Category: News

Randall Erickson was profiled in a September 27, 2012 article titled “Patent Attorney helps budding Chicago area inventors” in the Wheaton Leader, a mysuburbanlife.com publication. The profile was also carried in a number of mysuburbanlife affiliated papers in other Chicago suburbs.

The whole article can be viewed [here], an excerpt from the article follows:

Obtaining a patent can be a long and complicated process, but luckily for hopeful inventors, there are lawyers who specialize in guiding them through that process: patent attorneys.

One of those guides is Randall Erickson, a patent attorney who owns Erickson Law Group PC in Wheaton. His law firm serves clients throughout the Chicago area.

After working as an engineer for the oil company Amoco, Erickson received his law degree from Loyola University in 1989. He decided to go to law school as a career move and wasn’t thinking about patent law at the time. However, once in law school, he learned the field of patent law fits people with his background.

“Patent law is a niche area for people with science or engineering undergraduate degrees and law degrees,” Erickson said. “You can use both your science and law backgrounds.”

Erickson puts his undergraduate and law degrees to work when helping people apply for patents. He said he’s worked on roughly 500 patents, including ones that focused on green topics, such as solar energy and hybrid car technology. . . [Read more here]

Eric Waltmire is a speaker at ISBA’s 2012 Cyberlaw Symposium, which is being held on June 21, 2012 at the ISBA Chicago Regional Office at 20 S. Clark St. The presentation is titled “Wikileaks: Liability for Publication or Hosting Information on the Internet.” Eric’s portion of the presentation will analyze potential liability surrounding Wikileaks’ publication of certain diplomatic cables in light of U.S. Supreme Court First Amendment jurisprudence.

Additional information about the symposium is available at: http://www.isba.org/cle/2012/06/21/cyberlawsymposium

Randall Erickson of the Erickson Law Group will teach a three credit-hour Intellectual Property Law Course at the College of DuPage again in the Fall 2009 term.  The course will provide an  overview of intellectual property law. It introduces students to concepts of ownership of intellectual property and includes coverage of patents, copyrights, trademarks and trade secrets, and how to prepare applications and documents to protect these rights.

Eric Waltmire was quoted in an article titled “The Future Is…Later: A backlog of applications at the U.S. Patent Office has innovation in a stranglehold” [link]  at Entrepreneur.com.  The article described the difficulty some inventors have had resulting from the long delay between the date the application is filed and when the patent office examines the application and ultimately decides whether a patent should issue.

The article notes that currently, on average, it take more than 25 months to get a first office action from the Patent Office on a patent application and 32 months before an application issues into a patent. Moreover the article notes Secretary of Commerce Gary Locke acknowledged that “This [delay] has a direct, negative impact on America’s economic competitiveness–creating uncertainty for entrepreneurs and inventors.” Locke has a goal of reducing the average time period before first office action to 10 months, which is very aggressive.

In the article, Eric explains that companies seeking to leverage intellectual property as a key asset to attract funding are the group that is the most impacted by the backlog. Read the whole article here [link].

On August 12, 2009, Eric Waltmire, patent attorney at the Erickson Law Group, will speak on patents at the Chicago chapter of SCORE’s workshop titled “New Product Development Workshop: How to Launch Your Product.” SCORE is a nonprofit association dedicated to educating entrepreneurs and the formation, growth and success of small business nationwide. The workshop is held at 500W. Madison in Chicago and will cover:

• Legal matters: Find out what legal issues are there: To form a legal entity, apply for a Patent, Trademark, Copyright, and otherwise protect your intellectual property
• Marketing issues: How do you plan to market your new product?
• To produce, outsource or license? The ups and downs of producing the product
• Production: If you decide to produce, what should you do?
• Logistics: How do you make it available to customers?
• Financing: How do you plan to finance your new product introduction?

Find out more here [ link ]. Register for the workshop here [ link ].

On July 28, 2009, Eric Waltmire spoke on Patents at the July Saper Law Seminar. He provided the presentation via teleconference and the presentation covered basic patent law issue as well as issues related to software patents.  You can view the presentation here [link] .

On June 9, 2009, Eric Waltmire, Patent Attorney with the Erickson Law Group, presented a session at the Illinois State Bar Assication’s “Intellectual Property Essentials and IP on the Internet” all day seminar. Eric’s session covered Patent Issues on the Internet. An excerpt of his material is provided below.

