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.
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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.
(Score: 3, Insightful) by Blackmoore on Thursday June 26 2014, @05:26PM
It looks to me like the US Patent office doesn't agree with the US Supreme court - and intends to keep approving these garbage, rent seeking, patents.
I would copy from the PDF, but Adobe seems incapable. I will wonder how well this will sit when the next case for this has to go before the courts.
(Score: 4, Insightful) by MrGuy on Thursday June 26 2014, @06:07PM
Sorry, but it's YOU that disagrees with the US Supreme Court, not the USPTO.
Read the decision in Alice. It does NOT turn on whether software patents are legal. Nor does it turn on whether business process patents are legal. The Supreme Court COULD have ruled on those issues, but didn't.
The court ruled that the specific process in question was an abstract idea, and so not patent eligible. The mere transformation of that abstract idea to a "general purpose" computer did not render an in eligible idea patent eligible.
Don't blame the USPTO for correctly interpreting the implications of the ruling. Blame the Supreme Court. Or better, Congress.
(Score: 2) by frojack on Thursday June 26 2014, @07:58PM
Exactly right.
The USPTO directives are a good restatement of statutory requirements with DUE REGARD for Alice.
Alice said tacking "with a computer" on non-patentable ideas doesn't make them patentable, and the USPTO guidelines simply reinforce this idea.
No, you are mistaken. I've always had this sig.
(Score: 1, Funny) by Anonymous Coward on Thursday June 26 2014, @07:41PM
As a representative of Adobe I apologize but you see we would do it but there's this software patent...
(Score: 1) by kc99 on Thursday June 26 2014, @08:08PM
Funny, the PDF is OCR'd and, both Preview and Adobe Reader for Mac (version 11.0.07) will happily copy the text.
(Score: 1) by Freeman on Thursday June 26 2014, @06:20PM
The United States Patent Troll Office says to please disregard any information that may lead you to believe that anything is affecting the way we do business.
Joshua 1:9 "Be strong and of a good courage; be not afraid, neither be thou dismayed: for the Lord thy God is with thee"
(Score: 2) by davester666 on Friday June 27 2014, @07:01AM
it's a make-work project for patent lawyers. it doesn't matter whether or not the patents they grant are valid or not to the patent office, as there is no penalty that can be applied to them for improperly approving or denying any given patent.
so if they let anything through, it just means lots of work for lawyers and judges to sort out what's acceptable and what's not in court over years and years. and that's a lot of money.
and so what if thousands of small companies are forced to either go out of business or cough up bundles of cash to patent trolls. they should have hired better lawyers.
(Score: 3, Insightful) by MrGuy on Thursday June 26 2014, @06:22PM
So, in the wake of a ruling that did NOT invalidate business process or software parents, you want us to be shocked the USPTO's guidance to examiners doesn't tell examiners they did so?
Look, I get most of us don't like software patents. I don't either. But the outrage in this headline (implying the USPTO was in the wrong) is unjust. Read the patentlyo article itself (not just the attachment). Note actual analysis from someone who knows what they're talking about. Note the lack of outrage. Note the lack of implication the USPTO was wrong.
Yet another poorly edited story.
(Score: 2) by janrinok on Thursday June 26 2014, @06:44PM
I strongly disagree. I did not imply any sense of outrage in the headline of this article, namely "USPTO Not Excluding Software and Business Method Patents per se in View of Alice". That is an entirely factual statement. What you may or may not have inferred from that headline is not of my concern. In fact, I went out of my way to ensure that the reporting was neutral. The quotations are each taken from the links provided. I have not claimed that they are good or bad; I have merely reported what was in the linked articles.
The subsequent comments may well have implied some level of discontent with the actual interpretation of the SCOTUS ruling however, as editor, I am not responsible for everyone else's comments, merely my own.
Please step forward and volunteer to be an editor and I will be the first to welcome you. But please don't accuse me of a bias that appears to exist only in your interpretation of what I or the submitter have written. Thank you.
