Anita Gogia is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Pessimism is to innovative culture as heat is to ice. It slowly destroys but can be remedied by its polar opposite. On April 28, Halimah DeLaine Prado, the general counsel at Google, wrote about her optimism for innovative culture in an online post. She outlined reforms and recommendations that .

Google’s contribution to the US patent system

Healthy patent systems can sometimes be as a way to incentivize creative inventions, encourage building on existing ideas, and avoid frivolous litigation. Google has created a space that incentivizes innovation by being one of the first companies to . Google has invested in patenting and licensing their engineers’ inventions (), and has sold patents to smaller companies to help strengthen their portfolios. Google also helped the License on Transfer Network. This Network protects members from patent trolls’ claims, these ‘patent trolls’ are described as companies that bring patent claims for profit and to supress competition.

Concern with the US patent system

Patent litigation has been on the , with 46% more patent litigation lawsuits in 2021 than in 2018.

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Patent trolls and opportunistic companies, as DeLaine Prado describes, weaponize patents against competitors which deters innovation and harms the quality of new products. Most notably, says the American “prized ‘culture of innovation’ is being undermined by a ‘culture of litigation.’” ��Such litigation wastes court resources and are a shakedown tactic or to “stretch patents beyond recognition.” Resources spent on wasteful litigation is better used in research and development for new products. In contrast, Google has a history of confronting overreaching patent claims and defending their users and products. Smaller companies “nascent technologies” are unable to fight these lawsuits without raising costs for consumers or harming their ability to create new products.

Google’s recommendation

Google proposes 3 developments: support for the US Patent Trademark Office (PTO), Judiciary review of forum shopping, and congressional changes to address patent abuse.

The PTO receives . The evaluation process has not been streamlined because PTO employees are under-resourced despite the PTO working on AI solutions. Such inefficiency leads to possible issuances of invalid patents, inventors may then be unable to protect their inventions confidently. Others end up having to defend infringement claims against patents that . Google that investing in the patent office can help prevent such issues and are that “important work can finally begin” by the new director of the PTO, Kathi Vidal.. Google also funding the PTO by increasing fees for larger patent filers (including themselves).

At the judicial level, Google Chief Justice Roberts urgently investigates the judicial imbalances caused by abusive forum shopping. DeLaine Prado recommends ending forum shopping as many companies suing patent claims may damage the integrity of the judicial process. In a year-end report on the federal judiciary, Justice Roberts pledged to direct the judicial conference to address patent venue rules and that the . The extreme concentration of patent cases in Waco, Texas in Judge Alan Albright’s court has concerned Senators. To illustrate, approximately 20% of all US patent litigation is filed in Judge Albright’s court.

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Senators have also raised concern that Judge Albright has . have raised concern that this patent-owner friendly policy attracts patent trolls. Senators also note that current case assignment procedures may allow the plaintiff to select a specific judge to hear their case.

Google supports legislation before congress that reduces abusive patent litigation, restoring access to inter partes review, and increasing accountability. Inter partes review was a created by Congress as part of the America Invents Act that helps companies cost-effectively invalidate low-quality patents. This program was created to provide expert review of patents with the greatest impact on the US economy, however changed PTO rules created some barriers to use the program that could be reduced.

Overall, Google’s concern with the lack of promotion of innovation and creativity by the US patent system will likely spark debate and potential reform in the near future.

The post Google’s dialogue in the conversation of improving the US Patent System appeared first on IPOsgoode.

Emily Xiang is an IPilogue Writer, the President of the Intellectual Property Society of Osgoode, and a 2L JD candidate at Osgoode Hall Law School.

This article is part of a series covering the 5th Annual IP Data & Research Conference, hosted by the Canadian Intellectual Property Office and the Centre for International Governance Innovation.

On Thursday, March 24th, 2022, the Canadian Intellectual Property Office (CIPO) and the Centre for International Governance Innovation (CIGI) hosted their 5th Annual IP Data & Research Conference. For their third themed session, “IP Metrics”, experts were invited to speak about the ways they have been observing global IP trends, making IP data more accessible, and measuring the impact of IP on economic growth in Canada.

Where do Canadians Patent? Implications for Canada’s Patent Regime

Joel Blit, Professor of Economics at the University of Waterloo and CIGI Senior Fellow, kicked off the session. Blit examined the countries in which Canadian investors filed patent applications and sought to determine the extent to which the Canadian patent regime fosters domestic innovation. He found that Canadians were increasingly filing patents abroad, with more Canadians filing in at least one other country each year. Results also showed that patents filed exclusively in the US related to more advanced fields of computer sciences and technologies, while Canada-exclusive patents focused more on special-purpose machinery and the resources and energy sectors. Canadian patents also tended to belong to individual inventors rather than larger assignees, involved fewer inventors, and were cited less frequently, making them relatively less valuable in the global market for innovation.

