Some patents for computer
implemented inventions have been successfully revoked in the face of
allegations that they relate to abstract ideas and consequently are not
patentable in the US.
Intellectual Ventures LLC v.
Symantec Corporation provides guidance on how to draft a patent specification
that would overcome such an attack. In this case, the invention was regarded to
relate to a specific machine configured in a specific way, comprising three
different computing systems and a telephone network. The court declined to agree that the invention
was directed to an abstract idea.
The Intellectual Ventures patent
that was attacked by Symantec, US 5,987,610, was described as being generally
directed to screening computer data for viruses within a telephone network
before communicating the computer data to an end user. At least a portion of
the computer data is not communicated if the data is found to contain a virus.
At the heart of the issue, is
whether application of the two-step Alice analysis (Alice Corp. Pty. Ltd. v.
CLS Bank Int'l, 134 S. Ct. 2347,2355 (2014)) finds that the inventions claimed
is patent ineligible under 350.S.C.101. In this analysis, courts must determine:
· if the claims at
issue are directed to a patent-ineligible concept; and
· If so, look for an
inventive concept, that is, an element
or combination of elements
that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent for the ineligible abstract concept itself.
Symantec argued that the claims
are directed to abstract ideas, and because the added computer-related
limitations are merely generic and do not add invented concepts beyond the
abstract ideas in themselves, none of the claims eligible. Intellectual Ventures responded that:
· the claims provide
a solution necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks;
· the claims
specify interactions yielding results that override the routine and
conventional sequence of Internet computer events; and
· the invention as claimed resolves a particular
Claim 7 is: A virus screening
method comprising the steps of:
routing a call between a
calling party and a called party of a telephone network;
receiving, within the
telephone network, computer data from a first party selected from the group
consisting of the calling party and the called party;
detecting, within the
telephone network, a virus in the computer data; and
in response to detecting the
virus, inhibiting communication of at least a portion of the computer data from
the telephone network to a second party selected from the group consisting of
the calling party and the called party.
Dependent claim 7 recites as
The virus screening method of
claim 1 further comprising the step of determining that virus screening is to
be applied to the call based upon at least one of an identification code of the
calling party and an identification code of the called party.
The court agreed with
Intellectual Ventures that computer viruses are a problem specifically arising
in the realm of computer networks and computers and that the human mind cannot
screen for computer viruses within the telephone network or elsewhere. Computer
viruses are computer-centric and cannot be obstructed away so broadly.
Furthermore, the human mind cannot perform the steps described in the
specification for implementing screening functionality in a telephone network.
The specification went to
some great detail describing how the invention was implemented. His Honour regarded the detailed technical
disclosure favourably and it was noted that at least three computers configured
in a specific manner was required. The coordination between a virus detection computer,
a sending computer, and the receiving computer was regarded by His Honour as
something necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.
His Honour also agreed that
the claim was Internet centric, and that the key idea of the patent was that
virus detection can take place remotely between two entities in a telephone
His Honour followed Alice,
stating claims that purport to improve the function of the computer itself or
effect an improvement in any other technology or technical field may be
patentable. The concept of detecting computer virus installed data, and doing
so in a telephone network, does not make sense outside of a computer context.
Consequently the patent is not directed to an abstract idea, and recites a
specific machine configured in a specific way.
This case suggest the
following drafting tips:
· If possible, draft
the application to focus on a solution to a problem rooted in computer
technology and specifically arising in technology, for example internet
· Include features
that cannot be solved in the human mind.
· Include plenty of
· Argue that the
invention improves the function of the computer itself or effects an
improvement in another technology.
· Recite a specific
machine or system configured in a specific way.