Patent Law Practice Center

Deciphering BASCOM and McRo on Patent Eligibility

The United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to the patent examining corps from Robert Bahr, Deputy Commissioner for Patent Examination Policy, provides examiners with a discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility. What follows is my summary of these two important cases.

BASCOM v. AT&T (Decided June 27, 2016)

The claims generally recited a system for filtering Internet content. The claimed filtering system is located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements from a plurality of sets of filtering elements, thereby allowing individual network accounts to customize the filtering of Internet traffic associated with the account. The patent explains that the advantages of the invention are found in the combination of the then-known filtering tools in a manner that avoids their known drawbacks. The claimed filtering system avoids being “modified or thwarted by a computer literate end-user,” and avoids being installed on and dependent on “individual end-user hardware and operating systems” or “tied to a single local area network or a local server platform” by installing the filter at the ISP server. Thus, the claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks.

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Maintaining low-quality patents isn’t a winning strategy

Getting whatever you can sneak by a patent examiner probably never was a wise strategy, but it is true that there was a time in the industry when patents were viewed as a numbers game. Once upon a time, the patent business viewed patent acquisition, whether by organic growth or outside purchase, as aking to a corporate version of global thermonuclear war. If you want to succeed, the thinking went, you needed to have more warheads (i.e., patents) than your enemies. At times, the quality of those patent assets were considered at best secondary, if not completely irrelevant.

While the size of a patent portfolio isn’t completely irrelevant, it is worse than useless to have a portfolio full of low-quality patents. Not only is there a growing cost associated with obtaining patents in the first place, but there is also a growing cost of keeping patents alive. The seldom told story in the popular press is that many patents do not enjoy the full patent term because there are three separate and increasing maintenance fee payments that must be made to keep the patent alive for its full term. Specifically, maintenance fees are due at 3.5, 7.5 and 11.5 years after a patent has issued. For a large entity, these fees are $1,600 for the first maintenance fee payment, $3,600 for the second, and $7,400 for the third.

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The dearth of women in patenting cannot be explained completely by the lower numbers of women in STEM careers

A recent study released from the Institute for Women’s Policy Research (IWPR) reveals that much progress has been made to close the patent gender gap over the last four decades. Sadly, despite the fact that the number of women inventors has quintupled since the 1970s, less than 20% of issued U.S. patents have at least one woman inventor and only 7.7% of issued U.S. patents list a woman as the primary inventor. Much work still needs to be done in order to take advantage of the vast resources of creative potential in this largely untapped talent pool.

To further the discussion, I recently conducted a roundtable interview with three women who have given this matter a great deal of thought. One of them, Jennifer Gottwald (pictured left)  is a Licensing Manager in the Technology Commercialization Department at the Wisconsin Alumni Research Foundation (WARF). I asked her whether there are fewer women on patents simply because there are fewer women in STEM fields? Her answer: No. The lack of women as inventors who use the patent system goes beyond the mere fact that fewer women pursue STEM careers. (more…)

Federal Circuit says automating 3D-animation method is patent eligible

The Federal Circuit recently issued a decision in McRo, Inc. v. Bandai Namco Games America, which found that the software patent claims at issue were not directed to an abstract idea and were patent eligible.

The patents in question related to automating a part of a 3D-animation method. Essentially, the patents cover lip synchronization of animated characters so that the lips of the animated character move in a normal fashion to the point where the animated character’s lips can be read.

After going through a two-plus page recitation of the law, Judge Reyna summarized the district court holding, that the claims were drawn to an abstract idea of automating rules-based use of morph targets and delta sets for lip synchronization in 3D animation. Reyna explained that the Federal Circuit disagreed with that determination, reminding the district court that they have cautioned courts to carefully “avoid oversimplifying the claims.” Reyna would go on to say that these claims are specifically “limited to rules with specific characteristics.”

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Less than 20% of U.S. patents have at least one woman inventor

Although women have more than quintupled their representation among patent holders since 1977, a pronounced patent gender gap remains. In 2010, according to a new briefing paper by the Institute for Women’s Policy Research (IWPR), fewer than one in five patents had at least one woman inventor named. Although quintupling the number of women inventors over the last 30+ years is impressive, at the current growth rate, it is projected that it will take until 2092 for women to reach parity in patenting.

The IWPR briefing paper reports that women make up only 7.7 percent of primary inventors who hold patents. According to IWPR, those women who are the primary inventor tend to hold patents for inventions associated with traditional female roles, such as jewelry and apparel.

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