GoToWebinar Attendee Interface
1. Viewer Window
2. Control Panel
U.S. Patents: Inventorship
Gary J. Speier
+001-612-359-3261
gspeier@SLWip.com
Significance of Inventorship Determination:
Why be concerned with Inventorship?
• Absent an obligation to assign an invention, title to a U.S. patent
resides separately with each joint inventor
• Inventorship dispute is a thinly veiled attempt to obtain or void
patent title
• Incorrect named inventors (misjoinder or nonjoinder) with
deceptive intent --> inequitable conduct, patent invalidity and
unenforceable
• Stakes are enormous
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
The Inventorship Inquiry
• Patent statute requires that a patent application be filed in the
name of the inventor or inventors (35 U.S.C. §§ 111, 115, and 116)
• Policy underlying inventorship is based on the Constitutional
recognition of patents as an intellectual property right -- the
Constitutional recognition of patents has been limited to allow
only the first to invent to receive a patent from the United States
• Ensures that the inventor is being rewarded with a patent from
the public who is benefiting from the inventor's early disclosure of
an invention in a patent
• Inventorship (U.S. Patent) ≠ Authorship (scientific journal)
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
The Inventorship Inquiry (cont.)
• Test for inventorship is always the same whether the test is being
applied prior to the filing of a patent application or in order to
resolve an inventorship dispute
• The inventorship test applies equally to sole inventorship and joint
inventorship situations.
• Inventorship cannot be determined, however, without evidence:
evidence of conception of the invention, and evidence of the
invention
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Conception is the Touchstone of an Inventorship Inquiry
• Conception is the touchstone of inventorship, the completion of
the mental part of invention (Burroughs Wellcome Co. v. Barr
Laboratories, Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994); Trovan, Ltd.
v. Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002))
• Conception is a two-step procedure
• First, conception must “exist” and then conception must be
“complete”
• The person(s) involved in both steps are inventors
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Conception (cont.)
• Conception exists when a “definite and permanent idea of an operative
invention including every feature of the subject matter sought to be
patented is known” (Coleman v. Dines, 754 F.2d 353, 359 (Fed.Cir. 1985);
Trovan, 299 F.3d at 1302)
• Conception is complete when one of ordinary skill in the art could
construct the apparatus, perform the process, or make the composition
without unduly extensive research or experimentation. Trovan, 299 F.3d
at 1302 (citing Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994))
• Invention conception may be complete even though experimentation
continues (Bac v. Loomis, 252 F.2d 571, 577 (CCPA 1958))
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
The concept contributed must be patentable
• The conception of an invention -- as a whole -- may consist of the
conception of many elements of the overall invention by one or more
people
• Inventor conception determination, therefore, requires determining
what is inventive
• The contribution of only obvious elements or improvements to a
claimed invention adds nothing to the invention and, one who
contributes only obvious elements is not an inventor (Sewall, 21 F.3d at
415-16; Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460
(Fed. Cir. 1998); Eli Lilly v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir.
2004))
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Conception occurs before reduction to practice
• Invention reduction to practice occurs in one of two ways:
(1) Constructive Reduction To Practice -- filing a patent application
describing and claiming the invention sufficiently to teach one of skill in
the art how to practice the invention; or
(2) Actual Reduction To Practice -- Sufficiently developing and testing the
invention to show that it will work for its intended purpose
Newkirk v. Lulejian, 825 F.2d 1581, 1582 (Fed. Cir. 1987); Mycogen Plant
Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001)
• One who aids only in reducing a conceived invention to practice can
never be an inventor
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Simultaneous Conception And Reduction To Practice
• Extremely rare
• Happens when a shotgun approach is used to solve a problem:
If one randomly chooses 1000 compounds and tests them as insecticides
against different insects in different amounts and discovers that a specific dose
of one compound works against a specific insect, then both conception and
reduction to practice occur upon identifying the one compound which worked
as an insecticide. See, e.g., Alpert v. Slatin, 305 F.2d 891 (CCPA 1962)
If the same 1000 compounds were evaluated by a person who then selected 40
as insecticide candidates against a certain insect for a reason understood by the
inventor, and which could be explained to one of skill in the art, then the
selection of the 40 promising compounds would be the invention conception.
