21st century, we have come to expect relevant news to be delivered to us via RSS or email rather than having to search/watch for it.
In another step forward, the USPTO has finally made available a series of email channels for free subscription. And at the USPTO Subscription Center, one can now subscribe to USPTO email announcements for any of the following:
- USPTO Press Releases: Announcements of USPTO initiatives, programs and policies—the same announcements that are provided to the media.
- USPTO Director’s Forum Blog: A weekly interactive blog by USPTO Director David Kappos discussing the latest topics of interest to the USPTO and the intellectual property community.
- USPTO Monthly Activity Reports: A monthly at-a-glance summary of new initiatives, events and significant media coverage during the previous month.
- Inventor's Eye: Inventor's Eye is for and about America’s independent and small entity inventor community. Inventor's Eye comes out every other month.
- Patents Alerts: Receive news, featured stories, event announcements, and tips for using Patents EFS-Web, e-Office Action, PDX and other e-commerce initiatives.
- Trademarks Alerts: Receive updates and announcements on upcoming Trademark system changes, events and roundtables, rules changes, and other Trademarks Operation matters.
Of course, if you are not yet subscribed, you may have missed this news, and the USPTO's timing of this announcement for the week of Christmas did not help; so I wanted to spread the word a bit more with this post (sorry I've been so busy the past few months, which has kept me from blogging). And I hope they also soon offer all of these feeds for RSS subscription, though I have seen no word on that yet, except for the feed for the Director's blog.
Also check out the USPTO on Twitter and Facebook. Staying on top of USPTO initiatives and rule changes is one of the best ways to maximize one's prospects for obtaining an allowance. These new tools make it easier than ever to do so.
Here is the announcement regarding these feeds from the Director's blog.
by Robert J. Sayre
From the African Regional Intellectual Property Office
in Harare, Zimbabwe, this video includes a slideshow depicting the patent drafting workshop with participants from across Africa and a clip of my introduction of the first claim-drafting exercise. More information about my participation in these workshops as an instructor for the World Intellectual Property Organization
is provided on the WIPO-Africa
page, and I will keep the video on the mxlegal home page for a while. Teaching patent drafting in Africa is an extraordinary experience, and I hope you enjoy the video.
by Robert J. Sayre
Mark Nowotarski (@patentbuzz on Twitter) posted a link today to what he described as the first post-Bilski BPAI rejection under 35 U.S.C. sec. 101 (holding the method, software and "computer apparatus" claims patent ineligible) in Ex parte Proudler (Appeal 2009-006599, Application 10/643,306).
After reading the decision and reviewing the claims, what most caught my attention was claim 43, which read as follows:
43. A computer program stored on computer readable media for instructing a programmable computer to implement a method of controlling the processing of data, wherein the data comprises a plurality of usage rules for a plurality of data items, the programmable computer being programmed to apply individualised usage rules to each of the data items based on a measurement of integrity of a computing entity towhich the data items are to be made available, the computer program permitting instantiation of the data items at the computing entity only if the integrity of the computing entity complies with the individualised usage rulesassociated with said data items.
This claim is a bit unusual in that it claimed "a computer program stored on computer readable media" rather than "a computer-readable medium storing a computer program (or software code)," though it is not clear that this semantic difference influenced the ruling.
Interestingly, the Examiner had rejected the claims under section 103 (obviousness) rather than section 101, but the Board acted on its own initiative in crafting the section 101 rejection. In rejecting claim 43, the Board reasoned as follows:
In like manner, independent claim 43 recites in its preamble a direct recitation to a computer program that is said to be stored on a computer readable “media”. Besides falling within our earlier analysis, the manner in which this claim is recited in its preamble encompasses signals per se based upon the correlation of this claim to the signals associated with the Internet at page 4 of the “Summary of the Invention” in the principal Brief on appeal as well as its reference to the teachings of the signaling embodiment associated with networks, including the Internet, at Specification page 11 beginning at line 19. Thus, this claim is directed to include communications media. As such, this claim is inclusive of transitory signaling embodiments, which are proscribed by the early-noted case law. The media of this claim include transitory embodiments, such as to comprise signals per se. Note also the analysis provided by Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
Note that the recitation of the computer readable media in this claim was insufficient to pull this claim from the Bilski-forbidden domain of abstract ideas, as it appeared that inclusion of language in the specification suggesting that the software code can be embodied in a transitory state in communications media poisoned claim 43 by sweeping that environment within the scope of the claim.
