The slide deck of a presentation by Professor Ann McCrackin at the Iowa Intellectual Property Law Association Annual Meeting on Saturday, October 24, 2009 has been posted to the In re Bilski group under the Reference Info tab.  The presentation was with regard to the Bilski case that is pending before the Supreme Court.  The slide deck includes a summary of all of the briefs filed with the Supreme Court in the case.  Each brief is briefly summarized.

The slide deck of a presentation regarding § 101 inherency given by Jim Hallenbeck at the Iowa Intellectual Property Law Association Annual Meeting on October 24, 2009 is available for download here or under the Reference Info tab of  the In re Bilski group.  This presentation explores the Prometheus decision of the Federal Circuit, how claim elements were found to be inherent in the claims for purposes of finding patent eligible subject matter, and the negative results may ensue.

Take a look at the Prometheus Labs v. Mayo opinion the Federal Circuit issued on September 16, 2009.  The opinion is briefed by both Patents4Life and Patently-O.  In a sense, the Prometheus opinion supports business method patent eligibility.  The method of Prometheus is a method of treatment to essentially throttle or control a subject's metabolic behavior through administration of a drug and monitoring response thereto.  View the subject as a business and a business method as a method of treatment to throttle or control a business through administration of data/commands/other inputs and measurement of a response thereto.  In this sense, it seems business methods are eligible for patent protection.  Post your thoughts in a discussion within the In re Bilski Group.

43 Briefs filed with regard to Bilski before the Supreme Court plus the petition for cert, brief in opposition to cert, and the petitioners reply to the opposition.  All in a single PDF Portfolio for download under the Reference Info tab of the In re Bilski group.

As I am reading through a series of rejections under 35 U.S.C. § 101, the Office Action says everything against a software related invention except that software is per se unpatentable.  What I find funny here is that the Examiner took about three pages to basically say software is per se unpatentable at a time when the USPTO is attempting to increase efficiency to account for their revenue reduction.  If the examiner would have just simply said software is per se unpatentable, he probably would have saved about an hour of time.

I am just a skeptic though.

Anyway, for a good Op-ed on why patentability of computer implemented inventions, i.e., software, is importatant, see Wayne Sobon's writings at

http://www.law.com/jsp/nlj/PubArticleNLJ.jsp?id=1202430926937&slreturn=1.  Wayne is Director of IP in the Legal Group at Accenture.

Word is that the Supreme Court has granted cert in the Bilski case.

A WSJ.com article on the granting of cert http://online.wsj.com/article/SB124386742426172359.html

This application is directed to a means for presenting a graphical user interface and for applying and changing a “skin.”  Oddly enough, there were no § 101 issues raised by the Board.  I guess in certain circumstances, a user interface passes muster under § 101, even in view of Bilski.  The Opinion is posted under Reference Info of this group.

Claim 57 in this appeal was decided under In re Nuitjen where a data packet was construed by the Board to be a non-patentable signal.  However, consider claim 57.

57. A data packet transmitted between two or more computer components that facilitate database query

registration, database change detection and database change notification comprising:

database query registration information, associated with a registered database query, stored in a queue, and employed to construct and transmit a change message utilized to route a database change notification.

It seems likely that this claim could be written in a form that passes muster under 35 U.S.C. § 101.  Perhaps a method of generating a signal or receiving and processing a signal.  Also, I am a bit skeptical of a claim to single packet.  Packetization is typically outside of the control of a database management system.  On the surface, the functionality encompassed by the claim appears to be something that would likely require more than one packet or the claim could easily be avoided by using two or more packets.  However, this application also has 35 U.S.C. § 112, first paragraph issues as noted by the Board, but also with regard to a data packet in the context of claim 57.  Data packets are mentioned only minimally in the specification.  Thus, attempting to rewrite claim 57 might be futile and is likely at least one reason claim 57 was not significantly amended prior to appeal.

The lessons under 35 U.S.C. § 101 from this opinion are pretty good though.  Packets are signals and fail under In re Nuitjen; if you want coverage for signals, claim them as methods of generating, consuming, and/or transmitting signals; and be sure to include sufficient description in the specification to provide 35 U.S.C. § 112, first paragraph support for fall back positions to bring your claims more clearly within 35 U.S.C. § 101.

The Board has been remanding pending appeals to Examiners for consideration under the guidance of John Love’s memo of May 15, 2008 entitled “Clarification of ‘Processes’ Under 35 U.S.C. § 101” in view of the Interim Guidelines and M.P.E.P. § 2106.IV.B.

