from the matter-of-interpretation dept.
The death of software patents in the United States has been greatly exaggerated. In a memo to Patent Examiners, the United States Patent And Trademark Office (USPTO) has released preliminary examination guidelines in view of the U.S. Supreme Court's recent opinion in Alice v. CLS Bank. The guidelines, which have been provided in a post on the patent blog Patently-O [PDF], specify that:
Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.
The memo notes that "the basic inquiries to determine subject matter eligibility remain the same" and guide Examiners that they must "first determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does not fall within one of the categories, reject the claim as being directed to non-statutory subject matter". Then, "if the claim does fall within one of the statutory categories, determine whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) using Part I of [a] two-part analysis... and, if so, determine whether the claim is a patent-eligible application of an exception using Part 2 [of the two-part analysis]".
More details of the proposed analysis are provided in the guidelines linked to above.
US Supreme Court rules against software patents
[Announcements] Posted Jun 19, 2014 15:10 UTC (Thu) by corbet
In April, LWN.net reported on the case of Alice Corp. v. CLS Bank International, which addresses the issue of whether ideas implemented in software are patentable. The ruling is now in: a 9-0 decision against patentability. "We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention," said Justice Thomas, delivering the opinion of the Court.
From the ruling [PDF]:
Here, the representative method claim does no more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer. Taking the claim elements separately, the function performed by the computer at each step - creating and maintaining "shadow" accounts, obtaining data, adjusting account balances, and issuing automated instructions - is "[p]urely 'conventional.'" Mayo, 566 U. S., at ___. Considered "as an ordered combination," these computer components "ad[d] nothing . . . that is not already present when the steps are considered separately."
Id.,at ___. Viewed as a whole, these method claims simply recite the concept of intermediated settlement as performed by a generic computer. They do not, for example, purport to improve the functioning of the computer itself or effect an improvement in any other technology or technical field. An instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer is not "enough" to transform the abstract idea into a patent-eligible invention.
The Supreme Court is getting pretty insistent that adding with a computer to otherwise mundane concepts does not make the mundane new or patentable.
As we covered earlier, in Alice v. CLS Bank, the SCOTUS indicated that taking old ideas and doing them with a computer isn't going to fly any more.
Now the high court is sending a case back to the lower court for the THIRD time to make sure those courts get the message.
US patent 7,346,545 is owned by a company called Ultramercial, which sued Hulu, YouTube, and a gaming company called WildTangent (remember those guys and their hard to get rid of games?) back in 2011.
It describes a "method and system for payment of intellectual property royalties by interposed sponsor on behalf of consumer over a telecommunications network."
In plain English, it describes a system in which viewers watch an advertisement as a "payment," and then get to watch a piece of online content.
So what had been happening for 50 years in television and radio ads, watch commercial and then enjoy, was patented by hanging "With a Computer" on it.