Friday, August 10, 2018

A Modest Proposal to Return Patent Eligibility Law to Sanity

Much has been written regarding the patent "eligibility" morass that the courts created for software/business method patent claims.  This blogger wishes to advance a modest change in law that would straighten out much of this mess.

As many of you might not now, the "abstract" exception to the broad mandate for patent eligibility is a purely court created creature.  As such, the courts can overturn this law that allows anyone seeking to invalidate a software/business method patent application with an eligibility ambush.  Congress can and should also step in.  Indeed, Federal Circuit Court of Appeals Justices Lourie and Newman begged Congress to do exactly that in the Berkheimer cases (see the last posting).

But, what should be the patent eligibility-abstract-idea test?  First of all, this Blogger recommends abandoning that particular exception and allowing novelty (or lack thereof) and obviousness to root out patent ineligible ideas.

Instead, if we must have some sort of "abstract" idea test for eligibility, it should be stated in terms of whether ideas of the type at issue have proved valuable in the past.  So, while Apple's one-click patent, the JPEG patent etc. would likely be found abstract and ineligible under current U.S. law, they are undoubtedly valuable ideas.  Indeed, they added much value to the companies that own them and society at large. 

In the meantime, this test would not require that a particular claim have such value.   Rather, this proposal would grant eligibility to ideas that fall in such potentially valuable areas.  The reason for this proposed change: patents are supposed to protect potentially valuable ideas.  The key word being "potentially" here.  And this rule would return patent law to its intended function while lending a factual basis for determining whether a claim reflects an abstract idea or something potentially valuable. 

We at the Villhard Patent group would enjoy discussing your ideas with you.  You can find more information about us at www.villhardpatents.  Or, you can contact us at contact@villhardpatents or at 512-897-0399.  We look forward to hearing from you.

Monday, August 6, 2018

Patent Eligibility for Software/Business Methods: A Potential Trail Through Death Valley

The courts have made a complete mess out of the doctrine of patent eligibility.  So if this post seems a bit muddled, that wouldn't surprise this Blogger.  But, more specifically, the courts have taken the “abstract” idea exception to patent eligibility to such an extreme that almost nothing can survive the “Alice” test for eligibility. It’s an “exception that ate the rule.” 
Before Alice “anything made by man under the sun” was “eligible.”  Now, the first step in determining eligibility requires determining whether a claim is directed to an abstract idea.   Unfortunately, every idea is abstract at some level.  Take fire for instance.  Fire was nothing more that some ephemeral gases, glowing in the prehistoric dark.  And, hence abstract and ineligible. 
The next step, having failed the abstractedness test, is to determine whether that idea is well understood, routine, and conventional.  According to a recent precedential case (Berkheimer v HP), this step requires more than just prior art.  It requires evidence that the idea was well understood. Theoretically, if pushed, the Examiner must produce evidence that the idea was well understood and -- that evidence must go beyond lack of novelty.
Therefore, at least a part of the abstractness inquiry now fits within a prior art framework.  First, if the claimed idea is found to be abstract, the Examiner must find prior art to show that the claim lacks novelty.  Then, the Examiner must find evidence that the claimed idea was well understood. Then, the inquiry goes on to obviousness. 
Of course, the courts and the Patent Office have the cart before the horse.  They first determine patent eligibility, then go on to (lack of) novelty and/or obviousness.  But, at least, there seems to be a trail emerging to get software/business method claims across the Death Valley of eligibility.
We at the Villhard Patent Goup would be happy to discuss your ideas with you.  You can find more information on us at www.villhardpatents.com.  And you can contact us at 512-897-0399 or at contact@villhardpatents.com.  We look forward to hearing from  you. 

Monday, March 26, 2018

The Worth of a Patent (Application): Well Drafted Verse Self-Written

It bears repeating that technology-based Entrepreneurs usually need a well-written patent application.  This Blogger has inherited applications that were written by talent-challenged drafters.  And we almost always hit a train wreck at some point.

First, the Patent Office will perform an "initial examination." During this phase, they will look for everything from trivial grammatical errors up to more serious issues such as confused writing and hopelessly drafted claims. All of these issues will likely occur in Inventor-written applications. Straightening these issues out, if possible, can cost thousands of dollars.


Eventually the Patent Office will perform a substantive examination. At that time, the claims and written description come under severe scrutiny. If the claims do not measure up (even seasoned Patent Attorneys have issues with claim drafting) they will be rejected as being unclear or missing the point(s) disclosed in the application.


Of course, prior art will raise its ugly head at this point. And the best defense against prior art is having a detailed, thorough application. Otherwise, no recourse might exist to argue around close prior art.

Assuming that the application issues as a patent, its worth will largely be determined by the strength of the claims and the backing those claims have in the description. Poorly written claims can be designed around leaving the patent virtually worthless. This Blogger performed one analysis in which all we had to do was not use a “coil spring” to actuate a particular device leaving us free to move ahead with a competing product.

Lack of a good description in the application can also render a patent subject to collateral attack. And that is doubly true in this age of post-grant reviews of various sorts at the Patent Office. In short, a non-Patent Agent/Attorney has very little chance of drafting a well-written patent application.

