I’ve decided to write my third Side Bar this week: if you are a tech business person, you should read it.
You may be aware that the United States Patent and Trademark Office (USPTO) published guidance in the Federal Register on January 7, 2019 that relates to patentable subject matter in the tech space. If you have a tech business and have ever attempted to patent your technology in the United States, you have probably been told at least once by a patent examiner that your invention amounts to an “abstract idea” that is not patentable. Said examiner may have referred to the “Alice/Mayo” test, which is the progeny of Supreme Court case law. You may or may not have understood what the examiner was talking about, and you are not alone.
This kind of thing has been going on for quite some time and has been frustrating for patent practitioners and their clients. Interestingly, the USPTO seems to have recognized this and suffered from its own internal frustration on the matter and decided to issue some helpful new guidance without waiting for a court case to work its way through the system!
Only time will tell how helpful this guidance is, but I like it.
The USPTO has recognized that since the Alice case, there have been numerous cases where courts have found the subject matter of similar patent applications abstract or non-abstract depending on the case or the venue. This has made patent prosecution extremely unpredictable where inventions involving computer algorithms are concerned. I can tell you from experience that we patent lawyers have had to get creative to position inventions in this area for allowance.
What I like about the USPTO guidance is that I think it embodies what we patent practitioners have been doing since Alice: convincing patent examiners that a practical application of a perhaps abstract idea is and should be patentable.
The guidance directs examiners to evaluate whether a claim recites elements that integrate an underlying abstract idea into a practical application thereof and consider that claim for allowance (assuming the other statutory criteria are met) in the event that it does.
I really like this guidance because I think it captures the essence of what every software-based invention is. The inventors come up with novel algorithms that solve a problem or provide an efficiency where there was a need. These inventions are truly the integration of those ideas into practical applications…or “apps”.
Anyway, if you are in the tech world, the patent world, or are just interested, I suggest you take a look at this guidance. There is much more to it than I have just explained.
Look for an article from me in the next year or so about how this guidance has been used!
Thanks for reading my Side Bar and have a great weekend!
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Scott Lloyd is a registered patent attorney who specializes in intellectual property counseling and commercialization work. He has served as a technology commercialization specialist and advisor to companies in a diverse array of markets, including biotechnology, pharmaceuticals, medical devices, food and beverage, specialty chemicals, technology, and engineering. In addition, Mr. Lloyd spent ten years as in-house general counsel to small and mid-sized companies, where he managed corporate matters and resolved commercial disputes in addition to intellectual property strategy, and now serves in the same capacity for entrepreneurial clients. He serves as counsel to small and mid-sized business owners seeking to implement growth strategies and succession plans.
While in house, Mr. Lloyd has also contributed to the successful formation of international affiliates of domestic businesses as well as a $400,000,000 business acquisition.
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