Arguments for USPTO Error in Granting U.S. Patent 9,904,924 to Square, Inc
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Arguments for USPTO Error in Granting U.S. Patent 9,904,924 to Square, Inc. Umar Ahmed Badami Annabel Guo [email protected] [email protected] Samantha Jackman Kathryn Ng Sharon Samuel [email protected] [email protected] [email protected] Brandon Theiss* [email protected] New Jersey’s Governor’s School of Engineering and Technology July 24, 2020 *Corresponding Author Abstract—The United States Patent and Trademark Office how their invention works. When the patent expires 2, the (USPTO) erred in granting U.S. Patent 9,904,924 to Square Inc. public is permitted to make, use, or sell the invention without U.S. Patent 9,904,924 claims a system for the transfer of funds the inventor’s permission. from a sender to a recipient via email. However, this system was disclosed prior to the U.S. Patent 9,904,924’s effective filing For an inventor to patent their invention, there are some date of March 15, 2013. Claims 1 and 9 were disclosed by U.S. requirements that must be fulfilled as per the U.S. Code. One 8,762,272 and U.S. Patent 8,725,635 while claim 20 was taught by requirement for patentability, as stated under 35 U.S.C. § 101 a combination of U.S. Pat. App. Publication 2009/0006233, U.S. Patent 10,395,223, and U.S. Patent 10,515,345, thereby rendering is that the invention must be useful, defined as having “a at least one of the claims of U.S. Patent 9,904,924 invalid. specific, substantial, and credible utility.” A patent will not be granted if the invention is a judicial exception, and therefore I. INTRODUCTION outside the four statutory categories of an invention. These include “abstract ideas, law of nature, and natural phenomena,” U.S. Patent 9,904,924 (henceforth referred to as “the ’924 as stated under 35 U.S.C. § 101. patent”), submitted by Dorsey et al. and filed by Square Inc. (henceforth referred to as “Square”), was granted on February Another requirement for an applicant to be granted a patent 27, 2018 by the U.S. Patent and Trade Office (USPTO). This is that the invention must be novel. The USPTO states, in its paper describes the evidence that the USPTO erred in granting patent examiner training document, that a patent will not be the ’924 patent. issued if “the claimed invention was patented, described in A patent is a document granted by the government to an a printed publication, or in public use, on sale, or otherwise inventor and upheld by Article 1, Section 8, Clause 8 of available to the public before the effective filing date3 of the the United States Constitution. A patent gives an applicant claimed invention” under 35 U.S.C. § 102 (post AIA)4. If the right to prevent others from making, using, or selling the claimed invention was already patented or in the public their invention, where an invention is defined as a “process, domain before the effective filing date of the application, the machine, manufacture, or composition of matter, or any new and useful improvement thereof,” as defined by 35 U.S.C. § 101. Patents protect an invention for a limited period of 2 1 A patent can also enter the public domain if it is found invalid by a court time, usually twenty years according to 35 U.S.C. § 154 . or the USPTO, if the owner fails to pay maintenance fees, or if the owner Until the patent expires, others can only gain revenue from the decides to disclaim one or several entire claims of the patent. invention with the inventor’s permission. In exchange for this 3The effective filing date of a patent is the earlier date between the actual date the application was filed or the filing date of the patent’s earliest protection, applicants are required to disclose the details about application. 4The America Invents Act (AIA), passed in September of 2011, changed the 1A patent owner must pay maintenance fees of varying amounts at different patent application system from a first-to-invent system to a first-inventor-to-file times in order for their rights as owner of the patent to remain valid, as stated system. Prior to this law, patents were granted to the individual who developed under 35 U.S.C § 41. the invention first, rather than the individual who filed their application first. 1 initial patent is called prior art5. In this case, the invention is and services include a device that allows credit cards to be not considered novel and the applicant will not be granted a processed using a mobile device and a software tool that patent. enables small businesses to manage their payroll obligations. Further, for a patent to be granted, the claimed invention Most famously, Square is the inventor of Cash App, a service at the time it is invented must not be obvious to “a person that allows users to transfer money using a website or an having ordinary skill in the art” under 35 U.S.C. § 103 (post app, which also implements the method disclosed by the ’924 AIA). The claims6 between the applicant patent and prior patent. art must be different enough that a professional in the field The system disclosed in the ’924 patent uses email to would not find the changes made between the two obvious. In transfer funds between the sender’s financial account and the order to argue that an invention is obvious, the examiner must recipient’s financial account. Located on a Square server, the identify evidence of a “teaching, suggestion, or motivation to Dorsey System is alerted to a transaction request when a combine references” (35 U.S.C. § 103). However, examiners sender (identified as reference numeral 102 of Figure 1 of are permitted to use their own judgement in determining the ’924 patent) sends an email to a recipient (identified obviousness, so long as they provide a reasoned explanation as reference numeral 103 of Figure 1 of the ’924 patent) for their decision while avoiding vague generalizations. with payment information and copies a Square service email Additionally, for a patent to be granted, the applicant must address (e.g., [email protected] or [email protected]) on the include a written description of the invention. Under 35 message (identified as reference numeral 104 of Figure 1 of U.S.C. 112, the written description must state the “manner the ’924 patent). and process of making and using it” in concise language such that a person of ordinary skill in the art would be able to make it. The claim language must be definite and clearly define the subject matter that the applicant deems their invention. This ensures that the scope of the invention is clearly stated and that what is considered infringement of the invention is described plainly. When an applicant files for a patent, a patent examiner reviews the application and is given twenty hours to determine whether the patent is considered an invention rather than a judicial exception, novel, non-obvious, and written in clear, concise language. The examiner searches for prior art within current patents and inventions subject to the public domain. After twenty hours, the examiner decides whether or not the applicant should receive a patent for the invention. If the examiner decides against granting the patent, the applicant can contest this through a process referred to as patent prosecution. Fig. 1. Figure 1 of the ’924 patent. II. TECHNOLOGY OF U.S. ’924 PATENT The email must contain the email addresses of both the Many financial transfer methods, such as physically de- sender and the recipient (identified as reference numerals positing checks or using third parties for wire transfer, are 122 and 124 of Figure 1 of the ’924 patent) and specify a time-consuming and potentially insecure. The ’924 patent, payment amount for the transaction to go through. Otherwise, submitted by Square and issued to Dorsey et al., purports the system will send the user an error message (identified to present a solution to this problem using an email-based as reference numeral 1630 of Figure 16 of the ’924 patent). system (henceforth referred to as “the Dorsey System”) and Figure 3A of the ’924 patent depicts an example email utilized a computer-implemented method (henceforth referred to as by the Dorsey System (reproduced below in Figure 2). “the Dorsey Software”) to securely and quickly transfer funds If the Dorsey Software can identify both users’ email between users. addresses and the payment amount in the email, it searches Square, the assignee of the ’924 patent, is a financial the Square database for the saved financial account numbers service and mobile payment company founded in 2009 by associated with both users’ email addresses. The Dorsey Jack Dorsey7 and Jim McKelvey (D’Onfro). Square’s products System then submits a request to transfer the money between the two financial accounts and sends a confirmation email to 5 Prior art is a legal term for any information made public before the first the recipient once the transfer is complete. filing date of a patent that could be used to refute the novelty of the invention in question. Figure 8 of the ’924 patent depicts an example of the 6A claim defines limitations on the patented invention and the subject matter operating process of the Dorsey Software (reproduced in that is protected by the patent. The claims of a patent set boundaries on which Figure 3). If it is found that one of the users email addresses parts of the invention are protected from infringement.