Patent Eligibility Under Section 101: Has the United States ‘TRIPPED’ Up?

“The present U.S. eligibility jurisprudence, and especially that of the Federal Circuit, not only creates serious issues of U.S. domestic law but also arguably places the U.S. in violation of its obligations under the TRIPS treaty with respect to inventions at both ends of the subject-matter spectrum.” my previous article for IPWatchdog on Athena and the refusal of the Federal Circuit to reconsider the case en banc, there remain five relevant questions that were put to the U.S. Supreme Court in an amicus brief in Recognicorp v. Nintendo. These questions plainly deserve an authoritative answer, but none has yet been forthcoming.

Five Questions

1.Can claimed subject-matter which falls as a matter of substance and not mere outward presentation within one of the eligible categories of 35 USC §101 positively enacted by Congress be denied patentable eligibility by a U.S. court using the doctrine of judicial exception without contravening the doctrine of separation of powers?

It is apparent that the eligible categories of Section 101 and the judicial exceptions form distinct and non-intersecting sets, as shown in the Venn diagram below:

There is no objection of principle against invoking the two-part Mayo test to check whether subject matter seemingly falling into one of the four eligible categories in fact falls as a matter of substance into one of the three ineligible categories. However,  invoking a judicial exception against subject matter that falls as a matter of substance within an eligible category amounts to impermissible judicial legislation. See Antonin Scalia and Bryan A. Garner, Reading Law: The Interpretation of Legal Texts, Thompson/West, 2012, pages 93-100, Omitted-Case Canon.

2. Is a court entitled to hold that claimed subject matter falls into one of the judicially excepted categories without considering whether or not it falls into one of the categories positively enacted by Congress as being eligible, the general rule being that exceptions to the positive provisions of a statute are read narrowly in order to preserve the primary operation of the statute?

The Recognicorp brief commented that, in its opinion, the Federal Circuit gave no attention to the positive eligible categories but instead launched immediately into consideration of judicial exceptions under Mayo. That practice is consistently followed in Federal Circuit opinions, positive eligibility analysis being nowadays almost unknown. The recent Athena opinions, on the whole, follow the same pattern. The undesirability of considering only the exceptions to a section of a statute without also considering the positive provisions of that section needs no elaboration. A student at Bournemouth University in the United Kingdom who repeatedly and wilfully followed this approach would not only receive a failing grade, but would be interviewed to discuss his or her aptitude for a career in law. The opportunity to correct this plainly undesirable practice within the Federal Circuit in one that needs to be taken.

3.What scope is attributable to the phrase “directed to” in the first stage of the Alice test, at what level of abstraction is interpretation of a representative claim impermissibly untethered from the express language of that claim, and is an abstraction permissible where it omits reference to elements positively recited in a representative claim?

The words “directed to” lack clear definition, which may account for the risk of inappropriate paraphrasing of specific and detailed claim language leading to unacceptable flexibility, so that the doctrines of patent eligibility risk changing with every succeeding judge or USPTO examiner in a manner reminiscent of John Selden’s jibe published in 1689 that “equity varied with the length of the Chancellor’s foot” (See H. Jefferson Powell, “CARDOZO’S FOOT”: THE CHANCELLOR’S CONSCIENCE AND CONSTRUCTIVE TRUSTS, Law and Contemporary Problems, 56(3), 7-27 (1993).)  Restoration of respect for the “all elements” rule is a precondition for return to a more logical and predictable section 101 regime.

4. Is a new and beneficial result improving a technological process available to rebut an objection that claimed subject matter falls within the law of nature, natural phenomenon or abstract idea exception?

Such results are routinely ignored both in the software arts, as demonstrated by Recognicorp, and in life sciences as evidenced by Ariosa and Athena. The principle of granting patentable weight in cases that involve beneficial ordered combinations is aptly summarized by Justice Bradley in Webster Loom Co. v. Higgins, 105 U.S. 580, 591 (1881): “It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.” That opinion was cited with approval by Justice Brown in Washburn & Moen Mfg. Co. v Beat-‘Em All Barbed Wire Co., 143 U.S. 275 (1892) and in Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403 (1902). Similarly, in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Court observed of the Adams invention: “The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.” No credible reason has been put forward why new functions or results which suffice under Section 103 should not be equally persuasive under Section 101 or why the specific provisions enacted by Congress under section 103 and recently approved by the US Supreme Court in KSR should be freely and summarily disregarded under section 101.

