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Patent
Law:
Social
Networking Patents Emerge from US Patent and Trademark Office
("USPTO")
Amazon,
Google and Facebook have each recently been granted US
Patents for social networking related patents. Each of the patents have issued in the wake of the
important case of In
re Bilske, 545 F.3d 943 (Fed. Cir. Oct. 30, 2008), cert.
Granted sub nom. Bilski v. Doll, 129 S. Ct. 2735 (June 1,
2009) (No. 08-964), renamed Bilski v. Kappos, No. 08-964.
A decision on the Bilske case is expected sometime this spring.
The
issue in the Bilske case involves what test or set of
criteria governs the determination of whether a claim to a
process is patentable under 35 USC § 101. Specifically, the questions now before the US Supreme
Court are:
1.
1. [w]hether the Federal Circuit erred by holding that a
‘process’ must be tied to a particular machine or
apparatus, or transform a particular article into a
different state or thing (‘machine-or-transformation’
test), to be eligible for patenting under 35 U.S.C. § 101,
despite this Court's precedent declining to limit the broad
statutory grant of patent eligibility for ‘any new and
useful process beyond excluding patents for ‘laws of
nature, physical phenomena, and abstract ideas’,” and
2.
2. “[w]hether the Federal Circuit's
‘machine-or-transformation’ test for patent
eligibility…contradicts the clear Congressional intent
that patents protect ‘method[s] of doing or conducting
business.’ 35 U.S.C. § 273.” See Bilski v. Kappos, No.
08-964 (June 1, 2009) at http://origin.www.supremecourtus.gov/qp/08-00964qp.pdf.
US
Patent 7,606,725 (“the Amazon patent”) issued
October 20, 2009 for a networked computer system that
provides various services for assisting users in locating,
and sharing information with other users. The system provides a user interface through which users
can establish contact relationships with other users. The
system also provides functionality for users to identify
contacts of their respective contacts. For example, in one
embodiment, each respective user can conduct a search of
contacts of the respective user. The search may be limited
in scope to users that satisfy one or more particular search
criteria, such as users that reside in a particular region
or are affiliated with a particular group.
US
Patent 7,668,832 (“the Google patent”) issued
February 23, 2010 for a computer-implemented method of
determining and using geolocation information to target
advertisements, determine scoring and pricing information
about the advertisements.
US
Patent 7,669,123 (“the Facebook patent”) issued
February 23, 2010 for generating news items regarding
activities associated with a user of a social network
environment and attaching an informational link associated
with at least one of the activities, to at least one of the
news items, as well as limiting access to the news items to
a predetermined set of viewers and assigning an order to the
news items. The method further may further include
displaying the news items in the assigned order to at least
one viewing user of the predetermined set of viewers and
dynamically limiting the number of news items displayed.
The
US Supreme Court decision could render the validity in doubt
of many business method patents, including the Amazon,
Google and Facebook patents.
The
US Patent and Trademark Office issued Interim
PatentSubject Matter Eligibility Examination Instructions
on August 24, 2009 after the CAFC Bilske decision. In the examples provided, example claim 5 is determined to
be eligible subject matter because comparing is performed using a microprocessor,
whereas example claim 6 is not eligible subject matter even
though it provides method steps that include sorting,
ranking and comparing, but does not explicitly state using a microprocessor.
Based on this criteria, the Facebook patent may be at risk
because the only reference to a computer is in the second
paragraph, “storing the plurality of activities in
a computer…” The Amazon and Google patents by comparison, do
satisfy the criteria by performing transformational
processes by a computer.
Business
method patents will be front and center soon after the US
Supreme Court issues its ruling and there will be plenty at
stake.
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Federal Circuit ("CAFC") Affirms Description is Separate from Enablement in Patent Specification
In
an en banc, 9-2 decision, the CAFC, affirmed that
Section 112, first Paragraph of 35 U.S.C. requires that a a
patent specification not only describe the manner of making
and using a claimed invention, but also separately requires a
written description of the claimed invention. Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co.,
Fed. Cir., No. 2008-1248, 3/22/2010.
The court emphasized
that if Congress had intended enablement to be the sole
description requirement of section 112, first paragraph, the
statute would have been written differently.
Furthermore, the rationale for a patent grant is a quid pro
quo exchange between the inventor and the US Government.
The court found that a "vague functional description and
an invitation for further research does not constitute a
written description of a specific inhibitor." Slip
Op. at page 33.
This case illustrates the hazards of rushing, too soon
to file a patent application in a rapidly developing
technology. If the application is filed too soon, before
sufficient disclosure is available to support the claims, the
validity of the claims could be challenged successfully.
On
the other hand, the application should still be filed as soon
as possible to avoid a priority of invention contest at the US
Patent and Trademark Office.
This
case arose in the context of the pharmaceutical technologies
where some applications are filed before specific examples are
available to support species (dependant) claims. The
impact of this case is not limited to pharmaceuticals however.
Many Internet, business method patents were filed with
specifications that lacked in depth details concerning the
claimed subject matter or some of the claims. The
validity of many of the business method patents claims may now
be at risk.
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US
Patent and Trademark Office News:
Workflow
may Pickup at the US Patent and Trademark Office by the Third
or Fourth Quarter of this Year
The workflow at the US
Patent and Trademark Office ("USPTO") has slowed
down dramatically over the past couple of years. First
Office Actions, which historically issued within 12-18 months
after filing a new patent application are now taking over two
years. Even though the delays are added to the patent
life under the American Inventors' Protection Act, the delay
creates problems for inventors and patent owners because they
do not know know the extent of the patentability of their
inventions until the USPTO issues an opinion on patentability
or when a patent actually issues.
In an effort to speed up the slow turning gears at the USPTO,
a hiring campaign in underway. The hiring is targeting
people who either have patent examining experience or
experience working in the Intellectual Property field and who
have the skills necessary to examine patent applications.
The recent announcement drew in over 4,000 applications.
The USPTO has published
a schedule that describes when decisions should be made on
who will be hired from the large bank of applicants. According
to the schedule, individuals who are hired could start work as
early as May 10th, June 7th or July 6th, 2010.
This is all potentially great news to the patent community and
to inventors and invention owners. We will all benefit
when the USPTO returns to a reasonably paced workflow.
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