A brief recent history of patenting software in the United States goes something like this: before 1998 it was possible, but the internet was just coming to its own so there were not many software patents; then in 1998 the State Street decisionwas handed down. The State Street decision essentially said that patents that claimed inventions for methods and processes traditionally accomplished using manual techniques but now accomplished using a computer process or method such as spreadsheets, financial calculations etc could be valid – that is, they were at least within patent subject matter and not merely laws of nature. In the ensuing years before the run up to the turn of the century “everything under the sun” in software and internet technology was sought to be patented, and hundreds of thousands of “software” patents were issued. The crash of 2000 wiped out a lot of marginal internet businesses, however software patenting continued in earnest under State Street. Thanks in part to the combination of the huge number of software patents issued and the bankruptcy of a lot of companies after the financial crashes of 2000 and 2007, a new industry was born – the so called “patent troll” or in our parlance, non practicing entity (NPE) or patent assertion entity (PAE). Whatever you call it, the business model is to sue companies that use what most of us consider to be “basic building blocks” technology in those patents. Economically patent suits are staggeringly expensive so many companies, including many of our clients, opted to pay -or colloquially – feed the troll – it just made more economic sense. However, slowly bigger companies started fighting back. What was born from that unholy (or holy, depending on your view) war was a series of Supreme Court cases, starting with In Re Bilski, and finishing on the Alice Corp decision.
Alice Corp literally laid waste to nearly every software/internet patent in its path. Alice Corp’s impact can be seen in the somewhat dramatic reduction of patent filings since it issued (see 2015 Patent Litigation Study) – some people have just given up trying… Recently, however, a Federal Circuit decision has given some hope in overcoming Alice Corp.
In Enfish v Microsoft the Federal Circuit found that certain database technology process described in the patent was not abstract – that is, that the invention overcame the first prong of the 2 part Alice Corp test. Under Alice Corp and the previous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.  If so, we then ask, “[w]hat else is there in the claims before us?”  To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application.” The first prong of the test is known as the “abstract idea” prong, meant to embody “the longstanding rule that ‘[a]n idea of itself is not patentable.” So, for example “an algorithm for converting binary-coded decimal numerals into pure binary form” was merely abstract because it sought to “in practical effect . . .  patent  the algorithm itself.” Likewise, “a method for hedging against the financial risk of price fluctuations” was unpatentable because “”the basic concept of hedging, or protecting against risk. [is] a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.'” The addition of the computer did not transform the idea of hedging into anything inventive. Most cases that find prong 1 of the test go on to find that whatever the system or process that is claimed in the patent is, it is not sufficiently transformative to overcome the 2nd prong.
In Enfish, the Federal Circuit held that the database technology described in the claim was not abstract. The specific technology deals with a better method of handling related database data. In a traditional relational database, an information source is stored in one table, another information source is stored in another table, and the relationship between those tables is either defined in columns on each table, or held in a third “pivot” table that defines the foreign table keys that link the tables together. The invention in Enfish involved placing all of the related data in ONE table, and defining the relationships in table columns in that same table. The effect of doing that was to make the process of retrieving related data faster and more efficient, among other benefits. This invention thus directly impacted computer process efficiency – in this case, database efficiency. The Federal Circuit held that “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. . . [a]ccordingly, we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.”
The patent lawyers at Oliver & Grimsley have overcome Alice Corp rejections in several instances, and have learned to navigate the intricacies of obtaining patent protection over computer based technology. In a series of future articles we will go over some of the issued patents we have been counsel on and some of the issues that come up during prosecution of software and computer based patents.
Multi-Purpose Wrist Worn Tool Watch: O&G Timely Moves Through USPTO to Obtain Patent
We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,304,496, entitled: “Multi-Purpose Tool Watch Housing Multiple Tool Members to be moved from a Stored Position and Extended Position for Use”. This application proceeded through the patent office in less than one year as a prioritized application.
The invention is an integrated combination of a wristwatch with multi-purpose tool members that may be stored and extended from a wristband housing. Use of the tool watch is particularly suited for an individual to carry a tool set in a convenient form on the user’s wrist and to be able to access tools during daily or outdoor activities.
