Imagine a federal taxation scheme where your taxes are determined by an IRS agent, who is empowered to use “common sense” in setting your taxes at a “fair” rate. Or a Transportation Security Authority where security guards are allowed to admit or exclude passengers from flights based on whether or not they look “suspicious.” Or a Bureau of Motor Vehicles where your driving rights are issued or withheld based on whether or not the officer thinks you’re a “safe” driver.
Government agencies that allocate legal rights are never based on such discretionary mandates, for a large number of plain and obvious reasons. Yet, recent trends in patent law have elevated examiners’ discretion to dominate the formerly rule-based, evidentiary process – such that the outcome is primarily driven by the personal philosophy and temperament of the patent examiner.
Many practitioners have noted the existence of this trend, and some of its effects. The purpose of this article is to explore the sources of such discretion – the particular opportunities in the examination process that are amenable to arbitrary decisions – and that are routinely exploited to compel the outcome toward the examiner’s desired result.
Continue reading The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination
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
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.
Continue reading Patent Examination Types, Part III
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?
Continue reading Mysteries of Patent Law: The USPTO’s Opposition to Patent Term Adjustment
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?
Continue reading Mysteries of Patent Law: Supreme Court’s Patent Law Activism
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.
Continue reading Sharpening the Patent Process
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.
Continue reading Claim Amendments: Clarifying vs. Narrowing