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Subject Matter Eligibility of Claims Comprising Software-Oriented Elements in U.S. Patent Law: A Technology Domain-based Analysis = = 美國專利法之軟體專利適格性: 以技術領域分析 /

紀錄類型:	書目-電子資源 : Monograph/item
正題名/作者:	Subject Matter Eligibility of Claims Comprising Software-Oriented Elements in U.S. Patent Law: A Technology Domain-based Analysis =/ Gingras Sylvain.
其他題名:	美國專利法之軟體專利適格性: 以技術領域分析 /
作者:	Sylvain, Gingras,
面頁冊數:	1 electronic resource (223 pages)
附註:	Source: Masters Abstracts International, Volume: 86-04.
Contained By:	Masters Abstracts International86-04.
標題:	Innovations. -
電子資源:	https://pqdd.sinica.edu.tw/twdaoapp/servlet/advanced?query=31583127
ISBN:	9798383614464

Subject Matter Eligibility of Claims Comprising Software-Oriented Elements in U.S. Patent Law: A Technology Domain-based Analysis = = 美國專利法之軟體專利適格性: 以技術領域分析 /
Sylvain, Gingras,

Subject Matter Eligibility of Claims Comprising Software-Oriented Elements in U.S. Patent Law: A Technology Domain-based Analysis =美國專利法之軟體專利適格性: 以技術領域分析 /Gingras Sylvain. - 1 electronic resource (223 pages)

Source: Masters Abstracts International, Volume: 86-04.

With the relentless advancement of computer technology, the importance of patent claims featuring software-oriented elements is ever increasing. However, the eligibility of such claims often collides against long established rules that prevent the monopolization of abstract ideas because exclusive rights to those may impede rather than promote technological progress. In U.S. Patent Law, these rules have been defined by judicial precedents rather than codified. We1 review five key Supreme Court cases that have drawn the broad contours of the law. These cases reveal that abstract ideas such as mathematical algorithms and financial practices do not constitute eligible subject matter. However, when such ineligible concepts are incorporated with additional elements, the courts must carefully decide whether the combination is sufficient to represent eligible subject matter, as in the rubber making method of the Diehr case, or whether they are insufficient, as in the generic limitation to a class of chemical processes in Flook. While the Alice case has provided a long needed inquiry framework to improve predictability, our analysis demonstrates that there remains much challenge in predictably deciding cases where the factual situation lies in the hazy zone between the cases of Diehr and Flook. To better understand the contours of the law in this zone, we performed a technology domain-based analysis of twenty-four cases at the Federal Circuit as well as fifteen prosecution cases at the USPTO. Through this analysis, we observed that claims in the general data processing and storage domain are often found ineligible for merely implementing an abstract idea using conventional steps on a generic computer. In the online services domain, they are often rejected for claiming an abstract business practice. In the graphic display and user interface domain they often rejected for merely presenting selected data. In all domains, we observed that claims applying an unconventional arrangement to achieve the result are generally found eligible. Such eligible arrangements were encountered particularly often in the domain of data transfer and security. Through the analysis of patent prosecution records, we observed how USPTO examiners have applied the Alice test, particularly following the publication of the 2019 Revised Patent Subject Matter Eligibility Guidelines. In the emerging technology of autonomous driving, we observed that claims were often rejected for merely replicating human driver behaviour, while in the blockchain-based fintech domain they were often rejected for reciting abstract financial practices implemented on a conventional blockchain system. By examining the responses to amendments, we obtained valuable insights on the nature of the additions required to overcome the examiners' initial Alice rejections, which usually involve adding specificity regarding an unconventional arrangement. Concluding the thesis, we review results as a whole and discuss their implications for industries, firms, practitioners, as well as for Taiwan.

English

ISBN: 9798383614464Subjects--Topical Terms:

