Patent English in the Context of Patent-Eligibility

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Journal of Far East University General Education Vol.9 No.1

中華民國一○四年一月出刊

中華民國九十六年七月創刊

Ping-Hsun Chen

Assistant Professor, Graduate Institute of Intellectual Property, National Taipei University of Technology

Abstract

The patent system is used to boost technical innovation by granting to an inventor an exclusive right to stop others from exploiting her inventions. The system requires an inventor to file a patent application to a designated governmental agency. To file a patent application, the applicant usually needs a specialist who is familiar with paten prosecution and patent law. To become a patent specialist in Taiwan, a person might have to pass the patent attorney bar exam where “Patent English” is one of the test subjects. But, the scope of “Patent English” has not been well elaborated since the test subject “Patent English” was created. This paper defines “Patent English” as a kind of English for special purposes in the context of patent prosecution. “Patent English” is used to convey thoughts or knowledge from one specialist to another specialist. In the context of patent prosecution, specialists have to address various legal issues when deciding whether to file a patent application. One of those issues is “patent-eligibility.” Under 35 U.S.C. § 101, a law of nature, a physical phenomenon, or an abstract idea cannot be a patent-eligible subject matter. In this paper, court decisions related to “paten eligibility” are analyzed to illustrate how a patent specialist should talk about the eligibility issue. First, this paper defines the scope of the context related to patent-eligibility issues. While doing so, this paper also introduces some concepts in the American patent law. Second, several selected court decisions are analyzed in terms of frequent words (e.g., nouns, verbs.) and sentence structure. Those cases are relatively important cases. Before analyzing decisions, this paper will discuss proposed theories related the analysis. This paper has several findings. First, the issue of “patent-eligibility” is often related to a process invention and rarely related to a product invention. A process claim is featured with a claim of several steps. Second, a way to explain why a claim is not patent-eligible follows some pattern. This paper lists some sentence examples that could serve as teaching examples for a course of Patent English.

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在專利適格性下的專利英文

陳秉訓助理教授國立台北科技大學智慧財產權研究所

摘要

專利制度是用來鼓勵技術創新發明的制度，以獨佔權交換發明人的發明揭露。為獲得專利權，發明人必須提出專利申請。相關的文件是由專家所準備，而該專家在我國為專利師。專利師的國家考試科目中有「專業英文」一項，其測試應考者以英語溝通專利事務的能力，即「專利英文」的能力。雖「專業英文」已是考試科目多年，但「專利英文」的內涵還未被完整闡述。本文以 ESP 的角度來看待「專利英文」而認為「專利英文」即專利申請過程中本國專利師與外國專利代理人溝通時所必要的英文能力。專利師必須溝通的法律議題包括「專利適格性」。美國專利法第 101 條延伸的法理為自然法則、物理現象或抽象思想為不適格的專利標的。本文以美國判決為文本來研究如何敘述「專利適性性」的議題。首先，本文界定「專利適格性」爭點的概念。接著，本文選了幾件與該爭點有關的法院判決，以分析常用字彙和語句結構。本文的發現有幾點。第一，「專利適格性」通常與方法專利有關，而方法專利由數個步驟所構成的權利範圍。第二，法院在闡述「專利適格性」時有採取一定的形式。本文列出相關的句型以做為「專利英文」教學之用。關鍵字：專利法，專利英文，專利適格性，第 101 條

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1. Introduction

The patent system is used to boost technical innovation by granting to an inventor an exclusive right to stop others from exploiting her inventions (Chisum et al., 2004). The system requires an inventor to file a patent application to a designated governmental agency (United States Patent and Trademark Office, 2010). To file a patent application, the applicant usually needs a specialist who is familiar with paten prosecution and patent law.

To be officially recognized as a patent specialist in Taiwan, a person has to pass the patent attorney bar exam where “Patent English” is one of the test subjects. But, the scope of “Patent English” has not been well elaborated since the test subject “Patent English” was created. This paper defines “Patent English” as a type of English for special purposes in the context of patent prosecution. “Patent English” is used to convey thoughts or knowledge from one specialist to another specialist.

