Top 8 Tips for Hiring an Experienced Patent Attorney

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Top 8 Tips for Hiring an Experienced Patent Attorney



So you know you have a great invention?  How do you find an experienced patent attorney?

Patent law is really an esoteric field, and it is pretty much impossible for someone who doesn’t file patents all the time, to really do a complete job to critically analyzing a patent attorney’s experience.  Some attorneys exaggerate their experience, avoid questions, lead the conversation away from their weaknesses.

So what you should you do?

Tip 1) Hire a patent attorney to check another patent attorney’s experience.

It takes a veteran to recognize a veteran.  Let them separate the pretenders from the real deal.  There is some extra cost up front, but that same attorney can also make sure you get a fair deal on the engagement letter, don’t get overcharged for work, and can help you spot errors in the other attorneys work?  Do want the work done cheaply, or do you want it done right?

Tip 2) Ask the attorney for copies of patents they have gotten issued for their clients in the past three months

Hint, if they haven’t been getting new patents issued regularly, they don’t have much work volume or aren’t getting patents allowed.  All things being equal, I’d go with the attorney who is getting a steady stream of patent issued.  Wouldn’t you?Umbrella

Tip 3) Ask for current referrals from their clients. If the attorney is good, they’ll have some.

If the attorney tells you some nonsense like, he or she can’t disclose any clients or something like that, he or she really means I don’t think I’ve done a good enough job to have my past client to refer my work.  You’re the client, demand the referrals, or walk away.  And notice, I said current referrals.  I don’t care about what this attorney did for some client three years ago, what are they doing now.

Tip 4) Ask for peer recommendation from other attorneys in their field.

That’s right.  Ask them to send you some names of their competition that can refer them.  If the attorney balks at that, perhaps their peers are better than they are.  Any attorney you talk to should have a slew of attorneys they know in their same legal field that can serve as a reference.

Tip 5) Ask them for three of their latest papers on patent law. They should have plenty they can send at a moment’s notice.

Attorneys are first and foremost writers.  If the attorney you are speaking to isn’t writing great papers on the area of law you need help in, find someone who is.

Tip 6) Ask them to send you patents they wrote that are similar in the technical field to what you are asking for.

Patents are part legal and part technical.  Technical experience is almost a requirement for doing a good job on a patent application, and if that attorney hasn’t written patents in the field you need protection in, chances are they are qualified to.

Tip 7) Make sure your patent prosecutor has licensing and litigation experience.

The experience one gains litigating and licensing patents teaches a patent prosecutor what types of claims work, how thorough disclosures should be, and how different types of claims can change the value of patent.

US Patent OfficeTip 8) Hire an ex-patent examiner.

Hundreds of patent examiners leave the USPTO every year. Patent attorneys who have served their time in examining corps know what motivates patent examiners to allow cases. They understand how to conduct teleconferences with examiners, and they better negotiate with patent examiners, because the attorney has been in their shoes.

Got any more tips?  Add them to the Comments.

Software and Business Method Patent Eligibility Slide Deck

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Just Released and Fully Updated Including Alice v CLS 

Protect it! IP’s Slide Deck on Software, Business Methods, and Patent Eligibility


Over 50 slides giving you the latest court decisions on software and business method patents.  Chock full of tips and tricks to get you past 35 USC 101 rejections, this slide deck is a great primer for gaining understanding of US patent eligibility practice.

Slide Deck: Software and Patent Eligibility

Slide Deck: Software and Patent Eligibility



Need more than just the general information and the slides?

Protect it! IP has also released a new Patent Eligibility Analysis Package.


Patent Eligibility Filter
Software Guide

Let Protect it IP Guide you through the patent eligibility filters and judicial blockades of natural phenomena, laws of nature, and abstractness.




