See this article regarding the recent Seiko case in the High Court of Australia
The UK Intellectual Property Office has announced a call for views on artificial intelligence and intellectual property. In particular, the UK IPO wants to hear about the implications that AI might have for IP policy, and, likewise, what impact IP might have on AI.
See the full consultation: https://www.gov.uk/government/consultations/artificial-intelligence-and-intellectual-property-call-for-views
The consultation closes on 11 November 2020.
- Harold Cohen – The Age of Intelligence Machines (1987) - https://www.youtube.com/watch?v=IPczQgCuOOc&feature=youtu.be
- Is it art? Portrait created by algorithm on sale at Christie’s – https://www.youtube.com/watch?v=yeshFQZCD7E
The judge hearing the case is Justice Robertson. The oral argument went for 3 days, and finished on 20 July 2018. The judge is now writing a written decision.
See Australian Financial Review background story, and summary of Patent Office decision being appealed is here.
See blog post here.
The case considered whether this invention was patentable subject matter in Australia.
The Court decided that this invention was not patentable subject matter in Australian.
See also IP Whiteboard
The patent at issue is directed at a process for detecting paternally-inherited fetal DNA in maternal blood samples and for performing a prenatal diagnosis based on that DNA. This method permits the diagnosis of possible birth defects without using highly intrusive measures.
The Federal Circuit panel decision acknowledged that the invention in this case revolutionized prenatal care. However, it ruled that the claimed method is patent-ineligible under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), because it acts on natural phenomenon with well-understood, routine, and conventional steps. In a concurring opinion, Judge Linn reluctantly agreed but only because of the Supreme Court’s sweeping and unnecessary statements about patent eligibility.
The Federal Circuit on December 2, 2015, denied the petition for en banc review.
To read the opinions accompanying the en banc order in this case, click here; to read the panel decision in this case, click here.
See Research Affiliates LLC v Commissioner of Patents  FCAFC 150
See also this case note.
Many internet related inventions may not be patentable subject matter in Australia as a result of this decision.
In a unanimous decision authored by Justice Thomas, the Supreme Court today affirmed the Federal Circuit’s en banc decision invalidating the patents asserted by Alice Corporation against CLS Bank International as ineligible for patent protection under 35 U.S.C. §101 because they are directed to an abstract idea. See Alice Corporation Pty. Ltd. v. CLS Bank International et al. (U.S. June 19, 2014).
In an opinion by Justice Thomas, today’s Supreme Court opinion held that:
[T]he claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.
In applying Mayo step one, the Court determined that Alice’s claims were drawn to the abstract concept of intermediated settlement (i.e., the use of a third party to mitigate settlement risk). Rejecting Alice’s arguments that the abstract-ideas category is confined to preexisting fundamental truths that exist apart from any human action, the Court ruled that intermediated settlement has long been a fundamental practice in our system of commerce, and recognized that Alice’s claims to intermediated settlement were not meaningfully distinguishable from the risk hedging claims it previously held to be abstract in Bilski v. Kappos, 561 U.S. 593 (2010).
In a brief concurring opinion, Justice Sotomayor, joined by Justices Ginsburg and Breyer, opined that claims to business methods are ineligible per se for patent protection, because they do not qualify as a process under 35 U.S.C. §101.
See note from WilmerHale and prior blog posts below.
Prior blog posts are here and here.
A NYTimes opinion article is worth reading.
Broadly, the claimed invention related to the assessment of the competency or qualifications of individuals with respect to recognised standards. It was implemented using a computer.
Claim 1 included the following steps:
The Federal Court of Australia today determined that this claim recited patentable subject matter.
"Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101."
There were a number of judgments. The footnote to one judgment states:
"No portion of any opinion issued today other than our Per Curiam Judgment garners a majority. The court is evenly split on the patent eligibility of the system claims. Although a majority of the judges on the court agree that the method claims do not recite patent eligible subject matter, no majority of those judges agrees as to the legal rationale for that conclusion. Accordingly, though much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent."
The court denied patentability, stating:
"The implementation of the method of the claimed invention by means of a computer, at the level articulated in claim 1, is no more than the modern equivalent of writing down the index on pieces of paper. On the face of the Specification, there is no patentable invention in the fact that the claimed method is implemented by means of a computer. The Specification asserts a patentable invention, not in the use of the computer, but in the particular series of steps that give rise to the generation of the index. Those steps could readily have been carried out manually. The aspect of computer implementation is nothing more than the use of a computer for a purpose for which it is suitable. That does not confer patentability.
The enquiry into what constitutes a patentable invention is still evolving. It is not to be tied to particular notions of what was understood to be a manufacture at any particular point in time. However, while new developments in technology might be seen to widen the notion of what is patentable, the modern availability of computers as a standard means of implementing arithmetic or computational processes, which could have been implemented manually in the past, does not carry with it any broadening of the concept of a patentable invention."
See Research Affiliates LLC v Commissioner of Patents  FCA 71
The district court had held that the invention, which related to methods and systems for exchanging financial obligations between parties, was an abstract idea—ineligible for patent protection under 35 U.S.C. § 101. A Federal Circuit panel disagreed, holding that the claimed invention complies with § 101 of the patent code. En banc, the Federal Circuit will address two issues:
The U.S. Federal Circuit on October 9, 2012 granted en banc review of a case in which a Federal Circuit panel held that a claim must not be deemed inadequate under 35 U.S.C. §101 if, after taking all of the claim recitations into consideration, it is not “manifestly evident” that a claim is directed to a patent ineligible abstract idea. CLS Bank International v. Alice Corp., Fed. Cir., No. 11-1301, 10/9/2012. Alice Corp is an Australian company, suing for patent infringement in the United States.
The en banc court vacated the panel decision and requested briefing on the following questions:
- What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
- In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?
To read the Court’s order for en banc review, click here; to read a summary of the panel decision and obtain a copy of Judge Linn’s opinion, click here.
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This website has some useful links and references: http://www.epiphanysolutions.co.uk/article-index/rights-and-laws-of-the-internet/