Alice Five Years Later: Hope Wanes as 101 Legislative Discussions Dominated by Big Tech

“I asked to participate in the 101 Roundtable and was denied access based of the fact that I am ‘media.’ Yet, the tech giants that are rejecting reform are allowed to participate and still engage in a carefully coordinated public relations campaign.” June 19, it will be five years since the United States Supreme Court issued a decision in Alice Corp. v. CLS Bank, 134 S.Ct. 2347 (2014), which significantly changed the way courts and patent examiners evaluated patent eligibility of computer implemented innovation in the United States. While the Supreme Court ostensibly extended the patent eligibility analysis applied in the life sciences context that had previously been adopted in Mayo Collaborative v. Prometheus Labs., 132 S.Ct. 1289 (2012), even a cursory review of allowance rates from the USPTO and invalidity rates in federal courts shows that Alice changed the prevailing analysis in profound ways. We will be commemorating this anniversary on June 24-25 in Washington, DC with a dedicated event examining the damage, discussing real solutions, and offering strategies for innovators who need protection in these uncertain times (see below for more detail).

Almost immediately after Alice, patent examiners started to issue new subject-matter eligibility rejections for computer implemented innovations using the abstract idea exception to the statutory categories of patent eligibility. “The ubiquity of subject-matter eligibility rejections in office actions exploded, leading many to wonder whether software implemented inventions remained patentable at all,” explained Kate Gaudry and Samuel Hayim, who have done a series of articles on IPWatchdog detailing their statistical analysis. “This effect was largely centered in business method art units of [USPTO technology center] (TC) 3600. For example, the number of allowances issued from business-method art units dropped from 24% in the months before Alice was decided to about 3% in months after.”

For months there has been growing hope that a legislative fix spearheaded by a few dedicated Members of Congress would provide a solution. But in recent weeks, that hope is waning as the uncomfortable reality that big tech is dominating the discussions has started to set in.


A Reason to Cry

While many will not cry a river over innovations that have been routed to the business method art units suffering the indignation of insurmountable Alice rejections, in the aftermath of Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016), the USPTO started issuing patent eligibility rejections in the Artificial Intelligence (AI) art units. And not just issuing rejections, but rejections on a frequency and difficulty level commensurate with the level of Section101 rejections found in the business method art units. All because the Federal Circuit explained in Electric Power Group that concepts of collecting and analyzing information fall within the “realm of abstract ideas” because information is intangible. Id. At 1353-54.

Someone really needs to explain to the Federal Circuit that the very benefit of innovation we classify as AI is in the fact that it is abstract. So, finding an AI related innovation patent ineligible because it is abstract is utterly asinine. Of course it’s abstract! That is the entire point of the invention! Artificial Intelligence is by definition creating or exhibiting the appearance of human cognition. AI innovations are not A + B = C. The benefit of the innovation lies in the abstraction.

The trials and tribulations of innovators in the AI space is particularly significant because the Federal Circuit relied on Alice in Electric Power Group to invalidate the claims at issue. This means the Supreme Court is responsible for the exportation of AI research and development and angel and venture funding to China and Europe.

As unfortunate, and self-inflicted, as this episode has been for innovators in the artificial intelligence space, one of the more remarkably strange scenarios present in the financial sector since Alice, payment gateways—no matter the uniqueness or functionality—are no longer patent eligible in America. They are, however, patent eligible overseas. As unfortunate as that may seem, the real oddity is that, while the functioning of a payment gateway cannot achieve a utility patent in the United States, it can obtain design patent protection for the look and feel. Refusing to protect the intricate technical implementations of payment gateways, but at the same time protecting their aesthetic because they look cool or interesting, seems exactly backwards. The United States is willing to protect the way something looks rather than the significant engineering achievements behind a useful, new and non-obvious financial interface? Backwards and bizarre it does seem, but then again, on the life sciences side of the aisle, one of the most revolutionary medical discoveries of recent vintage—an invention that reduced the risk of mother and unborn child to absolute zero by obviating the need for amniocentesis—was found patent ineligible, while a method for freezing liver cells was declared patent eligible.

In many regards, with respect to patent eligibility, since Alice, the U.S. has been like a crab that can’t travel any way but sideways or backwards.