[expand title=”Click here for a full preview of the text of the slides” swaptitle=”Close” tag=”h2″]


Abstract Reasoning: Software and Business Method Jurisprudence

•     Brief summary of Bilski (Direct appeal on the merits)

•     The Big Three: Diamond v. Diehr, Parker v. Flook, Gottschalk v. Benson

•     The outlier: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (101 on SJ)

•     Newcomers: Cybersource, Ultramercial (101 on motion to dismiss), Graphon (101 considered without being raised)

•     Dawn of a new Era: Mayo (Direct appeal on the merits)

•    The Impact of Alice v CLS Bank on your Patent Rights


Supreme Court Breaths Life into its Own Cases

•    Flook

•    Benson

•    Dierh

Brief Summary of Bilski

•      1.  A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

•      (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;

•      (b) identifying market participants for said commodity having a counter-risk position to said consumers; and

•      (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

 •      No Technology, No Structure, but see the dependent claims, which were also rejected in one fell swoop.  Very specific implementation.  Baby with the bathwater… practice tip.

Brief Summary of Bilski

•     In an en banc opinion, the Federal Circuit held that a method claim is patent-eligible if:

•     “it is tied to a particular machine or apparatus,” or

•     “it transforms a particular article to a different state or thing.”

•     Disputed claims covered a method of risk hedging for commodities trading, comprising the steps of identifying market participants and initiating a series of transactions.

•     Fed Cir affirmed rejection of the claimed method under § 101 because it “does not involve the transformation of any physical object or substance, or an electronic signal representative of any physical object or substance.”

Brief Summary of Bilski

•     Supreme Court opinion was unanimous—the method of risk hedging claimed by Bilski and Warsaw is not patentable.

•     Three separate opinions

•     Majority/plurality opinion by Justice Kennedy (joined by Chief Justice Roberts, Justices Thomas and Alito, and Justice Scalia (only as to a portion of the opinion))

•     Concurrence by Justice Stevens (joined by Justices Ginsburg, Breyer, and Sotomayor)

•     Separate concurrence by Justice Breyer (joined, in part, by Justice Scalia)

Brief Summary of Bilski

•    Majority opinion

•     “Machine-or-transformation” is not the “sole test” of patentability, but is “a useful and important clue, an investigative tool.”

•     “Processes” are generally patentable, but not “abstract ides.”

•     Disputed application was not patentable because it sought to patent the abstract idea of risk hedging.

•     Expressly declined to set forth a generally applicable test of what constitutes an “abstract idea.”

Brief Summary of Bilski

•    Plurality opinion (Justice Scalia did not join)

•     “Industrial Age” inventions generally had to satisfy machine-or-transformation test. “But times change.  Technology and other innovations progress in unexpected ways…Section 101’s terms suggest that new technologies may call for new inquiries.”

•     Expressly declined to comment on whether “Information Age” technologies “should or should not receive patent protection.”

Brief Summary of Bilski

•    Justice Stevens’s concurrence

•     “The Court…never provides a satisfying account of what constitutes an unpatentable abstract idea…The Court essentially asserts its conclusion that petitioners’ application claims an abstract idea. This mode of analysis (or lack thereof) may have led to the correct outcome in this case, but it also means that the Court’s musings on this issue stand for very little.”

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. Aug. 16, 2011)

•     Beauregard claim held invalid under Section 101

•     Court viewed the computer-performed steps in that claim as essentially the same steps recited by the method claim

•     Steps could be performed entirely by the human mind, and  the incidental use of a computer did not give rise to eligibility under Section 101


Cybersource Corp

•    Two claims at issue:

•     A method for verifying the validity of a credit card transaction over the internet was patent eligible; and

•     a computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet.

Claim 3 of U.S. Patent No. 6,029,154

•    A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:

•     obtaining other transactions utilizing an Internet address that is identified with the credit card transaction;

•     constructing a map of credit card numbers based upon the other transactions and

•     utilizing the map of credit card numbers to determine if the credit card transaction is valid.”

