IP Law Bulletin

Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent can be granted for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Though this text has changed very little since it was first written in 1793, the courts have established a number of judicially created exceptions, and exceptions to those exceptions. This has created a growing difficulty and uncertainty in applying §101 to modern technologies, especially those implemented by computer systems. 

Bob Dylan famously sang that “[y]ou don’t need a weatherman to know which way the wind blows,” and we don’t need a weatherman to tell us that the wind now blows differently at the United States Patent and Trademark Office (USPTO). On January 7, 2019, the USPTO released revised subject matter eligibility examination guidance (“Guidance”), foreshadowed by USPTO Director Iancu last fall. The Guidance is noteworthy both for raising the bar in examination procedure and, we think, for signaling the Office’s intent to rein-in the application of subject matter ineligibility analysis (“lest it swallow all of patent law” – Alice). We anticipate a reduction in subject matter eligibility rejections because the Guidance makes it more difficult for examiners to reject claims as being directed to unpatentable subject matter under 35 U.S.C. §101.   

On January 22, the Supreme Court clarified an important issue of patent law that had been left open since the enactment of the America Invents Act several years ago. 

The patent laws bar a person from receiving a patent on an invention that was “on sale” before the effective filing date of the patent application claiming that invention. The Supreme Court had previously announced that the “on sale bar” came into effect when the invention was “the subject of a commercial offer for sale” and was “ready for patenting”—that is, it must be sufficiently developed that a patent application could be filed, and there must be a commercial offer for sale. If these conditions are met, the offer can bar a subsequent patent application. The appeals court confirmed that this is true even when the offer for sale was confidential. 

Invention disclosures made by an inventor to an attorney, or a review committee including attorney(s), often contain sensitive information that a client would prefer to keep confidential. It is important for both inventors and attorneys to appreciate the boundaries of the attorney-client privilege, as applied to inventor-attorney communications, to determine which communications can be privileged, and thus sheltered from discovery, and those that will remain discoverable. As in other areas of law, the attorney-client privilege attaches to confidential communications between a client and an attorney made for the purpose of seeking legal advice or services. The Court of Appeals for the Federal Circuit (CAFC) has applied this principle to patent law and found that the privilege attaches to confidential invention disclosure communications between an inventor and an attorney made for (1) seeking advice on patentability or (2) for obtaining legal services of preparing a patent application. See In re Spalding Sports Worldwide, Inc., (Fed. Cir. 2000). Thus, the attorney-client privilege attaches to invention disclosures submitted or communicated to an attorney to assist the attorney in evaluating patentability or in prosecuting a patent. Additional inventor-attorney communications which may fall within the attorney-client privilege include draft patent applications prepared for or received by an attorney and communications between a named inventor and a patent attorney about patent prosecution.

Over the years, patents have issued on numerous games, including iconic favorites such as Monopoly® (1935), Battleship® (1935), Rubik’s Cube® (1983), Rock'em Sock'em Robots® (1966), Twister® (1969), and Simon® (1979). Although there is no per se rule under current U.S. patent law against the patenting of games, it may be more challenging today to obtain patents on certain games due to the patent eligibility requirements of 35 U.S.C. § 101.