Commissioner Hirshfeld on Increasing Certainty in US Patent Law

Guest Post by Stephen C. Glazier, Partner at Akerman LLP

On April 26, 2018 the U.S. Patent Commissioner, Andrew Hirshfeld, spoke at our webinar regarding current developments at the U.S. Patent Office. [Link Below]

A major theme of Commissioner Hirshfeld’s remarks was the PTO’s revived focus on increasing reliability, certainty, and enforceability of issued patents and the application process.  The underlying goal here is to further increase the value of patents and their beneficial impact on innovative products and businesses.

The Commissioner stated that a first step toward this policy goal will be pursued by new PTO guidance to Examiners and the applicants regarding the application of the Alice-Mayo test for patent subject matter eligibility under Section 101.  Other possible PTO guidance is also being considered on various current issues.

The Commissioner pointed out that a first result in this effort was the very recently published PTO guidance, the “Berkheimer Memorandum“, which can be viewed at this link: https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF. This memo addresses the question of whether an additional element, or combination of elements, represents “well-understood, routine and conventional” activity in a claim directed to an abstract idea, for example, and hence constitute “something more” under the Alice-Mayo test (i.e., patent eligible subject matter).  The memo requires examiners to expressly support their positions with a citation to show an element is well-understood, routine or conventional.  This should mitigate the volume of Alice rejections.  The Commissioner indicated that this memo can currently be used as guidance, despite the fact that it is in the period for public comment until Aug. 20, 2018.

Many commentators feel that this will benefit software and medical diagnostic patents, since Alice rejections are concentrated in these technologies.

The Commissioner commented on volume and other metrics at the PTO.  The number of new patent applications has increased every year since 2009, with about 450,000 new cases filed last year (or about 600,000 if RCE’s are counted).  However, the percentage of RCE’s is declining.  The average time to first action is now about 15 months, and the final time to conclusion of prosecution is about 24 months.   Average pendency of Track One applications until issuance is only about 12 month from filing; although, the allowance rate for Track One is about the same as for regular applications.  The annual number of new Track One applications is down slightly, but remains near the historical maximum of about 10,000 annually.  There are currently about 8,200 patent examiners, of which about 4,700 are primaries.  There are approximately 500 art units.

Related issues and other questions were addressed by the Commissioner in the webinar.  Some of these issues include:  (1) recent Supreme Court patent decisions, (2)  material differences in the allowance rates of various examiners, art units and technology centers, and (3) the process for assigning applications to examiners, art units and technology centers.

A video recording of the Commissioner’s opening remarks, and the subsequent Q&A session with the Commissioner, may be reviewed in their entirety at this link: https://www.youtube.com/watch?v=svxQH7a3SwM&feature=youtu.be

 

 

72 thoughts on “Commissioner Hirshfeld on Increasing Certainty in US Patent Law

  1. 8

    Behind a paywall (unfortunately), is an article written by Ryan Davis titled “Analysis Fed. Circ. Judges’ Plea To Reps Shows Patent-Eligibility Angst” in which he details the impact of the Court’s meddling and the fact that even a typically anti-patent judge (Lourie) has arrived at “calling out” the Court.

    Notably – and in direct substantive opposition to the typical bleating of the anti-patent propagandists here on this blog (Paul and Malcolm), this article provides a laundry list that takes the opposite of the “What, me worry?” positions advocated by Paul and Malcolm.

    There really is fire under all this smoke.

    Anyone calling for “substantive comments” would do well to include those particular substantive items.

    1. 8.1

      Anon, that is an outright and despicable lie about what I have said several times here re the 101 Alice ambiguity problems.

      1. 8.1.1

        I call B.S. on you, your umbrage, and what you are doing in the last several threads and your “linear, thus no effect” cra pola.

        Maybe instead of mere bland umbrage, you take note of the fact that there IS fire afoot…

    2. 8.2

      There really is fire under all this smoke.

      What’s under the “smoke” is a tar pit of logic patents and patents that protect information content in certain “tech” contexts.

      Just get rid of that and pretty much all of the “ambiguity” disappears.

      Of course, this assumes that “ambiguity” is the actual problem for the biggest whiners but we all know that’s not the case. The actual problem is that it’s not easy enough to obtain and enforce the kind of cr @p logic patent that a middling patent attorney could scribble down at a c 0 cktail party while “br@ instorming” with the managing partner’s wife.

      1. 8.2.1

        Yet again with the dissembling of “logic patents”…

        How IS your campaign to obtain copyright on logic coming along…?

  2. 7

    In Patent Commissioner Hirshfeld’s webinar were statistics that not only have new U.S. patent applications been increasing, but recently the RATE of their increasing is increasing – 3% versus 1% or so in prior years. [He was responding to erroneous internet allegations that AIA IPRs and Sup. Ct. cases have discouraged and reduced use of the U.S. patent system.]

