Friday, October 21, 2005

BEWARE LUNDGREN (I.E. THE PERILS OF IGNORING "TECHNOLOGICAL ARTS" FOR YOUR PATENTING STRATEGIES) - By now, many of you in the blogosphere have heard about Ex Parte Lundgren, where the US Board of Patent Appeals and Interferences (BPAI) eliminated the "technological arts" test in determining patentable subject matter. Patently-O, I/P Updates, and The Patent Prospector all have in-depth analysis of the decision and the findings made by the Board. Greg Aharonian, who originally broke the story, has more details in his newsletter.

To quickly summarize, there was a notion being passed-off by the USPTO examining corps, that a patent had to be "in the technological arts" in order to be eligible for patenting. This concept was extracted from language allegedly contained in a number of old CCPA and BPAI decisions (In re Musgrave, 431F.2d 882, 167 USPQ 280 (CCPA 1970); In re Toma, 575 F.2d 872, 197 USPQ 852 (CCPA 1978); and Ex parte Bowman, 61 USPQ2d 1669 (Bd. Pat. App. & Int. 2001)(nonprecedential)). Unfortunately, reliance on these cases was misguided, since the decisions didn't validate the actual position, and there also was no supporting authority in any of the USPTO regulations.

Accordingly, the BPAI decided to put an end to the informal practice of issuing non-statutory subject matter rejections based on the "technological arts" test:

Our determination is that there is currently no judicially recognized separate "technological arts" test to determine patent eligible subject matter under § 101. We decline to create one. Therefore, it is apparent that the examiner's rejection can not be sustained.
As a practical effect, the decision should quell any "hold-over" examiners in the USPTO that still feel the need to reject business-method patents under 35 U.S.C. 101. Most practitioners still get the occasional 101 rejection from newly-minted examiners or from those that never got word of the State Street decision by the Federal Circuit.

Thus, the decision would seem to be an exclamation point on the concept that "anything under the sun made by man" would be patentable. And if your patenting strategies were limited to the United States, you would be absolutely correct.

However, if you intend to broaden your patent protection beyond the borders of the United States, you might as well pretend that the decision (as well as State Street) never happened.

While the U.S. undoubtedly has the most liberal policies regarding patentable subject matter, the rest of the world has a much more stringent requirement on patentable subject matter. In fact, Europe has a specific "technical effect" requirement on claims that include business methods. Individual countries within the EU (such as the UK) have even more demanding requirements for the showing of a "technical effect." Thus, there is a clear disconnect in this regard between the patent policies of the US and the rest of the world. Chances are, if Lundgren's patent were to be submitted to the EU Patent Office today, it would be rejected as being non-statutory (the EU has a clear ban on business methods "as such").

I've always advised clients who are patenting business methods to adopt the EU approach, if they ever intend to file patents abroad. At a minimum, the specification should contain an embodiment that discloses the computers, servers, routers, etc., along with algorithmic diagrams, clearly disclosing a software process for performing the invention. If you're going to stand a chance at getting a business method patent allowed in the EU today, your only hope is by claiming the software process underlying the business method. Of course, the EU Patent Office lets a few business-method patents slip through the cracks every now and then, but you're better off playing by their rules from the start, instead of paying thousands of dollars in EU maintenance fees, only to find out that your disclosure won't support the technical requirements being demanded by the EU examiner.

Also, the EU is getting more and more bizarre by the day with its handling of software patents. A wonderful example of this is the "little man" requirement decided recently on an Oracle software patent. This test asks whether an artefact or process is new and non-obvious merely because there is a computer program; or would it still be new and non-obvious even if the same decisions and commands could somehow be taken and issued by a little man at a control panel, operating under the same rules. If the little man can do it then the computer program is merely a tool, and the invention is not about computer programming at all.

It's enough to make your head explode. But it goes to show that the decision in Lundgren is a dangerous precedent to adopt if you have global patent aspirations. Unfortunately, we can't make the rules in the EU - we just navigate our way through the given rules to get the broadest protection possible, regardless of how strange the journey is along the way.

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