Posted Wednesday, March 25, 2015 by Jim Ruttler
The USPTO released additional examples to aid in determining whether a claim is directed to an unpatentable abstract idea. There is no change to the analysis framework, but the examples provided shed more light on what types of inventions remain protectable under the patent laws. The examples of unpatentable abstract ideas include claims directed toward collecting and combining data, automating the game of bingo, providing a guaranty, and using advertising as a form of currency. It is clear from these examples that subject matter directed towards business type activities is going to receive heightened scrutiny by the Patent Office and the courts. On the other hand, the guidance provided a number of examples of patent eligible subject matter. These include claims directed toward isolating and removing malicious code from electronic messages, generating composite web pages, digital image processing resulting in a computer using less memory and faster computation time, and a GPS system that improves sensitivity of a receiver in weak signal environments. While some of the examples of patent eligible subject matter seem like they aren’t too different from some of the examples of ineligible subject matter, it appears that the distinction is really whether the claims involve a business practice. More details of the claim language and accompanying analysis can be found here:
Posted Monday, March 16, 2015 by Daniel Mills
When most people think of Intellectual Property they think of Patents, Trademarks, and Copyright. While each of these elements of protection for IP have their place and merits, I want to provide an overview of the other element of IP – Trade Secrets and offer a few best practices about how to protect them.
First, Trade Secrets protection is a matter of state laws. The Uniform Trade Secrets Act that has been adopted by 47 states, and Washington’s version is found in RCW 19.108. Under the statute, Trade Secrets are defined as information, including a formula, pattern, compilation, program, device, method, technique, or process that: (a) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and (b) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
In simpler terms, there must be information that has value only if kept secret and it must be treated accordingly. The last part of the definition creates a duty in the owner of the trade secret to take reasonable means to protect it. Once a trade secret is disclosed, reverse engineered, or becomes part of public domain it ceases to be a trade secret, so it is critical to guard them carefully.
Consider Coca-Cola for example. The formula for Coke is one of the most valuable trade secrets in existence and it has been a secret for over 100 years. While a patents provide robust protection, they have a limited lifespan, while properly protected trade secrets can last indefinitely. In addition, trade secrets can provide protection to things that aren’t patent eligible.
In order to guard trade secrets there are several factors that contribute to successful protection. The first is that it has to be a priority for someone. If you are an inventor just starting out, that person is you. If you have a company with trade secrets, then someone with leadership authority should have trade secret protection as part of their accountabilities. Another factor is that it takes effort to create policies and procedures that will lead to appropriate protection. This is why it has to be a priority to someone, it is not a simple one time thing, but it takes a careful and detailed understanding of what to do and how to do it. Finally, another key factor is discipline to follow the proper procedures, monitor policies, and insist on compliance within your organization.
Below is a list of policies and practices anyone with trade secrets should consider putting into place:
•Clearly identify the most valuable confidential information as trade secrets
•Distribute this information on a “need to know” basis
•Require confidentiality and non-disclosure commitments from employees
•Insist that customers and potential customers execute non-disclosure agreements
•Control employee access to information
•Use “Confidential” designations on all documents relating to trade secrets
•Employ copy protection and embedded codes to trace copies
•Restrict downloading of company information
•Regulate visitor facility and premises access
•Enforce employee compliance with prior confidentiality obligations
Posted Wednesday, January 28, 2015 by Jim Ruttler
The American Invents Act authorized the USPTO to create trials to invalidate patents – yes, the same patents the USPTO issued in the first place. This assault on patent rights has resulted in many patents being invalidated by administrative judges at the Patent Office. MCM was one such company that had its patents invalidated in one such proceeding instituted by HP. In response, MCM decided not only to appeal the decision but boldly request that the Federal Circuit deem the USPTO proceedings to be unconstitutional. The theory is this: patents are property rights and the Supreme Court has held that the question of whether a property right may be revoked lies within the exclusive province of the Courts, not government agencies. It is a pretty good argument and one that, if found convincing, could completely upend the USPTO trial courts.
Posted Sunday, January 25, 2015 by Jim Ruttler
After the Supreme Court decision in Alice, many thought software claims were no longer eligible for patent protection. Indeed, there were a number of trial and appellate decisions following Alice that invalidated software patents. However, there the Federal Circuit has finally provided an example of software claims that are still valid even post Alice. In DDR Holdings, a panel of the Federal Circuit held that claims directed towards managing website traffic by creating an intermediate page between a host and an advertiser site remain patent eligible. The reasoning for this was that the claims were not merely directed toward some old business practice that was implemented on a computer, but rather were directed toward solving a problem that was rooted in computer networks. Thus, the key moving forward (at least for now) is to make sure that your patent claims are directed toward subject matter that is rooted in computers and not merely directed toward software that solves an old business practice. The decision can be found here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1505.Opinion.12-3-2014.1.PDF. The representative claim that was upheld is:
- A system useful in an outsource provider serving web pages offering commercial opportunities,
the system comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality
of visually perceptible elements, which visually perceptible elements correspond to the plurality
of first web pages;
(i) wherein each of the first web pages belongs to one of a plurality of web page owners;
(ii) wherein each of the first web pages displays at least one active link associated with a
commerce object associated with a buying opportunity of a selected one of a plurality of
(iii) wherein the selected merchant, the outsource provider, and the owner of the first
web page displaying the associated link are each third parties with respect to one other;
(b) a computer server at the outsource provider, which computer server is coupled to the computer
store and programmed to:
(i) receive from the web browser of a computer user a signal indicating activation of one of
the links displayed by one of the first web pages;
(ii) automatically identify as the source page the one of the first web pages on which the
link has been activated;
(iii) in response to identification of the source page, automatically retrieve the stored data
corresponding to the source page; and
(iv) using the data retrieved, automatically generate and transmit to the web browser a
second web page that displays: (A) information associated with the commerce object
associated with the link that has been activated, and (B) the plurality of visually perceptible
elements visually corresponding to the source page.
Posted Sunday, January 25, 2015 by Jim Ruttler
The Supreme Court has overruled a previous practice of the Federal Circuit interpreting claim language de novo – or anew – on appeal. If a trial court decided the meaning of a particular claim term, the Federal Circuit would previously create its own meaning of the particular claim term with no deference to the trial court’s interpretation. Obviously, this created a significant amount of uncertainty for litigants because the claim language could be reinterpreted on appeal. The Supreme Court ended this practice this week by requiring that the Federal Circuit defer to the trial court on factual issues involved in claim interpretation. The full decision is: http://www.supremecourt.gov/opinions/14pdf/13-854_o7jp.pdf.