See, e.g., Burroughs Wellcome, 40 F.3d at 1228
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Conception does not exist where viability of the concept is
uncertain
• Conception is not complete if a subsequent course of experimentation,
especially experimental failures, reveals uncertainty that so undermines the
specificity of the inventor’s idea, that it is not yet a definite and permanent
reflection of the complete invention as it will be used in practice. Amgen, Inc. v.
Chugai Pharmaceutical Co., 927 F.2d 1200, 1207 (Fed. Cir, 1991)
• If the inventor's conception is faulty, there can be no invention because
conception cannot be certain
• Lack of problems with (or difficulties with) subsequent research is evidence of
conception (or lack thereof). Burroughs Wellcome, 40 F.3d at 1229
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Conception may be Joint
• Joint invention is the product of a collaboration between two or more persons
working together to solve the problem addressed. 35 U.S.C. § 116
• About 80% of all U.S. Utility Patents are issued to joint inventors
• Most inventorship questions arise in the context of joint inventorship disputes
(where a person has allegedly been nonjoined or misjoined as a patent
inventor)
• Joint invention requires that each inventor individually or together conceive the
invention of at least one claim of a patent or patent application
• Ultimately, the question of joint inventorship focuses on what invention was
conceived by whom and when
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Joint Conception May Exist Where:
• There were joint labors (Monsanto, 269 F Supp. at 824; see also Eli Lilly and Co.
v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004))
• Small contributions are made by one inventor, and large contributions by the
other (Shields v. Halliburton Co., 493 F. Supp. 1376, 1385 (W.D. La. 1980); 35
U.S.C. § 116 (2005))
• The inventors make independent contributions to the conception
• Individual claims may be invented by different persons (Amp, Inc. v. Fujitsu
Microelectronics, Inc., 853 F. Supp. 808, 819 (M.D. Pa 1994); 35 U.S.C. § 116
(2005))
• Invention conceived in stages via organized R & D efforts (General Motors Corp.
v. Toyota Motors Co., 667 F.2d 504, 506 (5th Cir. 1981))
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Joint Conception Will Not Exist Where:
• One contributes an obvious element to the invention (Erie Technological Prods,
v. Die Craft Metal Prods, 461 F.2d 5, 6-7 (7th Cir. 1972))
• One merely suggests an idea (Hess v. Advanced Cardiovascular Sys., Inc., 106
F.3d 976, 980-81 (Fed. Cir. 1997); Garrett Corp. v. United States, 422 F.2d 874,
880-81 (Ct. Cl. 1970), cert. denied, 400 U.S. 951 (1970)
• One only follows instructions (Mineral Separation, Ltd. v. Hyde, 242 U.S. 261,
270 (1916); Engelhardt Minerals and Chemicals Corp. v. Anglo American Claus
Corp., 586 F.Supp. 435, 445 (M.D. Ga. 1984))
• One explains how or why the invention works (GAF Corp. v. AMCHEM Prods.,
514 F. Supp. 943, 972 (E.D. Pa. 1981))
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Joint Conception Will Not Exist Where:
• One participates in consultations prior to or after conception (O'Reilly v. Morse,
56 U.S. 15(How) 62 (1853); Ethicon, 135 F.3d at 1460)
• One adopted derived information
• One only acts as a salesman, showing an available product and explaining how
it could and might be used (Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d
at 981)
• Where conception is nonconjunctive -- where conception occurs before
another became involved with the invention (Credle v. Bond, 25 F.3d 1566, 1574
(Fed. Cir. 1994) (there can be no joint invention where dates of conception and
reduction to practice of each inventors contribution do not overlap))
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
The Inventorship Determination
• Identifying inventorship in a patent application is typically a
routine ministerial task left to one of the “identifiable” inventors
or to a patent liaison person
• The patent attorney usually accepts the inventorship
determination without question or verifies inventor status via a
cursory leading-examination of a primary inventor
• Inventorship never becomes an issue with the vast majority of
patents and patent applications
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Inventorship Correction
• Non-fraudulent correction of inventorship is allowed during the
pendency of a patent application, and after a patent has issued
• The patent applicant must prove:
(1) The omitted person was a true joint inventor;
(2) the joint inventor was omitted by error; and
(3) the omission was without deceptive intent
• The proof is the same for removing a misjoined inventor, in which
case, proof that the added person was not a true joint inventor,
and that the misnamed inventor was named by error without
deceptive intent would be necessary
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Inventorship Correction (cont.)