Perhaps the Applicant, HP, will appeal the ruling to the federal circuit, though right now in view of this ruling and the USPTO's Subject Matter Eligibility Guidelines (and unless the invention only includes software/signals in a transitory state), prudence may suggest specifying (by definition in the specification) that the storage of the computer program on the computer-readable medium is non-transitory to avoid the hatchet of the enhanced abstract-idea preclusion wrought by Bilski. The USPTO's Subject Matter Eligibility Guidelines suggest that one can amend the claims after filing to specify the "non-transitory" nature of the software/data storage, though one would likely be on the firmest foundation for making that amendment if that language is in the specification when the application is filed.
by Robert J. Sayre
The US Supreme Court finally issued it's long-awaited decision in decision in Bilski v. Kappos earlier today. If this case was a World Cup match, I would say that the opinion represented a shot off the crossbar in terms of very nearly knocking off business-method patents. Nevertheless, opportunities for scoring a business-method patent appear to remain possible in at least some contexts.
The Court's decision was fractured, wherein Justice Kennedy wrote for the court in an opinion that only earned three full concurrences with Scalia joining parts of the opinion to form a majority for those parts. Justices Stevens and Breyer wrote separate concurring opinions.
Everyone expected that the majority opinion would be authored by departing Justice Stevens as his final decision, and it appears likely that the Court had earlier imagined that his opinion would collect majority approval; so it was a surprise, to me at least, that (a) Stevens' strike would have put the ball squarely in the net to knock out business method patents, though (b) his opinion fell one vote shy of a majority and therefore did not yield controlling law. Nevertheless, I urge you to read the entirety of the Stevens concurrence, as I expect it may provide a lasting influence on the continued development of caselaw in this realm.
The Court's decision resolved little, though here is what we can discern:
- The Federal Circuit's "machine or transformation" test is a "useful and important" standard for evaluating the patent eligibility of a process, though the Federal Circuit erred in using it as an exclusive test (Slip Op. at 8).
- 35 U.S.C. 101 does not categorically exclude business methods from patent eligibility--recognizing that at least some methods of doing business may be patent eligible (Slip Op. at 10).
- The Court rejected Bilski's claims (directed to methods for hedging risks in commodity transactions) under section 101 on the ground that they represent abstract ideas (Slip Op. at 13); though as Justice Stevens correctly notes in his concurrence (Slip Op. at 25), "[t]he Court . . . never provides a satisfying account of what constitutes an unpatentable abstract idea."
- Bilski's claims were deemed "abstract" (representing "the concept of hedging") (Slip Op. at 15) notwithstanding that they specified initiating transactions between a commodity provider and consumers and between the commodity provider and market participants and also specified that price is determined by real-world variables, such as weather conditions; in his concurrence (Slip Op. at 24), Justice Stevens suggests that the majority construes these components as "mere 'token postsolution components,'" which are deemed insufficient to save the claim from the forbidden territory of patent-ineligible abstraction.
- The Court approvingly cites its earlier decision in Parker v. Flook, 437 U. S. 584 (1978), holding "Flook stands for the proposition that the prohibition against patenting abstract ideas 'cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding 'insignificant postsolution activity'" (Slip Op. at 14 and 15).
- No indications of any new "safe harbors" for patenting processes were readily evident.
- Justice Stevens (joined by Justices Ginsberg, Breyer, and Sotomayor--i.e., one vote shy of a majority) wrote that "[t]he wiser course would have been to hold that . . . business methods are not patentable" (Slip Op. at 18); citing the grant of patent power in Art. I, Sec. 8, Cl. 8 in the US Constitution (granting Congress the power to "promote the Progress of . . . useful Arts"), Stevens further asserts that business methods cannot be deemed to qualify as "useful Arts" as that term should be understood in view of its historical context (Slip Op. at 38-40).
- Justice Stevens and his plurality of four suggest that it would be comical to render any of the following sorts of processes patent-eligible: "a process for training a dog, a series of dance steps, a method of shooting a basketball, maybe even words, stories, or songs if framed as the steps of typing letters or uttering sounds" (Slip Op. at 29); though those who follow patents closely recognize that many US patents have issued in recent years covering processes very similar to what he here characterizes as "comical"; Breyer also piles on, citing a lampoon of "ridiculous" and "absurd" patents such as a "method of training janitors to dust and vacuum using video displays," a "system for toilet reservations," and a "method of using color-coded bracelets to designate dating status in order to limit 'the embarrassment of rejection'" (Slip Op. at 70-71)
- In his concurrence, Stevens also appears to base his opinion, at least in part on "serious doubts about whether patents are necessary to encourage business innovation" in view of the competing and conflicting interests of promoting innovation and not unduly limiting the freedom of others via patents (Slip Op. at 57).
