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.
