Posts Tagged: "§ 101"

I am particularly concerned about the impact this case law has on the patent application process. Instead of focusing on novelty and clarity, examiners and applicants alike spend time struggling to make sense of Section 101 jurisprudence. That is a serious misallocation of the limited resources of both patent examiners and applicants, leading to longer examination times and less reliable patent grants. Delays in patent review and patent grants can interrupt a startup’s lifecycle, negatively influencing employment growth, sales, and subsequent innovation. This is just one of several factors lengthening patent examination, but it is one that may warrant a congressional response.

IPO supports legislation because the patent eligibility test created by the U.S. Supreme Court is difficult to apply and has yielded unpredictable results for patent owners in the courts and at the USPTO. IPO’s proposed legislative language would address these concerns by reversing the Supreme Court decisions and restoring the scope of subject matter eligibility to that intended by Congress in passing the Patent Act of 1952; defining the scope of subject matter eligibility more clearly and in a technology-neutral manner; requiring evaluation of subject matter eligibility for the invention as a whole; and simplifying the subject matter eligibility analysis for the USPTO, courts, patent applicants, patentees, practitioners, and the public by preventing any consideration of “inventive concept” and patentability requirements under sections 102, 103, and 112 in the eligibility analysis.

In many of the decisions, the examiners and appellants had an opportunity to make arguments based on Alice before the PTAB reached a decision. Yet, the outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection. As indicated above, the reversal rate for a § 101 rejection in December 2016 based on Alice was less than 9%. Equally worrying for potential appellants is that some decisions introduced a § 101 rejection even when prior art rejections were reversed. The PTAB seems to have stopped the practice of urging examiners to review the claims for compliance under § 101 in light of Alice, and, instead, has become more active in introducing § 101 rejections on their own.

On Tuesday, January 31, 2017, at 2pm ET, please join Gene Quinn (IPWatchdog) for a free webinar discussion on best practices for software patents and predictions for 2017… Since May 2016, Judges Moore, Taranto, Hughes, Chen, Newman, O’Malley, Reyna, Stoll, Wallach and Plager have all sign on to decisions that found at least some software patent claims to be patent eligible. That brings the total to ten (10) judges of the Federal Circuit indisputably in favor of patent eligibility for software in at least some instances over the last eight months.

As we approach the fifth anniversary of the Supreme Court’s decision this is what I know — Mayo is a lawless decision by a Court that has become too powerful. Mayo continues to wreak havoc on the patent system and innovators, and has resulted in patent protection being easier to obtain for cutting edge software, biotech, genetic and medical innovations in Europe, Canada, Australia and even China. Mayo is at the root of all of the problems facing the industry relative to patent eligibility, and if I could repeal only one Supreme Court decision in the patent space it would be Mayo. Indeed, the Supreme Court’s decision in Mayo is probably the worst, most wrongly decided case by the Supreme Court in the patent field ever. I say “probably” only because there are so many contenders to choose from that picking only one is truly difficult. Only the Supreme Court’s decision in eBay v. MercExchange comes at all close to Mayo in terms of damage to the patent system. Only the Supreme Court’s decision in Association of Molecular Pathology v. Myriad Genetics comes close to Mayo in terms of intellectual dishonesty.

When addressing the issue of generality vs. particularity, we come across a situation where the inventors described the most crucial aspect of the invention, the classification unit, in general terms in the claim. Consequently, in the PTAB’s assessment, the representative claim did not rise above the threshold test of patentability under section 101. But much of what the PTAB seems concerned about relates to disclosure and there is nothing in the PTAB panel decision in Itagaki to suggest that the PTAB reviewed the specification to determine whether the somewhat generally described terms were given particularized meaning by the applicant. It also raises questions about how the PTAB could have properly conducted an obviousness review if the classification unit was so abstract as to be infirm from a patent eligibility point of view.

