New PatentlyO Law Journal article: Colleen Chien, Deferring Patentable Subject Matter

This past fall at the Administering Patent Law symposium at Iowa Law, Professor Colleen Chien presented an argument in favor of more intentional experimentation by administrative  agencies such, as the USPTO to test policy concepts and proposed several possibilities.  Below, Professor Chien describes one such project, based on the Merges/Crouch proposal for deferring patentable subject matter analyses in prosecution.  Read the accompanying PatentlyO Law Journal article here:

Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)

Guest post by Colleen V. Chien, Justin D’Atri Visiting Professor of Business Law, Columbia University School of Law; Professor, Santa Clara University Law School

This post is the second in a series about insights developed based on USPTO data. An accompanying PatentlyO Patent Law Journal article includes additional data and experimental design details; both are drawn from Policy Pilots: Experimentation in the Administration of the Law,  written for the 2018 Iowa Law Review Symposium on the Administrative State.

“The journey of a thousand miles begins with a single step.” – Lao Tzu

Responding to frustration with the Supreme Court’s patentable subject matter (PSM) decisions, the Federal Circuit has issued clarifying decisions, the USPTO has released new guidance regarding applying Section 101 (and 112), and Senators Coons and Tillis have been holding roundtables. 101 appeals and rejections, including pre-abandonment rejections, have risen following Alice and Mayo, particularly within impacted technology areas. (Figs 1A and 1B, details here and here). To support tracking the impact of its own guidance and related developments, the USPTO should release updated versions of office action data (the last release was in 2017).

In this post, I propose a complementary approach that aims to conserve agency and applicant resources even while policymakers work to clarify the law. It builds on the idea of deferring 101 subject matter until other issues are exhausted first proposed by Robert Merges and Dennis Crouch, but with some important modifications. Deferral would be at applicant’s option, not mandatory, and the USPTO should roll out this intervention through a controlled trial with randomization, as the agency has done previously, to determine the practice’s effectiveness.

Experimenting with Ordering

The case for deferring subject matter builds on the insight that 101 is rarely the single dispositive issue – among office actions prior to abandonment, less than 15% of TC36BM and medical diagnostic applications and 2% applications overall are “only 101.”  Yet 101 is controversial – the rate of ex parte decisions addressing 101 has also shot up, from less than 10% to over 80% in 2018 in medical diagnostic and software technology areas, and to 26% overall. (Fig 1B)[1]

Deferring 101 would borrow from the Supreme Court doctrine of avoidance, which allows the Court to “resolve[] cases on non-constitutional  grounds whenever possible,” in order to conserve court resources and legitimacy. Other federal agencies have also used deferral, for example, in the mid to late 2000s, when the application of immigration law to same-sex couples in some cases required family separation. To avoid this harsh consequence, Department of Homeland Security prosecutors administratively closed some cases, immigration judges granted continuances for unusually long periods in hopes that the law would change, and US Customs and Immigration enforcement officials granted requests for deferred action. That is to say, they avoided the law by deferring its application.

Avoiding PSM issues would allow cases to resolve, through allowance or abandonment, on less controversial, non-101 grounds.[2]  (The USPTO’s new guidelines implement this logic to a degree, shifting focus towards 112 and away from 101). But making 101 deferral optional, at applicant’s discretion, would preserve the benefits of compact prosecution and the freedom applicants enjoy to select a fast or slow track for each application.

The Advantages of Experimentation

Trying out applicant-initiated 101 deferral through a rigorous pilot has several advantages. First, unlike changing the law or its application which requires all to adjust, only applicants dissatisfied with the status quo would see a change. 85% of office actions don’t even include a PSM rejection I’ve found previously.

Second, implementing 101 deferral as a pilot with randomization, like the USPTO did when it conducted the post-trademark registration proof-of-use pilot, will support effective policy-making through evaluation, iteration, and refinement.[3] Design (intent-to-treat), ethical (through consent) and methodological (power, randomization, etc.) concerns and details are discussed in the accompanying piece.Rigorously tracking the impact of PSM on patent prosecution over the course of a pilot can also provide much-needed empirical support to 101 policy-making in general.