    1. 7.1

      rah rah

      1. 7.1.1

        Uhoh, someone may need to get Paul a tissue.

        (As for substantive, maybe note that the volume is NOT determinative of the harm from the “allegations.”

        But please, continue the Alfred E Neumann schtick, it’s sooo you.

  3. 6

    There is very little that is “uncertain” about contemporary 101 jurisprudence. It’s not difficult to understand or carry out an analysis.

    The people who believe that it’s “difficult” are the same people who will turn around and tell you that “103 can take care of everything.” In other words, these people are utterly clueless and have the intellectual honesty of a low-level mafia member with someone else’s gun barrel in his mouth.

    1. 6.1

      Lovely Accuse Others with your dissemblings here Malcolm.

  4. 5

    DC: The memo requires examiners to expressly support their positions with a citation to show an element is well-understood, routine or conventional. This should mitigate the volume of Alice rejections.

    LOL Because why? Because networked computers aren’t conventional? Because remote servers aren’t conventional? Because mobile devices aren’t conventional? Because programmable computers that are programmed to carry out logic processing in a particular context aren’t conventional?

    It’s 2018. Wake up, please.

    1. 5.1

      Are protons conventional?
      Are neutrons conventional?
      Are electrons conventional?

      Oh wait, do you mean configurations of such?

      (Typical “logic” from Malcolm )

      1. 5.1.1

        do you mean configurations

        Nobody knows what “argument” you’re making “anon” because you never finish it. The last time I checked nobody is getting a valid patent on a composition claim that recites a “conventional” configuration and a new function and that’s been the case for a long time.

        Logic patents (“logic processor configured to …”) are the exception. And it’s entirely the result of thoughtless judicial activism for the sole benefit of the already wealthy. That’s the worst kind. The fact that you can’t or won’t admit this is just further evidence of the depths to which you’ll sink to keep the farce humming along.

        1. 5.1.1.1

          LOL – “nobody knows…”

          Yet again, Malcolm, you prevaricate and refuse to recognize that the absurdity presented with the “Big Box of protons, neutrons and electrons” argument is a reflection of your own abysmal “logic”

          The rest of your rant is – as usual – meaningless ad hominem Accuse Others Of That Which Malcolm Is. To which this suffices:

  5. 4

    Alice is wrong and following her down the rabbit hole is wrong. There should be no consideration under 101 as to whether an element is well-understood, routine and conventional (those three questions being 102 and 103 related). Congress needs to step in…
    PS I wonder if counsel that litigated Alice knew or even cared about the briar patch they would create by leading the Sup. Crt. down the rabbit hole.

    1. 4.1

      Everything you wrote here is not only wrong but well understood to be wrong. Get out of your echo chamber and talk to a patent attorney with more than half a brain for a change.

      1. 4.1.1

        Except not, Malcolm.

        Thanks for the Accuse Others meme though (as if we did not have enough of that from you… )

  6. 3

    Speaking of some of the UN-certainty in DESIGN patent cases, here is an excellent report of the strange and expensive trip of Samsung all the way up to a win at the Sup. Ct. and then back down to another jury trial on damages, only to end up even worse off than before they started! :
    Updates from link to writtendescription.blogspot.com

    Written Description
    In the 06/07/2018 edition:
    A Couple Thoughts on Apple v. Samsung (part ?100?)

  7. 2

    This all fine, but the problem is that most of the uncertainty in the patent system presently (over and above what one might call the “baseline” uncertainty present in any system run by humans) is created by the courts (and, less so, the Congress), not the PTO. For this reason, the PTO’s ability to resolve and diminish this uncertainty is rather limited.t does not matter how orderly and predictable might be the process of obtaining a patent if the business of enforcing the patent remains such a toss of the coin.

    1. 2.1

      While I can agree with your view of “ is that most of the uncertainty in the patent system presently… is created by the courts ” (vis a vis, the creation of patent profanity and the violation of separation of powers), the development here should be applauded.

      That development – as I see it – is the Office actually focusing on what the Office controls: examination.

      For F A R too long, examination quality has NOT been the focus that such needs to be.

      As the set-up exists, the Office does not control (nor do we really want it to control) the inputs into the examination process**

      We want people of all ilk to be attempting to obtain patents.
      We want even less than perfect (pro se style) applications coming in.

      We also want a system that is better focused on the examination itself (as opposed to cut-n-paste boilerplate and ill-founded subjective bureaucratic feeling/philosophy driven schlock that infects*** the Office today.

