U.S. (Finally) Joins Int’l Design Convention

Single-application design registration begins May 13

After 16 years in limbo, the US will soon join 61 other countries in the Hague Agreement Concerning the International Registration of Industrial Design, a system that allows for a design patent or registration to be filed in multiple member countries with a single US application.

Under the new system, the inventor of a new design can file a single application with the U.S. Patent Office and at the same time designate any of the 61 other participating countries. After a review for formalities, the Patent Office will send the application to each designated member country, which will review it as if it had originally been filed there. Japan, South Korea, and the EPO are all signatories and more are expected to join now that the US is on board.

The upside to applicants is the convenience of a single application, reduced cost, and obviating the need to enlist local counsel in every country where they are seeking protection. Since applications will be reviewed under each country’s own design laws, quirks of local law may still require local assistance but this will likely be the exception to the rule.

Other benefits:

-Hague-filed design applications will generally publish within six months of application
-As many as 100 designs can be included in a single application provided that they are in the same international class.
-Damages may now be available for pre-issuance infringement where the issued application is substantially the same as the published application.
-US design patents now have a term of 15 years from issuance, whether filed under the Hague or not.

The Patent Office has seen a surge in design patent applications in recent years, up from 25,806 in 2009 to 35,378 last year. Apple’s $1B win against Samsung in 2012 on a design patent covering the iPhone GUI caused many to reevaluate the design patent as an arrow in one’s IP quiver.

For more information on protecting your product design, please see our presentation on how to protect product designs with design patents.

When a Patent Just Doesn’t Fit Your Idea or Business

A patent comes with a host of benefits, but might not be the right fit for every idea or every new company. Here’s four reasons why:

1. Your idea isn’t patentable subject matter. Certain subject matter are categorically exempt from patent protection. New app that’s the Uber of [fill in the blank]? Probably not patentable without something more than the software. A new search or sorting algorithm? Probably not. Abstracts ideas, laws of nature, physical phenomena. All not patentable. Modified human genes? Nope. The rules surrounding abstract ideas and software are always changing, but in certain areas the Patent Office always says, “no.”

2. Your idea isn’t finished. This is easy. If you’re idea isn’t fully baked, it’s not ready for patenting and not yet patent-eligible. There is no requirement under the law that you build a functioning prototype, but there is a requirement that your patent disclosure enable a person of ordinary skill in the art to practice your invention. If you can’t do that, your invention is still a pan of brownies with a liquid center.

3. Two-plus years is just too long. The Patent Office’s backlog of around 600,000 applications means that the average application takes over two years from start to finish, and in some technical areas even longer. The Patent Office’s Track One examination program will shorten that to one year, but it’ll cost you from $1,000-4,000 extra. Think about your product life cycle and where you’ll be in two years. Sometimes a patent doesn’t fit. Sometimes it’s worth the wait. The business uncertainty of a pending application is enough to scare off would-be copycats, and a pending application might draw investor interest.

4. You don’t want to play the patent game. There is a belief in certain circles that by applying for your own patents, and thus “playing the patent game,” you are inviting trouble. If you infringe a competitor’s patent, they will surely let you know one way or another. Patent trolls will find you if you’re in the marketplace and fall within whatever definition they’ve set for their targets. Your competitors will still patent their innovations even if you opt out (and it’s more likely that they will). The game is being played whether you’re in or not.

A patent attorney can help you understand the benefits so that you know whether it’s the right fit for your business.

Five Things to Know About Patents Right Now

For many new companies, intellectual property may be the primary asset, followed closely by a suite of second-hand Herman Miller furniture and a collection of Apple goods.

With that in mind, here’s five useful bits of information about patents:

1. Confirming that you don’t infringe someone else’s patents can be as important as getting your own. Your patent doesn’t actually give you the right to actually use or sell your invention. A patent is simply a right to exclude others from doing something—making, using, selling, offering to sell, importing what’s covered in the patent.  But it gives you no right to actually practice the claimed invention.

There’s a lot of patents out there.  U.S. Patent No. 9,000,000 issued today, and 1/3 of all patents ever issued are in force right now.  Right to use searches are as important as ever.

2. You can’t patent software.  Not in a long time.  The rules of the game are complicated and always shifting, but if your invention is simply an algorithm or code, you won’t make it far with a patent examiner, who will be looking for something more. See our prior piece on this.

3. First to file wins.  He (or she) who wins the race to the Patent Office gets the prize. This wasn’t always the case, but it is now. Obviously you can’t take someone else’s idea and patent it, but independent creation of the same (or an obviously similar) invention happens. File early.