The Chances for Change

As the fifth anniversary of the Alice decision approaches, great uncertainty remains with respect to what is patent eligible in America. While the USPTO, under the leadership of Director Andrei Iancu, has released new guidance in 2018 (relating to Berkheimer and Step 2B of the Alice/Mayo framework) and revised guidance in 2019 (relating to Step 2A of the Alice/Mayo framework), significant questions exist with respect to whether the Federal Circuit will agree with Director Iancu’s interpretation of Section101 in light of Supreme Court precedent. And while patent eligibility rejections have lowered, for example with respect to technologies such as AI-related innovation, if the Federal Circuit does not support this new approach that strictly interprets Supreme Court precedent, more chaos will ensue.

Meanwhile, the Supreme Court is considering petitions for certiorari in Berkheimer and other Section 101 cases where the Federal Circuit has issued patent-friendly rulings. Will the Supreme Court take this opportunity to pull back from the brink? They have asked the Solicitor General for the opinion of the Trump Administration on whether to take these cases. The Commerce Department—both Director Iancu and Commerce Secretary Wilbur Ross—is in favor of a strong patent system, as is Makan Delrahim, Assistant Attorney General in charge of the Antitrust Division. But what will the Solicitor General think? Will the White House get involved, as was common during the Obama years?

And all of this is occurring at a time when bipartisan leaders of the relevant Senate and House IP Committees are vigorously discussing a legislative fix to Section101 that would find medical diagnostics per se patent eligible and do away with judicial exceptions to patent eligibility. A bill proposing a legislative fix is expected to be introduced this summer, with draft language imminent. See Change Could be Coming. But what will that bill look like? There is growing concern.

In recent days, I’ve learned from multiple independent sources that the tech sector giants who do not want to see any change to patent eligibility are dominating the 101 Roundtable convened by Senator Chris Coons (D-DE), Senator Thom Tillis (R-NC), Congressman Doug Collins (R-GA), Congressman Hank Johnson (D-GA) and Congressman Steve Stivers (R-OH). These tech giants are willing to agree that life science innovations should be patent eligible, but not software.

Who Was Denied and Who Is Dominating the 101 Conversation?

Apparently, there is a lack of participation from those opposing the tech giants, which I find completely believable. I asked to participate in the 101 Roundtable and was denied access based of the fact that I am “media.” This, despite the fact that I am regularly invited to off-the-record events and have never reported on anything unless I have explicit consent to go on the record or use information on background. Yet, the tech giants that are rejecting reform are allowed to participate and still engage in a carefully coordinated public relations campaign, both privately and publicly. If there is any area in which I have substantive expertise, it is the area of patent eligibility, specifically relating to computer implemented innovations. So, it is not at all shocking to me that the 101 Roundtable is being dominated by the tech industry behind the scenes, or that there is growing fear among some 101 Roundtable participants that any legislative fix will be so watered down that it may actually be harmful.

Against this backdrop, and at a pivotal moment when legislation to address patent eligibility is being taken up by Congress, please join IPWatchdog on June 24-25 in Washington, DC for Alice Five Years Later. This live program will provide a forum for thought leaders and interested industry professionals to gather for wide-ranging discussions on Alice and how to protect computer related innovation in America.

Day 1 of this Symposium will focus on Alice, Supreme Court precedent on Section101 and whether it is truly irreconcilable, Federal Circuit attempts to interpret and apply Supreme Court precedent, how the USPTO is interpreting Alice, and what Alice has meant to patent valuation and licensing. Day 2 will focus on the future, with discussions on legislative efforts to fix Section 101, as well as how to protect computer implemented innovation generally, with specific discussion of technology fields such as AI and security.


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Join the Discussion

36 comments so far.

  • [Avatar for NJ Thomas]
    NJ Thomas
    May 10, 2019 12:03 pm

    The legislation proposed by Coons and Tillis is too complicated and will add ambiguity and confusion to this whole situation for the PTO and courts for years to come. Any solution needs to be simple and preserve 200 plus years of patent law precedent.

  • [Avatar for Anon]
    May 9, 2019 08:44 pm

    Night Writer,

    There was nothing at all condescending in my comment to you.

    I ADDED to your “single” focus with a BETTER and all-encompassing legal view of the proper manner for which 35 USC 101 is to be applied.

    I took – and gave full credit – for what I see as your “technical” angle.

