Monday, December 14, 2015

Idea Patent

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.   

The struggle 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.

Business methods 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.

In 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.  The 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).

Lorenzo Law Firm is “Working to Protect your Business, Ideas, and Property on the Web."
Copyright 2015, all rights reserved Lorenzo Law Firm, P.A.  

No comments:

Post a Comment