In 2014, the U.S. Supreme Court provided the definitive word on
the types of inventions that are eligible to be patented. Its
decision in Alice Corp. v. CLS Bank International (134
S.Ct. 2347) spelled out a two-part test for patent eligible subject
matter that superseded previous guidelines. The Alice test
first examines whether a patent claim contains an exception from
patentability and, if the answer is affirmative, asks whether there
are additional elements in the claim that amount to
"significantly more." One well known exception is where
the claims are directed to an "abstract idea," although
the Court famously declined to provide a definition. Other courts
have been attempting to fill in these blanks in subsequent
decisions and, last week, the Court of Appeals for the Federal
Circuit (CAFC) provided some useful guidance for prospective
At issue in McRO Inc. v. Bandai Namco Games America
were patents directed to 3-D animation techniques for lip
synchronization. One representative claim was for:
A method for automatically animating lip synchronization and
facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight
set stream as a function of phoneme sequence and time of said
obtaining a timed data file of phonemes having a plurality of
generating an intermediate stream of output morph weight sets
and a plurality of transition parameters between two adjacent morph
weight sets by evaluating said plurality of sub-sequences against
said first set of rules;
generating a final stream of output morph weight sets at a
desired frame rate from said intermediate stream of output morph
weight sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a
sequence of animated characters to produce lip synchronization and
facial expression control of said animated characters.
This type of technology clearly relates to a method for the
improvement in operation of a machine, which had long been
considered patent eligible.
However, in an earlier proceeding, rather than considering that
the claims were directed to the improvement in operation of a
technological process, the District Court found McRO's claims
were directed toward patent-ineligible subject-matter on the basis
that they were directed to an abstract idea. In particular, the
District Court considered that the term "rules" found in
the claims was not limited to specific rules, but rather
"purport[ed] to cover all such rules." In essence, the
District Court considered that the invention was "claimed too
The CAFC found fault with this analysis, noting that
"courts 'must be careful to avoid oversimplifying the
claims' by looking at them generally and failing to account for
the specific requirements of the claims." Instead, it held
that courts must look at the claims as a whole and without ignoring
In the Court of Appeals' analysis, McRO's claims were
"limited to rules with certain common characteristics."
Specifically, the claims were directed at a rules-based approach to
automating a task that previously required subjective
determinations from human animators. The claims did not pre-empt
all methods of animating a character using generic rules, but only
a "genus" of rules-based approaches that can be employed
using a particular technology.
Although it still fails to provide a black-and-white definition,
this emphasis on a lack of pre-emption is nevertheless encouraging
in some respects. As judges have correctly observed in numerous
decisions, all inventions can be distilled down to an abstract
idea. The trick is in knowing when to stop distilling, and the
concept of pre-emption ought to serve as a useful boundary marker
in this regard.
The concept of pre-emption was mentioned as a motivating factor
in the Supreme Court's Alice decision, but other
courts generally have been reluctant to conclude their analysis in
this manner, at the first step of the Alice test. The
decision in McRO may make courts less willing to conclude
that a particular concept is an abstract idea without strong
evidence of the same. This also dovetails with recent U.S. Patent
and Trademark Office guidance, which instructs patent Examiners to
refrain from labeling ideas as abstract unless the ideas can be
shown to correspond with a concept found abstract by the
It remains to be seen whether more decisions that emphasize
consideration and analysis of pre-emption are forthcoming. But, in
the meantime, prospective patentees may be able to distance
themselves from subject-matter issues by carefully describing the
ways in which their inventions differ from judicially known
"abstract ideas" and by having arguments against
pre-emption at the ready.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Here is a technique for rapidly drafting claims, for a patent application. This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt writing.
The PTO launched the Post Prosecution Pilot Program, which affords patent applicants an attractive alternative to the procedures currently available for responding to "finally" rejected patent applications.
The second prong of the Alice test is commonly abbreviated as requiring an "inventive concept." Of course, that same nomenclature is used by many international patent laws as a synonym for nonobviousness.
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