Posts Tagged: "abstract ideas"

Earlier this year the Supreme Court issued a ruling in Alice Corp. v CLS Bank Int’l, which applied the Mayo 2-part test to computer-implemented subject matter.[2] The 2-part test asks: (1) whether the claims at issue are directed to patent-ineligible concepts; and (2) if yes, is there something “significantly more” in the claim to ensure that the claim is not…

The judge made exception to §101 for laws of nature, natural phenomena, and abstract ideas exists because a patent on these would impede innovation more than promote it, contrary to the primary objective of patent law. As the Supreme Court emphasized, we must distinguish between claims to the building blocks of human ingenuity versus those that integrate the building blocks into something more. The former would risk pre-empting or disproportionately tying up the use of the underlying ideas – to the detriment of progress in the useful arts. Basically, the purpose of the Mayo test is to ensure that patent law not inhibit further discovery by preempting or improperly tying up the future use of building blocks of human ingenuity.

While there can be disingenuous arguments made about the abstractness of a media product or a sponsor message, who in their right mind could ever even suggest that “an Internet website” is abstract? Is “an Internet website” abstract? Is the “general public” abstract? Is a consumer abstract? Contemplate these questions as you, a member of the general public continues to read this article on this Internet website! We apparently have jumped the shark and turned the law of software patent claims into a useless, ridiculous philosophy assignment that asks whether something that clearly exists doesn’t exist. So are you, a consuming member of the general public who reads Internet websites real, or are you abstract?

A troubling aspect of the analysis in the Alice opinion is the suggestion that an invention, once patent eligible, can become patent ineligible simply based on the passage of time and public adoption. Dialogue in the oral argument as well as statements in the Court’s opinion suggest this line of reasoning, which arguably originated in Bilski, has become an accepted principal . . . An invention may initially be susceptible to patenting but may later become ineligible for patenting (as opposed to becoming unpatentable due to lack of novelty or obviousness) as it becomes more adopted, ubiquitous, successful or commonplace. Ubiquity, it would seem, is now the touchstone not only for patentability but for patent eligibility too.

There is a further gulf between those who view In re Alappat as sound logic and engineering (ABL, AIPLA, Alice, Mr. Ronald Benrey, BSA, CCIA, Mr. Dale Cook, Prof. of Computer Science Lee A. Hollaar, IEEE-USA, Microsoft) and those who it as mistaken (Electronic Frontier Foundation, Prof. Robin Feldman, Red Hat) and primarily responsible for an increase in such patents (Electronic Frontier Foundation, Google, “Law, Business and Economics Scholars”). The IEEE-USA provides an excellent analysis of the relationship between software and hardware, pointing out the incontrovertible principle of equivalency, that “special-purpose programming of general-purpose hardware” is “equivalent to special-purpose hardware,” though IEEE-USA fails to mention that this is a fundamental principle of computer science, as established by Alan Turing in the 1930s. To assert, as does the EFF, that the Federal Circuit “concocted” the equivalency of hardware and software goes beyond denying the foundational work of Turing and others. The equivalency of software and hardware is what makes it possible for Java to run on any type of computer using the Java Virtual Machine, as well the electronic design automation industry, which enables complex electronic circuits to be entirely designed in software before being implemented in hardware.

The fractured views of the world begin with the question presented, and reflect how different parties frame the debate in very different terms. Alice’s merits brief presents the question before the Court as “whether claims to computer implemented inventions…are patent-eligible.” Putting the question this way allows Alice to place its inventions and claims in the larger context of all computer-implemented inventions, the subtext being that if the Supreme Court holds that computer-implemented inventions are patent eligible—which is a fair bet—then Alice’s patents should be valid. Further, phrasing it this way allows Alice to distance itself from pure business method claims from the invalid claims in Bilski v. Kappos.

Broadly construing and applying the abstract ideas exception would jeopardize countless patents and patent-fostered innovations that are providing real, tangible benefits to all levels of society, and that are helping to fuel the domestic and global economies. Indeed, it is impossible to overstate the economic importance of software and other computer- implemented inventions. Virtually all industries now use computer-implemented inventions in some way… Notably, and notwithstanding the alarmist complaints of some interested parties that are most dependent upon computer-implemented technologies, high-tech industries are neither stagnating nor suffering from a dearth of innovation. To the contrary, these industries are highly competitive, vibrant fonts of innovation and economic vitality. The availability of patent protection for computer-implemented inventions has been a spur, not a bane, to their growth and development.

… in order to handle the messy reality that the system claims, illustrated above, are clearly not abstract under any intellectually honest definition, they merely say that if the method and computer readable medium claims are not patent eligible neither are the system claims because… well just because. It seems inventions rise and fall based on what the applicant really wants to protect, not the claims… Assuming you have snapped back from the Twilight Zone yourself you may be hearing in your head the clanking of coconuts as several Monty Python players exit stage left in search for the holy grail! Of course, regardless of whether the coconuts migrate, those coconuts are are obviously abstract and not tangible, clearly not patent eligible and a fiction of your imagination. Therefore, you really can’t be hearing the coconut clanking noise because imaginary non-migratory coconuts that don’t exist can’t be banged together to make a sound.

All the Judges rely on the same Supreme Court precedents in Gottschalk v Benson, Parker v. Flook, Diamond v. Diehr, Bilski v. Kappos, and Mayo v. Prometheus. All the Judges recognize the same judicial exception to statutory subject matter under §101 for laws of nature, natural phenomena, and abstract ideas. All the Judges recognize that a claim must include “meaningful limitations” that go beyond an abstract idea. Hollow field-of-use limitations and insignificant pre or post-solution activity don’t count. However, this is where their similarities end.

For goodness sake stop thinking that you will get rich by selling your idea to industry and sit back and collect royalty checks for doing nothing. If inventing were that easy everyone would be a filthy rich inventor! Many people will have great ideas, but what separates those who can turn their ideas into money from those who cannot is a strategy to define the idea enough so that it can become an asset that can be protected.

So how do you decide whether you have a mere idea or a conception that is on the road to a full blown invention? That is a difficult question to answer and one that has few, if any, bright line rules or useful generalizations. What I would say, however, is this: If you can sketch out the invention on paper (in the case of a device) or list the steps (in the case of a process) you likely have something that is tending toward the invention side of the idea-invention continuum. When you are at the point where you can describe the uniqueness of your idea in comparison to other patents and pending applications then you are again tilting heavily toward the invention side of the idea-invention continuum.

This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.