Brandt D. Madsen 2013-09-19 00:33:24
What Do You Mean My Computer- Implemented Idea Is Not Eligible For Patent Protection? The Evolving Landscape of Patent Eligible Subject Matter Brandt D. Madsen is an associate intellectual property attorney in the law firm Schmeiser, Olsen & Watts LLP and is based in the firm’s Mesa, Arizona office. He represents clients in intellectual property litigation and in all stages of patent and trademark prosecution. He focuses his practice in the areas of the mechanical-related arts. Brandt earned a J.D. from the Franklin Pierce Law Center (now The New Hampshire School of Law) with concentrations in intellectual property law (cumlaude) and a B.S. in mechanical engineering from Brigham Young University. For questions or for more information please email AZ@IPLawUSA.com, or call (480) 655-0073. Under authority from the U.S. Constitution, Congress has purposefully constructed a broad definition of what constitutes patent-eligible subject matter. 35 U.S.C. Section 101 defines statutory subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” This embodies Thomas Jefferson’s philosophy that “ingenuity should receive a liberal encouragement.” See Writings of Thomas Jefferson 75-76 (Washington ed. 1871). Moreover, a review of historical documents informs us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d Cong., 2d Sess., 6 (1952). The America Invents Act of 2011 leaves the language of Section 101 unchanged. Yet, Section 101 has its limits and does not embrace every discovery. The courts have carved out exceptions to the general rule and have held that: the laws of nature; physical phenomena; and abstract ideas are not eligible for patent protection. See Parker v. Flook, 437 U. S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63, 409 U. S. 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 333 U.S. 130 (1948). “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk, supra at 409 U.S. 67. As a result, the discovery of a new organism naturally occurring in the wild is not eligible for patent protection. Likewise, laws of nature, such as those discovered by Newton, are not eligible for patent protection. Indeed, such ideas and natural occurrences are “manifestations of…nature, free to all men and reserved exclusively to none.” Funk, supra at 333 U.S. 130. As technology advances, where to draw the line between ideas and/or discoveries that are eligible for patent protection and those that are not is more and more difficult to define. The implementation of computers into inventions, which is becoming increasingly more prominent, is further complicating the issue. Computers have led to many new and improved business practices and computer-implemented processes. But at what point is the inclusion of a computer in an invention merely the acceleration of an abstract idea? In other words, at what point does the computer-implemented process fall outside the realm of patent eligible subject matter and into the excluded territory of an abstract idea? And, related thereto, when, if ever, does the presence of a computer in a patent claim lend patent eligibility to an otherwise patent-ineligible idea? These questions do not have clearly defined answers, but the courts have attempted to provide guidance as they continuously grapple with the evolving landscape of technology and how it is shaping the definition of patent-eligible subject matter. In 2008, the U.S. Court of Appeals for the Federal Circuit (CAFC) addressed the issue of patent eligibility of process/method claims, and more specifically business method claims. In re Bilski addressed whether a claimed method of hedging risks in commodities trading via a fixed bill system was patent-eligible subject matter or merely the manipulation of an abstract idea that solved a purely mathematical problem without any limitation to a practical application. The opinion set forth a legal test for determining patent-eligible subject matter as it relates to processes, which is: “[a] claimed process is surely patent-eligible under [Section] 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Using this “machine-or-transformation” test, the CAFC upheld the previous decision of patent ineligibility on the grounds that the claimed method neither required a machine in its operation nor transformed a particular article to a different state or thing. The CAFC further stated that this two-branch test should be considered all-inclusive. The patent community feared the CAFC’s Bilski opinion signaled the death of the business method claim and retroactively invalidated many existing business method patents. However, in 2010, the U.S. Supreme Court took up the issue on appeal, in Bilski v. Kappos, 561 U.S. ___ (2010), and, while upholding the ultimate decision of the lower court, rejected the machine-or-transformation test as the sole test of process patent eligibility. Since then, courts have attempted to further frame the proper context for evaluating patent eligibility, but some argue these decisions have only clouded the issue. Consider for example the CAFC’s recent opinion in CLS Bank Int’l v. Alice Corp. (Fed. Cir. 2013) (en banc), in which seven separate opinions are written that set forth multiple tests for evaluating patent eligibility under Section 101. Moreover, the only precedential portion appears to be a one-paragraph per curiam opinion affirming the district court’s holding that the asserted method was ineligible subject matter. In his concurring opinion for five members of the court, Judge Lourie articulated a “significantly more” test in which the court must identify the abstract idea that is at risk of being exclusively reserved. Once identified, the abstract idea is removed from the claim and it is determined whether the remainder of the claim “contains additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.” Regarding computer claims specifically, Lourie clarified that patent eligibility is not conferred “[u]nless the claims require a computer to perform operations that are not merely accelerated calculations” and that “simply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” On the other hand, Chief Judge Rader proposed a “meaningful limitations” test for determining the patent eligibility of claims involving abstract ideas. This test requires a court to “consider the asserted claim as a whole when assessing eligibility,” as opposed to removing the abstract idea from the claim and then considering the remaining limitations. For computer related claims, the question in Rader’s view was “whether the claims tie the otherwise abstract idea to a specific way of doing something with a computer, or a specific computer for doing something; if so, they likely will be patent eligible, unlike claims directed to nothing more than the idea of doing that thing on a computer.” In other words, “where the claim is tied to a computer in such a way that the computer plays a meaningful role in the performance of the claimed invention, and the claim does not preempt virtually all uses of an underlying abstract idea, the claim is patent eligible.” Without a precedential opinion, the answer to the question of which types of computer-implemented processes qualify as patent-eligible subject matter remains vague. Some guidance has been set forth in the case law described above, but until the courts establish a bright-line test or Congress enacts legislation, practitioners and courts alike may have to apply the foregoing plurality of tests to attempt to form a consensus as to which test is most convincing and useful.
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