Sunday, February 26, 2017

Software Patent Filings Abstract Snags

Software patent filings have gone through snags during the approval process.  For many, not having a clearly stated specific enhancement to preexisting software was a liability to the filing's success.  Failing to satisfactorily describe a technical improvement on providing the innovation to the previous invents is another snag.  Not distinguishing the innovation from previous filings and from what appears to be a conventional purpose and function is as well critical to its success.  The struggle is with the abstraction of the descriptive process about the functionality of the intended software.  What gets lost is the detail necessary to demonstrate valued distinctions that set it apart as a new filing from preexisting related applications and functions in the field within which the software inventor seeks.
The Supreme Court in the Alice[1] case, iterated the standard for overcoming a Rule 12(b) failure to state a claim for patent eligibility.  As articulated. “a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101.”  Furthermore, the Court has held that “Laws of nature, natural phenomena, and abstract ideas are not patentable.” [2]  In Mayo, the Court stated that on the basis of patentability/validity determination that is determination that is independent of . . . any other statutory patentability provision.[3]  It is in Mayo, that the Court established its two-step process to assess patent filing that only provide for abstract ideas.
The first step was to determine if the filing’s claim point to a patent-ineligible concept. If that is established, then the next step would be to determine if the “the elements of each claim individually or in combination allows the filing to have the nature of the claim transform to a patent-eligible application.”[4]  As the Court filters through patent filings for software, the challenge is to discern what is truly novel and game changing on the software computing field and what is a routine process of imitation with different function, but still achieving the same without development and or improvement.
To this concern, the Court distills between software-related patent claiming an improvement to a process or system from those filings that are claiming language reciting an invention’s pinpoint discernable improvement to what has already been active in computing.  In its own discourse, the Court alludes to the close calls, i.e., “in other cases involving computer related claims, there may be close calls about how to characterize what the claims are directed to.”  That is, “some inventions’ basic thrust might more easily be understood as directed to an abstract idea, but under step two of the Alice analysis, it might become clear that the specific improvements in the recited computer technology go beyond “well-understood, routine, conventional activities” and render the invention patent-eligible.[5]
The Court in Bascom, stated that the patent filing claims to “filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.”  But what was distinctive, was the order of description of the specific function for the individual claims apart from what was conventional among computers, Internet Service Providers, networks, and filtering. The analytical inquiry into a claim’s patent eligibility weighs on the specific description of the inventive concept claimed.
The Bascom Court further elaborated, “the claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components. Such claims would not contain an inventive concept.” “Filtering content on the Internet was already a known concept, and the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content.”   The specific location for the filtering system which was to be a remote ISP server, and allow the users to have the ability to adjust the filtering for their network accounts, distinguished it from the abstract concept of filtering in general.
Hence, a new way and an improvement was recognized as applicable to the claim being filed for a patent.  Description of steps of claims cannot solely be achieving a process by function but must key in on way is the distinguishing feature from the conventional understood prior existing application.  Or else, filing snags will continue for software patent filings seeking innovative ways to describe the same but with not so distinguishing improvements.
[1]Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014)
[2]Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (quoting Mayo Collaborative Services. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012).
[3] Mayo, 132, S. Ct. at 1303–04 (citing Bilski v. Kappos, 561 U.S. 593 (2010); Diamond v. Diehr, 450 U.S. 175 (1981), Parker v. Flook, 437 U.S. 584 (1978).
[4] Mayo, 132 S.Ct. at 1297.
[5] Bascom Global Internet Services v. AT&T Mobility, LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).

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