    You take “condescension” when none was present, and thus you seem to not grasp the deeper point that I actually make.

    Take a moment to realize that I was not disagreeing with you and that I was augmenting what you had provided. Reread my offering in the manner that it was intended, and not as any type of disagreement or rebuttal with the non-all-encompassing point that you provided.

  • [Avatar for Night Writer]
    Night Writer
    May 9, 2019 07:46 pm

    Anon,”I can understand that for you, “technical” is invoked with the “use of” technology.” Again really strange condescending talk from you, Anon.

    The point of my post is very specific and not meant as a general 101 test. It is meant to illustrate one aspect of innovation. That automating something that people do with machines is inherently technical and should be included in 101. The point is to illustrate that trying to include a test of what is automated is absurd on its face. When people figure out how to use machines to automate (and almost always improve and change) a process that they are already doing, this is inherently technical when a machine is involved. The logic to examine the subject matter of what is automated is twisted and bizarre. And often it is high-handed with no explanation at all. The most infamous version of this is Ginsburg statement that patents were not meant for organizing human behavior. People spend time organizing human behavior just like they spend time hulling wheat.

    Ginsburg arbitrarily adds a subject matter exclusion where there is no basis for such exclusion in the nature of innovation and there is no policy reason to exclude subject matter.

    Again–focused on one aspect of 101. Not meant to be all encompassing.

  • [Avatar for Anon]
    May 9, 2019 04:59 pm

    Night Writer,

    I see where you are going with your line of reasoning.

    I can understand that for you, “technical” is invoked with the “use of” technology.

    I would posit though that while ANY such item should logically fall within the scope of US patent laws, such is NOT ENOUGH.

    The US system was NOT set up with any type of “technological arts” test.

    The US system was intended to be more expansive.

    The part of being more expansive aligns with what the meaning of Useful Arts entails.

    While certainly things of “technical arts” or things involving technology will more likely than not ALSO fall into the scope of the Useful Arts, the plain fact of the matter is that the two are not – nor are they meant to be – distinct sets.

    Look above to m dialogue with Paul Morinville. Paul in reacting to what the Court has initiated (and in part as a reaction against massive amounts of propaganda) attempts to “classify” his application as not being a Business Method application.

    Read his application.

    He explicitly outlines the purpose/intent/”Gist”/”directed to” aspects of his innovation and there is simply no way for the application to NOT be classified as a Business Method application.

    Whether or not “technology” is involved should be immaterial to patent eligibility (leastwise, from a “NO” standpoint).

    We already have a “Machine” statutory category. We also have other categories that are NOT meant to be dependent on whether a machine is invoked or not.

    The Court has made a royal mess of what 35 USC 101 entails. It is time to return to the direct words of Congress and use the Kavanaugh Scissors to cut through the mess. We can easily (if the Court so chooses) return to the direct words for eligibility and ask the two (and the two only) questions pertinent to eligibility:

    1) Are the claims of the innovation captured in at least one of the statutory categories? This is meant to be a low or easy bar to reach.

    2) Is the utility of the claims innovation reflective of the Useful Arts. This too is meant to be a low or easy bar to reach – further, this may be taken as reflective of the “practical application” line of questioning, as “practical” may be seen as reflecting the required utility. Fine arts (those items outside of the Useful Arts) can be seen as lacking this aspect of “practical application.”

    In regards to Deener, processing wheat outside of a machine would still most likely BE a practical application. Kicking a claim out even if a machine is involved is “dumb.” Kicking a claim out even if a machine is not required to be involved is just as “dumb.”

  • [Avatar for Night Writer]
    Night Writer
    May 9, 2019 01:50 pm

    I think the whole business method mythology is off. The way to think about this is the subject matter of patents should include anything that is technical. Anything that is being done by a machine is technical. The whole notion that somehow there are these things that machines are being used to improve but that aren’t technical because of their underlying nature is absurd.

    Deener is about processing wheat. Why is taking the hull off of wheat technical? It is technical because humans have figured out how to use machines to process the wheat. The same analysis holds with “business methods.”

  • [Avatar for Anon]
    May 8, 2019 03:03 pm


    the definition is already established as something like putting an auction online.

    Not so.

    At all.