• During the pendency of a patent application (controlled by 35
U.S.C. §116, ¶ 3) no longer required diligence
• After patent issues (controlled by 37 C.F.R. § 1.324)
• Once a patent issues, the patent inventorship can be corrected by
the patentee by petition to the U.S. Patent Office (35 U.S.C. § 256)
• Alternatively, a Federal District Court (35 U.S.C. § 256) can be
asked to add a nonjoined inventor to a patent, or to remove a
misjoined inventor from a patent
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Correcting Patent Application Inventorship
The amendment of inventorship is accomplished by:
(i) filing a request to correct the inventorship that sets forth the
desired inventorship change;
(ii) include a statement from each person being added as an
inventor and from each person being deleted as an inventor that
the error in inventorship occurred without deceptive intention on
his or her part;
(iii) include an new oath or declaration signed be each of the
actual inventors;
(iv) pay the fee required by 37 C.F.R §1.17(h); and
(v) obtain the written consent of any assignee.
37 C.F.R § 1.48(a)
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Practice Tips
• Identifying the “invention” must precede identifying inventors.
Thus, the first task in any inventorship investigation is to identify
the “invention.”
• Although diligence is not required for questions of inventorship of
patents or patent applications that are not involved in an
interference proceeding, to be prudent and avoid the appearance
of impropriety, all inventorship claims should be investigated with
diligence
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Practice Tips (cont.)
• While drafting a patent application, the patent practitioner should
investigate claim inventorship. The following questions should
provoke answers that will aid the patent practitioner in identifying
the application inventors.
1. What problem is solved by the invention?
2. When did you know that you had solved the problem?
3. Who helped solve the problem?
4. How did each person help solve the problem?
5. Did all persons equally help solve the problem?
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Practice Tips (cont.)
•
Proof of error without deceptive intent is accomplished with affidavits and documents
establishing as many of the following facts as possible:
(1) The circumstances surrounding the initial determination of inventorship, including
the date or dates when inventorship was discussed and the factors considered in the
original determination of inventorship;
(2) establishing how the error in inventorship was discovered including explaining who
first discovered the misjoinder or non joinder error, when the error was discovered, and
details of any investigations to establish whether an inventorship error had occurred
including when the investigation took place and who was consulted; and
(3) identifying the proper application inventors including identifying the contribution
made by the non joined inventor or misconception about the contribution made by the
misjoined inventor and including any laboratory data, drawings, reports, or other
information which support the joinder or deletion of inventors from the patent or
patent application.
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Practice Tips (cont.)
• Employers should file patent assignment with USPTO at earliest
opportunity (avoid reliance upon deceased/uncooperative
inventor)
• “An ounce of prevention is worth a pound of cure”
-- Benjamin Franklin
Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.
Thank you for your participation.
Gary J. Speier
+001-612-359-3261
gspeier@SLWip.com
For more information please visit :
www.SLWip.com
Patent Subject Matter Eligibility
James D. Hallenbeck
+001 612 373 6938
jhallenbeck@slwip.com
Bilski v. Kappos
• You have likely already received many communications regarding
the decision in Bilski v. Kappos. My goal here is not to review the
specific holding in Bilski, but to give you a practical discussion for
determining patent subject matter eligibility.
