PATENTABLE SUBJECTS IN THE INTERNET OF THINGS ALICIA SHAH

MY IDEA 2

WHAT’S THE LAW 3 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. – 35 USC Section 101 “[E]xception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” – Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct (2014)

SCOTUS SAYS “WE MEAN IT THIS TIME” 4 “We have long held … Laws of nature, natural phenomena, and abstract ideas are not patentable. … We have interpreted … in light of this exception for more than 150 years.” – Formula for computing alarm limits in catalytic conversion process – Parker v. Flook, 98 S.Ct (1978) – Computer-implemented scheme for buying assets in order to hedge financial risk – Bilski v. Kappos, 130 S.Ct (2010) – Using a computer to measure blood metabolites in order to calibrate dosage – Mayo Collaborative Services v. Prometheus, 132 S.Ct (2012) – Computer-implemented scheme of mitigating settlement risk – Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct (2014)

WHAT ARE UNPATENTABLE ABSTRACT IDEAS? 5 First, determine whether the claims at issue are directed to patent- ineligible concepts (laws of nature, natural phenomena, and abstract ideas) The “abstract ideas” category includes: – fundamental economic practices – methods of organizing human activity – an idea itself

WHAT ARE UNPATENTABLE ABSTRACT IDEAS? 6 Second, search for an inventive concept (an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself) Note: “[M]ere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention.”

WHAT IS PATENTABLE POST-ALICE? 7 Patentable claims do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. – Infrastructure – Implementation A patentable solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks – Security

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