MPEP 1502.01 – Design vs. Utility

MPEP 1500 – Design Patents

MPEP 1502.01 – Distinction between design and utility patents

Utility -> Protects the way an article is used and works (35 USC 101)

Design -> Protects the way an article looks (35 USC 171) – Ornamental appearance (shape/configuration)

Common differences:

  1. Patent Term – Utility (20 years from earliest effective filing date); Design (Based on date of grant; 14 years if filed prior to May 13, 2015, 15 years if filed on or after May 13, 2015).
  2. Maintenance fees – Utility (required); Design (none)
  3. Claims – Utility (one or more); Design (one)
  4. Restriction – Utility (discretionary by examiner); Design (required)
  5. International – Utility (PCT); Design (Hague Agreement)
  6. Foreign priority – Utility (file within 12 months); Design (file within 6 months)
  7. Provisional – Utility (Yes); Design (No)
  8. RCE – Utility (Yes); Design (No)
  9. CPA – Utility (No); Design (Yes –  See – 37 CFR 1.53(d)(1))
  10. Publication under 35 USC 122(b)(2) – Utility (Yes); Design (No).

 

 

MPEP 2104 & “the height of abstraction”

MPEP 2100 – Patentability

MPEP 2104 – Patentable Subject Matter

35 U.S.C. 101 – Inventions patentable

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title.”

The 101 statute has four requirements:

  1. One and only one patent may be obtained for an eligible invention. Statutory double patenting -> MPEP 804
  2. Before Sept. 16, 2012, the inventor was the applicant. On or after Sept. 16, 2012, all inventors must be identified. Inventorship -> MPEP 2137.01
  3. The invention must fall within one of the four statutory categories of invention. Subject matter eligibility -> MPEP 2106
  4. The invention must have utility (quality or condition of being useful). Utility -> MPEP 2107

Four statutory categories of invention:

  1. process
  2. machine
  3. manufacture
  4. composition of matter

Alice strikes again. The Federal Circuit affirmed a lower court’s ruling that a FormFree Holdings Corp. patent (U.S. 8,762,243) is invalid for claiming only abstract ideas.

Claim 1:

1. A computer-implemented method for providing certified financial data indicating financial risk about an individual, comprising:
(a) receiving a request for the certified financial data;
(b) electronically collecting financial account data about the individual from at least one financial source,
(c) transforming the financial account data into a desired format;
(d) validating the financial account data by applying an algorithm engine to the financial account data to identify exceptions, wherein the exceptions indicate incorrect data or financial risk;
(e) confirming the exceptions by collecting additional data and applying the algorithm engine to the additional data,
(f) marking the exceptions as valid exceptions when output of the algorithm engine validates the exceptions; and
(g) generating, using a computer, a report from the financial account data and the valid exceptions,
wherein the financial account data comprises at least one of real-time transaction data, real time balance data, historical transaction data, or historical balance data; and the algorithm engine identifies a pattern of financial risk; the method is computer implemented, and steps (c), (e), and (f) are executed via the computer or a series of computers.

“…a method for collection, analysis, and generation of information reports, where the claims are not limited to how the collected information is analyzed or reformed, is the height of abstraction.”

Fed. Circ. Affirms Credit Report Patent Invalid Under Alice