The War on Patentable Subject Matter: Battlefield Update

A presentation by Professor Ann McCrackin at the Iowa Intellectual Property Law Association Annual Meeting on Saturday, October 24, 2009.  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 if briefly summarized.

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§ 101 Inherency: A Survey of Federal Circuit Decisions

The attached presentation was given by Jim Hallenbeck at the Iowa Intellectual Property Law Association Annual Meeting at the Riverside Resort and Casino in Riverside, Iowa on October 24, 2009.  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 what the negative results may ensue.

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43 Bilski Briefs

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.

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Ex parte Oostenbrugge, Appeal No. 2007-4286 (B.P.A.I. May 22, 2009).

This application is directed to a means for presenting a graphical user interface and for apply 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.

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Ex parte Shahabi, Appeal No. 2008-2472 (B.P.A.I. April 20, 2009)

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 both method and computer readable medium 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.

 

For further discussion , see the reference to this Opinion under Notes of this Group.

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Ex parte Kelly, Appeal No. 2008-4996 (B.P.A.I. Apr. 9, 2009).

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.  I have highlighted the portions of this opinion relevant to the § 101 issues.

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, viz. 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.

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AIPLA Letter in Response to Alison Brimelow's Referal to the EPO Enlarged Board of Appeal

This letter provides the comments of the American Intellectual Property Law Association (AIPLA) in response to the Communication from the Enlarged Board of Appeals concerning case G 3/08 published in the Official Journal of the EPO in January 2009.

The letter is available for download here.

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Patentability of Computer Implemented Inventions in Europe Under Review

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.”

The referral document is here for download.

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Computer Program Product Claim held to be Non-Patentable Subject Matter

The BPAI, in an April 20, 2009 decision, held a computer program product claim falls outside of the classes of patentable subject matter under 35 USC § 101. 

The BPAI stated, "There is no claim language … which defines any structural and functional interrelationship between the data structure and a computer’s software and hardware components which permit the data structure to be realized. As such, the claims are directed to non-statutory functional descriptive material per se because they are not capable of causing functional change in the computer.  See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 194).

This is an interesting holding, but consider the claim at issue:

16.    A computer program product for use in an information handling system, where an operating system environment is present on the information handling system, and at least one add-on module interfaces with a printer driver through an interface module within the operating system environment, the computer program product comprising:

     instructions for registering at least one add-on module with the interface module.

You will note that the preamble is extraordinarily long, although it is arguable where the preamble ends and the claim body begins.  Nevertheless, the BPAI further stated, “[I]f the body of a claim merely sets forth the purpose or intended use of the invention, rather than any distinct definition of the claimed invention’s limitations, the preamble is not considered a limitation and is of no patentable significance. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).”

 

I believe that this decision may seem influenced in part by Bilski, but in the end it is a decision that reminds us to keep claim preambles short and the “meat” of the invention in the claim body.  Additionally, although the BPAI did not address this, it is possible that the single limitation of claim 16 could actually trigger 35 U.S.C. § 112, sixth paragraph which was most likely unintentional.

 

In this instance, I believe the lesson here is to keep § 101 in mind when drafting claims, regardless of the claim type.  The days of the low § 101 threshold are over.  Also, be careful about unintentional invocation of 35 U.S.C. § 112, sixth paragraph.

 

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Guidance for Examining Process Clamis in view of In re Bilski

This memo provides initial guidance for examining process Clamis in view of In re Bilski.  The memo is from John Love and was sent January 7, 2009.  This memo provides insight into the USPTO view of In re Bilski.

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Pre-Bilski USPTO Clarification of "Process" Under 35 USC § 101 Memo Referenced by Bilski Guidance Memo

This memo is pre-Biski, but is referenced by the "Guidance for Examining Process Clamis in view of In re Bilski" memo from John Love on January 7, 2009. 

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The In re Comiskey Opinion

"[C]laims in combining the use of machines with a mental process, claim patentable subject matter."  Top of page 24.

Page 24 of the opinion states, "The routine addition of modern electronics to an otherwise unpatentable invention creates a prima facie case of obviousness."  This is extrapolated by the CAFC from KSR and Dann v. Johnson as cited in footnote 16 of the opinion.

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Bilski Opinion

The Bilski opinion.

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Patentability of Computer Implemented Inventions in the US, UK, Europe, Japan, & China

The attached 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.

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