First claim, not patent eligible:

•     The Federal Circuit found the first claim containing only “collecting” and “organizing” data steps to be drawn to an unpatentable mental process.  Referring to the Supreme Court’s decision in Benson, the Federal Circuit reasoned that methods capable of being performed mentally, i.e., that can be performed entirely in the human mind, are unpatentable abstract ideas.  Such mental computational methods are the types of methods that embody the “basic tools of scientific and technological work” that are free to all men and reserved exclusively to none.

Claim 2

•      A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

•      obtaining credit card information relating to the transactions from the consumer; and

•      verifying the credit card information based upon values of a plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the further steps of; obtaining other transactions utilizing an Internet address that is identified with the credit card transaction; constructing a map of credit card numbers based upon the other transactions; and

•      utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Second claim, not patent eligible:

•      The second claim – a “Beauregard claim” – was also found to not be patent-eligible because, at its heart, it was drawn to the same unpatentable mental process as the first type of claim considered.  The Federal Circuit reasoned that, although the claim may literally recite an article of manufacture, it must not exalt form over substance and must instead look to the underlying invention for patent-eligibility.  This is consistent with the requirement that the use of a machine in a process claim must impose meaningful limits on the claim’s scope in order to satisfy the machine prong of the machine-or-transformation test.  The Federal Circuit also found that the mere manipulation or reorganization of data did not satisfy the transformation prong of the machine-or-transformation test.  Finally, the Federal Circuit distinguished Cybersource from its earlier ruling in Research Corp, supra, because the method of halftoning a digital image in that case “could not, as a practical matter, be performed entirely in a human’s mind.”

•      Takeaway point, simply placing processes into machine readable software won’t save a patent claim that can be practiced mentally.

Recent Federal Circuit Decisions

•     Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. Sep. 15, 2011)

Ultramerical – Decision

•     The Federal Circuit reverses the ruling by the district court finding the underlying patent drawn to patent-eligible subject matter.

•     The district court’s decision to determine patentability before claim construction and in response to a motion to dismiss was OK:

•     This court [Fed Cir.] has never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility. Indeed, because eligibility is a “coarse” gauge of the suitability of broad subject matter categories for patent protection, Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed.Cir.2010), claim construction may not always be necessary for a § 101 analysis.

Claim 1

•      A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

•      a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

•      a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

•      a third step of providing the media product for sale at an Internet website;

•      a fourth step of restricting general public access to said media product;

•      a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

•      a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

•      a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

•      an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

•      a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

•      a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

Claim 1 Summary

•     The claimed method presents the user with an interface in which the user is provided free access to some copyrighted digital media in exchange for the user agreeing to watch a commercial.  If the interface supports interactive communication, requiring the viewer to answer a question before he or she is provided with access to the content.

•      Provide an interface where a viewer can see copyrighted content for free in exchange for viewing a sponsored message from a pool of messages;

•      Select from the pool, a message that has been shown less times the number of times contracted for by the owner of the message

•      Require the viewer to watch the sponsored message before he or she can watch the copyrighted content

•      If supported, require the viewer to answer a question about the content before showing the content.

Analogy of 101 to a filter

•     The categories of patent-eligible subject matter are no more than a coarse eligibility filter.

•     The expansive categories—process, machine, article of manufacture, and composition of matter—are certainly not substitutes for the substantive patentability requirements set forth in § 102, § 103, and § 112.

•     Business methods can be patent eligible:

•     Moreover, title 35 does not list a single ineligible category, suggesting that any new, nonobvious, and fully disclosed technical advance is eligible for protection, subject to the limited judicially-created exceptions — laws of nature, physical phenomena, and abstract ideas. Bilski, 130 S.Ct. at 3225.

•     So processes pass through the filter, unless they are one of the three.  This patent deals with the abstract idea issue.

Practical Application or Abstract Idea

•      [I]nventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act. Id. at 1328.

•      The [Ultramercial] patent seeks to remedy problems with prior art banner advertising, such as declining clickthrough rates, by introducing a method of product distribution that forces consumers to view and possibly even interact with advertisements before permitting access to the desired media product. Id.

