Category: Blake’s Patents, Trademarks, and Copyrights

Inventors and patent attorneys should read the new USPTO issued instructions in light of the recent supreme court case of Alice v. CLS Bank. The instructions are here. The two part test described in Alice has been restated in the instructions,  and I have copied and pasted them below.
“Two-part Analysis for Abstract Ideas
Following Alice Corp.,  now analyze all claims (product and process) having an abstract idea using the following two-part analysis set forth in Mayo :
Part I: Determine whether the claim is directed to an abstract idea. As emphasized in Alice Corp.,  abstract ideas are excluded from eligibility based on a concern that monopolization of the basic tools of scientific and technological work might impede innovation more than it would promote it. At the same time, the courts have tread carefully in construing this exclusion because, at some level, all inventions embody, use, reflect, rest upon or apply abstract ideas and the other exceptions. Thus, an invention is not rendered ineligible simply because it involves an abstract concept. In fact, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are eligible.
Examples of abstract ideas referenced in Alice Corp. include:

• Fundamental economic practices;
• Certain methods of organizing human activities;
• “[A]n idea of itself; and,
• Mathematical relationships/formulas.

Claims that include abstract ideas like these should be examined under Part 2 below to determine whether the abstract idea has been applied in an eligible manner.
If an abstract idea is present in the claim, proceed to Part 2 below. If not, proceed with examination of the claim for compliance with the other statutory requirements for patentability.

Part 2: If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. In other words, are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea? Consider the claim as a whole by considering all claim elements, both individually and in combination.

Limitations referenced in Alice Corp. that may be enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples:

• Improvements to another technology or technical fields;
• Improvements to the functioning of the computer itself;
• Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

Limitations referenced in Alice Corp. that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples:

• Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computers;
• Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.

If there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, the claim should be rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter (use Form paragraph 7.05.01).
After conducting the two-part analysis, proceed with examination of the claim, regardless of whether a rejection under § 101 has been made, to determine patentability in accordance with the other requirements of 35 U.S.C. § 101 (utility and double patenting), non-statutory double patenting, and §§ 112, 102, and 103.”

On June 19, 2014, the Supreme Court issued a new patent opinion relating to business methods, which can be seen here As a patent attorney, it was necessary that I read the case. These are my observations. Business methods are still available to be patented, as long they pass a two part test: 1. Are the claims at issue directed to patent-ineligible concepts (i.e. laws of nature, natural phenomena, and abstract ideas); 2. if so, do the claims purport to improve the functioning of a computer, or effect an improvement in any other technology or technical field.
The court held that the claims in Alice did not improve the functioning of a computer, or effect an improvement in any other technology or technical field, and therefore were not patent eligible. The abstract idea of Alice was the “use of a third party to mitigate settlement risk”. The problem, as seen by the Supreme Court, was that the claims simply instructed to apply the abstract idea using some unspecified, generic computer, and thus did not effect an improvement in the functioning of a computer or in any other technology or technical field.
What could have Alice (or the original drafters of the patent application) have done to make the claims patent eligibly. The supreme court gives a clue when it discussed Diamond v. Diehr, 450 U.S. 175 (1981), and stated:
“The invention in Diehr used a “thermocouple” to record constant temperature measurements inside the rubber mold—something “the industry ha[d] not been able to obtain.” Id., at 178, and n. 3. The temperature measurements were then fed into a computer,which repeatedly recalculated the remaining cure timeby using the mathematical equation. Id., at 178–179. These additional steps, we recently explained, “transformed the process into an inventive application of theformula.” Mayo, supra, at ___ (slip op., at 12). In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.”
Thus, if the Alice claims used some sort of hardware, or even software that improved the process described in Alice, then perhaps the claims would be patent eligible. Perhaps such software could provide a data window that would pop up at the request of any of the parties to the settlement risk showing the likelihood of any party satisfying their own obligations, thus giving information to the parties that they did not have before, and therefore improving the technical field of risk allocation. Of course that leads to the question of whether risk allocation is a technical field!!

Senator Leahy, D-VT, issued a statement last week stating that patent reform efforts have been taken off the Senate’s agenda. I have been dubious about patent reform targeting patent trolls, because those reforms invariably include independent inventors (who usually do not have the money or resources to manufacture their inventions) as patent trolls. The statement from Senator Leahy can be seen here.

On May 9, 2014, the Federal Circuit (the federal appeals court that generally hears all patent lawsuits), held in a nonprecedential opinion that a patent obtained during a marriage is a marital asset, at least in those states where assets obtained during marriage are considered marital assets. Thus, a non-inventing spouse is a co-owner. The case can be found here.

I would like to congratulate Kelly Stutzman of Hamden, CT for her newly issued patent. Her invention is a Glasses headband cover. I prepared and prosecuted the patent application.

The Law Offices of Michael A. Blake started on April 1, 2004 in West Hartford, CT. 10 years later we are in Milford, CT and San Diego, CA. For the past decade we have been providing high quality and low cost patent, trademark and copyright services to businesses and invididuals. I personally wish to thank all my clients throughout the USA and the world for help making the Law Offices of Michael A. Blake a success!
Mike

HI all. I just participated in a fun panel on Copyright Issues with respect to social media. Four other attorneys were involved, including Tina Willis, a personal injury attorney out of Florida. You can find a video of the panel discussion here.
Enjoy!

I was recently quoted in the Connecticut Law Tribune regarding patent trolls in Connecticut and what the state and lawyers are doing to fight against Non-practicing Entities (NPEs). The article can be found here.

I just added four new patents to my Patents page . These are patent applications that I prepared and were recently issued. One was for salve 070.PN.&OS=PN/D683, rx 070&RS=PN/D683,070″>Cigar Punch for a client in Thomaston, CT. The other was for a salve Packaging System and Method for a client in Oxford, CT. The third and fourth patents were for fish liver extracts that were used for human brain treatment, and that client was in Malta, NY and then moved to San Antonio, TX. Thus, as you can see, I have clients all over Connecticut and the USA.

I am happy to announce that I am once again teaching the graduate engineering course Management of Intellectual Property Assets at Fairfield University, located in Fairfield, Connecticut.
The course will enable students to recognize the different types of intellectual property (IP) and to use corresponding forms of protection. In addition, the students will learn to assess the value of IP to the organization and perceive effective methods for using it to advance important company objectives such as increasing its sales volume, improving its profit margin, or improving the business value, upon its sale. The course also teaches how to determine the monetary value of a company’s holdings in IP and how to establish the policies and processes for protecting them from competition. Throughout the course we will address the legal issues surrounding rights of ownership, the existence of infringement, and technology transfer. The student will develop an ability to recognize the specific issues that distinguish an invention or other form of IP from its potential competition in the market place, causing it to be superior to competitive products or services.
I generally teach this course in the Spring, so if interested, sign up for it in the Fall of 2014.