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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 The Game of Bingo, based on the nonprecedential opinion in Planet Bingo, LLC v. VKGS LLC, 576 Fed.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 firstname.lastname@example.org
To contact the editor responsible for this story: Tom P. Taylor at email@example.com
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.
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