We at the Villhard Patent Group would welcome the opportunity to discuss your Intellectual Property. You can find more information about us at www.villhardpatents. Or you can contact us at 512-897-0399. We look forward to hearing from you.

Wednesday, March 21, 2018

HOPE SPRINGS ETERNAL: SOFTWARE AND BUSINESS METHOD PATENTS

Recent decisions indicate that the Federal Circuit Court of Appeals (the court that counts for Patent Law) may be moving toward a “technical arts” test for determining whether software (and business) methods are patent “eligible.”

In many ways this represents good news. For one thing, those of us advising Entrepreneurs can at last give a reasonably good forecast as to whether certain software methods will hit the patent eligibility road block. And if that trend continues (an “if” admittedly) it also tells those of us helping entrepreneurs what to focus the applications on (the technical merits of the idea).

The emerging (perhaps?) trend also lends Entrepreneurs a hand in determining whether to move forward with a patent application for their ideas. And, on a similar note, it helps them identify what to focus on in their discussions with their Patent Attorney. In particular, both the Entrepreneur and Patent Attorney should focus on how the idea helps a computer work better. Better, of course, can be defined in terms of faster, more efficiently, more reliably, and/or doing some other technical feat not previously possible.

The first three points should be self-explanatory. But, perhaps, the latter point needs a little elaboration. In one case, the Fed Circuit found a “self-referential” database to be patent eligible. In short, this new technology included a feature in the software that allowed a database to include a link to itself – self referential. And that was a enough to get that application over the eligibility threshold.

Thus, for now, we at the Villhard Patent Group continue to recommend moving forward with (at least provisional) patent applications for software/business methods. Of course, as we have written in other posts, Entrepreneurs in the software/business methods arena should be aware that patent eligibility will be an issue with their applications.

We at the Villhard Patent Group would welcome an opportunity to discuss this issue with you with regard to your idea. We can be reached at 512-897-0399 or contact@villhardpatents.com. For more information about us please see www.villhard patents.com. We look forward to hearing from you soon.

Friday, September 8, 2017

Software/E-Commerce Patent Eligibility: A Ray of Hope At Last


The category 5 patent eligibility hurricane might at last be abating. 

As readers of this blog know, the last 2-3 years have seen an adverse series of precedential court cases declaring most (if not all) e-commerce ideas and many software-related ideas as being patent ineligible “abstract” ideas.

Fortunately, President Trump has nominated a potential software patent champion to be the Director of the Patent and Trademark Office.  Andrei Lancu, the Appointee, is widely reputed to be a strong supporter of software patents.  While this support might/might not extend across the whole scope of software and e-commerce ideas, it is certainly a ray of hope.  For Mr. Lancu will be in a position to immediately modify (or maybe eliminate) the knee-jerk rejection of patent applications dealing with such subject matter.

He will also be in a position to influence policy in a number of ways.  Congress will likely give his input weight.  And he will be in a position to file amicus briefs (“friend of the court” briefs) in pertinent court cases and related appeals.  Accordingly, the sea change that this Blog Author has long hoped for might be in the forecast.  Be sure to check this blog for forecast updates.

In the meantime, we at the Villhard Patent Group would be happy to discuss your ideas and their potential patentability with you.  For more information about us, please see www.villhardpatents.com or call us at 512-897-0399.  We look forward to hearing from you.

Wednesday, May 17, 2017

Cleaning Up The Patent Eligibility Muck: A Welcome Proposal by The AIPLA



On Friday the American Intellectual Property Law Association (AIPLA) released a much needed legislative proposal to hopefully clean up the muck currently polluting patent (in) eligibility inquiries.  Under current U.S. “law”, the courts have made a muddled mess of patent eligibility (under the relevant statute 35 USC š 101).  And, in so doing, they have cast doubt over the patentability of most e-commerce and/or software inventions.

In short, the Courts have created an “abstract” idea exception to patent eligibility that is so broad, so subjective that few inventions could survive it. And the courts (and Patent Office) have long since disappeared into that un-navigable swamp.  We welcome the AIPLA proposal to clean up this court-created mess.  See: http://www.aipla.org/resources2/reports/2017AIPLADirect/Documents/AIPLA%20Report%20on%20101%20Reform-5-12-17.pdf.

This Blogger supports the proposed eligibility exception which states that a claimed invention would be ineligible “…only if the claimed invention as a whole exists in nature independent of and prior to any human activity.”  Restricting ineligibility inquiries to inventions that exist independently of AND (CAPS Intentional) prior to human activity seem like good ideas.  The proposed prohibition against courts (and the Patent Office) mucking about in prior art and drafting-related inquiries (under 35 USC šš 102, 103, and 112) should further limit the reach of the courts during eligibility examinations. And the strongly restrictive term “only” ought to serves as a long overdue admonition against the courts dragging potentially worthy ideas through the "abstract" idea mud.   

We shall see.  

The only improvement to the proposal that this Blogger would like to see is a safe haven for applications that were pending when (in hindsight) this court-created mess became intolerable.  While such a safe haven would be unusual, so too has been the resulting whole scale destruction of IP rights under the current so-called law.  

We at the Villhard Patent Group would welcome a chance to discuss your idea.  You can find more information about us at www.villhard patents.com or you can call us at (512) 897-0399.  We look forward to hearing from you.