Finally, my proposal preserves the benefits of the status quo, including the little-discussed incentive prosecutors now have to add details to their patent applications and claims, a good thing. In work with students that I presented at the Federal Trade Commission’s recent hearings building on an earlier analysis in IP Watchdog by Will Gvoth, Rocky Bernsden, and Peter Glaser from Harrity & Harrity LLP, I observed that there has been a “flight to quality” among patent complaints and applications. Carrying out a differences-in-differences analysis, we found that specification length and counts of words and unique words in the first claim have grown among software applications relative to others following the Alice decision. Deferring 101 would preserve this previously unexplored impact of the “Mayo-Alice effect” on software patent drafting. If 101 were eviscerated by Congress, so too could the incentive to be more concrete in describing and claiming inventions.

Conclusion

If successful, the treatment would result in the diminished presence of 101 subject matter issues within ex parte appeals and pre abandonment rejections and, potentially, resolution time, e.g. closer to pre-Mayo or Alice levels. Applicant and prosecutor satisfaction with the process, changes made to what gets filed, timelines, and such factors would also be worth tracking.

Read it here:  Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)

With thanks to Santa Clara Law University students Jiu-Ying Wu, Nicholas Halkowski, Marvin Mercado, and Saumya Sinha and to William Gvoth, Peter Glaser, and Rocky Bernsden of Harrity LLP for assistance with data, and Hans Sauer and Jonathan Probell for their comments on earlier drafts.

[1] Even though 101 patentable subject matter issues appear in a quarter of 2018 appeals decisions, this share is still small compared to the share of decisions that mention, for example, “102” (, “103”, or “112” issues though note that these numbers are inflated because they do not include case specific limitations that can weed out false positives based on incidental mentions (such as “ 10/282102”)

[2]  For example, if an invention is incurably anticipated, obvious or unsupported, the case will have been resolved without considering subject matter. Likewise, if the claims have been re-formulated responsive to non-101 rejections and mooted any subject matter defects in the process, PSM will not factor into the application’s outcome.

[3] In that pilot, the USPTO randomly selected 500 registrations to participate in the initial program to assess the accuracy and integrity of the trademark register. Though companies selected to participate in the pilot had to comply with additional regulatory requirements, randomization ensured that the pilot’s findings were representative and its burdens, fairly distributed. See,  77 FR 30197, 30198 (explaining that randomness in the pilot was necessary to “ensure that the resulting assessment is not skewed by consideration of registrations with particular criteria, and that implementation of the rules does not create an unfair burden on specific types of trademark owners”). The results of the test and related USPTO reports, outreach and deliberations were used to expand and make the program permanent.

Prior Patently-O Patent L.J. Articles:
  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
  • Colleen Chien and Jiun-Ying Wu, Decoding Patentable Subject Matter, 2018 PatentlyO Patent Law Journal 1.
  • Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13. (Janicke.2017.ChristmasPie.pdf)
  • Paul M. Janicke, The Imminent Outpouring from the Eastern District of Texas, 2017 Patently-O Patent Law Journal 1 (2017) (Janicke.2017.Venue)
  • Mark A. Lemley, Erik Oliver, Kent Richardson, James Yoon, & Michael Costa, Patent Purchases and Litigation Outcomes, 2016 Patently-O Patent Law Journal 15 (Lemley.2016.PatentMarket)
  • Bernard Chao and Amy Mapes, An Early Look at Mayo’s Impact on Personalized Medicine, 2016 Patently-O Patent Law Journal 10 (Chao.2016.PersonalizedMedicine)
  • James E. Daily, An Empirical Analysis of Some Proponents and Opponents of Patent Reform, 2016 Patently-O Patent Law Journal 1. (Daily.2016.Professors)
  • Tristan Gray–Le Coz and Charles Duan, Apply It to the USPTO: Review of the Implementation of Alice v. CLS Bank in Patent Examination, 2014 Patently-O Patent Law Journal 1. (GrayLeCozDuan)
  • Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Journal 1 (Stoll.2012.estoppel.pdf)
  • Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29.  (Morgan.2011.AIAAmbiguities)
  • Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12 (sarnoff.2011.derivation.pdf)
  • Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent Patent Law Journal 6 (chao.sealedrecords.pdf)
  • Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC):  Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent Law Journal 1 (levi.ftcunsound.pdf)
  • Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent Law Journal 111 (Collins.KingPharma.pdf)
  • Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent Law Journal 95 (matthews.falsemarking.pdf)
  • Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89 (Osenga.pdf)
  • Peter S. Menell,  The International Trade Commission’s Section 337 Authority, 2010 Patently-O Patent L.J. 79
  • Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72
  • Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24
  • Etan Chatlynne, Investigating Patent Law’s Presumption of Validity—An Empirical Analysis, 2010 Patently-O Patent L.J. 37
  • Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24 (Kasdan.Casino.Damages)
  • Dennis Crouch, Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 Patently-O Patent L.J. 19 (2010)
  • Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently‐O Patent L.J. 7  (2010) (Reines.2010)
  • Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) (Nominee Diversity)
  • Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. (Cole.pdf)
  • John F. Duffy, The Death of Google’s Patents, 2008 Patently O-Pat. L.J. ___ (googlepatents101.pdf)
  • Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38
  • Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36
  • Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30 (Download Sarnoff.BIO.pdf)
  • John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. (Duffy.BPAI.pdf)
  • Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1 (Casino-Seagate)

