May 9, 2018

Resolving a Reissue Standoff: Proving Patent Eligibility in the Face of the ‘Abstract Idea’ Argument

The owner of a 3D printing company found himself in a bind when applying for a reissue of the patent central to his business. Originally filed a decade earlier before the widespread growth of 3D printing, the patent now had some issues that required correcting. However, the view of the law had since changed, and the reissue process hit a standstill.

Fighting for patent eligibility in a changing technology landscape

Statutory law (§35 U.S.C. 101) and case law is limited in defining qualifications for patentable subject matter, particularly in a digital age dominated by software and intangible technology. Legal precedent is scarce, the issue is fluid and examiners are hesitant to pass muster on software-related patents.

In the case of this 3D printing company, the United States Patent Office (USPTO) examiner argued that the basis of the business was too general of an abstract idea to qualify for a patent. (The company offers a user-friendly software that allows consumers to design items to be 3D printed.) The application for reissue stalled — and that’s where the Patterson + Sheridan team came in.

Collaboration, research and a team of uniquely experienced IP lawyers seal the deal

Our attorneys took over the case and got to work immediately, spending hours on the phone with the USPTO examiners. We continually monitor case law to stay on top of new rulings and present new arguments accordingly, and this matter was no different.

This particular patent was a blend of both software (the design program) and manufacturing (the 3D printing), which made it unique. Despite its manufacturing component, the application was still rejected under §35 U.S.C. 101, which is typically reserved for abstract ideas, software and algorithms. Therefore, this type of technology was outside the wheelhouse of the traditional 101 examiners, and it wasn’t the typical patent most manufacturing-focused IP attorneys handle.

However, thanks to our firm’s deep bench of attorneys across a wide range of disciplines, we were able to collaborate and convince the examiners that our client’s idea was indeed patentable subject matter. The patent was allowed and has now been twice examined by the USPTO, making it that much stronger if it’s ever litigated in the future.

Related Team:

Nicholas Smith, Ph.D.


Chad Dougherty