Blit puts forward several potential explanations. One is that the Canadian patent system is providing less incentive over time for protecting domestic innovations. Another explanation is that Canadian patents are too strong, meaning it may be preferable to “weaken” them by setting higher examination standards, limiting patentable subject matter, or reducing the scope of issuable patents. That Canadians are increasingly patenting abroad could mean that Canadian inventors are becoming increasingly sophisticated, yet it could also mean that Canadian innovations and ideas are more frequently bought up by multinationals. Either way, the current Canadian patents regime seems to play a relatively minor role in promoting domestic innovation worldwide.

Identifying Artificial Intelligence (AI) Invention: A Novel AI Patent Dataset

Nicholas A. Pairolero, Economist in the Office of the Chief Economist at the United States Patent and Trademark Office (USPTO). delivered the second presentation of the session. Pairolero’s team sought to make data on AI more accessible to the public by developing a novel dataset that identified AI tech components in over 13.2 million USPTO patents and pre-grant publications.

After first determining a definition of AI, Pairolero and his team searched through USPTO’s patents using an automated machine learning (ML) model that differentiated between patent documents that did and did not contain any AI component technology. In the evaluation stage, expert AI examiners evaluated each document for AI component technology. Compared to more traditional, query-based approaches, the ML approach resulted in relatively lower precision (as a much larger number of documents were identified as containing AI), but a much higher recall (higher probability of correctly identifying AI). Moreover, both machines and humans seemed to struggle with classification at the boundaries of the various AI component technologies. However, results indicated that the ML approach achieved state-of-the-art overall performance relative to a variety of existing benchmarks from academic and policy literature, holding much promise for the future of automated processing in expediting the transmission of publicly available data.

Missions, Mandates and Metrics: What are the Right Metrics for Academic Technology Transfer?

The session concluded with a pair of presentations by Mike Szarka, Director of Research Partnerships at the University of Waterloo, and Natalie Raffoul, IP Lawyer and Managing Partner at Brion Raffoul LLP. Szarka began by suggesting that most Technology Transfer Offices (TTOs) focused on some combination of a) maximizing gross revenue and licensing income generally; b) focusing on the few projects that would maximize profits; c) maximizing knowledge mobilization and research impact; d) maximizing local economic growth, and e) maximizing client satisfaction and prioritizing the needs of faculty and students. Szarka’s surveying of TTO directors across the country demonstrated that knowledge mobilization, economic development, and service to academic communities ranked much higher in the minds of the respondents than revenue generation, indicating that commonplace TTO metrics focused on royalties do not reflect the true priorities and missions of most TTOs.

Raffoul identified several alternative metrics focused on “the betterment of Canadian society”. Average reported business expenditures invested into research and development () and have been low in Canada compared to the global stage. The greater concern is whether Canadians are owning their ideas and subsequently having the opportunity to commercialize those ideas downstream (instead of assigning their rights over to foreign firms). Raffoul suggested that TTOs ought to track the number of patents they are licensing/optioning/transferring to Canadian headquartered firms compared to foreign ones, along with the revenue generated from those licenses/options/transfers and any research collaborations with those firms. For company-sponsored academic research, co-ownership of patents ought to be held up to co-authorship of papers and publications, in order to correlate evidence of knowledge creation with the ultimate ownership and control of that knowledge.

Conclusion

Though there is much work to be done for Canadian innovators and owners to remain competitive in the global market, the most recent advancements in research and technology prove that Canada is well-positioned to identify shortcomings and well-equipped to tackle them.

The post IP Metrics: Notes on the 5th Annual IP Data & Research Conference appeared first on IPOsgoode.

Students interested in trying out for Osgoode’s PADC team must submit answers to our�� in a Word document with your name in the file name to��iposgoode@osgoode.yorku.ca.

Each member of the team will receive up to��3 credits��for participating in the competition.��Please note that only 2L and 3L students may participate.��Please also note that under Academic Rule 4.3e, students may participate for credit in only one lawyer simulation competition in a given academic year unless they obtain permission from the Director of Mooting and Lawyering Simulations.

