Alice Corp. and Patent Claiming:
A Simple Example
by Howard Skaist
In the wake of Alice Corp (“Alice”), many practitioners, including myself, are thinking about its implications, in particular, with respect to drafting patent claims. Of note, especially, is the Court’s statement, recited more than once in Alice, that “this Court has long “warn[ed] …. against” interpreting section 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” See 573 U.S. ____ (2014); slip opinion at 16. I would like to test that notion and, potentially, its general boundaries with a simple example.
Let’s consider, as an example, the early days of computers and the creation of VisiCalc. If today’s law applied then, e.g., Alice, would a patent claim covering VisiCalc have been statutory? I would be inclined to say, even today, that it depends a lot on the particular claim, but we also have the Supreme Court’s position on the matter, mentioned above. So, to what extent does the answer depend on the particular claim?
Here is one possible claim to VisiCalc:
A method comprising: implementing a spreadsheet on a computer. One issue worthy of mention here is that cases getting to the Court are ones in which the claims do not appear on their face to appropriately flush out the subject matter considered innovative, at least if we can rely on the opinions without taking the trouble to look at other claims of the particular patents. However, most skilled practitioners tend to make sure that a spectrum of claims are included, at least for considerations related to section 103. As shall be seen, this may also be the best practice for addressing 101 issues.
The claim above, thus, is in line with claims previously adjudicated before the Court. That is, the claim on its face does not appear to communicate details about the innovation itself. Rather, this claim would likely be held non-statutory under the approach in Alice. Applying the analysis, spreadsheets constitute a way to organize human activity that is of longstanding use. Thus, it would seem that, following Bilski and Alice, a spreadsheet may potentially be deemed an abstract idea or a fundamental concept. Thus, it is, if anything, a building block for human ingenuity and, on policy grounds, section 101 exceptions to statutory subject matter are potentially implicated.
Again, then, following the approach in Alice, the aspect of the claim calling out implementation on a computer likewise does not constitute a sufficiently meaningful addition, whether analyzed element by element or as a whole. It might be argued that computer implementation is faster than performing spreadsheet calculations on paper, but merely being faster is not sufficient, generally, to pass muster here.
It is important to realize, however, that when technology is implemented, rarely does it just result in being faster and nothing more. Usually, the implementation provides other advantages. Here, referring to this simple example as an illustration, VisiCalc made a type of functionality possible that had not existed before. Therefore, if that aspect were particularly claimed, perhaps such a claim would be deemed statutory under the analysis in Alice.
For example, consider the following two claims, recognizing that this example is not intended to illustrate the best claims possible, but is just a simple example to test the Court’s recent pronouncement.
A method comprising: generating and displaying a matrix of cells comprising an electronic spreadsheet on a computer, said electronic spreadsheet to implement on said computer one or more user-specified mathematical operations in which one or more operands for said one or more user-specified mathematical operations are to be entered in particular cells of said matrix and results of performing said one or more user-specified mathematical operations on said one or more operands are to be displayed in other particular cells of said matrix; and displaying on said computer, in said particular cells and in said particular other cells, after said one or more operands are entered, said one or more operands and said results of performing said one or more user-specified mathematical operations on said one or more operands, respectively.
The method of claim 1, wherein said results of performing said one or more user-specified mathematical operations on said one or more operands comprise one or more operands of one or more other user-specified mathematical operations either with or without displaying said one or more operands of said one or more other user-specified mathematical operations in cells of said matrix.
Several arguments are available that one, if not both, of these claims is statutory. To turn the issue around, we should, perhaps, ask the following: If we ignore the conventional hardware elements of the claim, is the implementation, as claimed, more than merely conventional?
This question, of course, as framed, clearly is not the same question presented under section 103. Thus, while the Court may be criticized for making considerations under 101 more similar to considerations under 103 than had previously been the case, the analysis is still different.
To be even more explicit, we may ask: is an innovation being claimed (even if it may in light of prior art later be determined to be an obvious one)?
Here, the answer is quite arguably, yes!