•      The mere idea that advertising can be used as a form of currency is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski, [however] the [Ultramercial] patent does not simply claim the age-old idea that advertising can serve as a currency.  Instead, the [Ultramercial] patent discloses a practical application of this idea.  Id.

•      Unlike the Copyright Act which divides idea from expression, the Patent Act covers and protects any new and useful technical advance, including applied ideas.  Id. at 1327

•      Viewing the subject matter as a whole, the invention involves an extensive computer interface. Id. at 1328

Important Comments (cont)

•      The practical steps don’t need to be claimed:

•      The court considers it would require complex programming to execute the steps in the claims, but allows for the omission of the recitation of that programming in claims.

•      This court understands that the broadly claimed method in the [Ultramercial] patent does not specify a particular mechanism for delivering media content to the consumer (i.e., FTP downloads, email, or real-time streaming). This breadth and lack of specificity does not render the claimed subject matter impermissibly abstract. Assuming the patent provides sufficient disclosure to enable a person of ordinary skill in the art to practice the invention and to satisfy the written description requirement, the disclosure need not detail the particular instrumentalities for each step in the process.

•      That a process may be patentable, irrespective of the particular form of the instrumentalities used, cannot be disputed. If one of the steps of a process be that a certain substance is to be reduced to a powder, it may not be at all material what instrument or machinery is used to effect that object, whether a hammer, a pestle and mortar, or a mill.

•      112 first still applies though and broadly claimed methods have to be fully enabled.  Id. 1329.

Backing the Examiner down off the Machine or Transformation Test

•      Machine or Transformation is not the only test to use:

•      in deciding whether previously unforeseen inventions qualify as patentable `processes,’ it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries. Id. At 1327.

•      Technology without anchors in physical structures and mechanical steps simply defy easy classification under the machine-or-transformation categories. As the Supreme Court suggests, mechanically applying that physical test “risk[s] obscuring the larger object of securing patents for valuable inventions without transgressing the public domain.“ Id.

•      As computer scientists understand:

•      the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Indeed, the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred and is becoming increasingly so as the technology develops. In this field, a software process is often interchangeable with a hardware circuit.

Reconciling Cybersource and Ultramercial

•    In the words of the court, “Unlike the claims in CyberSource, the claims here require, among other things, controlled interaction with a consumer via an Internet website, something far removed from purely mental steps.”

•    In the words of the presenter, “On the facts and in front of this judicial panel, Cybersource claimed an abstract idea – not patentable, while Ultramercial claimed a practical application – patent eligible.”

•     Cybersource: Dyson, Dyk, Prost

•     Ultramercial: Rader, Lourie, O’Malley

Myspace Inc. v. Graphon Corp., 101 U.S.P.Q.2d 1873 (Fed. Cir. Mar. 2, 2012)

101 as a threshold issue

•     Newman, Mayor (dissent), Plager

•     (Majority) Even assuming we could reach out for the § 101 issue without having it raised by the parties or decided by the trial court, there is an even more basic problem with the dissent’s position. The problem with addressing § 101 initially every time it is presented as a defense is that the answer in each case requires the search for a universal truth: in the broad sweep of modern innovative technologies, does this invention fall outside the breadth of human endeavor that possibly can be patented under § 101?

Myspace Inc. v. Graphon Corp., 101 U.S.P.Q.2d 1873 (Fed. Cir. Mar. 2, 2012)

101 is hard to apply

•     (Majority) When it comes to explaining what is to be understood by “abstract ideas” in terms that are something less than abstract, courts have been less successful. The effort has become particularly problematic in recent times when applied to that class of claimed inventions loosely de-scribed as business method patents. If indeterminacy of the law governing patents was a problem in the past, it surely is becoming an even greater problem now, as the current cases attest

Myspace Inc. v. Graphon Corp., 101 U.S.P.Q.2d 1873 (Fed. Cir. Mar. 2, 2012)

We can’t figure out 101

•     (Majority) Our opinions spend page after page revisiting our cases and those of the Supreme Court, and still we continue to disagree vigorously over what is or is not patentable subject matter.