About the Patent Drafting Competition

Originally created in 2014 as a midwest competition, the Competition is today a national inter-law school competition designed to introduce law students to issues arising in United States patent law. Participants will have the opportunity to develop their patent prosecution skills by applying legal principles to a hypothetical invention scenario (“Invention Statement”) and appreciating the intricacies of drafting a patent specification and claims that are both patentable and valuable. Each team will complete a search pertaining to the Invention Statement, draft a utility patent application, and defend their decisions before a panel of judges comprising USPTO executives/personnel, patent practitioners, academia and/or special guest judges.

The Competition consists of regional rounds held virtually. The winner of each regional round will compete in the National Finals held at the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia. ��

The Competition consists of regional rounds held virtually. The winner of each regional round will compete in the National Finals held at the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia. ��

Invention statements will be released to teams on November 1, 2021. Team patent applications will be due on January 16, 2022. Regional virtual tryouts will be held on March 5, 2022, followed by the National Finals Competition on April 8, 2022.��

Read about the experiences of the students on last year’s team here:��

The complete set of rules for this year, can be found here:��.

If you have further questions or would like more information, please email Ashley Moniz at��amoniz@osgoode.yorku.ca.

We look forward to another great year at the Patent Drafting Competition!

The post REMINDER: Tryouts for the USPTO National Patent Application Drafting Competition Team - DEADLINE TOMORROW appeared first on IPOsgoode.

Students interested in trying out for Osgoode’s PADC team must submit answers to our by 3 pm on Friday, October 22, 2021.�� Please send your answers in a Word document with your name in the file name to iposgoode@osgoode.yorku.ca.

��Each member of the team will receive up to 3 credits for participating in the competition. Please note that only 2L and 3L students may participate.��Please also note that under Academic Rule 4.3e, students may participate for credit in only one lawyer simulation competition in a given academic year unless they obtain permission from the Director of Mooting and Lawyering Simulations.

About the Patent Drafting Competition

Originally created in 2014 as a midwest competition, the Competition is today a national inter-law school competition designed to introduce law students to issues arising in United States patent law. Participants will have the opportunity to develop their patent prosecution skills by applying legal principles to a hypothetical invention scenario (“Invention Statement”) and appreciating the intricacies of drafting a patent specification and claims that are both patentable and valuable. Each team will complete a search pertaining to the Invention Statement, draft a utility patent application, and defend their decisions before a panel of judges comprising USPTO executives/personnel, patent practitioners, academia and/or special guest judges.

The Competition consists of regional rounds held virtually. The winner of each regional round will compete in the National Finals held at the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia. ��

The Competition consists of regional rounds held virtually. The winner of each regional round will compete in the National Finals held at the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia. ��

Invention statements will be released to teams on November 1, 2021. Team patent applications will be due on January 16, 2022. Regional virtual tryouts will be held on March 5, 2022, followed by the National Finals Competition on April 8, 2022.��

Read about the experiences of the students on last year’s team here:

The complete set of rules for this year, can be found here: .

If you have further questions or would like more information, please email Ashley Moniz at amoniz@osgoode.yorku.ca.

We look forward to another great year at the Patent Drafting Competition!

The post CALL FOR TRYOUTS - USPTO National Patent Application Drafting Competition appeared first on IPOsgoode.

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Claire Wortsman is an IPilogue Senior Editor and a 2L JD Candidate at Osgoode Hall Law School.

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Which trademark battle? THE trademark battle—the one over who owns trademark rights in the word “THE”. In May 2019, Marc Jacobs Trademarks L.L.C. (MJT) to the United States Patent and Trademark Office (USPTO) seeking registration for use of the word “THE” on clothing, handbags, and related goods. Three months later, The Ohio State University (OSU) their own application for use of the word “THE” on clothing and related goods.

Although OSU claims to have used the mark in commerce since August 2005, MJT’s application was filed earlier. As a result, OSU was informed in September 2019 that MJT’s application may bar theirs from registration. In April 2021, OSU a Notice of Opposition claiming damages if the USPTO registered the mark “THE” to MJT. THE dispute between the two parties continued from there.