50 thoughts on “New PatentlyO Law Journal article: Colleen Chien, Deferring Patentable Subject Matter

  1. 6

    Large corporate advocate Chien has put out a propaganda paper. How nice. I wish we had someone paid to counter the propaganda like Chien is paid to produce the propaganda. Doesn’t even matter if it is pro-patent or anti-patent nothing in this paper can be trusted. If I read it and find ethical violations, there will be no consequence to Chien. This stream of rub ish that Dennis publishes on his blog should be seen as having no more credence than a blog post and as being paid for by large corporations.

    1. 6.1

      Who knows if Chien is misrepresenting the data. I know I could figure it out with a few hours of effort, but then I figure out she is che ating and what are the consequences? None. The large corporate advocate Chien continues about her merry way getting lots of money and saying whatever she feels like saying knowing there will be no consequences.

      The entire academic structure needs to be changed. Law professors are not “professors” or academics. They are large corporate advocates who work for the propaganda department of corporations.

    2. 6.2

      Patent Trolls are raking in the millions. You think they’d could throw a little money around for comments on IP blogs to trash academics based on insinuation and innuendo.

      1. 6.2.1

        Your version of “Patent Tr011s” is itself a myth created by those who rake in MULTI-millions.

        Sure, there be bad actors (what area of life does not have some?), but please, let’s know when Kool-Aid is being served, who is doing the serving, and the desired intent OF that serving.

      2. 6.2.2

        >>based on insinuation and innuendo

        You mean like these trashy pap ers the large corporate advocates produce?

        I’ve made specific complaints about her “papers” (probably a better name would be propaganda piece). No response from the large corporate advocate.

        1. 6.2.2.1

          And I have made calls for the PTO to tell us whether Andrei Iancu wears boxer. No response from the PTO. What could their non-response mean?!?

          1. 6.2.2.1.1

            Yes Ordinary that is same thing. /sarcasm off

          2. 6.2.2.1.2

            And I have made calls for the PTO to tell us whether Andrei Iancu wears boxer. No response from the PTO. What could their non-response mean?!?

            Probably just residual delay in the system from the shutdown.

            Fyi, Iancu wears Batman underoos.

            1. 6.2.2.1.2.1

              Fyi, Iancu wears Batman underoos.

              Is that based on insinuation, innuendo, or an facts known to you?

      3. 6.2.3

        This made me laugh. Thanks for that.

        1. 6.2.3.1

          I hope you laughed, Greg, while reading a case that covers Constitutional law.

          1. 6.2.3.1.1

            Consider the source.

          2. 6.2.3.1.2

            Sound advice. One can never read too many constitutional law cases.

  2. 5

    In my experience, the 35 U.S.C. 101 issues are often, in practice, deferred to the end. While we get a 35 U.S.C. 101 rejections at the start of prosecution usually there are other, substantive (35 U.S.C. 102/103) issues that once resolved allow the 35 U.S.C. 101 rejection to be quickly disposed of. While there is a pretense that 101s are not dependent on the prior art the reality is that it makes little sense to say a non-obvious invention is convention or that does not represent an improvement to the the technology (if the specification is written correctly).

    It seems to me that codifying what is already in practice would be an easy change and probably decrease the size of responses because boiler plate responses and rejections based on 35 U.S.C. 101 would not need to be made until substantive issues have been resolved.

    1. 5.1

      it makes little sense to say a non-obvious invention is convention

      Not only does it make little sense, it has nothing to do with the law of subject matter eligibility.

      I’m not at all sure what you were trying to say (I’d be afraid to guess) but the fact of the matter is that non-obvious “innovations” are routinely and correctly determined to be ineligible for patent protection.

