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Encouraging § 101 Ex-Parte Reexamination of Pre-Alice Patents

Encouraging § 101 Ex-Parte Reexamination of Pre-Alice Patents published on 6 Comments on Encouraging § 101 Ex-Parte Reexamination of Pre-Alice Patents

The shift in § 101 law arising from the Alice decision has created a major problem for the patent community: thousands of patents were issued under the more permissive standard of State Street Bank (even modified by Bilski v. Kappos) and remain in force, yet would be found invalid if litigated. Even worse than the invalidation of previously issued patents, some decades old, is the miasma of uncertainty: since Alice has recast patent-eligibility as a purely subjective determination, the only reliable way to determine patent-eligibility is to litigate the subject patent to the exhaustion of the legal process.

Without proactive efforts to resolve this dilemma, the patent community will grapple with this issue for the lifespan of patents issued before Alicei.e., until the year 2034 (and longer in some cases, due to patent term extensions). How might the patent community, and the USPTO in particular, undertake a systematic review of the patent-eligibility of pre-Alice patents?
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Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility

Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility published on 5 Comments on Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility

The Interim Guidance on Patent Subject Matter Eligibility is the authoritative source of the USPTO’s instructions to patent examiners for applying 35 U.S.C. § 101 to pending applications. This document was originally released in December 2014, and has been supplemented with refinements and updates that reflect changes in the law.

The latest update to the Interim Guidance (released in July 2015) provides insightful examples of patent-eligible subject matter, and the USPTO has solicited public comments about the updated document. Responsive to this solicitation and based upon earlier observations of trends in the application of § 101 by courts and examiners, the following recommendations are presented to promote the stabilization of this turbulent area of patent law.
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Alice Applied: A Report from the Trenches About § 101 at the USPTO

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The Alice decision is now sixteen months old, and its effects still reverberate throughout patent law – both from the top down (courts continue to grapple with the broad legal implications of Alice), and from the bottom up (examiners are tasked with applying Alice to specific applications). The ongoing task of reconciling legal theory and daily examination practice weighs heavily upon the USPTO administration, and specifically the Office of Patent Legal Administration.

Following the July 2015 Update to the Interim Guidance on Patent Subject Matter Eligibility, the USPTO is soliciting public comments about the content. This solicitation presents an opportunity to report upon the “ground truth” of how examiners are applying 35 USC § 101 in daily practice – both as a reflection of the impact of the Interim Guidance and the July Update, and as the basis for recommendations for further adaptation of the Guidance.
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Why Does the PTAB Still Have a Backlog?

Why Does the PTAB Still Have a Backlog? published on 13 Comments on Why Does the PTAB Still Have a Backlog?

Here is a simple question:

Why does the PTAB still have a backlog?

This is not a question about why the PTAB incurred a backlog. The source of the backlog is well-understood: In the mid-2000’s, the USPTO administration urged the examining corps to push down the allowance rate in the interest of “patent quality.” Because applications were rejected based on metrics rather than a proper legal determination, applicants responded by filing appeals, thus overwhelming an unprepared appeal board with a surge of incoming appeals.

However, the USPTO has acted to address some of the problems that prompted the backlog. It has stopped focusing on raw allowance metrics, in favor of per-case legal determinations, and it has expanded the PTAB to work through the backlog. Nevertheless the PTAB still has a massive backlog. Ex parte appeals still require multiple years to resolve. Why does this backlog persist?

(Spoiler alert: This article is not really about the PTAB, but about the examining corps and USPTO administration.)
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The Most Dangerous Problem in Patent Law: Unreliability

The Most Dangerous Problem in Patent Law: Unreliability published on 21 Comments on The Most Dangerous Problem in Patent Law: Unreliability

What’s worse than a property system that is inefficient, inequitable, or delayed? Answer: A property system that is unreliable – one in which determinations of property rights are unpredictable, capricious, and incoherent.

Over the past decade, the reliability of the patent system has been critically damaged. No one can predict whether, or when, an application will be allowed. No one can determine whether an issued patent will be found valid or invalid at court – nor whether any higher courts will respect lower courts’ decisions. And no one knows what this turbulent body of law will even look like, twelve months from now.