In August 2021, OSU withdrew their opposition proceeding. A university spokesperson that it was “pleased to have reached an agreement with Marc Jacobs,” noting that, “Marc Jacobs’ THE branded products are associated with high-end/contemporary fashion,” and would therefore be sold through different channels than OSU’s THE branded athletic and collegiate products. Likely connected to the agreement reached with OSU, MJT their trademark application in April 2021. They added the qualifier that their list of goods be, “promoted, distributed, and sold through channels customary of the field of contemporary fashion.” On the other hand, OSU’s application qualifies that their list of goods will be, “promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”��

OSU’s withdrawal of their opposition proceeding does not, however, guarantee the success of MJT’s application. OSU is not the only party to object against MJT. The USPTO previously problems with MJT’s application, particularly that the mark fails to function as a trademark, “indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” For example, in MJT’s most recently submitted trademark ‘’, the word “THE” appears ornamental.

The specimen, a red sweater, features “THE” in black lettering, “directly on the upper-center area of the front of a sweater where ornamental elements often appear,” rather than “on the pocket or breast area of a shirt,” where, “consumers may recognize small designs or discrete wording as trademarks.” OSU’s submitted , a red T-shirt, features “THE” in white lettering, also on the upper-center area. OSU’s T-shirt also features the Nike logo on the pocket or breast area as well as the Ohio State logo directly underneath the “THE” lettering. While a mark may be simultaneously ornamental and source-identifying, something merely ornamental may not be registerable as a trademark and will likely be refused for failure to function.

In my experience, both Marc Jacobs and OSU have several clear, source-identifying marks and “THE” is not one of them. While I might be able to tell that a high-quality sweater with “THE” lettering is a Marc Jacobs product, that does not mean that “THE” is source-identifying. Those interested in fashion could also likely identify a as an Alberta Ferretti product. Yet Alberta Ferretti likely would not successfully trademark “MONDAY,” “TUESDAY,” and so on.�� ��

The USPTO that OSU submitted many blog posts, articles, and comments as evidence which refer to “THE OHIO STATE UNIVERSITY” as a whole, not “THE” on its own. This is similar to the way in which “THE” sits on top of the “OHIO STATE” logo on OSU’s submitted specimen. In my view, “THE” alone would not be enough to indicate what the apparel represents, or even which university (The University of Oklahoma? The University of British Columbia?).

As a consumer, I find both THE applications puzzling as I fail to see how “THE” is source-identifying. That being said, the USPTO will have the final word—or already has in OSU’s case, if OSU fails to respond to their most recent Office Action by February 2022, in which case their application will be deemed abandoned. In the meantime, I will keep an eye out for more updates on THE matter.

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We were given a hypothetical inventor’s disclosure, which this year involved a collision avoidance helmet. The disclosure provided information on why the invention was created, what features it included, and drawings of the invention. Although the disclosure provided a lot of information, it was challenging at first to sort through all the details and determine what was relevant for the invention. There was also the added challenge of the inventor not being a real person who we could call ask to explain certain aspects in more detail or discuss why a certain feature was included. We’ve since learned that the real world of patent drafting requires a lot more client interaction to make sure everyone is on the same page.

Fortunately, our two excellent coaches, and from Bereskin & Parr LLP, helped us along the way. They made the competition much more approachable, helping us know where to start, and giving us the “dos” and “don’ts” of patent drafting. They helped us figure out a roadmap, starting with a prior art search and then focusing on claim drafting. To conduct our prior art search, we pulled out all the key features of the invention and used these as keywords to find the relevant prior art. Although we were confident that we had a workable list of related keywords for our prior art search, we were surprised to find a lot of prior art that shared our invention’s features. In fact, one prior art reference had almost all of the features of our invention. This prior art reference consisted of an augmented reality motorcycle helmet with comparable audio and visual systems, capabilities of contacting emergency responders in a collision, and even the option to add full or partial brake control to prevent a collision. Consequently, this really limited our claim drafting strategy as we had to keep the patent requirements of novelty and obviousness in mind.

In drafting our claims, we decided on three independent and seven dependent claims. The independent claims consisted of an apparatus, method, and system claim. Admittedly, our first attempt at claim drafting was very naive. We used terms such as ‘helmet’ and ‘camera’, which we later learned were restricting as they didn’t account for the non-helmet and non-video features of our invention, respectively. We also made the mistake of claiming features that other inventors could easily work around. As such, in our first few meetings with Paul and Denver, we focused on refining our claims to make them broader. We also focused on identifying the point of our invention. That said, during our next few attempts, we wanted to root the claims in what we believed was the most novel and non-obvious feature of our invention: the ability to accelerate and decelerate in the event of an impending collision. Or, as we fancily called it, ‘positive and negative acceleration’.