4. Don’t tell anyone.  Under US law, you’ve got one year from your first public disclosure of an idea to file a patent application or your rights are forever lost. Some jurisdictions are even stricter—Europe essentially requires that you file first and talk later, with no grace period.

5. The inventors matter.  A party qualifies as an inventor not because they are a co-founder or an investor, but because they contributed to the “conception” of the idea—the so-called flash of genius. Only actual inventors may be listed, and all inventors must be listed. Playing games here can lead to an unenforceable patent.

Five is only the tip of the iceberg so keep an eye out for more to come.


Autumn 2014 Newsletter Released

Our Autumn 2014 newsletter is finally out, and is full of information on recent developments in patent law, what’s been happening at the firm, and upcoming events.

You can find it here.

If you’d like to be added to be added to the mailing list, just send us an e-mail at the address over on the right.


For Startups: Intro to Intellectual Property & Technology Law

A few weeks ago, we had the pleasure of presenting our first Introduction to Intellectual Property and Technology Law for Startups lecture for 100 or so of our closest (and newest) friends. The goal was to provide a high-level overview of the IP issues that startups might consider, how to avoid the traps that await the unwary, and what practical steps a startup could take today. The full summary can be found over at WeWork Magazine.


BOAG | LAW featured in GigaOm

BOAG | LAW featured in GigaOm this week:

“Software patents have always been controversial, in large part because the dividing line between a patentable software-based invention and one that is not has never been clearly defined. But the often hazy body of law that determines software patentability could be about to change.”

You can find the full article here.

Thanks to Nicole and everyone at GigaOm.


Keeping Ownership of Employee Inventions on the Clock

Consider the following: You’re about to take on employee number two (or three) to tackle some software development issues while you shift back to the big picture. Your boyfriend’s cousin’s classmate is a top-notch programmer looking for something full-time, and everything clicks into place. Not only does he tackle the task at hand, but he does so in a manner so jaw-droppingly brilliant that the word “patent” begins to be thrown around.

All else being equal, who owns the patent?

It can’t be the employee, can it? After all, the invention was created on your time, with your resources, and in the ordinary course of his employment.


The general rule here is that absent an agreement to the contrary, an employee owns his or her invention even if it was conceived during the ordinary course of employment, using company resources, and on company time (the phrase “absent an agreement to the contrary” is a hint on how to fix this problem, as discussed below).

The concept that patent rights vest with the inventor is an old one in the U.S., dating to the 1790s and the first Patent Act, though other countries may differ. For example, rights in Israel and Switzerland are closer to the U.S. model; in Germany and the U.K., rights typically vest with the employer.

This rule was in the news a few years back when the Supreme Court heard a case involving Stanford and an inventor who developed a method later used in H.I.V. testing kits.  Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular Systems, Inc., 563 U.S. (2011). The Court confirmed the general rule in the context of federal-funded research. In other words, even where the government has a financial interest, the rule stands and title vests with the inventor.

While beyond our scope here, this article has a thorough discussion of the historical and policy underpinnings of the rule.

Better than nothing: Shop rights for the employer

Since it would be inequitable for the host employer to have no rights at all in the employee’s invention, the law provides for a limited shop right—similar to a limited license to use the invention.

The shop right amounts to a non-transferable, non-exclusive, royalty-free license, and allows the employer to use the invention in the normal course of the business without fear that the employee (or perhaps former employee) could sue for infringement.

While better than nothing, it’s hardly the period of exclusivity granted by the patent statute, and doesn’t allow the employer to license, sell, or otherwise take advantage of the patent as a property right. The employee remains free to license or sell the patent to anyone, even a competitor.

Hired to invent

There is an exception to the general rule for employees that are hired to execute a specific task or otherwise use their “inventive faculties” (not my phrase).

The “hired-to-invent” doctrine says that where an employee was hired to solve aspecific problem or invent in a specific field, any resulting invention becomes the property of the employer. Courts look at a variety of factors, but the primary factor is the specificity of the task given to the employee at hiring. The more specific the directive, the greater the likelihood that the resulting invention will be owned by the employer, a departure from the general rule.

Steps for maintaining ownership

So, how do you avoid an unsuccessful outcome?  A few tips:

Formulate a policy and stick to that policy.

Determine what you fairly expect to remain property of the company, and what you are willing to leave with the employee-inventor.  Too rigid a policy leaves less of an incentive for employees to innovate.  Too flexible a policy leaves money on the table.

