Category Archives: Software

USPTO publishes October 2019 update to Patent Eligibility Guidance

On October 17, 2019, the USPTO published an update to its 2019 Patent Subject Matter Eligibility Guidance (2019 PEG). The October 2019 update does not significantly change the patent eligibiity analysis, but it clarify several of the examination procedures that the USPTO first set out in January 2019.

Notably, the October 2019 update indicates that “the Office has shifted its approach from the case-comparison approach in determining whether a claim recites an abstract idea and instead uses enumerated groupings of abstract ideas.” Thus, Examiners should no longer focus on individual court decisions in their rejections but instead will determine whether the claims recite any of the groupings of abstract ideas listed in the 2019 PEG.

The October 2019 update also included several new subject matter eligibility examples, including examples for both life science and data processing inventions.

USPTO updates patent examination guidelines for computer-implemented inventions: Less abstract ideas, more specific algorithms

On January 4, 2019, the U.S. Patent and Trademark Office released new guidance documents that USPTO Patent Examiners are to use when evaluating whether a patent application claims patent-eligible subject matter under Section 101 of the Patent Act. The new documents also address whether claims directed to computer-implemented inventions should be considered to be purely functional and/or indefinite under Section 112 of the Patent Act.

Taken together, the new guidance documents may narrow the situations in which Examiners issue rejections under Section 101 of the Patent Act, but may expand the number of rejections issued under Section 112 of the Patent Act. The documents indicate that inventors who want to patent computer-implemented inventions must be sure that the patent application: (a) describes and claims a practical application of the invention; and (b) discloses specific algorithms for performing claimed functions.

2019 Revised Patent Subject Matter Eligibility Guidance (Section 101)

Unlike previous USPTO patent-eligibility guidance, the new Section 101 guidance focuses on situations in which patent claims should be eligible, and it limits situations in which USPTO Examiners should issue rejections under Sections 101 of the Patent Act.

In particular, the 2019 Revised Subject Matter Eligibility Guidance opens the door to patent-eligibility for patent claims that are limited to practical applications. In particular, the Section 101 guidance states that “a patent claim or patent application claims that recites a judicial exception [i.e., a law of nature, a natural phenomena or an abstract idea] is not ‘directed to’ the judicial exception if the judicial exception is integrated into a practical application of the judicial exception.”

The new Section 101 Guidance states that to determine that a claim recites an abstract idea, Examiners must “(a) identify the specific limitations(s) in the claim … that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) fall within the subject matter groupings” — that is, one of the following judicial exceptions to patentability: (1) mathematical concepts; (2) certain methods of organizing human activity; or (3) mental processes. Laws of nature or natural phenomena are another subject matter grouping to be considered. If the Examiner believes that the claim falls within one of these groupings, the Examiner must “evaluate whether the claim integrates the judicial exception into a practical appplication.”

The new Section 101 guidance instructs Examiners that analysis of whether a claim includes significantly than the judicial exception is only needed if “a claim recites a judicial exception and fails to integrate the exception into a practical application.” The guidance also states that “a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. When the exception is so integrated, then the claim is not directed to a judicial exception … and is eligible.”

Examples of practical applications include:

  • an element that improves the functioning of a computer or other technology;
  • an element that effects a particular treatment or prohylaxis for a disease or medical condition;
  • an element that is operates in conjunction with a particular machine or manufacture that is integral to the claim; or
  • an element that applies or uses the exception in a menaingful way beyond generally linking the use of the exception to a particular technological environment, so that the claim is more than a drafting effort designed to monopolize the exception.

The Section 101 guidance also states claims that include elements that are not well-understood, routine or conventional in a way that does not simply append those elements to the claim may be eligible.

Also significant: even if an Examiner rejects claims under Section 101, the Examiner must still examine each claim under Sections 102, 103 and 112 of the Patent Act.

