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The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility

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In December 2014, the USPTO released its Interim Guidance on Patent Subject Matter Eligibility, which summarized the sprawling case law of 35 USC 101 into examiner instructions. The 2014 Interim Guidance was a cautious document, tracking closely with court opinions, but lacking insight into important questions that the courts had not yet answered. Regarding the critical issue of the types of claims that remain patent-eligible under 35 USC 101, especially for computer-related inventions, this material provided little comfort.

In late July, the USPTO released an update to the Interim Guidance with a remarkably different tone. Undaunted by the unchecked growth of invalidity decisions and very few findings of patent-eligible claims, the July update presents a set of hypothetical claims, characterizes these claims as patent-eligible, and provides an extensive analysis under Alice that supports this finding. Through this bold step, the USPTO fills crucial gaps in 35 USC 101 that the courts have failed and even refused to mend – and although the courts’ conformity with these opinions is by no means guaranteed, the July update adds much-needed balance to the discussion of subject matter eligibility.
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The Software Squeeze: The Treacherous Path for Software Patent Eligibility

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The Alice decision has led to a heap of opinions invalidating patents for computer-related inventions – each holding that the reviewed claims provide (a) an idea that does not involve technology, and (b) an instruction to “apply it” using a generic computer. These decisions rebuke patentees’ failure to limit their claims with the details of a particular technique, and for overbroadly claiming any solution involving a simple concept.

However, a second line of cases, also citing Alice, have invalidated patents for the opposite reason: the claims recite an abundance of technical detail about a specific technique, yet the courts dismiss these details as either “purely conventional,” and/or “mathematical concepts” that are not eligible for patent protection.

These opposing lines of cases, driving against the body of software patents from opposite directions, require the inventors of computer-related inventions to walk a narrow path between qualitative description (claims rejected for overbreadth) and algorithmic description (claims rejected as mathematical or conventional). This path is being steadily narrowed, as the piles of invalid patents on each side continue to mount – threatening a categorical exclusion of computer-related techniques as patent-eligible inventions. This result is astonishing not only in its own right, but in contrast with the Supreme Court’s explicit and consistent rejection of such an exclusion over the 35 years since Diamond v. Diehr.
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Lighting Ballast and Williamson: Functional Claim Language In Focus

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In the past week, two Federal Circuit decisions – Lighting Ballast v. Philips Electronics, and Williamson v. Citrix – have taken up the issue of the sufficiency of functional claim language, and the scope of claims interpreted according to the “means-plus-function” claim form under 35 USC 112(f).

This topic has been simmering for some time, and academics and reform advocates have been clamoring for the courts to pick up this issue. The Federal Circuit now appears ready to entertain these arguments, and a new front has opened in the “patent reform” wars. This topic bears much discussion, as it is likely to be at least as contentious and important as Alice.
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Post-Alice Patent-Eligible Business Methods

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Although many aspects of the Alice opinion are unclear, one definite result is that Alice did not hold that “business methods” are categorically excluded from patent protection.

This result raises the question: What types of business methods would be patent-eligible under Alice? This article considers some hypothetical business method inventions, and how such inventions might be claimed in a manner that is likely to satisfy the heightened patent-eligibility requirements of Alice.
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Alice Corp. v. CLS Bank: “Basically” vs. “Something More”

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Today’s Supreme Court decision in Alice Corp. v. CLS Bank shows that we’ve basically gone nowhere since the 2010 Bilski decision.
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Disrespecting Software

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This week’s intellectual property news is dominated by the Supreme Court oral argument in Alice Corp. v. CLS Bank, over the patent eligibility under 35 U.S.C. 101 of an invention in the field of financial transactions. The Supreme Court’s decision in this case will (or, at least, might) address several key questions of wide-ranging importance, including the definition of the term “abstract,” in the context of the utility requirement of patent eligibility.

The topic of this post is about the attitudes about software, as a technology, that appeared during the Alice Corp. v. CLS Bank oral argument, and that pervade the field of patent law.
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