1 2 3 4 Can mention PCT. Also can mention Hague Agreement for - - PDF document

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Can mention PCT. Also can mention Hague Agreement for design patents. Background on the Hague Agreement: The Hague Agreement in basic terms is an international registration system allowing industrial design

• wners to apply for protection in a number of states and/or intergovernmental organizations (such as

the European Union) using a single international design application. American industrial design creators—who currently prepare and file separate applications for each jurisdiction—will now be able to file a single, English-language application with the World Intellectual Property Organization (WIPO) directly, or indirectly through the USPTO. (From a blog by Teresa Stanek Rea in March 2013 - http://www.uspto.gov/blog/director/entry/a_new_chapter_for_protection) From a USPTO Press Release (in Q2 2014): The PLTIA (Patent Law Treaties Implementation Act) and the proposed rules call for the following:

• standardizing formal requirements for international design applications;
• establishing the USPTO as an office through which international design applications may be filed;
• provide for substantive examination by the Office of international design applications that designate

the United States;

• provide provisional rights for published international design applications that designate the United

States;

• and set the patent term for design patents at 15 years from the date of patent grant.

http://www.uspto.gov/ip/global/Forum_To_Discuss_Proposed_Changes_to_Implement_the_Geneva_Act_o f_the_Hague_Agreement.jsp

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PTO script 6

Hence “design” versus “utility” nomenclature the design patent term will be changing to 15 years from issue once the Hague takes effect In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and

• rnamentality of an article are not easily separable. Articles of manufacture

may possess both functional and ornamental characteristics. Of primary importance in a design patent application is the drawing disclosure, which illustrates the design being claimed. Unlike a utility application, where the "claim" describes the invention in a lengthy written explanation, the claim in a design patent application protects the overall visual appearance of the design, “described” in the drawings. It is essential that the applicant present a set of drawings (or photographs) of the highest quality which conform to the rules and standards which are reproduced in this guide. Changes to these drawings after the application has been filed, may introduce

new matter, which is not permitted by law (35 U.S.C. 132). 7

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Although there is a grace period in the US, inventors are advised to file a patent application before public disclosures. 9

37 C.F.R. 1.51 General requisites of an application. (a) Applications for patents must be made to the Director of the United States Patent and Trademark Office. (b) A complete application filed under § 1.53(b) or § 1.53(d) comprises: (1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims, see §§ 1.71 to 1.77; (2) An oath or declaration, see §§ 1.63 and 1.68; (3) Drawings, when necessary, see §§ 1.81 to 1.85; and (4) The prescribed filing fee, search fee, examination fee, and application size fee, see § 1.16. 195 (98)/310/125. 10

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Every claim needs a preamble and transition phrase 15

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Note, other rejections to a patent applications. This only discussed 102 and 103 prior art rejection. 101 Utility 112 1st – written description 112 2nd ODP 20

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Name of the game is the claims. What are you claiming as your invention? It makes a difference as to whether the prior art anticipates or makes obvious your claimed invention. 23

Comparison between the claimed invention and the prior art (analogous art and non-analogous art) Examiner will determine similarities and differences in structure and function OF THE CLAIMS not a single embodiment 24

Depending on the claims, it may be obvious or identical. 25

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Not Identical - The prior art and the claimed invention are different Obvious – It is common sense that familiar items may have uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. (Syllabus, pg 5 KSR). A patent for a combination which only unites old elemetns with no change in their respective functions withdraws what is already known in the field of its monopoly and diminishes the resources available to skillful men. (KSR e.g., predicable) POSITA – average person working with the subject matter (environment) 27

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Does the prior art go together like pieces of a puzzle. 29

• n-sale bar – subject of a commericial offer for sale not primarily for

experimental purposes and ready for patenting (Pfaff v Wells 525 US 55 (1998) public use (accessible to the public and commercially exploited and ready for patenting (Pfaff)) Invitrogen Corp. v Biocrest, 424 F.3d 1374 (Fed. Cir. 2005). Commercial and non-commercial environments. experimental use Public accessibility Confidentiality obligations 30

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Non-analogous – solves a different problem, different field of endeavor. 32

These considerations weigh against obviousness and in favor of patentability 33

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Apply Online for a Patent using EFS-Web Obtain Status of a Patent Application Determine when application will be picked up for examination, see First Office Action Estimator Search US Patent Database Search Patent Classification Manual Download Forms and Fee Schedules Patent Help Resources Access Details of All Currently Pending Published Patent Applications (Public PAIR) IP Awareness Assessment Tool Information about Pro Se and Pro Bono programs Link to StopFakes.gov site

By navigating the Main Menu Bar, the user can locate information easily … Screens are shots of the nesting of the main menu bar.

