Alice, Alice, who the &^%$# is Alice?

Dancing in Pink
אליס, אליס, מי לעזאזל זו אליס?

בית המשפט העליון בארה"ב קבע שלא היה צריך לאשר את בקשת הפטנט של חברה בשם Alice Corp, שקיבלה פטנט על שיטה להפחתת הסיכונים שצד אחד בעסקה כלכלית לא ישלים את חלקו - על ידי שימוש בתוכנת מחשב. בית המשפט קבע שמכיוון שהשיטה דרשה רק יישום גנרי במחשב של רעיון מופשט לא הפכה הרעיון להמצאה שראויה לפטנט.

ניתוח ופרטים במאמר המלא (באנגלית).

In this case, Alice is not a who, but a what –in June 2014 the US Supreme Court issued a ruling[1] ("Alice") which held that certain patents that pertaining to a computerized platform for mitigating settlement risk in financial transactions between two parties[2], were ineligible for patenting under 35 U.S.C. §101[3] reasoning that Alice Corp.'s claims to methods were ineligible because "the claims at issue amount to 'nothing significantly more' than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer."

This ruling has left many unanswered many questions on software patent eligibility and is already causing am increase in patent challenges before the USPTO – from patent litigation to post grant proceedings. In fact, in the several months since Alice, the USPTO and the lower courts have withdrawn the notice of allowances for several patent applications that were deemed to be patent ineligible in view of Alice[4] and several lower court decisions have invalidated computer-implemented patents[5].

In Alice, the US Supreme Court analyzed the patent eligibility of the claims under 35 U.S.C. § 101 using the two step framework it developed in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012). The first step addresses whether the claim is one of the three judicial exceptions to patent-eligibility (laws of nature, natural phenomena, or abstract ideas), and, if so, then the second step is implemented reviewing if the claim presents sufficient additional elements to transform such claim into a patent-eligible application of the concept, rather than the concept itself.

Subsequent to Alice, the United States Patent and Trademark Office (USPTO) issued preliminary examination instructions to patent examiners for determining the patent eligibility of computer-implemented inventions involving abstract ideas (the "Guidelines")[6]. In the Guidelines, the USPTO also followed the analytical framework that was outlined in Mayo and Alice, listing four examples of abstract ideas ("Abstract Ideas"):

  • fundamental economic practices

  • methods of organizing human activities

  • an idea of itself (sic), and

  • Mathematical relationships/formulas.

The Alice categories are examples of types of concepts that can fall into the class of Abstract Ideas, but they are not definitions or sufficient conditions that make all categories members Abstract Ideas and hence the confusion and the many unanswered questions on software patent ineligibility.

Robert Sachs[7] of Fenwich West LLP illustrates just how unhelpful this guidance actually is in his article of each of these categories on September 10, 2014[8].

Slightly more helpful is the ruling in buySAFE, Inc. v. Google, Inc.[9] which states that, at least in general, computer-implemented business method claims must include elements directed toward more than simply conventional computing functionality. The computer functionality recited in the claim was "generic" and "quite limited" and the court ultimately held that the claims’ invocation of computers added no inventive concept, saying "that a computer receives and sends the information over a network—with no further specification—is not even arguably inventive".

Joel Henry of Faegre Baker Daniels[10], in a recent article[11] proposes that patents and patent applications that invoke computer functionality to perform well-known economic and financial transactions must be sure to include advanced technical or computing features that transform the well-known economic practice in order to make sure they pass the two step test.

The body of case law post-Alice is still very much evolving, and it is important to watch what the US courts continue do over the course of the next several months and years, and the effect that this will have on patentability of software in Israel, Europe and elsewhere.

Disclaimer: I am not a commercial (not patent or IP) lawyer and any opinions and analysis provided in this article are my own, predicated on my many years of experience in hi-tech arena, representing large and start up hi-tech companies. The analysis and information provided herein will not be applicable in all situations and any queries regarding patentability of software or otherwise should be addressed to a qualified patent attorney.

[1] Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ___, No. 13-298 (June 19, 2014).

[2] the risk that only one party to an agreed-upon financial exchange will satisfy its obligation, in which a computer system is used as a third-party intermediary between the parties to the exchange.

[3] 35 U.S.C. §101 states that, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Judicial exceptions to what constitutes patent eligible subject matter have included “abstract ideas,” “laws of nature,” and “natural phenomena.”









#software #alice #ip #עורךדיןמסחרי #סטארטאפ

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