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Claiming Priority to Provisional Applications
As the following chart demonstrates, provisional patent applications are increasingly relied upon by US patent applicants. More than 1/3 of recently issued utility patents of US-origin claim priority to at least one provisional application. (Here, I defined US-origin as patents that do not claim priority to any prior foreign or international applications). Of applications that claim provisional priority, most (~80%) claim priority to only one provisional application.
I have written previously that provisional applications are serving their intended role of adding 1-year delay to the prosecution process. By design, the US 20-year patent term does not begin until the filing of a subsequent non-provisional application. Thus, a provisional application has the dual benefit of (1) establishing an early priority date for patentability while (2) shifting the patent term one-year later.
For the cumulative frequency chart below, I created a dataset of about 165,000 patents that have issued since January 2005 and that claim priority to at least one provisional patent application. For each patent, I identified the number of days between the filing of the earliest provisional application and the subsequent non-provisional application. According to the Patent Statute, a non-provisional application must be filed by the 12-month deadline or else be deemed abandoned. About 40% of the non-provisional applications were filed within one day of the 12-month deadline. About 70% were filed within two-weeks of that deadline.
Guest Post: Where do Processes of Nature End and Processes of Human Invention Begin?
The following excerpt comes from Professor Robin Feldman's forthcoming Harvard University Press book Rethinking Patent Law which will be released in 2012. The excerpt is reproduced with permission from Harvard and Professor Feldman.
Looking from the perspective of preemption can be helpful in developing an approach to many of the questions generated by the emerging field of personalized medicine. Personalized medicine is an area of applied research devoted to developing tests that operate on biological and clinical data from a patient (e.g., protein levels, genetic mutations, medical history) to provide diagnoses, prognoses, and treatment regimens specific to the patient. Cases arising in this field include LabCorp, which concerned correlating elevated homocysteine levels with certain deficiencies, and Prometheus, which concerned determining metabolite levels after administering a particular class of drugs for gastrointestinal disorders and adjusting the dosage of the drug based on the metabolite levels.
As discussed earlier, the Federal Circuit's decision in Prometheus seemed to suggest that most life science inventions would satisfy the requirements of patentable subject matter, while the PTO's application of Prometheus could lead to the rejection of numerous inventions in this arena. Neither extreme is necessary if one focuses on preemption of laws of nature and natural phenomena as the primary concern.
For example, LabCorp was a relatively simple application of personalized medicine. It involved one biomarker and a reasonably straightforward correlation for treatment. In contrast, most personalized-medicine diagnostics are developed using whole genome expression or sequencing arrays to identify hundreds or even thousands of biomarkers that can be used to diagnose a specific disease state. The machine learning algorithms used to identify these markers do not operate on statistical concepts as simple as linear correlation, which for some of us is complicated enough. Machine learning algorithms employ statistical models to identify different combinations or "patterns" of markers that correlate with a specific disease state. Usually these markers are selected and statistically modeled to compensate for human genetic and environmental variation.
Thus, most personalized-medicine programs are tremendously complex compared even to logistic regression and other simple forms of statistical analysis. They are not simply a reflection of a natural phenomenon; they are an interpretive model of nature. Nor are they analogous to or preemptive of human thought. It would be quite improbable for a physician to be able to sit down with a pen and paper and work out a diagnostic by applying a machine learning algorithm or logistic regression to hundreds of biomarker levels.i
Consider the first person who discovered that human chorionic gonadotropin (hCG) levels indicate pregnancy when they are elevated above a certain level, and assume that the inventor also created a home pregnancy test for measuring the hCG. One could think of this as a simplistic personalized diagnostic device in which a particular nongenetic marker is measured to identify a state of health. The inventor could certainly patent the kit, which would consist of the physical device with its particular components. The inventor should not, however, be allowed to patent the process of testing human urine for an elevated level of hCG and correlating that level with the state of pregnancy. The core of the invention, the fact that hCG above a particular level confirms pregnancy, is a simple reflection of nature rather than an interpretive model. To understand the difference, compare the process of measuring one marker by looking for a simple level to the average personalized invention. The modern personalized invention may utilize hundreds of biomarkers analyzed by means of statistical patterns. Even if the complex process involved in identifying the relevant biomarkers yields a limited number of biomarkers to consider for a relevant patient, that information does not relate directly to anything. For example, with a personalized medicine invention involving only a few biomarkers, each of those markers generally has confidence intervals assigned to indicate the likelihood that the presence or absence of a factor or the particular level of that marker will translate into a particular diagnosis or successful treatment. Once biomarkers are collected from a relevant patient, they must be processed by statistical modeling to determine how the various factors and confidence levels for this particular patient should be interpreted. The complexity and variability of individual humans ensures that a model like this can never be a simple reflection of nature. Rather, it is no more than an interpretation of nature, albeit one that is extremely important in the treatment of a specific disease.