5. Is the Alice test, as applied in the breadth of the present decisions, incompatible with the obligations of the United States under Article 27 of TRIPS?

In the software arts, it is plainly arguable that the outcome in Recognicorp conflicts with the landmark opinion of the EPO Appeal Board in T 208/84 Computer-related invention/VICOM, where the Appeal Board agreed with the Examining Division that a method of digitally filtering a two-dimensional data array was a mathematical method, but that as a matter of broad general principle, a method for image processing is patent-eligible subject matter under Articles 52(2) and (3) EPC. Corresponding patents were granted for that invention in the U.S. and Canada, and the principles involved would be respected in many other countries. In the Chartered Institute of Patent Attorneys (CIPA) amicus brief in Athena, it was pointed out that the Case Law of the Boards of Appeal of the European Patent Office, 7th Ed. 2013, explains at page 15 that discoveries, scientific theories and mathematical methods excluded under Article 52(2)(a)-(d) EPC share the common feature that they do not aim at any direct technical result but are rather of an abstract and intellectual character, and that:

[i]f a new property of a known material or article is found out, that is mere discovery and unpatentable because discovery as such has no technical effect and is therefore not an invention within the meaning of Art. 52(1) EPC. If, however, that property is put to practical use, then this constitutes an invention which may be patentable. To find a previously unrecognized substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable.

The TRIPS Factor

This statement encapsulates the proper bounds of the exclusion under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Article 27 (on Patentable Subject Matter) and any difference in United States law arises from over-expansive interpretation of Mayo, Myriad, and Alice. The Athena invention was published as WO 01/96601, subsequently granted in Europe as EP-B-1327147 and granted in Canada as Patent No. 2455271.  Quoting from Judge Moore’s dissenting opinion in Athena:

“Since Mayo, we have held every single diagnostic claim in every case before us ineligible… We have turned Mayo into a per se rule that diagnostic kits and techniques are ineligible.”

The view of many U.S. colleagues is that her view is correct, and there is now a per se exclusion of diagnostic method inventions in the United States, which is fundamentally more limited than the subject matter allowable in the European Patent Office and in most other countries worldwide.

Very notably, the Federal Court of Australia recently held Sequenom’s patent for methods of prenatal testing to be valid and infringed, confirming that diagnostic methods which involve the practical application of a natural phenomenon remain patentable in Australia. See Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011. The court held that the conclusion of the U.S. Federal Circuit was problematic and was a result of its dissection of the claims into their constituent parts, which was contrary to National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252 (NRDC) and D’Arcy v. Myriad Genetics Inc (2015) 258 CLR 334 (Myriad) [524]. In summary, at [526] that:

The Patent does not simply claim the discovery of cffDNA in maternal blood. Rather, it claims a new and inventive practical application of the discovery comprising a method requiring human action to detect, in an artificially created sample of maternal plasma or serum, a DNA sequence as being of fetal rather than maternal origin. And prior to the invention, no-one had worked or was working a method comprising the detection of cffDNA in plasma or serum samples extracted from pregnant females.

The Violation Must be Corrected to Avoid Complaint

The present U.S. eligibility jurisprudence, and especially that of the Federal Circuit, not only creates serious issues of U.S. domestic law but also arguably places the U.S. in violation of its obligations under the TRIPS treaty with respect to inventions at both ends of the subject-matter spectrum. Acts of Congress, including Section 101, where fairly possible, ought to be construed so as not to conflict with international law or with an international agreement with the United States, particularly where, as with TRIPS, the United States was the moving spirit behind the treaty. See Murray v. The Schooner Charming Betsy, 6 U.S. (2 Cranch) 64, 118 (1804). Although there may have been room for doubt prior to the en banc refusal in Athena and the Australian decision in Ariosa, it is submitted following Judge Moore’s dissent that the situation has become a virtual certainty.