In the context of patent prosecution, specialists have to address various legal issues when deciding whether to file a patent application. One of those issues is “patent eligibility.” Under 35 U.S.C. § 101, a law of nature, a physical phenomenon, or an abstract idea cannot be a patent-eligible subject matter (Chisum et al., 2004).

In this paper, court decisions related to “paten eligibility” are analyzed to illustrate how a patent specialist should talk about the eligibility issue. First, this paper defines the scope of the context related to patent-eligibilities issues. While doing so, this paper also introduces some concepts in the American patent law. Second, several selected court decisions are analyzed in terms of frequent words (e.g., nouns, verbs.) and sentence structure. The frequent words and sentences are selected because they are used in the context of describing patent issues by legal professionals. Before analyzing decisions, this paper will discuss proposed theories related the analysis.

2. Introduction of the U.S. Patent Law

To be protected by a patent, an invention has to be industrially useful, novel, and non-obvious in views of an ordinary skilled person in the art (Chen, 2011). In the United States, the “novel” requirement requires that all elements as a whole of an invention cannot be found in a

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single prior art document (Chisum et al., 2004, p. 324). The “non-obvious” requirement requires that an invention has to be non-obvious to the extent that an ordinary skilled person in the art cannot combine more than two prior art documents to come out with the invention (p. 532-537). The “industrially useful” requirement requires that an invention must be useful (p. 735-736).

In addition, an invention has to meet the requirement of “patent-eligibility” that might be part of the “industrially useful” requirement (Chisum et al., 2004, p. 772). An alternative term is “patentable subject matter” (Eisenberg, 2012). An invention for an abstract idea, physical phenomenon, or law of nature is not eligible for a patent (Ibid).

The Federal judicial system in the United States is a three-tier system (Chemerinsky, 2007; Nedzel, 2008).When a law suit for patent infringement is brought by a patentee in the United States, the court of original jurisdiction is a federal district court (Chisum et al., 2004, p. 29). The appellate court is the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) (p. 26-27). The final court deciding legal doctrines of the patent law is The Supreme Court of the United States (“Supreme Court”) (Abernathy, 2006; Duff, 2010). The Federal Circuit is a

specialized court for patent cases. In general, the legal doctrines of the patent law are developed by the Federal Circuit. However, the Supreme Court will step in to review the decisions of the Federal Circuit if the decisions are wrong in terms of the Constitution of the United States or the statutory interpretation of the patent law.

A patent document includes a specification, claims and drawings (Chen, 2011). A claim defines the invention. When determining whether an invention is patentable or whether a patent is infringed, a court looks to the language of a claim. When discussing whether an invention is patent-eligible, the focus is on the claims not what is disclosed in the specification.

3. Methodology

This article focuses on one topic of ESP which is grammatical structures and core vocabulary (Basturkmen, 2006). The examples of the grammatical structures are verb tenses, conditional clauses, and noun phrases (p. 35). To further understand the grammatical preference in the context of patent-eligibility, several court decisions are selected for analysis in terms of frequent words (e.g., nouns, verbs.) and sentence structure.

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U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978). They are picked up because they are key decisions (Chisum et al., 2004, p. 829). Five decisions from the Federal Circuit are selected for analysis: In re Bilski, 545 F.3d 943 (Fed. Cir. 2008); In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010); Research Corp.

Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010); and Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011). These cases are relatively important cases

because they are binding to all federal courts. Additionally, Cybersource Corp. was first selected, and other cases are cited in Cybersource Corp.

4. Patent English and Patent Eligibility 4.1 Patents at Dispute in the Context of Patent-eligibility

Table 1 shows the claimed inventions in the selected cases. Most of those inventions are methods claims. Two like-product claims are found in In re Comiskey and Cybersource Corp. v.

