Des nuages à l’horizon aux États-Unis…

La croyance voulant que “Tout sous le soleil…” (“Anything under the sun”) peut se breveter aux États-Unis pourrait devoir être réviser. En effet, dans la cause In re Comiskey, Fed. Cir., No. 2006-1286, l’avocat du USPTO a déclaré que des revendications de méthodes d’affaires (“Business method claims”) doivent transformer le sujet des revendications, que celui-ci soit concret (comme vulcaniser du caoutchouc synthétique) ou intangible (comme des données ou un signal) pour qu’il soit brevetable sous le paragraphe 35 U.S.C. §101.

Plus de détails en anglais…

Solicitor’s Brief

Not every useful process qualifies as a Section 101 “process,” according to the Solicitor, arguing that patentable processes should be confined to steps that transform either tangible or intangible subject matter. The brief notes that the Supreme Court has found two instances in which process claims satisfied Section 101: (1) where the process was tied to a particular apparatus; or (2) where the process operated to change materials to a different state or thing.

Under Federal Circuit case law, according to the Solicitor, that required the transformation of tangible or intangible subject matter has been recognized in cases such as Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992), In re Alappat, 33 F.3d 1526, 1543 (Fed. Cir. 1994) (en banc), State Street Bank and Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications Inc., 175 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir. 1999). The brief concluded as follows:

Accordingly, the PTO believes that Comiskey’s claims are unpatentable under section 101. The claims are similar to those rejected in [In re Schrader, 22 F.3d 290 (Fed. Cir. 1994)], while distinguishable from those at issue in Arrhythmia, Alappat, State Street, and AT&T. Comiskey acknowledges that the claims do not require any machine to carry out the invention. The claims do not transform any article to a different state or thing. Nor do the claims recite a machine that employs a mathematical algorithm to transform data. The final arbitration decision produced by the claims, while perhaps “useful” in one sense, is simply not the product of any transformation as understood in the case law. Accordingly, the claims fail to meet any of the conditions set forth in the case law of either the Supreme Court or this Court.

Applicant’s Brief

The applicant’s supplemental brief argued that the Section 101 issue was raised for the first time at oral argument and that the record contains no factual consideration of any factual issues related to the question. He argued that the court has no statutory authority to raise the question sua sponte and decide it where it was not considered below.

On the merits, the applicant points to Section 101’s use of the expansive term “any” in reference to the process category of patentable subject matter, and notes that the claim indisputably recites a process for mandatory arbitration resolution. He also contended that the application claims no abstract idea, law of nature, or natural phenomenon, thus avoiding the judicial exclusions to statutory subject matter. The invention is patentable as it produces a useful, tangible, and concrete result, he concluded.

Claim Language

Claim 1 of the application reads as follows:

A method for mandatory arbitration resolution regarding one or more unilateral documents comprising the steps of:

enrolling a person and one or more unilateral documents associated with the person in a mandatory arbitration system at a time prior to or as of the time of creation of or execution of the one or more unilateral documents;

incorporating arbitration language, that is specific to the enrolled person, in the previously enrolled unilateral document wherein the arbitration language provides that any contested issue related to the unilateral document must be presented to the mandatory arbitration system, in which the person and the one or more unilateral documents are enrolled, for binding arbitration wherein the contested issue comprises one or more of a challenge to the documents, interpretation of the documents, interpretation or application of terms of the documents and execution of the documents or terms of the documents;

requiring a complainant to submit a request for arbitration resolution to the mandatory arbitration system wherein the request is directed to the contested issue related to the unilateral document containing the arbitration language;
conducting arbitration resolution for the contested issue related to the unilateral document in response to the request for arbitration resolution;

providing support to the arbitration resolution; and

determining an award or a decision for the contested issue related to the unilateral document in accordance with the incorporated arbitration language, wherein the award or the decision is final and binding with respect to the complainant.

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