Patently-O https://patentlyo.com America's leading patent law blog Wed, 23 Oct 2019 17:08:45 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.12 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law Federal Circuit Filters Out Late Argument https://patentlyo.com/patent/2019/10/federal-circuit-argument.html https://patentlyo.com/patent/2019/10/federal-circuit-argument.html#comments Wed, 23 Oct 2019 15:54:45 +0000 https://patentlyo.com/?p=28160 Google LLC v. Koninklijke Philips N.V. (Fed. Cir. 2019)

Although the PTAB granted Google’s IPR petition, it ultimately concluded that Google had failed to prove the challenged claims unpatentable. On appeal, the Federal Circuit has affirmed. U.S. Patent No. 6,772,114; IPR2017-00437.

The non-precedential decision includes an interesting bit on PTAB procedure.  The IPR was instituted on both obviousness and anticipation grounds.  During the trial briefing Google shifted obviousness theory. In particular, Google began to argue that the claimed high-pass-filter element would have been obvious. This was a change because Google had previously argued that the filter was disclosed in the cited art.  Note here that Google did not present this argument until the reply-brief stage. At that point, the Board refused to consider the argument because it was raised at such a late stage and that Philips “did not have a fair and meaningful opportunity to respond.”

On appeal, the Federal Circuit has affirmed — holding that the “Board was within its discretion in declining to consider this obviousness theory that was outside the scope of the petition for inter partes review.”

Claim at issues relate to splitting an audio transmission into high and low frequency portions and then separately filtering them for noise.

Continue reading Federal Circuit Filters Out Late Argument at Patently-O.

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Google LLC v. Koninklijke Philips N.V. (Fed. Cir. 2019)

Although the PTAB granted Google’s IPR petition, it ultimately concluded that Google had failed to prove the challenged claims unpatentable. On appeal, the Federal Circuit has affirmed. U.S. Patent No. 6,772,114; IPR2017-00437.

The non-precedential decision includes an interesting bit on PTAB procedure.  The IPR was instituted on both obviousness and anticipation grounds.  During the trial briefing Google shifted obviousness theory. In particular, Google began to argue that the claimed high-pass-filter element would have been obvious. This was a change because Google had previously argued that the filter was disclosed in the cited art.  Note here that Google did not present this argument until the reply-brief stage. At that point, the Board refused to consider the argument because it was raised at such a late stage and that Philips “did not have a fair and meaningful opportunity to respond.”

On appeal, the Federal Circuit has affirmed — holding that the “Board was within its discretion in declining to consider this obviousness theory that was outside the scope of the petition for inter partes review.”

Claim at issues relate to splitting an audio transmission into high and low frequency portions and then separately filtering them for noise. Because the human ear does not distinguish high-frequency sounds as well, a computationally cheaper filter works well.

10. A transmission system, comprising:

a transmitter including

  • a splitter for splitting up a transmission signal into a low frequency signal within a low frequency range and a high frequency signal within a high frequency range, the low frequency range being lower than the high frequency range,
  • a first coder for deriving a first coded signal within the first frequency range from the low frequency signal, and
  • a second coder for deriving a second coded signal within the high frequency range from the high frequency signal;

a receiver in electrical communication with said transmitter to receive the first coded signal and the second coded signal, said receiver including

  • a first decoder for sequentially applying a narrow-band decoder,
  • an up-sampler and
  • a low-pass filter to the first coded signal to generate a first reconstructed signal within the first frequency range, and
  • a second decoder,

wherein, based on the second coded signal, said second decoder sequentially applies

  • a high-pass filter,
  • a LPC synthesis filter and
  • an amplifier to a noise signal to generate the second reconstructed signal.
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Copyright Alternative in Small-Claims Enforcement Act of 2019 https://patentlyo.com/patent/2019/10/copyright-alternative-enforcement.html https://patentlyo.com/patent/2019/10/copyright-alternative-enforcement.html#comments Tue, 22 Oct 2019 23:44:37 +0000 https://patentlyo.com/?p=28157 Copyright Alternative in Small-Claims Enforcement Act of 2019

H.R. 2426 passed the House with a vote of 410-6.  The Bill now moves to the Senate.

