Step 1: The first step requires determining whether the claimed invention is directed towards an abstract idea. Abstract ideas include fundamental economic practices, methods organizing human activities, an idea itself, and mathematical ideas or formulas. Most, if not all, business method based software inventions are considered being directed to an abstract idea under this test. Step 2: If the claimed invention is directed to an abstract idea, then the second step of the framework requires determining whether the claimed invention a limits the implementation of an abstract idea with a particular technology, b improves another technology or technical field, or c improves the function of the computer itself.
If any of these conditions are met then the claimed invention is supposed to be considered as patentable. While one patent may have been determined as eligible, the same rationale fails for another. Needless to say, the patent office has been unable to achieve reconcilable results.
Without clear direction, the patent office examiners tend to take a very narrow interpretation of the Alice test and would rarely consider any argument passing muster of step 2 unless a software implementation of the invention is described. As of the writing of this post, the PEG issued on October provides the latest guidance using which examiners are evaluating the subject matter eligibility of a software patent application. Inventors and their attorneys should use these guidelines to ensure that the disclosure of the patent application provides sufficient detail to overcome the evaluations the examiner is expected to perform.
This does not mean that inventors, or those who aspire to become inventors, should give up at the idea stage when the realization is made that there is only an idea present without some identifiable manifestation, but it does mean that more work is necessary in order to flesh out the idea and bring it across the idea innovation boundary.
The goal is to get to the point where the idea it is concrete enough to be more than what the law would call a mere idea. The moral of the story is that mere ideas cannot be protected, so inventors need to think in terms of an invention.
Inventions can be patented. Ideas cannot be patented. You just need to get from the idea that inevitably begins the process to an invention, which is the culmination of the innovation part of the journey.
And once the culmination of the innovation journey is realized then it becomes time to file a patent application. As one contemplates moving from idea to invention to patent and ultimately, hopefully riches, a dose of reality is in order.
First, stop thinking you will get rich by selling your idea to industry and sitting back and collecting royalty checks for doing nothing. That may be what late-night TV commercials want you to believe, but it is not reality.
If inventing were as easy as thinking up an idea and riches would follow practically everyone would be a rich inventor! Ideas are a dime a dozen. They are valuable because they are a necessary part of the innovation journey, but it is not the idea in and of itself that creates monetary value, rather the valuable proposition inventors provide those interested in buying or licensing invention rights is found in the solution.
Inventors make money by identifying a problem, formulating an idea about how that problem can be solved, and then creating a solution.
For example, the observation that using a snow shovel to clear snow is a back-breaking endeavor is obvious to anyone who has ever shoveled snow. The desire or belief that there has to be a better way to remove snow from a residential driveway is likewise not revolutionary, or particularly valuable.
But if you were the first person actually able to build a mechanized solution that would throw or blow the snow off a driveway you would have an invention that could be patented, and one that could be quite valuable in the hands of the right licensee. Perhaps royalty checks would roll in, but would it be for doing nothing? That mailbox income that might show up every quarter for years is attributed to the work done to create a valuable solution to the problem.
The idea matured into an identifiable manifestation that was valuable in the hands of another. Essentially, what inventors need to do is identify a problem, formulate the idea and then work toward finding a solution. The above example of a snow blower is an illustration of a common inventive idea becoming a reality by identifying a task that can be made easier with a new device.
The snow blower pictured here was patented on November 25, and is titled Snow Blower Safety Chute. The improvement here is with respect to element 22, the safety chute. The patent explains that despite manufacturer warnings people injure themselves every year because when they attempt to clean out the compacted snow from the discharge chute, they do not stop the engine. The Supreme Court decided that software for managing settlement risk did not qualify for a patent.
It was labeled an abstract idea. In the Alice case, the court decided that a claim on the patent application focused on an abstract idea.
This is notable because most patents have some sort of abstract idea in them, but in this incident, the claim was specifically directed at that idea. The court's decision involved a lot of legalese, but the end result had a vast impact on the world of software patent law.
The Alice case set a precedent. If a piece of software improves the way a computer or another device functions, it is more likely to qualify for a patent.
This case, as well as the Bilski v Kappos case, contributed to the ever-changing guidance on what is patentable and what is not. Many patents were labeled invalid after the Alice case. After software was first recognized as deserving of patents, the USPTO still didn't research as well as it should have when reviewing applications.
This resulted in some patents being issued for inventions that did not truly deserve it. Many believe that software patents are a threat to innovation. This is because new programs often rely on older, patented programs to work well. Patents can interfere with developers' ability to put existing programs to use. For example, a smartphone developer may be stopped from using — and perhaps improving on — a certain type of menu because a competitor holds the patent for that component. Thousands of software patents are in effect, and each one gives its holder the right to stop others from using that software program for 20 years.
This puts limits on innovation. One group, End Software Patents, lists some reasons why they believe that software should not be patentable. The suits affect not only technology companies but many other types of businesses. It is also worth noting that many modern conveniences, such as email and the internet, came into existence before it was widely accepted that software is patentable.
The creators of these inventions did not need patents to innovate. In October , a decision by the US Court of Appeals for the Federal Circuit weighed in on the debate over whether software should qualify for patents. The ruling said that such patents are a "deadweight loss on the nation's economy" and threaten the right of free speech that the Constitution grants.
The ruling found that three software patents, held by Intellectual Ventures, were invalid because the patented material wasn't eligible for patent protection. Intellectual Ventures had a reputation as a " patent troll ," which means that it bought patents and then sought to take advantage of other companies that were supposedly infringing on those patents. The judge in the case even went so far as to say that the Alice decision mentioned earlier effectively put an end to software patents.
He also stated that the monopolies that patents grant limit free speech. An experienced patent attorney will be able to tell you if your invention is patentable and can guide you through the complicated patent process. Ken LaMance. Ken joined LegalMatch in January Since arriving, Ken has worked with a wide assortment of talented lawyers, paralegals, and law students to grow LegalMatch's Law Library into a comprehensive source of legal information, written in a way that is accessible to everyone.
Ken holds a J. Jose Rivera. Law Library Disclaimer. Can't find your category? Click here. Choose a Legal Category: Family Law. Real Estate and Property Law. Criminal Law. Personal Injury. Defective Products. Intellectual Property. Business and Commercial Law.
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