Retail Decisions, Inc. In In re Comiskey, the like-product claim was a system for mandatory

arbitration regarding one or more unilateral documents comprising several components, such as a registration module for controlling a person in an arbitration proceeding, an arbitration module for incorporating arbitration language, an arbitration resolution module for requiring a complaint to do something, and a means for selecting an arbitration from a database (p. 971). The Federal Circuit did not rule on the issue of patent-eligibility regarding such the system claim. Instead, it vacated the patent-examining agency’s decision to reconsider the issue in accord with the rulings (p. 981-982). In Cybersource Corp., however, the Federal Circuit considered “a computer

readable medium” as a method claim because the fundamental structure of the medium claim was based on steps (p. 1373-1374). As a result, patents at dispute in the context of patent-eligibility may always refer to method claims.

Table 1 Claimed inventions in the selected cases.

Case Name Claimed Invention at Dispute

Gottschalk v. Benson  A method of converting signals from binary coded decimal form into binary

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number representations into binary number representations Parker v. Flook  A method for updating the value of at least one alarm limit on

at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons

In re Bilski  A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price In re Comiskey  A method for mandatory arbitration resolution regarding one or

more unilateral documents

 A system for mandatory arbitration resolution regarding one or more unilateral documents

SiRF Tech., Inc. v. Int’l Trade Comm’n

 A method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals Research Corp. Techs. v.

Microsoft Corp.

 A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask

 A method for the halftoning of color images Cybersource Corp. v. Retail

Decisions, Inc.

 A method for verifying the validity of a credit card transaction over the Internet

 A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet

4.2 How to Introduce a Legal Issue

When introducing a legal issue, a court may mention the factual background of a case. The factual background includes the acts of infringement, the details of the patent at dispute, the events occurring in the civil procedure, the arguments from both parties, and the opinions of lower courts or patent-examining agency.

Particularly for purposes of patent-eligibility, we focus on the details of the patent at dispute, the arguments from both parties, and the opinions of lower courts or patent-examining agency.

When describing a patent, or a claim, at dispute, the sentence examples are as follows:  In Gottschalk:

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 “They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals” (p. 64).

 _{“The conversion of BCD numerals to pure binary numerals can be done mentally} through use of the foregoing table” (p. 67).

 In Parker:

 “[Respondent’s process] contains a mathematical algorithm as one component” (p. 594).

 “Respondent’s application simply provides a new and presumably better method …” (p. 594-595).

 In In re Comiskey:

 “Comiskey’s patent application … claims a method and system for …” (p. 970).  _{“Independent claim 1 recites a ‘method for mandatory arbitration …” (Ibid).}  “Claim 1 states in full: …” (Ibid).

 “Comiskey’s application may be viewed as falling within the general category of ‘business method’ patents” (p. 975-976).

 In SiRF Tech., Inc.:

 “Claim 1 recites: …” (p. 1331).

 “Claim 1 … is expressly directed in its preamble to ‘calculating an absolute position …” (p. 1332)

 “[Claim 1] also refers to ‘computing absolute position’ by …” (Ibid).  In Research Corp. Techs.:

 “The invention presents functional and palpable applications in the field of computer technology” (p. 868).

 “These inventions address ‘a need in the art for a method of and apparatus for …” (Ibid).

 “This court also observes that the claimed methods incorporate algorithms and formulas …” (p. 869).

 In Cybersource Corp.:

 “We first address claim 3 of the [patent], which recites a method for verifying the validity of a credit card …” (p. 1370).

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 “[W]hile claim 3 describes a method of analyzing data …, nothing in claim 3

requires an infringer to use the Internet …” (Ibid).

 _{“All of claim 3’s method steps can be performed in the human mind, or by a} human using a pen and paper” (p. 1372).