It will be recalled that the TRIPS treaty came into effect in 1995 providing for the grant of patents in all fields of technology. In Europe, partly as a result of the increasing importance of biotechnology and genetic engineering inventions and partly in response to TRIPS article 27 the European Union passed Directive 98/44/EC in July 1998. Recital 12 reads:

“Whereas the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) (5) signed by the European Community and the Member States, has entered into force and provides that patent protection must be guaranteed for products and processes in all areas of technology; …”

See also Article 1 of the Directive which gives over-riding importance to the obligations of Member States under the TRIPS agreement.

The Directive concerns biological material, i.e. any material containing genetic information and capable of reproducing itself or being reproduced in a biological system. Art. 3(2) provides that: “Biological material which is isolated from its natural environment or produced by means of a technical process may be the subject of an invention even if it previously occurred in nature.” Furthermore, Art 5(2) provides that an element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element, subject to the condition (Art 5(3)) that its industrial application must be disclosed in the patent application. The Directive has been incorporated into the Implementing Regulations of the EPC (Rules 27-29) and into United Kingdom domestic law. The proposition that the EU would have passed this Directive if it had been contrary to what was generally understood at the time to U.S. law defies credibility. There are therefore serious arguments that the Supreme Court opinion in Myriad was at least partly per incuriam since its denial of eligibility to an isolated DNA coding for a BRCA1 polypeptide is inconsistent with the Directive and also arguably contrary to the understanding of the TRIPS contracting states. Compare the Myriad holding with T 1213/05 UNIVERSITY OF UTAH/Breast and ovarian cancer affirming eligibility of nucleic acid probes comprising partial DNA sequences of the human BRCA1 gene which were held to be isolated elements of the human body as defined in r.29(2) EPC and thus patentable subject-matter. It is difficult to see how the categorical exclusion of diagnostic methods presently created by successive decisions of the Federal Circuit can be reconciled with the obligations of the United States to grant patents in all fields of technology.

The interests of Oxford University, a world-famous research institution, have been damaged by the decisions in both Ariosa and Athena. The interests of the equally famous and respected Max-Planck Gesellschaft have also been damaged in Athena. It would therefore seem that there are now grounds of complaint for TRIPS violations open to both the United Kingdom and the German governments. Reliance on U.S. exceptionalism is especially inappropriate and unseemly with reference to the provisions of a treaty that was the result of lobbying by the United States in relation to TRIPS Article 27. Hopefully, once these facts become acknowledged, Congress or the U.S. courts will take appropriate remedial steps before any such complaint need be pressed.


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Join the Discussion

18 comments so far.

  • [Avatar for Paul Cole]
    Paul Cole
    September 26, 2019 05:42 pm

    @ Anon

    Just to thank you for your comments.

  • [Avatar for Anon]
    September 26, 2019 04:04 pm


    To your other main thrust here: that the treaty under TRIPS that the US is a signatory to (and beyond the fact that for US law, treaties are simply not typically a self-executing type of thing — this being due to our Separation of Powers), I have pulled out some of my TRIPS reference materials and wish to provide some additional comments for your consideration.

    In the introductory prologue (prior to Part I), the Members are addressed and reminded of a few items.

    One that caught my eye was this (emphasis added):

    Recognizing that intellectual property rights are PRIVATE rights;

    Distinguishing PERSONAL (of which, Greg De Lassus has oft made note that “Public Franchise” rights remain a form of personal property), this “recognition” flies directly in the face of what our Court (and courts) have viewed of late the private versus public aspect (vis a vis Oil States).

    Other items that caught my eye were:

    Part I Article I Paragraph 1 is worth noting (per my earlier statement as to the US and our Sovereign choice of the broader protection for items within the Useful Arts as opposed to any sense of “technological arts.”

    Part II Section 5 Articles 27 – 34 are the substantive items dealing with patents. Article 30 is purported to cover Exceptions (although putatively, this is exceptions to rights conferred as opposed to exceptions to the laws governing the creation of the rights).

    The terms used in Article 27 for “Patentable Subject Matter” (prior to the ‘subject to’ conditions, and noting the limited exclusions of paragraphs 2 and 3) are (emphasis added):

    patents shall be available for ANY inventions, whether products or processes, in all fields of technology

    This distinguishes “fields of technology” to be something different than “capable of industrial application” (which falls to the ‘subject to’ conditions)

    Notably, I did not find a statement that I had in mind for my post 4, item 2) above.

