U.S. Patent and Trademark Office

On April 2, 2018, the U.S. Patent and Trademark Office released a memorandum to the Patent Examining Corps regarding recent subject matter eligibility decisions issued by the Federal Circuit. The memorandum discusses two recent decisions that found claims that improve computer technology are directed to patent-eligible subject matter rather than to an ineligible abstract idea. The memorandum and decisions are instructive for practitioners who draft patent applications, confront subject matter eligibility challenges or respond to USPTO rejections under 35 U.S.C. § 101.

In Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the Court (Dyk, Linn, Hughes) found no error in the district court’s subject matter eligibility determination and unanimously held that the claims were patent-eligible under § 101 because they improved computer technology by protecting users against previously unknown viruses and enabled more flexible virus filtering. The invention recited specific steps to accomplish the desired result, and was a non-abstract improvement over traditional computer functionality and virus scanning techniques which only recognized the presence of previously-identified viruses.

Relying on recent Federal Circuit precedent, the Court stated that in cases involving software inventions, the inquiry into whether the claims are directed to an abstract idea often turns on whether the claims focus on a specific asserted improvement in computer capabilities. The claims at issue in Finjan are directed to a method of providing computer security by scanning a downloadable program for suspicious code such as viruses, and attaching the results of the scan to the downloadable program in the form of a security profile. The Court adopted a district court claim construction in finding that the behavior-based virus scan approach improved computer functionality because it determines whether the program performs hostile or potentially hostile operations.Continue Reading U.S. Patent and Trademark Office Releases Memorandum on Recent Subject Matter Eligibility Decisions

Although the number of patents filed in China has exploded in recent years, resulting in China becoming the world’s top patent filer in 2011, a new report from the European Union Chamber of Commerce in China (European Chamber) takes the position that “the overall strength of China’s actual innovation appears overhyped,” and that China’s policies designed to encourage innovation may in fact hamper innovation.   The policies identified by the report include quantitative targets for patent applications, financial rewards for use and development of Chinese-owned or “indigenous” intellectual property, and state-funded megaprojects.  The European Chamber asserts that China’s “Soviet-style” emphasis on quantity, incremental innovation, and large-scale projects may actually hold back China’s innovative capacity, since “[o]ne cannot drive or ‘force’ creativity, but only nurture it.”
Continue Reading European Chamber Concludes That Chinese Patent Policies Hamper Innovation