A New Reality for Patent Eligibility

The U.S. Supreme Court’s 2014 decision in CLS Bank v. Alice

In a unanimous decision, the U.S. Supreme Court affirmed the Federal Circuit’s en banc decision that petitioner Alice Corporation’s asserted patent claims directed to software for exchanging financial obligations were invalid for being directed to a patent-ineligible abstract idea. Applying its two-part framework laid out in its 2012 decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Court held that the claims were drawn to an abstract idea, that of intermediated settlement, and that merely requiring generic computer implementation failed to transform that abstract idea into a patent-eligible invention.

Importantly, the Supreme Court’s decision affirmed that patent claims merely requiring generic computer implementation fail to transform an abstract idea into a patent-eligible invention. However, software-based Digital Health inventions are still very much patentable. Keys to success include emphasizing that the claimed subject

  • Improves another technology or technical field
  • Improves the functioning of the computer itself
  • Applies the idea with, or by use of, a customized Includes a limitation other than what is well-understood, routine, and conventional in the field; and/or
  • Includes unconventional steps that confine the claim to a useful application.

Digital Health IP features that can help secure patent eligibility

  • Providing solutions to problems that arise only in the context of the technology itself (problem did not pre-date the technology).
  • Improvements to efficiency that better utilize computing resources to handle massive data sets, enhance speed, or allow scale-up.
  • Sensors, external to the computer running the software, which must feed data to the software.
  • Distinct machines, other than the computer running the software, which must communicate with each other.

A Second Layer of Protection

Design patents can protect unique devices and graphic user interfaces (GUIs)

Where a Digital Health application includes a novel and non-obvious device or sensor, GUI, or way of presenting, summarizing, or formatting information consider supplementing the utility patent application with a design patent application.

In general terms, a utility patent protects the way an article is used and works, while a design patent protects the way an article looks (the so-called ornamental aspects). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

The first design patent issued in the United States was issued on Nov. 9, 1842, to George Bruce of New York. It was on a typeface. Since then, U.S. patent law has evolved to allow the protection of the visual appearance of a GUI as “surface ornamentation” on the screen of a monitor or smartphone. This was first announced in Ex Parte Strijland, 26 USPQ 2d 1259 (BPAI 1992). New and non-obvious icons associated with GUIs are protectable via design patent. New and non-obvious aspects of the layout of the GUI, including the specific location of each element and even animations, are also protectable.

Design patents have additional benefits

They are fast; the typical time to a first office action is about 13 months and the total pendency is usually about 20 months for a design application.
They are often successful; the allowance rate is about 89% for design applications.
They are worldly; many foreign jurisdictions have robust design protection regimes.
They are secret; design applications do not publish unless and until they issue as an enforceable U.S. patent.
They are long-lived; U.S. design patents have a term running 15 years from the date of grant.

Tips to remember

  • Keep an eye out for devices that have aesthetic aspects such as, wearables and other computing devices, consumer products, and tools for medicine and life science.
  • Keep an eye out for GUIs that have a unique look and feel.

To learn more, please contact Mike Hostetler, Sabrina Poulos, or Scott Burkette.