The 2019 Section 101 guidance “supercedes all versions of the USPTO’s Quick Reference Sheet[s]” and indicates that those prior documents “should not be relied upon” by Examiners or Applicants.

Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. §112

The USPTO’s 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112 provides cautionary warnings to patent applicants who describe and claim computer-implemented inventions in only broad, general terms. This new guidance is intended to address the “problem with broad functional claiming without adequate structural support in the specification” and address “when a claim is purely functional in nature rather than reciting with any specificity how the claimed function is achieved.”

In the past few months, USPTO Examiners have more frequently issued Section 112 rejections against computer-implemented invention claims, even if the claims do not explicitly use means-plus-function language. The new guidance suggests that this is not appropriate by stating that “a claim limitation that does not use the term ‘means’ will trigger the presumption that 35 U.S.C. §112(f) does not apply.”

However, the guidance notes that certain phrases can be generic placeholders for means-plus-function language, in particular: “module for,” “device for”, “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for” and “system for.” The guidance also cautions against phrases that use the term “module” in connection with the module’s function.

The guidance also states: “for a computer-implemented … claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite” (emphasis added). The guidance notes that “the requirement for disclosure of an algorithm cannot be avoided by arguing that one of ordinary skill in the art is capable of writing software … to perform the claimed function.”

 

The new guidance documents took effect on January 7, 2019, the USPTO is accepting public comments on the new guidance through March 8, 2019.

 

 

Federal Circuit starts 2018 with two favorable decisions for software patents

After issuing two very negative decisions that called the future of software patent-eligbility into question, in January 2018 the Federal Circuit moved its software patent-eligibility pendulum back in the direction of finding eligible subject matter in software patents.

In Core Wireless Licensing S.A.R.L.. v. LG Electronics, Inc. (Jan. 25, 2018), the court affirmed a district court decision that denied a request for summary judgment that the claims of patents 8,713,476 and 8,434,020 were directed to ineligible subject matter.

The patents disclosed and claimed “improved display interfaces, particularly for electronic devices with small screens like mobile telephones…. The improved interfaces allow a user to more quickly access desired data stored in, and functions of applications included in, the electronic devices.”

Claim 1 of the ‘476 patent recited (with emphases added by the court):

1.  A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.

Claim 1 of the ‘020 patent recited (with emphases added by the court): Continue reading

Defensive Patent Strategies for Blockchain and Distributed Ledger Technologies

Many companies who offer next generation cybersecurity technologies are experiencing significant growth in both corporate share value and revenue. To help protect against competition, many companies are seeking patents to cover their blockchain and other distributed ledger technologies, security awareness training systems, and innovative real-time data analytics methods.

As of January 2018, United States Patent and Trademark Office (USPTO) records revealed just over fifty granted patents in which the phrase “blockchain” or “distributed ledger” appeared. Twenty-five of these patents included those terms in the title, abstract or claims. Some of the patents were awarded to cryptocurrency startups that launched or are about to launch initial currency offerings (ICOs). Others were awarded to U.S. software and business services industry titans who already have large patent portfolios. Approximately one-third of those patents were awarded to businesses that appear – at least for now – to be non-practicing entities, which could signal a risk of patent litigation on the near horizon.

A strategically developed patent portfolio can have several benefits. In addition to increasing corporate value and providing a weapon against infringement, patents can serve as a defensive mechanism against high-stakes patent litigation. A competitor who holds patents may hesitate before filing a patent infringement suit against a company that owns a strong patent portfolio that it can assert in a counterclaim. Strong patent portfolios also can provide companies with the opportunity for favorable cross-licensing arrangements, with fewer royalties being paid and potentially more royalties coming in.

