PTAB Tackles Patentability Issues After New Guidelines

Recently, the United States Patent and Trade Office (USPTO) enacted new guidelines to “clarify” the patentability standard and analyses. The USPTO stated that it had undertaken this clarification because many court decisions on the issue of patentability of method type patents in the computer arena had become very difficult for examiners to understand and apply in a predictive manner. As such, there were concerns that the examining corp was not reaching consistent examination and prosecution results.

Following the enactment of the new guidelines, a Patent Trial and Appeal Board (PTAB) panel reviewed four patents relating to methods of electronically storing financial documents. The patents involved were US Patents 6,963,866, 7,552,118, 7,836,067 and 9,141,612 belonging to Mirror Imaging LLC (Mirror). Those patents were challenged by Fidelity Information Services LLC (Fidelity) because Fidelity asserted that only abstract ideas were involved, thereby being unpatentable subject matter under section 101. In fact, in a previous PTAB challenge on the same four patents, the PTAB actually opined that the Mirror patents were likely invalid.

At the hearing, the questioning by the administrative patent judges centered around whether the abstract ideas are “integrated into a practical application.” Answers to the question of the practical application revolved around the elimination of manually arranging and documenting financial information, as well as the improvement in archiving information. In opposition to that approach, attorneys for Fidelity indicated that merely including instructions to implement an “abstract” idea on a computer and then using the computer to perform that idea did not rise to the level of a practical application.

We will report on how the PTAB decides this case that should provide patent practitioners with more guidance about the patentability of these types of patent applications. Gibbons will continue to follow the progress and update this post.

 

Estelle J. Tsevdos, Ph.D is a Director in the Gibbons Intellectual Property Department.
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