(Score: 2) by MrGuy on Thursday June 26 2014, @07:10PM
You're entitled to your opinion. I don't agree.
"USPTO Not Banning Al Quaeda per se from submitting patent applications in View of Alice" would be an equally entirely factual statement. And equally relevant.
Claiming "It's just a fact" and claiming I'm the one drawing a conclusion is bunk. You chose to include the phrase "USPTO Not Excluding Business Method or Software Patents..." as the start of your headline. It's a phrase that riles people up around here. You've been here long enough to know that. And yes, I believe it's your responsibility as an editor to use such phrases responsibly.
I strongly disagree with your interpretation on what constitutes a neutral headline. "Obama does not order a recount in contested MS senate primary" would be purely factual, but it heavily implies there's a relevant question of whether he SHOULD have done so.
You really don't believe by stating things the way you did that any disapproval was implied about that exclusion? You really didn't expect people to leave comments like "The USPTO is doing the wrong thing again on patents!" simply because the headline drew them to that conclusion?
(Score: 2) by frojack on Thursday June 26 2014, @08:14PM
The submitter supplied the title, and in my experience, the title is rarely edited if it is even close to the mark.
The title is right on the mark. Alice was not written to invalidate Software and Business Method Patents, en mass in spite of the common misconception to the contrary.
All Alice did was say that an un-patentable item doesn't become patentable merely by hanging on the phrase "with a computer". That Alice Corp managed to obtain such a patent in the past was an Error by the USPTO.
The USPTO memo merely restates that examiners must:
The title and the story clearly explain the simple facts that Alice did not invalidate Software and Business Method Patents. I see nothing wrong with the submission itself or janrinok's (apparently light if any) editing of it.
That you fell victim to your own biases in this regard seems like a problem of a personal nature.
No, you are mistaken. I've always had this sig.
(Score: 2) by janrinok on Thursday June 26 2014, @08:47PM
I wonder if this is a case of GB-en versus US-en? I really do not find the title implies any bias or sensationalism. It certainly wasn't my intention to do so.
(Score: 0) by Anonymous Coward on Thursday June 26 2014, @10:01PM
I have to agree with the Guy.
This is, in light of the facts, a non-story..
I don't blame the editors because the goal here is to be permissive.
But I do blame the submitter who made it into a story
(note there is no link to any other media, just source documents).
This case is an example of the way original news reporting, as Ncommander has expressed to be a long-term goal for Soylent, can go awry. I think it might show a need for a more formal editorial policy, at least for submissions that are "original" reporting.
(Score: 1) by kc99 on Thursday June 26 2014, @11:11PM
Being the submitter, I am obviously biased, but I have to disagree that this is a non-story. Software and business method patents are certainly a topic of intense interest on SN, and given the wide-spread reporting that the SCOTUS issued a severe blow against them it is certainly newsworthy to report on the USPTO's actions in view of the ruling (particularly when those actions are contrary to what many believed the SCOTUS ruling would cause).
The headline was not intended to be anything other than factual. The "sensationalist" reaction seems to be borne out of a distaste for the facts the headline conveys.
The original submission did, in fact, include a link to the the original reporting media (http://patentlyo.com/patent/2014/06/issues-examination-instructions.html [patentlyo.com]), but that link was removed during editing.
(Score: 1, Interesting) by Anonymous Coward on Thursday June 26 2014, @06:42PM
Patent attorney here. The truly evil kind that works on software patents. /s
When I first saw the reasoning in the Alice opinion I said, "Meh. Nothing has really changed."
I agree completely with the result of the Alice opinion--the claims in question should not have been patentable; not because the underlying subject matter was "abstract," but because it was either non-novel or obvious. The prevailing analysis by the courts for software and business method patents under 35 U.S.C. 101 (patentable subject matter) using the court-created doctrine of "abstract ideas" is, in my opinion, misguided and only confusing the issue.
The framework for analyzing software and business method patents has been in place for decades, under 35 U.S.C. 102 (novelty) and 35 U.S.C. 103 (obviousness). If a method is non-novel or obvious, stating that it is performed on a computer should absolutely NOT make it patentable. This is obvious. However, a novel and non-obvious method should not be made unpatentable just because it is performed on a computer.
