Litigation Funding in Uncertain Patent Eligibility Times

A patent is an exclusive right. This means that the owner of a patent can prevent others from engaging in activities that are covered by an issued patent. But as is true with any right, a patent is only worth something if the owner is willing to take action to preserve the rights and litigate against those who are treading on the rights granted. In the United States, that means litigation in federal district court, which can easily cost millions of dollars.

Today, given the climate within the industry, being willing to take action when infringement is suspected is only the first hurdle. Yes, the decision to undertake litigation is a difficult one regardless of whether it is made by a company or an individual. Attention is diverted from other endeavors and opportunities, and there is a very real financial cost associated with litigating a dispute. Litigation is not free.


What’s the Harm in Allowing Software Patents?

As many of you undoubtedly already know, the United States Supreme Court will soon decide whether software is patent eligible in the United States. The fact that such a question needs to be addressed in the year 2014 would be comically funny if it were not so tragically sad. Software has been patented in the United States since 1968, which means software has been patentable in the United States for the last two generations. Yet the Supreme Court is poised to decide whether software is or should be patent eligible in Alice v. CLS Bank, which will be argued to the Court on March 31, 2014.

What is the harm in allowing software patents?  Saying that software is not patentable subject matter is akin to saying that a car battery is not patentable subject matter. No one could seriously argue that a new and non-obvious car battery would not be patentable subject matter. In fact, that is exactly what many researchers are trying to find right now, albeit not the same type of car battery that we are used to inserting under the hood.

Any car is itself just a bunch of pieces of metal that sit there fastened together to create a tangible shell that has taken on an identifiable structure. The car has lots of potential, but without some kind of fuel it doesn’t even have potential energy. It merely has potential to move from place to place under appropriate conditions. A car without a battery isn’t something that is useful in any real world sense of the word.


USPTO Interim Bilski Guidelines: David Luettgen of Foley & Lardner Weighs In

While the Supreme Court’s Bilski v. Kappos decision answered some questions regarding patent eligibility under 35 U.S.C. 101, much remains unclear.  Last week, the USPTO attempted to clear up some of the uncertainty for the patent examiners when it published it’s Interim Guidance for Determining Subject Matter Eligibility for Process Claims (See Patent Office Releases Interim Bilski Guidelines ).  I had an opportunity to discuss the Interim Bilski Guidelines with David Luettgen, partner at Foley & Lardner LLP.

Here is what he had to say…..

Me:  Most agree that the Bilski decision left a lot of uncertainty.  Do you think the USPTO’s interim guidelines help clear up some of that uncertainty? Are the guidelines a step in the right direction?

DL:  The guidelines are helpful in that they present the PTO’s view of everything we know about subject matter eligibility from Bilski and other cases.  However, the PTO cannot create certainty where none really exists.  There are just a lot of things we do not know right now.  It will take some Federal Circuit cases before we get that certainty, for example, in the areas of computer-implemented inventions and medical diagnostic methods. (more…)

BILSKI: Where Do We Go From Here?

The following guest post comes from  Kenneth Nigon, Practice Manager for the Patent Preparation and Prosecution Group at RatnerPrestia and PLI Faculty member.

On Tuesday, July 27, the USPTO published its Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos (“Interim Bilski Guidance”).  This Guidance supplements the Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 (“Interim Instructions”), published on August 24, 2009 and the memorandum to the Patent Examining Corps on the Supreme Court Decision in Bilski v Kappos published on June 28, 2010 (“Bilski Memorandum”).

The Bilski Memorandum instructs the examiners to reject method claims that do not meet the requirements of the Machine or Transformation (MoT) test formulated by the Federal Circuit in In re Bilski 545 F.3d 943 (Fed. Cir. 2008).  The Interim Bilski Guidance modifies these instructions to require examiners to apply a balancing test which weighs factors both in favor of and opposed to patent eligibility and directs examiners to consider all requirements for patentability in the interest of compact prosecution.

The factors weighing in favor of eligibility of a claim include that it:

  • passes the MoT test,
  • is directed toward the application of a law of nature and
  • is more than a mere statement of a concept. (more…)

Patent Office Releases Interim Bilski Guidelines

Written by Gene Quinn (of and Patent Center Contributor)

This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.

These interim guidelines build upon the memo sent to the examining corps the day the Supreme Court issued its decision in Bilski v. Kappos, and is intended for use by Office personnel when determining subject matter eligibility under 35 U.S.C. 101. According to the Federal Register Notice, this guidance supersedes previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance.

Significantly, the guidelines explain:

Therefore, examiners should avoid focusing on issues of patent eligibility under Sec. 101 to the detriment of considering an application for compliance with the requirements of Sec. Sec. 102, 103, and 112, and should avoid treating an application solely on the basis of patent eligibility under Sec. 101 except in the most extreme cases.

This should be music to the ears of the patent bar and applicants who were previously stopped dead in their tracks by a seemingly insurmountable 101 rejection. (more…)