When mentioning the arguments made by the parties, the sentence examples are as follows:  In In re Comiskey:

 “Comiskey has conceded that these claims do not require a machine” (p. 981).  In SiRF Tech., Inc.:

 “Appellant also challenge the Commission’s finding …” (p. 1331).  In Cybersource Corp.:

 “Cybersource acknowledges that the ‘Internet address’ recited in step (a) …” (p. 1370).

 “Cybersource further concedes that the ‘map of credit card umbers’ recited in step (b) …” (Ibid).

When summarizing lower courts’ or administrative agencies’ decisions, the sentence examples are as follows:

 “The ALJ held that … and therefore found them directed to patentable subject matter” (p. 1332).

 In Research Corp. Techs.:

 “[T]he district court held on summary judgment that the asserted claims … were invalid under 35 U.S.C. § 101” (p. 866).

 In Cybersource Corp.:

 “[T]he district court found that claim 3 recited …” (p. 1368).  “The court further found with respect to claim 2 that …” (Ibid). 4.3 How to Present Legal Doctrines and their Applications

 In Gottschalk:

 “Here the ‘process’ claim is so abstract and sweeping as to cover …” (p. 68).  “We do not hold that no process patent could ever qualify if it did not meet the

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 “The mathematical formula involved here has no substantial practical application except in connection with a digital computer” (Ibid).

 In Parker:

 “The rule that … rests, not on the notion that …, but rather on the more …” (p. 593).

 “The obligation to determine what … must precede the determination of whether …” (Ibid).

 “To a large extent our conclusion is based on reasoning derived from opinions” (p. 595).

 “Neither the dearth of precedent, nor this decision, should therefore be interpreted as reflecting a judgment that …” (Ibid).

 In In re Comiskey:

 “It is well-established that ‘whether the asserted claims …” (p. 975).

 “[T]here may be cases in which the legal question as to patentable subject matter may turn on subsidiary factual issues” (Ibid).

 “[T]he legal issue concerning patentability is not ‘a determination of policy …” (Ibid).

 “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo” (p. 1331).

 “We agree with the Commission that the claims in question satisfy this test” (p. 1332).

 “We also think that the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims” (p. 1332-1333).

 “In conclusion, we hold that the claims at issue are properly directed to patentable subject matter as they explicitly require the use …” (p. 1333).

 In Research Corp. Techs.:

 “This court also reviews questions about patent-eligible subject matter under 35 U.S.C. § 101 without deference (p. 867).

 “As a process, the subject matter qualifies under both the categorical language of section 101” (p. 868).

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 “This court proceeds to examine the Supreme Court’s three exceptions” (Ibid).  In Cybersource Corp.:

 “The categories of patent-eligible subject matter are set forth in § 101” (p. 1369).  “We are not persuaded by the appellant’s argument that the claimed method is tied

to a particular machine” (p. 1370).

 “Following the Supreme Court, we have similarly held that mental processes are not patent-eligible subject matter” (p. 1371).

4.4 How to Describe the Supreme Court’s Opinions

The Federal Circuit relies on the Supreme Court’s precedents to determine whether a claimed invention is patent-eligible. So, it is worthy observing how the Federal Circuit refers to the Supreme Court’s decisions.

In In re Comiskey, the sentence examples are as follows:

 “According to the Supreme Court, this constitutional limitation on patentability ‘was written against …” (p. 976).

 “[T]he Supreme Court has made clear that the 1952 language change had no substantive effect” (p. 977).

 “Supreme Court decisions after the 1952 Patent Act have rejected …” (Ibid).  “[T]he Supreme Court explained that …” (Ibid).

 “The Supreme Court has held that …” (p. 978).

 “In Diehr, the Supreme Court confirmed that …” (Ibid).  “The Supreme Court has stated that …” (p. 979).

In Research Corp. Techs., the sentence examples are as follows:

 “In its Bilski decision, the Supreme Court invoked again some of its earlier cases” (p. 867).

 “[T]he Supreme Court has ‘more than once cautioned that …” (Ibid).  “The Supreme Court has articulated only three exceptions” (Ibid).