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Patenting Software, Internet Technologies, and Business Methods in view of the Federal Circuit’s Decision in Bilski v. Doll

 

Presented at ISBA’s Intellectual Property Essentials and IP on the Internet

Chicago, IL

June 9, 2009

 

By Eric R. Waltmire

 

In October 30, 2008, the U.S. Court of Appeals for the Federal Circuit issued a decision that restricted but did not prohibit the patentability of software and business method related patents. Bilski v. Doll, 545 F.3d 943 (Fed. Cir. 2008). The case sets the standard for determining what is patentable in the fields of software and business methods. However, the U.S. Supreme Court recently granted writ of certiorari on the following questions:

 

1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

 

2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

 

[Bilski v. Doll, No. 08-1191.  556 U.S. _____ (2009)]

 

Until the Supreme Court rules in Bilski, this paper provides guidance on the patentability of software and business methods under the Federal Circuit decision and the decision from the Board of Patent Appeals and Interferences (BPAI). This paper will (1) review the facts of Bilski, (2) explain the holding of Bilski, (3) review prior and subsequent cases to illustrate what claims are allowable under Bilski, and (4) provide suggestions for claiming software based inventions in light of Bilski.

 

Facts

In Bilski, the invention at issue was a method of managing risk in a commodities market. The representative claim provided:

 

A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

 

 (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical aver-ages, said fixed rate corresponding to a risk position of said consumer;

(b) identifying market participants for said commodity having a counter-risk position to said consumers; and

 

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions

 

            [Bilski v. Doll, 545 F.3d at 949]

 

Analysis

The 35 U.S.C. § 101 provides five categories of patentable subject matter: process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. The Bilski claims were not directed to a machine, manufacture, or composition of matter.  So the question turned on what constitutes a patentable process. Specifically, the court addressed, in relevant part, (1) whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process, (2) when does a claim that contains both mental and physical steps create patent-eligible subject matter, and (3) whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101.

 

The court noted that the term “process” within the meaning of section 101 is narrower than the ordinary meaning of the word.  A process is not patentable it if claims abstract ideas, laws of nature and purely mental processes. Id. at 952. So the issue presented was whether Bilski was seeking to claim a fundamental principle or a mental process. Id.  The court noted that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id. In order to distinguish between unpatentable law of nature or mathematical formula and patentable applications thereof, the court looked to the question of “whether the effect of allowing the claim would be to allow the patentee to pre-empt substantially all uses of that fundamental principle.” Id.

 

The court found that the only test for determining whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself was the machine-or-transformation test. Id. at 954. 

 

Machine-or-Transformation Test. The court’s machine-or-transformation test provides that a process is not patentable under section 35 USC 101 unless (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. Id. at 954. This test requires an explanation of what is a (1) “particular machine”, (2) a “transformation,” and (3) a “particular article.” 

 

Particular Article. The claims in Bilski did not involve a machine so the court’s analysis focused on the second part of the machine-or-transformation test. Regarding what constitutes a “particular article” the court stated, “Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.” Thus, a patentable process must transform physical object or substances.

 

Physical Objects Represented. When software manipulates data alone, the data must represent physical objects.  The court reviewed a prior case where a broad claim covered a process of displaying data variances from averages. However, the claim did not “specify any particular type or nature of data; nor did it specify how or from where the data was obtained or what the data represented.” Id. Another claim was found to contain patentable subject matter provided, “said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.” This claim was patentable because the data represented structure of bones, and other body tissues, which are physical objects. Therefore a process that transforms data representing physical objects is patentable. The court explained that the process claimed need not transform the underlying physical object that the data represented. Id. at 962. Where the claim does not involve a particular machine and the claim involves the transformation or manipulation of an electronic signal, the electronic signal must represent a physical object or substance. Id. at 964.

 

Insignificant extra-solution activity. Moreover, the court stated that the particular machine or the transformation of a particular article must be more than an “insignificant extra-solution activity.”  For example, in a previous case the court rejected a claim where it was merely an algorithm combined with a data-gathering step. The court noted “that, at least in most cases, gathering data would not constitute a transformation of any article.” The court continued, “A requirement simply that data inputs be gathered–without specifying how–is a meaningless limit on a claim to an algorithm because every algorithm inherently requires the gathering of data inputs.” Id. at 963.

