2016 May Patent Law Update

By Stephen B. Schott
PRIORITY DATES OF EARLIER APPLICATIONS
Immersion Corp. v. HTC Corp, Civil Action No. 12-259-RGA, (D.Del 2015)
This case is now on appeal to the Federal Circuit and could have wide ramifications. The statute at issue is 35 USC 120.

An application for patent … in an application previously filed in the United States…shall have the same effect… as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application …

The debate between the parties focused on whether a continuation application filed on the issue date of a priority application was filed before the patenting of the priority application. This debate arises out of the USPTO’s interpretation of Section 120, in that the USPTO reads “before” as “not later than.” Judge Andrews found found that such an interpretation contradicts by the ordinary meaning of “before.”
One article states that there are 30,000 priority claims at stake.
ABSTRACT IDEAS IN SOFTWARE AS PATENTABLE
Enfish, LLC v. Microsoft Corp. 2015-1244 (Fed.Cir. 2016)
(This blog covered Enfish in detail here.)
The current Alice two-part test of patentable subject matter: (1) Determine whether the claim is directed to an abstract idea, and (2) If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
From the case: “Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.”
In other words, is the claimed invention something that makes a computer work better?  If yes, not abstract. Or are computers merely being used to do another task?
If you have questions, contact me.
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