For over 30 years, every major CAFC or SCOTUS decision about 101 patent eligibility – every single one, including Bilski, Mayo, and Alice – has compared the invention under consideration with the classic example of patent-eligible subject matter at the heart of Diamond v. Diehr. Indeed, such frequent citation and approval of Diehr’s rubber-curing invention by these later cases suggest that it is a quintessential example of patent-eligible subject matter.
However, these citations are deeply puzzling, because Diehr’s claimed invention appears to violate all of the Alice Court’s patent-eligibility rationale.
Continue reading The Main Event: Alice v. Diehr
The Alice decision has been heralded as the “end of software patents,” the “end of business method patents,” the “end of patent trolls,” etc.
However, it is difficult to square such characterizations with the actual Alice opinion, which (1) centrally focuses on the absence of specific software in the patent claims; (2) refuses to state that business methods are categorically unpatentable; and (3) makes no reference to the business models of the litigants or the intended uses of the patents.
Rather, the Alice decision has forged a tool that enables the invalidation of patent claims, via dissection into a concept that can be dismissed as “abstract,” and a non-inventive remainder (i.e., implementation) that can be dismissed as “conventional” engineering.
Notably, this dissection technique can be applied irrespective of the field of technology; irrespective of novelty; irrespective of the scope and form of the claim. It can be applied irrespective of whether the patent is “good” or “bad,” and irrespective of how the patentee intends to use the patent. And the expansive manner in which the PTAB and various courts are applying the Alice decision is steadily moving patent law in this direction.
Continue reading The Alice Trajectory
At a high level, patent examination is a straightforward process: The applicant files a specification and claims. The examiner issues an office action setting forth the basis for rejecting the claims. The applicant responds with amendments and/or arguments, and the examiner issues a next office action, etc. This turn-taking continues until the application is allowed, abandoned, or appealed.
However, delving into the details of the process reveals a surprising amount of administrative complexity, much of which centers on the classification of each office action as “non-final” vs. “final.” While the names suggest a distinction of significant gravity (as in “tentative” vs. “terminal”), the option of overcoming the “finality” of an office action by filing an RCE – and even an unlimited sequence of RCEs for a sequence of “final” office actions – negates any such distinction.
These observations present the basis for today’s Mystery of Patent Law: Why does U.S. patent examination involve unnecessary distinctions between “non-final” and “final” office actions?
Continue reading Mysteries of Patent Law: The Pointlessness of “Non-Final” vs. “Final” Office Actions
This final installment of patent examination types presents some examiner behaviors that are simply peculiar, and that interfere with or distort the examination process.
Continue reading Patent Examination Types, Part IV