754112
Innovations.
Subjects--Index Terms:

專利請求項

Subject Matter Eligibility of Claims Comprising Software-Oriented Elements in U.S. Patent Law: A Technology Domain-based Analysis = = 美國專利法之軟體專利適格性: 以技術領域分析 /
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500 $a Advisors: Liu, Shang-Jyh; Chen, Thomas.
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520 $a With the relentless advancement of computer technology, the importance of patent claims featuring software-oriented elements is ever increasing. However, the eligibility of such claims often collides against long established rules that prevent the monopolization of abstract ideas because exclusive rights to those may impede rather than promote technological progress. In U.S. Patent Law, these rules have been defined by judicial precedents rather than codified. We1 review five key Supreme Court cases that have drawn the broad contours of the law. These cases reveal that abstract ideas such as mathematical algorithms and financial practices do not constitute eligible subject matter. However, when such ineligible concepts are incorporated with additional elements, the courts must carefully decide whether the combination is sufficient to represent eligible subject matter, as in the rubber making method of the Diehr case, or whether they are insufficient, as in the generic limitation to a class of chemical processes in Flook. While the Alice case has provided a long needed inquiry framework to improve predictability, our analysis demonstrates that there remains much challenge in predictably deciding cases where the factual situation lies in the hazy zone between the cases of Diehr and Flook. To better understand the contours of the law in this zone, we performed a technology domain-based analysis of twenty-four cases at the Federal Circuit as well as fifteen prosecution cases at the USPTO. Through this analysis, we observed that claims in the general data processing and storage domain are often found ineligible for merely implementing an abstract idea using conventional steps on a generic computer. In the online services domain, they are often rejected for claiming an abstract business practice. In the graphic display and user interface domain they often rejected for merely presenting selected data. In all domains, we observed that claims applying an unconventional arrangement to achieve the result are generally found eligible. Such eligible arrangements were encountered particularly often in the domain of data transfer and security. Through the analysis of patent prosecution records, we observed how USPTO examiners have applied the Alice test, particularly following the publication of the 2019 Revised Patent Subject Matter Eligibility Guidelines. In the emerging technology of autonomous driving, we observed that claims were often rejected for merely replicating human driver behaviour, while in the blockchain-based fintech domain they were often rejected for reciting abstract financial practices implemented on a conventional blockchain system. By examining the responses to amendments, we obtained valuable insights on the nature of the additions required to overcome the examiners' initial Alice rejections, which usually involve adding specificity regarding an unconventional arrangement. Concluding the thesis, we review results as a whole and discuss their implications for industries, firms, practitioners, as well as for Taiwan.
520 $a 隨著電腦技術的不斷進步，包含有軟體元素的專利請求項數量不斷增加。然而，這些請求項往往與長期以來專利不授予抽象概念的規則相衝突。這是因為這種專利請求項會阻礙而不是促進技術進步。在美國專利法中，這些規則是由法院案例定義的，而不是明定於法條中。我們回顧了最高法院的五個關鍵案例，這些案例揭示了法律的大致輪廓，明示了抽象概念，如數學演算法灋和財務運作是不專利適格性的。然而，當這類不具專利適格性的概念與其他技術要素結合時，法院必須決定這種結合是否足以改變適格性的判斷。雖然"Alice"案提供了一個架構來判斷適格性的議題，然而我們的分析顯示，這個判斷仍然存在許多問題。特別是當個案的事實介於"Flook"案和"Diehr"案情況之間時，仍然難以判別。為了提高對此一複雜議題的理解，本文分析了 24 個美國聯邦巡迴法院案件和 15 個美國專利申請案。透過不同技術領域的分析，我們觀察到個別領域的專利請求項的特殊性以及其適格性的可能規範。本文的第二部分，分析了美國專利商標局的專利申請記錄，以瞭解審查員如何應用"Alice"測試核駁專利適格性。從案例的實證分析中，得以觀察申請人如何通過"Alice"測試的檢驗，通常涉及添加特別的技術元素或應用，使得請求項更為具體與特定。最後，本文總結研究結果，並討論科技產業、企業、實務工作者和臺灣的影響。.
546 $a English
590 $a School code: 2648
650 4 $a Innovations. $3 754112
650 4 $a Inventors. $3 534219
650 4 $a Information technology. $3 532993
650 4 $a Intellectual property. $3 572975
653 $a 專利請求項
653 $a 專利適格性
653 $a 軟體專利
653 $a Patent claims
653 $a Subject-matter eligibility
653 $a Software patents
690 $a 0489
690 $a 0513
710 2 $a National Yang Ming Chiao Tung University. $b Institute of Technology Law. $e degree granting institution. $3 3821240
720 1 $a Liu, Shang-Jyh $e degree supervisor.
720 1 $a Chen, Thomas $e degree supervisor.
773 0 $t Masters Abstracts International $g 86-04.
790 $a 2648
791 $a M.Law
792 $a 2022
856 4 0 $u https://pqdd.sinica.edu.tw/twdaoapp/servlet/advanced?query=31583127