美国软件专利，又见曙光？ | 每日IP英文015

每日IP英文的第15天：在2014年Alice v. CLS Bank案之后，大部分美国软件专利都被认为不属于可以授权的客体，极大的打击了美国的专利创新活动。今天的文章介绍了USPTO软件专利审查的最新进展。

Alice v. CLS Bank案要求USPTO和法院采用两个步骤来确定专利是否符合客体的要求。

第一步，要求所请求保护的发明是“法定主题” - 方法，机器，制造品或物质的成分。

第二步，如果不符合上述要求，而请求保护的主题是一些例外的主题，如自然规律，自然现象或抽象概念等，则所请求保护的主题必须记载了“远不止于(significantly more)”上述例外的主题的特征，才属于专利客体。

而所谓“远不止于(significantly more)”的特征是指不是“本领域以前熟知的、例行的和常规的活动(well-understood, routine, conventional activities previously known to the industry)”。

此前，USPTO的专利审查员只是用说理的方式，认定很多软件专利申请的特征只是一些“本领域以前熟知的、例行的和常规的活动”，但是却没有具体解释的理由或证据。这让很多专利申请人和代理人非常郁闷和恼火。

不过，USPTO的新局长上任之后，试图改变这种局面。

2018年4月，USPTO出台了新规，规定如果要认定某些特征是“本领域以前熟知的、例行的和常规的活动”，必须给出客观事实的证据，例如申请人的自认、法院判决或者出版物。

这无疑是广受专利申请人好评的，也许可以不恰当的类别一下，如果规定中国的专利审查员在认定某个技术特征为“公知常识”的时候，不仅需要说理，还必须给出客观的证据，你会觉得怎么样？

了解更多关于美国专利客体的规定，可以参照大岭先生以下文章：

原文如下：

Patent Office Improves Examination of Software Patent Applications

By Lawrence E. Ashery | 五月 22, 2018 at 01:37 下午

Explanation. When the U.S. government denies us legal protection, we want to know why. Accompanying an adverse decision in the legal world, we want an explanation to support the adverse decision so we can understand how the decision was made.

The process of obtaining certain types of software patents from the U.S. Patent and Trademark Office (PTO) has been very frustrating over the past few years, with many applicants expending tremendous resources, walking away empty handed and not having a clear explanation of why the PTO rejected their applications. Prior to 2014, it was possible to obtain a so-called “business method patent” (a patent on a method of doing business). Then, the business method world imploded when the U.S. Supreme Court decided Alice v. CLS Bank (134 S. Ct. 2347 (2014)) and held that methods of doing business were not patent eligible. In the aftermath, many technology companies that had invested significant dollars to create computer technology found themselves caught in the Alice crosshairs, and their ability to protect their innovations disappeared as quickly as the rabbit in the storybook Alice (in Wonderland) popped down the rabbit hole.

Alice requires that the PTO and the courts conduct a two-step process to determine if patent claims meet patent subject matter eligibility requirements. The first step requires that the claimed invention be “statutory subject matter”—a process, machine, manufacture or composition of matter. Step two requires that, if the claimed subject matter is a law of nature, a natural phenomenon, or an abstract idea, then the claimed subject matter must recite “significantly more” to be patent eligible.

One of the more frustrating aspects of the Alice aftermath has been how the PTO has refused to grant patent protection for software inventions. Attorneys and the PTO often get locked into heated arguments over whether a particular invention includes a “significantly more” feature. Whether a feature of an invention is “significantly more” under Alice is determined based on whether it includes “well-understood, routine, conventional activities previously known to the industry.” If the feature is more than “well understood, routine, conventional,” then the requirements for patent subject matter eligibility are met. Unfortunately, the PTO has often addressed this issue with conclusory statements and no explanation. PTO examiners have argued that features were routine based on their own personal opinions, and with no evidence to back up their positions. As a result, patent applications were rejected as being directed to patent-ineligible subject matter, and without sufficient evidence to support that position.

Then, an interesting court opinion was published in February (Berkheimer v. HP, 17-1437 (Fed. Cir. 2018)). Steven Berkheimer had sued Hewlett-Packard (HP) for infringing his patent for digitally processing and archiving files. The district court ruled that Berkheimer’s patent was invalid, because it was directed to patent-ineligible subject matter. Specifically, the court stated that Berkheimer’s inventive concept failed the second step of the Alice test because his invention related to “steps that employ only well understood, routine, and conventional computer functions.” On appeal, Berkheimer argued that whether an invention is “well understood, routine and conventional is an underlying fact question for which HP offered no evidence.” The U.S. Court of Appeals for the Federal Circuit agreed with Berkheimer, and remanded the case to the district court so that the necessary factual determination could be made.

In a speech delivered to the U.S. Chamber of Commerce on April 11, 2018, PTO Director Andrei Iancu remarked that “current law surrounding patentable subject matter has created a more unpredictable patent landscape that is hurting innovation and consequently, investment and job creation.” He noted that Alice has “inserted standards into our interpretation of the statute that are difficult to follow,” and the PTO is “actively looking for ways to simplify the eligibility determination for our examiners through forward-looking guidance.”

Director Iancu’s goal to improve the patent examination process came to fruition when, on April 19, the PTO released a memo titled: “Changes in Examination Procedure Pertaining to Subject Matter Eligibility.” It appears that Iancu has followed through with his intentions. The memo (hereafter, the Berkheimer memo) follows up on the Berkheimer appeal and requires examiners to provide more support for their patent-eligibility rejections than they have done in the past.

The Berkheimer memo makes clear that PTO examiners need to provide more than just their opinions when they assert that a claimed invention is directed to unpatentable subject matter.  Rather, to take such a position, a PTO examiner must do one of the following:

• Cite an express a statement made by the patent applicant (in the official file during the course of trying to procure the patent) that an inventive feature is “well understood, routine, and of conventional nature.”

• Cite a court decision that notes the “well understood, routine, and conventional nature” of the inventive feature.

• Cite a publication that demonstrates the “well understood, routine, and conventional nature” of the inventive feature.

• Provide a statement that an examiner is taking “official notice’ of the “well understood, routine, and convention nature” of the inventive feature.

Option three is important to understand in that it is not enough for the PTO to simply show that a feature is disclosed in a prior publication. As explained in the Berkheimer memo, “merely finding the additional element in a single patent or published application would not be sufficient to demonstrate that the additional element is well understood, routine and conventional, unless the patent or published application demonstrates that the additional element is widely prevalent or in common use in the relevant field.”

Option four is important to understand, because, once an examiner uses the phrase “official notice,” the examiner can be challenged. The examiner would then need to provide evidence using options one, two or three, or he can provide an affidavit setting forth factual statements to support his position.

Requiring Patent Office examiners to comply with the above options will significantly help patent applicants to deal with patent subject matter eligibility rejections. Now, examiners will need to support their positions with factual evidence, and not just opinions. With regard to seeking patents with patent eligible subject matter, the Berkheimer memo is definitely a step in the right direction.

Source：https://www.law.com/thelegalintelligencer/2018/05/22/patent-office-improves-examination-of-software-patent-applications/

Each article is copyrighted to their original authors. The news is for informational purposes only and does not provide legal advice.