Patent Law Practice Center

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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USPTO to Host Software Partnership Meeting at Berkeley Law

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) recently announced that it will host its next Software Partnership Meeting on Thursday, October 17, 2013, at the U.C. Berkeley School of Law in Berkeley, California.

The purpose of the meeting, among other things, is to allow senior USPTO officials to provide an overview of the executive actions related to patent assertion entities and U.S. innovation initiatives called for in President Obama’s executive actions on June 4th. See also, Obama on Patent Trolls — Much Ado About Nothing. Other topics open for discussion will include feedback from the previous Software Partnership roundtables held in Silicon Valley and New York; a summary of the written comments received in response to the January Federal Register notice announcing the Software Partnership; proposed next steps by the USPTO; and an interactive discussion session on strategies to improve claim clarity, such as the use of glossaries in patent applications.

If you cannot attend the meeting live, the event will also be viewable live online through the USPTO website. For those who do wish to attend live, the USPTO announcement explains that space will be quite limited and, as a result, RSVPs must be received by September 27, 2013.

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Software Will Remain Patent Eligible

Apple Patents Digital Handshake Between Devices

On April 23, 2013, Apple obtained U.S. Patent No. 8429407, titled Digital Handshake between Devices.

Creating a secure connection between two devices that are in close physical proximity allows users to share a great deal of digital content. Instead of showing a webpage or document to another person by turning the screen towards them, a user could choose to send the info directly to another device, preventing people from having to crowd around a small device screen to see. The same is true of videos and pictures. Also, some applications allow users to interact with other nearby devices for money transfers or to play a game.

Apple was granted the right to protect the system of creating a secured connection between devices laid out in this patent. It would allow an iPhone to create a bar code or alphanumerical code that can be scanned by the camera of another device. Once the “digital handshake” has taken place, other phones can also scan the key that was generated by the device to connect with the other devices as well.

As Claim 1 describes, Apple has gained legal protections over:

“A method for establishing a communications path between a first device and a second device, comprising: capturing an image of the second device using the first device; extracting, from the image, a first key associated with the second device; selecting from a plurality of processes a process to be used for generating a digital handshake key; generating the digital handshake key using the selected process with the first key; and establishing a communications path with the second device using the digital handshake key.” (more…)

USPTO Update: After Final, Software and Sequestration

Recently there has been some interesting news coming from the USPTO…and about the USPTO budget, courtesy of AIPLA taking up the fight against sequestration with the Office of Management and Budget (OMB). What follows is a synopsis of events over the past week.

Addressing the RCE Problem

Last week, the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modify the After Final Consideration Pilot Program (AFCP) to create an After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. Thus, this can and should be viewed as part of the USPTO effort to continue to try and address the RCE problem. (more…)