  • [Avatar for Anon]
    September 26, 2019 02:30 pm

    No Paul – your assumption is quite in error, as we both know that by using the “C” rather than a “c” that I was signifying the root cause of the Supreme Court.

    Asking SCOTUS to help fix a mess that SCOTUS made…. See my comments above at 11 and at 10.

    By the way, the link to the PatentDocs discussion:

    You are welcome.

  • [Avatar for Paul Cole]
    Paul Cole
    September 26, 2019 01:23 pm

    I assume you mean by Court the CAFC in Athena. That is precisely why a SCOTUS hearing is needed, or legislative action.

  • [Avatar for Anon]
    September 26, 2019 12:55 pm

    Except for the fact, Paul that our Court simply has not done what you suggest.

    But then again, that’s just case law baggage, right?

  • [Avatar for Paul Cole]
    Paul Cole
    September 26, 2019 10:48 am

    @ Anon

    In relation to “mere outward presentation” my purpose is NOT to excuse the courts for unreasonable disregard of the true meaning of the subject matter claimed. Instead, the purpose is to EXCLUDE the cases where there is reasonable room for argument, and to point to the claims where it is INISPUTIBLE that there is coverage within one or more of the four eligible categories. For example, the Athena claim that I have discussed ends with a precipitate which is a newly formed compound of an autoantibody and two other materials. There is NO QUESTION that such new compounds are eligible “compositions of matter” within section 101 and NO ROOM for dispute that they are not. So therefore should be a process claim in which such a compound is made (in vitro, not in vivo).

    In relation to your second recent comment, my statement simply quotes the MPEP.

    You have an interesting point on the linguistics. The Supreme Court decisions repeatedly introduce the concept of judicial exception with the explanation and examples precisely as illustrated in the Venn diagram. If the term “exception” refers to something which would ordinarily be covered by a rule, but is excluded for one reason or another, then I think that the Supreme Court and other courts are misusing the language. If you look at the core definitions of the three excluded concepts as set out on the diagram and scrupulously copied from the SCOTUS opinions they define subject matter which simply does NOT fall within any of the eligible categories. My “mere outward presentation” language simply acknowledges that there may be situations where outward appearance is found inappropriate as in Alice. The primary concern (because it is the simplest situation) is where outward presentation arguments leave no room for escape and the claimed subject matter falls as a matter of substance within one of the eligible categories. In that situation, there is a clear problem of separation of powers. In my view Athena is a paradigm example of an inappropriate rejection in this category because the claimed subject matter falls as a matter of substance in no less than THREE of the ELIGIBLE categories. I know of no better case to put before SCOTUS.

  • [Avatar for Anon]
    September 26, 2019 09:36 am

    Another to wit:

    As succinctly stated by the brief summaries in successive decisions, there is NO overlap between these exceptions and the eligible categories.

    This “succinct statement” is factually (linguistically) false.

    The very meaning of the word “exception” carries its natural meaning (as scrivened by the Supreme Court).

    This is yet another point that has been previously put to you Paul. Your continued insistence on not integrating this point into your repeated memes only serves to highlight the flaws therein.

  • [Avatar for Anon]
    September 26, 2019 08:20 am

    To wit Paul (and I provided you the specifics from the case over at PatentDocs), your statement of:

    if eligibility of the claim as a whole is self-evident, judicial exceptions are not considered

    Is incongruent WITH the Supreme Court Case Law.

    See (at least) Alice.

  • [Avatar for Anon]
    September 26, 2019 07:59 am


    Retreating to the notion of case law “baggage” cannot resolve the problem of case law baggage.

    There is an adage of not being able to use a mechanism to get yourself out of trouble caused by the very same use of the mechanism.

    This is why I have been persnickety in “chasing you” to apply a truly critical eye to the “case law” generated by our Supreme Court that itself has scrivened a Gordian Knot of contradictory writings over-riding the plain, simple, and direct words of Congress.

    Retreating to that “under layer” and “magic” of “case law” IS the problem and YOU become a part of that problem in the manner of your advocacy.

    Also, you (again) have not given me a direct answer here. What exactly do you mean with your “wiggle” words of “mere outward presentation” and regardless of the pithy quote to President Lincoln, our Congress did NOT designate the Court to be the entity that sets the invention. Plus, you retreat (again) to Case law which is the problem. By the way, you fail with your view of process according to that same case law as you do not properly use the Machine or Transformation element for the process category. Our case Law was 9-0 at the Supreme Court rejecting the position that you advance.