Bill Text.

The proposal would create a small claims copyright infringement court handled by 3 judge administrative panels handled by the Copyright Office.

Would you take your patent infringement case to the PTAB?

Continue reading Copyright Alternative in Small-Claims Enforcement Act of 2019 at Patently-O.

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Copyright Alternative in Small-Claims Enforcement Act of 2019

H.R. 2426 passed the House with a vote of 410-6.  The Bill now moves to the Senate.

Bill Text.

The proposal would create a small claims copyright infringement court handled by 3 judge administrative panels handled by the Copyright Office.

Would you take your patent infringement case to the PTAB?

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Eligibility issues During Inter Partes Review Proceedings https://patentlyo.com/patent/2019/10/eligibility-issues-proceedings.html https://patentlyo.com/patent/2019/10/eligibility-issues-proceedings.html#comments Tue, 22 Oct 2019 15:52:52 +0000 https://patentlyo.com/?p=28146 by Dennis Crouch

Everyone understands an important limitation of inter partes review — that an IPR petition are only permitted in the form of anticipation and obviousness challenges relying upon published prior art documents. 35 U.S.C. §  311(b).

A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

Id. An issue arises when the patentee amends its claims or adds new claims during the IPR proceedings.  Namely, may the PTAB consider other conditions of patentability with regard to the proposed new or amended claims?

In Uniloc v. Hulu now pending before the Federal Circuit, the patentee submitted a set of substitute claims during the IPR proceedings after its original claims were found ineligible in a separate court proceedings. The PTAB denied Uniloc’s motion to enter the substitute claims — finding that those new claims are also ineligible under 35 U.S.C. § 101. I’ll note here that the the amended claims are narrower than the original claims (the amendment added additional limitations).

Continue reading Eligibility issues During Inter Partes Review Proceedings at Patently-O.

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by Dennis Crouch

Everyone understands an important limitation of inter partes review — that an IPR petition are only permitted in the form of anticipation and obviousness challenges relying upon published prior art documents. 35 U.S.C. §  311(b).

A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

Id. An issue arises when the patentee amends its claims or adds new claims during the IPR proceedings.  Namely, may the PTAB consider other conditions of patentability with regard to the proposed new or amended claims?

In Uniloc v. Hulu now pending before the Federal Circuit, the patentee submitted a set of substitute claims during the IPR proceedings after its original claims were found ineligible in a separate court proceedings. The PTAB denied Uniloc’s motion to enter the substitute claims — finding that those new claims are also ineligible under 35 U.S.C. § 101. I’ll note here that the the amended claims are narrower than the original claims (the amendment added additional limitations).

On appeal, Uniloc argues that the denial on 101 grounds was improper:

Interpreting the IPR statutes to allow a § 101 challenge through the back door, merely because a patent owner exercises the right to propose a narrowing amendment, threatens to disrupt the streamlined and focused nature of the IPR adjudication. Amended claims that meet the statutory requirements for motions to amend are narrower than claims that have previously been examined in full and, to the extent there is any room for further challenges under § 101, an accused infringer that cannot avail themselves of a PGR or CBM challenge can still assert ineligibility in a civil action for infringement.

In its briefing, the PTO agrees that § 311(b) limits the scope of petition, but focuses on § 318(a) that requires the PTO to address “patentability of . . . any new claim added” during the course of the proceeding.  For the PTO, Uniloc’s approach appears to be off-the-rails because it could force the PTO to issue new claims via IPR that were never examined for eligibility, utility, written description, or enablement.

One distinguishing feature here, however, is that PTO issued particular regulations regarding amendments and Section 112 — requiring a showing of “support in the original disclosure” for any amendments.  The regulations say nothing about eligibility.  37 C.F.R. § 42.121(b).  The basic idea here favoring Uniloc is that this is an area where the PTO could regulate, but it cannot regulate from the hip via PTAB decisions. See Aqua Prods.

