Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles. Section 100(b) provides that “[t]he term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article. (pp.6-7)

The Court further held:

This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.” (p.8)

The Court left the door open for the Federal Circuit Court of Appeals to create a limitation consistent with §101:

Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent. See ibid. But beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101. (p.12)

It is clear from a reading of the opinion that all of the members of the court agreed on two points: (1) Bilski’s patent application was unpatentable because it claimed an abstract idea; and (2) the Federal Circuit Court of Appeals exclusive reliance on the machine-or-transformation test in determining patent eligibility was incorrect.

The Court recognized that unlike the opinion delivered by the Federal Circuit Court of Appeals, judicial restraint was the best path to avoid a broad impact of unforeseen consequences:

Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the Court resolves this case narrowly on the basis of this Court’s decisions in Benson, Flook, and Diehr, which show that petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas. Indeed, all members of the Court agree that the patent application at issue here falls outside of §101 because it claims an abstract idea. (p.13)

The patent application here can be rejected under our precedents on the unpatentability of abstract ideas.  The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr. (p.16)

Based on my reading of the oral arguments from last November, the opinion delivered by the Court today is not a surprise.  It is, however, a welcome correction of the Federal Circuit Court of Appeals error in this case.

Track I:  prioritized examination
Track II:  traditional examination under the current procedures
Track III:  for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.

In addition, for applications based on a prior foreign-filed applications, no action would be taken until the USPTO receives a copy of the search report, if any, and first office action from the foreign office as well as an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO.

The proposed initiative is intended to decrease overall pendency by:

1.  increasing resources in Track I to increase output;
2.  reusing search and examination work done by other patent  offices;
3.  the belief that some applicants who chose Track III might not ultimately pursue their applications; and
4. the belief that some applicants who first file abroad will not ultimately pursue their applications in the US.

Additional information concerning the proposed initiative is provided in the Federal Register: June 4, 2010.  Public input has been requested.  A public meeting will be held on July 20 at 1:30 p.m. at the USPTO and written comments must be submitted to the USPTO by August 20, 2010.

As a patent attorney whose clients have experienced some exceptionally long pendency in the patent examination process, I am happy to see the USPTO proposing realistic actions to address the patent examination backlog.

The USPTO announced that: “To date, more than 950 requests have been filed by applicants who wish for their application to be eligible for the Green Technology Pilot Program.  Only 342 of those have been granted, primarily because many of the inventions weren’t in classifications that were eligible.  The lifting of the classification requirements is expected to allow many more applications to be eligible for the program.”

To participate in the pilot program, a patent applicant must file a petition to make special under the Green Technology Pilot Program that satisfies all of the other requirements set forth in the December 8, 2009, Federal Register notice.

As a patent attorney, I am proud to work with a number of clients who focus on innovative green technologies and other environmentally friendly and sustainable inventions.  If you are interested in learning more about the pilot program or any of the patent services I offer, contact me for a free consultation.

In its first issue, Ronald Jaicks of the Office of the Solicitor, wrote an article entitled Protect Your Innovation: Avoid Scams.  There are numerous horror stories about inventors working with less than reputable invention promotion companies, many lawsuits filed against various scam companies, and the like.  In this article, Jaicks lays out three steps inventors should take before signing up with an invention promotion service.  With the number of inquiries I receive from inventors and clients regarding invention promotion or invention development companies, I believe it is worthwhile for every inventor to follow Jaicks’s advice:

1.  exercise your legal right to receive telling information from companies offering invention promotion services¹;

2.  visit the USPTO’s website for scam prevention to obtain additional information on scam prevention, including a list of published complaints against invention promoters and a link to the Federal Trade Commission’s website where you can learn if a particular company has been investigated or fined; and

3.  search the invention promoter’s name on the Internet and see what turns up.

In my experience, inventors will be best served by doing their homework before dealing with any invention promotion service.  My thanks to InventorsEye for laying out the appropriate plan for inventors to follow to do their research.

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1.  The American Inventors Protection Act of 1999 requires invention promoters to disclose the following information to a customer in writing, prior to entering into a contract for invention promotion services: (1) the total number of inventions it evaluated for commercial potential in the past five years, as well as the number of those inventions that received positive evaluations and the number that received negative evaluations; (2) the total number of customers with whom it contracted in the past five years, not including customers who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter; (3) the total number of customers known by it to have received a net financial profit as a direct result of the invention promotion services it provided; (4) the total number of customers it knows to have received license agreements for their inventions as a direct result of the invention promotion services it provided; and (5) the names and addresses of all previous invention promotion companies with which it or its officers have collectively or individually been affiliated in the previous ten years. (see pages 83 and 84 in the linked Act)

P&G’s philosophy is that by opening their innovation process to third parties, they can leverage the best of innovation, essentially fostering a partnership with the public.  In an interview in November of 2008, Jeff Weedman, Vice President, External Business Development, said of the Connect + Develop program, “Ultimately, we want people with great ideas to come to us and let P&G show them how to best use those ideas.  But we also want to be able to share with them the (financial) rewards and protect their intellectual property.”