      **Here, I mean the substantive matters, a la the Tafas debacle.

      ***Objective evidence of this has been documented and provided over at that other blog.

      To the extent then, that efforts along the line of living up to the requirements (APA, and even the Office requirements of its own – Berkheimer and when and how Official Notice is permitted), ARE undertaken, those efforts should not be met with a “we should focus elsewhere” or “the Office cannot effect the focus elsewhere” – BOTH of which may be true in and of themselves – but rather, we should encourage the particular branch of the government to act appropriately within the powers of that branch.

    2. 2.2

      This all fine, but the problem is that most of the uncertainty in the patent system presently (over and above what one might call the “baseline” uncertainty present in any system run by humans) is created by the courts (and, less so, the Congress), not the PTO.

      40+ years of cases have given us this deep, dysfunctional administrative machinery with all of these weird terms and tests:

      * “Useful, concrete, and tangible result”

      * “Mental steps”

      * “Extra-solution activity”

      * “Nontransitory” vs. “transitory” or “propagating signals”

      * “Abstract ideas, laws of nature, and natural phenomenon” (Step 2A)

      * “Markedly different characteristics”

      * “An idea of itself”

      * “Mathematical relationships/formulas”

      * “Fundamental economic practices”

      * “Methods of organizing human activity” or “managing human behavior”

      * ” Significantly more” vs. “well-understood, routine, and conventional” (Step 2B)

      …all of which is lashed to a single word in 35 USC § 101: “Useful.”

      This is one of the worst exercises in judicial activism in the history of the American legal system.

      Judges are tasked with interpreting and applying the law as written. They aren’t supposed to fabricate intricate legal structures, nor shape patent policy as a political endeavor. The Supreme Court should have held § 101 vague for voidness four decades ago and forced Congress to do its job.

      1. 2.2.1

        The Supreme Court should have held § 101 vague for voidness four decades ago and forced Congress to do its job.

        For whatever little my opinion is worth, I do not think that § 101 is all that especially vague. It seems clear enough on its face to me. The SCotUS has had to work rather heroically to make § 101 so hard to understand. All of that unintelligibility is the result of the case law, not the statutory text itself.

        If we had a continental civil law system—where the lower courts are supposed to interpret the statutory text itself, without regard to higher court glosses on the same—there really would be no more problems in our patent system than are inherently to be expected in any human-run system.

        1. 2.2.1.1

          “The SCotUS has had to work rather heroically to make § 101 so hard to understand.”

          Hehehe… Your posts often make me chuckle. How true.

        2. 2.2.1.2

          Well, yes, Greg, but in theory Binding Precedent does deliver legal certainty than civil law jurisdictions. The problem arises when the Supreme Court has only a hazy idea of the consequences of the decisions it writes.

          Exception to the hegemony of Binding Precedent is the civil law EPO, because it issues well over a thousand top level decisions per year on the substantive provisions of patentability in the EPC, and those writing all those decisions are out and out patent law expert specialist judges, who for over 40 years now have vied with each other to come up with the most persuasive logic underlying the provisions of the EPC . No supreme court in EPC-land any longer challenges the established caselaw of the EPO. No national court sits in judgement on the decisions made by the Enlarged Board of Appeal of the EPO, thank goodness.

          Mind you, no matter how effective the EPO eligibility (101) test (technical character) and non-obviousness (technical effect) is in a civil law jurisdiction, it remains an open question how well it is suited to use in a common law jurisdiction, helpless without a definition from SCOTUS for that juicy word “technical”.

          Perhaps Greg, civil law solutions don’t always fly, in a common law jurisdiction.

          1. 2.2.1.2.1

            Well, yes, Greg, but in theory Binding Precedent does deliver [more?] legal certainty than civil law jurisdictions. The problem arises when the Supreme Court has only a hazy idea of the consequences of the decisions it writes.

            Amen, brother, did you ever speak the truth. I could not possibly sum it up better than “[t]he problem arises when the Supreme Court has only a hazy idea of the consequences of the decisions it writes.”

            Perhaps Greg, civil law solutions don’t always fly, in a common law jurisdiction.

            My apologies in case I gave the impression that civil law solutions could work here. I definitely agree that one cannot make civil law practices work in a common law system. I merely meant that if ours were a civil law system (which it is not), then most of our present patent law problems would not obtain. That is because the problem lies mostly with the courts (actually, mostly with the Court), not (by and large) with either the statute or the administrative agencies that must implement the statute.

        3. 2.2.1.3

          For whatever little my opinion is worth, I do not think that § 101 is all that especially vague. It seems clear enough on its face to me. The SCotUS has had to work rather heroically to make § 101 so hard to understand. All of that unintelligibility is the result of the case law, not the statutory text itself.

