Intellectual Property Directions

Like a vampire rising again from the grave, “business method” patents don’t want to go away without a fight.  It was just a year ago that the Court of Appeals [CAFC] ruled that Bilski’s “business method” for hedging commodities was not patentable subject matter. As much as I wished that the matter was dead, there are too many business method zombies, sucking the blood out of the patent system with their “inventions”, to let it go.

Last week the Supreme Court heard arguments in the matter of “Bilski” and it seemed to observers of the Court that Bilski may finally be dead but that the contorted CAFC reasoning may be thrown out as well. As I wrote last November (IP Directions 11/2/08), the very basis of the US patent system is the Constitutional phrase: “Congress shall have power … to promote the progress of science and useful arts…” Frankly, I doubt the founders would consider hedging risk in commodity trading part of science and the useful arts.

But the CAFC didn’t want to use such a subjective criterion in their decisions, so what is the test of process patentability? According to the Bilski decision, there is a two-part “machine-or-transformation test” for eligibility of process claims. First, eligibility may be demonstrated if a claim “is tied to a particular machine or apparatus.” Second, and alternatively, eligibility may be shown if a claim “transforms a particular article into a different state or thing.” Also note that the “tie” to a machine or apparatus must be a meaningful limitation in the claim.

I would have preferred to see methods of performing business/financial operations per se be declared unpatentable as not being part of science or the “useful arts” and damn the subjectivity torpedoes. As with “obviousness”, the courts will never produce a objective definition of an inherently subjective issue, so why try. If a patent applicant feels the patent office has inappropriately reject his or her application over a subjective issue, well, that’s why we pay the justices the big bucks - to apply their “wisdom”.

How about you - any blood-sucking business methods in your patent plans?

While there are many problems with our current patent system, one area that I would like changed is what types of processes qualify as patentable subject matter. As we know, the patentability of software and business methods is fraught with controversy these days. I’d like to throw what I call end-user methods into the mix as well.

My inclination is to look at the purported purpose of the patent system – to reward inventors who help improve society by sharing their inventions – and see which types of processes/methods achieve that purpose. Although it’s not important in this “if I were King” exercise, I like to think this approach harkens back to the Constitutional underpinnings of our patent system, where it is written that Congress can reward inventors for the purpose of “promot[ing] the progress of science and the useful arts”.

Note that the Constitution doesn’t say anything about promoting better business decisions or controlling the actions of individuals who can, with their own heads and hands, engage in an activity.
So how do software, business methods, and end-user methods fit in?

Software: When held up to the template of “Science and the useful arts” clearly some software qualifies and some does not, just as some hardware is patentable and some is not. Thus, I put software into the patentable subject matter category and leave to the examination process what happens to individual applications.

Business Methods: To me, the idea of a “business method” patent is an abhorrence. Transacting business better, faster, cheaper, or whatever is not beneficial to society; it only helps the businessperson make more money. One-click checkout, calculating hedge fund portfolio mixes, etc. are not science nor are they part of the “useful arts” (again, keeping in mind that I am king).  Note that the question isn’t “is this a process”, “is it implemented on a machine”, or “does it transform something”? No, the question is what is the purpose of the process/method; if the purpose is to transact business then it’s not patentable in my book.

End-User Methods: As I’ve discussed in an earlier blog, end-user methods are, generally, processes that don’t “make” anything and that are often performed by the person gaining the benefit of the performance (viz., the end user).  Many of the most laughable patents of recent years are for end-user methods: the method of exercising a cat with a laser pointer and the method of swinging on a swing come to mind.

While those examples are laughable, other end-user method patents cover more serious processes, such as medical procedures. Often these latter patents are a back door way for companies to secure markets for a medical device that otherwise did not qualify for a patent.

There is one more set of “method” claims that I would severely limit. These are methods of doing X, where X is really just using an apparatus, often already claimed in the patent. These method claims are, like the medical procedure patents mentioned above, nothing more than an attempt to provide patent protection for an apparatus that might not be otherwise protected.