The additional feature of the argument here has to do with the nature that IPR amendments are narrowing amendments.  Narrowing amendments basically do not raise new eligibility problems.

In its brief, Uniloc also has an alternative request — that the Court remand for a new eligibility analysis based upon the PTO’s new eligibility guidance. (The PTAB’s denial here was made prior to the Jan 2019 eligibility guidance, and that guidance was recently updated in October 2019).  USPTO responds that Uniloc did not explain how its amendments would be sufficient to overcome the collateral district court invalidity finding — “Uniloc bears the burden of showing that the Board committed reversible
error.”

Askeladden filed an amicus brief supporting the PTO and patent challenger arguing that the Board has “a statutory obligation to consider the subject-matter eligibility” of proposed amended claims during IPR proceedings.

Briefs: [Uniloc Brief] [PTO Brief] [Hulu / Netflix Brief] [Askeladden Brief]

Patent at issue: U.S. Patent No. 8,566,960 B2 (claimed “system for adjusting a license for a digital product over time”).

= = = =

 

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Claiming a Process Rather than a Mere Principle https://patentlyo.com/patent/2019/10/claiming-process-principle.html https://patentlyo.com/patent/2019/10/claiming-process-principle.html#comments Mon, 21 Oct 2019 00:57:18 +0000 https://patentlyo.com/?p=28134 Claiming a Process Rather than a Mere Principle

by Dennis Crouch

The USPTO is maintaining an updated set of “select eligibility cases” (xlsx file) that the Office sees as useful guidance for its examiners.  Of these, the only 19th Century case is Tilghman v. Proctor, 102 U.S. 707 (1881).

In Tilghman, the Supreme Court sided with the patentee — holding that that the claimed process of obtaining free fatty acids and glycerine from fatty bodies to be patent eligible.

Claim:

I claim, as of my invention, the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.

U.S. Patent No. 11,766.

 

The patent first came before the Supreme Court in 1873 in Mitchell v. Tilghman, 86 U.S. 287 (1873).  In that decision, the Supreme Court limited the claim scope to be confined to the particular method described in the specification that used very high heat (612° Fah) for a short time (10 minutes) and thus, a process operating at a lower temperature (only 400° Fah) for much longer (several hours) did not infringe.

Continue reading Claiming a Process Rather than a Mere Principle at Patently-O.

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Claiming a Process Rather than a Mere Principle

by Dennis Crouch

The USPTO is maintaining an updated set of “select eligibility cases” (xlsx file) that the Office sees as useful guidance for its examiners.  Of these, the only 19th Century case is Tilghman v. Proctor, 102 U.S. 707 (1881).

In Tilghman, the Supreme Court sided with the patentee — holding that that the claimed process of obtaining free fatty acids and glycerine from fatty bodies to be patent eligible.

Claim:

I claim, as of my invention, the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.

U.S. Patent No. 11,766.

 

The patent first came before the Supreme Court in 1873 in Mitchell v. Tilghman, 86 U.S. 287 (1873).  In that decision, the Supreme Court limited the claim scope to be confined to the particular method described in the specification that used very high heat (612° Fah) for a short time (10 minutes) and thus, a process operating at a lower temperature (only 400° Fah) for much longer (several hours) did not infringe.

Seven years later, the Supreme Court changed course — holding that the claim is directed to a process, “and not for any specific mechanism for carrying such process into effect.”  The court explained:

What did Tilghman discover? And what did he, in terms, claim by his patent? He discovered that fat can be dissolved into its constituent elements by the use of water alone under a high degree of heat and pressure; and he patented the process of ‘manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.’ Had the process been known and used before, and not been Tilghman’s invention, he could not then have claimed anything more than the  particular apparatus described in his patent; but being the inventor of the process, as we are satisfied was the fact, he was entitled to claim it in the manner he did.

Id.

At that time, the patent act did not use the term “process” but instead the word “art”, which the Supreme Court interpreted to include processes that are “usually the result of a discovery [made] irrespective of any particular form of machinery or mechanical device.”  As such, the court allowed the patent to be enforced.

