The combination of low cost, small size and simplicity means that many Dash Buttons can be placed strategically throughout a home, to quickly reorder common household items.
Chances are, you have been hearing a lot about the "Internet of Things" (or IoT) lately. Although the concept dates back decades, and the term itself was coined in the 1990s, recent advances are now enabling an explosion of supremely clever devices and applications. However, despite the ingenuity of IoT developers, recent developments in the law could make it difficult for them to patent their innovations.
Amazon.com recently announced a device it calls Dash Button. (https://www.amazon.com/oc/dashbutton/) The device is straightforward, and essentially consists of a battery, a wireless interface, a microcontroller and a single button. When the button is pressed, Dash Button transmits an order for a preconfigured product – laundry detergent, for example – to be fulfilled by Amazon.com.
The combination of low cost, small size and simplicity means that many Dash Buttons can be placed strategically throughout a home, to quickly reorder common household items. It is a simple idea, but a clever and useful one. Should it be patentable?
The U.S. Supreme Court recently wrestled with the issue of patentable subject matter, and its decision appears to suggest that IoT devices like Dash Button might not be patent eligible if they merely take an "abstract idea" and "apply it" using generic computer hardware.
In the case – Alice Corp. v. CLS Bank (http://en.wikipedia.org/wiki/Alice_Corp._v._CLS_Bank_International ) – the Court drew a distinction between applications that merely apply an abstract idea in a conventional way, and those that use an abstract idea to solve a technological problem.
The Court also pointed out that, at some level, "all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." To assist in distinguishing between patents that seek to lock up these "building blocks of human ingenuity" and those that integrate the building blocks into something more, the Court reiterated a twopart test. In the first part, we assess whether the patent claims contain ineligible concepts (e.g., an abstract idea).
If the patent claims do contain an ineligible concept, there may still be patent eligible subject matter if there is an "inventive concept" that amounts to "significantly more" than the ineligible concept itself.
The difficulty is in defining what, exactly, constitutes an abstract idea. For example, does Dash Button relate to an abstract idea? If so, is the abstract idea one of "ordering goods over the Internet" or something more specific, like "entering product, shipping and billing information when placing an order"?
Problematically, as the definition of the abstract idea becomes more specific, it becomes increasingly difficult to demonstrate the "significantly more" required to attain patent eligibility. The U.S. Supreme Court has so far declined opportunities to define clear rules for the determination of abstract ideas.
Despite this uncertainty, courts have ruled in favour of patentees since the Alice decision. The U.S. Federal Circuit court recently held patentable an ecommerce system that modified the conventional web browsing experience, ruling that "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." he case – DDR Holdings v. Hotels.com (http://en.wikipedia.org/wiki/DDR_Holdings_v._Hotels.com ) – demonstrates the importance of emphasizing solutions to technological problems when preparing patent applications.
This is an issue likely to vex both inventors and patent agents for the foreseeable future, and not just with respect to IoT devices.
At least until the dust settles, prospective patentees will need to carefully consider their concepts and craft patent applications – preferably identifying specific solutions to technological problems – to avoid having their inventions characterized as mere abstract ideas.
This article was originally publishedon canadianelectronics.ca.
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