    You may be being confused with particular terms that the Court has penned (scrivined) for selective examples to which the Court is applying their own “thumbs on the scale.” Yes – this IS a type of “false term,” but the real term still exists.

    Do not mistake their (the Court) use and the overall understanding of the term.

    As to what Congress and the PTO (legislative and executive branches) “intend” with any meaning of the term is simply different than what you are attempting.

    Again, after a plain read of your application, you only diminish your credibility with attempting to say that your application is not a Business Method application.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    May 7, 2019 07:30 pm

    I wasn’t necessarily looking at the easiest to reach allowance, but more towards which countries have a friendlier side to the Pro Se inventor when a big Tech firm starts to infringe.

    Fair enough, of course, but this still mostly puts the cart before the horse. Imagine, for example, that the Elbonian patent code were purpose designed to give every advantage to a pro se inventor against a large corporate infringer. That is not a good reason to file in Elbonia, unless there is some business advantage to be had from market exclusivity in the Elbonian market. No matter how friendly the jurisdiction, unless there is a business advantage to be had from exclusivity in a given jurisdiction, a patent is just a stream of payments out of your pockets.

  • [Avatar for Paul Morinville]
    Paul Morinville
    May 7, 2019 06:13 pm

    Anon, the problem is not your definition or denigration on what constitutes a business method, it is that the definition is already established as something like putting an auction online. Once a false term is established, it’s easy to throw whatever you dont like into it. You can call it a business method patent if you like, but it does not fall into the definition that Congress, the PTO and the courts understand.

  • [Avatar for Jimmy]
    May 7, 2019 05:25 pm

    @ 25 – Greg,

    I wasn’t necessarily looking at the easiest to reach allowance, but more towards which countries have a friendlier side to the Pro Se inventor when a big Tech firm starts to infringe. While I have 6 granted with 1 pending in the U.S and 1 granted in Australia, I’m currently working on a technology application which could have an impact on any market that it is filed.

    My question was what country is going to be friendly to small inventor when the big tech start infringing. If none exist, then I’m stuck with the U.S. and will just use the granted patent (when it is granted) as additional wallpaper….

    If Pro Se inventors have no chance of trying to licenses their invention and can’t really reach out to the big tech firms for possible infringement, then exactly what good/benefit does a granted patent provide?

    The first time I reach out to a company and say “Dear Big Tech XYZ, it appears that your product/service, etc. MNOP may be infringing on a granted patent 1234567 which was issues on ABC date and I’m reaching out to discuss a possible licensing or potential purchase option for the mention granted patent…” will end up costing me hundreds of thousands/millions dollars in defending the patent in a PTAB hearing. All because as an inventor, I want to protect what was granted to me by USPTO.

    What country has a more level playing field?

  • [Avatar for Anon]
    May 7, 2019 05:21 pm

    Paul @ 20,

    Perhaps you misconstrue my comment as somehow being a denigration for being a Business Method patent.

    Rest assured, I meant no such denigration.

    In all due respect, I had made my comment based on the CAFC decision itself, which did not establish “per se” that your patent IS a Business Method patent.

    With your invitation, I have now read your application.

    I maintain my position. Not only that, but I would say that you lose credibility by attempting to say that your application is somehow NOT a business method patent. There is ZERO chance of attempting to “spin” that your application is not a business method patent application.


    I “get” that you might be saying such merely in an attempt to avoid some sort of “stigma,” but you cannot avoid that by merely saying “not this one.” Your specification leads off with an admission that you cannot get around. Quite in fact, I am of firm belief that you should not have to even try to “get around.” That you even feel the need to do so is an indictment that our system has been besieged by unhelpful propaganda.

    Let me note that whether or not you employ technology is NOT determinative of whether or not you have a business method patent.

    “Technological” is not an incongruent “set” with “Business Method,” and it is simple logical error to think otherwise.

    If you are familiar with my views, you would recognize that the there is NO strict “technological arts” test in US patent law (notwithstanding the abysmal writing in the AIA).

    Instead, under US patent law, methods that may well be fairly labeled “Business Methods” are simply methods in the statutory category of “Process” that satisfy the utility as recognized under the Useful Arts that happen to be “directed to” [sic] subject matter concerned with business.

    There cannot be any doubt that organizational effectiveness is such a matter.

    Let me be perfectly clear: This is absolutely matter intended to be protected under US patent law.