The standard language used by the Board in remanding appealed applications for further consideration by the examiner is:

“Claims XXX of the instant application are set forth as method claims that may not fall within one of the four statutory categories of invention recited in 35 U.S.C. § 101.  On May 15, 2008, the Deputy Commissioner for Patent Examining Policy, John J. Love, issued a memorandum entitled ‘Clarification of “Processes’ under 35 U.S.C. § 101.’  This memorandum is further used in conjunction with the Interim Guidelines and the Manual of Patent Examining Procedure § 2106.IV.B, when determining whether a claimed invention falls within a statutory category of invention. There is a question as to whether claims XXX meet the requirements of being a patent eligible process under 35 U.S.C. § 101.”

Thus, it seems quite prudent to review all pending appeals to consider whether the pending claims pass muster under the USPTO’s current view of statutory subject matter under 35 U.S.C. § 101.  If the claims clearly don’t meet the current examination guidelines, you appeal is likely to be remanded or simply rejected under a new ground of rejection by the Board.  Your analysis of the claims on appeal should be broader than simply the method claims.  Other postings in this In re Bilski group provide examples of how Bilski is being applied beyond method claims, such as Ex Parte Klosterman.

If you do not believe your claims will withstand a Bilski analysis and considering the time it takes to get an opinion from the Board, unless your client is willing to challenge the current patent eligible subject matter views of the USPTO, consider filing an RCE to return your appeal to prosecution.  Include an amendment with your RCE to bring your claims in conformity to the current USPTO view of patent eligible subject matter.  By doing so, you will eliminate unnecessary wait time to receive an opinion from the Board that is likely to result in a new ground of rejection or remand based on Section 101. 

Citations of example appeals that have been remanded for consideration under 35 U.S.C. § 101.

Ex parte Martino, Appeal No. 2008-4468 (B.P.A.I. Nov. 3, 2008)(order remanding appeal to the examiner).

Ex parte Bhogal, Appeal No. 2009-0632 (B.P.A.I. Jan. 30, 2009)(order remanding appeal to the examiner).

Ex parte Ahmed, Appeal No. 2009-0749 (B.P.A.I. Jan. 30, 2009)(order remanding appeal to the examiner).

Ex parte Sharma, Appeal No. 2008-6308 (B.P.A.I. Jan. 30, 2009)(order remanding appeal to the examiner).

Ex parte Appel, Appeal No. 2009-0845 (B.P.A.I. Feb. 26, 2009)(order remanding appeal to the examiner).

Ex parte Halow, Appeal No. 2007-4550 (B.P.A.I. Apr. 17, 2009)(order remanding appeal to the examiner).

Ex parte Millin, Appeal No. 2009-0698 (B.P.A.I. Apr. 17, 2009)(order remanding appeal to the examiner).

Ex parte Nevin, Appeal No. 2009-1436 (B.P.A.I. Apr. 17, 2009)(order remanding appeal to the examiner).

Ex parte Mohindra, Appeal No. 2009-2651 (B.P.A.I. Apr. 17, 2009) (order remanding appeal to the examiner).

Ex parte Hung, Appeal No. 2009-2845 (B.P.A.I. Apr. 17, 2009)(order remanding appeal to the examiner).

Ex parte Bonnery, Appeal No. 2009-2914 (B.P.A.I. Apr. 17, 2009)(order remanding appeal to the examiner).

This opinion is posted under Reference Info for this group.

In this opinion, the Examiner’s rejections under § 101 are affirmed.  This opinion includes rejections of method, computer readable medium, and apparatus-type claims under Bilski as well as a rejection of computer readable medium claims under Nuitjen.  The opinion includes a brief statement of current “PRINCIPLES OF LAW: § 101” as viewed by the Board.  However, the Board imports the physicality requirement of Bilski without discussing the requirement as a principle of law.  What really seems to be the issue with the claims in this case is that they are directed purely to data processing.  Although the claims state things such as a “database system,” “an article of manufacture,” and “a computer readable medium,” there is no structure recited in the claims and the claims merely provide a result.

The first lesson here I believe is that rather than simply providing a result, go a bit further.  For example, store the result in a memory and the claim may satisfy both the Machine and Transformation legs of Bilski.  Or, transmit the result over a network via a network interface device to the source of the query.  This might not be enough by itself to meet the machine leg, but there are certainly other system elements that could be easily included in the claims.  That is the second lesson here; if the claim is directed to data processing, there are certainly system elements that can be included in the claim without unduly limiting what you intend to claim.  For example, claim 1 includes “processing at least one query using a wavelet transformation to produce a transformed query.”  Instead, the claim could provide, “processing, on at least one processor, at least one query received over a network via a network interface device, the processing of the query including application of a wavelet transformation retrieved from a memory to transform the query.”  This could probably be written a bit better, but there are certainly system elements involved in performing the method of claim 1.  It is doubtful that the applicant intended to claim anything outside of data processing, but through a lack of system elements, the claims fail the machine leg of Bilski.  Further, by only producing a result and not extending the claims a bit further to say what is done with the result, the claims fail the transformation leg.

