PATENTABLE SUBJECT MATTER ELIGIBILITY IN THE AFTERMATH OF BILSKI AND PROMETHEUS

Attached you will find an excellent scholarly article on patentable subject matter by Stephen C. Durant, Warren D. Woessner, Ph.D., Robin A. Chadwick, Ph.D., and William E. Kalweit, all of the Schwegman firm.

The article helps frame some of the issues facing the Federal Circuit in its upcoming en banc CLS Bank v. Alice decision.

The article concludes with the following thoughts:

“A patent claim describes the key inventive features of the claimed
subject matter, those features that define the essence of the
invention disclosed in a patent?  The level of abstraction of a
patent claim corresponds directly to the scope of a claim. The
ideas that underlie an invention may be broken down into many
different levels of abstraction.  The more abstract a claim is, the
greater its scope is, and the broader the resulting patent
coverage?  Thus, “drafting” a patent claim to a computerimplemented
information processing innovation in the broadest
terms permissible by the prior art involves reciting an abstraction
of software features, which themselves are an abstraction of the
underlying functionality of the machine.

The challenge of defining a boundary between an abstract idea and
patentable subject matter for such a patent claim having
abstraction-upon-abstraction is formidable to say the least.”

 

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