In contrast, the inventor of the method of measuring hCG is looking at only one marker, and it is a marker that is elevated in the same range for pregnant women in general. Thus, it requires no complex modeling and is a direct reflection of a phenomenon of nature. As a result, it would not be patentable subject matter on the grounds that the core of the invention is no more than the discovery of a natural phenomenon.
The hCG invention should also fail on the grounds that performing the test is no more than a mental step. The method does not require complex computer analysis to interpret the data; it requires observing a particular level of a substance and reaching a conclusion from that level. Preventing human beings from looking at information and concluding something threatens to preempt simple thought.
Personalized medicine, with its marriage of biology and computer technology, provides a wonderful opportunity to understand and tease out some of the threads of patentable subject matter. These inventions demonstrate how early misconceptions about the nature of computer programs and the nature of mathematics are causing problems in modern case law.ii
Part of the difficulty can be traced to confusion between the content of something that is being expressed and the language in which it is expressed. For example, we know that laws of nature are not patentable. Some of these laws are familiar to us in the formulaic language in which we normally see them expressed. Most people, for example, would recognize one of Einstein's laws of physics expressed as E = MC2. One could express that same law in prose, however, rather than formulaic language by explaining the way in which matter and energy are interchangeable.
The choice of language is irrelevant.iii We disallow patenting of E = MC2 not because it is expressed in mathematical form but because it represents one of the building blocks of scientific exploration and endeavor. Patenting that law would preempt scientific exploration by occupying a basic concept.
In addition to laws of physics, other things can be expressed in formulaic language. Expressing something in formulaic language, however, does not mean that what is being expressed is a law of nature. Thus, the fact that computer programs are expressed in a formulaic language that looks somewhat like math to the layperson does not mean that the concepts underlying a particular program are analogous to math, let alone analogous to a law of nature. Two things expressed in the same language or the type of same language are not necessarily analogous. Comic books and the Constitution are both expressed in the English Language, but they are hardly analogous. Our focus should remain on the content of what is being expressed and on the preemptive effect that might result from patenting that type of content.
Some unfortunate language in the Supreme Court's Diehr opinion, which flows from this misperception, makes it more difficult to properly separate software claims that should be patentable from ones that should not. In searching for logic to explain why the rubber-molding invention at issue was patentable while other apparently similar inventions had failed, the Court made the following comment: "A mathematical formula as such is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment."iv
Other courts have jumped on the language to declare that so-called field of use restrictions cannot save software patents.v Even the recent Supreme Court opinion in Bilski wandered into the same territory when referencing its earlier decision in Flook:
Flook established that limiting an abstract idea to one field of use . . . did not make the concept patentable. That is exactly what the remaining claims in petitioners' application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.vi
It is true, as a general matter, that if one were to claim a law of nature, the claim would not be rendered patentable by limiting use of that law of nature to a particular field. Thus, for example, an inventor could not save a claim to all uses of E = MC2 by limiting the claim to "all uses of E = MC2 in the construction field."
Sliding the analogy over to software, however, involves logical errors. The logic that appears to have been used is the following. Computer programs are mathematical formulas, and mathematical formulas are laws of nature. We know that laws of nature cannot be rendered patentable by limiting their application to a particular field of use. Computer programs, therefore, cannot be rendered patentable by limiting their application to a particular field of use.
This sequence contains a number of logical errors. Computer programs may be expressed in a language that looks like math, and some do involve calculations, but they are not necessarily analogous to mathematical formulas. Most important, they are not analogous to natural laws just because both are expressed in formulaic languages. One must look to the content of the computer program and its potentially preemptive effect to determine patentability.
