Articles
In The Problems with Software Patents, Eric Goldman argues that software would be produced even without patent incentives because it usually is covered by other types of IP protection, notably ___ or ____ protection.
What is:
Copyright or Trade Secret
TRUE OR FALSE:
In Gottschalk v. Benson the court granted a patent for an algorithm for converting binary-coded decimal numerals into pure binary form.
False
Which section of the Patent Act governs subject matter eligibility requirements?
What is:
Section 101
In the case of Alice Corp. Pty. Ltd v. CLS Bank Int'l, the Supreme Court found that Alice's scheme for mitigating settlement risks was patent-ineligible in a decision of ___ to ____.
What is:
9 to 0
In 2015, 30% of billion-dollar startups had, on average:
a. 0 patents
b. 20 patents
c. 120 patents
d. thousands of patents
What is:
a. 0 patents
TRUE OR FALSE:
In Parker v. Flook, the court denied a patent for a mathematical formula for computing alarm limits in a catalytic conversion process.
True
The official document that helps patent examiners understand and interpret relevant legal principles
What is:
Manual of Patent Examination Procedure (MPEP)
Generally, what did Alice's patent claim?
What is:
A scheme for mitigating settlement risk by utilizing a computer system as a third-party intermediary that mirrors and updates the balances in the parties' real-world accounts as transactions are entered
How is the software industry different from other innovative industries, such as computer hardware or pharmaceutical industries, according to Eric Goldman in The Problems with Software Patents?
What is:
Shorter innovation cycles
TRUE OR FALSE:
In Alice, the Court held that there is a distinction between the concept of hedging risk in Bilski v. Kappos and the concept of intermediated settlement at issue here, and thus Bilski did not apply.
False
What are the three "exceptions" (patent-ineligible concepts) to Section 101?
BONUS POINT!
What exception was at issue in Alice?
1. Laws of nature
2. Natural phenomenon
3. Abstract ideas
Bonus: Abstract idea
WHAT AND WHY: Supreme Court Holding:
1. Were the claims patent-eligible?
2. If not, did the claims incorporate additional elements that transform the nature of the claims into a patent-eligible application?
1. No - all claims are drawn to the abstract idea of intermediated settlement
2. No - adding instructions to "apply the method with a computer" does not transform the generic computer implementations
What doctrine, established in Enfish, LLC v. Microsoft Corp., allowed software that improved the functioning of a computer to be patent-eligible?
What is:
Technical effects doctrine
What is the two-step Mayo framework that was directly applied in Alice?
1. Determine whether the claims at issue are directed to a patent-ineligible concept
2. If yes, determine whether the claim's elements, both individually and as a combination, transform the nature of the claim into a patent-eligible application
How were the three "exceptions" to Section 101 created?
Judicially created through case law
The concurrence (Sotomayor, joined by Ginsburg and Breyer) put forward a much simpler analysis than the majority - what did the concurrence ultimately state regarding Alice's claimed "method of doing business"?
HINT: Section 101:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
Any claim that merely describes a method of doing business does not qualify as a "process" under Section 101.