- The Court provides no direct (or even indirect) ruling on software patents or patents directed to anything other than processes; consequently, the Court's decision does not in any way appear to me to restrict the ability of inventors patent software (when framed, for example, as a computer-readable medium storing software code); and I accordingly believe that software remains safe for patenting (at least when framed as a product if not as a process) in the United States; not as clear is the potential impact on inventions relating to medical diagnostic techniques, such as that at issue in Mayo v. Prometheus.
In sum, business methods took a pounding today from the Court and very nearly were knocked out, though opportunities for patenting remain at least (a) if you can frame the process as being non-abstract or (b) if the process is computer-implemented, framing the invention as a product--e.g., as software stored on a computer-readable medium.
by Robert J. Sayre
Everyone with any interest in patents on business methods or software has been eagerly awaiting the decision of the US Supreme Court in the Bilski case. The Court issued at least a half dozen decisions today and still no Bilski. So we now have just one decision day left in the Supreme Court's term--Monday (unless the Court adds another decision day for later in the week), and the widely held expectation is that the Court will not put off any decisions until next term.
Where can you watch for the near-real-time news? Tune in to SCOTUS blog on Monday morning.
by Robert J. Sayre
Sorry for my long absence from this blog. This past month was the busiest that Modern Times Legal has seen since opening shop almost three years ago; and the practice has been non-stop busy since at least December of last year, so count my experience as one small data point for increasing economic recovery. Nevertheless, I will try hard to accelerate my posting, as I still have dozens of ideas for what I think will be interesting posts.
My last post cited rumors that the Supreme Court's decision in the Bilski case was imminent. As the decision still has not issued, those rumors were false. Nevertheless, what can we derive from this remarkably long wait for the Supreme Court's decision?
- The Supreme Court Justices may be strongly divided as to the patent eligibility of business methods and, potentially, computer software.
- Nevertheles, the Supreme Court's decision will almost certainly issue within the next month, as the Court's current term wraps to a close.
- The Supreme Court very likely will not simply affirm the Federal Circuit's "machine or transformation" test, unless they have four votes to affirm and another justice finally wears down (this strikes me as unlikely). As more time passes, the likelihood that the Court's Bilski decision will shake up the standard increases. In recent patent cases, the Supreme Court has not been shy about reversing and scolding the Federal; and I do not expect that disposition to change here.
- Accepting that we will have a new standard, I pin the odds at only slightly more likely than not that the Supreme Court will broaden (or relax) the standard of patent eligibility, as opposed to closing the door even further on the patentability of business methods and software.
- I expect that the Supreme Court is dissatisfied with the Federal Circuit's test but is having a very hard time generating an alternative test (that will satisfy five Justices); consequently, the likelihood of having a full majority opinion may be decreasing, which may result in a more limited decision that can secure the votes of five Justices.
- The Supreme Court Justices are a smart group, and they have very smart clerks; so I am optimistic that the expected new standard will be well reasoned, though it may well be controversial.
- What the Court lacks, though, is practical experience with patents as well as extensive expertise in science and engineering; so the risk is that they may not appreciate all of the real-world nuances and ramifications, and they may have a hard time appreciating that there is no clear distinction between tangible and intangible ideas (ideas when put to practical use always have some physical manifestation, whether in computer memory or in the human brain); so facile determinations based on concepts of "tangibility," though superficially attractive, are ultimately likely to be highly arbitrary and artificial.
- What I expect the Court will find and appreciate, however, is that even if one takes a static view toward the standards patent eligibility over time, largely abstract processes have long been patentable, as evidenced by Samuel Morse's patent for Morse Code issued more than a century and a half ago, a point the majority of the Federal Circuit appeared to conveniently ignore.
- The Court will appreciate the increasing importance of software and other more-abstract concepts to the American economy, and they will appreciate the risks and dangers of disrupting existing expectations too much; so I think it unlikely that most software, for example, will be barred from patent eligibility.
- Finally, to the extent that a safe harbor can be counted on, the integral tie-in of actors, elements and/or phenomena outside of a computer and outside the human mind are likely to be the safest bet in terms of providing solid footing for patent eligibility.
My advice to clients with pending business-method and software-related applications has mostly been to wait for the decision before responding to outstanding Office Actions where feasible and, for those who are planning to file, to just file a provisional application now and wait for the Bilski decision before filing the non-provisional, though these decisions always hinge upon a host of considerations based on the client's particular circumstances.
I will certainly provide my thoughts when the decision issues. Subscribe to the RSS or email feed for this blog to receive notice when that post goes up.