Analyzing the Scope and Claims of United States Patent 9,301,932: A Comprehensive Guide
Introduction
Understanding the scope and claims of a patent is crucial for inventors, businesses, and legal professionals. This article will delve into the specifics of United States Patent 9,301,932, exploring its claims, scope, and the broader patent landscape.
Background of the Patent
Patent Title and Abstract
The patent in question, U.S. Patent 9,301,932, is titled "Authentication Method" and pertains to a method of authenticating the identity of a user performing a transaction at a terminal, such as a computer. The abstract describes the method as involving the activation of an authentication function on the user’s mobile device to enhance security and simplicity[5].
Claims Analysis
Claim Structure
Patent claims are the heart of any patent, defining the scope of the invention. For U.S. Patent 9,301,932, the claims must be analyzed to understand what is protected.
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Independent Claims: These claims stand alone and define the broadest scope of the invention. In the case of the '932 patent, the independent claims focus on the specific method of authentication involving mobile devices and remote transaction partners[5].
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Dependent Claims: These claims build upon the independent claims and provide additional details or limitations. They help to narrow down the scope and often add specific features or steps to the method claimed.
Claim Scope and Patent Eligibility
The scope of the claims is critical in determining patent eligibility. Under the Alice/Mayo test, claims must not be directed to abstract ideas without an inventive concept.
- Step One of Alice/Mayo Test: The district court in the case of CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC initially held that the claims of the '932 patent were directed to the abstract idea of authentication. However, the Federal Circuit reversed this decision, finding that the claims recited a specific improvement to a particular computer-implemented authentication technique, thus making them patent-eligible under step two of the Alice/Mayo test[5].
Patent Scope and Examination Process
Narrowing of Claims
During the patent examination process, claims often undergo revisions to ensure they meet the criteria for patentability. Research indicates that narrower claims at publication are associated with a higher probability of grant and a shorter examination process compared to broader claims[3].
- Claim Length and Count: The examination process tends to narrow the scope of patent claims in terms of both claim length and claim count. This narrowing is more significant when the duration of the examination is longer[3].
International and Global Patent Landscape
Global Dossier and IP5 Offices
To understand the global implications of a patent, tools like the Global Dossier are invaluable. This service provides access to the file histories of related applications from participating IP Offices, including the IP5 Offices (USPTO, EPO, JPO, KIPO, and CNIPA). This helps in identifying the patent family and related applications filed at different offices[1].
Searchable Databases
Searching international patent databases is essential to ensure the novelty and non-obviousness of an invention. Databases such as esp@cenet (EPO), PATENTSCOPE (WIPO), and those provided by the Japan Patent Office (JPO) and China National Intellectual Property Administration (CNIPA) offer comprehensive resources for global patent searches[1].
Legal and Regulatory Framework
U.S. Patent and Trademark Office (USPTO)
The USPTO is the agency responsible for granting U.S. patents and registering trademarks. Understanding the USPTO's guidelines and resources, such as the Patent Public Search tool and the Patent and Trademark Resource Centers (PTRCs), is crucial for navigating the patent landscape[2].
Patent Subject Matter Eligibility
The USPTO has issued revised guidance on patent subject matter eligibility, which includes a more detailed eligibility analysis under the Alice/Mayo test. This guidance helps in determining whether a patent claim is directed to a patent-ineligible concept[4].
Practical Implications and Strategies
Conducting Preliminary Searches
Before filing a patent application, conducting a preliminary search using tools like the Patent Public Search or visiting a Patent and Trademark Resource Center can help identify prior art and ensure the novelty of the invention[1].
Managing Patent Assignments and Ownership
Understanding how to search for patent assignments and changes in ownership is vital for maintaining clear title to a patent. The Patent Assignment Search website provided by the USPTO facilitates this process[1].
Case Law and Judicial Precedents
Federal Circuit Decisions
Decisions from the Federal Circuit, such as in the case of CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, provide valuable insights into how courts interpret patent claims and determine patent eligibility. These precedents can guide inventors and legal professionals in drafting and defending patent claims[5].
Key Takeaways
- Claims Analysis: Understanding the structure and scope of patent claims is essential for determining what is protected.
- Patent Eligibility: Claims must pass the Alice/Mayo test to ensure they are not directed to abstract ideas without an inventive concept.
- Global Patent Landscape: Utilizing tools like the Global Dossier and international patent databases is crucial for global patent strategy.
- Legal Framework: Familiarity with USPTO guidelines and case law is necessary for navigating the patent system effectively.
- Practical Strategies: Conducting preliminary searches and managing patent assignments are key steps in the patent process.
FAQs
Q: What is the main focus of U.S. Patent 9,301,932?
A: The main focus of U.S. Patent 9,301,932 is an authentication method involving the activation of an authentication function on a user’s mobile device to enhance security and simplicity during transactions.
Q: How do you determine if a patent claim is eligible under the Alice/Mayo test?
A: To determine if a patent claim is eligible, you must first identify whether the claim is directed to a patent-ineligible concept (step one). If so, you then determine if the claim includes an inventive concept that transforms the abstract idea into a patent-eligible invention (step two).
Q: What resources are available for conducting a preliminary U.S. patent search?
A: Resources include the Patent Public Search tool, Patent and Trademark Resource Centers (PTRCs), and the USPTO Public Search Facility. Additionally, international databases like esp@cenet and PATENTSCOPE can be used for global searches[1].
Q: How does the Global Dossier service benefit patent applicants?
A: The Global Dossier service provides access to the file histories of related applications from participating IP Offices, allowing users to see the patent family, dossier, classification, and citation data for these applications. This helps in identifying related applications and streamlining the global patent process[1].
Q: What is the significance of narrowing claims during the patent examination process?
A: Narrowing claims during the examination process is associated with a higher probability of grant and a shorter examination process. This narrowing helps to ensure that the claims are specific and meet the criteria for patentability[3].