In contrasting somewhat parallel language found in the “great case” of O’Reilly v. Morse, Court noted that there is a difference between a patent for a process (patentable) and a patent for a mere principle (unpatentable).

The eighth claim of Morse’s patent was held to be invalid, because it was regarded by the court as being not for a process, but for a mere principle. It amounted to this, namely, a claim of the exclusive right to the use of electro-magnetism as a motive power for making intelligible marks at a distance; that is, a claim to the exclusive use of one of the powers of nature for a particular purpose. It was not a claim of any particular machinery, nor a claim of any particular process for utilizing the power; but a claim of the power itself,—a claim put forward on the ground that the patentee was the first to discover that it could be thus employed. This claim the court held could not be sustained.

The court then contrasted Tilghman’s invention:

The claim of the [Tilghman] patent is not for a mere principle. The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water. He does not claim every mode of accomplishing this result. . . . He only claims the process of subjecting to a high degree of heat a mixture continually kept up, of nearly equal quantities of fat and water in a convenient vessel strong enough to resist the effort of the mixture to convert itself into steam. This is most certainly a process. . . .

It is our opinion that the patent is for a process, that it is a valid patent, and that the defendants infringe it.

Id.

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Lilly v. UroPep https://patentlyo.com/patent/2019/10/lilly-v-uropep.html https://patentlyo.com/patent/2019/10/lilly-v-uropep.html#comments Fri, 18 Oct 2019 16:12:30 +0000 https://patentlyo.com/?p=28132 Today the Supreme Court is meeting to consider certiorari in Lilly v. UroPep.

Whether a single-step patent claim that describes its point of novelty solely in functional terms violates the rule against functional claiming set forth in Halliburton v. Walker, 329 U.S. 1 (1946). pic.twitter.com/lSVWKplIMW

— Dennis Crouch (@patentlyo) October 18, 2019

The argument her turns on the fact that the express language of 35 USC 112(f) excuses functional limits in "a claim for a combination" but says nothing about a one-step claim. https://t.co/7TbBsJvXhU

— Dennis Crouch (@patentlyo) October 18, 2019

Supreme Court: What is the Role of Functional Claim Limitations?

Supreme Court 2019-2020: Introduction to the Term’s Patent Cases

 

Continue reading Lilly v. UroPep at Patently-O.

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Today the Supreme Court is meeting to consider certiorari in Lilly v. UroPep.

Whether a single-step patent claim that describes its point of novelty solely in functional terms violates the rule against functional claiming set forth in Halliburton v. Walker, 329 U.S. 1 (1946). pic.twitter.com/lSVWKplIMW

— Dennis Crouch (@patentlyo) October 18, 2019

Supreme Court: What is the Role of Functional Claim Limitations?

Supreme Court 2019-2020: Introduction to the Term’s Patent Cases

 

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PTO Guidance: Bridging the Swamp https://patentlyo.com/patent/2019/10/guidance-bridging-swamp.html https://patentlyo.com/patent/2019/10/guidance-bridging-swamp.html#comments Fri, 18 Oct 2019 13:47:38 +0000 https://patentlyo.com/?p=28128 PTO Guidance: Bridging the Swamp

I recently posted a short statement on the new USPTO Eligibility Guidance. I want to make sure that readers spend some time delving into Appendix 1 of the report that includes four very-well written examples of how the guidance should be applied by PTO examiners.

  • 43. Treating Kidney Disease
  • 44. Denveric Acid
  • 45. Controller For Injection Mold
  • 46. Livestock Management

Note – these are numbered from 43 as a continuation of prior sets of examples released by the PTO.  Each example provides a broadly written claim 1 that is deemed ineligible followed by a set of narrower eligible claims.  The examples provide straightforward analysis of how to get from the claims (and specification) to those answers.

Anyone deep in the case-law will understand that the PTO’s approach does not match tightly with all of the cases. That would be a philosophical endeavor without much attachment to reality.  What you get here from Dir. Iancu, Comm. Hirshfeld, and their team is guidance that PTO examiners can actually follow.  Rather than asking examiners to put on their boots and wade through the swamp, the guidance builds a nice straight bridge right over top. 

