Those working in the technology space need to know the extent to which they (and their competitors) can protect the results of their R&D, and so the boundaries of patentability are vital. Unfortunately, these are not always clear, especially for new areas of technology, and they seems to shift one way and the other with the latest court decisions.
In Europe we have a collection of exclusions from patentability that are set out in the European Patent Convention. These present their own difficulties, as discussed here. We have also been watching with interest recent developments in the patentability of computer-related inventions on the other side of the Atlantic.
The decision of the US Supreme Court in Alice Corp. v. CLS Bank attracted a lot of attention, as it seemed to narrow the availability of protection. The patent in that case dealt with a computerised scheme for mitigating “settlement risk” in financial transactions. It fell the wrong side of the line - the subject-matter of the claim did not amount to significantly more than an abstract idea and was not protectable.
Since then, other judgments have also rejected patents for computer related inventions. These cover areas such as computerised Bingo games, systems for providing transaction performance guarantees and an internet procedure for showing an advertisement before delivering content.
The recent decision in DDR Holdings, LLC v. Hotels.com, LP offered a glimmer of hope for applicants. A patent claiming a way of making two e-commerce web pages look alike by using licensed trade marks, logos, colour schemes and layouts was found valid. It provided a specific way to automate the creation of a composite web page.
Now the US Patent Office has published useful Interim Guidance on Patent Subject Matter Eligibility. This brings the key US decisions together and explains briefly how each one was decided.
As well as computer-related inventions, the Interim Guidance addresses biotech and medical inventions, looking in particular at the Myriad and Mayo cases.
Users of the patent system are invited to comment on the Interim Guidance and ask for other examples to be covered.