I have deposed many inventors over the years and many companies use an incentive-based system ranging from financial rewards to public acknowledgement and a firm handshake.  (That last inventor probably should have asked for more.)

Once you have a policy, put it in writing, and apply it consistently.

Require new employees to enter into an assignment agreement before starting work.

Once you determine what is company property, make sure new hires are required to sign on to the policy.

While including language in an employee handbook is sufficient in some states, the better path is to obtain a signed assignment from new hires before they start work.

Provisions of this sort have become a common part of employment agreements: “Employee agrees to assign and hereby does assign to Employer his right, title, and interest in the ideas, inventions, and improvement made as a consequence of Employee’s employment by Employer.”

Language presently assigning rights, as opposed to promise to assign rights, is preferable.  In Stanford, Stanford held that an earlier “promise to assign” close lost out to the later “hereby does assign” agreement.  One was an assignment, the other a promise to assign.

Execute and record individual assignments early.

An assignment of a specific invention can be recorded with the USPTO as soon as the application is filed.  Wherever possible, have the employee execute the assignment of the specific application at the time of filing.  You need the inventor’s signature on the inventor declaration anyway, so better to get them both at once.

Memorialize hired-to-invent relationships.

If your employee has been hired to address a specific problem, document the nature of the problem to be solved with as much specificity as possible.

Consult your local law.

Patent law is generally a creature of federal law, but patent ownership and employment contracts are the dominion of the states.  Consult an attorney versed in the law of your state for requirements specific to your jurisdiction.  (This advice goes double for Californians.)

Taking a few precautionary steps now can save you from a world of grief down the road.

This article originally appeared in FullStart on January 17, 2014.

Rep. Bob Goodlatte’s 43-Day Assault On The Patent Troll

Just over a week ago, the House passed the Innovation Act (H.R. 3309), an innocuous-sounding bill that contains sweeping changes to U.S. patent law motivated in large part by “the troll problem.”

Here’s what you need to know about patent trolls: I once defended an international restaurant chain that trades in pancakes, in a patent matter. That actually happened — and more than once.  Absurd patent assertions are legion, and many are left scratching their heads with one hand, demand letter in the other, asking, “why me?”

The patent troll sometimes goes by the less pejorative label, “NPE” or “non-practicing entity.”  The distinction between troll and NPE is a fine one since not all NPEs are trolls (a university might be an NPE but not a troll), but let’s use “NPE” to be consistent with prevailing usage.

NPEs (the bad ones) are undeniably a problem. By one estimate, companies that have been targeted by NPEs spend $29 billion a year in direct costs, with $83 billion a year in lost wealth, an amount that the authors concede is conservative. So Congressman Bob Goodlatte (R-Va.) took action.

The Goodlatte Bill (Didn’t We Just Do This?)

The House Judiciary Committee has taken a renewed interest in NPEs, and on October 23, Goodlatte introduced the Innovation Act, a wide-ranging patent-reform bill aimed at making it more difficult for NPEs (the bad ones) to operate.

What’s notable is that the act made it from committee introduction to full vote in about 43 days, which is fast for any piece of legislation.

Patent attorneys still talk about the 1952 Amendments (some of us are not good dinner party company) because we don’t do this very often, and for good reason. Patent law is one of the more complex areas of the law and when you tinker with that law, even with the best of intentions, sometimes you break things.  When I was 10 my parents had a Sony Betamax VCR that I decided to “fix.”  We upgraded to VHS the next day. Best of intentions.

For that reason, changes to the Patent Act tend to be slow and deliberate, and include hearing the opinions of a wide range of those that will be affected. The last major change to the patent system, the 2011 America Invents Act, took almost six years to come together, but it failed to rein in abuses by NPEs.

Looking Under the Hood

The act (summary) includes a number of provisions that intend to make it difficult for NPEs to operate, either by increasing costs or risk or requiring a more detailed pre-suit investigation.  Some of the more controversial points include making the loser pay the other side’s litigation fees, requiring far more up-front technical detail in support of the infringement claim, and halting all discovery until after the court interprets the patent claims.

The act also provides for staying a case against customers where there is a pending action against the manufacturer, and requiring transparency of ownership of the litigated patent. A few NPEs are notorious for playing a hide-the-owner shell game. 

The act includes a number of cleanup changes to the 2011 America Invents Act. Sometimes you need to fix what you break. We’re looking at you, 112th Congress.