Key tip-off words in these claims are “providing” (a such and such piece of equipment), “collecting/recording” (data or information), and “processing” (the data). Steps such as these in a method claim are simply ways to pad out what is really intended: “a method of doing X comprising the step of operating the apparatus described in the patent”. Since that one-step method claim would never be allowed, patent attorneys game the system by breaking the operation of the apparatus down into insignificant steps. They might as well include plugging it in.

That’s what I would do if I were King. How about you?

In Oz, everyone except Dorothy ignored the man behind the curtain. In your patent, ignoring the means by which you implement various claimed functions can leave you without a heart, a brain, courage … or a valid patent. To have a valid patent you must, in effect, prove that you have actually developed a working invention.

“Means-plus-function” [MPF] claims are attractive to many inventors because they have a broader scope, at least in the sense that they cover the function and not the specific hardware implementation for performing that function:”control means for automatically operating said valves”. But when you include MPF claims you must take care that you describe in your specification some structure, some mechanism, some explicit embodiment by which the claimed function is performed. If you don’t include this structure your claims may be deemed invalid for indefiniteness. The risk for many of us is being too close to the technology. What is a given for us may be inadequate to the patent legal process.

In a recent CAFC appeal, Biomedino LLC tried to defend their MPF claim based on a box labeled “Control” in a figure and the statement in the specification that ”[the process] may be controlled automatically by known differential pressure, valving and control equipment”. In the Court’s mind this case begged the question of whether

“…sufficient corresponding structure [is] disclosed when the specification simply recites that a claimed function can be performed by known methods or using known equipment where prior art of record and the testimony of experts suggests that known methods and equipment exists?” [emphasis added]

Answering this question in the negative, the Court pointed out that the law requires the specification to actually disclose at least one way for the function to be accomplished and not leave it to the assumed knowledge of the archetypal person-of-skill-in-the-art.

Many inventors fall into this trap these days when it seems every device is controlled by embedded processors. While software can certainly be the means by which a function is performed, simply referring to “software” is not an adequate description of how you are performing a given function. Yes, it’s probably true that someone could write the software to perform the function, but unless you give more details of what’s inside the software “box” you are likely to find your patent invalidated.

Groucho Marx said, “If we had some eggs we could have eggs and ham, if we had some ham.” The CAFC said, “If you have some functions you can have some means-plus-function claims, if you actually have some means”.

Can you get a patent for a new use of an existing technology? I was a room monitor at last week’s “Ignite Clean Energy” competition semi-finals; that meant I needed to stay out of the evaluation of the presenters. It was tough to bite my tongue as semi-truths flew around the room but the one discussion that was particularly troubling was the suggestion that a presenter had applied for a patent covering all use of a known technology to his problem. Ain’t gonna happen, at least not in any meaningful way.

This idea that you can get a broad (and enforceable) patent that will prevent competitors from applying an existing technology to whole area of use - a so-called “application patent” - just because you think you were the first to think of making that connection is not limited to naive young entrepreneurs. Like children at the make-your-own-sundae bar our eyes are bigger than our stomachs, we often think we can stake out entire fields of use just by stating the obvious (that technology X can be used in area Y). And the USPTO, pre-KSR, acted as our enabler, granting patents that never should have seen the light of day. 

That’s not to say you shouldn’t try to get some patent protection - rather, I am saying that the patent protection that you get is proportional to how unexpected or (heaven help us) non-obvious your invention is.

Consider Dannon’s Activa® yogurt. As part of the pro-biotic fad they claim that including  naturally occurring intestinal bacteria in the yogurt helps with bowel regularity (presumably by increasing its population in the bowel). We hope they’ve carefully cultured the particular strain of bacteria they use, perhaps even genetically modifying it.

Can they get a patent for the use of any intestinal bacteria in foodstuffs for the purpose of improving health or regularity; doubt it. Can they get a patent for a new “yogurt food” that includes a dose of their particular strain of bacteria; perhaps (except it appears someone else already has, see US7195906). Can they get a patent on a genetically modified bacteria; almost certainly.

The lesson is for those of us on finite IP budgets is to carefully evaluate what we really have and to adjust our patent strategy to match.