  • [Avatar for Night Writer]
    Night Writer
    May 7, 2019 01:05 pm

    @23 JCD

    Thanks! I will try this.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    May 7, 2019 12:07 pm

    [S]hould I proceed to file it in the U.S or is there another country that I should be looking at.

    One should file in the US if the US market is expected to be a profitable market for the invention. One should file in China if the Chinese market is expected to be a profitable market for the invention. One should file in Europe if one or more European markets are expected to be a profitable market for the invention.

    In other words, if you are trying to choose where to file based on the criterion of where it will be easiest to reach allowance, you are mostly placing the cart before the horse. A patent is a business tool. If there is not a business justification (i.e., a plausible expectation of meaningfully larger profit) in a given jurisdiction, then one ought not to file in that jurisdiction, no matter how easy it might be to reach allowance there.

  • [Avatar for JCD]
    May 7, 2019 10:48 am

    @Night Writer at 17: I am not sure if you tried using CIPs, but in my experience a CIP with a new title and new claims will frequently end up in a different art unit, even if the newly added disclosure is not that substantial. I am not advocating trying to game the system to land in a particular art unit of your choice, but I have seen that strategy succeed.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 7, 2019 09:26 am

    “I do not know how professionals in the patent field handle such a frustrating environment”

    Whenever it gets me down I have lunch with a good friend who is an immigration attorney.

    Then I feel much better about dealing with a large subjective organization for the sake of my clients.

  • [Avatar for Night Writer]
    Night Writer
    May 7, 2019 08:10 am

    @20 concerned

    Your patent attorney probably knows what they are doing. It is true that if you get stuck with a bad examiner that it can be really hard to get a patent. You are left with SPEs, TCs, and the PTAB. The problem with patent law is that it has become discretionary. It is not just Alice, but KSR too. Basically, what the Scotus has done has turned each fact finder into a king or queen and there is little we can do other than appeal to the next higher level and try to convince them that the fact finder is being unreasonable. Not an easy task.

  • [Avatar for concerned]
    May 7, 2019 02:54 am

    Night Writer:

    I am not an attorney. I was involved with the administration of law and was a liaison with a State Attorney General for decades.

    The administration of patent law is very strange indeed. Inconsistent rulings, evidence tossed, words added to law, statements that are not factual on the surface, etc. Basically every principle of law I know is tossed out the window.

    I would bet the house that my patent would be approved by a jury of my peers, however, the check and balance of juries seem non-existent also. When you and others make statements regarding there is a hidden agenda to patents, I cannot dispute the same.

    My hope is that there are enough decent people in power to prevent harm to our country before it is too late. I hope it does not take a national crisis, like sub prime mortgages or a hijacking of an aircraft carrier as Paul M. suggests, before there is proper correction.

    One small consolation for me is that patents are not my livelihood. I do not know how professionals in the patent field handle such a frustrating environment. Certainly those professionals must feel their own livelihood is threatened as how long will inventors spend small fortunes, make public their ideas, just to be kicked in the teeth and have nothing to show for it? The patent environment cannot survive forever based on its own past reputation.

  • [Avatar for Paul Morinville]
    Paul Morinville
    May 7, 2019 12:04 am

    Anon @8. I don’t think you read the application. It is not a business method. It uses a hierarchical structure, which in this case is company’s operating organization. Roles are associated with each node in the hierarchy. An algorithm runs on the org identifying the roles and the node they are associated with. The roles associated with the nodes are then used to create a completely different virtual hierarchy made of the same elements but laid out in a different hierarchical pattern, in this case the virtual hierarchy is called a functional org. Both orgs exist in the system at the same time – one static and the other virtual. Then access rules are associated with the virtual org and inherited down the virtual org. Access to the computer system is then controlled by the access rules.

    All of the structures in the claims are defined technical structures. There is no business method here. A business method is putting an auction online.

    Further, this sort of invention is core to artificial intelligence and other technologies. AI often uses hierarchies and algorithms to form virtual hierarchies using the same data but laid out differently. The virtual hierarchies created are used to analyze data in different ways or to produce a result that either feed back into the AI analysis or is the result of the AI operation.

    If this is a business method, then all inventions are as well.