Everyone’s Got An Opinion

With this much money at stake, there are a lot of opinions in the room. The Hon. Paul Michel, the former chief judge of the Federal Circuit (the court in charge of hearing nearly all patent appeals) was succinct in his criticism, saying that the act will “punish the innocent to corral the guilty, without really addressing the bad behavior of the guilty.”

The American Intellectual Property Law Association (a 15,000-member trade group of lawyers, judges, USPTO employees and the like) published an open letter to the House leadership calling for a balanced approach that preserves the rights of traditional patent owners and preserving the discretion of the courts to manage the cases before them.

The Federal Judicial Conference, American Bar Association, and IEEE, among others, all voiced their concerns to the Committee.

These “nays” say that the best long-term fix to the problem is to improve the quality of patents issued by the USPTO by fully funding the office and not diverting fee revenue to other agencies (the USPTO sometimes takes in more than it spends).

In the other corner (the “yays”) is a roster of tech heavyweights that includes Apple, Google, Twitter, Yahoo, Microsoft, Oracle — companies who bear the brunt of abusive NPE litigation.

The Electronic Frontier Foundation, a stalwart defender of free speech, privacy, innovation, and consumer rights, called the act “the best shot we’ve had at meaningful patent reform yet,” making the world harder for trolls and “safer for true innovators.” Companies with an Apple-sized litigation budget may be less concerned with more expensive access to the courts, something that would be felt most by small inventors, small businesses, nonprofits, and the like.

Is the Building On Fire?

So who’s right? NPE litigation is a very real problem for companies both large and small, and it’s a drain on the economy. With the stakes so high, getting this right should be the first priority.

In his testimony before the committee, David Kappos, the former head of the USPTO (who is now in private practice), questioned the urgency in the room: “Caution also calls for us to ask: is the building on fire? Do we have an emergency that requires immediate action? No. The building is not on fire.”

The concerns of the leading alliance of patent practitioners, the former head of the USPTO, and former chief judge of the nation’s highest patent-specific court should cause everyone to stop for a moment and consider whether this is the best approach. In a laudable attempt to discourage abusive NPE litigation, the act increases costs for everyone and ties the hands of the judges who are at the front lines of the problem. Everyone, not just Intellectual Ventures and its subsidiaries, are discouraged and inhibited from availing the resources of the federal courts.

Next Stop: The Senate

Meanwhile, next door in the Senate, the Patent Transparency and Improvements Act of 2013 has been introduced. The act (here’s a handy summary) lacks the fee-shifting, loser-pays, and discovery limitation provisions of its House counterpart, but keeps a version of transparency of ownership and invokes the FTC in the fight.

A press release from Sen. Pat Leahy D-Vt. (and a sponsor of the act) voiced the same concerns as Judge Michel and the AIPLA so this might take a while.

Hearings begin December 17.

(This article originally appeared in TechCrunch on December 13, 2013.)

And Yeah That’s Right My Name’s Yauch

Beneath last week’s headlines about the Sonic the Hedgehog balloon in the Macy’s parade (it hit a tree) and whether you should brine your turkey (it’s more trouble than it’s worth) lay another story: the rumblings of a copyright donnybrook between the Beastie Boys and a little-known socially conscious toy company called Goldieblox.

The details are straightforward.  Goldieblox created what they claim is a parody of Girls, the Beasties’ chauvinistic 1986 single.  In the Goldieblox video (available here, for now), young girls are shown rejecting traditional pink princess stereotypes in favor of science and engineering, to the tune of Girls, but with modified lyrics.  Rather than do the dishes and laundry, girls now build spaceships and code and engineer.  Go ahead, compare the two.*

The Beastie Boys, who don’t allow their music to be used for advertising purposes, were concerned at the use of nearly the entirety of one of their songs in a marketing video.  Attorneys for the Beastie Boys called Goldieblox, after which the toy company launched a pre-emptive strike in federal court in California seeking a declaratory judgment that their parody was a fair use and not copyright infringement.

A predictable flood of news articles and blog posts ensued, followed by an open letter from the Beastie Boys.  The dust-up left as quickly as it came when Goldieblox changed the audio track in the video, removing the Girls parody and professing their admiration for the band.

A few facts color the dispute.  (1) While Goldieblox has a mission to expose science and engineering to young girls, it is nonetheless a for-profit company and its video was a marketing tool.  (2) Before he died last year MCA (nee Adam Yauch) included the following provision in his will: “Notwithstanding anything to the contrary, in no event may my image or name or any music or any artistic property created by me be used for advertising purposes.”  (3) Isn’t this the same band whose 1989 masterpiece, Paul’s Boutique, contains, by some estimates, as many as 300 samples, layered and rearranged to form a new whole?


