Earlier today, the U.S. Supreme Court heard oral arguments in Alice Corporation v CLS Bank. The question before the court is whether or not an otherwise patent-eligible invention becomes patent-ineligible if the claim recites that the invention is implemented on a computer. There's plenty of coverage of that case elsewhere. Of interest to applicants in Israel is a recent decision of the Israel Commissioner of patents in which this same question was addressed.
The case concerned Israel Patent Application No. 190125, the national phase of PCT/IL2006/000921 (WO 2007/03198). (Theoretically, the Israel application has been published online and its file history visible over the internet, but the ILPTO still hasn't gotten around to posting any of the documents online.) After several rounds of prosecution during which the examiner refused to allow the application, the applicant amended the claims to match those of the corresponding US 8199935, and asked that the application be allowed pursuant to Section 17(c) of the statute.
As has been discussed on this blog before, 17(c) is meant to reduce the ILPTO's workload, by allowing it to piggyback on the work of other offices it respects with regard to novelty, inventive step, sufficiency of disclosure and unity of invention. 17(c) does not overcome patent-eligibility issues, and the statute reserves to the Commissioner and the head examiner the ability to refuse a 17(c) request if the Commissioner finds an undefined "special reason" not to grant the request.
In the present case, Examiner said that the new claims (below) were not directed to a patent-eligible invention, being directed "entirely to the field of software...and therefore being no more than an abstract application of a pure thought process and/or a business method..."
1. A system for facilitating access to multiple audio layer items over a communication network comprising:
a network accessible media database, connected to a communication network, which stores multiple audio layer items each having a plurality of separate and different audio layers which are independently accessible; and
16. A subscriber application for facilitating access to multiple audio layer items via a communication network, comprising:
a port for communicating with a media database via a communication network; and
an interface configured to allow a user to select a multiple audio layer item from a plurality of multiple audio layer items each having a plurality of separate and different audio layers and to address separately at least some of said plurality of separate and different audio layers of said selected multiple audio layer item; and
a mixing module configured for digitally synchronizing and mixing at least some of said plurality of audio layers to create locally, in the memory of a computing unit, a remix representing a mixed digital audio signal.
19. A remote sale system for facilitating access to layered media items, said remote sale system comprising:
a connecting device for connecting a plurality of customer computers located at remote sites to a central computer associated with a database of a plurality of layered audio items each comprising a plurality of separate and different audio layers;
a management device for receiving, via a network from a plurality of remote client terminals of a plurality of potential customers, a plurality of requests each to separately access at least one of a plurality of audio layers of a selected layered audio item of said plurality of layered audio items and providing, in response to each said request, a separate access to respective said at least one audio layer of said selected layered audio item, each said audio layer is associated with a price; and
a purchasing device for debiting said plurality of potential customers according to said separate access and respective said price.
23. A system for facilitating access to multiple audio layer items over a communication network comprising:
a network accessible media database, connected to a communication network, which stores a plurality of multiple audio layer items such that each layer of each said audio layer item is independently accessible; and
at least one subscriber application for receiving a user selection of at least one of said multiple audio layer items, connecting to said media database, and receiving said first multiple audio layer item, said at least one subscriber application having a mixing module configured for digitally synchronizing and mixing at least one selected audio layer of said selected multiple audio layer item to create locally an audio remix representing a mixed digital audio signal.
In deciding the matter, the Commissioner first dispensed with the notion that there might be a "special reason" to refuse the 17(c) request. He reasoned that the claims had been so significantly changed during the course of prosecution that there was no basis to think that the prior art cited against the first two vesions of the claims was still relevant to the newest version sumitted as the basis for the 17(c) request.
This left open the question of whether or not the claims defined a patent-eligible invention. The Examiner had asserted that the addition of the recitation "a mixing module" in the claims did not render them patent-eligible, since this was just a standard operation for a computer, and there was no new "reciprocity" between the various components of the system. The Commissioner disagreed, saying that the end result of the operation of the system was to create a new audio file made partially from layers of the original audio files via a system that facilitated remote access and work. Thus, he concluded, the final result was achieved through the creation of new reciprocal connections between the physical components of the system, and the invention was patent-eligible.
While it's good that the Commissioner sided with the view that just because something is done on computer, that doesn't make that something patent-ineligible, he reasoning is still faulty in that at points he mixes what are properly questions of novelty and inventive step into the patent-eligibility analysis.
It's not clear from the Commissioner's decision how this matter came before him in a way that necessitated a written decision, and as noted, none of the documents in this case that might shed light on the matter have been posted online. Nevertheless, it's clear that Because only the Commissioner and the head examiner can refuse a 17(c) request, and because