As described earlier, the term "algorithm" in computer science means a series of steps performed on input data by a computer. This process may or may not raise preemption concerns. Some computer "algorithms" are based on properties inherent in types of input and output data. Such broad, generic algorithms, which can be used on a variety of types of input data, may raise threats of preemption. In other words, if an inventor asks for a patent on a software program that works with whole sets of numbers or entire types of data, such a patent would not be patentable subject matter. Particularly in light of the bargaining potential that would come with such a grant, the patent would risk tying up entire types of data rather than constituting something applied.
This does not mean that all software is unpatentable. Claims to programs that are applied to a specific type of data in the pursuit of particular types of outputs do not present the same level of preemption threat. For example, a personalized medicine algorithm (i.e., series of steps) that employs a specific type of statistical model using a fixed set of markers to produce a very specific diagnosis would not threaten to preempt other methods of performing the same diagnosis that use different markers or novel types of statistical models. Such an invention should be patentable.
Computer programs may be many things, including methods of creating useful models of the world around us, methods of providing interpretations of information, and methods of sorting information. When methods of creating a particular type of model are described at a very general level, they may threaten to preempt the broad activity of exploration. However, when claimed at the level of a specific method of sorting a particular type of information for a particular pursuit, they should constitute an applied invention. Such specificity is the hallmark of what separates unpatentable abstractions from applications of those abstractions in the useful arts in a way that is worthy of patent protection.
* * * * *
i One scholar has suggested that even LabCorp could have survived as patentable subject matter if the claims drafter had chosen a narrower description. See Patricia Dyck, "Post-Bilski Personalized Medicine: At Home on the Range" (forthcoming) (manuscript on file with author) (presenting an empirical survey of the most frequently claimed biomarkers in personalized medicine and discussing problems in allowing claims for sets of biomarkers that are small and not limited to the diagnosis of a specific disease state or condition).
ii I have discussed some of the misconceptions described here in the context of patenting genes. See Feldman, "Whose Body Is It Anyway?" 1400–1402.
iii One could easily argue that all math is invented. It is a human-made method of imposing order and structure on the natural world. For an interesting and accessible discussion of Wittgenstein's view that all mathematics is a human invention and various responses to that argument, see Ludwig Wittgenstein, Wittgenstein's Philosophy of Mathematics §3.1, http://plato.stanford.edu/entries/wittgenstein-mathematics.
iv Diamond v. Diehr, p. 191 (citation omitted).
v See, e.g., In re Bilski, p. 957 (noting that mere field-of-use limitations are generally insufficient to render an otherwise ineligible process claim patent eligible).
vi Bilski v. Kappos, p. 3231.
Design Patent Pendency
The prosecution timeline for design patents continues to be relatively fast. For both 2010 and 2011, the majority (54%) of design patents issued within one year of the application filing date. The most common delay in issuance is due to some error in the drawings leading to a 31 U.S.C. 112 issue. Very few design patent applications are ever rejected on prior art grounds. Apple's design patents have been at the center of its lawsuit against Samsung. As I wrote in an article a few years ago, design patents are really being used as an overlay for trade dress protection.
Take 30 seconds to vote for Patently-O
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Time for Clients to Start Marking?
Guest post by Paul Morgan
Recent patent legislation has removed almost all of the prior dangers of miss-marking products with patent numbers, including fully removing any risk of leaving expired patent numbers on products. (The new 35 U.S.C. § 292 is reproduced below). Yet the significant potential advantages for infringement damages recovery by marking products under 35 U.S.C. § 287, etc., remain. Patent owners who do not mark their products are prevented by §287 from recovering any damages for any of the infringements occurring prior to serving an actual, specific, notice of infringement, or bringing suit. (As a caveat, products that only “use” a patented process need not be marked under §287).
Also, marking can aid assertions of “willful” infringement – resulting in enhanced damages. Likewise, marking has the potential of aiding in establishing “inducing” infringement assertions.
Under the new statute, “virtual” marking can now be used which is easily maintained or changed and does not require product mold or tooling changes.
So, now is the time for client counseling on the reconsideration of patent marking policies by many companies. Especially those companies that had previously marked some of their products but had stopped due to the recent plague of costly mass-marking-trolls-litigation, now ended by the AIA.
Note: Of course deliberately or recklessly marking a product with a patent number that does not apply to any part of that product is still unwise. It can be potentially indirectly prejudicial for patent enforcement, FTC complaints, etc., even if competitors, or the government, cannot prove any actual damages occurred from that kind of deliberate miss-marking.
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35 U.S.C. 292
(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense. Only the United States may sue for the penalty authorized by this subsection.
