Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
By Tony Dutra
Jan. 27 — The Patent and Trademark Office came through on its promise to post examples that correspond with its guidance to examiners on patent eligibility as it relates to computer-related inventions.
The agency published revised, consolidated guidance on patent eligibility for life sciences, software and business method patent claim examination on Dec. 15 (241 PTD, 12/16/14). It had a detailed set of examples for life sciences stakeholders, but the office said at the time that it was still working on examples for the other technologies.
The 20-page “Examples: Abstract Ideas” document made available Jan. 27 is divided into “eligible” and “ineligible” sections, with four patents in each. One of the eight is hypothetical and the rest are based on patents reviewed by the U.S. Court of Appeals for the Federal Circuit.
All the ineligible examples were decided after the Supreme Court's decision in Alice Corp. Pty Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 110 U.S.P.Q.2d 1976 (2014)(119 PTD, 6/20/14). Two of the examples of eligible claims predate Alice.
The examples in the section on eligible claims are titled:
1. Isolating and Removing Malicious Code from Electronic Messages, with two hypothetical claims;
2. E-Commerce Outsourcing System/Generating a Composite Web Page, based on DDR Holdings, LLC v. Hotels.com LP, 773 F.3d 1245, 113 U.S.P.Q.2d 1097 (Fed. Cir. 2014)(235 PTD, 12/8/14);
3. Digital Image Processing, based on Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859, 97 U.S.P.Q.2d 1274 (Fed. Cir. 2010)(235 PTD, 12/9/10); and
4. Global Positioning System, modeled on SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319, 94 U.S.P.Q.2d 1607 (Fed. Cir. 2010)(71 PTD, 4/15/10).
The examples of ineligible claims in part two were:
5. Digital Image Processing, based on Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014) (134 PTD, 7/14/14);
6. The Game of Bingo, based on the nonprecedential opinion in Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005, 2014 BL 235907 (Fed. Cir. 2014)(166 PTD, 8/27/14);
7. E-Commerce providing Transaction Performance Guaranty, based on buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 112 U.S.P.Q.2d 1093 (Fed. Cir. 2014)(171 PTD, 9/4/14); and
8. Distribution of Products over the Internet, based on Ultramercial, Inc. v. Hulu, LLC, 112 U.S.P.Q.2d 1750 (Fed. Cir. 2014)(221 PTD, 11/17/14).
Stakeholders can comment on the guidance, including as related to the examples, through March 16.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Tom P. Taylor at firstname.lastname@example.org
Full text at http://pub.bna.com/ptcj/abstract_idea_examples.pdf.
Replay of the PTO's Jan. 16 public forum on patent eligibility and other information at http://www.uspto.gov/patents/law/exam/interim_guidance_subject_matter_eligibility.jsp.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)