The current state of § 101 jurisprudence is not as bad as it seemed when the Bilski opinion was released.  However, be sure to review your pending claims to ensure they meet at least one leg of the MorT test of Bilski.

In this opinion, the Examiner is affirmed under § 103, but was reversed with regard to the § 101 rejections.  The BPAI states that the examiner failed to make out a proper prima facie case that the claims were not drawn to non-statutory subject matter.  Portions of this opinion relevant to the § 101 issues are highlighted in the opinion posted under Reference Info of this group.

To summarize, in making out a prima facie case for rejecting the claims as drawn to non-statutory subject matter, the Examiner must:

·         explain findings regarding the nature of the claimed subject matter in comparison to the four enumerated categories of statutory subject matter, (i.e., machine, article of manufacture, process, or composition of matter); and

·         explain analysis regarding how the claimed subject matter falls within one or more of the judicially recognized categories (i.e., laws of nature, scientific principals, and abstract ideas) of subject matter that are excluded from patent protection.

Following calls made the UK Court of Appeal in the recent Symbian case, Alison Brimelow, President of the European Patent Office (EPO) has taken the controversial step of referring the issue of software patentability under the European Patent Convention (EPC) to the EPO’s Enlarged Board of Appeal, which operates independently of the EPO and takes as its only authority the EPC itself.  Ms Brimelow has asked for clarification on four questions regarding the exclusion of computer programs “as such” from patentability, stating that diverging decisions of the Boards of Appeal have created uncertainty.  According to an EPO statement, “It is hoped that the answers to these questions will lead to greater clarity concerning the limits of patentability, thereby facilitating application of the EPC by patent examiners and enabling both applicants and the wider public to understand the law regarding the patentability of programs for computers.”  However, this referral has created controversy.

Nevertheless, as a background to the questions, Ms Brimelow states:

"Even in the 1960s, as the founding fathers of the European Patent Office drafted a new European patent law, it was clear that the patentability of computer programs was a complex issue. Legislative attempts to change or clarify the law in this field have met with more controversy than success, although Article 52 EPC was amended to state that inventions ‘in all fields of technology’ are patentable, thus making an implicit requirement explicit.

As the EPC was drafted, the feeling was that it was better not to define the exclusion precisely in law, but rather that the matter should be left in the hands of the EPO and the national courts. This flexibility is important as technology develops and new technologies emerge. Nevertheless, to quote a working group in 1972: “it was stressed that a matter as important as computer programmes [sic] should not be left in a state of prolonged uncertainty pending legal developments”. Diverging decisions of the boards of appeal have indeed created uncertainty, and answers to the questions arising from these decisions are necessary to enable the further, harmonious development of case law in this field.

Currently there are concerns, also expressed by national courts and the public, that some decisions of the boards of appeal have given too restrictive an interpretation of the breadth of the exclusion. It is clear that the European Patent Office should have the leading role in harmonising the practice of patent offices within Europe.

The four questions have been chosen to look at four different aspects of patentability in this field. Firstly the relevance of the category of the claim is questioned. The next three questions concern themselves with where the line should be drawn between those aspects excluded from patentability and those contributing to the technical character of claimed subject-matter: the second question concerns the claim as a whole; the third, individual features of a claim; the fourth, relevant for defining the skills of the (technically) skilled person, concerns the activity (programming) which underlies the resulting product (computer program).

It is hoped that the referral of these questions to the Enlarged Board of Appeal will lead to more clarity concerning the limits of patentability in this field, facilitating the application of the law by examiners and enabling both applicants and the wider public to understand the law regarding the patentability of computer programs according to the EPC."

The questions are as follows:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

Amicus curiae briefs have been requested and many have been submitted.  Briefs that have been are available for download.  The letter of the American Intellectual Property Law Association is available for download under the Reference Info tab of this group along with Ms Brimelow's referral.

Ex parte Klosterman was decided by the BPAI on April 20, 2009 and held that a computer program product claim fell outside of the classes of patent eligible subject matter under 35 USC § 101.  There are a few lessons in this decision to avoid such rejections.  The opinion is posted under "Reference Info" of this group along with a brief discussion.

A new document posting has been made under "References" within the In re Bilski Group.  The posting includes presentations from a joint committee session of the Electronic and Computer Law, Japanese Practice, and Far East Practice Committees at the 2009 AIPLA Mid-Winter Institute in Miami.  The presentation was moderated by Jim Hallenbeck and the panel was composed of Ann McCrackin of Schwegman, Lundberg; Dr. John Collins from Marks & Clerk's London Office; Kazu Karusus of the Karusu Patent Law Office in Japan; and Robin Zhao of Jeekai & Parners in Beijing.