• General Information
• Introductory Guides
• FAQs
• Upcoming Events

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• Registered Attorneys & Complaints Against
• Inventors Assistance Center
• and much more…

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• Administered by the Office of Innovation Development
• Link to Pro se and Pro bono assistance
• State resources
• Upcoming events
• Inventors Assistance program

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Software Patent Eligibility

Matthew Sked Senior Legal Policy Advisor – Office of Patent Legal Administration Old Dominion University April 10, 2018

Eligibility Guidance Is Now In the MPEP

• The MPEP has been updated to

incorporate the 2014 Interim Eligibility Guidance (IEG) and its updates

• MPEP now replaces the IEG and

updates (as of August 2017)

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Nov. 2016 Memo

Updated MPEP Chapter 2100

May 2016 Instructions July 2015 Update 2014 IEG July 2016 Memo May 2016 Memo

MPEP Organization

• Eligibility guidance is located in Chapter 2100

– 2103 discusses how the eligibility analysis fits into the overall patent examination process – 2104 discusses the requirements of 35 U.S.C. § 101 – 2105 discusses patentability of living subject matter – 2106 and its subparts discuss the subject matter eligibility analysis

• Additional information is located in Chapter 700

– 706.03 and 706.03(a) discuss subject matter eligibility rejections and provide appropriate form paragraphs

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35 U.S.C. § 101

§ 101 - Inventions Patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may

• btain a patent therefor, subject to the conditions and

requirements of this title.

35 U.S.C. §101

Subject Matter Eligibility

• The four statutory categories of invention:
• Process, Machine, Manufacture, or Composition of Matter
• The courts have interpreted the statutory categories to exclude:

– “Laws of nature, natural phenomena, and abstract ideas” These three terms are typically used by the courts to cover the basic tools of scientific and technological work, such as scientific principles, naturally

• ccurring phenomena, mental processes, and mathematical algorithms.
• Called “Judicial Exceptions”

At times, other terms are used to describe the judicial exceptions.

Flowchart

• Sets forth the only analysis for

examination of subject matter eligibility under 35 U.S.C. 101

• MPEP 2106 includes updated

flowchart that: – Adds labels for each step – Indicates three pathways to eligibility (including streamlined analysis)

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35 USC §101: The Four Categories of Statutory Subject Matter

Process Machine Manufacture Composition of Matter

35 USC §101: Statutory Categories

The Four Categories of Statutory Subject Matter

• Process

– “an act, or series of acts or steps”

• Machine

– “a concrete thing, consisting of parts, or of certain devices and combination of devices”

• Manufacture

– “an article produced from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery”

• Composition of Matter

– “all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, for example

Statutory Categories - Software Per Se

Example 1

A speech-recognition interface that enables operative coupling of a speech recognition engine to a computer-related application, said interface comprising: code for receiving speech-recognition data including recognized words; code for outputting the recognized words into a computer-related application as input text, including changing positions of the recognized words; and code, independent of the computer-related application, for determining positions of the recognized words in the computer-related application.

• The “interface” is software per se, not a:

Process: series of steps; 35 U.S.C. § 100 Machine: a concrete thing consisting of parts or devices Manufacture: an article produced from raw or prepared materials Composition of matter: a composition of substances or composite article

Statutory Categories – Information Per Se

Example 2

A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising: first data for describing a device dependent transformation of color information content

• f the image to a device independent color space; and

second data for describing a device dependent transformation of spatial information content of the image in said device independent color space.