 

Software and Business Methods Not Categorically Excluded.  The court did not exclude software or business methods from patentable subject matter. The court stated, “we decline to adopt a broad [patentability] exclusion over software or any other such category.” Id. at 960.  The court also stated “that business method claims (and indeed all process claims) are subject to the same legal requirements for patentability as applied to any other process or method.” Id. However, the machine-or-transformation test adopted by the court has a restricting effect over the type of software or business methods that are patentable, or at least restricts the way in which software and business methods may be claimed.

 

Pre-Bilski Decisions – Particular Machine.

A pre-Bilski Board of Patent Appeals and Interferences (BPAI) decision is relevant to the question of what is a “particular machine.” Ex parte Langemyr (2008-1495, May 28, 2008). The question is whether a general purpose computer is a “particular machine.” In each instance the board relied on the Supreme Court in Gottschalk v. Benson, 409 U.S. 63 (1972). Where the claims provided method for converting binary-coded-decimal (BCD) numerals into pure binary numerals for use with a general-purpose digital computer of any type.  In Benson the court held that the claimed method was directed to non-statutory subject matter, because “[tlhe mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”  The claim in Ex parte Langemyr provided, “1. A method executed in a computer apparatus for creating a model of a combined physical system having physical quantities . . .”  The Board found the claimed method is not tied to “a particular machine,” but rather is tied only to a general purpose computer. At least when any and all computing systems will suffice, then a claim is not tied to a particular computer.

 

The Board of Patent Appeals and Interferences found in each that a general purpose computer is not a particular machine.  New software processes may not be patentable if they are tied only to a general purpose computer. Simply reciting a general-purpose computer does likely not qualify as a particular machine, at least according to the Board.

 

Post-Bilski Decisions

In Ex Parte Bo LI (BPAI 2008-1213) the board court found a Beauregard claim patentable under Bilski. A Beauregard claim is a claim to an article of manufacture embodied as a computer-readable medium. The claim in Ex Parte Bo LI included a “number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium.”  

 

In Ex parte Halligan (BPAI 2008-1588), the patent application provided in claim 119 a “programmed computer method” for identifying trade secret information. The computer program applies trade secret common law rules to determine if a given piece of information is a trade secret under those rules. The BPAI rejected the Halligan claims applying the machine-transformation test because the application lacked patentable subject matter under 35 USC § 101.

 

Halligan claims failed to transform a physical object because the claims involved legal rights and did not represent physical objects. Next, the BPAI found that claim 119 was not tied to a particular machine. The preamble of the claim provided a “programmed computer method.” However, the BPAI found “This recitation fails to impose any meaningful limits on the claim’s scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims.”  Moreover, the BPAI stated, “Were the recitation of a ‘programmed computer’ in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a ‘programmed computer.’”

 

 

Conclusion

Bilski does not stand for the proposition that software or business methods are unpatentable. When drafting a software or business method patent application, (1) draft claims tied to physical objects and show how physical objects transform from one state to the next, and/or (2) draft claims to show how the computer implements the invention through computer or machine activities, simply providing that the process is “executed [in/on/by] a computer” is alone not sufficient.  Also, note that simply adding extra-solution activities such as “data gathering” is alone not sufficient, instead show how machine grounded activities carry out the process. The Supreme Court may change or throw out the machine-transformation test, but until then following these suggestions will enable claims within within the present section 101 jurisprudence.

Eric Waltmire of the Erickson Law Group, will be one of the speakers at a new product development workshop titled “From Conception To Inception”: Turn Your Dream From Idea To Opportunity hosted by SCORE business counselors of Chicago. At this all day workshop, Eric will discuss patents and the patent process, cover the differences between a provisional patent application and a non-provisional patent application, and provide practical advice on when businesses should consider patenting an invention.  Information about this workshop is available [here]. 

SCORE is a nonprofit association dedicated to entrepreneur education and the formation, growth and success of small business nationwide.  Click [here] find a list of all SCORE workshops.

Eric Waltmire, patent attorney with the Erickson Law Group, will speak at the Saper Law Open Source Symposium on February 17, 2009 in Chicago. Whether you are in favor, opposed, or indifferent to software patents, it is important to know the implications and interplay between open source licensed work and patent rights. His presentation will focus on how the use of open source code including code licensed under GNU General Public License (GPL) versions 2 and 3 impacts a company’s patent rights. Also, the presentation provide specific guidelines to determine when a company should spend money to obtain a patent on software and when the funds are better spent elsewhere. Moreover, the audience will learn how a company can use defensive strategies to prevent third parties from obtaining patent protection over software related ideas that are used in the company’s products.

More information about the symposium and registration is available here.