      If you’re worried about “reality” intruding on your bubble world, then worry about this: the PTO guidance illegally permits (indeed – encourages!) the granting of claims that recite nothing more than thinking about a correlation that has been determined using ANTICIPATED or OBVIOUS PUBLIC DOMAIN METHODS. How does that happen? Because it’s entirely for such PUBLIC DOMAIN methods to be “non-conventional” or “non-routine.”

      Of course this is illegal. Of course the Supreme Court is going to hammer the guidelines and the CAFC’s case law into oblivion. Of course there will be whining. Of course David Boundy could care less. Of course Dennis Crouch won’t chime in because omg it might look “biased.”

      But the hammer is going to come down regardless. Because it has to.

      1. 5.1.1

        A couple edits here for clarity:

        If you’re worried about “reality” intruding on your bubble world, then worry about this: the PTO guidance illegally permits (indeed – encourages!) the granting of claims that recite nothing more than thinking about a correlation based on data that has been determined using ANTICIPATED or OBVIOUS PUBLIC DOMAIN METHODS. How does that happen? Because it’s entirely possible for such PUBLIC DOMAIN methods to be “non-conventional” or “non-routine.”

      2. 5.1.2

        Wow are you delusional.

        1. 5.1.2.1

          Wow are you delusional.

          Pretty sure I’ve heard you say something similar in the run-up to every one of the smackdowns you received.

          Great omen.

          1. 5.1.2.1.1

            The Ends do not justify the Means.

            Celebrating a broken score board does not fix the broken score board.

            Any — and I do mean any “smackdown” has zero to do with any reasoning provided by you because point in fact you supply NO reasoning in your celebration of desired Ends.

            1. 5.1.2.1.1.1

              Setting you vapid aphorisms aside, I’d like you to explain to everyone where the USPTO finds authorization to take public domain data gathering methods out of the hands of the public, should the public feel the need to think about the meaning of the data produced by those methods.

              Where’s the authorization to do that? It’s not coming from the Supreme Court, that’s for sure. The Supreme Court made it crystal clear in Prometheus v. Mayo that you could not do that.
              And that’s not even getting into the First Amendment issues.

              I’m sure David Boundy is very concerned about this, in any event. He’ll be right on it! LOL

              1. 5.1.2.1.1.1.1

                As to “Setting you vapid aphorisms aside

                You attempt to ply a position already countered. Try something else.

                As to “should the public feel the need to think about the meaning of the data

                Your strawman needs to be retired.

                You ask for authorization of a phantom.

                Only you ever attempt that argument.

                And that’s not even getting into the First Amendment issues.

                That made me laugh as you have never gotten into the First Amendment issues in ANY meaningful cogent manner.

                Sure, you mouth a “concern” based on your feelings, but you have yet to actually form a cogent First Amendment / Patent Law intersecting position.

                Maybe (just maybe) waiting for others to actually put together cogent legal positions (whether or not you then engage in any meaningful manner – which is to say, that you do not and only v0m1it your ill-aimed and empty ad hominem), YOU actually do a little of the lifting that you are always so eager to deflect to others…

                (I will not be holding my breath for that)

                1. Sure, you mouth a “concern” based on your feelings, but you have yet to actually form a cogent First Amendment / Patent Law intersecting position.

                  Granting patent claims that purport to protect information, identified by content, where the information is the only distinguishing feature of the claim relative to the prior art, violate the First Amendment of the Constitution.

                  Likewise, patent claims that protect correlations in the context of a prior art data gathering step (by turning people who “determine” the meaning of the data into infringers) also violate the First Amendment.

                  In other words, the government can’t make it illegal for me to save information using a prior art information saving devices, and the government can’t make it illegal for me to correlate (i.e., determine a meaning of) data that I’ve gathered using prior art data gathering technology. The First Amendment exists to prevent that kind of cr @p.

                2. You STILL only “mouth” First Amendment.

                  Maybe you should look at a few actual First Amendment cases and structure an actual argument based on the work done by actual attorneys.

                  A hint: don’t misrepresent granted claims with your version of “purport to.”

                  Your other replies are mindless and meaningless.

                3. How Fn typical of Malcolm – mouth some C R P and invite others to actually make his case (in a comment string that already point out your attempts to deflect any actual lifting).

                  How about instead you do more than show your lack of legal ability in more than patent law, First Amendment law and most anything else having to do with law (here’s a hint: transfer all that time and energy of yours from whining about non-patent law items, and for that matter, throw in the time you spend purely whining about patent law matters, and build a cogent position based in more than your feelings.