• I will review the steps Examiners have been instructed to utilize in
making patent subject matter eligibility determinations with
practice tips mixed therein.
• I will conclude with a few observations and few warnings.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Patent Subject Matter Eligibility
• The question of what is patentable begins with a query rooted in
35 U.S.C. § 101.
• 35 U.S.C. § 101
– 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....
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Threshold Query
• The query requires that each claim be considered as a whole,
rather than dissecting the claim into old and new elements and
then ignoring the presence of olds elements in the analysis. Bilski
v. Kappos, 561 U.S. ____ (2010), slip opinion at 14-15 (citing
Diamond v. Diehr, 450 U.S. 175, 188).
• Thus, the question of subject matter eligibility is a threshold test
and, unlike Europe and some other jurisdictions, does not involve
any consideration of novelty, obviousness, or inventive step.
• Once subject matter eligibility is determined, the other statutory
sections for novelty and obviousness will be considered.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
USPTO Guidance Post-Bilski
• The USPTO provided guidance to examiners, and therefore also to
applicants, in August 2009 and again in July 2010, for performing
subject matter eligibility determinations.
• 2 Step Process
– 1.
Is the claim directed to one of the four patent-eligible
subject matter categories?
– 2.
Does the claim wholly embrace a judicially recognized
exception, which includes abstract ideas, mental processes,
substantially all practical uses (pre-emption) of a law of nature,
natural phenomenon, or abstract idea, or is it a particular
practical application of a judicial exception?
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 1
• Is the claim directed to one of the four patent-eligible subject
matter categories: process, machine, manufacture, or composition
of matter?
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 1: Statutory Categories
• From 35 U.S.C. § 101
– any… process, machine, manufacture, or composition of
matter….
• These categories are to be given broad scope. Bilski v. Kappos,
561 U.S. ___, slip opinion at 4 (citing Diamond v. Chakrabarty, 447
U.S. 303, 308 (1980) (“In choosing such expansive terms …
modified by the comprehensive ‘any,’ Congress plainly
contemplated that the patent laws should be give broad scope.”).
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 1: Machines, Manufactures, and Compositions of Matter
– Machine
• a concrete thing, consisting of parts, or certain devices and combination
of devices. This includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce
a certain effect or result.
– Manufacture
• an article produced from raw or prepared materials by giving to these
materials new forms, qualities, properties, or combinations, whether by
hand or by machinery.
– Composition of Matter
• all compositions of two or more substances and all composite articles,
whether they be the results of chemical union, or of mechanical
mixture, or whether they be gases, fluids, powders, or solids, for
example.
August 2009 Interim Patent Subject Matter Eligibility Examination Instructions,
pages 1-2.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 1: Processes
• The definition of a patent eligible process is where Bilski was
decided.
• Bilski had a few main holdings
– Abstract ideas are not patent eligible;
– The Machine-or-Transformation test is not the sole test for patent eligibility
for process/method claims and the Federal Circuit is invited to develop
other tests consistent with Supreme Court precedent and § 101;
– “Section 101 … precludes the broad contention that the term ‘process’
categorically excludes business methods.”
– Patent eligible processes are determined according the definition provided
in 35 U.S.C. § 100(b):
• The term ‘process’ means process, art, or method and includes a new
use of a known process, machine, manufacture, composition of matter,
or material.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 1 Exclusions
• Examples of claims not directed to one of the statutory categories
(process, machine, manufacture, or composition of matter)
– Signals and carrier waves (e.g., computer readable medium
defined to include transmitted signals);
– Naturally occurring organisms;
– Humans per se;
– Contracts between parties;
– A game defined by a set of rules;
– A computer program per se;
– A company.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 1: Both Statutory and Non-Statutory
• Broadest reasonable interpretation of the claim
– When a claim, read in light of what the specification would
teach to one of average skill upon reading it, supports a
reading that encompasses both statutory and non-statutory
embodiments, the claim is not patent-eligible.
– For example:
• A claim is directed to a computer readable medium with instructions
encoded thereon….