The Federal Circuit has found claims to a graphical user interface (GUI) patent to be patent eligible. See Trading Technologies International, Inc. v. CQG, Inc. The decision of the panel, authored by Judge Newman and joined by Judge O’Malley and Judge Wallach, is noteworthy for several reasons. First, the Court did not believe that their ruling affirming the district court to merit a precedential designation. This would suggest that the panel did not believe the decision would add to the body of precedential law, which would appear to make this an easy case for the panel. Second, the claims that have been found to be patent eligible under 35 U.S.C. 101 in this “easy decision” are currently under review by the Patent Trial and Appeal Board (PTAB) in a Covered Business Method (CBM) review because the PTAB believed the graphical user interface patent claims are likely patent ineligible.

In what can be described only as an utterly ridiculous, intellectually insulting, and idiotic decision, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has done the truly absurd. In Ex parte Hiroyuki Itagaki the PTAB has ruled a magnetic resonance imaging (MRI) machine to be patent ineligible because it is an abstract idea, citing the United States Supreme Court’s decision in Alice v. CLS Bank for support.

It is one again time to take a moment to look back on the year that was, reflecting on the biggest, most impactful moments of 2016. For us that means looking backward at the most impactful events in the world of intellectual property. As you might expect, the two recurring themes in this 2016 patent year end review relate to patent eligibility and the Patent Trial and Appeal Board.

The Supreme Court has run two areas of technology, bio and software, into a legal ditch from which there is no escape…. It should be no surprise then that research and progress in these two fields is decamping and moving off-shore, along with the attendant jobs and economic activity. In essence, the boundless technical future, upon which the US economy has long thrived, is being given to others with whom the US competes… As for the 35 USC 101 conundrums, here’s the fix. DO NOT MODIFY 101! Rather, modify the definitions in 35 USC 100 as follows, and also supply a one paragraph legislative history as to why this definition was changed.

To shed light on this issue, and on possible solutions, Inventing America and IPWatchdog will host a conference on Section 101, with remarks by U.S. Senator Chris Coons (D-DE) and panel discussions on the impacts of the judicial interpretations and the corrections needed from policymakers. Participants will include industry leaders and patent law experts. The conference will take place on Wednesday, December 7, 2016, from 8am to 12pm ET, at the offices of Covington & Burlington LLP in Washington, DC. Space is limited. If you would like to attend please RSVP to [email protected].

The Court reasoned that the claims were limited to straightforward steps that a skilled artisan could perform mentally and that the inventors admitted to doing so. The claims, on their face, do not call for computer implementation, and Synopsys did not advance a claim construction requiring a computer. Additionally, complex details in the specification are insufficient to transform broad claims from an abstract idea into patentable subject matter. Given the breadth of the claims, the Court declined to decide if a computer-implemented version of the invention would be patentable under § 101.

Since the Supreme Court’s decisions in Mayo Collaborative Services v. Prometheus Laboratories (2012) and Alice Corp. v. CLS Bank Int’l (2014), patent practitioners have struggled in overcoming the newly imposed hurdle of patent eligibility. Uber is no stranger to this struggle. Of the 53 patent applications that Uber has filed since 2012, 27 of these applications have been examined, wherein Uber has received 13 final rejections based on §101. Uber has fought against many of the §101 rejections. However, Uber has thus far been unsuccessful in most of its attempts.

Simply stated, the industry and the public deserve better than Judge Mayer. His anti-patent views so cloud his judgment that he twists, exaggerates and misrepresents in order to attempt to impose his radical views into the law. There is no place for a judge like that. It is time for him to leave the Court. If he chooses not to do that it would seem appropriate for the Court to do what they would with an attorney who grossly exaggerates and mischaracterizes cases and rulings.

There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section of the Patent Act: § 101 (subject matter), § 102 (novelty), § 103 (non-obviousness), § 112(a) (specification), and§ 112(b) (definiteness). Any application can receive any one of these rejections, but some are more common than others, especially when considering technology center and the type of technology involved. For example, § 101 rejections are very common in TC 3600 due to the presence of the§ 112(a) Alice-heavy e-commerce art units, while fairly simple inventions are more likely to receive § 102 rejections. In addition to prevalence based on technology type, the type of rejection an applicant can receive can also depend upon where their application is in the prosecution process. When it comes to first final rejections, § 103 rejections are the most common.