Patent applicants must consider how to draft effective patent applications. Tips for doing this include:

  • Distributed ledger technologies typically require actions by multiple entities. However, it can be difficult to establish infringement of a patent claim unless all elements of the claim are used or performed by a single entity. Patent applications should draft claims with a single infringer in mind, rather than to a distributed system.
  • The U.S. and many other countries around the world take a negative view of software patents that cover mere “abstract ideas” rather than innovations in technology. A new business application of an existing blockchain technology is unlikely to be patentable. Instead, patent applications should cover innovations that provide a technical solution to a technical problem.

Patent strategies for distributed ledger technologies also need to consider the tension between the limited monopoly that a patent provides and the open source platform that a distributed ledger necessarily requires.

For the last few years, several companies have openly discussed and favored the idea of a blockchain “patent pool” in which stakeholders share access to each others’ blockchain-related patents. The Blockchain Patent Sharing Alliance (BPSA) is one such entity that is trying to gather a critical mass of stakeholders and companies. In addition, in 2016, the Linux Foundation formed the Hyperledger Project, which seeks to create an open-source framework for distributed ledger technologies.

Some stakeholders are taking matters into their own hands. In 2016 blockchain developer Blockstream publicly pledged that it will never use its blockchain patents as a weapon. Instead, Blockstream pledged that all of its blockchain software patents are available under the terms of a defensive patent license. Under that license, Blockstream will only use its patents for “defensive purposes” against a party who brings or threatens a patent infringement claim against Blockstream or against a user of Blockstream’s technologies.

Third in a four-part series. For other posts in this four-part series, see:
Intellectual Property Strategies For Next Generation Cybersecurity Technologies
Trends in Patenting Blockchain Technologies
Cybersecurity Patent Strategies vs. the Growing Barriers to Software Patents 

Trends in Patenting Blockchain Technologies

With the recent rise in values of cybercurrencies such as bitcoin, and with increasing interest in initial currency offerings (ICOs), businesses around the world are rushing to build value with new blockchain technologies and applications.

This presents many opportunities to patent innovative blockchain and other distributed ledger technologies. This is a relatively recent trend. The first recorded appearance of the word “blockchain” in any U.S. patent or published patent application was in 2012, approximately three years after the launch of bitcoin.

As of January 2018, United States Patent and Trademark Office (USPTO) records revealed:

  • 25 granted patents with the term “blockchain” or “distributed ledger” in their title, abstract or claims; and
  • at least 275 published patent applications include one or both of those terms in the title, abstract or claims.

When the data set is expanded to patents and applications that include the word “blockchain” anywhere in the text, the list grows to 56 granted patents and over 500 published applications. These include:

Patent Number Title Grant Date Assignee
US9862222 Digitally encoded seal for document verification 2018-01-09 UIPCO LLC
US9853819 Blockchain-supported, node ID-augmented digital record signature method 2017-12-26 Guardtime IP Holdings LTD.
US9836908 System and method for securely receiving and counting votes in an election 2017-12-05 Blockchain Technologies Corporation
US9824031 Efficient clearinghouse transactions with trusted and un-trusted entities 2017-11-21 International Business Machines Corporation
US9807106 Mitigating blockchain attack 2017-10-31 British Telecommunications PLC
US9785369 Multiple-link blockchain 2017-10-10 Accenture Global Solutions Limited; GSC Secrypt LLC
US9794074 Systems and methods for storing and sharing transactional data using distributed computing systems 2017-10-17 Nasdaq Technology AB
US9747586 System and method for issuance of electronic currency substantiated by a reserve of assets 2017-08-29 CPN Gold B.V.
US9749140 Systems and methods for managing digital identities 2017-08-29 Cambridge Blockchain LLC
US9722790 Identity management service using a blockchain providing certifying transactions between devices 2017-08-01 Shocard, Inc.
US9641338 Method and apparatus for providing a universal deterministically reproducible cryptographic key-pair representation for all SKUs, shipping cartons, and items 2017-05-02 SkuChain, Inc.
US9338148 Secure distributed information and password management 2016-05-10 Verizon Patent and Licensing Inc.; Cellco Partnership

Most of the granted patents cover new or improved aspects of the blockchain itself. Only a small number of U.S. patents have issued to date for new applications of existing blockchain technologies. This is likely because many companies are merely using existing blockchain technologies to implement different types of transactions.

