Order of Examination – Patentability Conditions + Eligibility

Senators Tillis and Cotton have suggested that the PTO try a sequenced approach to examining patents.  First consider whether a patent application complies with Sections 102, 103, and 112; then consider eligibility.

43 thoughts on “Order of Examination – Patentability Conditions + Eligibility

  1. 15

    this is so incredibly backwards that i’m assuming none of them talked to an examiner. let’s say i get an application for a spaceship that defies the laws of physics as i understand them, say a spaceship that goes past light speed…

    they want me to first do a complete search of all the prior art databases that pretty much only contain sub-lightspeed spaceships (plus a handful of warp drive PGPubs). then they want me to write my art rejections and fix the 112b’s. i’m assuming they want me to defer all the 112a’s that will go along with the 101s for their impossible (as currently understood by physics) spaceship. then they want the applicant to overcome the rejection by pointing out that my prior art can only travel at a fraction of light speed and does not read on their spaceship.

    so now i am finally allowed to make the 101 rejection…finally! oh, but wait, examiners don’t get counts for writing subsequent non-final actions, and they can’t go final on an action that includes a new grounds for rejection, so now i’m writing a second non-final gratis (aka voluntary overtime).

    so just to be gracious, let’s say their response to the 101 actually does clear up something that was incredibly confusing about the invention, or the nature of the physical universe, or what-have-you. now that they’ve cleared that up it’s time for me to write up a third non-final, again gratis (aka VOT aka there goes my weekend). oh, but wait! i didn’t do a proper search the first time around because i didn’t even understand how the invention worked, cuz believe it or not, it’s kind of hard to do a proper search for an invention you can’t even begin to understand. so now i can finally do the proper search, apply the best art, write my third non-final, and you know how the rest goes.

    1. 15.1

      I hear you and am more than a little surprised that Ben and Random did not stress those points.

  2. 14

    Not sure if practicioners recognize this is a request to un-compact prosecution. I heartily agree with that (and why stop there? start with 112 rejections then go 102/103 as well), but it’s been my experience that applicants are not a fan.

    I’m not sure why you would do 101 last other than it’s a bad faith effort to decrease the number of 101 rejections made (which is fine, that’s been the trend of both applicants and the office since Alice came down, so long as you recognize it won’t get you anywhere at the federal circuit). But I doubt it would make people feel better if they spend years finding a non-obvious ineligible scope. And currently if you have both 101/103 rejections you’re making scope changes based on a 103 rejection anyway you can simply respond to the 101 by saying the amendment further limits the claim and requires a new step 2b analysis anyway, it’s not like you have to actually think up a real response. In other words – you can push 101 to the back of the line anyway RIGHT NOW if you want to.

    So in short, *I* want this…I’m just kinda surprised *you* want this. But hey we’re on the same page here.

    1. 14.1

      Some of us certainly do – and certainly do NOT want this.

      1. 14.1.1

        … and also reject YOUR insertion that “bad faith” is not only involved in this ploy, but in any attempt to adjust to the judicial mess of 101.

        You want bad faith? Look first at the judicial branch on 101.

        1. 14.1.1.1

          Regardless of whether you believe it’s a judicial mess or not there are good faith responses to it, but this isn’t them. The office has set goals for itself with regard to pendency and quality (you know, part of its mission) and you don’t demand they upend working on those goals because you’re too ineffectual to respond to what the court did. That’s shoving your problem off on the office and (more importantly) on the public.

          If it were truly widely believed that this is such a judicial mess, Congress would easily have the will to either substantively change the judicial exception issue or at least procedurally exempt the office from examining the question. Lacking either the will or the willpower to make those changes, you don’t try and get the office to low-key disregard the law that they’re required to follow by trying to not examine 101 without saying their not examining 101. As you always say, the applicant pays for an examination consistent with the law.

          1. 14.1.1.1.1

            You absolutely miss the point of my noting your insertion of de facto bad faith.

  3. 13

    I’m looking forward to utter silence when we start hearing about off-record examination experiments that appear to correlate with the current administration’s leadership.

    1. 13.1

      ?

      Would that be like the “utter silence” when news first broke of SAWS?

      Or, are you doing your typical “I mean no negative connotation” bit again?

      As an examiner, I tend to wonder what actually motivates your posts.

      Wait, no – no, I do not.

    2. 13.2

      … talk about utter silence.

  4. 12

    The real issue I see here is that this kind of letter coming from Tillis is outright garbage. He abdicated his responsibility to fix 101 while he was Chair of the IP subcommittee last term in Congress. He is trying to get the Executive Branch to fix the problems caused by the Judicial Branch when it is the Legislative Branch that is supposed to deal this. The Constitution is clear that Congress sets the law for patent protection. It’s not even ambiguous on that issue. Tillis has screamed about judicial activism and executive overreach throughout his career, but here he is advocating for both things simply because he failed to do his job properly.