(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.
(c) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.
Average Patent Application Pendency
In its annual Performance and Accountability Reports, the USPTO publishes a statistic identified as the "Pendency time of average patent application." The reports describe the figure as the "average time (in months) between filing and issuance or abandonment of utility, plant, and reissue applications. This average does not include design patents." I have charted the PTO's reported average pendency below in the first chart. The chart shows that for 2011, the PTO was successful in keeping average pendency under three years.
Unfortunately, the PTO's numbers are somewhat misleading. The main technical problem with the USPTO numbers is that any request for continued examination (RCE) is counted as an abandonment of an application and a refilling of a new application. Thus, an application that remains pending for four years before issuance and that includes an RCE filing will be counted in the PTO calculations as two applications with an average two-year pendency. The PTO reporting also includes other application "reworkings" such as continuation applications and divisional applications that tend to be processed somewhat faster than original non-provisional applications.
The chart below adds two additional pendency calculations: One calculation ignores RCEs in the pendency calculation – looking instead at the time from non-provisional filing to issuance. Thus, under my calculation, an application that remains pending for four years before issuance and that includes an RCE filing will be counted as one application with a four-year pendency. The second calculation also ignores RCE filings and additionally limits the data set to only original non-provisional applications (excluding continuations, divisionals, and CIPs). As expected removing the RCE artifact from the data adds considerably to the average pendency. (Note here that my chart is lacking because it does not include statistics for pendency of abandoned applications.)
The final chart shows a pendency histogram for patents issued in October and November of 2011 (again ignoring RCE filings). The median pendency is 3-4 years. 98% issued within nine years of filing.
Mayo v. Prometheus Guest Post: The Hot-Button Issues
By Denise W. DeFranco of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
The decision in Mayo v. Prometheus is sure to be a close one, perhaps even a 5-4 decision, like many other Supreme Court's decisions concerning patent eligibility under section 101 of the patent statute. The outcome of the case will probably turn on two fundamental issues about which the justices wrestled throughout the oral argument.
1) After recognizing the "hornbook law" that a law of nature is not eligible for patent protection, but that the application of a law of nature is, Justice Breyer inquired as to how much needs to be added to a claim to transform it from an unpatentable law of nature to a patent-eligible application of a law of nature. Justice Breyer and others seemed concerned that Prometheus's patent claim simply recites an "observation" of a law of nature, which may not be enough. In response, Prometheus's counsel argued that Prometheus's claims include limitations beyond the mere observation of the natural phenomenon, namely that a particular drug be administered to a patient and that the level of metabolites in the patient's bloodstream be measured. The Supreme Court's decision may ultimately turn on whether limitations like those are adequate to transform a law of nature into an application of a law of nature.
2) Many of the justices wrestled with the question of whether an analysis under section 101 of the patent statute should involve at least a "quick peek" at the issues of novelty and non-obviousness under section 102 and 103, respectively. Mayo's counsel argued that the Supreme Court took such a quick peek in the Bilski case and that such a quick peek is appropriate to provide some measure of protection to the medical community from overbroad patents. In response to an observation by Justice Kennedy that its "hard to resist the temptation to peek," the Solicitor General stated that "taking up the temptation to import a look into novelty and nonobviousness in the 101 inquiry [would] be very destabilizing." He further added that the Court in Bilski made clear that patent eligibility under section 101 is a threshold test that turns simply on "whether there is a process."
As in the Bilski case, the justices — across the board — seemed leery of the patentability of Prometheus's claim. In Bilski, though, both the U.S. Patent & Trademark Office ("PTO") and the U.S. Court of Appeals for the Federal Circuit had already concluded that the claims were patent ineligible under section 101. Here, both the PTO and the Federal Circuit found the claims patent eligible. Perhaps that difference will weigh on the minds of some of the justices as they determine whether their leeriness in fact arises not from issues of eligibility under section 101 but patentability under sections 102 and 103.
Denise W. DeFranco is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. She has been representing companies in patent infringement litigation in both trial and appellate courts for almost two decades. She can be reached at denise.defranco@finnegan.com or 617.452.1670.
I made this graph by examining the oral argument transcript and counting the number of lines occupied by questions from each judge.
I made this graph by examining the oral argument transcript and counting the number of lines occupied by questions from each judge.
Where should we put the next two patent offices?