We decided to include this feature in our independent claims. For example, in our method claim, we drafted a step-by-step approach wherein the cameras and sensors of the wearable headpiece (the broader term for helmet that we decided on) would detect a threat object and subsequently engage breaks or the electronic power assist to provide positive or negative acceleration in the event of an impending collision. In our system claim, we drafted a circuitry wherein a control signal would be transferred from the receiver to the transmitter by the processor – all of which were embedded within the wearable headpiece – to do the same. As for our dependent claims, we included less important features of our invention which served to invalidate a subsequent invention should it successfully go through the independent claims without infringing. Overall, our independent claims varied in scope and content in order to strike a balance between honouring our inventor’s vision and gaining as wide protection as possible.

While we experienced great relief upon submitting our patent application and a sense of joy after conquering the tediousness of claim drafting, we went to the virtual regional rounds ready for questioning; sure enough, we were challenged on the narrowness of some aspects of our claims. All this to say, this experience taught us that the claim drafting process is never-ending, but that’s okay. Different people will have different approaches and viewpoints and there is no one perfect claim. We tried, and we are extremely proud of our growth in just a few months. Not to mention, we did this all virtually for the first time ever.

We encourage anyone interested in patent prosecution to try out for next year’s team. It’s a challenging but extremely rewarding experience!

Written by Maddie Lynch and Eloise Somera.��

Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

Eloise is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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INITIAL REFUSAL BY THE USPTO

On July 24, 2019 and August 28, 2019, the USPTO responded to the and to the with initial refusals.

With respect to the pink-lined box trademark application, the USPTO argued that the colour mark was not inherently distinctive. As stated by the USPTO, colour marks are never inherently distinctive and can only be registered if there is sufficient proof of acquired distinctiveness. This was not the case for Glossier. Specifically, the Office points the applicants to different versions of pink-branded boxes sold with beauty and cosmetic products, including various goods from . Since consumers are accustomed to seeing the colour pink used on packaging for cosmetic and beauty goods, the USPTO states that consumers are likely to believe that the pink colour is a decorative feature, rather than attributable to a particular owner.

The pink bubble wrap was also refused by the USPTO, specifically due to the fact that the packaging appears to be a functional design, as outlined in of the US Trademark Act. The applicant’s specimen demonstrates that the circles that appear on the packaging are a type of cushioning that is generally used as a protective feature for the goods being stored. Therefore, a central feature of the packaging has a specific utilitarian function. Further, the Office notes that the mark consists of a non-distinctive configuration of packaging that is not registrable without sufficient proof of acquired distinctiveness. 

MODERN BRANDING

With the increase of social media and influencer marketing, brands continue to distinguish themselves from competitors based on the packaging of their products. When sending products to influencers and public figures, companies are aware that the “” process may be shared on the influencer’s social media feed, likely reaching  a large number of highly engaged followers. If the product that is sent is promotional or advertised, a video of the influencer unboxing the goods may even form part of the sponsorship agreement.

Brands use this unboxing experience as a way to reach new and existing consumers. This is especially relevant with respect to millennial consumers. It is unsurprising that brands like Glossier, who have built an identifiable, prevalent and consistent brand image, are seeking trademark protection for their investment in their product packaging.

WHAT’S NEXT?

Although the both of the Glossier’s marks have been refused registration, Glossier may respond to the refusals contained in the USPTO office action by submitting evidence and arguments in support of registration within six months. Given the increasing and prevalent use of product packaging to appeal to consumers and define a brand’s image, it is likely that trademark applications such as Glossier’s will continue to be filed in the USPTO and in other jurisdictions, including in Canada.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

The post Glossier Tries Building Brand’s Image by Filing Two Trademark Applications for the Packaging of its Products appeared first on IPOsgoode.

The United States Patent and Trademarks Office (USPTO) has released an updated set of Eligibility Examination Guidelines to provide guidance to examiners on when to reject claimed inventions as ineligible abstract ideas. These guidelines give a sense of what computer-implemented subject matter the USPTO considers to be ineligible for patent protection.

Developing guidelines was difficult for the USPTO as the courts have provided little explanation of when patent claims are invalid for defining ineligible abstract ideas, or even what abstract idea means, and the USPTO lacks the authority to craft its own definitions. The USPTO is largely limited to telling examiners that patent claims cover abstract ideas if they cover subject matter that is similar to what the courts have determined to be abstract ideas. Given the absence of general concepts or principles for identifying the kinds of abstract ideas that are not eligible for patent protection, practitioners and applicants need to be aware of all of the Federal Circuit and Supreme Court case law on patent subject matter eligibility, and to craft patent claims with arguments in mind as to why the subject matter covered by the claims is materially different from subject matter determined to be ineligible in any of this case law.

