Patent Eligibility for Software and Business Method Patent Applications

This blog recently expressed a hope that the courts would re-visit business method patent eligibility following the infamous Supreme Court “Alice” decision which eventually opened the door for most business method applications to be held ineligible.  Fortunately, the Federal Circuit Court of Appeals on May 12, 2016 issued the Enfish decision which resurrected business methods – briefly.  

Since then, 3-Justice panels of the Federal Circuit have issued a series of conflicting opinions concerning business method eligibility.  Legally speaking, the issue turns on whether an invention happens to be directed to a mere “abstract” idea.  Practically speaking after reviewing the post-Enfish decisions, the key factor appears to be which group of 3 Federal Circuit Justices makes the determination.  

Our experience before the Patent Office, reflects the same chaos.  Whether an application’s claims are patent eligible depends on which Examiner examines the application.  If this sounds “arbitrary and capricious” it ought to.  Unfortunately, potentially valuable intellectual property (IP) rights should not turn on a flip of the coin.  

So, the question arises, what should business method-based Entrepreneurs do in this unpredictable environment?  For those already a “little bit pregnant” with a pending application, we usually recommend staying the course and fighting the issue while hoping that the full Federal Circuit will straighten out the mess.  For those without a pending application yet, we usually recommend filing a provisional patent application at some point and praying for the same clarifying decision in the meantime.  

For there is one thing that can be predicted with certainty, if you do not file an application (or instead let one go abandoned) you will not get a patent.  Everything else is, unfortunately and with regard to business method patent eligibility, a crap shoot.  

But, do not be too discouraged for in my humble opinion, this situation cries out for a clarifying decision.  If not, many otherwise worthy patent applications are going to fall prey to Enfish.

We at the Villhard Patent Group would welcome an opportunity to discuss the patent eligibility of your business (and/or software) method ideas.  Please see www.villhardpatents.com for more information about us or call (512) 897-0399 to arrange a complimentary initial consultation. 

U.S. Patent Office SXSW Meetup

FYI, the U.S. Patent Office is having a SXSW meetup.  See http://www.meetup.com/Washington-DC-at-SXSW/events/229322299/.  For more details.

And, of course, we at the Villhard Patent Group would be happy to discuss your intellectual property issues with you.  You can obtain more information about us at www,villhardpatents.com or you can call us at 512-897-0399.

Spring Training Report: Prior Art and Prospects

When considering whether to field a patent application most Entrepreneurs consider having a prior art search performed.  Many first time Entrepreneurs view their search as a definitive prediction as to the patentability of their idea.  Yet, wise Entrepreneurs would consider these reports as more of a scouting report predicting what their prospects might be (and before Spring Training even starts).  

 

Like all Internet searches, prior art searches are key-word-based.  Thus, pertinent documents can be missed.  Moreover, irrelevant findings can obscure what technology is uncovered.  For instance, an incorrectly structured search can provide many “hits” in technology having little to do with the Entrepreneur’s idea.  Software, due to the inconsistent use of and meaning for various terms in this industry, bears a particular susceptibility to this problem.  

Additionally, the skill of the searcher affects the search results.  Many of low-cost searchers dump key words into a search engine and hope for the best with no sanity checking of the results.  And those key words might not have been chosen carefully.  Often, indeed, the searcher merely parses a 1 paragraph or 1 page description of the idea and extracts supposed key words from it.  Yet, those descriptions often focus on the advantages that the Entrepreneur believes their idea to bring to the game.  In other words, these passages function more like marketing copy rather than a technical scouting report (description) of the idea.  

Thus, for at least these reasons, prior art searches can provide misleading results much like a team's Spring Training record.  But, even when performed by a skilled searcher, a key-word based prior art search will only survey the field.  Entrepreneurs who have had a search performed should pass the results to a qualified Patent Attorney before committing to their regular season roster (i.e., drafting strategy for their patent application).  

We at the Villhard Patent Group would welcome the opportunity to strategize with you about your potential patent applications.  To obtain more information about us please see www.villhardpatents or call us at 512-897-0399.  We look forward to hearing from you.