Utility and Eligibility | Patently-O

by Dennis Crouch

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 Cir. Sept 9, 2022) (nonprecedential). 

Smith is a short opinion affirming the USPTO’s refusal to issue Jason Smith’s patent on eligibility grounds.  The invention is a software method that allows customers to purchase assets from multiple vendors.  The Board rejected the claims as directed to the abstract idea of “storage, organization, and display (e.g., retrieval) of data, which has consistently been held . . . to constitute an abstract idea.”  The Appellate panel then found Smith’s arguments to the contrary unpersuasive.   In his 2011 post-Bilski article, Prof Risch wrote some about the overlap between utility and eligiblity and suggested merger of the two doctrines. “The cleanest test would replace the current patentable-subject-matter test altogether with eligibility utility.” Michael Risch, A Surprisingly Useful Requirement, 19 Geo. Mason L. Rev. 57 (2011).  The problem  for Smith though is that the courts have not accepted Prof. Risch’s suggestions.

Perhaps the most interesting argument by Smith was his statement that “[t]he starting point for the Board’s analysis of should have been to determine whether the claims complied with the useful requirement.” The brief goes on to argue that: “If it is useful, it is by law patent eligible.”  On appeal, the Federal Circuit noted first that Smith’s argument is “without citation” and then found that it is also without merit.  In particular, the court concluded that utility and eligibility are separate and distinct doctrines: “utility is not the test for patent eligibility.” The Supreme Court alluded to this distinction in its Myriad Genetics decision. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (isolation of “important and useful gene [is] not an act of invention”).  Further, utility is not a prong of the Alice/Mayo analysis.

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

= = =