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Patentable Subject Matter: New Federal Circuit Case

Yet another post-Bilski pronouncement: the Federal Circuit has held that patent claims directed to “an investment tool designed to enable property owners to buy and sell properties without incurring tax liability” do not recite patentable subject matter under 35 U.S.C.  § 101.  Fort Properties v. American Master Lease, No. 2009-1242 (February 27, 2012). Background United States Patent No. 6,292,788 recites a method for taking advantage of exceptions to taxes on real estate transactions.  For example, independent claim 1 recites: A method of creating a real estate investment instrument adapted for performing tax-deferred exchanges comprising: aggregating real property to form a real estate portfolio; encumbering the property in the real estate portfolio with a master agreement; and creating a plurality of deedshares by dividing title in the real estate portfolio into a plurality of tenant-in-common deeds of at least one predetermined denomination, each of the plurality of deedshares subject to a…

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Will the Supreme Court Revisit Software Patents?

Last fall, in Ultramercial, LLC v. Hulu, LLC [1], the Federal Circuit Court of Appeals surprised many people by upholding a patent claim, reproduced in footnote [2], directed to a “method for distribution of products over the Internet via a facilitator.”  One of the defendants in that case, game provider WildTangent, recently asked the U.S. Supreme Court to take the case.  Specifically, WildTangent asks the Supreme Court to consider: Whether, or in what circumstances, a patent’s general and indeterminate references to “over the Internet” or “at an Internet website” are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 USC § 101. [3] I am not an expert Supreme Court watcher, so I will (mostly) refrain from prognosticating on what the Court will do.  WildTangent argues that, under the Ultramercial decision, “all the patent holder in Bilski had to do was add a step…

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Is Software Patentable? A Look at How the Patent Office Answers the Question

The landmark U.S. Supreme Court decision of Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010), failed to provide a clear test for patentable subject matter.  That was over a year-and-a-half ago.  Are there now, I wondered, any trends or rules one could discern from Patent Office practice in the wake of Bilski?  Can an inventor with a software-related invention be given any clear guidance as to whether that invention passes muster under the patent statute? I reviewed over 150 recent decisions, from June 2010 to the present, addressing appeals of a patent examiner’s rejections to the Patent Office’s Board of Appeals and Interferences.   Bilski may have made obtaining a software patent more difficult, but it is far from impossible.  Consider the numbers: New grounds of rejection entered: 29% Affirmed: 55% Reversed: 21% Affirmed and Reversed: 5% In almost 85% of the cases where the Patent Office judges confronted the…

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