• The specification defines computer readable medium to include both
storage mediums and transitory mediums, such as transmitted signals
– Not eligible
• Solution
– Amend the claim to be limited to the “non-transitory” mediums
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2
• Does the claim wholly embrace a judicially recognized exception,
which includes abstract ideas, mental processes, or substantially
all practical uses (pre-emption) of a law of nature, mathematical
formula, or a natural phenomenon, or is it a particular practical
application of a judicial exception?
– Product claims (machines, manufactures, compositions of
matter) patent-eligible unless they recite a judicial exception.
• If a judicial exception is recited, the claim is patent-eligible if it recites a
practical application.
– For example a product claim to magnetism is not patent-eligible, but a
product claim that covers magnetism only with regard to door latches is
patent-eligible
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Apparatus & System
• A common issue today is with regard to system claims
– If a claim recites a system, but fails to include tangible
limitations, the claim is not limited to a practical application.
– For example, A system comprising a payment module and an
accounting module.
• Solution
– Add tangible limitations to the claim such as at least one processor, a
memory device, a data storage device, a network interface device, etc.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Processes
• Does the claim wholly embrace a judicially recognized exception,
which includes abstract ideas, mental processes or substantially all
practical uses (pre-emption) of a law of nature or a natural
phenomenon, or is it a particular practical application of a judicial
exception?
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Processes
• Post-Bilski, we are unsure of what the full breadth of the available
tests or factors are for patent eligibility.
• We do know that the “Machine-or-Transformation” is one factor
to consider, but it is not dispositive nor exclusive.
• Thus, the Interim Guidelines for Determining Subject Matter
Eligibility for Process Claims of July 27, 2010 were provided by the
USPTO to these ends and provide examples of factors to be
weighed in determining patent subject matter eligibility.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Processes - Guidelines for Determining Subject Matter Eligibility
• Evaluate the claim as a whole and weigh the relevant factors to
determine:
– if the claim is eligible;
– if the claim is directed to an ineligible abstract idea, law of
nature, or natural phenomenon or preempts all use thereof; or
– if the claim is otherwise ineligible.
• When weighing the factors and a determination of patent
eligibility is made, the remaining factors need not be considered.
At this point, the remaining statutory provisions for patentability
are considered (i.e., §§ 102 novelty, 103 obviousness).
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Process Claims Factors Weighing Toward Eligibility
• Recitation of a machine or transformation (either express or
inherent).
–
–
–
–
–
Machine or transformation is particular.
Machine or transformation meaningfully limits the execution of the steps.
Machine implements the claimed steps.
The article being transformed is particular.
The article undergoes a change in state or thing (e.g., objectively different
function or use).
– The article being transformed is an object or substance.
– Data being transformed is representative of a physical object or substance.
• Although compliance with the Machine-or-Transformation test is
not required, the test is a “useful and important clue” and
“investigative tool” for determining patent eligibility of process
claims.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Factors Weighing Toward Eligibility
• The claim is directed toward applying a law of nature.
– Law of nature is practically applied.
– The application of the law of nature meaningfully limits the execution of
the steps.
• What this is really getting at is that your claim may include a law of
nature, but it should be included in an element of the process
working toward the purpose of the claim and not itself be the
purpose of the claim.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Factors Weighing Toward Eligibility
• The claim is more than a mere statement of a concept.
– The claim describes a particular solution to a problem to be solved.
– The claim implements a concept in some tangible way.
– The performance of the steps is observable and verifiable.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Processes Factors Weighing Against Patent Eligibility
• No recitation of a machine or transformation (either express or
inherent).
• Insufficient recitation of a machine or transformation.
– Involvement of machine, or transformation, with the steps is
merely nominally, insignificantly, or tangentially related to the
performance of the steps, e.g., data gathering, or merely
recites a field in which the method is intended to be applied.
– Machine is generically recited such that it covers any machine
capable of performing the claimed step(s).
– Machine is merely an object on which the method operates.
– Transformation involves only a change in position or location of
article.
