It was, perhaps illy established, that transitory signal claims are per se unpatentable under Section 101 of the U.S. patent laws. This was established by in re Nuijten, a Federal Circuit decision dating back to 2007. Recently, in Ex Parte Mewherter, the USPTO has went a step further to hold that a standard Beauregard claim (a computer program on a computer readable medium) is not patent eligible, simply because it could encompass transitory signals. The case has recently been designated by the Patent Trial and Appeal Board (PTAB) as a precedential decision.
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Somewhat analogously to the nuances between the standards for trademark registration versus infringement, which are sometimes confused, the patentability standard for design patents is different from the design patent infringement test. In a recent Federal Circuit decision, High Point Design LLC et al. v. Buyers Direct, Inc., the Federal Circuit provided some helpful guidelines for evaluating patentability for design patents, particularly regarding “obviousness” (merely obvious ornamental designs are not patentable).
In the aftermath of the Supreme Court decision in Alice Corp v. CLS Bank, we have been keeping a close eye on Federal Circuit and PTAB decisions for further clarification on the case’s more stringent test regarding patent-eligibility under 35 USC 101. In this article we note several post-Alice developments regarding the patent eligibility of software processes that may fall in the category of “abstract ideas”.
The Supreme Court is currently posed with the question: Does the confidential sale of an invention disqualify that invention from later patenting? Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 138 S.Ct. 2678 (2018).
The patent statute does not directly address this question, but does state that an invention is precluded from patenting if that invention was “on sale” or “in public use” prior to the filing date for that patent application. Years of case law have added to the meanings of these terms. But now there is an additional term, “or otherwise available to the public.” 35 U.S.C. § 102(a)(1). Under which circumstances does this new term preclude patenting? Circumstances that are applicable to the certified question for the Court?
The Supreme Court has previously ruled that public use of an invention will not preclude patenting if the public use is for experimentation. Pfaff v. Wells Elecs., 525 U.S. 55, (1998). That Court qualified the statutory language, reading in the experimentation use. But that Court did not rule on the “on sale” criteria except to identify a distinction between experimental use and “products sold commercially.” Is there a similar qualification of a commercial sale, supported by precedent and legislative history, that can exempt a confidential sale from being barred from patenting?
And where would “otherwise available to the public” fit in here? Does “otherwise” mean that the previous items in the list, such as “on sale,” are also to be understood as “available to the public?” Or is it a modern catch-all for new patentability conditions that were not contemplated when the provision was written in 1952?