December 2016: Your Patent Disclosure Matters!
An interesting case sheds some light on what a patent disclosure needs to make an invention patent eligible. In Apple, Inc. v. Ameranth, Inc., the Court of Appeals for the Federal Circuit provides a good lesson for what patentees should and should not do. According to the court, all of the claims for a restaurant, menu-based ordering app were drawn to an abstract idea, which is a judicially created exclusion preventing patentability of some inventions that seek claims covering too broad of an idea, without any limitations about how the idea is actually applied.
The description of the invention provided in the patent in this case didn’t help the patentee any, because the appellate court pointed to language in the description that admitted: “…the hardware used in the claimed systems was ‘typical,’ and that the programming steps were ‘commonly known.’” I suppose that this language was adopted prior to the recent string of cases that have found claims unpatentable if hardware and programming elements recited in the claims is nothing more routine elements well known in the applicable industry. However, this case reinforces the importance of a good patent If your application does not disclose specific details of how to achieve a particular result in at least one particular way, then you’re going to be walking a fine line between patentability and obviousness. That’s not where you want to be. Adding a desired outcome as a limitation in a claim will not make an otherwise abstract idea patent eligible.
For example, one of the claims in this case recited linking orders to customers and was found to be patentable by the lower court. However, the appellate court, expressly recited “…that the hardware needed was typical and that the programming steps were commonly known…,” and the specification failed to provide an adequate written description of “…how this would be technologically implemented….” Why couldn’t the specification have detailed at least one way to technologically implement this feature of the invention? The patentee needs to disclose how the invention is made and used. That’s part of the quid pro quo of the patent system. The inventor discloses how to make and use the invention, and in return, the patentee gets the right to exclude others for a limited time.
If your invention claims an abstract idea, such as software or a business method, then this case suggests that you should provide ample technical detail that teaches exactly how to implement your invention. If it is so obvious how to implement your abstract idea that you don’t need to explain, once you reveal the abstract idea, then your abstract idea is possibly patent ineligible subject matter. So, don’t suggest that implementation of your idea is within the ordinary skill of a skilled artisan. Instead, teach the unskilled artisan at least one detailed, technological implementation of your idea in the description of your invention in your patent specification.
After reviewing Ameranth’s specification, the appellate court stated: “…we find no inventive method for implementing the claimed order linking.” What if the specification had detailed exactly how to implement it? How hard would it have been to have provided some source code or a detailed flow chart for how the claimed order linking could be implemented in software and hardware? Why not add a paragraph or two about the implementation of this feature? If you have something inventive, you are going to need to spell out exactly how someone else can do it. Hand waving explanations that it could be done, without sufficient details about how it could be implemented technologically, are counterproductive. According to the appellate court, “…a claim that merely describes an ‘effect or result dissociated from any method by which [it] is accomplished’ is not directed to patent-eligible subject matter.”
You’ve got to disclose at least one way to accomplish a desired outcome or feature and preferably disclose as many alternative ways to do the job as possible. These alternatives can provide fertile soil for dependent claims and can make it harder to design around your patent eligible claims, too. These days, to ensure that your claims are patent eligible requires a more detailed written description of the invention than in the good old days, in which a vague description, absent any details of the implementation, could still win the day.
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