– “Article” is merely a general concept (i.e., a contract).
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Processes Factors Weighing Against Patent Eligibility
• The claim is not directed to an application of a law of nature.
– The claim would monopolize a natural force or patent a scientific fact; e.g.,
by claiming every mode of producing an effect of that law of nature.
– Law of nature is applied in a merely subjective determination (e.g., ways to
think about or react to a law of nature).
– Law of nature is merely nominally, insignificantly, or tangentially related to
the performance of the steps.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Processes Factors Weighing Against Patent Eligibility
• The claim is a mere statement of a general concept.
– Use of the concept, as expressed in the method, would effectively grant a
monopoly over the concept.
– Both known and unknown uses of the concept are covered, and can be
performed through any existing or future-devised machinery, or even
without any apparatus.
– The claim only states a problem to be solved.
– The general concept is disembodied.
– The mechanism(s) by which the steps are implemented is subjective or
imperceptible.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Step 2: Processes Factors Weighing Against Patent Eligibility
• Examples of general concepts include, but are not
limited, to:
• Basic economic practices or theories (e.g., hedging, insurance,
financial transactions, marketing);
• Basic legal theories (e.g., contracts, dispute resolution, rules of law);
• Mathematical concepts (e.g., algorithms, spatial relationships,
geometry);
• Mental activity (e.g., forming a judgment, observation, evaluation, or
opinion);
• Interpersonal interactions or relationships (e.g., conversing, dating);
• Teaching concepts (e.g., memorization, repetition);
• Human behavior (e.g., exercising, wearing clothing, following rules or
instructions);
• Instructing “how business should be conducted.”
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Post-Bilski
• Patent subject eligibility determinations post-Bilski for machines,
articles of manufacture, and compositions of matter are
essentially the same.
• With regard to processes, multi-factor considerations are
necessary. However, compliance with the Machine-orTransformation is almost certainly likely to result in a claim being
eligible.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Machine-or-Transformation Test
A claimed process complies with the Machine-orTransformation test when:
(1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing.
But the machine or transformation must:
• “impose meaningful limits on the claim’s scope”
– More than plugging in the machine to an electrical outlet;
• “not merely be insignificant extra-solution activity”
– i.e., the machine or transformation must be central to the
purpose of the claim.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Recommendations – other than Processes
• If you are claiming machines, articles of manufacture, or
compositions of matter, continue drafting claims as you did
before.
– However, be specific in your specification while describing
various embodiments as to what the elements are, how they
interrelate, and how they work together.
– Utilize dependent claims to introduce these specific elements
into the claims.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Recommendations – Processes
• Don’t rely on only process claims if your processes are
questionably eligible. Draft claims in many different statutory
classes.
• Add system elements to the claims where possible and not overly
limiting (e.g., processor, memory, spectrophotometer, a particular
measurement-type that inherently requires a certain class of
devices/machines).
• Add dependent claims reciting specific devices.
• Clearly set forth in the claim that data being manipulated,
considered, or transformed represents an actual physical object or
substance (i.e., a blood sample).
• When drafting applications, describe very specific embodiments in
connection with specific devices.
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
§ 101 Inherency – Be careful!
• While it is possible to rely on inherent claim elements to support
subject matter eligibility, be careful!
– Ensure the inherent claim element(s) are utilized or performed
under the control or direction of a single entity. Otherwise
there is a risk the claim, although valid, may not be enforceable
when asserted.
– Divided/Joint infringement requires a showing that a single
party performs or causes to be performed each and every
element of the claim. BMC v. Paymentech, 498 F.3d 1373 (Fed.
Cir. 2007); Muniauction, Inc. v. Thomson Corp. et al., 532 F.3d
1318 (Fed. Cir. 2008).
Copyright © 2009 Schwegman Lundberg & Woessner, P.A.
Thank you for your participation.
James D. Hallenbeck
+001 612 373 6938
jhallenbeck@slwip.com
For more information please visit:
www.SLWip.com