          If you mean to propose the radical idea that it should be read in the simple language that it uses – i.e., if the claimed techniques have some demonstrable utility – then I concur.

          Of course, that was the meaning of the phrase “threshold test”: a very low bar that should be problematic for a sliver of obviously deficient cases, where 99.999% of examination should focus on 102, 103, and 112. That notion seemed to go out the window between 2007 and 2014.

          But when I meant by “vagueness” is that the Supreme Court, after apparently identifying a substantive conflict between the low § 101 standard set preceding Gottschalk and where the bar should be set, had zero legislative guidance as to how the law should correct the perceived error. If patent law was so fundamentally broken as to let through a spate of patents that shouldn’t have been tolerated, then it’s not the Court’s job to fabricate a complex structure from whole cloth to fix it. The evidence is that, after 40 years of wrangling, we’re further than ever from a standard that actually fits the law.

          1. 2.2.1.3.1

            40 years?

            Not so David – the history of the Supreme Court messing up patent eligibility goes much further back. To limit this to “40 years” misses the point that the Act of 1952 was much more than merely “codifying” some well-understood and serene state of law, and was a reaction AGAINST a Court that had become so anti-patent that its own members labeled the Court with the phrase: “The only valid patent is one that has not yet appeared before us” – and make no mistake, one huge tool of the Court for invalidity was the “t001” of ineligibility.

            1. 2.2.1.3.1.1

              Well, it’s true that U.S. patent law has gone through several phases, but each one is kind of distinct in is focus.

              Contrasting with the current struggle to define technology, the problems in the 1930’s involved worthiness or significance. The argument wasn’t: “That invention isn’t the type of thing that should be patentable.” Rather, the argument was: “That invention isn’t significant enough to warrant patent protection,” or: “the applicant didn’t work hard enough to deserve a patent.” It was the “flash of creative genius” test. We’re kind of struggling with some vestiges of that now in the context of § 103, but less so with § 101, by my read.

              The quote that you chose (“the only patent that is valid is one which this Court has not been able to get its hands on”) certainly rings true today… especially at the PTAB. During a Schwegman § 101 webinar yesterday, the presenters revealed that the firmwide success rate on § 101 issues resolved by board decision is… 18%. “And that’s a lot higher than other firms,” they said.

              1. 2.2.1.3.1.1.1

                David,

                Again, a bit of a nit, but you are not correct in attempting to limit the eligibility machinations of the Court.

                You ARE correct in that the Court back then ALSO was involved in the type of machinations that brought about Congress explicitly removing “Flash of Genius.”

                I would even spot you a bit and note that the two are not altogether unrelated (and in the new 103, a direct spot for that explicit expression was provided). None-the-less, 103 itself was driven by the larger context of which I speak.

                1. You may be right, anon. I’ve found it difficult to learn more about patent issues before 1952 – documentation’s just difficult to find on the internet. If you have sources, I’d appreciate some references.

                2. David,

                  I have not been able to put my hands on the material, but down below at 2.2.4, iwasthere adds a helpful avenue for you to look into – recalling that the Court had been permitted a common law ability to set (and by set, it was thought to come to ONE fixed definitional state) the meaning of “invention.” Instead, what happened WAS the veritable “nose of wax” that was ever-changing depending on the claims brought before the Court. Common law was NOT being used as was intended. Judge Rich talks about this as to WHY Congress instead of “invention” opted for the different path of carving out of the prior single paragraph the new and different section of 103.

      2. 2.2.2

        DS, that is an excellent list of terms examiners and judges have been forced to deal with over the years, but not “all of which is lashed to a single word in 35 USC § 101: “Useful.” The case law that created them is not based on that.

        1. 2.2.2.1

          The Supreme Court decision in Alice begins with this:

          Section 101 of the Patent Act defines the subject matter
          eligible for patent protection. It provides:

          “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U. S. C. §101.

          “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.”

          That’s literally their only reference to 35 U.S.C. And every other case follows exactly the same pattern.

          So which “provision” in § 101 are they referencing?

          “New” is § 102-103.

          “Whoever invents or discovers” refers to § 112(a).

          And “process, machine, manufacture, or composition of matter” refers to statutory class issues, i.e., Step 1 – which is pretty much a done deal these days.

          There’s only one remaining “provision” here: the term “useful.” That’s the basis for all of this nonsense.

          1. 2.2.2.1.1

            “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable“

            Long held. What a joke. You mean in all those handful of cases decided on 101 grounds over the last 100+ years prior to Bilski? Such clarity!

            1. 2.2.2.1.1.1

              Bluto, shift the emphasis just a little to the word “we,” and then realize to which branch – expressly – did the Constitution authorize to write patent law.