The original 2014 Interim Guidance on Patent Subject Matter Eligibility¹ document (“the Guidance”) defines steps to be taken by an Examiner to assess subject matter eligibility.�� Steps 2A and 2B apply the two-part analysis from Alice² and Mayo³.��In step 2A the Examiner determines whether the claim is directed to a statutory exception to patent protection: a law of nature, natural phenomenon or an abstract idea.��If not, then the claim is eligible for protection (although the Examiner must still determine whether the claim meets the other requirements for patentability, such as novelty and non-obviousness).��If the claim is directed to a law of nature, natural phenomenon or an abstract idea, then step 2B applies and the Examiner determines whether the claim as a whole represents “significantly more”.�� Claims that do not cover significantly more than a law of nature, natural phenomenon or abstract idea are ineligible for patent protection and are to be rejected under 35 U.S.C. § 101.

The posting of the Guidance in 2014 provoked much comment and criticism, some critics alleging that under the Guidance virtually nothing was eligible for patent protection. The July 2015 Update on Subject Matter Eligibility⁴, (“the Update”) responds to these comments and criticism.

The Update provides an updated set of subject matter examples, and also divides the case law into different categories of abstract ideas, which are useful both as a credible attempt to organize the case law, and to provide insight into the USPTO’s perspective on this case law and arguments they may find persuasive.�� It also provides reassurance that the USPTO is addressing criticism that under the current rules post-Alice⁵ there is not a clear path forward for software patent applications because of the difficulties encountered with subject matter objections. The Update makes it clear that examiners should not determine a claimed concept to be an abstract idea unless the claimed concept is similar to at least one concept that either the Federal Circuit or the Supreme Court have identified as an abstract idea. In other words, applicants should be able to avoid having their claims rejected, at least in the USPTO, on subject matter eligibility grounds by defining concepts in the claims that differ sufficiently from claim concepts invalidated on these grounds by the Federal Circuit or the Supreme Court.

Of course, much will depend on how aggressive and creative examiners are in determining that claimed concepts they are considering are similar to a concept determined to be an abstract idea by the courts. Further, the Update makes it clear that this determination of similarity does not require evidence: examiners can ground such a rejection by merely explaining, clearly and specifically, why the claimed concepts are similar to concepts determined to be abstract ideas by the courts, and are thus ineligible for patent protection.

New Examples

In the Update, several new examples are provided in addition to those found in the original Guidance document and include:

21. ��Transmission of Stock Quote Data – modeled after the claims at issue in Google Inc. v. Simpleair, Inc.⁶, (Claim 1 ineligible, Claim 2 eligible).
22. ��Graphical User Interface for Meal Planning – based on Dietgoal Innovations LLC v. Bravo Media LLC⁷ (Claim 2 ineligible).
23. ��Graphical User Interface for Relocating Obscured Textual Information (Claims 1,4 eligible, Claims 2-3 ineligible).
24. ��Alerting System for a Catalytic Chemical Process --�� based on Parker v. Flook⁸ (Claim 1 ineligible).
25. ��Temperature Control of Rubber Molding --�� based on Diamond v. Diehr⁹ (Claims 1-2 eligible).�� Claim 1 is the actual claim 1 from Diamond v. Diehr, Claim 2 is a hypothetical claim in the form of computerized instructions.
26. ��Exhaust Gas Recirculation in an Internal Combustion Engine – based on technology from U.S. Pat. 5,533,489 (Claim 1 eligible).
27. ��A method of loading System Software (BIOS) into a computer – based on technology from U.S. Pat. 5,230,052 (Claim 15 eligible).

In each example, the Update evaluates the hypothetical claims based on steps 2A and 2B, and discusses how an Examiner might determine patent eligibility for patent claims covering an analogous technology.

Example #25 – Diamond v Diehr

An interesting example in the Update is #25, since it introduces hypothetical claims modeled after the technology in the 1981 case Diamond v. Diehr, 450 U.S. 175 (1981).�� This case dealt with a patent involving a computerized process controlling a rubber molding press.��The invention offered significant advantages over the prior art at the time, as it enabled in situ temperature monitoring and automatic recalculation of the optimal cure time.��This calculation involved using the temperature inputs and the Arrhenius equation, long used to calculate the cure time of rubber molding processes.

