Jessica M. Karmasek Dec. 18, 2014, 8:30am



WASHINGTON (Legal Newsline) - The U.S. Patent and Trademark Office this week issued new examination guidance on subject matter eligibility, nearly six months after the U.S. Supreme Court ruled some software method and systems patents are invalid.




The guidance can be found in a Federal Register notice officially published Tuesday, entitled “2014 Interim Guidance on Patent Subject Matter Eligibility.”




 




PTO Commissioner for Patents Peggy Focarino wrote in a blog post Monday that claim examples have been developed to illustrate the analysis set forth in the guidance.




“Following the valuable feedback that we received from the public through written comments and multiple public meetings over the last several months, we are issuing new examination guidance on subject matter eligibility under Section 101 in view of the U.S. Supreme Court’s recent decisions in Alice Corp. (v. CLS Bank International), (Association for Molecular Pathology v.) Myriad and Mayo (v. Prometheus),” Focarino explained.




 




Section 101, only a sentence or two long, describes the four categories of inventions that it declares eligible to be considered to be patented. They include: machines, compositions of matter (i.e. pharmaceuticals), articles of manufacturing (i.e. tools) and processes or methods.




 




A set of examples relating to nature-based products are already posted on the PTO website and a set of examples relating to abstract ideas will be released shortly, Focarino said.




 




“This guidance is the latest -- but not necessarily the last -- iteration of our ongoing implementation of these Supreme Court decisions,” she wrote.




 




In particular, the guidance explains the PTO’s interpretation of subject matter eligibility requirements in view of the court’s decisions and sets forth an “integrated approach” for patent examiners.




 




Focarino said the guidance incorporates principles emphasized in Alice and provides more details than its initial examination instructions, issued about a week after the Supreme Court’s decision.




 




The guidance, she said, also reflects a “significant change” from the guidance previously issued in response to Myriad and Mayo.




 




“The changes were triggered by the feedback we solicited and received from the public, as well as refinements necessitated by the Alice Corp. decision,” she wrote.




 




Focarino said the PTO “carefully considered” input from the public-- legal organizations, industry organizations, law firms, corporate entities, universities and individuals -- and its own patent examiners.




 




“We crafted this guidance to be a more straightforward eligibility analysis, one that promotes examination efficiency and consistency while conforming with the principles in the Supreme Court decisions,” she wrote.




 




In its June 19 ruling, the Supreme Court said the claims in Alice were drawn to an abstract idea.




 




Implementing those claims on a computer was not enough to transform the idea to a patentable invention, the justices ruled.




 




CLS originally sued Alice in the U.S. District Court for the District of Columbia in 2007, seeking a declaratory judgment that Alice’s patents were invalid and unenforceable and that the bank did not infringe them.




 




Alice, which countersued, claimed CLS started using their technology in 2002.




 




Alice asserted four patents -- U.S. Patent Nos. 5,970,479; 6,912,510; 7,149,720; and 7,725,375 -- against CLS, all on electronic methods and computer programs for financial-trading systems.




 




Last year, the Federal Circuit -- which handles all U.S. patent appeals -- ruled 7-3 against patent eligibility of the method claims and 5-5 on the system claims, leaving a lower court’s ruling that the system claims were ineligible in place.




 




The Supreme Court’s opinion affirmed that ruling, again deeming all of Alice’s claims ineligible.




 




However, the decision provided very little to no legal guidance to lower courts on how to decide if a computer-generated technology is patentable.




 




So, about a week after the ruling, the PTO provided its examiners with guidance on software patents.




 




Andrew Hirshfeld, the PTO’s deputy commissioner for patent examination policy, issued a four-page memorandum to all patent examining corps June 25.




 




In it, he pointed out there is no new category of innovation that is patent ineligible. Also, he noted, there are no new eligibility requirements for either software or business methods.




 




Focarino emphasized Monday that the PTO will continue to solicit feedback from stakeholders to further refine its guidance.




 




The Federal Register notice provides a 90-day written comment period, and the office encouraged the public to submit comments.




 




The PTO also plans to host a public outreach forum on the guidance in mid-January. Individuals will be able to give their input in-person or via the Internet, Focarino explained.




 




From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.


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