Posts Tagged: "35 USC 101"

Iancu: Major PTAB Initiatives Rolled Out, Time to Assess Changes and Stakeholder Reaction

Director Iancu did not make much, if any, news speaking at PPAC today. He did, however, indicate that at least for now his major initiatives to reform the Patent Trial and Appeal Board (PTAB) have been rolled out, albeit with the last phase still in proposed rule form. Director Iancu indicated that he believes it is necessary now to carefully assess the implementation of these PTAB reforms and consider stakeholder reaction to the changes.

The Hunt for the Inventive Concept is the Flash of Creative Genius Test by Another Name

Today the flash of creative genius test has reared its ugly head once more, this time as a consideration under a patent eligibility inquiry and 35 U.S.C. 101 instead of under an obviousness inquiry and 35 U.S.C. 103. Today, thanks to the Supreme Court’s unintelligible Alice/Mayo framework, one must ask whether significantly more has been added to a patent claim such that the claim does not merely claim an abstract idea, law of nature or natural phenomenon. This final step in the Alice/Mayotest is referred to by the Courts as the hunt for the inventive concept. It is difficult not to notice the similarity between this hunt for the inventive concept that takes place when reviewing a claim under 101 and the supposedly defunct flash of creative genius test Congress attempted to write out of patent law in 1952.

Is the Federal Circuit Closer to Requiring a Real Claim Construction for Patent Eligibility?

To date the United States Court of Appeals for the Federal Circuit has not explicitly required district courts to conduct a formal claim construction prior to determining whether a patent claim is directed to patent eligible subject matter. How one can know whether a patent claim is directed to patent eligible or patent ineligible subject matter without a full-blown claim interpretation is a mystery. It is axiomatic that one cannot know what a claim actually covers unless and until a proper analysis is conducted. Yet, district court judges somehow know with certitude what a claim covers while doing nothing more than a facial review of the claim that would be considered a defective and reversible claim construction if done at a later stage of the proceedings when actually attempting to define the metes an bounds of the claim.

Boston Patent Law Association Announces Support for IPO-AIPLA Section 101 Legislative Fix

The Boston Patent Law Association (BPLA) has announced its support for a proposal for a legislative fix to 35 U.S.C. § 101, the statute governing basic patentability in U.S. patent law, which was jointly offered earlier this year by the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA). The BPLA now becomes the latest patent law organization to support the proposed legislative amendment to Section 101 that is designed to address major uncertainties in patentability stemming from various cases decided in recent years by the U.S. Supreme Court.

Why isn’t Congress Upset about Judicial Exceptions to Patent Eligibility?

Some courts have characterized this final inquiry as “the hunt for the inventive concept.” That would make some logical sense if and only if a claimed invention that is novel and non-obvious would be necessarily found to have satisfied the inventive concept requirement. Alas, that is not the case. Under the ridiculously bastardized law of patent eligibility foisted upon us by the Supreme Court it is actually possible for a claimed invention to be both new and non-obvious and to somehow not exhibit an inventive concept under what is considered a proper patent eligibility analysis. Of course, it is a logical impossibility for a claimed invention to be both novel and non-obvious while simultaneously not exhibiting an inventive concept. If something is new and non-obvious it is by definition inventive. This disconnect merely demonstrates the objective absurdity of the Alice/Mayoframework.