              The Court’s Royal “we” is an admission that they are violating the separation of powers aspect of the very Constitution that they are guardians of!

              Note then as well, that they employ a tactic which reveals itself to be beyond their authority in trying to write patent law in their image: note that they depend upon a notion of a futuristic ill, a subjective and currently non-existing case or controversy that “such patents” MAY “block” future innovation.

              The word “may” is critical, as that word naturally includes the notion of “may not.”

              Also notice that “blocking” – in and of itself – is a good thing, and a necessary component of what a patent, by its nature IS. ALL patents block – that is what they do. Part of the ability of patent to promote goes beyond what the patent shares and rests in the notion that if you block someone, they may be spurred to invent around.

              Necessity is the mother of invention – as the phrase goes. By the ham-handed and over-reach of the Court, we are actually BLOCKING progress by removing the blocks that otherwise…

              (in other words, taking 101 to be as intended, and letting the rest of the statute do the designated lifting WITHOUT adding any lifting that Court deigns “needs to be added”)

              …fuel innovation.

              The Court shows that is misunderstands a critical and basic nature of patents and innovation with their “0 h N 0 e s – “block” might happen” mindset.

          2. 2.2.2.1.2

            If the “exception” is “implicit” how can it be explicitly “useful”? And besides “Laws of nature, natural phenomena” are logically tied to “new” rather than “useful.” And “exception” could support not being derived from from ANY actual words of 101.
            Not that any of this makes any difference. The Sup. Ct. developed those exceptions to patentable subject matter in its case law long before Alice.

            1. 2.2.2.1.2.1

              If the “exception” is “implicit” how can it be explicitly “useful”?

              The “implication” is the opposite of “useful.”

              Translation: The explicit grant of patents for “useful” inventions implies that patents must not be granted for non-“useful” inventions.

              This is hardly surprising. Look at the history of subject-matter eligibility: Freeman-Walter-Abele hinged on “useful,
              concrete, and tangible results.” And every instance post-Alice where patent-eligible subject matter was found, the court has emphasized the utility of the invention: not merely an “abstract concept,” but the application of such a concept to a technical problem to achieve a useful result.

              And besides “Laws of nature, natural phenomena” are logically tied to “new” rather than “useful.”

              But the courts have stated, repeatedly, that the “new” inquiry is resolved by §§ 102-103, and not by § 101.

              Not that any of this makes any difference. The Sup. Ct. developed those exceptions to patentable subject matter in its case law long before Alice.

              Right – and that’s why I characterized the entire 40-plus-year quest for a clear definition of patent-eligible subject matter as extraordinarily judicial activism over that solitary term “useful” in § 101.

          3. 2.2.2.1.3

            I think you’ve gone sideways here. As I understand it, the judicial exceptions are directly related to “process, machine, manufacture, or composition of matter.” Nothing in the list provided is related to whether the invention is “useful” – in all of the cases, that has been accepted as given, and in some cases the courts have explicitly pointed out that, although the invention is so obviously novel and useful, it is not patentable because it is not part of a statutory class. Statutory class is definitely not a “done deal” – it is the vaguest part of patent law at present.

            1. 2.2.2.1.3.1

              As I understand it, the judicial exceptions are directly related to “process, machine, manufacture, or composition of matter.”

              It is your understanding that is sideways.

              Albeit here, I can see why you would stop your mental processing at that point.

              But the truth needs more critical thinking: the Supreme Court has chosen (somewhat arbitrarily at that) to stake its own rewriting of patent law to section 101.

              In truth, the simplicity of 101 does NOT permit of the additions that the Court wants to make. “Exceptions” – per se – do not attach to EITHER of the two parts of 101.

              The “exceptions” are the scrivining of the Court inserting what it wants after the Congress took away what the Court was doing in the Act of 1952.

              As to “although the invention is so obviously novel and useful, it is not patentable because it is not part of a statutory class. Statutory class is definitely not a “done deal” – it is the vaguest part of patent law at present” – you could not be more off (or have dru nken more of the Supreme Court Kool-Aid).

              Statutory class are meant to be loose categories, and in truth, innovation may often be able to be presented in multiple classes. See the hints in Chakrabarty for this as well as realize that nearly all patents contain claims to an innovation in more than one statutory category.

              Further, read again the Alice case, where the matter was not even before the Court (hence, they lacked Constitutional authority to opine on an item NOT at a case of controversy) that some of claims WERE properly within a statutory class. Your entire premise quickly goes down the drain due to this fact.

              As to “vaguest,” do not confuse breadth with indefiniteness (or vagueness). Just because the categories ARE expansive, and just because an innovation may full well be able to span multiple statutory categories, does NOT mean that the categories are vague. Quite in fact, the categories themselves are crystal clear.

