Technology Law Insights by Ray Millien

On March 2, 2015, the U.S. Patent and Trademark Office (USPTO) announced that it has ended its secret Sensitive Application Warning System (SAWS), first developed in 1994.  The alleged aim of the SAWS program was to identify controversial patent applications so that they could receive additional review before issuance.  The USPTO has consistently maintained that SAWS was not a "secret program."  Examiners, however, were instructed not to talk about it, and its existence did not come to light until an October 2014 FOIA request, which was widely reported in December of 2014! 

My patent-related wish for 2015 is that the “mess” of patent subject matter eligibility for software (and computer-implemented) inventions is cleaned up by Congress or an en banc CAFC. No matter what side of the software patentability debate you favor, we can all agree that the State Street , Bilski, CLS Bank and Bancorp journey of decisions has left us all wanting for more. That is, a clear, repeatable test to determine when exactly a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none,” Funk Brothers Seed Co. v. Kalo Inoculant Co. , 333 U.S. 127, 130 (1948), does not exist. This is perhaps why former Chief Judge Rader has called the CAFC en banc decision in CLS Bank “the greatest failure of my judicial career.” The May 10, 2013, fragmented, 125-page decision failed to provide the patent bar and the lower courts adequate guidance on the patentability of software. This failur...