Transcript Document

MY IDEA
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WHAT’S THE LAW
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
– 35 USC Section 101
“[E]xception: Laws of nature, natural phenomena, and abstract
ideas are not patentable.”
– Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)
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SCOTUS SAYS “WE MEAN IT THIS TIME”
“We have long held … Laws of nature, natural phenomena, and
abstract ideas are not patentable. … We have interpreted … in
light of this exception for more than 150 years.”
– Formula for computing alarm limits in catalytic conversion process
– Parker v. Flook, 98 S.Ct. 2522 (1978)
– Computer-implemented scheme for buying assets in order to hedge financial risk
– Bilski v. Kappos, 130 S.Ct. 3218 (2010)
– Using a computer to measure blood metabolites in order to calibrate dosage
– Mayo Collaborative Services v. Prometheus, 132 S.Ct. 1289 (2012)
– Computer-implemented scheme of mitigating settlement risk
– Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)
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WHAT ARE UNPATENTABLE ABSTRACT IDEAS?
First, determine whether the claims at issue are directed to patentineligible concepts (laws of nature, natural phenomena, and abstract
ideas)
The “abstract ideas” category includes:
– fundamental economic practices
– methods of organizing human activity
– an idea itself
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WHAT ARE UNPATENTABLE ABSTRACT IDEAS?
Second, search for an inventive concept (an element or
combination of elements that is sufficient to ensure that the
patent in practice amounts to significantly more than a
patent upon the ineligible concept itself)
Note: “[M]ere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patenteligible invention.”
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WHAT IS PATENTABLE POST-ALICE?
Patentable claims do not merely recite the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet.
– Infrastructure
– Implementation
A patentable solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of
computer networks
– Security
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Thank You