  • [Avatar for Night Writer]
    Night Writer
    May 6, 2019 11:17 pm

    I wonder too what it is the SV firms want now. There is no doubt that stronger Trade Secrets is on their agenda, but my guess is that what they really want is bifurcation of the patent system. As that would enable them to weaken the patent system far more without pharma opposition. The SV firms made a big push to get bifurcation into the AIA and I’ve seen enough rumblings about this that I think that is what they’d really like. I hope that the brain trust that is protecting us from total collapse sees that this would be a disaster for the patent system.

  • [Avatar for B]
    May 6, 2019 04:26 pm

    @ Paul “I resigned from this round table. It is fully controlled by big tech.”

    A round table has two sides

    Big Tech is on the inside.

  • [Avatar for Night Writer]
    Night Writer
    May 6, 2019 03:59 pm

    >Careful redrafting should get your patent application in a more favorable art unit where examiners generally presume they are examining statutory subject matter.

    We tried this as a firm on some applications to see if we could get them moved. We could not. The PTO would always put them with the same examiner.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 6, 2019 03:24 pm

    Curious@12. Excellent point. I had the same experience when I simply redrafted the claims and filed a continuation. Getting a case into a different art unit is a bit more involved. Feel free to drop me a note at mark at survivingalice dot com if you would like to discuss further.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 6, 2019 02:52 pm

    Anon@8 I agree with your point. This is where inventors and applicants need to organize and lobby Congress. As a humble patent agent, however, my mission is to get adequate patent protection for my clients as quickly and efficiently as possible. In that role, I take a very pragmatic view point. If redrafting and refiling is the fastest way forward to protect my client’s interests, then so be it.

  • [Avatar for Jimmy]
    May 6, 2019 01:56 pm

    With big Tech controlling the process and Congress acting as by-standers and Courts reading between the lines when no lines exist… just what does a Pro Se inventor do? I have a tech application that I’m working on now but should I proceed to file it in the U.S or is there another country that I should be looking at.

    One problem for Pro Se inventors filing in other countries is the language translation that is required for filing application – not everyone can afford to pay for translation of the application.

  • [Avatar for Ternary]
    May 6, 2019 01:44 pm

    A computer is a machine that processes signals. There is nothing “abstract” in that. Signals represent data. Humans can process data. In that sense there is some similarity between humans and computers. There are also distinctions. Humans cannot process discrete electrical or electromagnetic signals without conversion into signals that can be observed and understood by humans (images in visible spectrum, sound and touch). Computers and especially networked computers have significant, technical, advantages over humans.

    In a scientific and technological sense computers and programmed computers are not abstract ideas. The fact that they may be “directed to an abstract idea” is a political/ideological issue. Not a scientific issue. Not even an empirical issue. Artificial Intelligence (as implemented on a computer) is not an abstract idea. It is not an abstract idea, like a calculating machine is not an abstract idea.

    The “directed to an abstract idea” is merely a political reasoning to deny an inventor legal protection of her/his Intellectual Property. To claim that these “abstract ideas” should be freely available to everyone is nonsense. It is a denial of the background and purpose of science and technology. It is unclear why “building blocks” of science and technology should be freely available to anyone.

    Certain interest groups don’t want patent protection being granted to revolutionary ideas. Because patents have offered an important protection that benefit potential competitors. And despite what “free market” advocates tell us, companies really do not like “free markets.” They want “free markets” wherein they can operate “freely.” Their competitors preferably less so or even not. They have long made the calculation that established market power is preferable over scientific power. So a two-pronged attack has been executed: a) diminish the power of patents; b) in case that doesn’t fully work deny granting a patent for potentially competing inventions.

    The battle continues, now it finally has reached Congress. We should not admit or agree that fields like AI, blockchain, and even decision support (like advanced scheduling) implemented on computers are abstract ideas. They are not. RSA cryptography on a computer is not an abstract idea, again, like a calculating machine is not an abstract idea.

    The Courts brought metaphysical reasoning into the discussion. Allowing crazy nonsensical statements like “the abstract idea of data transmission” to be used as pseudo-scientific arguments. It is time to bring patent law on a rational and scientific footing, based on a modern interpretation of science.

  • [Avatar for Curious]
    May 6, 2019 01:31 pm

    Careful redrafting should get your patent application in a more favorable art unit where examiners generally presume they are examining statutory subject matter.
    I have drafted a LOT of claims for continuation applications, and I cannot recall an instance in which the claims got moved to a different art unit.