Continue reading PTO Guidance: Bridging the Swamp at Patently-O.

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PTO Guidance: Bridging the Swamp

I recently posted a short statement on the new USPTO Eligibility Guidance. I want to make sure that readers spend some time delving into Appendix 1 of the report that includes four very-well written examples of how the guidance should be applied by PTO examiners.

  • 43. Treating Kidney Disease
  • 44. Denveric Acid
  • 45. Controller For Injection Mold
  • 46. Livestock Management

Note – these are numbered from 43 as a continuation of prior sets of examples released by the PTO.  Each example provides a broadly written claim 1 that is deemed ineligible followed by a set of narrower eligible claims.  The examples provide straightforward analysis of how to get from the claims (and specification) to those answers.

Anyone deep in the case-law will understand that the PTO’s approach does not match tightly with all of the cases. That would be a philosophical endeavor without much attachment to reality.  What you get here from Dir. Iancu, Comm. Hirshfeld, and their team is guidance that PTO examiners can actually follow.  Rather than asking examiners to put on their boots and wade through the swamp, the guidance builds a nice straight bridge right over top.  This is the right approach — examiner expertise is prior art and claim definiteness, not whether an invention would be unduly preemptive of freedoms held by all humanity.  Now, we can debate on whether the bridge should be veering right vs left — this one certainly favors patentees. But, there is a lot to be said for a clear-pathway even if it leads a bit off center.

Speaking of swamp-walking.  I do want examiners to get dirty with their work — but expertise is the swamp known as finding and analyzing the best prior art, not answering amorphous questions of law.

[Read the Examples]

USPTO Eligibility Examination Practice

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2019 Iowa Law Review Issue: Administering Patent Law https://patentlyo.com/patent/2019/10/review-administering-patent.html Fri, 18 Oct 2019 11:00:22 +0000 https://patentlyo.com/?p=28111 By Jason Rantanen

I’m thrilled to announce the publication of the articles from the Iowa Law Review’s symposium, Administering Patent Law.  (Although Chris Walker beat me to the punch by a mile.)  It’s a terrific group of articles that focus on issues at the intersection of patent law and administrative law.  Here’s the abstract of my introduction to the issue:

Ten years ago, few people—with the exception of a handful of visionary academics—spent much time thinking about the significance of administrative law to the patent system. Today, administrative law issues pervade the patent system, from examiners and patent judges up to the United States Supreme Court. At the same time, modern administrative law itself faces a series of challenges that call into question its fundamental premises, such as the degree of deference that courts should grant agencies and the amount of political control that is constitutionally permissible or required. What does all this mean for the future of patent law?

Thanks to the support of the David F. Hellwege fund at the Iowa Law School Foundation, this issue of the Iowa Law Review contains an amazing array of scholarship on these topics from some of today’s brightest and most prominent patent law thinkers.

Continue reading 2019 Iowa Law Review Issue: Administering Patent Law at Patently-O.

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By Jason Rantanen

I’m thrilled to announce the publication of the articles from the Iowa Law Review’s symposium, Administering Patent Law.  (Although Chris Walker beat me to the punch by a mile.)  It’s a terrific group of articles that focus on issues at the intersection of patent law and administrative law.  Here’s the abstract of my introduction to the issue:

Ten years ago, few people—with the exception of a handful of visionary academics—spent much time thinking about the significance of administrative law to the patent system. Today, administrative law issues pervade the patent system, from examiners and patent judges up to the United States Supreme Court. At the same time, modern administrative law itself faces a series of challenges that call into question its fundamental premises, such as the degree of deference that courts should grant agencies and the amount of political control that is constitutionally permissible or required. What does all this mean for the future of patent law?

Thanks to the support of the David F. Hellwege fund at the Iowa Law School Foundation, this issue of the Iowa Law Review contains an amazing array of scholarship on these topics from some of today’s brightest and most prominent patent law thinkers.