Most everyone is familiar with the functioning of VisiCalc and Excel. Certainly, at the time Apple introduced VisiCalc, it was an innovation over what had been done previously with conventional spreadsheets of the time.
Perhaps I am overly optimistic and not everyone will agree that claim 2 at least is statutory. However, these claims call out an improvement over existing processes involving spreadsheets. See 573 U.S. ____ (2014); slip opinion at 13 (discussing that the claims in Diehr improved on an existing process). A user is able to link together in a spreadsheet format, complex calculations and display the results in a manner so that any change in “operands” is able to be rippled across the spreadsheet and displayed immediately. This is an improvement over use of a paper spreadsheet and provides a new functionality that previously did not exist. I am not arguing that this is necessarily patentable, since that is judged relative to particular prior art, only that it is at least statutory because it is not merely conventional.
If it were generally agreed that the first example is likely non-statutory under the Court’s recent pronouncement and the second example is likely statutory, then what does that tell us in terms of claim drafting? One thing it demonstrates is that including limitations directed to innovative aspects of particular implementations may provide a claim drafting safe harbor, so to speak, for this area. Where this is done correctly, it would seem that claims of value to a client should ultimately stand up as statutory. As was mentioned, most practitioners tend to make sure that a spectrum of claims are included. This is good practice, now, to address, not just 102 and 103, but also 101.
If we compare the two example claims above, what is the difference? Why, from a policy perspective should one be statutory and the other not, since they are both directed to what is meant to be the same core subject matter? It appears that section 101 imposes a statutory requirement of proper form. That is, from a formal perspective, it is necessary that innovative aspects of the invention, as implemented or intended to be implemented, be on the face of the claim for the claim to be statutory.
Recall that we started with the notion that “this Court has long “warn[ed] …. against” interpreting section 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” The ironic twist here seems to be that, if section 101 imposes a statutory requirement of proper form, then the prevailing situation would seem quite the opposite of the Court’s stated view. That is, that patent eligibility indeed depends on the draftsman’s art and our example appears to confirm as much.
Several points are therefore addressed with this example.
- Take care when evaluating inventions for meeting statutory subject matter – rarely are things as simple as they look.
- Great care is needed in drafting claims in general but particularly in this area because otherwise there may have been a statutory invention inadvertently left unclaimed.
- The policy view that patent-eligibility should not turn on the draftsman’s art is not the full story.
 Howard Skaist founded Berkeley Law & Technology Group (BLTG) in 2003 after having been employed as the Director of Patents for Intel Corp. BLTG has a total of twelve patent lawyers and handles all aspects of intellectual property law practice, including patent law. Mr. Skaist has also been an adjunct professor at Boalt Hall Law School in Berkeley, CA, at Willamette School of Law in Salem, OR, at Lewis and Clark Law School in Portland, OR, and at Albany Law School.
 A separate twist is raised by Sotomayor’s concurrence (also expressly by Judge Mayer recently in I/P Engine v. AOL). Would the second example get over those hurdles? I would say probably not. It appears difficult here to argue that the problem solved is technical in nature rather than being directed to organizing human activity. Thus, three justices would probably say that the second example is also non-statutory.
 Of course, one would expect that this would also be true to meet section 103. However, perhaps a difference is that, for purposes of section 103, dissection is not permitted, at least not yet. While Alicelooks at the claim as a whole as well as the claim elements, it was clear as far back as Flook, that some amount of dissection was permissible. Alice has made that even clearer, following Mayo, by permitting an element by element analysis.
A Trademark Primer for Startups
by Ted D. Karr
Whether you are forming a new business or introducing a new product, Federal registration of a trademark is an important consideration to support your company’s business strategy.
A trademark is a company asset that gains value through association with the company’s product or service, and registration is the most efficient mechanism to protect that asset while building brand recognition. Federal registration is a great tool for providing notice of trademark ownership to other parties and it offers a presumption of ownership of your mark for use throughout the United States. Additionally, it provides for more efficient enforcement by bringing an action in one Federal court rather than each state court.
