Originally published on Law360
Since the Federal and Supreme Court rulings in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al., we
have seen some issued patents invalidated on the grounds of
patent-ineligible subject matter directed to an abstract idea under
35 USC §101, judicial exceptions (see articles on Ultramercial, patent invalidations). Patent
applications are also facing similar challenge, with some claims
being rejected during examination by the United States Patent and
Trademark Office (USPTO), as allegedly directed to
patent-ineligible subject matter per the above. What can we,
as patent practitioners, do during patent prosecution, to argue for
patent claim subject matter eligibility, when faced with such a
rejection?
There is an advantage we can make use of during patent prosecution.
One excellent article, "Are Questions of Fact Being Overlooked in Software
Cases?" by Alexander Hadjis
analyzes recent appellate decisions, dispositive motions at the
onset of litigation, and dismissals of patents based on assertion
of patent claims having patent-ineligible subject matter.
This provides us with some clues as to differences between
the litigation environment and the patent prosecution environment.
According to the analysis in that article, such dismissals of
patents early during litigation proceedings do not rely on formal
claims construction before a jury and do not rely on analysis of
claims under the obviousness doctrine, particularly regarding scope
and content of prior art, level of ordinary skill in the pertinent
art, differences between the claimed invention in prior art and
other objective evidence. In other words, such dismissal of a
patent during litigation does not require analysis of the claims
under 35 USC §102 and §103.
But, fortunately for patent prosecution, the USPTO 2014 Interim Guidance on Patent Subject
Matter Eligibility, issued December 16, 2014, recommends (on
pages 25-26):
II. Complete Examination
Regardless of whether a rejection under 35 U.S.C. 101 is made, a
complete examination should be made for every claim under each of
the other patentability requirements: 35 U.S.C. 102, 103, 112, and
101 (utility, inventorship and double patenting) and non-statutory
double patenting.
So, during patent prosecution (for the near term, anyway) we
should expect that any rejection of claims as allegedly directed to
patent-ineligible subject matter, under 35 USC §101 judicial
exceptions including abstract ideas, will also be accompanied by
cited references and Examiner analysis of claims under 35 USC
§102 and/or 35 USC §103, in an Office Action. This
provides us with the advantage, as compared to the above-discussed
litigation environment, of having (usually) other patents or patent
application publications with specifications and claims to which
the present claims under examination can be compared as to
scope.
Assuming we can convincingly argue that the present claims are
neither anticipated (under 35 USC §102) by nor obvious (under
35 USC §103) over the reference(s) cited in the Office Action
(this is part of our usual job during patent examination, as patent
practitioners), we may then have additional material to bolster
arguments relative to 35 USC §101. For example, one line
of inquiry to pursue is to determine whether the cited references
are in some other way related to the abstract idea that the
Examiner is citing during the §101 rejection (in which the
present claims are alleged to be directed to an abstract idea).
If the present claims can be shown different from the cited
references, per the §102 and/or §103 analysis, then it
could be argued that the present claims constitute more than just a
collection of computer components, the abstract idea, and the
instruction to "apply it" (per Alice). In
the language of Alice, the present claims could then be
shown to be inventive over both the cited art and the abstract
idea, because of this difference in scope as compared to the cited
art under §102 and/or §103.
Another line of inquiry to pursue is to determine whether the
present claims attempt to preempt all possible uses of the abstract
idea (per Alice), or in the language of the USPTO Interim
Guidance (cited above, and see page 25) "attempt to tie up use
of the mathematical relationships". If the Office Action
cited art shows some other use of the abstract idea or the
mathematical relationship, and particularly when (as above) there
is a difference between the present claims and the cited art under
the §102 and/or §103 analysis, it could be argued that
this is a factual finding showing that the present claims do not
preempt all possible uses of the abstract idea or tie up the use of
the mathematical relationships.
Of course, these lines of inquiry and analysis should be tailored
to the specifics of the claims being examined during patent
prosecution. Variations of the above and other lines of
inquiry relating to Alice and the USPTO Interim Guidance
can be developed. The key leverage to apply during patent
prosecution, is that cited references, §102 or §103
analysis, claims construction, and claims scope analysis and
comparison are available for factual findings in answer to a
§101 "abstract idea" rejection. Having such
arguments, and factual findings, available in the patent
prosecution history, may even be of benefit later on if a patent is
challenged in the courts. This is all part of the art of
patenting.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.