The contraction of patent eligible subject matter under 35 U.S.C. 101 that Alice, Mayo, Bilski, and other recent court cases have triggered has placed a cloud of uncertainty over a large number of patents.1 Fortunately, though, the law provides patent owners with a process for taking remedial steps to address Section 101 risks in their patent portfolios. A viable remedial measure that may help minimize subject matter eligibility attacks is filing a reissue application. This article briefly discusses patent eligibility and how a reissue may be a good way to address the negative impact of these recent cases on issued patents.
Judge Moore's warning that Alice "is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents..." looks more and more like an accurate assessment of Alice's impact.2 Since Alice was decided earlier this summer, the Federal Circuit has affirmed summary judgment of invalidity on patent eligibility grounds in Planet Bingo v. VKGS (Fed. Cir. 2014) and, remarkably (at least to this author) affirmed judgment of invalidity in another case based on the pleadings. See buySAFE v. Google (Fed. Cir. 2014). The USPTO has been at it as well, issuing examination guidelines in light of Alice. Alice and its growing progeny have left us with the following test, although vague, for patent eligibility under Section 101: (1) determine whether the patent claim is directed to subject matter in one of the three excluded categories (abstract idea, law of nature, or natural phenomena), and (2) if so, determine whether the additional elements of the claim supply an inventive concept that is significantly more than the ineligible matter itself. Recitation of a general purpose computer, in and of itself, is not normally enough to supply the so-called inventive concept to a claim directed to patent ineligible matter.1 A reissue application may be an avenue to add the so-called "inventive concept" to a claim with patent eligibility risk under Alice.
U.S. patent law authorizes the USPTO to reissue a patent that, through error, is inoperative or invalid because of 1) a defective specification or drawing, or, 2) when the patentee has claimed more or less than he had a right to claim.3 In the context of Section 101, the error upon which the reissue could be based could be that the patent claims more or less than what the patentee was entitled to claim. Further, there is no longer a requirement that the error be made without deceptive intent.4 A reissue may be filed during any portion of the unexpired term of the patent. A broadening reissue must be filed within 2 years from the date the patent issued.5 A patent owner (assignee) can file a so-called narrowing reissue without oaths or declaration from the inventors.6 Once the reissue application is filed and accepted by the USPTO, examination proceeds similar to typical ex parte examination of utility applications.
A few aspects of reissue applications are interesting for addressing patent eligibility risks. First, amendment practice in a reissue application is similar to amendment practice in typical ex parte examination of utility patent applications. The claims can be amended to address patent eligibility so long as the amendments have written description support in accordance with 35 U.S.C. 112. There are some limits: claims cannot be broadened unless the reissue application was timely filed and any amendment cannot recapture that which the patentee surrendered to obtain the patent.
Secondly, after the reissue application is filed, the patentee can file any number of continuation or divisional reissue applications. This gives patent owners latitude to make the needed amendments to deal with patent eligibility risks while providing the tactical and strategic flexibility that continuations provide patent owners in order to address competitive threats.
How can a patent portfolio manager implement this tool in a strategic and smart way? Start with a review of key patents in the patent portfolio. Identify patents that are or were candidates for enforcement. Other key patents are those that are subject to a license agreement or may be a candidate for a licensing program. Key patents may also be the first of several patents obtained by a start-up to secure investments. Consider conducting a critical patent eligibility study of the identified patents with a view to filing a reissue application as described above. At a minimum, this review will give patent owners some control, though remedial in nature, in preserving the significant investment expended in developing the patent portfolio and the underlying innovation the patents were intended to protect.
Footnotes
1. Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012); Bilski v. Kappos, 130 S. Ct. 3218 (2010).
2. CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1313-21 (Fed. Cir. 2013)
3. 35 U.S.C. 251(a)
4. 35 U.S.C. 251(d)
5. The Leahy-Smith America Invents Act, SEC 20 (d)(B), 125 STAT. 333-334.
6. 35 U.S.C. 251(c)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.