And the articles themselves:

Administering Patent Law, Jason Rantanen

Rigorous Policy Pilots: Experimentation in the Administration of the Law, Colleen V. Chien

Reasoned Decisionmaking vs. Rational Ignorance at the Patent Office, John F. Duffy

A Functional Approach to Judicial Review of PTAB Rulings on Mixed Questions of Law and Fact, Rebecca S. Eisenberg

Patent Trial and Appeal Board’s Consistency-Enhancing Function, Michael D. Frakes & Melissa F. Wasserman

PTO Panel Stacking: Unblessed by the Federal Circuit and Likely Unlawful, John M. Golden

Elite Patent Law, Paul R. Gugliuzza

Patent Court Specialization, Sapna Kumar

Institutional Design and the Nature of Patents, Jonathan S. Masur

The Hamiltonian Origins of the U.S. Patent System, and Why They Matter Today, Robert P. Merges

Statutes, Common Law Rights, and the Mistaken Classification of Patents as Public Rights, Adam Mossoff

Machine Learning at the Patent Office: Lessons for Patents and Administrative Law, Arti K. Rai

Renewed Efficiency in Administrative Patent Revocation, Saurabh Vishnubhakat

Constitutional Tensions in Agency Adjudication, Christopher J. Walker

Prior Art in Inter Partes Review, Stephen Yelderman

All of the articles are available through direct links above.  If you would like a physical copy of the issue, the Iowa Law Review editors have told me that you should contact the printer at on.demand@christensen.com and request a copy of Volume 104, Issue 5.  I’m not sure what the exact price is, but it’s likely be about $30 including shipping. (The whole volume is $53).

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USPTO Eligibility Examination Practice https://patentlyo.com/patent/2019/10/eligibility-examination-practice.html https://patentlyo.com/patent/2019/10/eligibility-examination-practice.html#comments Fri, 18 Oct 2019 02:35:51 +0000 https://patentlyo.com/?p=28124 Under Dir. Iancu, the USPTO has taken a seemingly broader view of eligibility than the Supreme Court, albeit much narrower than before Bilski, Alice, and Mayo. In January 2019, the PTO published a set of Patent Eligibility Guidance (2019 PEG).  On October 17, 2019, the PTO released a new set of revisions based upon public comments. “All USPTO personnel are expected to follow the guidance.”

[January 2019 PEG][October 2019 UPDATE]

The January 2019 PEG particularly limits “abstract ideas” to three groupings: Mathematical Concepts; Methods of Organizing Human Activity; and Mental Processes.  Under the guidance, claims that do not recite matter within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas” except in “rare circumstance.”  Even if a patent claim recites elements within one of these groupings, the 2019 PEG also makes clear that the claim should not be deemed “direct to” an abstract idea under Alice Step 1 if the judicial exception is integrated “into a practical application of that exception.”

The new 22-page “UPDATE” is designed to provide further guidance and updated examples to help examiners. Topics:

(I) What does it mean to “recite a judicial exception?”

  • Answer: “recite” includes implicit “description”  in the claim;
  • See examples 37-46

(II) Can you further define the abstract idea “groupings?”

  • Mathematical concepts include: mathematical-relationships; mathematical formulas or equations; and mathematical calculations
  • Methods of Organizing Human Behaviour include: Fundamental economic practices or principles; commercial or legal interactions; managing personal behavior or relationships or interactions between people (including playing games);
  • Mental Processes can include claims that require a computer, but do not include steps that cannot practically be performed in the human mind; pen and paper counts as a mental process.

Continue reading USPTO Eligibility Examination Practice at Patently-O.

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Under Dir. Iancu, the USPTO has taken a seemingly broader view of eligibility than the Supreme Court, albeit much narrower than before Bilski, Alice, and Mayo. In January 2019, the PTO published a set of Patent Eligibility Guidance (2019 PEG).  On October 17, 2019, the PTO released a new set of revisions based upon public comments. “All USPTO personnel are expected to follow the guidance.”

