Historically, the law in the America regarding computer implemented inventions, CIIs, has been more flexible than in Europe. Following the infamous Alice decision held in 2014, the USPTO has changed its approach in assessing subject matter eligibility, generating greater uncertainty around the patentability of CIIs.
In brief, the USPTO operates a two-part test. In the first part, the examiner must check whether the claim belongs to an eligible subject matter by verifying that the claim is directed to a process, machine, manufacture, or composition of matter. In the second part, the examiner assesses whether the claim is directed at a judicial exception including a law of nature, a natural phenomenon or an abstract idea. If not, then the claim qualifies directly as eligible subject matter. If the claim is directed at a judicial exception, the second part of the test further questions whether the claim recites an inventive concept or additional elements that amount for significantly more than the judicial exception. If yes, then the claim qualifies as eligible subject matter. There is currently a debate around what constitute an abstract idea, and what constitute significantly more than a judicial exception.
To this day, there is no definition of what constitutes an abstract idea. Concepts found by the courts to be abstract include fundamental economic practice such as contracts and business relations, methods of organizing human activity such as business transactions and social activities, an idea itself for example a scheme that can be performed in the human mind, and mathematical relationships such as algorithms and calculations.
Following the Alice case, a significant number of granted patents relating to CIIs have been challenged and revoked. One noticeable case however, DDR Holdings Vs Hotels.com (2014), has been successfully defended and provides some precious clues for drafting and prosecuting such applications.
In the DDR case, the implicated patent is directed at solving a problem arising when a third-party merchant advertises a product (or a service) through a web page held by a host. When a visitor browsing the host web page clicks on a specific advert he leaves the host’s site to enter the merchant’s website. At this point the visitor may not return to the host webpage. The proposed solution is to generate a composite webpage that merges content associated with the product of the merchant with the “look and feel” of the host website. This approach allows the visitor to purchase products from the third-party merchant without entering that merchant’s website.
In this case, the federal circuit held that “Although the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet …. these claims stand apart because they 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. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”
In the decision it is explained that the pre-internet analogue could be a physical warehouse store that contains a kiosk for selling a third-party partner’s cruise vacation packages. In this example, “once a customer enters a physical warehouse store, that customer may encounter a kiosk selling third-party cruise vacation packages. There is, however, no possibility that by walking up to this kiosk, the customer will be suddenly and completely transported outside the warehouse store and relocated to a separate physical venue associated with the third-party”. In this case it was highlighted that the claims specify how interactions with the Internet are manipulated to yield a result that “overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.”
These conclusions held in the DDR case have been reiterated in a set of examples issued by the USPTO in July 2015 and directed at helping examiners and patent practitioners in interpreting the abstract idea principle. One of those example concerned a system for generating GUIs. The system solves the problem of textual information obscured by overlapping windows. In this example, the system is used to relocate an obscured text of an underlying window so that the text becomes viewable to the user. In order to relocate the text, the system modifies the vertical and horizontal margins of the underlying window; uses a word-wrap function to wrap the text around the obscured area based upon the new margins; and reduces, as necessary, the text size to permit all textual information to be viewable in the unobscured portion.
Claim 1 recites:
A computer‐implemented method for dynamically relocating textual information within an underlying window displayed in a graphical user interface, the method comprising:
displaying a first window containing textual information in a first format within a graphical user interface on a computer screen;
displaying a second window within the graphical user interface;
constantly monitoring the boundaries of the first window and the second window to detect an overlap condition where the second window overlaps the first window such that the textual information in the first window is obscured from a user’s view;
automatically relocating the textual information, by a processor, to an unobscured portion of the first window in a second format during an overlap condition so that the textual information is viewable on the computer screen by the user; and
automatically returning the relocated textual information, by the processor, to the first format within the first window when the overlap condition no longer exists.
This claim is regarded as eligible by the USPTO because the claim is “necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces.”
The guidance note also discusses another claim, claim 4 which recites as follows.
A computer‐implemented method for dynamically relocating textual information within an underlying window displayed in a graphical user interface, the method comprising:
displaying a first window containing textual information in a first format within a graphical user interface on a computer screen;
displaying a second window within the graphical user interface;
constantly monitoring the boundaries of the first window and the second window to detect an overlap condition where the second window overlaps the first window such that the textual information in the first window is obscured from a user’s view;
determining the textual information would not be completely viewable if relocated to an unobstructed portion of the first window;
calculating a first measure of the area of the first window and a second measure of the area of the unobstructed portion of the first window;
calculating a scaling factor which is proportional to the difference between the first measure and the second measure;
scaling the textual information based upon the scaling factor;
automatically relocating the scaled textual information, by a processor, to the unobscured portion of the first window in a second format during an overlap condition so that the entire scaled textual information is viewable on the computer screen by the user; and
automatically returning the relocated scaled textual information, by the processor, to the first format within the first window when the overlap condition no longer exists.
In this case, the claim recites the steps of calculating a first area and a second area and using the areas to calculate a scaling factor. The guidance notes indicate that the entire claim is “directed” at a mathematical algorithm and that the use of generic limitations like “computer screen” and “processor” is not in itself enough to add significantly more. However, it is further mentioned that “when viewing these computer limitations as an ordered combination with the remaining limitations (displaying a first and second window, detecting an overlap condition, determining text is too large, scaling the textual information and automatically relocating the scaled information), the claim amounts to significantly more than the abstract idea” because it improves the ability of the computer to display information.
In a recent seminar organised by the EPI, a number of good practice points in drafting patent applications directed at CIIs, have been suggested.
First, it was observed that a likelihood of receiving a rejection by the USPTO increased significantly when the application was dealt with under a business-method art unit of the USPTO, in particular the e-commerce art unit. A sensible approach would be to draft the specification with the intention of avoiding prosecution under the e-commerce art unit. This may be achieved by restricting the use of business‑like language in the specification and by highlighting and claiming technological aspects of the claims, for example by integrating unusual hardware into the claims and the specification.
Second, it was suggested that the specification should identify a technical problem to be solved and to include a technical solution to the problem in the claims. The problem should not be one that could be solved merely with conventional computer implementation. Instead the solution should be specific and lead to improvements in the way the computer is functioning. Incidentally, this approach is at the heart of patent drafting in Europe. As such, European patent attorneys should be more than ever well positioned to draft applications relating to CIIs in the US.
Although it is clear that drafting and prosecuting applications for CIIs has become a much more difficult exercise than in the past, the US still allows for more software or business method type inventions to be patented as compared with the practice in Europe.
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