Over half of the granted patents were examined within the USPTO’s Technology Center 2400, which covers networking, multiplexing, cable and security technologies. TC 2400 includes over 200 examiners who focus on security technologies.

In each of the past three years USPTO Examiners from TC 2400 have participated in a Cybersecurity Partnership meeting, in which the USPTO has interacted with stakeholders in the cybersecurity and network security sector to share ideas, experiences, and insights. Information that the USPTO shared in these meetings includes:

  • The top 15 filers of patent applications for information security and cryptography technologies in each year during 2014-2016 included Amazon, Google, IBM, Intel, Microsoft, Qualcomm, Samsung, Symantec, and Tencent. Top filers in 2015 and 2016 also included Bank of America, Cisco, and EMC.
  • While the vast majority of U.S. patent applications for information security and cryptography technologies have been filed by U.S. companies, the USPTO has also received a significant number of filings from companies that are based in Japan, China, Korea, Germany, France and Israel, among other countries.
  • The average pendency (time between filing and either grant or abandonment) of patent applications for information security and cryptography technologies was approximately 27 months in 2016.

Globally, as of January 2018 World Intellectual Property Office (WIPO) records show 197 published Patent Cooperation (PCT) applications with the term “blockchain” or “distributed ledger” in their title, abstract or claims. However, relatively few of these PCT applications have reached the national stage. The European Patent Office database includes only 21 such patents and published applications. According to a recent report from Clarivate Analytics, in 2016 China experienced significant growth in new patent filings for blockchain technologies and is second only to the U.S. for new filings involving blockchain technologies.

This post is the second in a four-part series. For other posts in this series, see:
Intellectual Property Strategies For Next Generation Cybersecurity Technologies
Defensive Patent Strategies For Blockchain and Distributed Ledger Technologies
Cybersecurity Patent Strategies vs. the Growing Barriers to Software Patents 

Intellectual Property Strategies for Next Generation Cybersecurity Technologies

Cybersecurity technology has become one of the most important industries in the world today. With products that are critical to businesses in countless fields, including finance, healthcare, transportation, public utilities, manufacturing, defense and government, experts have predicted that the global market for cybersecurity technologies will grow by 10% per year through 2020.

Cybersecurity technologies are also one of the biggest drivers in corporate value today. 129-year-old Eastman Kodak Company recently saw the value of its stock jump by 200% after announcing a new service that will use blockchain technologies to help photographers get paid in a new cryptocurrency when others use their photos. A New York-based beverage distributor experienced a 289% share price increase after it simply renamed itself from “Long Island Iced Tea Company” to “Long Blockchain Corp.” and announced that it would start to offer blockchain technology solutions.

Next generation cybersecurity technologies include more than just blockchain-based payment systems. Distributed ledger technologies have applications in multiple fields, including document sharing, video and audio streaming, and biomedical applications. And although blockchain is all the rage at the moment, other cybersecurity technologies such as network attack simulations, network security awareness training through methods such as simulated phishing, and real-time analytics are equally important, if not more so.

With this background in mind, what intellectual property protection options are available for next generation cybersecurity technologies? Continue reading

Fox launches GDPR Check app

Fox Rothschild LLP has launched a new mobile app to help businesses catalog their data management practices and determine necessary steps to comply with the European Union’s General Data Protection Regulation (GDPR), which will take effect in May 2018.

GDPR Check maps an organization’s data management practices in 17 areas that are key to determining compliance, and it produces a report for each key area that a company can share with its attorneys and compliance team.

For more details on the GDPR Check app and a link to the free download in the Apple App and Google Play stores, vist the GDPR Check announcement on the Fox Rothschild website at this link.