Federal Circuit revises its decision in the “Comiskey case”

In Insights, Uncategorized

28 January, 2009

On January 13, 2009 the United States Court of Appeals for the Federal Circuit (CAFC) published an amended decision in the Comiskey case, revising its original decision from 2007. The Comiskey patent application claims a method and system for mandatory arbitration involving legal documents such as wills or contracts.

In the original decision the CAFC considered the method to be an abstract idea (processes of human thinking) and thus not patentable subject matter under 35 U.S.C. §101. The system, which generally describes the same process but includes a plurality of “modules”, was on the other hand considered patentable subject matter based on the addition of the modules. However, the CAFC regarded the modules to be a routine addition of modern electronics to an otherwise unpatentable invention, thus creating a prima facie case of obviousness.

Consequently, the USPTO was remanded to determine whether the mere addition of modern computers and communication devices would be obvious, not taking into account the system as a whole but only the actual system modules. This separation of the system between the process steps and the system module when considering obviousness (35 U.S.C. §103) created uncertainty regarding if computer implemented business methods, such as in the area of e-commerce, would be considered patentable.

However, in the revised decision the CAFC applies a more liberal interpretation of the system modules, thereby opening up for the Comiskey system to be seen as a specialized machine implementation that taken as a whole including the process steps and the functionality of the system modules could be patentable under §101. On the other hand, the CAFC did not make any judgment as to whether the system should be considered patentable under §101, but rather once again leave that to the USPTO to decide.

As a result, the case has been remanded back to the USPTO for determining whether §101 is satisfied. In its future decision the USPTO will possibly consider the recent Bilski decision for determining if the system according to Comiskey passes the machine-or-transformation test.

If you would like to read the revised Comiskey decision it can be found here.

Magnus Nilsson, Patent Attorney

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