              1. 2.2.2.1.3.1.1

                Sorry, I shouldn’t have used the term “vague”, as that is a term of art related to the statute rather than to what the Supreme Court has done. I intended “muddiest” rather than “vaguest”. My point is that what the court has done is not based on the usefulness of the invention, which you seem to be trying to group the exceptions under, but to the statutory category of the invention. As you note, the court is continuously re-interpreting the Venn diagram of the loose categories of invention to be restrictive and non-overlapping, and less and less of the universe of invention is considered to fit within them. Regardless of usefulness, the court is simply shrinking the definitions of each of the four statutory classes to exclude inventions.

                1. Thanks mike – that was helpful.

                  I do not agree with you as to the treatment of categories of invention (for reasons already listed), but your point is at least understood.

            2. 2.2.2.1.3.2

              As I understand it, the judicial exceptions are directly related to “process, machine, manufacture, or composition of matter.”

              There are two distinct exceptions embedded in § 101.

              The statutory classes come up in the context of Nuijten-style arguments – questions like “This ‘device’ that’s being claimed – is it really a ‘device’ if it’s purely software?”, and “Can a propagating signal qualify as an ‘article of manufacture?'”

              But nothing in Alice or Mayo relates to the statutory class. Indeed, the courts routinely disregard the statutory classes and only look at the body of the claim to understand its subject matter. Sometimes they’ve explicitly stated that they are doing so: there’s a pre-Alice case (whose name escapes me at the moment) in which the Federal Circuit looked at a method claim, found it to be invalid, and then stated something like: “The device claim includes materially the same limitations, so the statutory class is irrelevant.”

              Nothing in the list provided is related to whether the invention is “useful” – in all of the cases, that has been accepted as given…

              On the contrary – note the rhetoric in § 101 analysis in which patent-eligibility hinges on “the effect achieved by the technology” (which is a contorted way for the Supreme Court to invoke the “technical effect” doctrine… without admitting that it’s invoking the “technical effect” doctrine).

              All of that rhetoric about “an improvement of the performance of the device” is aimed at showing that the invention has some technical utility. If it doesn’t – if it is merely a website, or merely a generic presentation of data from a particular source, without any significant value-add functionality – then it is not technically useful, and hence not patent-eligible.

              Intellectual Ventures v. Erie Financial Systems practically shouts this point. The Federal Circuit in that case was confronted with a patent involving attaching XML tags to a database to promote searching, and the opinion basically reads: “Sure, you can attach XML tags as metadata to a database… but that doesn’t actually do anything. It has no technical utility, so it’s not a patentable invention.”

              Statutory class is definitely not a “done deal” – it is the vaguest part of patent law at present.

              My point is that nobody’s arguing over it at the moment, nor has been for several years. The case law kind of peaked with Nuijten (circa 2006).

              I agree that it is a problematic area, but it is also a fairly static one.

              Nothing in the list provided is related to whether the invention is “useful” – in all of the cases, that has been accepted as given, and in some cases the courts have explicitly pointed out that, although the invention is so obviously novel and useful, it is not patentable because it is not part of a statutory class.

              1. 2.2.2.1.3.2.1

                David, thanks. I particularly liked your:

                “All of that rhetoric about “an improvement of the performance of the device” is aimed at showing that the invention has some technical utility. If it doesn’t – if it is merely a website, or merely a generic presentation of data from a particular source, without any significant value-add functionality – then it is not technically useful, and hence not patent-eligible.”

                Words like “useful” and “process” can mean almost anything. To understand 35 USC 101, a good dictionary is not enough. Indeed, in the hands of a zealous advocate, arguing to a hazy court, a good dictionary can a danger to the progress of good law. As ever, context is all. Your contributions help.

                1. It is no surprise at all that you like the use of the word “technical” here.

                  Your “Indeed, in the hands of a zealous advocate, arguing to a hazy court, a good dictionary can [be] a danger to the progress of good law.” is but a gossamer slight at the difference that OUR SOVERIEGN has made when it comes to our providing patents to the Useful Arts as opposed to the Technical Arts.

                  As ever, context is all.

                  Indeed – no matter how much YOU may try to muddy the waters with your incessant attempts to bolster the “EP view” while not paying heed (or respect) to the different choices of the different sovereigns (and here attempt to impugn this difference as somehow being merely “in the hands of a zealous advocate“).

                  I find your conduct shameful.
                  You should as well.

              2. 2.2.2.1.3.2.2

                David,

                Your bringing up of the Nuitjen case does bring up a different aspect here (no matter the attempts to co-opt what you say in order to muddy the water).