This unreliability in patent law hurts nearly everyone: applicants, patent owners, competitors, patent examiners, the patent office, and the court system. The only parties that benefit from this chaos are academics, litigators, and speculators – sure signs of a deeply dysfunctional legal process.
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The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility

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In December 2014, the USPTO released its Interim Guidance on Patent Subject Matter Eligibility, which summarized the sprawling case law of 35 USC 101 into examiner instructions. The 2014 Interim Guidance was a cautious document, tracking closely with court opinions, but lacking insight into important questions that the courts had not yet answered. Regarding the critical issue of the types of claims that remain patent-eligible under 35 USC 101, especially for computer-related inventions, this material provided little comfort.

In late July, the USPTO released an update to the Interim Guidance with a remarkably different tone. Undaunted by the unchecked growth of invalidity decisions and very few findings of patent-eligible claims, the July update presents a set of hypothetical claims, characterizes these claims as patent-eligible, and provides an extensive analysis under Alice that supports this finding. Through this bold step, the USPTO fills crucial gaps in 35 USC 101 that the courts have failed and even refused to mend – and although the courts’ conformity with these opinions is by no means guaranteed, the July update adds much-needed balance to the discussion of subject matter eligibility.
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The Software Squeeze: The Treacherous Path for Software Patent Eligibility

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The Alice decision has led to a heap of opinions invalidating patents for computer-related inventions – each holding that the reviewed claims provide (a) an idea that does not involve technology, and (b) an instruction to “apply it” using a generic computer. These decisions rebuke patentees’ failure to limit their claims with the details of a particular technique, and for overbroadly claiming any solution involving a simple concept.

However, a second line of cases, also citing Alice, have invalidated patents for the opposite reason: the claims recite an abundance of technical detail about a specific technique, yet the courts dismiss these details as either “purely conventional,” and/or “mathematical concepts” that are not eligible for patent protection.

These opposing lines of cases, driving against the body of software patents from opposite directions, require the inventors of computer-related inventions to walk a narrow path between qualitative description (claims rejected for overbreadth) and algorithmic description (claims rejected as mathematical or conventional). This path is being steadily narrowed, as the piles of invalid patents on each side continue to mount – threatening a categorical exclusion of computer-related techniques as patent-eligible inventions. This result is astonishing not only in its own right, but in contrast with the Supreme Court’s explicit and consistent rejection of such an exclusion over the 35 years since Diamond v. Diehr.
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Lighting Ballast and Williamson: Functional Claim Language In Focus

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In the past week, two Federal Circuit decisions – Lighting Ballast v. Philips Electronics, and Williamson v. Citrix – have taken up the issue of the sufficiency of functional claim language, and the scope of claims interpreted according to the “means-plus-function” claim form under 35 USC 112(f).

This topic has been simmering for some time, and academics and reform advocates have been clamoring for the courts to pick up this issue. The Federal Circuit now appears ready to entertain these arguments, and a new front has opened in the “patent reform” wars. This topic bears much discussion, as it is likely to be at least as contentious and important as Alice.
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USPTO Proposal: Accept Applicant’s Independent Prior Art Search as Pre-Examination Search

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The USPTO is seeking to implement a pre-examination automated search to assist the start of examination. However, this initiative overlaps with applicants’ earlier search efforts to inform the intake and drafting processes – which the applicant submits as an Information Disclosure Statement… and which examiners routinely disregard.

Instead, the USPTO could identify third-party search vendors that it trusts to provide reliable pre-examination searches. Applicants could choose among these vendors for prior art searching to inform disclosure review and application drafting, and the USPTO could accept the same report (optionally updated based on the filed application) as its pre-examination search. This process yields a variety of advantages – especially the implementation of the USPTO’s pre-examination search with 0% of the cost.
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USPTO Recommendations For Enhancing Patent Quality

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On February 05, 2015, the Federal Register included a notice requesting the submission of comments about how the USPTO can improve patent quality. Consistent with my last few posts on this topic, I have prepared and submitted a set of comments to the USPTO with the following theme.
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