Fair Use?

Co-opting a copyright holder’s right to reproduce, distribute, or prepare derivative works, among others, is ordinarily copyright infringement.  However, the Copyright Act provides a“fair use” exception to infringement where the work has been used for purposes such as criticism, comment, teaching, and the like.  17 U.S.C. § 107.

“Fair use” is left undefined in the Copyright Act, but four factors are given for evaluating whether a use is fair:  (1) the purpose and character of the use; (2) nature of the copyrighted work; (3) amount of the work used in relation to the whole; and (4) effect of the use on the potential market for the copyrighted work.

As much as it pains me to say it, I think that the Beasties would have lost had the case gone further, in large part because of this.  Yeah, remember those guys?  I had forgotten too.

In 1994, the Supreme Court held that 2 Live Crew’s parody of Roy Orbison’s Oh, Pretty Woman was a fair use.  Imagine the nine justices sitting around a table listening to that song.  The leading case on parody and fair use thus became, Campbell, aka Skywalker, et al. v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

Where 2 Live Crew took a clean-cut original to a vulgar extreme, Goldieblox appears to have done the opposite.  Goldieblox’s use is analogous and likely qualifies as fair use.  Let’s looks at the four fair use factors:

The nature of the use by Goldieblox (Factor 1) is unambiguously commercial.  As much as Goldieblox would like to dress this up as a social message, they are selling products, and the video is a marketing tool.  Indeed, where a parody is used to advertise a product, that use is entitled to “less indulgence” than the sale of the parody on its own.  Campbell at 587.

Nevertheless, commercial use is but one element of this first factor, which also looks for criticism or commentary, which is more likely a fair use.  The Goldieblox video  is arguably a parody and comments on the sexist nature of the original.  Transforming the original to a new work (something that the Copyright Act values) also helps.  Advantage: Goldieblox.

The next inquiry (Factor 2) is the “value” of the work and whether it lies close to the intended purpose of copyright protection (think a novel as compared to a factual compilation).  This factor is “[not] likely to help much in separating the fair use sheep from the infringing goats in a parody case, since parodies almost invariably copy publicly known, expressive works.”  Campbell at 586.  Draw.

As to Factor 3 (amount used), Goldieblox helped itself to nearly all of the music in the two-minute original song, though it superimposed parodic lyrics and the song itself is a fairly simple repeating arrangement and xylophone loop.

Context is critical here, since parody requires “recognizable allusion to its object.”  (Campbellat 588).  In other words, parody requires borrowing enough of the original so that the end result is recognizable as a parody.  Whether Goldieblox took more than it needed to establish the parody is a close call, but a comparison to the parody of Campbell likely tips the balance to Goldieblox.

Factor 4 looks at market harm and the extent to which use the usurps the original.  It is hard to conceive how Goldieblox’s actions will have any impact on the Beastie Boys’ ability to generate revenue from Girls (other than a brief uptick in iTunes sales).  Goldieblox takes this one.

On balance, the four factors lean ever so slightly to Goldieblox.  The wholesale taking of a song for commercial purposes—and against an author’s dying wishes—is troubling, but Goldieblox’s transformative use is hardly the same as playing the song in the background of a Buick commercial.

The case seems little more than a publicity grab on the part of Goldieblox (you didn’t know their name before, but you do now).  Of course the Beastie Boys would react, and of course the dispute would garner attention as this month’s David and Goliath story.  Even though it backed down, maybe Goldieblox still won.

* Full disclosure: I am a big Beastie Boys fan, and once saw the late MCA in Murray’s Bagels on Sixth Avenue.  He was with his family so I didn’t say hello.  Alas.

(This article original appeared on Priori Legal’s From Our Network blog at http://blog.priorilegal.com/goldieblox-v-beastieboys/)

Software patenting 4.0 — will the Supreme Court weigh in (again)?

The question of whether software should be patentable stirs up strong feelings in the tech community, on both the pro and con sides, a divide that also extends to the law, which has struggled for almost 50 years to provide concrete guidance on how software should be treated by patent law, if at all.

An opinion this past summer by the nation’s highest patent court has brought that debate to the forefront again. The U.S. Court of Appeals for the Federal Circuit split on whether four patents covering a financial services platform covered subject matter that was eligible for a patent. The lack of consensus among the judges reminded us that even among patent scholars, the boundaries of what is and is not patentable can be difficult to draw.