      3. 5.1.3

        Not only does it make little sense, it has nothing to do with the law of subject matter eligibility.

        Perhaps – but not in the way that YOU intend.

        It’s not there according to the actual words of Congress.

        But if you accept the scrivining of the Common Law version written (not interpreted) by the Supreme Court, you do NOT have the luxury of dismissing the difference between conventional and the the more commonly known measures related to the state of prior art.

        The words used by the Court cannot be reshaped by YOU to make certain aspects that you do not like to disappear.

        That even worse than the disingenuous, Rule-of-Law disrespecting action of the Court itself, and is totally unmoored from any sense of “interpretation” (and we all know that you have no power of Common Law law writing at all).

    2. 5.2

      The process you describe is not real.

      If you are allowing the Office to not answer all of your arguments in each action (and then later paying by way of RCE to only then answer what should have been answered earlier), you have committed malpractice and owe your clients a refund.

      That is NOT to say that resolution of all issues happen at once, but you damm well better be pressing for resolution of all issues at every step.

  3. 4

    Anti-compact prosecution (no matter how ordered) seems like a non-starter when value is gauged solely from crossing the finish line and meeting all requirements.

    Additionally, putting the most subjective (read that as arbitrary, or Void for Vagueness) element as last in the process, after funds have already been expended, seems like the opposite approach to take EVEN IF some type of “ordering” were to be contemplated.

    This seems like a rather academic mistake.

    1. 4.1

      putting the most subjective (read that as arbitrary, or Void for Vagueness) element

      There’s nothing more “subjective” about 101, certainly not compared to 103 or 112.

      1. 4.1.1

        I don’t know which is scarier – that you think that others might believe your statement here, or that you might believe your statement here.

        By the way, you never did answer my question to you regarding Iancu’s direct comments on the contradictory nature of the Common Law law as written by the courts.

        It is this simply more reality that you refuse to see or acknowledge?

        1. 4.1.1.1

          I don’t know which is scarier – that you think that others might believe your statement here, or that you might believe your statement here.

          Just clutch your blankie and keep telling yourself that you’re winning, Billy! It’s worked so well in the past.

          The most difficult word in the English language is “abstract.” That cylindrical object over there — abstract? Who can say. It’s impossible to know! The structure of this sentence — abstract? Total mystery. Unsolveable stuff. If X then Y. Abstract? You’d have to be Einstein to figure this stuff out. Protein of SEQ ID 24? It’s all Greek to me. Everybody has an opinion and they are all valid.

          1. 4.1.1.1.1

            Your response is simply nonsense.

            As usual.

            1. 4.1.1.1.1.1

              …and it should be noted that if these Court decisions did not align with your desired Ends, you would be screaming bl00dy mur der at the Means being used by the Court.

            1. 4.1.1.1.2.1

              An interesting comment, given some of your recent views expressed (and not supported by you) on other blogs, Marty.

              1. 4.1.1.1.2.1.1

                oddly colored dice patented as a manufacture may be obvious, but not abstract. I see no lack of support there.

                1. Do you need the several links to PatentDocs?

                  You do not seem to be able to recall your own statements not in accord with your own pet “theories.”

                  The lack of support is from a global statement that cannot coexist with your prior statements and your statement here (which prompted my comment here).

  4. 3

    While I can appreciate the potential posited benefits with such, I see a big prosecution / examination problem with any deferral of 101; namely, how would such deferral “fit in” with current first / second / final action practice?

    Would applicants be granted another action or two by the Office / Examiners in which to attempt to resolve / traverse any 101 rejections once 102 / 103 / 112 had been resolved / traversed?

    Because if not, 101 deferral is — and indeed must be — DOA.

    1. 3.1

      Would applicants be granted another action… in which to attempt to resolve / traverse any 101 rejections once 102 / 103 / 112 had been resolved…?

      Why should they? As Prof Chien is describing it, you must choose to participate in the deferral program. If you want to avoid the RCE fees associated with the 3rd or 4th OA, you may choose not to participate. If you choose to participate, there is no reason to expect the PTO to do extra work for no extra fees.

      The fact that the deferral program might cost more is no reason to pronounce it “DOA.” Some people are willing to pay more fees for more services, and others are not. Chacun à son goût.

