03 August 2015

Exit Business Method Patents

I've spent some time reviewing the latest material from the USPTO concerning subject matter eligibility. In case you want to have a look, here is the link: http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0.

Business method and e-commerce type applications tend to be reviewed by particular art units. Here are some dismal statistics: http://cpip.gmu.edu/2015/06/27/the-one-year-anniversary-the-aftermath-of-alicestorm/.
The Supreme Court, in the case now known as "Alice" (http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf), set out that advances in non-technological disciplines such as business, law or the social sciences, simply do not count. Any claims that are directed to an entrepreneurial objective, such as a method for increasing revenue, minimising economic risks or structuring commercial transactions, as opposed to a technological method, would not be patent eligible.
You will see from the above link that the USPTO has provided a large number of different examples, both of eligible and ineligible subject matter. It has become practice to review each of those examples and attempt to provide or find analogies between the eligible cases and the invention that is under examination and has been rejected. That said, a golden thread that appears to run through the examples is that any form of economic practice, no matter how complex, or how beneficial to society, is simply rejected because the relevant claim defines an invention that attempts an entrepreneurial outcome as opposed to a technological outcome.
Also, no matter how complicated the economic practice is, it is generally carried out by "generic" computers performing "generic" processes or functions. That would stand to reason, otherwise the commercial model may be flawed. In other words, there is usually no improvement in the operation of the computer or some other aspect that would take the invention beyond what is referred to as an "abstract idea". For example, one may design algorithms that improve the operation of a processor. A processor, so improved, would more than likely be patent eligible. However, designing an algorithm that can be executed by a standard, "generic" processor would more than likely not be the designing of eligible subject matter, particularly if that algorithm were designed to achieve some form of economic outcome, as opposed to a technological one.
It follows that, for rejected applications, the task that we face is to extract some material from the specification that describes some technological advance.

One path out of this morass could be the filing of a continuation-in-part application based on the rejected application. The purpose of doing so would be to rewrite the patent specification in such a way as to emphasise, and seek protection for, the technological aspects of the invention, as opposed to the economic aspects.

Such technological aspects might include the generation of material in a technical manner. For example, one invention that was held to be patent eligible described the generation of a hybrid or composite webpage using information from two other webpages (DDR Holdings LLC v Hotels.com - http://caselaw.findlaw.com/us-federal-circuit/1685815.html). This was deemed to be primarily technical as opposed to economic. In this case, I understand that the resultant composite webpage was actually intended to be used in financial transactions. However, the way that the patent specification was prepared provided basis for a claim directed to the technical achievement of obtaining the composite webpage. In other words, this invention was not regarded as an "abstract idea". Another invention that was held to be patent eligible involved the transformation of data, using encryption.

One of the benefits of preparing and filing a continuation-in-part application is that the specification can be somewhat amplified, although to a limited extent. This can be done by way of clarification. Also, if certain technical aspects are not yet in the public domain, then those aspects can be introduced and built into the claims in the specification. However, in order for the claims to retain the earliest priority date, the claims would have to find basis in the specification as originally filed. That said, the further material added into the continuation-in-part application may very well provide the examiner with the idea that the claims are directed to something more than just an algorithm that achieves an economic outcome when executed by generic computers acting in a generic manner. The reason for this is that the claims are interpreted in light of the specification, not in light of the parent application, even though they take their priority from the earlier application.

Another benefit of the continuation-in-part application is that the application could be directed or allocated to a different art unit. For example, it could be allocated to an art unit that deals with electronics/software as opposed to e-commerce. I believe that this would help significantly. This would require that the application be prepared with a title and an abstract that do not hint at all to economic practices.

A possible example of such new material would be the generation of a tangible product, such as a web page or electronic report, that was more than simply the display of data. Another example might be the generation of a complex database in a dynamic manner, where we introduce material related to the building of the database that is specific to your product and is not merely a "plug-on" which would be regarded as generic.

A potential risk with this is that it may open up further fields of searching for the examiner. This may raise the risk of "inventive step" objections.

Another issue with this approach is that it extends the prosecution process significantly. This may be disappointing if you were hoping for a resolution sooner rather than later. However, there is a chance that, with further time, the USPTO may become a little more accepting of such applications.

Unfortunately, the preparation and filing of a continuation-in part application is, as far as costs are concerned, are similar to the filing of a fresh application. In this case, there would be further costs associated with actually preparing the patent specification that is to form the basis of the continuation-in-part application.

No comments:

Post a Comment