Most startups, of course, do not have a trademark expert on staff. So we’ve put together this quick primer to give you the basics on managing trademarks for your company.
What is a trademark?
A trademark is a brand name. Generally speaking, a trademark includes any word, name, symbol, device, or any combination thereof (or of same), used or intended to be used to identify and distinguish the goods/services of one provider from those of others, and to indicate the source of the goods/services. Examples of strong trademarks include Apple® and Chevrolet®. They identify and distinguish a source of goods and services, and consumers attribute a value and quality to them.
Selecting a mark
There is a natural tendency for those naming a product or service to choose a name that is descriptive or generic. By doing so, they are able to communicate to the consumer exactly what it is they are selling. However, in order to establish enforceable trademark rights the trademark must be distinctive. The more arbitrary or fanciful the mark is, the more distinctive it will be and the more protectable it will be. Choosing Washington Apples for an apple business would be descriptive and generic. Apple®, on the other hand, used in association with mobile phones, is arbitrary and distinctive.
What to protect
Executives from startups often ask me, “Should I register my business name?“, “Should I register my logo?”, “Can I protect a tagline with registration?” The short answer is yes, you can protect all of those, and many companies, even startups, protect their company name, their product names, and often logos and taglines. These marks become assets that grow in value with the company.
Registration on the Federal register
Seeking Federal registration of a trademark in the early stages of forming a company or naming a new product allows a company to develop protectable brands while avoiding pitfalls, such as infringement of another company’s mark. It is much less expensive to perform a trademark clearance search early in the naming process, than it is to rebrand a product line already introduced to the market, or worse yet to fight a trademark infringement claim.
Federal registration of trademarks is not required, but highly recommended. Owning a federal trademark registration on the Principal Register provides a number of advantages, including: 1) a legal presumption of ownership of the mark and an exclusive right to use the mark nationwide in connection with the goods/services listed in the registration; 2) public notice of your claim of ownership of the mark; 3) the right to use the federal registration symbol®; 4) the ability to bring an action concerning the mark in federal court, rather than having to sue for trademark infringement in each individual state; and 5) the use of the U.S. registration as a basis to obtain registration in foreign countries.
The process for securing Federal registration
Registration of a trademark typically takes 6 months to a year and the process is generally as follows:
- Step 1: Identify mark(s) – Identify one or more possible marks for registration, then contact a trademark attorney. The attorney will work with you to develop a trademark registration strategy that aligns with your business strategy and the attorney will facilitate the trademark registration process.
- Step 2: Search – The attorney will often start with a search for similar (or confusingly similar) marks. A search can range from a manual review of the USPTO trademark database (knockout search) to a more comprehensive search that identifies potential likelihood of confusion issues based on the federal trademark register, state registrars, domain names, company name searches, and common law use from web searches.
- Step 3: Establish scope – Once the mark is cleared for possible registration, the attorney will work with you to identify the scope of the registration, including a selection of applicable classes of goods and services and the description of goods and services to be included in the application.
- Step 4: Proof of use – If the application is based on an intent to use the mark in the future, the application will not require proof of use until later in the process. If the trademark is already and currently in use in commerce, the attorney will assist you with selecting and preparing an acceptable specimen of use to support the application and will assist with identifying the first date of use of the trademark and the first date of use in commerce for the application.
- Step 5: File – The attorney will then prepare and file the trademark application through the Trademark Electronic Application System. While the application is pending you can use the mark in association with your goods/services and you can associate the “TM” symbol with your mark to provide notice of your unregistered trademark.
- Step 6: Prosecution – The Examiner will issue an office action if the application needs to be modified or if the Examiner believes the mark is confusingly similar to another mark. If you are able to navigate around the Examiner’s issues, the examiner will publish the application for public review and opposition. The publication period is 30 days.
- Step 7: Registration – Assuming no opposition is filed, the Examiner will issue a notice of allowance, followed by a certificate of registration. Once you receive your certificate of registration, you should associate the ® with use of the registered mark.