The USPTO gets this.
(Score: 2) by Blackmoore on Thursday June 26 2014, @07:09PM
I have to agree. the PDF from the patent office does go over novelty and obviousness. It still feels like they are saying "business as usual" - we just might have goofed that one time..
(Score: 0) by Anonymous Coward on Thursday June 26 2014, @07:20PM
Further my comment above. Some of the prevailing complaints of software patents are that they are "vague" and "over-broad." This issue of vagueness can be addressed by a more stringent application of 35 U.S.C 112 paragraph (a):
The issue of over-broad patents can be addressed by a more stringent application of sections 102 and 103. In short, a more stringent application by the USPTO and the courts of the more substantive laws for patentability (sections 102/103/112) would largely resolve many of the complaints surrounding "vague" and "over-broad" software patents, without resorting to the confused analysis under section 101. Unfortunately, section 101 seems to be a favorite of litigators and the courts (presumably because they can try to dispose of a case without having to bother with looking at the underlying technical subject matter)--leading to the confused analysis we have today.
(Score: 3, Insightful) by frojack on Thursday June 26 2014, @08:36PM
You sure the ball isn't just slightly in your own court here?
After all, if Patent Attorneys didn't continuously recommend and write the broadest possible claims, with the clear intent of preventing any possible competition, there wouldn't need to be so many cases hinging on "vague" and "over-broad" software patents.
Rather than striving for the most defensible patent, patent Attorneys all too often recommend the broadest possible claims.
No, you are mistaken. I've always had this sig.
(Score: 0) by Anonymous Coward on Thursday June 26 2014, @10:53PM
It is. Absolutely.
However, as patent prosecutors we must work within the legal frameworks we are given--with a duty to the client to fight for broadly-applicable patents. As such, we have a duty to the client to lead off with an application that we believe to provide sufficient disclosure (written description), and with claims that are the broadest we reasonably believe to be patentable and defensible. To not do so could lead to malpractice suits. It is ultimately the USPTO's responsibility to determine whether the written description is sufficient and the claims are patentable, and the court's responsibility to determine whether the written description and claim are defensible. If the USPTO and the courts permit vague and over-broad software and business method patents (both in terms of written description and claims), then (unfortunately) that is what you get--if only because they are easier to draft.
I actually feel that, in general, the USPTO does an okay job with 102/103 when examining software applications. There are definitely exceptions, and if anything Examiners apply 103 over-broadly (by combing in references in manners in which they should not be combined). Instead, I personally believe that the largest cause of "vague" and "over-broad" software patents is a lack of rigor by the USPTO and the courts in applying section 112. In particular:
They are too relaxed with respect to 112(a), by permitting specifications that do not describe the invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains" (112(a) states: "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention").
They are too relaxed with respect to 112(b), by permitting claims that are vague or indefinite (112(b) states: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention").
As a result, many patent prosecutors have taken up drafting written descriptions and claims that are vague. I try to avoid this in my own practice, since I believe the client gets a much stronger (defensible) patent with a more clear/detailed application.
If the courts would provide additional focus on section 112 (and get off their distraction with 101) when considering software and business method patents, they could tighten the rigor with which patent prosecutors are required to draft software and business method applications, and in turn increase the rigor of examination by the USPTO.
(Score: 2) by bradley13 on Friday June 27 2014, @06:00AM
Do also remember the incentives for the USPTO. As I understand the situation, their budget depends in part on the number of patents they approve. Combine this with Pournelle's Iron Law and the result is clear: they will interpret the court decision in the narrowest way possible, so that they can continue to approve as many patents as possible.
A simple change in the legislation would provide a long term solution: provide the USPTO the same payment for patent application regardless of whether or not they are approved. Disapproving an application is less work, so the USPTO would become very strict indeed.
Everyone is somebody else's weirdo.
(Score: 1) by Max Hyre on Friday June 27 2014, @04:47PM