Tag: software patents

Software Patents – Innovation is Usually in the Details

 

The importance of detail in software patent applications (and practically speaking, other categories) cannot be understated. The video discusses some issues around detail in a patent application.

Computer Matchmaking started in the 1960s. Match, Zoosk, and umpteen others have added to the field since then. Expanding upon the insufficiently detailed “dating app” example in the video, the start of a more detailed seed of disclosure for a theoretical patent application would be a dating app with an algorithm that minimizes “catfishing” risk and similar scams by sampling polling the GPS, logging IP addresses, and accessing known Wifi/Bluetooth/NFC beacons. The IP addresses are geolocated and the locations of the beacons are retrieved. The locations from the three sources are compared with the location listed on that dating file. When that person contacts another person, a location probability score is generated, with a high score being that all location sampling input is available and matches each other over time, that location sampling input matches the location on the dating profile, and that location sampling input matches the location on contacted person’s dating profile.

The article discussed in the video: Patent Eligibility: Get Technical or Get Denied

Some takeaways

  • Make an effort to describe the meaningful inventive aspects, that is to say what you have done that other innovators have not. It’s highly unlikely that a patent will be granted for just a “broad idea.”
  • Stating that an “algorithm” is performed is rarely helpful. Disclosing the steps in the algorithm, the inputs, the processing, and the output for each steps is more meaningful disclosure.
  • There are a lot of innovative people in the world. A patent application for just “a dating app,” “a social media app,” or a “security app” is fraught with higher risk and higher cost.

 

The Possible Impact of Alice v. CLS Bank on Chemical Inventions

Below are excerpts of slides from my presentation at an American Chemical Society meeting where I mention the possible impact of the recent Alice v. CLS Bank Supreme Court decision on chemical inventions.

1. What Can Be Patented?

  • 35 U.S.C. 101 – Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,  may obtain a patent therefore, subject to the conditions and requirements of this title.
  • Inventions must be useful, novel, and non-obvious

2. Broad Types of Chemical Innovation

  • Compounds
  • Syntheses/manufacture
  • Modeling
  • Analytical instruments
  • Analytical processes
  • Diagnostic kits/diagnostic reagents
  • Microorganisms, virology, genetics
  • Vaccines
  • Plants
  • Medical devices

3. Alice v. CLS Bank

  • Invalidated claims generally directed to a computerized method for performing a “form of escrow” designed to mitigate the risk that only one party to a financial transaction will perform its contractual obligations at settlement.
  • Invalidated claims recite computer-implemented methods of settling financial transactions, as well as computer-readable media capable of storing, and generic computer systems capable of running, programming instructions for performing the claimed method.
  • Claims directed to an “abstract” idea or a “generic computer” implementation of an abstract idea are ineligible for patent protection
    Imposed significant additional requirements

4. What is “Software?”

Generally two main aspects for any type of software:

  • Algorithms, methods, and other general concepts that describe, at a high level, how the software operates; and
  • Actual computer code for implementing these concepts.

Patents – generally seek to protect the former

5. Software-Based Patents After Alice v. CLS?

USPTO Examination (still developing)

  • Is the claim directed to an “abstract” idea?
  • If so, are there other claim features that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea?

6. Potential Impact to Chemical Patent

  • No impact
  • Narrow the scope of claims
  • Completely ineligible

7. What Chemical Innovations Involve Software?

  • Compounds
  • Syntheses/manufacture
  • Modeling
  • Analytical instruments
  • Analytical processes
  • Diagnostic kits/diagnostic reagents
  • Microorganisms, virology, genetics
  • Vaccines
  • Plants
  • Medical devices

 

8. Highly Speculative Risk Continuum of Impact

Compounds < Instruments < Informatics

Presentation Slides
Is ‘Alice’ in the Chemical Wonderland?

 

United States Supreme Court Ruling in Alice v. CLS Bank – Software is Still Patentable

Recently, the United States Supreme Court decision in Alice v. CLS Bank ruling impacted the scope of software patents. Some opined that software was no longer patentable. The United States Patent & Trademark Office even withdrew notices of allowance for some of patent applications due to the presence of at least one claim having an “abstract idea.” Software and computer implemented inventions are impacted but the change in scope of impact will probably remain unclear for some time to come. The Supreme Court did not abolish software patents but it has increased the standard for eligibility of software patents.

Specifically, the United States Supreme Court unequivocally stated that if you have an idea so abstract that it cannot be patented, simply tying it to a “generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” It also stated that tying an abstract idea to “purely functional and generic” hardware similarly would not make the idea patentable.

The United States Patent & Trademark Office (USPTO) issued preliminary guidelines in response to the decision. The guidelines provides a two step analysis which will apply to process and system claims.

For the first step, determining whether the claim is directed to an abstract idea, the memorandum provides four examples of abstract ideas referenced in Alice:

  • Fundamental economic practices;
  • Certain methods of organizing human activities;
  • An idea of itself; and
  • Mathematical relationships/formulas

If an abstract idea is present in the claim, the examiner should proceed to the next step, 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. Examples of limitations that may be sufficient to qualify as “significantly more” include:

  • 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.

Examples of limitations that are not enough to qualify as “significantly more” include:

  • Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer;
  • 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.

The question of where the line of an abstract idea is drawn is still not clearly defined. I’ll wait for the updated USPTO guidelines, Patent Trial and Appeal Board (PTAB), and court decisions to provide additional clarity.

Post Bilski Commentary For Software Startups

By now you’ve probably read about the “Bilski” decision recently released by the Supreme Court. Most of the coverage has been more focused on the policy aspects of the decision. This post focuses on where a software startup stands from a patent prosecution perspective in light of the decision.

Stepping back for a moment, I’d like to clarify the terms business method and software. In the coverage of the decision, the terms business method patent and software patent have sometimes been used interchangeably. The software startup should have a deeper understanding, as the Supreme Court states a holding for business method patentability but not directly for software patentability. The term business method usually refers to processes for doing business where the process does not require any tangible elements. An example might be a process for administering and accounting for mutual funds. Software, as popularly understood, is generally a set of instructions to be executed by a computer. In the case where the software of a patent application implements a business method, that software might be claimed in the same manner as a business method ie without any tangible elements. In other cases, the subject matter of the software patent application may lead to claiming the software in a different manner. For example, in software that processes radio waves reflected from a surface and generates images, the tangible components, such as a processor, may be claimed. Thus some “software” may fall directly within the scope of the recent decision and some may not.

In the Bilski decision, the Supreme Court rejected the exclusive use of the more restrictive “machine or transformation” test for business method patent applications, which essentially required tangible elements in the claims. It stated that machine or transformation test may be useful, but other tests may also determine whether the patent application contains eligible subject matter. Unfortunately, the Court did not provide any other specific tests, leaving it to future courts to do so.

It should be stated that the Court expressly refused to rule on the patentability of software, stating “[it] is important to emphasize that the Court today is not commenting on the patentability  of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection.” However, the Court also quoted an older court decision saying to “freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology[,] … is not our purpose.” I believe a fair inference from this and prior decisions is that software will remain largely patentable. Thus the software startup seeking patent protection should view the decision favorably.