[January 2019 PEG][October 2019 UPDATE]

The January 2019 PEG particularly limits “abstract ideas” to three groupings: Mathematical Concepts; Methods of Organizing Human Activity; and Mental Processes.  Under the guidance, claims that do not recite matter within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas” except in “rare circumstance.”  Even if a patent claim recites elements within one of these groupings, the 2019 PEG also makes clear that the claim should not be deemed “direct to” an abstract idea under Alice Step 1 if the judicial exception is integrated “into a practical application of that exception.”

The new 22-page “UPDATE” is designed to provide further guidance and updated examples to help examiners. Topics:

(I) What does it mean to “recite a judicial exception?”

  • Answer: “recite” includes implicit “description”  in the claim;
  • See examples 37-46

(II) Can you further define the abstract idea “groupings?”

  • Mathematical concepts include: mathematical-relationships; mathematical formulas or equations; and mathematical calculations
  • Methods of Organizing Human Behaviour include: Fundamental economic practices or principles; commercial or legal interactions; managing personal behavior or relationships or interactions between people (including playing games);
  • Mental Processes can include claims that require a computer, but do not include steps that cannot practically be performed in the human mind; pen and paper counts as a mental process.

(II) Extended – What if an examiner thinks that a claim recites an abstract idea that doesn’t fit in the grouping?

  • Answer: this must be approved by the TC Director!

(III) How to know if the recited judicial exception is integrated into a practical application? (Still under Alice Step 1)

  • Answer: Ask whether the claim recites “additional elements that integrate the judicial exception into a practical application.”
  • Example: A claim whose “additional limitations reflect an improvement in the functioning of a computer, or an improvement to another technology or technical field.”
  • In understanding whether a practical technical improvement is claimed, examiners are told to look to the specification for “sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.”  A patent will likely fail here if the specification recites the practical tech in conclusory form.

(IV) How does an examiner establish a prima facie case of ineligibility?

  • Inter alia, Examiners should identify the particular claim limitations that recite an abstract idea and explain its grouping.  Examiners need not provide “evidence” beyond an explanation.

[Read it here] We’ll do a series on this over the next several days.

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Trademark Filing Issues https://patentlyo.com/patent/2019/10/trademark-filing-issues.html https://patentlyo.com/patent/2019/10/trademark-filing-issues.html#comments Thu, 17 Oct 2019 19:03:31 +0000 https://patentlyo.com/?p=28115 Trademark Filing Issues

If you have a trademark deadline coming up in the next two weeks, I’d advise that you plan ahead just a bit to ensure that you have enough time to make it through the new USPTO security. The new system will require two-step authentication both for TEAS and TEASi (international version).

  • You’ll need a USPTO.gov account: https://my.uspto.gov/
  • More info here: https://www.uspto.gov/about-us/news-updates/teas-login-requirement

Continue reading Trademark Filing Issues at Patently-O.

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Trademark Filing Issues

If you have a trademark deadline coming up in the next two weeks, I’d advise that you plan ahead just a bit to ensure that you have enough time to make it through the new USPTO security. The new system will require two-step authentication both for TEAS and TEASi (international version).

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Donald R. Dunner (1931-2019) https://patentlyo.com/patent/2019/10/donald-dunner-1931.html https://patentlyo.com/patent/2019/10/donald-dunner-1931.html#comments Thu, 17 Oct 2019 18:44:37 +0000 https://patentlyo.com/?p=28113 Donald Dunner passed away this week at 88. He was a dean of the patent bar, excellent attorney, and a good friend to many of us. I personally learned a tremendous amount from Don – both in our private conversations and in watching his craft.  Patent law mainstay Hal Wegner called him “one of the most important figures in the American patent field of recent decades.” I already miss him.

  • Tribute from his firm
  • Law.Com Tribute
  • IPWatchdog Tribute
  • BIO Article from 2009 (via Hal Wegner)

Continue reading Donald R. Dunner (1931-2019) at Patently-O.

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Donald Dunner passed away this week at 88. He was a dean of the patent bar, excellent attorney, and a good friend to many of us. I personally learned a tremendous amount from Don – both in our private conversations and in watching his craft.  Patent law mainstay Hal Wegner called him “one of the most important figures in the American patent field of recent decades.” I already miss him.

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