The contraction of patent eligible subject matter under 35 U.S.C. 101 that Alice, Mayo, Bilski, and other recent court cases have triggered has placed a cloud of uncertainty over a large number of patents. [1] Fortunately, though, the law provides patent owners with a process for taking remedial steps to address Section 101 risks in their patent portfolios. A viable remedial measure that may help minimize subject matter eligibility attacks is filing a reissue application. This article briefly discusses patent eligibility and how a reissue may be a good way to address the negative impact of these recent cases on issued patents.
Judge Moore’s warning that Alice “is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents…” looks more and more like an accurate assessment of Alice’s impact. [2] Since Alice was decided earlier this summer, the Federal Circuit has affirmed summary judgment of invalidity on patent eligibility grounds in Planet Bingo v. VKGS (Fed. Cir. 2014) available here) and, remarkably (at least to this author) affirmed judgment of invalidity in another case based on the pleadings. See buySAFE v. Google (Fed. Cir. 2014) available here. The USPTO has been at it as well, issuing examination guidelines in light of Alice as we have reported here and here. Alice and its growing progeny have left us with the following test, although vague, for patent eligibility under Section 101: (1) determine whether the patent claim is directed to subject matter in one of the three excluded categories (abstract idea, law of nature, or natural phenomena), and (2) if so, determine whether the additional elements of the claim supply an inventive concept that is significantly more than the ineligible matter itself. Recitation of a general purpose computer, in and of itself, is not normally enough to supply the so-called inventive concept to a claim directed to patent ineligible matter. [1] A reissue application may be an avenue to add the so-called “inventive concept” to a claim with patent eligibility risk under Alice.