The reasoning in the Update for Diamond v Diehr differs from the reasoning provided by the Supreme Court. In the 1981 decision, the Supreme Court obliquely refers to the machine or transformation test in determining subject matter eligibility:

“A mathematical formula, as such, is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U. S. 584 (1978). Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. ��To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101. Because we do not view respondents' claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.”¹⁰

In example #25, according to the Update, Claim 1 from Diamond v. Diehr involves a repeated calculation of the Arrhenius equation, a mathematical relationship held to be representative of a law of nature, and therefore Step 2A is met. Next, analyzing the claim as a whole using the Guidelines, the combination of steps taken together amount to significantly more than just the abstract idea of the Arrhenius equation (Step 2B). ��Thus, claim 1 in Diamond v Diehr is patent eligible, satisfying the “significantly more” step of the test.

The USPTO may have seen fit to rewrite the justification for this case to bring it into accord with the Alice framework.��The Court in Diamond v Diehr determined that the structure claimed, considered as a whole, was the kind of structure and performed the kind of function the patent laws were designed to protect. In making this determination, the Court refers to the machine or transformation test to establish the patentability of the claimed invention. However, after the decision of the Supreme Court in Bilski, the machine or transformation test is no longer the definitive test, although it remains a helpful indicator of subject matter eligibility.

Categories of abstract ideas outside the scope of patentable subject matter

The US courts have provided little explanation of when and why patent claims are invalid for covering abstract ideas.��Since the USPTO lacks the authority to create its own definitions, and it is difficult, perhaps impossible, to discern principles from the case law, the USPTO has instead focused its efforts on helping examiners to determine if the concepts defined in claims are similar to what the courts have determined to be abstract ideas, and are thus invalid.��The Guidelines and Update construct several different categories of ineligible abstract ideas based on the case law.�� Each category covers many different examples, taken from the case law, of concepts defined in patent claims that have been invalidated by either the Federal Circuit or the Supreme Court as abstract ideas. Clearly, patent applicants should do whatever they can to define their inventions using claim language and concepts that fall outside these categories.

These categories are the closest the USPTO gets to general concepts or principles for subject matter eligibility. These categories include the set of “judicial descriptors” associated with software based subject matter that has been identified by precedent in the Federal Circuit and the Supreme Court as patent ineligible, including

1. “Fundamental economic practices” including concepts dealing with the economy and commerce including contracts, legal obligations and business relations.
   1. Mitigating settlement risk -- Alice¹¹.
   2. Mitigating hedging risk -- Bilski¹².
2. “Certain methods of organizing human activity” including concepts dealing with personal and intrapersonal activities including relationships, transactions involving people, social activities and behaviour.
   1. Managing human behaviour, specifically meal planning -- Dietgoal¹³.
   2. Advertising, marketing and sales – Ultramercial¹⁴.
3. “An idea ‘of itself’” i.e. an idea standing on its own including a bare concept, plan or scheme, and
   1. Methods of comparing data that could be done mentally -- Cybersource¹⁵.
   2. Concepts relating to organizing, storing, and transmitting information – Cyberfone¹⁶.
4. “Mathematical relationships/formulas” including algorithms, mathematical relationships, formulae and calculations.
   1. Converting binary coded decimal values to pure binary values -- Benson¹⁷.
   2. A mathematical formula for hedging – Bilski¹⁸.

It is difficult to find recent cases where software related patents have survived subject matter eligibility analysis by the Federal Circuit or the Supreme Court. Given the numerous examples of ineligible subject matter in the Update and Guidelines combined with the rejection statistics¹⁹ from the USPTO and invalidation statistics²⁰ at the Federal Circuit, it is reasonable to ask whether any claims have recently survived challenge on subject matter eligibility grounds. ��One example outside of the scope of software subject matter is Myriad²¹, where the Supreme Court allowed claims for complementary DNA.

While the Supreme Court invalidated all of the claims in both Bilski and Alice; there is one case related to software subject matter that has survived scrutiny, at least at the level of the Federal Circuit:�� DDR Holdings v Hotels.com²².

DDR Holdings v Hotels.com²³

The Guidelines discuss this case. This is the first Court of Appeal for the Federal Circuit case to uphold the validity of a software subject matter patent since Alice.�� In this patent, the claims were directed to managing the look and feel of an e-commerce website to provide “store within a store” functionality.

The claims in DDR covered a software solution to a problem, which, according to the judgment but not the dissent, was unique to the internet.��The claims dealt with the problem of retaining website visitors at an ecommerce site and offered a solution anchored in software that addressed a challenge unique to the web.�� Specifically, in the prior art a user clicking on an advertisement would be taken away from the host website to the advertising merchant. The claimed invention involves presenting a hybrid page generated by the host website to include a composite of the host website and advertising merchant’s product information. The decision was based, at least in part, on the grounds that the claimed concept lacked a non-technological analog.