Abstract ideas, mental processes and mathematical formulas are without question outside the boundaries of patentable subject matter. Software is essentially a collection of abstract ideas, algorithms, and mathematical formulas, so what else is required to cross the line into patentability?

Whatever your thoughts on the patentability of software, understanding the rules of the game are critical to protecting your company’s intellectual property, and keeping you safe from infringement liability.

Patentable Subject Matter Through the Ages

The modern contours of software patentability date to the 1970s and the dawn of the personal computer era. When the first software patent issued to Marvin Goetz in 1968, Phil Esposito was in the middle of hockey’s first 100-point season, Seymour Cray had just finished his second supercomputer, and Steve Jobs was in high school.

A few years later, in 1972, the U.S. Supreme Court found that a method of converting numerals from base ten to base two was not patent-eligible because it was directed to an algorithm alone. This appeared to be the end of the “pure” software patent.

After a few twists and turns, the Court decided in 1981 that a computerized patent covering what would ordinarily be patentable subject matter does not does not become unpatentable simply because it uses a computer program or a digital computer. The pendulum swung in the other direction just a bit.

Where a computer is involved, Court said that the invention as a whole was to be examined to determine whether it performs a function that the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing). If so, patentable. If not, unpatentable. This became known as the machine-or-transformation test. Having been an IP attorney for over ten years I can confirm that patent attorneys like to talk about the machine-or–transformation test. A lot.

You can’t fudge this by tacking on an insignificant machine or transformation in an attempt to clear the patentability hurdle. Later Supreme Court cases clarified that the machine must impose a meaningful limit on the process and the use of the process has to involve more than “insignificant extra-solution activity.” Printing your results at the end of the calculation isn’t going to cut it.

Fast-forward to 2010 and Bernard Bilski, who invented a computerized method of hedging investment losses in the energy industry. Sounds algorithm-y, right? The USPTO rejected the claim because it was not implemented on a specific apparatus, merely manipulated an abstract idea, and solved a purely mathematical problem. The Supreme Court agreed. Unpatentable.

The Supreme Court went a little further, commenting that while the time-honored machine-or-transformation test was a “useful and important clue or investigative tool,” it is not the only test for determining patentability. This caused an audible gasp in the patent community in 2010 because it opened the patentability door just a bit, but without telling you how to get through that door. Bilski is another thing that patent attorneys like to discuss.

Down The Rabbit Hole

Beginning in 2002, an Australian company called Alice Corporation accused CLS Bank of infringing a handful of patents covering minimizing risk in computerized financial transactions. After several more letters, a district court proceeding, and several years, the contretemps (patent litigation can be a genteel, mannerly pursuit) ended up before a 10-judge panel of the Federal Circuit. (A hearing by more than the typical three-judge panel indicates that the Court recognizes the case to be of exceptional importance.)

The Court agreed that the patented methods were unpatentable, but couldn’t come to consensus on the patented systems.

What was remarkable about the case was that it generated five separate opinions from the panel and showed a division within the Court on how the patentability determination should function as a gatekeeper (is it a coarse filter or a fine mesh) and how it relates to the other hurdles of novelty and non-obviousness that must be overcome.

Seven judges agreed that the method claims were patent-ineligible and invalid. The vote on the system claims was tied 5-5 meaning that the lower court judgment was affirmed and those claims remain valid.

In finding the method claims to be unpatentable, one opinion suggested that many of the claims described an algorithm and tacked on generic computer functionality to lend speed and efficiency. “Abstract methods do not become patent-eligible machines by being clothed in computer language.” (Id. at 37-38)

Given the differing opinions within the Federal Circuit, and the current Supreme Court’s interest in patent law, further review seems likely. But what should you do in the interim?

Now What?

After the Bilski decision in 2010, the Patent Office issued guidelines listing the factors that it would consider when evaluating patent eligibility. These guidelines are still helpful in thinking about whether your invention is patent-eligible, or whether the company behind that infringement notice letter is all hat and no cattle. (A lot of patent cases are filed in Texas so you need to know these aphorisms.)

The law for an application filed today may be different than the law three years from now when that application issues as a patent. For inventors, a patent application filed now should hedge against changes in the law, and be broad enough to support any of the possible approaches that the Supreme Court could take. At the narrower end of the analytic spectrum, the process should be described in the context of the computer to which it is tied. Describe a meaningful connection between the process and the computer. Is the computer a general purpose computer or a dedicated device? How does the computer perform the claimed method steps?

The Supreme Court could decide whether to grant review in CLS Bank as early as next month. The ballet of 35 U.S.C. § 101 continues.