101 is too hard, let’s not use it

•     (Majority) After comparing 101 analysis to an effort to describe wine, the majority applies some creative (and by creative I am mean ridiculous) logic and says since 112, 102, and 103 are the main defenses to invalidity, these two statutes should cabin the court’s inquiry.

Myspace Inc. v. Graphon Corp., 101 U.S.P.Q.2d 1873 (Fed. Cir. Mar. 2, 2012)

The 101 Swamp

•     (Majority) Rather than taking the path the dissent urges, courts could avoid the swamp of verbiage that is § 101 by exercising their inherent power to control the processes of litigation, Chambers v. NASCO, Inc., 501 U.S. 32, 43 (1991), and insist that litigants initially address patent invalidity issues in terms of the conditions of patentability defenses as the statute provides, specifically §§ 102, 103, and 112.

•     If that were done in the typical patent case, litigation over the question of validity of the patent would be concluded under these provisions, and it would be unnecessary to enter the murky morass that is § 101 jurisprudence. This would make patent litigation more efficient, conserve judicial resources, and bring a degree of certainty to the interests of both patentees and their competitors in the marketplace.

Myspace Inc. v. Graphon Corp., 101 U.S.P.Q.2d 1873 (Fed. Cir. Mar. 2, 2012)

101 must be decided (guess what — Mayer was right)

•     (Dissent) This court must first resolve the issue of whether the GraphOn patents are directed to an unpatentable “abstract idea” before proceeding to consider subordinate issues related to obviousness and anticipation.

•      See Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (noting that whether claims are di-rected to statutory subject matter is a “threshold test”); Parker v. Flook, 437 U.S. 584, 593 (1978) (“Flook”) (emphasizing that “[t]he obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of section 101 “must precede the determination of whether that discovery is, in fact, new or obvious”); Comiskey, 554 F.3d at 973 (“Only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and . . . non-obviousness under § 103.” (citations and internal quotation marks omitted)).

Myspace Inc. v. Graphon Corp., 101 U.S.P.Q.2d 1873 (Fed. Cir. Mar. 2, 2012)

Radical idea… 101 limits claim breadth?  After State Street no less?

•     (Dissent) The potential scope of the GraphOn patents is stag-gering. They arguably cover any online system in which users control the content and categorization of their own communications. The claims thus cut across vast swaths of the Internet and potentially extend to most online advertising and social networking sites.

•     While running a particular process on a computer undeniably improves efficiency and accuracy, cloaking an otherwise abstract idea in the guise of a computer-implemented claim is insufficient to bring it within section 101.

•     Given the ubiquity of computers in contemporary life, allowing a process to become patentable simply because it is computer-implemented or invokes the use of the Internet would render the subject-matter eligibility criteria contained in section 101 virtually meaningless.

State Street Bank & Trust Co. v. Signature Financial Group, 149 F. 3d 1368 – Court of Appeals, Federal Circuit 1998

•     This is in contrast to the rather clear holding from State Street,

•      The plain and unambiguous meaning of § 101 is that any invention falling within one of the four stated categories of statutory subject matter may be patented, provided it meets the other requirements for patentability set forth in Title 35, i.e., those found in §§ 102, 103, and 112,

•      The repetitive use of the expansive term “any” in § 101 shows Congress’s intent not to place any restrictions on the subject matter for which a patent may be obtained beyond those specifically recited in § 101. Indeed, the Supreme Court has acknowledged that Congress intended § 101 to extend to “anything under the sun that is made by man.”

•      “Whether the patent’s claims are too broad to be patentable is not to be judged under § 101, but rather under §§ 102, 103 and 112. Assuming the above statement to be correct, it has nothing to do with whether what is claimed is statutory subject matter.”

