Tuesday, October 02, 2007

Wall Street Journal notes Comiskey decision of CAFC

Of the Comiskey case decided by the CAFC, the Wall Street Journal wrote:

The ruling by the Federal Circuit, a specialized patent-appeals court in Washington, clarifies the scope of a landmark 1998 ruling by that court that paved the way for inventors to obtain patents on business methods. It comes at a time when pressure has been mounting on Congress to restrict the issuance of business-method patents. The House, for example, has passed a bill to ban patents on tax-planning strategies. Supporters are hoping that such a ban will be included in broader patent-overhaul legislation.

Defenders of business-method patents have said they help protect inventors and encourage innovation.

The latest ruling came in a case arising from a patent application by Stephen Comiskey, a lawyer who wanted to create a system for "mandatory arbitration involving legal documents," such as wills or contracts. The U.S. Patent and Trademark Office denied Mr. Comiskey's patent application, as did the agency's board of appeals. Mr. Comiskey took his appeal to court.


For those who don't remember, here is IBM's take on business-method patents:

Of business method patents, Kappos does not swear them off: "For example, when IBM, the top holder of U.S. patents, seeks patents for business methods, it aims to do so only for those methods underpinned by deep technical content. Pure business methods can be difficult to examine and tempt some to seek patents of questionable merit."

The CAFC found the applicant's method unpatentable because it sought to "claim the mental process of resolving a legal dispute" by a human arbitrator. The court warned that "the routine addition of modern electronics to an otherwise unpatentable invention" doesn't make it patentable.

Patently-O had written of Comiskey:

The Comiskey method of claim 1 admittedly does not require a machine, but it does require interaction with a ‘document.’ The reference to a document, however, was not enough to allow the “mental process” claim to be treated as legitimate.

“Thus, like the claims that the Supreme Court found unpatentable in Benson and Flook and the claims found unpatentable in our own cases, Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence in and of itself. Like the efforts to patent “a novel way of conducting auctions” which Schrader found to be directed to an abstract idea itself rather than a statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly novel way of requiring and conducting arbitration and are unpatentable.”

Some of Comiskey’s claims arguably require a computer to operate through “modules.” That claim construction transforms those claims to be patentable subject matter. This means that software remains patentable subject matter if a computer limitation is a proper part of the claim.

Section 101 is Safe: Comiskey appear to reinstate something akin to the USPTO’s ‘technological arts’ requirement that had been eliminated by the Lundgren decision. For Comiskey, recitation of a microprocessor as a limitation of the claims was sufficient to overcome the patentable subject matter issue. Notably, this is a rule of formality that, in most instances, can be followed without substantively reducing claim scope. Under Comiskey, there is no requirement that the technical link be something novel or non-obvious.

Section 103 is Lost: Although the question of patentable subject matter does not require a determination of nonobviousness, the reverse is not true. Nonobviousness may now require an input from the patentable subject matter stage. The most interesting lines of Comiskey are as follows:

The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”

The implicit holdings here: (1) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter;” and (2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.

1 Comments:

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