 “The Supreme Court reasoned that laws of nature and natural phenomena fall outside …” (p. 867-868).

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868).

 “[T]he Supreme Court invited this court to develop …” (Ibid). In Cybersource Corp., the sentence examples are as follows:

 “The Supreme Court affirmed our Bilski decision, but in doing so it rejected use …” (p. 1369).

 “In holding that …, the Supreme Court has made clear that …” (p. 1371).  “In finding …, the Supreme Court appeared to endorse the view that …” (Ibid).  “The Supreme Court reaffirmed and extended its Benson holding” (Ibid).  “[T]he Supreme Court found in Benson that …” (p. 1375).

 “The Court reached that conclusion …” (p. 1376).

5. Findings and Further Research

This paper has some findings. First, the issue of “patent-eligibility” is often related to a process invention and rarely related to a product invention. A process claim is featured with a claim of several steps. Second, a way to explain why a claim is not patent-eligible follows some pattern. This paper lists some sentence examples that could serve as teaching examples for a course of Patent English. Further research needs to be done. For example, the use of verb tense is worthy being studied because the preference of “verb tense” is part of Patent English.

Acknowledgment

This paper presents a result of a research project (No. 101458T-10) financially supported by the College of Humanities & Social Science, National Taipei University of Technology. This article is based on a conference presentation at the 2012 Internatioanl Conference on English Teaching and Learning, organized by Department of Applied English, Southern Taiwan University of Science and Technology, Tainan City, Taiwan, May 25, 2012. The author thanks the participants for their comments and suggestions.

References

Abernathy, C. F. (2006). Law in the United States. St. Paul, MN, United States: Thomson/West. Basturkmen, H. (2006). Ideas and options in English for specific purposes. New Jersey, United

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States: Lawrence Erlbaum Associates, Inc.

Chemerinsky, E. (2007). Federal jurisdiction. New York, United States: Aspen Publishers. Chen, P.-H. (2011). A methodology of analyzing American patent law cases for

non-American-trained lawyers. In Proceedings of the 2011 International Conference and Workshop on

English for Specific Purposes (pp. 132-143) October 27-29, 2011. Taichung City, Taiwan.

Chisum, D. S., Nard, C. A., Schwartz, H. F., Newman, P. & Kieff, F. S. (2004). Principles of

patent law. New York, United States: Foundation Press.

Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).

Duff, J. C. (2010). The federal court system in the United States. Washington, D.C., United States: Administrative Office of the U.S. Courts. Retrieved March 11, 2012, from http://www.uscourts.gov/uscourts/FederalCourts/Publications/English.pdf

Eisenberg, R. S. (2012). Wisdom of the ages or dead-hand control? Patentable subject matter for diagnostic methods after in re Bilski. Case Western Reserve Journal of Law, Technology &

the Internet, 3, 1-65.

Gottschalk v. Benson, 409 U.S. 63 (1972). In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009).

Nedzel, N. E. (2008). Legal reasoning, research, and writing for international graduate students. New York, United States: Aspen Publishers.

Parker v. Flook, 437 U.S. 584 (1978).

Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010).

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Journal of Far East University General Education Vol.9 No.1 Issuer: Yen-Ren Wang

Publisher: Far East University General Education Center Editor-in-Chief: Hsiu-Jeng Huang

Assistant Editor: Chung-Chih Chang , Chiung-Hui Huang , Wei-Shu Lo, Bi-Hua Shie , Ting-Kao Lien

Address:No.49, Jhonghua Rd., Hsinshih Dist., Tainan City 74448, Taiwan, R.O.C. Telephone: 886-6- 5979566 ext 7501 Fax:886-6-5977010 Published in Jan. 2015 ISSN: 1997-7638 Copyright Reserved

Patent English in the Context of Patent-Eligibility - 政大學術集成

Journal of Far East University General Education Vol.9 No.1

中華民國一○四年一月出刊

中華民國九十六年七月創刊

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