If you are an inventor looking for a company to help bring your invention to life, take the time to look at P&G.  They have a description of their program, a portal for submission, a well organized description of specific needs and an FAQ related to their program.  I appreciate P&G’s approach to innovation and it might be a valuable opportunity for you and your invention.

Hand-held apps are no different from other software when it comes to patent eligibility and patentability.  I have been patenting computer programs and software my entire career and am increasingly seeing new patent applications related to mobile applications.  If you are interested in learning more about patenting your software, contact me to discuss filing a utility patent application with an experienced patent attorney.

If you have any suggestions for intellectual property related topics you would like to see discussed, please leave a comment with your suggestion below.  If you would like to subscribe to the Intellectual Property Rights Guide Newsletter, please send your email address to me at patrick@richardspatentlaw.com or by providing your contact information via my contact form.

IP rights are not inherently valuable. Their value is the strategic advantage gained by excluding others from using the intellectual property. To be valuable, your exclusionary rights should be strategically aligned with your business objectives. Without a strategic alignment, you may be wasting your investment and missing opportunities to capture valuable market advantages.

The most valuable IP rights are those that provide a competitive advantage over your competitors and build equity in your brand. Whether your products provide unique functionality, improved efficiency or desirable aesthetics, the marketable value is in having your brand recognized as the exclusive source of these offerings.

Utility patents

With respect to your utility patents, your objective is to be the exclusive source of the critical functional aspects of your products. Accordingly, when planning a patent strategy, the most relevant question to ask isn’t, “what does your invention do,” but rather, “what does your invention do that you would like to prevent your competition from doing?” If you can claim capture a valuable distinction, your patent may hold great value.

Design Patents

With respect to your design patents, your objective is to be the exclusive source of products that embody a characteristic visual element. Design patents that protect the aesthetics of your products can tie into your branding and trademark strategies to help you build and maintain long-term value in your products and brand. Preventing others from riding the coattails of your creative designs may be the key to retaining and increasing sales, even when the competition is able to provide similarly functioning products.

Trademarks

With respect to your trademarks, your objective is to have customers recognize your marks as the source for quality products or services within your market. The trademarks you choose may have limited value at their inception, but as your products and services are recognized for their quality and innovation, the goodwill associated with your trademarks grows. Further, like patents, trademarks are assets that your company can license or sell. An experienced intellectual property attorney will help you secure your trademark rights and help you build and leverage their value as your business grows.

Whatever your business or product offerings may be, the value of your IP rights will depend greatly on how well you align your intellectual property protection with your business goals. Make sure you are working with an intellectual property attorney that helps you focus your strategy on valuable rights.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The court uses this language to support a written description requirement wherein the patent specification itself must demonstrate possession of the invention.  The court explains that, “while the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.”  The court also holds that the enablement requirement separately requires the patent specification enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention.

From a practical perspective the court recognizes “perhaps there is little difference in some fields between describing an invention and enabling one to make and use it, but that is not always true of certain inventions, including chemical and chemical-like inventions.”

As a result of this holding, it is as important as ever to ensure that your patent application includes an enabling disclosure that clearly demonstrates possession of the invention.  These requirements apply to all utility patents regardless of whether they start as provisional or non-provisional utility patent applications.

The various proposed reforms include, among other provisions:

• adoption of a “first inventor to file” system rather than the current “first to invent” system
  • our first to invent system tends to favor large institutions over independent inventors
  • moving to a first inventor to file system beings the US more in line with international patent laws
• additional and improved procedures for public participation in patent examination
  • the amendment expands the public’s ability to submit prior art against pending patent applications
  • the amendment provides a new post-grant review process whereby the validity of recently issued patents may be challenged
• addition of a supplemental examination procedure to enable patent owners to request review of their patents in light of new issues of patentability
  • may be used by a patent owner to strengthen a patent as it is entering litigation
  • the process will not absolve those responsible for prior misconduct in front of the USPTO from disciplinary sanctions
• elimination of the best mode requirement (thought to be duplicative of the written description requirement)

Additional provisions relate to: false patent marking issues; venue selection in patent cases; willfulness in the context of patent infringement; and the establishment of a pilot program to develop patent expertise at the district court level.

It will be interesting to see whether the time has come to implement patent reform or whether we will continue to wait as we did with respect to the proposed patent reform in the Patent Reform Act of 2006, the Patent Reform Act of 2007, the Patent Reform Act of 2008, the Patent Reform Act of 2009…