Bottom line: Patent applications directed to software inventions should be written to disclose the result and the effect of the software, but more importantly, the mechanism of the result or effect of the software. Doing so may increase the odds that the software invention will be considered to be eligible for patent protection. Nevertheless, inventors should be aware that current statistics for allowance of software related patent application is significantly lower than patent applications related to other technical art units.
In Internet Patents Corp. v. Active Networks (Fed. Cir. 2015), the patent was directed to maintaining data between dynamically generated web pages. The patented invention was helpful when filling out multi-page forms on the web. Oftentimes, the user may want to go back to a different web page but was warned that doing so will cause some sort of data loss. The patented invention allows the user to go back and forth between web pages while maintaining the data.
Personally, I like the idea because it saves time and frustration. I’ve had my share of loss of data when filling out forms on the web.
In Active Networks, the court found that the patented invention was ineligible for patent protection and invalidated the patent. But why?
The Active Networks case adds to the growing body of case law related to Section 101 or patentable subject matter. Here, the Federal Circuit admits that the current Section 101 analysis has been conflated to a certain degree with Section 102 (i.e., Novelty) and Section 103 (i.e., obviousness) analyses. The Court states:
Determination of what is an inventive concept favors inquiries analogous to those undertaken for determination of patentable invention, for a known idea, or one that is routine and conventional, is not inventive in patent terms.
Courts have found guidance in deciding whether the allegedly abstract idea (or other excluded category) is indeed known, conventional, and routine, or contains an inventive concept, by drawing on the rules of patentability.
The difficulty in conducting a Section 101 (i.e., patent eiligibility) analysis based on Sections 102 (novelty) and 103 (obviousness) inquiries is that the court does not conduct a thorough Section 102 (novelty) and Section 103 (non-obviousness) analysis when determining Section 101 (eligibility). In other words, based on less than all of the information for novelty and non obviousness, the court makes a go / no-go determination of eligibility. In light of this deficiency, as a drafting tip, it may be a good idea to argue the novelty and non-obviousness aspects prior to providing arguments in favor of patent eligibility so that the examiner, the Patent Trademark Appeal Board, judge or jury can have a better appreciation of the invention before ruling on patent eligibility.
The part of the opinion that I also found helpful as a drafting tip for patent applications and advising clients dealing with software patents is that the court made a distinction between claiming the result or effect versus the mechanism (i.e., how-to)for the result or effect. The court states that:
“The mechanism for maintaining the state is not describe, although this is stated to the essential innovation. The court concluded that the claims is directed to the idea itself – the abstract idea of avoiding loss of data. IPC’s proposed interpretation of “maintaining state” describes the effect or result dissociated from any method by which maintaining the state is accomplished … .”
The court looked to the claims, not the specification to determine what the invention is. Here, the patent’s claims were directed to the effect, not the mechanism for maintaining data between web pages.
Over 150 years ago, this country dealt with similar issues dealing with patentability. In O’Reily v. Morse, Samuel Morse built repeater stations in order to transmit information long distance over a wire. The problem with transmitting an electrical signal over a wire long distance was with the loss over a distance. The repeaters restored the information and signal before it became noise. Morse attempted to claim much more than that. He wanted patent protection for all ways of transmitting information with electromagnetism. In this case, the court held that his claim was invalid for not enabling the full scope of the claimed invention. Morse invented one way (i.e., repeaters) for long range electronic communication, not all ways. Hence, he didn’t enable the full scope or reach of the claims.
In today’s environment, the court attempts to use Section 101 instead of enablement (Section 112) to work through the eligibility issues. In my estimation, the courts seems to be using the blunt tool of Section 101 to do the fine work required by Sections 102 (i.e., anticipation) and 103 (obviousness). Nevertheless, this is how the court has chosen to weed out certain inventions from being patented.
The Section 101 analysis used to be a sort of quick check to make sure that the invention met minimum standards for patent eligibility and that eligibility leaned on the side of inclusion, not exclusion. If we set the bar too high then worthy inventions will not be awarded a patent. If the bar is low, then some patents will issue which should not have for the sake of ensuring that all worthy inventions are patented. Hopefully, the fine tools of sections 102 and 103 will prevent unworthy invention from being protected by a patent if it does inadvertently pass over the section 101 hurdle. Currently, the Patent Office and the courts are struggling with what is and is not eligible for patent protection.
I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.