The USPTO is seeking input on where to locate two more offices in addition to the DC Metro office (Alexandria, Virginia) and the planned Detroit Office. The chart below shows the distribution of patent attorneys and agents distributed by state. Does this map help us pinpoint the next two spots?: Fayetteville, Arkansas and Boise, Idaho? In this analysis, folks should consider that the new patent offices are likely to be quite small in comparison to the HQ.
Notes:
- I’m working on a zip code level map and a center-of-gravity calculation.
- I only looked at Reg No.’s greater than 27,000, which includes the most senior partner at my former firm, MBHB.
Chisum on the New Rules of Patent Priority
Don Chisum was already a leader in the patent field when his multi-volume treatise – Chisum on Patents – was first published in 1978. His authoritative explanation of the law has been cited by hundreds of court opinions and thousands of law review articles. Mr. Chisum has recently turned his attention to the Leahy-Smith America Invents Act and penned a new article titled Priority Among Competing Patent Applicants Under the American Invents Act. Although he had hoped to produce a straightforward explanation of the new priority rules, Chisum found a series of ambiguities and gaps in the new law that will be important for patent strategists. In a message to Congress, he concluded the paper as follows:
If the America Invents Act were a term paper submitted by a student in a patent law seminar, an instructor would, undoubtedly, send it back with a note: SOME GOOD IDEAS, SOME MUDDLED AND UNSUPPORTED IDEAS, POOR GRAMMAR: PLEASE REVISE AND CLARIFY.
Download the article here.
Patent Pendency as a Function of Claim Count
This is an updated version of a chart that I made a few years ago — this time using utility patents issued 1/2009 through 11/2011. To create the chart, I grouped patents according to the number of claims in the issued patent and then calculated the average number of claims for each group. As usual, the 20-count claims is an anomaly.
Justice Breyer: Giving Patent Law the Finger
In Mayo v. Prometheus, the Supreme Court is again addressing patentable subject matter. During oral arguments, Justice Breyer came-up with a hypothetical invention to help him draw the line on patentable subject matter.
JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person’s little finger, and you notice the color [indicates that] you need a little more, unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature, but I say: I didn’t; I said apply it. I said: Look at his little finger.
MR. SHAPIRO: Sure.
JUSTICE BREYER: Okay? Is that a good patent or isn’t it?
MR. SHAPIRO: No … Well, because you — you’ve added to a law of nature [to] just a simple observation of the man’s little finger.
How would you respond to Justice Breyer’s idea with respect to 35 U.S.C. §101?
Mayo v. Prometheus
The memorable line from the KSR oral arguments was Justice Scalia’s criticism of Federal Circuit precedent as “gobbledygook.”
The Court heard oral arguments today in Mayo v. Prometheus. The best one-liner from oral arguments comes from Justice Breyer. As you might expect, Justice Breyer’s statement is not as colorful as Justice Scalia’s, but it is likely more accurate.
JUSTICE BREYER: If you look at the Court’s cases, they seem to say Flook, one thing, and Diehr another thing.
Justice Breyer’s statement highlights a central problem of modern patentable subject matter doctrine — that the quartet of leading decisions contradict one another. The court failed to move the ball in its 2010 Bilski decision and instead simply stated that the proper path is to follow these cases.
- We’ll be posting a more complete discussion of the oral arguments tomorrow.
- Read the transcript (draft).
Morgan: Ambiguities in Defining Prior Art under the Leahy-Smith America Invents Act
In our newest Patently-O Patent Law Journal article, former Xerox patent counsel Paul Morgan highlights two important ambiguities in the new 35 U.S.C. § 102(a)(1) as defined by the Leahy-Smith America Invents Act. This provision replaces Sections 102(a) and 102(b) and, beginning in March 2013 will serve as the fundamental definition of prior art in the US patent system. Under the new statute, no patent can issue if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The language “otherwise available to the public” is new to the patent statute. Morgan makes the counterintuitive case that the catchall phrase actually serve the purpose of limiting limit the scope of prior art under the statute. In particular, the language suggests that the other types of art identified in the statute are also “available to the public.” If so, this statutory change could be seen to overrule doctrines that bar patent rights based upon secret commercialization by the patentee. See, for example, Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F. 2d 516, 520 (2nd Cir. 1946).