  • [Avatar for Night Writer]
    Night Writer
    May 6, 2019 12:14 pm

    @9 concerned

    “my attorney … are routine, well understood and conventional.” I wouldn’t count on any sensible explanation from the PTAB, CAFC, or the Scotus, on this issue.

    They pretty much just make up whatever they want at this point. There is no sense to 101 at all. What Alice did was just attach new meaning to an old word. There is no relationship between something being old and something being abstract. Abstract was an exception that was plugged up with tighter 112 requirements. So it gave the Scotus a word that was attached to a judicial exception that didn’t need to be used anymore. They ceased this opportunity and attached a new meaning to abstract.

  • [Avatar for TT]
    May 6, 2019 12:10 pm

    I am a patent attorney. I am also the sole named inventor on two patents asserted against Amazon in the case TrackTime v. Amazon et al, Civil Action No. 1:18-CV-01518-MN. Predictably, Amazon raised a laughable 101 defense, reducing 1000+ claimed words to a two-word abstract idea. Only in the present climate do I actually fear they may succeed.

    I have written Senators Tillis and Coons, among others, mentioning I’d be happy to participate in a round table discussion since they so infrequently hear from informed individual inventors. I have received no substantive response.

  • [Avatar for concerned]
    May 6, 2019 11:20 am

    My attorney is really interested in hearing PTAB’s explanation (in appeal) as to how my claims are routine, well understood and conventional. Nobody on Earth has ever done any of the claims and we proved it with documents from every possible end user.

    We also proved that it solved a 6 decades problem. The Examiner did not refute the same, offered no explanation.

    Lets see how far somebody can defend the rejection. (Note: Even the Examiner said during the phone interview the claims had patentability. The higher ups were apparently denying it)

  • [Avatar for Anon]
    May 6, 2019 11:03 am

    A few observations (take from these as you will):


    Your patent recently receiving press (if you want to call Patently-O “press”), is a quintessential Business Method patent. Business and the science of business is eminently involved with organization of resources and alignment of management of those resources, with which, your innovation is ‘directed to.’ Whether ‘technical’ or not is (and should be recognized as) a different question.

    But what is “technical” anyway? Does it share a root meaning with “technique?”

    Further, while the Congress in its “captured” manner of the AIA kowtowed to established anti-patent forces DID provide a pathway to challenge of granted patents (of which yours may well arguably fall into that category), such does NOT mean that such granted patents do not meet the larger (and more expansive) net of utility within the Useful Arts, which has long been recognized as differentiating between any (undefined) Technical Arts test and the business methods (in general) which possess utility within the Useful Arts.

    Night Writer,

    I do not disagree with the substance of your post here (and in fact have posted long in accordance with the view that Trade Secrets have been making headway at the expense of patent rights (see my Pre-AIA posts warning of the submarine Sui Generis “right” of the Prior User Rights mechanism).

    That being said, your post takes an unfortunate sense that somehow people have been ignoring you. This appears to be a ‘strain’ of your defense of other p00r legal points in that you want to establish some type of “predictive” “I told you so” as an inoculation against any type of legal thinking. It seems like you want any disagreement to be based on the same footing of disagreeing with you.

    That’s not how critical thinking is applied.

    So while here, I fully concur with your views expressed, I think it way too self-laudatory to think that you have been ay type of “lone voice,” let a lone a “voice rebuffed” on THIS topic.

    Mark @ 6,

    While your advice is not “bad” pe se, it is less than adequate, as one of the points here sounds in the historic “they came for” adage. “Running” from one art unit designation to a different “more friendly” one, would only embolden the tactic in that “poisoned” art unit, and then that poison may spread (for example, to AI art units). Instead, the better course is to see that the arguments of anti-software (and anti-business method) are nothing more than anti-patent at their heart and fight back AT that heart of attack.

    As I have oft posted – the issue to focus on is the larger issue that the score board is broken. A “the score board in that art unit is broken, so let’s “scriven” claims to move them to this art unit” is at best a temporary bandaid and does nothing to solve the larger problem.

