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The Alice Trajectory

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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.
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Mysteries of Patent Law: The Pointlessness of “Non-Final” vs. “Final” Office Actions

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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?
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Patent Examination Types, Part III

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This installment of patent examination types is a review of examiners’ negotiation tactics. These tactics are used to compel the examiner’s desired result – irrespective of the technical merit of your application and claims.
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Mysteries of Patent Law: The USPTO’s Opposition to Patent Term Adjustment

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The USPTO is organized to give examiners every possible reason to reject unallowable patent applications (and pressuring them to do so, through mechanisms like OPQA review). The courts are also giving examiners ever-increasing options for rejecting broad claims and narrowing patent scope. The logical result is that for patents that survive the brutal gauntlet of patent examination, the USPTO should celebrate the patented achievement and promote the patentee’s rights.

But this presumption runs contrary to one of the USPTO’s consistent policies over the past decade, which raises the question: Why does the USPTO consistently oppose patent term adjustment?

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Mysteries of Patent Law: Supreme Court’s Patent Law Activism

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This is my first entry in a series of posts with a different tone, presenting questions about why some aspects of U.S. patent law are the way that they are, and hazarding some guesses at the answer.

And the first question on my mind is simple: Why is the Supreme Court of the United States so active on patent law issues?

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Sharpening the Patent Process

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Here’s a basic principle of legal systems: Before writing more laws, enforce the laws you’ve got. When a city discovers that its residents are driving recklessly and not following speed limits, the solution is more cops, better radar detectors, and more tickets – not overhauling the local driving laws to be even more strict.

The same principle applies to the patent system. Many of the current problems with the patent system don’t require the haphazard legislative changes sought by “patent reform” advocates – they can be addressed by sharpening the patent process to utilize the laws that we already have more effectively. Like a dull blade, our patent system does not need to be melted down and recast: it just needs to be sharpened.
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Claim Amendments: Clarifying vs. Narrowing

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Unwritten rule #1 of patent examination: If a reply to an office action includes no claim amendments, the examiner can simply copy-and-paste the last rejection.
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Alice Corp. v. CLS Bank: “Basically” vs. “Something More”

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Today’s Supreme Court decision in Alice Corp. v. CLS Bank shows that we’ve basically gone nowhere since the 2010 Bilski decision.
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Patent “Reform”

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To some, the term “patent reform” evokes images of a freedom march, or an effort to cast sunshine into a den of corruption.

For me, the term evokes some classic Beatles lyrics:

You say you want a revolution – well, you know, we’d all love to change the world…
You say you got a real solution – well, you know, we’d all love to see the plan…

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