Computer-implemented inventions

The term “blockchain” is everywhere, and it is likely that you will interact with blockchain technology every day in the years to come.

Blockchain technology recently came to the public’s attention thanks to rising prices in cryptocurrencies, like Bitcoin.  However, it continues to expand into almost anywhere information is stored, like primary voting, healthcare, and real estate.  Startups are even using initial coin offerings (ICOs) built on blockchain technology to raise money instead of using a more traditional venture capital route.  A startup company can release its own digital currency, which investors can purchase instead of buying shares in the company.  In 2017, startups raised $6.8 billion through ICOs.

What is blockchain?

Continue Reading What is blockchain and how will it affect me?

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgEarlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101.  Both patents—the ’050 and the ’610—are directed to filtering email or file content.  (IV does not challenge the invalidation of a third patent, which was directed to receiving, screening, and distributing email.)  The petition echoes concerns raised by clients, courts, and the patent bar about the growing uncertainty about what is—and what is not—patent eligible, especially in the area of software patents.  Identifying two emerging fault lines in the court’s evolving section 101 jurisprudence, IV urges the full court to bring much needed doctrinal clarity and methodological consistency to the patent eligibility analysis. Continue Reading Intellectual Ventures Petitions Federal Circuit for Full Court Review

In our fifth “IP for Start-Ups” video, “Copyrights versus Patents to Protect Software Innovations”, Mike discusses the pros and cons of using copyrights or patents to protect your software. There are advantages and challenges inherent in either approach, and Mike provides insights into each. He gives particular attention to the Alice Corp v CLS Bank Int’l decision at the US Supreme Court which made it much harder to patent software.

Click here for the full “IP for Start-Ups” video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

Void 201When it comes to Enfish, the PTAB may have just indicated that it prefers to cut bait. In Informatica Corp. v. Protegrity Corp., CBM2015-0021 (May 31, 2016), the PTAB held that U.S. Patent No 6,321,201 was void under Alice despite the Federal Circuit’s recent holding in Enfish v. Microsoft.

Although the Informatica patent, like that at issue in Enfish, pertained to databases[1], the PTAB held that the ‘201 database patent hewed too closely to “normal functions and … expected results” and thus was an abstract idea under part one of the Alice test. The patent was held to lack sufficient non-routine subject matter to take it out of the realm of pure abstraction and thus was invalidated under Alice step two. Addressing the ‘201 patent’s subject matter eligibility, the PTAB held that the patent’s independent claims were directed to “the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied” and that its necessary relationship to the computer space was irrelevant as “[t]he databases and access rules recited in claims 1 and 8 perform their normal functions and achieve expected results.” Continue Reading Even After Enfish, Alice Still Casts a Shadow at the PTAB

Patent owners continue to face an uphill battle at the Patent Trial and Appeal Board.  According to U.S. Patent Office statistics as of December 31, 2015, a majority (72%) of the 529 Inter Partes Reviews (IPR) proceeding to trial and receiving Final Written Decisions ended in all examined claims being invalidated.   The story is worse for Covered Business Method (CBmortgage-processing-patent-usptoM) patent post-grant reviews, where 81% of the 69 CBM proceedings receiving Final Written Decisions as of December 31, 2015 found all examined claims unpatentable.  And the trend continues, with the Board issuing last week a Final Written Opinion invalidating all examined claims of a mortgage processing patent as unpatentable for failing to claim patent eligible subject matter.

In E-Loan, Inc. v. IMX, Inc., CBM2015-00012 (Paper No. 19), Petitioner E-Loan sought CBM review of claims 7, 8, 26, and 27 of U.S. Patent No. 5,995,947 (“the ’947 Patent”) under 35 U.S.C. §101.  The ’947 Patent describes a method and system for loan processing, such as making and trading loan applications.  Claims 7 and 8 recite a method of processing loan applications involving maintaining a database of pending loan applications and their statuses at a database server, where each party to a loan can search and modify that database consistent with their role in the transaction by sending requests to the server from a client device.  The role may include a lender and the client device may include a lender station associated with at least one lender, where the lender can search the database for desired loan types, bid on loan applications and receive notification when a bid is accepted.  Claims 26 and 27 are directed to a system having a database, a transaction server, a lender station, and a message notifying the lender that perform the steps recited in claims 7 and 8. Continue Reading USPTO “Forecloses” on Mortgage Processing Patent under Alice

On June 19, the Supreme Court of the United States (SCOTUS) handed down another unanimous opinion in a closely watched patent case.  Alice Corporation v. CLS Bank International addresses patent eligibility of computer-implemented inventions.  This is the third patent case issued by the Court in as many weeks.  (See Mintz Levin’s recent alert on the Limelight and Nautilus decisions.)

In Alice, the Court affirmed the Federal Circuit’s holding that all the patent claims at issue, which include method, system, and media claims, are invalid under 35 U.S.C. §101.  In reaching its decision, the Court applied a two-step framework: first, determining whether the claims at issue are directed to one of the patent-ineligible categories (laws of nature, natural phenomena, or abstract ideas); and second, if so, determining whether the elements of each claim contain an “inventive concept” sufficient to transform the unpatentable category into a patent-eligible application.

Our attorneys present a comprehensive discussion of the decision and its impact on you in this client alert.

Written by David Wraige

There is a general belief that it is not worth applying for patent protection for computer-implemented inventions and software in Europe because the legislation, at first glance, excludes computer programs and business methods from patentability. However, these sorts of exclusions have been modified over the last few years, in many cases allowing companies to seek meaningful patent protection for software both in Europe and the U.S.A.

Mintz Levin Attorneys Anne Campbell and David Wraige recently published an article on the changing patent landscape in Cleantech Business News. As Anne and David explain in “Computer-Implemented Inventions – Are They Patentable?”, many computer-implemented methods are now considered to be more than just a computer program under patent law and may therefore be patentable. To obtain patent protection in Europe, the invention must make a technical contribution to the world. In the cleantech industry for example, computer-implemented control of a solar panel could be patentable. More recently, software that results in an improvement in the efficiency of a computer system has been held to be patentable in the UK.

Written by Rich Gervase and Peter Snell

After an en banc hearing at the United States Court of Appeals for the Federal Circuit (CAFC), questions remain about the patent eligibility of software under US Patent and Trademark Office rules (specifically, § 101).  The CAFC upheld the district court decision in CLS Bank Int’l v. Alice Corp. Pty. Ltd. (CLS Bank) that certain software-based systems, submethods, and computer-readable media for mitigating risk in financial transactions through third-party intermediation are not eligible for patent protection.  However, the court was sharply divided in its reasoning, issuing six separate opinions.  (Read the CAFC’s full decision here.) Continue Reading Questions Remain in US – Is Software Patentable?