Utility and Eligibility | Patently-O

by Dennis Crouch

In re Smith, 22-1301 (Fed. Cir. Sept 9, 2022) (nonprecedential). 

Smith is a brief opinion affirming the USPTO’s refusal to challenge Jason Smith’s patent on eligibility grounds.  The invention is a software program technique that enables prospects to buy property from a number of distributors.  The Board rejected the claims as directed to the summary concept of “storage, group, and show (e.g., retrieval) of knowledge, which has constantly been held . . . to represent an summary concept.”  The Appellate panel then discovered Smith’s arguments on the contrary unpersuasive.   In his 2011 post-Bilski article, Prof Risch wrote some concerning the overlap between utility and eligiblity and steered merger of the 2 doctrines. “The cleanest check would substitute the present patentable-subject-matter check altogether with eligibility utility.” Michael Risch, A Surprisingly Helpful Requirement, 19 Geo. Mason L. Rev. 57 (2011).  The issue  for Smith although is that the courts haven’t accepted Prof. Risch’s solutions.

Maybe probably the most fascinating argument by Smith was his assertion that “[t]he start line for the Board’s evaluation of ought to have been to find out whether or not the claims complied with the helpful requirement.” The temporary goes on to argue that: “Whether it is helpful, it’s by legislation patent eligible.”  On attraction, the Federal Circuit famous first that Smith’s argument is “with out quotation” after which discovered that additionally it is with out advantage.  Specifically, the courtroom concluded that utility and eligibility are separate and distinct doctrines: “utility just isn’t the check for patent eligibility.” The Supreme Court docket alluded to this distinction in its Myriad Genetics choice. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (isolation of “necessary and helpful gene [is] not an act of invention”).  Additional, utility just isn’t a prong of the Alice/Mayo evaluation.

Per Curiam Opinion by Judges Lourie, Dyk, and Hughes
James Mitchell (Mitchell IP) represented Mr. Smith; Sarah Craven (USPTO Affiliate Solicitor) was on the opposite aspect.

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