    At the end of the day, your simple set use is simply flawed.

    You have been shown why. It is disappointing that you have not taken my instructions to heart.

  • [Avatar for Paul Cole]
    Paul Cole
    September 26, 2019 05:50 am

    @ Jam and Anon

    For the avoidance of doubt, there are FOUR eligible categories under 35 USC 101 – process, machine, manufacture or composition of matter. Each of these has a good deal of case law baggage as explained in MPEP # 2106. It was not practical to summarise the case law in the diagram, but the case law is well-known to practitioners.

    There are also THREE judicial exception categories. In the Venn diagram these are identified together with the explanatory examples that are given in successive decisions of the Supreme Court. As succinctly stated by the brief summaries in successive decisions, there is NO overlap between these exceptions and the eligible categories.

    It is necessary to consider the issue of mere outward presentation. Memorably President Lincoln pointed out that calling the tail of a dog a leg does not make the tail into a leg, and the dog still has four legs. So calling a sequence of steps a process does not necessarily make it a process – it is an act or series of acts performed on the subject matter to be transformed into a different state or thing and to produce a given result. The nature of the steps, whether they involve the hand of man, and the nature of the alleged transformation all fall to be considered.

    Testing for mere outward presentation does not impugn the distinct nature of the seven identified categories. The Venn diagram is clearly and fairly representative of the legal situation within the US Sovereign according to established case law.

    Jam says: “Thus, a correct Venn diagram according to US case law should include the statutorily eligible concepts as subsets within each of the ineligible concepts.” Self-evidently that is rubbish because, as explained in the posting, exceptions are narrowly construed and do not over-ride or cancel the statutory provisions enacted by Congress. I do not believe that Jam considers that this represents what the law ought to be, only the misguided interpretation of the Federal Circuit currently.

    The point of the Venn diagram is to emphasize the distinctiveness of the two categories and the problems created when judicial interpretation creates overlap. For example, as explained in my earlier posting, the Athena diagnostic process involves THREE new compounds which as a matter of long-established case law, judicial practice and USPTO practice clearly and unequivocally qualify as compositions of matter. The panel opinion inexcusably failed to consider the implications of this fact and merely considered the judicial exceptions which were interpreted very broadly. In my opinion this raises very serious separation of powers issues.

    Why bother with set theory? Because it puts the issue plainly and starkly so that it should be readily apparent even to a person such as Judge Reyna who on his own admission in the early days of his appointment had little knowledge of technology or patent law. And it is not intended to illustrate scrivening at the margins, but instead problems arising from inventions that are factually in the CENTRE of one or more of the statutory categories but are nevertheless deprived of eligibility through judicial exception.

    Very usefully, the MPEP at 2106 has Eligibility Step 1: The Four Categories of Statutory Subject Matter and only then goes on to consider the judicial exceptions. According to the flowchart which is included in this MPEP section, if eligibility of the claim as a whole is self-evident, judicial exceptions are not considered and the claim qualifies for eligibility.

  • [Avatar for Anon]
    September 25, 2019 08:03 pm

    Given Paul’s continued attempts to use Set Theory (and his avoidance of certain counter points presented to him — for example, the direct record of the Alice case — one has to wonder what “wiggle room” is contained in Paul’s choice of the phrase: “and not mere outward presentation”…?

    Has Paul revoked the charge of the US Congress who explicitly set forth exactly which party has both the power and the responsibility for setting what the invention IS?

    Is Paul being a part of the problem in taking up the view of the US Supreme Court that “those damm scriveners cannot be trusted” and that the Court will “Gist” any claims to “get at” what is really going on?

    If so, why bother with Set Theory at all? Such only invites damm scrivining and any (and all) attempts by wanna be patentees can be classified as “mere outward presentation.”

    Is there some “secret” inward presentation that somewhere Congress has set up for the claims to reflect? Is this a “magic thing” that only the Supreme Court may indulge in (but not any lower entity of the judicial branch)?