Read the article: Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29. Download Morgan.2011.AIAAmbiguities
Morgan: Ambiguities in Defining Prior Art under the Leahy-Smith America Invents Act
In our newest Patently-O Patent Law Journal article, former Xerox patent counsel Paul Morgan highlights two important ambiguities in the new 35 U.S.C. § 102(a)(1) as defined by the Leahy-Smith America Invents Act. This provision replaces Sections 102(a) and 102(b) and, beginning in March 2013 will serve as the fundamental definition of prior art in the US patent system. Under the new statute, no patent can issue if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The language “otherwise available to the public” is new to the patent statute. Morgan makes the counterintuitive case that the catchall phrase actually serve the purpose of limiting limit the scope of prior art under the statute. In particular, the language suggests that the other types of art identified in the statute are also “available to the public.” If so, this statutory change could be seen to overrule doctrines that bar patent rights based upon secret commercialization by the patentee. See, for example, Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F. 2d 516, 520 (2nd Cir. 1946).
Read the article: Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29. Download Morgan.2011.AIAAmbiguities
Forthcoming Article: Patentable Subject Matter for Diagnostic Methods after in re Bilski
Review by Dennis Crouch
Professor Eisenberg (Michigan) is one of the leading academics focusing on proprietary rights in biomedical research. She has been writing about biotech patents and other forms of protection since the 1980's. Most recently, Professor Eisenberg provided final version of her forthcoming article titled "Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski." The article will soon be published in the Case Western Reserve Journal of Law, Technology & the Internet, but I wanted to highlight the article today because it speaks directly to the pending case of Mayo v. Prometheus. Oral arguments are scheduled in Prometheus for Wednesday, December 7, 2011.
Prior to its 2010 decision in Bilski v. Kappos, the Supreme Court's leading precedent on patentable subject matter was the quartet of cases issued before the formation of the Court of Appeals for the Federal Circuit. See, Benson, Flook, Diehr, and Chakrabarty. In deciding the patentable subject matter question raised in Bilski, the Supreme Court simply pointed back to its old precedent as controlling. Eisenberg writes: "The Supreme Court reaffirmed the authority of these decisions without explanation in Bilski v. Kappos, thereby demanding formal adherence to stare decisis without following the discipline of common law reasoning."
In her article, Professor Eisenberg asks the Supreme Court to use this next opportunity in Mayo v. Prometheus to "not only to clarify the boundaries of patentable subject matter, but to explain what the doctrine of patentable subject matter is all about." She points to three possible uses of the doctrine: (1) PSM could serve as a threshold inquiry that economizes administrative costs by excluding some kinds of subject matter from the front door of the patent system without the need for a full examination. However, Eisenberg recognized that "patentable subject matter doctrine does not and cannot serve that role in its current form." (2) PSM could be useful in "limiting heterogeneity" of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which "less protection is optimal." (3) PSM could serve as a backstop for when other patentability doctrines fail to protect the public domain, properly limit claim scope, or ensure that building blocks of innovation are available for future innovators.
Notes:
- Read the article: /media/docs/2012/03/eisenberg.wisdomordeadhand.patentlyo.pdf.
- Cite: Rebecca Eisenberg, Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski, 3 CASE W. RES. J.L. TECH. & INTERNET 1 (2012)
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IP Hall of Fame Nominations
by Dennis Crouch In 2006, the publishers of the UK based Intellectual Asset Magazine (iam) founded the non-profit IP Hall of Fame to honor individuals who have made an outstanding contribution to the development of IP law and practice. The process begins with nominations from the public and then voting by members of the 45 members of the IP Hall of Fame Academy. The Academy includes previous inductees to the Hall of Fame and a handful of additional members. (I am a voting member of the Academy but not the IP Hall of Fame). The focus is global and includes all areas of intellectual property law and practice.
Call for Nominations: The nomination process closes on December 9, 2011. To nominate someone, simply fill in the nomination form and supply a paragraph of between 50 and 100 words to support your nomination. The award ceremony and gala dinner will be held at the Estoril Casino near Lisbon, Portugal during the IP Business Congress in June 2012.
Recent patentable subject matter decisions at the BPAI
By Dennis Crouch
Here are several recent BPAI decisions on patentable subject matter eligibility.
New Rejection in Answer: Examiner’s Answer raised new a new Section 101 issue, but applicant failed to respond in the reply brief. BPAI Holding: “We therefore summarily sustain this rejection.” Ex Parte Maeng, 2011 WL 6012458 (BPAI November 30, 2011).
