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More musings on patentability in the United States McRo v Bandai


7th Oct 2016

We have been reporting on the gradual trickle of cases confirming the patent-eligibility of software related inventions from the US Courts. In September 2016 the Court of Appeal for the Federal Circuit (CAFC) reversed the lower court’s decision and found that the claims of US 6,307,576, (McRo) related to patent-eligible subject matter.

The patent was concerned with the automation of lip synchronisation in animated characters.

There is presently a two-part test for determining patent-eligibility (known as patentability on this side of the Pond). First it must be considered whether the claim is directed to an abstract idea. If it is not, the claim is patent-eligible. If it is so directed, it is only patent-eligible if the claim as a whole amounts to something ‘significantly more’ than an abstract idea.

The lower court had held that the claimed invention was no more than an abstract idea but this finding was reversed on appeal.

In considering the first part of the test, the CAFC considered what was meant by the invention being directed to an abstract idea. Briefly, they found that the exclusion of abstract ideas was intended to exclude claims directed to results rather than processes that produce results. They cautioned against an over simplification of the claims when applying the abstract idea test, stating that courts “must be careful to avoid over simplifying the claims by looking at them generally and failing to account for the specific requirements of the claims”. They re-stated the view expressed in Enfish v Microsoft that the court should “look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery”.

In this case, the claims were directed to a rules-based lip synchronisation process and the rules were incorporated into the claims. The court found that the structure of the limited rules reflected a specific implementation. It was not shown to be one which any animator engaged in the search for an automation process would likely have utilised. As such, the claim was directed to a specific process for automatically animating characters and so did not pre-empt approaches that use rules of a different structure or different techniques. The claim was therefore not directed to an abstract idea and it was not necessary to consider the second part of the test.

The case is helpful in that it puts a little more flesh on the bones of the two-step patent-eligibility test. In prosecution of applications before the United States Patent Office (USPTO) we have been experiencing rejections of claims as being directed to abstract subject matter with little or no attempt to analyse the detail of the claim. This case helps to clarify that the USPTO and courts must look at the specifics of the claim language rather than the generality of the claim. The approach taken gives encouragement to applicants and also useful pointers to how best to draft claims to avoid or overcome patent-eligibility rejections. From our European standpoint we continue to observe that US originating cases which are drafted with the two step patent-eligibility test in mind are less likely to have problems with the EPO’s ‘Technical Solution to a Technical Problem’ test that has often been the case in the past. It is interesting, at least to us, to consider whether the USPTO and EPO are converging. While the answer is not yet clear, the two practices are clearly closer than they used to be.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

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Patrick Lloyd
Partner
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