Myspace Inc. v. Graphon Corp., 101 U.S.P.Q.2d 1873 (Fed. Cir. Mar. 2, 2012)

Final thoughts on Graphon’s view as to why 101 is needed

•     [T]here is no evidence that relying on §§ 102, 103, or 112 will solve the problem [of poor quality business method and software patents]. This claim was made ten years ago. It is still being made now. At what point does this argument run out of credibility?

Promethius v Mayo

•               Supreme Court decision on section 101, issued March 20, 2012

•               Background technology

•               Procedure

•               Decision

Course Filter and Judicial Bubbles

•               Supports the Ultramercial/Graphon view of having 101 act as a course filter with sticky bubble of natural phenomena, law of nature, abstract idea.

Not Enough Application, Claim Crashes into the Law of Nature Bubble

•               Promethius’s patent covered:

•             administering a drug;

•             determining a level of metabolites of the drug in red blood cells

•             wherein the amount of the metabolites indicates a need to raise or lower the amount of the drug.

•               Court finds that there isn’t enough application here, to steer the claim away from the law of nature bubble.

Dier, Benson, and Flook to Serve as Guidepost

•     In reaching that decision the court uses its three guideposts: Dierh, Flook, Benson

•     Dier deals with a molding process and machine using the Arrhenius to determine when to open the mold

•     Flook deals with using a new equation to determine when certain alarm limits have been reaching during combustion of hydrocarbons.

•     Benson deals with a mathematical method converting binary-coded decimal (BCD) numerals into pure binary numerals.  The claims contained no structure, just the math, and the math was new and unobvious and disclosed.

The Dier Application Limit

•     Dier is OK, because the patentee claims a specific application of the Arrhenius equation, Flook is not because it claims using this new equation for all contemplated uses today and in the future.

•     And that’s the rub really, if you patentee is fortunate enough to discover a new law of nature or abstract idea, do not attempt to claim it so broadly to cover any all design arounds.  This decision flies directly in the face of State Street (but that was ‘only’ a Fed. Cir. Decision).

101 to Act as a Breadth Filter,
Hit the Filter with too Broad a Claim, and it it’s Invalid

•     Does 101 limit claim breadth? Yes.  While 102 and 103 and 112 have been the conventional boundaries of claim breadth, Mayo finds support in many earlier decisions such as Benson. Why not?  Isn’t that was 102/103 prevent?  The Court says no, because abstract ideas and laws of nature are not filtered out of the 102/103 inquiry, adding the new law of nature / abstract idea to any existing post solution activity will be enough to get over the 102/103 hurdles.

•     So, to get a patent covering a new law of nature and abstract idea, you must add more application, and that application cannot be insignificant post solution activity.  Dier is OK, because we are using an equation in an integral process, and the combined machine and equation are new.

Final Thoughts on Mayo

•     So if Promethius had claimed some sort of automatic machine which increased or decreased the amount of the drug being administered by utilizing feedback data it obtained from measuring metabolites in the red blood cells, we’d be in the Dier territory, and probably the Court would have reached a different decision.

•     So does breadth matter under 101, yes.  If you go too broad, you risk not having enough practical application.  Not enough practical application will cause your client’s invention to be ensnared by the law of nature and abstract ideas bubbles.

What is the current state of the law?

•     What is the 101 requirement with regard to structure:

•      Independent claims matter

•      Integrated machine matters; be wary of insignificant post solution activity (collecting data, etc)

•      Claim breadth matters

•      Use multiple patents- assert against different parties

•      Judges matter at the Fed. Cir. Matter

•      Mayo is helpful at the prosecution level.

•      Be wary of mental processes

PTO Preliminary Guidance – After Mayo

Don’t believe the headlines… the Supreme Court hasn’t changed the law… it’s only clarified what’s it’s been saying for the past 50 years.

•    Alice simply holds that putting a process into a generic computer implementation is not enough to overcome “abstractness” issues.

•     Key Point: you need details and sufficiently disclosed algorithms to overcome rejections based on 101.

