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Monday, December 14, 2015
Many consider having an idea into a patent and
living the entrepreneurial dream. For
those who enjoy abstractions that is the beginning of something that could be
valuable for all to use. Many clients have
the same query, “I have an idea and would like to know how to protect it.”Ideas are not expressions that can be covered
under the Copyright Act.Ideas are not
inventions for them to be covered by the Patent Act. While all start from an idea per se, it is the
kernel of what make it ‘intellectual property.’Without that ‘kernel’ there would not be the exclusive right that would
be attributed to the resulting item.
for many clients is how to take the idea into a patent and draw it to the point
of it being concrete so that it is no longer a concept. So while an idea cannot be protected that
should not be the final step.The idea
merits functional description and descriptive application and implementation.Hence, the preliminary juncture toward a
patent, i.e., an invention.
and ideas have gotten an outside corner 92 mph slider since the Alice decision*
where the court weighed that a computer
service for financial transactions was abstract and not sufficiently tangible for
it to be considered a patentable subject matter. The take away from the Alice decision was that
business methods or software were to be considered the same as was the computer
service in Alice. The conceptual turn
that shines a bright light is the language from the decision in the Finjan
case, whereas Finjan claimed, its invention was not abstract because it is
based on computer technology and it seeks to address a tangible problem that
occurs in computers. It also argued that its claim was
essentially a technical function for protecting computer networks.
its argument, Finjan resorted to the Patent Office’s Interim Guidance on Patent
Subject Matter Eligibility” of 2014.In
the Guidelines, there was a similar hypothetical to the actual claim that
Finjan was seeking to establish in the case which related to detecting and
removing malicious code from communications. The court, while noting the stated guidelines
and the similarity, therefore reasoned that what Finjan was claiming was not an
abstraction nor was it an abstract idea.It determined it to be a ‘function’ of software to ‘achieve’ the
elimination of malicious code in electronic communications.
court decided that the claimed patent had described identifiable steps to the
claimed performance that as identified was to recognize the intrusive malicious
code, remove it, and create a security file.This, the court stated, has meaning nowhere else but within computer technology.
The lesson to be drawn from this case was
that the initial idea was coupled with a descriptive functionality that achieved
an identifiable result. Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999 (11.20.15) (NDCA)
*Alice Corp. v. CLS Bank International, 573 U.S. __, 134
S. Ct. 2347 (2014).
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