      1. 3.1.1

        This is NOT a case of pay more for more services (given that the current payment INCLUDES all the necessary services vis a vis compact prosecution and the requirement for office actions to be complete.

        Instead, your “offer” is akin to paying the same for less services, then paying more for the services that you would have normally already recieved.

      2. 3.1.2

        Greg — sure, sure; under Prof Chien’s approach, one could choose to participate or not.

        Yet, how many inventors, companies, and other patent-seeking entities would be willing to pay the RCE fees … and accept the loss of patent term … all for the “opportunity” to wrestle with the patent office over 101?

        Precious few, no doubt.

        Far better to fight / traverse any 101 battle/s up front.

        Far better.

        I’ll bet that the patent office couldn’t even find 500 unique folks willing to test such an approach.

        For this reason alone this idea is DOA.

        In addition to Ben @ 2’s excellent point.

        1. 3.1.2.1

          [H]ow many… companies… would be willing to pay the RCE fees… for the “opportunity” to wrestle with the patent office over 101?

          I am in-house counsel to a frequent application filer. If Prof. Chien’s proposal were introduced as a pilot program, I would definitely direct my outside counsel to opt to participate in some of the applications that receive the invitation to participate. In other words, I cannot say exactly how many, but I know that it would not be zero.

          I would track and compare the quality of the output from the participating and non-participating apps. Whether I would continue to participate after that test phase would, of course, depend on the outcome of the test.

          Whether the proposed pilot achieves a better process/outcome is very much an empirical question. I do not think much of this attempt to determine its value by ratiocination from first principles.

          1. 3.1.2.1.1

            Flash something shiny in front of Greg’s eyes, let him hear the words “different,” and watch him shut his own critical thinking down.

            Maybe you should not be in a position directing others in such matters, Greg (“frequent filer” or otherwise).

  5. 2

    Bad luck to be working on this article as the new guidance came out. No one is going to want to defer 101 while Iancu’s “consistency” is in effect.

    1. 2.1

      No kidding. Just ride the wave and collect your ineligible junk patent until the hammer comes down. Could be a month from now. Could be a day from now. Won’t take longer than half a year, though. Maybe a year at the outside.

  6. 1

    A couple quick comments. First, the restrictions on patent eligible subject matter are never going to be “eviscerated” by Congress unless we are truly ready to flush the entire country down the t0 ilet. Any member of Congress who proposes, e.g., that private individuals and corporations can own “correlations” and sue people (e.g., doctors or educated patients) who make correlations is a member of Congress who has no chance of re-election (exceptions, of course, for those places in Merka who will vote for whatever r@ cyst ped 0 pounds his/her holy book hard enough).

    Second of all, this kind of half-arsed historical revisionism just burns me up:

    101 is controversial – the rate of ex parte decisions addressing 101 has also shot up, from less than 10% to over 80% in 2018 in medical diagnostic and software technology areas, and to 26% overall. (Fig 1B)[1]

    The “controversy” was and remains not over those rates of rejection but over the claims that were (and still are in some cases) being granted without any 101 rejection and which were being asserted in high profile cases against people who were doing nothing except practicing the prior art and (1) thinking about the meaning of data; or (2) storing/transmitting/receiving/displaying specific kinds of data content.

    All that said, a workable plan to defer examination of 101 issues makes perfect sense if — and only if — (1) the analysis under 102/103 includes an effort to determine what structural elements in the claim were in the prior art or were obvious in view of the prior art and (2) the analysis under 112 identifies what elements are functional versus what elements are tied to objectively determinable physical structures. Otherwise what’s the point?

    1. 1.1

      Deferring 101 would borrow from the Supreme Court doctrine of avoidance, which allows the Court to “resolve[] cases on non-constitutional grounds whenever possible,”

      LOL

      It also borrows from the doctrine of “we can’t figure out how to comply with the law and satisfy our whining customers to let’s pretend we born yesterday and punt.”

      101 isn’t difficult, folks.

      What’s difficult for a tiny tiny tiny number of entitled people to understand is that (1) you can’t protect correlations with patents; and (2) you can’t protect logic and information with patents. Uncontroversial proposition (2), of course, upsets the Silly Con Valley Bros — who are collectively the most self-important t0xic @ h 0les in the world next to, I guess, Howard Schulz, Michael Bloomberg, and M@ngo H@irball.

    2. 1.2

      Your whining is as errant as it is insufferable.

      For all the reasons given so many times previously to your short and stale script.

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