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 because, so is the law.  That being said, the courts have taken the “abstract” idea exception to patent eligibility to such an absurd 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, potentially nothing is.  Currently, the first step in determining eligibility requires determining whether a claim is directed to an abstract idea.   But every idea is abstract.  Take fire for instance.  Fire is nothing more than some ephemeral gases, glowing in the prehistoric dark.  And, hence abstract and ineligible. 
The next step for fire, 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.  But as currently used by the Patent Office, a lightening-triggered fire on the African savannah would render fire patent ineligible -- because prehistoric humans "understood" it at some level. Notwithstanding the fact that they knew nothing about how to create it manually.
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  And you can contact us at 512-897-0399 or at  We look forward to hearing from  you.