Delay in Adjudication: L’OREAL claims a “method for recommending a beauty product” that includes several steps, including applying a beauty product to a person and then seeing how the person looks under various simulated lighting environments. The examiner rejected the claim as unpatentable based upon its failure to satisfy the machine-or-transformation test. On appeal, the BPAI reversed the rejection, holding that “a full analysis as outlined in Bilski v. Kappos … should have resulted in a finding by the Examiner that the claimed subject matter either was or was not an abstract idea, and hence, respectively, that the claimed subject matter was not patent eligible or was patent eligible in this particular instance.” This case highlights a problem with the growing backlog at the BPAI. The Examiner’s final rejection was mailed in 2009 and she mailed the Examiner’s Answer in February 2010, a few months prior to the Supreme Court’s decision rejecting the machine-or-transformation test as a determinative test of patentable subject matter eligibility. Ex Parte Hessel, 2011 WL 6012477 (BPAI November 30, 2011)
CyberSource Rejections: Citing the Federal Circuit’s recent decision in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), the BPAI has affirmed a Section 101 rejection of an IBM application that claims a “computer-implemented method for partitioning a domain dataset.” Despite the “computer implemented preamble, the BPAI held that the claimed process was not patent eligible because it “could be performed by a human writing on a piece of paper.” The Board quoted CyberSource for the proposition that “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”
IBM had also include claims directed to a “system for partitioning” that included “nominal recitations of conventional hardware in the body of the claim (e.g., ‘a memory’ and ‘a processor’).” As instructed by CyberSource, the court considered the “underlying invention for patent-eligibility purposes” rather than particular nominal claim limitations. Here, the BPAI found that the true invention was the process and that the system claims were simply reformulated versions of the method and therefore, that the system claims should be interpreted as process claims.
In analyzing the underlying invention of independent “system” claims 26, 27, and 28 as a process, we again conclude that the scope of the recited functions (steps) covers functions that can be performed in the human mind, or by a human using a pen and paper (e.g., claim 26: “establish an evaluation function” and “partition said domain subset”). Therefore, we conclude that unpatentable mental processes fall within the subject matter of independent claims 26-28.
IBM also include “Beauregard claims” directed to an “article of manufacture” comprising “a computer readable medium.” The BPAI likewise found those claims unpatentable under 35 U.S.C. §101 as interpreted by CyberSource. Ex Parte Vilalta, 2011 WL 6012377 (BPAI November 29, 2011). On the flip side of this, the BPAI has also been holding that claim scope must be determined before Section 101 analysis can be complete. See Ex Parte Black, 2011 WL 6012476 (BPAI November 28, 2011).
Software Not Patentable: OPNET Tech’s patent application is directed toward a “network monitoring system” that includes a set of “collectors”, “analyzers”, and “reporters” as well as an “automated engine” configured to control the applications in achieving a target task. In the specification, the applicant wrote that each element of the system could be created in software and the Board concluded that “the invention can exist solely as software.” Citing the Federal Circuit’s 1994 Warmerdam decision, the Board held that a claim that covers a “purely software embodiment” cannot be patentable subject matter. Ex Parte Cohen, 2011 WL 6012432 (BPAI November 29, 2011). On the flip side, the BPAI held that a “web based system” is patent eligible because such a network based requires “more than software per se, because a web, upon which a web-based system is based, is physical, in addition to software, in that it requires computers and routers and telecommunications equipment to operate.” Ex Parte Vogel, 2011 WL 6012447 (BPAI November 21, 2011).
Providing, Receiving, and Manufacturing: Small paper manufacturer Grays Harbor has seemingly spent a small fortune prosecuting its patent application No. 09/849,504. The invention relates to their computerized system for processing paper and was filed back in 2001. One step of rejected method claim 11 was written as follow “receiving a promotions order from a third-party advertiser to place promotional material on an enclosure…” OK, nothing brilliant in this limitation (or another limitation involving “providing instructions”) with regard to inventiveness, but the Board’s rejection was odd – holding that that the claim’s “recitation of the steps of receiving and providing are merely abstract ideas because each step is recited in the future tense of ‘to place’, ‘to create’, ‘to deliver’, and hence is only contemplated, rather than executed.” Ex Parte Quigg, 2011 WL 6012448 (BPAI November 22, 2011)