• The “device profile” is an intangible collection of information per se, not a:

Process: series of steps; 35 U.S.C. § 100 Machine: a concrete thing consisting of parts or devices Manufacture: an article produced from raw or prepared materials Composition of matter: a composition of substances or composite article

35 USC §101: The Judicial Exceptions

Law of Nature Natural Abstract Ideas Phenomena

Recent Supreme Court Activity Regarding Judicial Exceptions

Bilski (2010)

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Mayo (2012) Myriad (2013) Alice Corp. (2014)

Abstract Idea

(process claims)

Law of Nature

(process claims)

Natural Phenomena

(product claims)

Abstract Idea

(process & product claims)

Step 2A. Is the claim “directed to” an abstract idea?

A claim is directed to an abstract idea when it is recited in the claim.

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• “Recited” = set forth or described.
• To determine the presence of an

abstract idea in a claim, examiners are to determine if the recited concept is similar to at least one concept that the courts have identified as an abstract idea.

• Detailed in MPEP 2106.04(a)

An abstract idea can be identified by comparison to similar concepts found abstract by the courts. The February 2018 Quick Reference Sheet contains a categorized list of court-identified abstract ideas.

Identifying Abstract Ideas

Case Law Chart

• Case law chart provides additional information so examiners can

look at the patent(s) and claim(s) at issue in the case

• QRS & Chart are updated periodically (check 101 website)

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Step 2A. Improvements in Technology

• An examiner may determine that a

claim directed to improvements in computer-related technology is not directed to an abstract idea without the need to analyze additional elements under Step 2B

– A claim directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas

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Improvements in Step 2A

Example 1

A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

• btaining a first set of rules that define output morph weight set stream as a function of

phoneme sequence and time of said phoneme sequence;

• btaining a timed data file of phonemes having a plurality of sub-sequences;

generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules; generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

• The claim was found patent eligible because it is directed to an improvement in computer

animation and is not directed to an abstract idea.

Improvements in Step 2A

Example 2

A method for recording and administering digital images, comprising the steps of: recording images using a digital pick up unit in a telephone unit, storing the images recorded by the digital pick up unit in a digital form as digital images, transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images, receiving the data by the server, extracting classification information which characterizes the digital images from the received data, and storing the digital images in the server, said step of storing taking into consideration the classification information.

• The claim was found patent ineligible because it is directed to an abstract idea without

significantly more and does not improve technology.

Claims Held Eligible in Step 2A

(Excerpt from February 2018 Quick Reference Sheet)

Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?

The additional claim elements should be considered both individually and as an

• rdered combination.

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• Identify the additional

recited elements.

• Analyze the elements
• Individually, and
• As an ordered

combination.

• Refer to the Guidance.

Considerations Favoring Eligibility

• MPEP 2106.05(a) discusses

improvements to the functioning

• f a computer or to any other

technology or technical field

• MPEP 2106.05(b) discusses

applying the judicial exception with, or by use of, a particular machine

• MPEP 2106.05(c) discusses

effecting a transformation or reduction of a particular article to a different state or thing

• MPEP 2106.05(d) discusses

specific limitations other than what is well-understood, routine, conventional activity in the field,

• r adding unconventional steps

that confine the claim to a particular useful application

• MPEP 2106.05(e) discusses other

meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment

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Considerations That Do Not Favor Eligibility

• MPEP 2106.05(d) discusses simply

appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception

• MPEP 2106.05(f) discusses adding

the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer

• MPEP 2106.05(g) discusses

adding insignificant extra-solution activity to the judicial exception

• MPEP 2106.05(h) discusses

generally linking the use of the judicial exception to a particular technological environment or field

• f use

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Claims Held Eligible in Step 2B

(Excerpt from February 2018 Quick Reference Sheet)

Step 2B: Conclusions

• If the claim as a whole recites additional elements that amount to

significantly more than the judicial exception, it qualifies as eligible subject matter.

• If the claim as a whole does not recite additional elements that

amount to significantly more than the judicial exception, the claim is not eligible. Examiners are to reject the claim under 35 U.S.C. 101

• In either case, examiners should continue to examine under other

statutory provisions: 35 U.S.C. 101 (utility, inventorship and double patenting), 102, 103, 112.

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Questions?