US Supreme Court Decision on Abstract Idea

The Supreme Court has issued its opinion in Alice v. CLS Bank case.

In the case Alice v. CLS Bank: Alice Corp. owned several patents covering a computer system that helps with closing financial transactions by avoiding settlement risk (the risk that comes with any financial transaction if one party cannot uphold its end of the bargain). CLS Bank claimed the patents were invalid because they were nothing more than an abstract idea, and U.S. patent law has long held that abstract ideas cannot be patented. The district court agreed, finding the invention—which “simply provides the formula, or manner, in which to use an electronic intermediary to exchange obligations as a way to hedge against the risk of loss”—abstract, and therefore unpatentable.

But the U.S. Court of Appeals for the Federal Circuit—the appellate court that has exclusive jurisdiction over patent appeals—reversed that ruling, holding that implementing this invention on a computer system made it somehow nonabstract.

The Supreme Court court stated that if you have an idea so abstract that it cannot be patented, simply tying it to a “generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” It also stated that tying an abstract idea to “purely functional and generic” hardware similarly would not make the idea patentable.

Recent PTAB Decision

Bayramoglu Law Offices has recently successfully appealed a case to Patent Trial and Appeal Board (PTAB). The case application number is 11/963,796. The Appeal number is 2011-008945. The application was rejected by the Examiner. PTAB reversed the Examiner on all grounds therefore allowing the patent grant for the application. Considering the reversal rate of Examiners at PTAB is about 30.1%, this is a great example of how we at Bayramoglu Law Offices are able to use our knowledge and passion to help our clients.

USPTO Extends After Final Consideration Pilot For Patent Applications

The USPTO is extending a popular program that allows patent applicants to submit minor amendments for consideration after final rejection. Launched in May 2013, the USPTO’s After Final Consideration Pilot is designed to reduce patent application pendency and help applicants avoid the time and cost associated with Requests for Continued Examination (RCEs) after final rejection.

To take advantage of the program, applicants must submit a request and certification for consideration in the program, an amendment to at least one claim, and any fees that may be due. The amendment may not broaden the scope of the claims.

The Examiner will review the amendment and decide whether to accept it for additional consideration.  Factors in the Examiner’s decision include whether the Examiner’s review of the amendment will only require a limited amount of additional consideration and search. If the response does not place the application in condition for allowance, the Examiner will schedule an interview with the applicant.

The After Final Consideration Pilot was originally scheduled to end on September 30, 2013. The USPTO’s announcement extends the program to include requests that are filed through December 14, 2013.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Quick Path Information Disclosure Statement (QPIDS)

The Quick Path Information Disclosure Statement (QPIDS) pilot program is part of the USPTO’s on-going efforts towards compact prosecution and pendency reduction.

In particular, the QPIDS pilot program eliminates the requirement for processing of a request for continued examination (RCE) with an information disclosure statement (IDS) filed after payment of the issue fee in order for the IDS to be considered by the examiner.  Where the examiner determines that no item of information in the IDS necessitates reopening prosecution, the USPTO will issue a corrected notice of allowability.

The QPIDS pilot program has been extended to run through December 14, 2013. All compliant requests for consideration of an information disclosure statement under the QPIDS pilot program filed on or before December 14, 2013, will be considered.

USPTO Pilot Programs

USPTO After Final Consideration Pilot 2.0 

Like AFCP, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Under AFCP 2.0, examiners will also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with you, if your response does not place the application in condition for allowance. In this way, you will benefit from the additional search and consideration afforded by the pilot, even when the results do not lead to allowance.

In addition, the procedure for obtaining consideration under AFCP 2.0 has been revised. The revised procedure focuses the pilot on review of proposed claim amendments and allows the USPTO to better evaluate the pilot.

To be eligible for consideration under AFCP 2.0, you must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. Please see the notice published in the Federal Register at 78 Fed. Reg. 29117 for a complete description of how to request consideration under AFCP 2.0. As was the case with the AFCP, examiners will continue to use their professional judgment to decide whether the response can be fully considered under AFCP 2.0.  This will include determining whether any additional search is required and can be completed within the allotted time, in order to determine whether the application can be allowed.

As always, the option to request an interview with the examiner, consistent with MPEP 713, is available to you irrespective of whether the submission was considered under AFCP 2.0.

If you are considering filing a response to a final rejection under 37 CFR 1.116 that you believe will lead to allowance of your application with only limited further searching and/or consideration by the examiner, you should consider requesting consideration of the response under AFCP 2.0.

Click here for the guidelines related to the consideration of responses under AFCP 2.0.

US Supreme Court Decision on Patenting of Genomic DNA

The US Supreme Court, in a nearly unanimous ruling (Scalia joined the majority for most of the decision), has held that a piece of DNA that occurs naturally is not eligible for patenting. This means that any sequences that are normally present in the human genome—or that of any other organism—cannot be the subject of patent infringement.

You can find the complete article at the following address:

USPTO Practices

  • Do you know that USPTO implemented a new program where an inventor or applicant can qualify for a “micro entity” wherein certain office fees are further reduced?  If you want to know more about it please contact us either at 702-724-2628 or send us an email with your question:
  • Do you know that you can make your application a “priority application” by paying the required fee and submitting a petition wherein if it is granted, USPTO examines and finalizes the examination of your patent application within 12 months from the application date?
  • Do you know that an oath or declaration has to be filed for a national phase application that is filed at the USPTO under 35 U.S.C. Section 371? Do you know that if an oath or declaration is not filed on the day that the application is filed, you will get a missing oath/declaration notification and you can file an oath or declaration within the time given to you in the office notice. You will also have to pay additional office fee based on your entity status.
  • Do you know that under U.S.C. 35 Section 112, a multiple dependent claim cannot depend on another multiple dependent claim?
  • Do you know that as an inventor you have the option to either file patent applications and prosecute patent applications by yourself at the USPTO or you can hire a Patent Agent or a Patent Attorney registered with the USPTO to represent you and help you with patent application prosecution at the USPTO?