  • [Avatar for Jam]
    September 25, 2019 03:17 pm

    Good article. However, the Venn diagram is arguably incorrect under current US case law. Under Alice/Mayo, if the claim is to a statutorily eligible concept (i.e., process, machine, composition, or manufacture), the claim is not “eligible” until it passes the ineligible subject matter test. Under the ineligible subject matter test, a court may fabricate any law of nature, physical phenomena, or abstract idea required in order to reject a claim to a statutorily eligible concept as being ineligible, therein piercing the veil of eligibility. There is no practical limit as to what any of the ineligible concepts are. Thus, a correct Venn diagram according to US case law should include the statutorily eligible concepts as subsets within each of the ineligible concepts. Of course, doing so shows that any patent may be deemed ineligible, which is the practical effect of Alice/Mayo. Any court may pierce the veil of eligibility by simply waving a pen and reciting the magic words “law of nature”, “physical phenomena”, or “abstract idea”.

  • [Avatar for Anon]
    September 25, 2019 12:02 pm


    Let me also add (with credit to Sherry Knowles, as it is her stalking horse) that the US Sovereign has also EXPLICITLY (per the direct words of both our Constitution and our Congress) taken a different view of “discoveries.”

    Again — this may not align with your penchant for chastising the one walking across another’s property, but certainly is a more serious view of that squatter in one’s living room.

    This Sovereign choice may also require you to change your Venn diagrams if you want to apply them to the choices of the US Sovereign.

  • [Avatar for Jim Carmichael]
    Jim Carmichael
    September 25, 2019 11:23 am

    Mr. Cole: thank you for the excellent, thought-provoking article. Perhaps you will inspire future certiorari petitions to run with your Trips argument.

  • [Avatar for Anon]
    September 25, 2019 07:45 am

    That being said, and turning to a different point that you are presenting here, do you have a (legal) definition of “technical” in mind that you are applying to the words of the TRIPS article?

    I ask this question with three caveats:

    1) it must be understood that treaties are NOT self-enacting into law in the US (leastwise, typically not so); and

    2) the TRIPS treaty provides some flexibility for Sovereign to Sovereign implementation (I am traveling currently, so I do not have handy the section of TRIPS that indicates this); and

    3) the US Sovereign has not chosen its patent system to be driven by “technical.”

    These three caveats may not each “align” in the same direction on your provided topic. For example, the third caveat provides that the US has a broader base of eligibility than ROW. It must be appreciated that our Sovereign choice of “Useful Arts” is broader than a ROW version of “technical.”

    This point makes the transgression of the legislating from the bench to be even more egregious (and quite frankly places any ‘transgression’ against the lesser standard of ‘technical’ — whatever that definition — to be a lesser point in regards to respect for the Rule of Law; sort of like complaining about a trespass of someone walking across one’s property while a squatter has taken up residence in one’s living room).

  • [Avatar for Anon]
    September 25, 2019 07:30 am


    There is a difference (and in fairness, to me it is a critical difference) between “not entirely spar[ing]” and employing a critical root cause analysis.

    Your follow-on comment of “insufficient attention has been given to the need to instruct judges inexperienced in patent law as to the relevant technical facts and legal principles on which their decision should be based.” PRESUPPOSES a judicial body that will not be making judgment to their own desires.

    Our Supreme Court (when it comes to patent matters) simply does NOT fit that description.

    And — painfully — this is not an isolated instance (historically speaking – can you place the self-describing quote: “The only valid patent is one that has not yet appeared before us.”…?).

  • [Avatar for Paul Cole]
    Paul Cole
    September 25, 2019 03:27 am

    @ Anon

    If you had noticed, I have not entirely spared the Supreme Court. However, it was incumbent on the litigators to put the relevant law before that Court in its entirety, including the need to respect the obligations of the United States under the treaties that it had entered into. I fear that insufficient attention has been given to the need to instruct judges inexperienced in patent law as to the relevant technical facts and legal principles on which their decision should be based.

  • [Avatar for Anon]
    September 24, 2019 05:15 pm

    Mr. Cole,

    I remain skeptical that your views (and ‘light’ treatment of the Supreme Court decisions themselves, notably Alice) survive a critical reflection as to what the Supreme Court (as opposed to the CAFC) has unleashed.

    There is a rebuttal from Patent Docs to one of your scoffing comments that you never acknowledged.

    Do you need a link?