PTO Issues New Guidelines in the Wake of Alice

Main point:

The holding of Alice applies to all Judicial Exceptions (abstract, law of nature, etc.), and applies to all types of claims (product, process, etc.)

Two Pass test:

Step 1: Does the invention involve an abstract concept like:

•        Fundamental economic practices

•        Certain methods of organizing human activities

•        An Idea itself

•        Mathematical Relationships/formulas

If so, proceed with Step 2.


PTO Issues New Guidelines in the Wake of Alice

Step 2:

To pass 101, an element of the claim or combination of elements must amount to significantly more than the abstract idea itself.

What does that mean?

•     Improvements to another technology or technical fields;

•     Improvements to the functioning of the computer itself;

•         Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment

What is not enough?

•     Merely Applying an Abstract idea;

•     Onboarding onto a generic computer


PTO Issues New Guidelines in the Wake of Alice


Limiting the invention to a particular technological environment is not enough.  Buysafe, Inc. v Google, Slip Op’n p8.

“Computerizing” functional components won’t work either:

•     A “’data processing system’ with a ‘communications controller’ and ‘data storage unit,’” which are “purely functional and generic” components for “performing the basic calculation, storage, and transmission functions required by the method claims.” Id.

PTO Issues New Guidelines in the Wake of Alice


•        Computers itself don’t impart patent eligibility

•        “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010)

•        In order to “salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making the calculations or computations could not.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012).

Beware of trying to computerize a mental process

•    In SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App’x. 950, 951 (Fed. Cir. Jan. 24, 2014), the patent at issue claimed a method “for guiding the selection of a treatment regimen for a patient with a known disease or medical condition.” Claim 1 claimed: a “method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition.” The method (1):

•     “provid[ed] patient information to a computing device” having routine input, memory, look-up, comparison, and

•     output capabilities and that (2) “generat[ ed] … a ranked listing of available therapeutic treatment regimens” and (3) “generat[ ed] … advisory information for one or more therapeutic treatment regimens in said ranked listing.”

Claim 1 also included

a “computing device” containing “a set of ‘expert rules for evaluating and selecting’ from a stored ‘plurality of different therapeutic treatment regimens,’ as well as ‘advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens.”‘ Id. at *955.

The Federal Circuit concluded:

that this “computing device” limitation was “broad” and not meaningfully distinguishable from “a doctor’s mind.” Id. Thus, although the claimed method recited several rules ostensibly narrowing the claimed invention, the claim was held to be not patent eligible, because section 101 does not “embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads.”

Google Developed, Battle Tested, and Court Approved Technique to prove a patented process can be done mentally or by people.

Always do a reality check on claims, can the claim be practiced without a computer?

•    CyberSource Corp., 654 F.3d at 1373:

•     “[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps, but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the ‘basic tools of scientific and technological work’ that are free to all men and reserved exclusively to none.”)

Method of upselling a product

•     1) establishing a communication with a user over an electronic communications device wherein the user initiates the purchase of a good or service;

•     2) obtaining data about: the user’s identity, the good or service purchased, and a second data element relating to the user;

•     3) generating an upsell offer based on the second data element related to the identity of the user and the good or service purchased;

•     4) offering the upsell item and receiving an acceptance in real time.

Unpatentable because the same steps may be performed by a person during a sales operation.

Method of organizing information into folders

Cogent Medicine, Inc. v. Elsevier Inc., Nos. C-13-4479, -4483, -4486 (N.D. Cal. Oct. 3, 2014) invalidates under via a motion to dismiss, a patent providing a method for organizing medical literature into data folders.

The case is notable, because it is such an obvious violator 35 usc 101 and probably 103.  It’s a wonder how it got allowed.

What is a Business Method Anyway?

•    According the SC:

•     they recite methods for performing a commonplace business function—such as currency conversion, hedging, or employing intermediated settlement in a financial transaction—typically by using a computer system or computer components to perform those methods;

•     they are aspirational in nature in that they describe the business function, but do not describe any novel manner of performing that function other than referring to the use of routine operations performed by a specially programed computer; and

•     the recitations referring to the use of a computer do not include any inventive measure that “purport[s] to improve the functioning of the computer itself,” CLS Bank, 134 S. Ct. at 2359

What should the law be?