Congratulations to Patrick Hancock on his recently issued patent!
We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 8,827,115 entitled, “Container for Storing, Measuring and Dispensing a Liquid” that proceeded seamlessly through the patent office in 3 months, 26 days. The invention relates to an improved device for storing, measuring and then dispensing, using only gravitational forces, a user-selected specific volume of liquid.
Generally, the length of time it takes to navigate the patent system is 2-3 years for a regularly filed application. For an additional filing fee, a prioritized application may be filed to expedite the examination process to about one year, which is how our client elected to proceed.
In addition, the USPTO generally rejects 85%-90% of all filed patent applications at least once. In this case, however, Oliver & Grimsley, LLC was able to successfully clear the patent prosecution phase without any rejections, which allowed the application to issue in record time — 3 months, 26 days, much earlier than the one year anticipated time frame.
Congratulations to Victor Katz for his recently issued patent!
We are pleased to announce that Oliver & Grimsley, LLC has been named as one of the 2015 Top Patent Law Firms in the United States byIntellectual Property Today Magazine (IP Today). We are truly grateful and glad to be of service. A special thanks to our clients who have trusted us with their patent matters.
Oliver & Grimsley, LLC receives questions from time to time regarding the patent process and the time it takes for an application to proceed through the U.S. Patent and Trademark Office (USPTO).
The timeframe for a regular application to proceed through the USPTO is on average 2 to 3 years, and in some cases even longer, depending on the subject matter of the application. It is hopeful that with the recent opening of additional satellite offices, the USPTO can reduce the number of applications per examiner and enhance the overall speed with which examiners handle and review pending patent applications.
With the signing of the America Invents Act (AIA) in 2011, the USPTO moved forward with the plan to open four satellite offices over the next several years. In July 2012, the USPTO opened its first ever satellite office in Detroit, Michigan and more recently, on June 30th, the USPTO opened the Denver, Colorado satellite office. The USPTO will create a regional presence across every continental U.S. time zone with the upcoming addition of two more satellite offices. In 2015, the USPTO plans to open the permanent Dallas, Texas and San Jose, California satellite offices. Through these satellite offices, the USPTO plans to aid inventors in their respective time zones and help to alleviate the backlog at the USPTO Head Quarters, although patent examiners have not yet been hired.
In addition, in order to increase the speed of the patent examination process, the USPTO also initiated two fast-track application options in 2012. The Fast Track Option for an “accelerated examination” of applications will take, on average, about six months to proceed through the patent office. This option requires the applicant to submit detailed explanations and arguments up front with the filing of the application. Therefore, work that is generally conducted throughout the examination process is submitted upfront with the filing in order to aid the speed at which the application is examined. The Fast Track Option for a “prioritized examination” of applications will take, on average, about one year to proceed through the patent office. These Fast Track Options come with additional costs to the applicant, but do provide the additional speed at which an applicant may seek to have their application proceed through the examination process (depending on the applicant’s circumstances).
At the opening commencement ceremony of the Denver, Colorado satellite office, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee commented that “[w]e are excited to bring our department closer to our customers by opening the doors of this new USPTO satellite office – a one-stop-shop for intellectual property services that will help the Rocky Mountain region’s inventors and entrepreneurs speed their innovative products and technologies into the marketplace.”
In addition, “[b]y retaining and hiring more talented examiners locally, we can further improve the overall quality and transparency of our operations while continuing to reduce patent pendency on a national scale,” said Lee.
While some are doubtful, we will keep our fingers crossed that the USPTO follows through on its intention to hire examiners in order to increase the speed of applications being reviewed in the patent office. In addition, we look forward to the positive effects that satellite offices will have on the patent system as a whole and the benefits that will be conveyed to inventors as they continue to file and proceed through the patent application process.
For more information on this topic, please contact U.S. Registered Patent Attorney — Pamela K. Riewerts, Esq. at firstname.lastname@example.org