Federal Circuit ("CAFC") Affirms Description is Separate from Enablement in Patent Specification

In an en banc, 9-2 decision, the CAFC, affirmed that Section 112, first Paragraph of 35 U.S.C. requires that a a patent specification not only describe the manner of making and using a claimed invention, but also separately requires a written description of the claimed invention.  Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, 3/22/2010.

The court emphasized that if Congress had intended enablement to be the sole description requirement of section 112, first paragraph, the statute would have been written differently.  Furthermore, the rationale for a patent grant is a quid pro quo exchange between the inventor and the US Government.

The court found that a "vague functional description and an invitation for further research does not constitute a written description of a specific inhibitor."  Slip Op. at page 33.

This case illustrates the hazards of rushing, too soon to file a patent application in a rapidly developing technology.  If the application is filed too soon, before sufficient disclosure is available to support the claims, the validity of the claims could be challenged successfully.  On the other hand, the application should still be filed as soon as possible to avoid a priority of invention contest at the US Patent and Trademark Office.

This case arose in the context of the pharmaceutical technologies where some applications are filed before specific examples are available to support species (dependant) claims.  The impact of this case is not limited to pharmaceuticals however.  Many Internet, business method patents were filed with specifications that lacked in depth details concerning the claimed subject matter or some of the claims.  The validity of many of the business method patents claims may now be at risk.

Workflow may Pickup at US Patent and Trademark Office by the Third or Fourth Quarter of this Year

The workflow at the US Patent and Trademark Office ("USPTO") has slowed down dramatically over the past couple of years.  First Office Actions, which historically issued within 12-18 months after filing a new patent application are now taking over two years.  Even though the delays are added to the patent life under the American Inventors' Protection Act, the delay creates problems for inventors and patent owners because they do not know know the extent of the patentability of their inventions until the USPTO issues an opinion on patentability or when a patent actually issues.

In an effort to speed up the slow turning gears at the USPTO, a hiring campaign in underway.  The hiring is targeting people who either have patent examining experience or experience working in the Intellectual Property field and who have the skills necessary to examine patent applications.  The recent announcement drew in over 4,000 applications.  The USPTO has published a schedule that describes when decisions should be made on who will be hired from the large bank of applicants.  According to the schedule, individuals who are hired could start work as early as May 10th, June 7th or July 6th, 2010.

This is all potentially great news to the patent community and to inventors and invention owners.  We will all benefit when the USPTO returns to a reasonably paced workflow.

Social Networking Patents Emerge from US Patent and Trademark Office (“USPTO”)

Amazon, Google and Facebook have each recently been granted US Patents for social networking related patents.  Each of the patents have issued in the wake of the important case of In re Bilske, 545 F.3d 943 (Fed. Cir. Oct. 30, 2008), cert. Granted sub nom. Bilski v. Doll, 129 S. Ct. 2735 (June 1, 2009) (No. 08-964), renamed Bilski v. Kappos, No. 08-964.  A decision on the Bilske case is expected sometime this spring. 

The issue in the Bilske case involves what test or set of criteria governs the determination of whether a claim to a process is patentable under 35 USC § 101.  Specifically, the questions now before the US Supreme Court are:

1.      1.   [w]hether 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’,” and

2.       2. “[w]hether the Federal Circuit's ‘machine-or-transformation’ test for patent eligibility…contradicts the clear Congressional intent that patents protect ‘method[s] of doing or conducting business.’ 35 U.S.C. § 273.” See Bilski v. Kappos, No. 08-964 (June 1, 2009) at  http://origin.www.supremecourtus.gov/qp/08-00964qp.pdf.

US Patent 7,606,725 (“the Amazon patent”) issued October 20, 2009 for a networked computer system that provides various services for assisting users in locating, and sharing information with other users.  The system provides a user interface through which users can establish contact relationships with other users. The system also provides functionality for users to identify contacts of their respective contacts. For example, in one embodiment, each respective user can conduct a search of contacts of the respective user. The search may be limited in scope to users that satisfy one or more particular search criteria, such as users that reside in a particular region or are affiliated with a particular group.

US Patent 7,668,832 (“the Google patent”) issued February 23, 2010 for a computer-implemented method of determining and using geolocation information to target advertisements, determine scoring and pricing information about the advertisements.

US Patent 7,669,123 (“the Facebook patent”) issued February 23, 2010 for generating news items regarding activities associated with a user of a social network environment and attaching an informational link associated with at least one of the activities, to at least one of the news items, as well as limiting access to the news items to a predetermined set of viewers and assigning an order to the news items. The method further may further include displaying the news items in the assigned order to at least one viewing user of the predetermined set of viewers and dynamically limiting the number of news items displayed.

The US Supreme Court decision could render the validity in doubt of many business method patents, including the Amazon, Google and Facebook patents.  

The US Patent and Trademark Office issued Interim PatentSubject Matter Eligibility Examination Instructions on August 24, 2009 after the CAFC Bilske decision.  In the examples provided, example claim 5 is determined to be eligible subject matter because comparing is performed using a microprocessor, whereas example claim 6 is not eligible subject matter even though it provides method steps that include sorting, ranking and comparing, but does not explicitly state using a microprocessor.  Based on this criteria, the Facebook patent may be at risk because the only reference to a computer is in the second paragraph, “storing the plurality of activities in a computer…”  The Amazon and Google patents by comparison, do satisfy the criteria by performing transformational processes by a computer.

Business method patents will be front and center soon after the US Supreme Court issues its ruling and there will be plenty at stake.