•     How much of this problem comes from ineffective enforcement of 112?  Graphon speaks of imbalance between disclosure and claim breadth.

•     Can rigorous enforcement of scope commiserate with disclosure help?

•     Or will it only make patents insufferably long to write?

•     Is the real problem the concept patent, the patent that gets allowed when the implementation is only at the blackboard stage?

•     Should they be allowable, or can 112 and 101 protect against the industry crushing patents like Datatern and Graphon?



Turning Your Patent Into Cashflow

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Click here to Download Turning Your Patent Into Cashflow


Protect it! IP has released a new eBook, Turning Your Patent into Cashflow

This book will be available for free to the first 200 hundreds people that download it, so claim your copy today.

Abstract: There are four main ways to derive money from a patent: commercialization, offensive licensing, merchandizing, and auctioning.  Each approach involves a different amount of work beyond obtaining the patent, and some models work better in certain industries.  Validation of an invention as a marketable commodity requires not only obtaining a patent, but a monetization plan as well.  This article will discuss these four approaches, as well examine some of the reasons patents aren’t licensed.  Finally the article concludes with some advice to help future inventors avoid the pitfalls of filing patent applications on ideas that cannot be monetized.

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Table of Contents

  1. Overview:

A) Forming a Company – Patent Commercialization

B) Easy Licensing Techniques

C) The Merchandizing Option

D) So can an Inventor Make Money from Selling a Patented Idea?

  1. Patent Commercialization

Building a product or process embodying the patented technology and forming a company to sell the product or related service.

A commonly misunderstood principle of patent law is that having a patent on an idea means that the person who owns the idea can make and sell it.

  1. Offensive Licensing

A) Staging your Patent for Litigation

B) Forcing a Settlement Even if Your Expected Damages are Less than the Cost to Enforce

C) Valuing a Patent

D) A Model for Staging A Contingency Case

E) Selecting the Right Plaintiff’s Firm

Hire a patent attorney you know and trust to engage and supervise your litigation counsel.

  1. Merchandizing the Patent
  2. Auctioning the Patent
  3. The Real Costs to Protecting a Patentable Idea

A) Moral Considerations to Auctioning your Patent

B) Pragmatic Considerations for Auctioning/Selling a Patent

C) So how much is a Patent Worth on Auction Anyway?

D) Reasons Why Most Patents are Never Auctioned

E) Reasons why Inventors don’t auction their patents

F) Hedging Against the Reasons Inventors fail to Successfully Auction their Patents

A patent application will be denied if it is not novel, unobvious, or fully described.

If you want to save money in filing a patent application, write the best disclosure you can and engage your attorney to work from your best work.

To put it directly, not all inventions are patentable, and not all patentable inventions are valuable – most aren’t.

  1. Can an Inventor Make Real Money by Auctioning their Patents as a Business Model?

Professionally inventing and auctioning patents is like being a professional house flipper, online stock trader, or professional poker player.

  1. Forming a Business Model to Invent and Auction Patents

Results and analysis of a hypothetical patent filing and auction process

  1. Thinking like an Investor not an Inventor
  2. Predicting Hidden Prosecution Costs

The bottom line is this, when an inventor approaches an attorney to obtain a patent, he or she should be focused on whether this invention will make him or her any money if licensed or sold, not solely on whether their invention is worthy of being awarded a patent.

Without the right foundation, a patent application quickly becomes a bottomless money pit that will never return anything to the inventor but heartache and broken dreams.

Without a monetization strategy, the inventor’s gem of an idea becomes patented, but remains a diamond in the rough, because the inventor did not prepare for the necessary time and work involved to stage and polish invention, so that any plaintiff’s firm or patent enforcement company can see its brilliance.

  1. Building your Monetization Network