                Anyone of any intellect and having beyond the merest rudimentary understanding of physics would look at the Nuitjen case and see that the court was completely detached from reality in how they decided that case.

                CLEARLY, altered singles are manufactures – as that term applies to patent law.

                Let me remind those who may stray to the questioning of the “permanence” or “fleeting nature” of a propagating wave to only look up into the clear night sky to see evidence of such so-called “transient” items that have been around – and more durable – than anything of the more “physical” created things of the hands of man.

                1. anon, I agree. Greg Aharonian has been pushing the point for something like 20 years that information is physical, as are “propagating signals.”

                  Much of the jurisprudence around § 101 is embarrassingly contrary to fundamental principles of physics.

      3. 2.2.3

        Easy fix. Just decree that “useful” is to be construed in the context of “useful arts” which in turn means “technological arts”. Contributions to the technological arts can move forward to be considered for patentability. Everything else is ineligible for a patent.

        After all, patents are inherently a restraint of trade, of free competition. their only justification is when they promote the progress within the field of the useful arts.

        Issue fixed.scotus, screw your courage to the sticking place (as Shakespeare recommended) and tell us that useful means useful arts which means technology.

        1. 2.2.3.1

          “useful arts” which in turn means “technological arts”

          Not per our Sovereign – then again, MaxDrei, you should be well aware of this.

          Further – contrast with your other post: “helpless without a definition from SCOTUS for that juicy word “technical”.

          One has to wonder if you are even aware of your self-imposed conflict here…

          1. 2.2.3.1.1

            I guess you are alluding to something obiter that some judge once uttered, along the lines of “In this jurisdiction, there is no technological arts test”. I agree. But that’s only because SCOTUS still hasn’t told us what “useful arts” encompasses. They think they are being wise, in declining to define useful arts. That may be, but that neglect sure does make it more difficult for the USPTO and the lower courts to cope with eligibility issues.

            1. 2.2.3.1.1.1

              I am alluding to the fact that you are wrong, continue to be wrong, and refuse to have a mind willing to understand that our Sovereign’s Useful Arts is NOT what you want it to be.

              It’s.
              That.
              Simple.

      4. 2.2.4

        As I recall, the entire point of 101, 102 and 103 codification was to overrule the 2nd circuit – ‘gist’ or ‘heart of the invention’, ‘inventive step’, ‘proper subject matter’ etc, etc, by making 101 broad – and force an evidence based inquiry on novelty 102 and non-obviousness 103. Obviously SCOTUS is right back to the mischief of the 2nd circuit that 101 overruled. I guess congress could pass 101 again but this time leave out the word ‘useful.’

        1. 2.2.4.1

          I wonder, can you, IWT, expand on that thought, to excise “useful” from the text of 35 USC 101. Would you write in something else instead? If not, what is left in the statute, after your 101 amendment, to prevent the routine and unproblematic issue of patents on all the ineligible subject matter (like laws of nature) that (according to David Stein) that little word “useful” filters out?

          1. 2.2.4.1.1

            You really have to try very hard to misconstrue David’s point as you do here, MaxDrei.

            It’s beyond not having a mind willing to understand and goes in the opposite direction of a mind trying to misunderstand.

            1. 2.2.4.1.1.1

              Judge Giles Rich. How about his 1964 Kettering Award Address under the auspices of the PTC research Institute, entitled “The Vague Concept of “Invention” replaced by S. 103 of the 1952 Patents Act.”

              Don’t have a link to it though.

              1. 2.2.4.1.1.1.1

                I seem to remember that the 1964 address was adapted from his seminal 1962 paper…

                1. Rich begins by mentioning his earlier Paper, published in five instalments in JPOS, Vol 24, Feb 1942. I saw no mention by him of a 1962 publication of his.

  8. 1

    It’s been clear for years that Unreliability is the biggest problem in U.S. patent law today.

    Patent law started becoming unmoored when fundamental principles started becoming diluted to discretionary judgments. It started with obviousness under KSR, and it’s most obvious with 101 – but it’s also a problem with 112(b), 112(f), and restriction requirements.

    The problem isn’t necessarily that examiners and judges are permitted to exercise their judgment in reaching their conclusions: it’s that they are permitted to make critical determinations based solely on their judgment. Office actions become conclusory statements wrapped in generic boilerplate.

    That kind of patent system is extremely inefficient: the only way to resolve an conflict with finality – non-obviousness, non-abstractness, non-ambiguity, etc. – is to exhaust the legal process. It’s also extremely unfair, since applicants who can afford to exhaust the legal process to get their desired result have an enormous advantage over applicants who don’t.

    Berkheimer and the ensuing MPEP update are a good start. Other areas that require similar review: Nuijten-type § 101 statutory class issues; restriction practice; broadest reasonable interpretation. There’s a lot of work to do.

