Patenting Computer Implemented Inventions in the US
•Download as PPTX, PDF•
1 like•271 views
This document discusses patenting computer implemented inventions in the US. It provides an overview of patent eligibility requirements, including the importance of foreign associates, the two-part test used to determine eligibility, and strategies for drafting eligible claims. Key exceptions to eligible subject matter are products of nature, natural laws/phenomena, and abstract ideas. The US takes a more strict approach than Europe, requiring improvements to technology rather than commonly known technical means alone. The document advises focusing claims on technical improvements and analogizing to eligible examples to overcome eligibility rejections.
Recommended
More Related Content
What's hot
What's hot (20)
Similar to Patenting Computer Implemented Inventions in the US
Similar to Patenting Computer Implemented Inventions in the US (20)
More from Knobbe Martens - Intellectual Property Law
More from Knobbe Martens - Intellectual Property Law (20)
Recently uploaded
Recently uploaded (20)
Patenting Computer Implemented Inventions in the US
- 1. Patenting Computer Implemented Inventions in the US Vlad Teplitskiy November 1, 2018
- 2. ©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved.© 2018 Knobbe Martens 2 Introduction
- 3. 3© 2018 Knobbe Martens Importance of Foreign Associates • Important to have trusted partners in foreign countries who can provide assistance – Review specification and claims – Assist with best practices for local jurisdictions (e.g., patentable subject matter, deferral of costs, divisional strategy, assignments, etc.)
- 4. 4© 2018 Knobbe Martens Value for Money • Close relations between US/foreign practices – Reduce miscommunications – Matching of competence in IP and technology – Exchange of ideas • Reduce divisional filings • Proactive prosecution
- 5. 5© 2018 Knobbe Martens Transparency • Predictability of fees • Direct contacts to the person managing a case • Risk management • Predictability of results Bad News • Appeal necessary • Missed convention priorities • Patent eligibility refusals • Close partners split – forced choice
- 6. ©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved.© 2018 Knobbe Martens 6 Patent Eligibility
- 7. 7© 2018 Knobbe Martens Eligible Subject Matter 35 USC§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 therefor.... Similar to Article 52 EPC
- 8. 8© 2018 Knobbe Martens Exceptions to Eligible Subject Matter • Judge-made exceptions to patent-eligible subject matter – Products of Nature – Natural Laws / Natural Phenomena – Abstract Ideas / Mental Processes • Similar to Article 52(2 and 3) EPC exceptions
- 9. 9© 2018 Knobbe Martens State of the Law Before 2014 Claimed invention is patent-eligible if: 1) it is tied to a particular machine or apparatus; or – similar to the European approach of commonly known technical means being sufficient to confer technical character and fulfill the requirements of Art 52 EPC 2) it transforms a particular article into a different state or thing
- 10. 10© 2018 Knobbe Martens Current State of the Law: Two-Part Test • Threshold inquiry (Step 1) – Is the claimed invention directed to an abstract idea? – If not, then the claimed invention is patent eligible • Inventive concept inquiry (Step 2) – Do the claimed elements alone or in combination state significantly more than the abstract idea? – If yes, then the claimed invention is patent eligible
- 11. 11© 2018 Knobbe Martens Examples of Abstract Ideas • Fundamental Economic Processes • Idea “Of Itself” • Mathematical Relationships/Formulas • “Certain” Methods of Organizing Human Activity
- 12. 12© 2018 Knobbe Martens US Is More Strict than Europe • To be non-abstract, there must be improvement to operation of computer or another field of technology – Unlike Europe, these improvements are measured relative to state of the art at the time of invention/filing • To recite inventive concept, claim must recite more than conventional implementation using generic computer components or machinery – Unlike Europe where “commonly known technical means in a claim are sufficient to confer technical character and fulfill the requirements of Art 52”
- 13. 13© 2018 Knobbe Martens Strategies for Patent Eligibility • Focus the claims and the specification on technical improvements to computer technology or another field of technology – Submit evidence showing state of the art and significance of claimed technology during prosecution • Analogize the claims to eligible claims in the Patent Office Guideline and Examples • Avoid Technology Center (TC) 3600, which examines “business method” cases – Amend Title, Abstract, Field of Invention and Claim Preambles to present technical aspect of invention – If the application is in TC 3600, always interview (may require amending the claims)
- 14. Orange County San Diego San FranciscoLos Angeles Seattle Washington DCNew York Thank You! vlad.teplitskiy@knobbe.com
Editor's Notes
- Association for Molecular Pathology v. Myriad Genetics, Inc. (2013): Natural Phenomena Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012): Natural Laws Alice Corporation Pty. Ltd. v. CLS Bank International (2014): Abstract Ideas All three cases held that a significant difference from a judicial exception is required to present patent-eligible subject matter
- In re Bilski (2010)
- Changes made to curb litigation by non-practicing entities
- Fundamental Economic Processes Agreements between people Performance of financial transactions Mitigating risks Hedging Mitigating settlement risks Idea “Of Itself” An uninstantiated concept or plan Can be performed with pen and paper or in human mind An idea having no particular concrete or tangible form Mathematical Relationships/Formulas Mathematical concepts Algorithms Equations Formulas Calculations “Certain” Methods of Organizing Human Activity “Certain” means: interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior, satisfying and avoiding legal obligation; advertising, marketing, and sales activities or behaviors; and managing human mental activity Not all methods of organizing human activity are Abstract Ideas Does not cover human operations of machines
- Improvement. See Enfish v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016) More than conventional implementation. See TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607 (Fed. Cir. 2016).
- Submission of evidence during prosecution. See Data Engine Technologies v. Google, Inc. (Fed. Cir. Oct. 9, 2018)