IP Law Bulletin

Taking into account what constitutes a disclosure, we can see the following guiding principles and trends emerging:

The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, it is often not practical. Is the idea of waiting to discuss with a third party until a patent application is filed an overly cautious practice? Consideration of what actually constitutes a public disclosure and the factors that courts take into account illustrate that avoiding any and all discussion of the invention may not be necessary.

In another decision applying the two-step framework for determining patent eligible subject matter laid out in Alice Corp. v. CLS Bank International, the U.S. Court of Appeals for the Federal Circuit addressed the patent eligibility of claims to an Internet content filtering system. In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, the Federal Circuit held that BASCOM’s U.S. Patent 5,987,606 (“the ‘606 patent) was not invalid as a matter of law, vacated a district court’s order to dismiss, and remanded for further proceedings.

An old adage states that an infinite number of monkeys typing for an infinite amount of time will surely produce Shakespeare’s Hamlet. In a similar vein, the web site All Prior Art seeks to use computers and algorithms to create prior art. All Prior Art uses the existing U.S. patent database as source materials to create new “prior art.” The web site then publishes these new ideas under the Create Commons License, meaning the ideas are effectively dedicated to the public. While the algorithm is able to generate approximately 36,000 ideas a minute, the overwhelming majority are pure gibberish.

In the recent Federal Circuit decision in Circuit Check v. QXQ Inc., the Court discusses the bounds of analogous art when considering the scope and content of the prior art in an obviousness determination. In making the determination whether a claim is obvious, the fact finder is required to decide, among other things, the scope and content of the prior art. This is because not every potential disclosure that pre-dates the invention can be considered prior art; the disclosure must be analogous to the claimed invention. It is well-established that the test for whether prior art is analogous is “if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” The Federal Circuit used the Circuit Check decision to iterate that there are indeed limits to determining what is “reasonably pertinent” to the particular problem the inventor is trying to solve.