    1. 1.1

      it’s that they are permitted to make critical determinations based solely on their judgment.

      Not to veer too much into philosophies, but this very much reflects the far liberal left view that “every opinion counts” when such should be more properly reflected in a phrase of “every informed opinion counts.”

      Another far liberal left motive is here as well: accountability is “bad,” when such accountability prevents those from having whatever “opinion” they want to have (basically, forcing people to be inte11ectually honest is “bad,” because doing so hampers a select view that happens to be desired by those for whom honesty would get in the way).

      Evidence of this abounds when one considers – for example – software and the amount of effort that goes into denigrating this area of innovation.

      1. 1.1.1

        This comment seems unmoored when fundamental principles of reality.

        1. 1.1.1.1

          Your Accuse Others meme – borrowed from Malcolm – has the same effectiveness; that is, zero.

          You might instead of the vapid snark seek to inform yourself. But hey, your post does go to prove my point, so perhaps I should say thank you…

          1. 1.1.1.1.1

            If it makes you feel better, I lean relatively left and I don’t think your opinion counts.

            1. 1.1.1.1.1.1

              If it makes you feel better, whether or not my opinion “counts” – TO YOU – matters not at all.

              And yet it turns.

    2. 1.2

      One repeated, but PTO ignored, improvement suggestion is to make PTAB opinions of examiner rejections part of examiner performance reviews.

      1. 1.2.1

        PTAB opinions of examiner rejections could not affect a performance review finalized when the work product was produced, maybe two or three years in the past. Performance reviews are, at most, for the past 12 months, until a military coup takes out the Office of Personnel Management. Besides, most people would not want to be judged by their work before they got smart.

        1. 1.2.1.1

          Yes, that is the excuse, but most examiners are still examiners when they start to get PTAB decisions, and if they are getting extensive reversals there is no good reason for that important quality indicator to be simply ignored.

          1. 1.2.1.1.1

            Do you not understand? Petition OPM, not USPTO.

      2. 1.2.2

        I raised exactly this question with the Office of Patent Quality Assurance. Here’s the response:

        “First, OPQA is focused on identifying and addressing problems that apply to the examining corps as a whole. We conduct quality reviews to identify broad trends that can be addressed by guidance from OPLA or with new training materials. We deliberately don’t apply quality review to examiner ratings because that’s strictly a personnel issue to be resolved within the TC / art unit.

        “Second, the PTAB is so backlogged that we can’t use it. PTAB opinions apply to office actions from 3+ years ago; it would be unfair to penalize examiners for decisions from so long ago.”

        On the one hand, those comments seem sensible, given the establishment of the OPQA. On the other hand, they reveal a severe gap in the institutional functionality of the PTO:

        Nobody at the PTO is responsible for identifying and correcting or eliminating bad examiners.

        Of course, that was exactly the conclusion of the Inspector General report back in 2015:

        The weaknesses we identified with the current performance plan make it difficult to distinguish between patent examiners who are issuing high-quality patents, and those who are not. We are concerned with USPTO’s inability to distinguish and reward examiners performing at a truly outstanding level of performance versus those who are not.

        And while the PTO has made some changes in the past three years, none of it – absolutely none of it – speaks to this point.

        1. 1.2.2.1

          Not to nitpick, David, but

          Nobody at the PTO is responsible for identifying and correcting or eliminating bad examiners.

          is but half of it.

          Add on top of that of which you (rightfully) note,

          add
          a massive entrenched bureaucratic that operates to no small extent hidden in shadows (witness SAWS as an admitted “merely one of” such programs) mechanism within which “bad examiners” are unrestrained, PLUS the proclivity for “checking” Type I errors to the exclusion of “checking” Type II errors,

          PLUS
          the mindset (in that bureaucracy) that hatched the “just say NO” and documented Reject Reject Reject era (during the height of which, the Office boasted that the cliff effect of patent grants plummeting into the low 40’s/high 30’s percentage range was a “sign of quality”),

          PLUS
          the fact that those who are anti-patent in philosophy REFUSE to see these facts, REFUSE to acknowledge these facts, and REFUSE to integrate these facts into the discussion,…

          well, is it any wonder that those who truly care about innovation take such umbrage with the patent system as rendered by the Court, by the executive branch and a “just say No” underlying infection, and by a Congress captured by the monied voice of the Efficient Infringer lobbies?

        2. 1.2.2.2

          PTO should pay Examiners a bonus if and that’s a big if – one of their issued patents survives PTAB.

          1. 1.2.2.2.1

            I think that I “get” your attempted point, iwasthere, but a bonus for actually doing their job…?

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting

Add a picture