Patent Law Practice Center

CAFC says the U.S. may file a CBM proceeding

The United States Court of Appeals for the Federal Circuit recently issued a decision in Return Mail, Inc. v. United States Postal Service, which upheld the invalidity of all challenged claims in a covered business method (CBM) challenge decided by the Patent Trial and Appeal Board (PTAB). In the CBM proceeding, the PTAB panel found the claims to be directed to patent ineligible subject matter under 35 U.S.C. § 101.

That patent claims were found to be directed to patent ineligible subject matter in a CBM proceeding is hardly newsworthy. No patent that has entered CBM has done anything other than fall to date. What is newsworthy, however, is that the Federal Circuit also upheld a controversial ruling of the PTAB, which determined that the United States has standing to bring a CBM challenge. Legally speaking, the United States, or in this case the United States Postal Service, is considered a person within the meaning of AIA § 18(a)(1)(B).

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Concrete and Tangible is the Right Test for Patent Eligibility

In 1998, the United States Court of Appeals for the Federal Circuit, in State Street Bank & Trust Co. v. Signature Financial Group, Inc., did away with what had previously been come to be known as the business method exception to patentability. The Federal Circuit, per Judge Giles Sutherland Rich (shown left), pointed out that the business method exception had never been invoked by either the Federal Circuit or its predecessor court, the CCPA. Judge Rich explained that “[s]ince the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.”

Although the United States Supreme Court did away with that test when it issued its decision in Bilski v. Kappos, it is still nevertheless illustrative and the best test that is out there. Simply stated, in order to have a patentable business method, it is necessary for the invention to accomplish some practical application. In other words, in order for a business method to be patent eligible, it must produce a “useful, concrete and tangible result.” Judge Rich was correct to point this out and the Supreme Court has made a horrible mess of the law as it applies to business methods and computer-implemented innovations because it fails to understand what Judge Rich really meant.

If you really understand what Judge Rich meant by “useful, concrete and tangible result,” you come to the inescapable conclusion that it is the appropriate test. Indeed, those drafting patent application would do well to really target the description of the invention to satisfy the test.

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PTAB Questions Machine-or-Transformation Claims

Just over three years ago, the United States Supreme Court issued its decision in Bilski v. Kappos. The critical question presented to the Court for consideration was whether the Federal Circuit erred by creating the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter. The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, but is an important clue, thereby overruling the Federal Circuit who had earlier ruled that the machine or transformation test was the test to determine whether an invention is patentable subject matter.

But what practical effect has the Supreme Court ruling in Bilski v. Kappos had? Truthfully, not much. at least in terms of the day-to-day approach of patent attorneys and the U.S. Patent and Trademark Office.  (Certainly, the decision was important in that it preserved the patentability of at least some business methods and preserved the patentability of software.)

While the machine-or-transformation test is now only an important clue, it really has become a safe harbor for practitioners.  The assumption has been that you satisfy the machine-or-transformation test announced by the Federal Circuit and you have a patentable invention. Fail to satisfy the machine-or-transformation test and you may have a patentable invention, but neither the Patent Office nor any court has yet found an invention that failed the machine-or-transformation test to be patentable.

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The New Law the USPTO is Thankful for this Thanksgiving

In the spirit of expressing gratitude this Thanksgiving holiday, Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, shares the newest law for which the USPTO is thankful. On November 18, 2011, President Obama signed into law H.R. 2112, the Consolidated and Further Continuing Appropriations Act. This bill provides the USPTO with official spending authority through the end of September 2012 (the end of the fiscal year) and the ability to spend up to $2.7 billion dollars. According to Scott’s post,  (more…)

Post Grant Dead Zone Coming Soon

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

PGR Window Anomaly to Encourage Early Litigation?

Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA).  Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.

As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).

When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR,  becomes available for all patents next September 16, 2012. (more…)