Takeaways

When drafting new applications for software-based inventions, it is important to keep in mind the judicial descriptors of ineligible subject matter, and to draft the claims to avoid categorization under any of these judicial descriptors if at all possible.��However, it is also important to keep in mind that this area of law is in flux, and will almost certainly see significant change over the next few years.��In particular, the categories of ineligible subject matter constructed by the USPTO may evolve or grow in number over the next few years as more cases are decided. Eventually, as the courts grapple with more and more cases, clear principles may start to emerge from the present chaos. One day, it may again be possible to rely on general principles to distinguish patent eligible subject matter from ineligible subject matter. At present, that day seems far distant, and for the foreseeable future it will be even more important to keep up-to-date on the latest Federal Circuit and Supreme Court precedent, mostly to know what kinds of subject matter to avoid claiming, but also to keep an eye out for the occasional beacons of hope, such as a DDR.

��is a partner,��lawyer and patent agent in��Bereskin & Parr's Patent Group in the Mississauga��Region. He��is active with the Intellectual Property Institute of Canada (IPIC) and has contributed extensively to patent education in Canada. is a JD candidate at Osgoode Hall School and was a summer student in��Bereskin & Parr's��in��Toronto.��Twitter: .

The post The View Ahead for Software Patent Applications: USPTO Releases Update to Guidance on Patent Subject Matter Eligibility appeared first on IPOsgoode.

On January 25, 2012 the USPTO invited the public to on the availability of independent second opinion genetic diagnostic testing and its relationship to the medical field.�� More , the U.S. government is looking for information on the medical detriment of the patent system controlling genetic testing and whether changing the law would stifle innovation in the area.��

The information was to be used in accordance with section 27 of the America Invents Act (hereafter “AIA”) to assist the director of the USPTO in delivering his recommendations on the subject to congress no later than June 15, 2012.�� Along with two public hearings set up at American colleges, the USPTO also received written comments from intellectual property organizations, academic research institutions, companies, and individuals (all are posted on the USPTO ).

The positions of many of the intellectual property organizations followed closely with the interests that they represent.�� For example, the ("PhRMA") has taken the position that the current patent system is essential to support innovation. They also assert that there is not enough information to support a conclusion that independent second opinion testing, done by relaxing patent law, is even medically necessary. ��The ��offered only anecdotal evidence from patients and researchers they have talked to about the desire for independent second opinion genetic testing.�� Indeed one of the only groups that appeared to offer a full analysis of the current issue was one made by the (hereafter “ABA”).�� Their comment begins by outlining the history of genetic testing and the role that it can play in modern diagnostics.�� Starting with the discovery of the structure the DNA in 1953, the comment discusses the initial costs of mapping the human genome and what the current costs are to sequence DNA.�� The focus then moves to the intellectual property issues, where the cost of these new innovations is identified and where the strongest argument for where intellectual property protection comes from.�� They state that the research is funded largely by third-parties and, without protection of intellectual property, investors will likely not fund medical research.

Most importantly, the ABA comment also evaluates the goal of public access to the newest and best diagnostic tests.�� In the medical field, more than in any other field of innovation, there is a goal of using knowledge gained for the good of the public.�� The ABA identifies that patented tests are often much more expensive than the generic ones that are created after the patents expire.�� They also identify the cost of initial innovation as the main reason for why the price of a patented product might be higher than that of a generic. ��They conclude that while competition would undoubtedly decrease prices, the resulting cost to new innovation would be to the overall detriment of the medical field. These issues are understandably complex.�� Medical patents come under a great deal of scrutiny because promoting access to healthcare is a primary goal of most governments.��

The USPTO no doubt acknowledges this complexity because the final report and recommendations that their director was to make before congress were��. ��When he did appear before congress to discuss the AIA on June 20^th, 2012, Mr. Kappos (the director of the USPTO) could only state that the USPTO “solicited comments and held two public hearings on the issue of genetic testing and are finalizing our report to Congress”.����It is worth noting that the AIA doesn't propose to change the law on second opinion genetic testing; ��of the act��only calls for a study to be compiled on the subject.��Therefore any information the USPTO has obtained��does not necessarily need to be available��before��the AIA comes into on September 16, 2012.

Adam Stevenson is a JD Candidate at Western University, Faculty of Law.

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