  • [Avatar for Night Writer]
    Night Writer
    May 6, 2019 09:19 am

    I told you guys that there was no way reform would happen now. No way. You are asking international corporations that are monopolies to act against their interests. No way. We know they have bought off the likes of Lemley and the other academics. We know they plow money into every Congressman and Senator. We know they were in Obama’s White House everyday. Everyday they were in there talking to Obama or his staff and they selected the judges for the CAFC or at least approved them.

    What you guys don’t get is how easy it is for them to fight you. They have literally over a $100 billion in the bank. They write a check to K Street for $10 million or $100 million and they get their way.

    My prediction stands. We won’t get reform until there is some major event. It is going to get real painful and we are going to end up with just a few monopolies controlling all the money.

    My bet: that the big corporations are going to try and strengthen Trade Secret law further. Trade Secret law is perfect for monopolies. Lower wages, low mobility, and can still take whatever a start-up does.

    (Good luck ignoring me.)

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    May 6, 2019 08:15 am

    Concerned @2

    There are ways around this. Careful redrafting should get your patent application in a more favorable art unit where examiners generally presume they are examining statutory subject matter. This doesn’t solve the larger problem of disparity among art units, but at least it’s a way to address individual applicant needs.

  • [Avatar for Paul Morinville]
    Paul Morinville
    May 6, 2019 12:18 am

    Concerned, Mine were not business method inventions. They were technical, but they used an organizational structure so the CAFC decided that because businesses use org structures, it’s well known and that my friend means It’s an abstract idea. Cars and Smartphones are well known…. so any improvement must also be abstract. Nothing is patentable. Go to China. The US patent system is dead, but you will spend a career and your life savings before they kill your patents. Total scam.

  • [Avatar for Steve]
    May 5, 2019 11:30 pm

    I hope it will be possible to attend your June event remotely.

  • [Avatar for Jason Lee]
    Jason Lee
    May 5, 2019 11:19 pm

    Silicon Valley owns the game I have said it a number of times and I will say it again when you donate hundreds of millions to lobby government and donate to Democrates and Republicans there is nothing Sen Coons and Sen Tillis can do. America is run by corporations, people need to Wake the Fak up and see what America is, and that is a Corporatocracy. Gene you call it like it is, but we all know America is finished and the patent market is dead. Like I said before we need to start to look at Germany and China as their governments still have a much more balanced playing field, corporations do not own all the seats (yet) like they do in plutocracy America. Big tech big banks big oil big pharma but no seats for the American people, if we only look to help special interest groups and ignore what made America great we are all faaaked. Inventors will stop inventing and will stop filing for patent protection. Today there is NO such thing as patent protection Silicon Valley highjacked the laws to best suit their needs, 101 AIA Act-PTAB EBay,Alice, Mayo,TC Heartland, Oils case The SCOTUS all serve Big Tech. The pendulum has swung so far in favor of Patent infringers it’s been ripped right off the swing and it’s not coming back. The patent troll narrative won the war and killed off the one thing that all the other countries have not been able to do, and that was to spark ingenuity with the help of government protections and corporate investments. This no longer exists in today’s America but Germany and China have been very good students and the corporate megalomaniacs have infected government where it is no longer a balance of power of Democracy but a full out Plutocracy domination. America have sold their souls to the devil and China, Russia and Germany will be applauding the final death to America as its addiction to greed has taken its final breath as Silicon Valley strong arms their final death blow to the last battle line resistance in Sen Tillis and Sen Coons. Every empire has an expire date and America will be defeated by the companies it nurtured that no longer need America to survive. Addiction to greed is one hell of a drug. RIP America.

  • [Avatar for Concerned]
    May 5, 2019 07:09 pm

    My business method application was rejected, 3600 technology field. Someone told me only 2 out of 114 applications were approved by my examiner in 12 months, roughly the 3% reported in this article.

    It is sad that people can solve problems that experts failed to achieve for decades, the applicant proves as much, and then be rejected a patent.

    Is there a logical explanation for such a rejection that a common person would understand and appreciate? Would you even want to explain to a common person why great lengths occur to disincentivize
    such solutions?

  • [Avatar for Paul Morinville]
    Paul Morinville
    May 5, 2019 04:32 pm

    I resigned from this round table. It is fully controlled by big tech. As it stands now, (an I doubt it will change) whatever they produce will be harmful. They don’t need or appreciate any opinion beyond big tech. When I resigned, I recommended that they add Gene. They refused.

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