    1. 12.1

      + 1

      Billion

  5. 11

    This part of the letter is undisputed, “Our concern is that by conducting an inherently vague and subjective analysis of eligibility … at a time when it is difficult or impossible to conduct a meaningful examination under Section 101 … .”

  6. 10

    Claim construction is the key to any examination, validity, or infringement procedure. Therefore, before getting into the weeds of the statutory basis for patentability have the claim properly construed and agreed upon by both the examiner and applicant. With a proper claim construction set forth, the rest then can be decided and reviewed as necessary.

    1. 10.1

      What earth # do you practice on?

      On this earth, applicants don’t “agree” to claim constructions during prosecution.

      1. 10.1.1

        I understand a possible “immediacy” of a response, but the above is not by the resident anon.

        Not a big deal, but thought that you might want to know that.

          1. 10.1.1.1.1

            Nah,

            These mistakes are rare enough – and the pictorial reveals that this is the same recent poster that used the longer “anonymous.”

            Don’t worry too much — only those delighting in game playing and not adding anything to the actual topic at hand will attempt to do mischief.

          2. 10.1.1.1.2

            See link to patentlyo.com and note the purply spider with yellow tongue. While we do share razor sharp appendages, I am much more pretty.

            (by the way – that was an excellent comment)

            1. 10.1.1.1.2.1

              Youz got me thinking about your pictorial . . .

              Reminds me of two Felix the Cat characters: Vavoom and The Master Cylinder.

              Come to think of it, either would make excellent nom-de-plume replacements for “anon.” :-)

            2. 10.1.1.1.2.2

              I’m the real (only?) anonymous and I didn’t author post #10. I did author post 7 in the thread you referenced.

              1. 10.1.1.1.2.2.1

                Thanks – I suppose that it is possible that the huge number of random generation of avatar characteristics could cycle around in such short order to provide identical monikers and also happen to alight upon such similar “nom-de-plumes” as Pro Say uses the term.

                Pro Say, there is no consideration for any replacement.

        1. 10.1.1.2

          Already clear. Hence the reply. Whereas, this post is an actual exception to the rule.

          1. 10.1.1.2.1

            Gotcha.

            See Prof? no worries.

  7. 9

    This just serves to further elide the fact that the current so-called 101 analysis is really, almost always, a 112 analysis by another name. The motivation to rename such a 112 analysis comes from the rather difficult to avoid fact that 101 is headed “Inventions Patentable” and precedes the other sections of the act, sort of suggesting that locating the purported invention within the four statutory categories logically, and naturally, is the first step in examining an application.

    The problem remains one of how to handle information content in inventions. Information content when the invention is made of information, and information content when the claims do not provide enough information to either make the invention, or they describe something that is a variation of what is already known, rather than an invention, or often enough, some combination of both.

    This misguided approach is just another way of asking for a complete nullification of 101. Why not just strike it from the act altogether and move from there?

    1. 9.1

      The Ends do not justify the Means.

      You (almost) appear to at least grasp that concept.

  8. 8

    To implement this proposed substantive change in examination practice would necessitate a revision of 37 CFR 1.104(a) and (b), which requires an examiner’s action be “complete as to all matters”. This means a formal rulemaking with due consideration of public comments; it can’t simply be directed by the USPTO Director or by individual examiners on their own initiative.

    1. 8.1

      “it can’t simply be directed by the USPTO Director or by individual examiners on their own initiative”

      And yet, according to the senators, one of these things has already happened.

      Do you think there would be a similar lack of interest if we were hearing about former PTO officials relaying information about non-standard examination occurring on their watch if Michelle Lee was the most recent former director?

      1. 8.1.1

        Why would you presume a lack of interest? And then attribute some motive in contrast to Lee as director?

        Methinks the lady doth protest too much.

  9. 7

    First examine a patent application for Sections 102, 103, and 112; then consider eligibility.
    Sounds like a sensible suggestion that many others have made here before. But how much difference it will eventually make depends on what percentage of applications are still getting 101 unpatentable subject matter rejections under the current Guidelines and/or if the new PTO Director develops guidelines closer to judicial results?

    1. 7.1

      It is the opposite of sensible.

      It is hiding from the lack of gumption to do what Congress has the authority to do.

      This is NO benefit to the innovation community, and the fact that you posit otherwise shows that you are either c1ue1ess or complicit.

  10. 6

    From the letter:

    Based on our discussions with prior PTO officials, our understanding is that in years past some examiners sequenced their examinations of applications so that they first examined all grounds of patentability under Sections 102, 103, and 112, before examining for compliance with grounds of eligibility under Section 101. Under this approach, examiners would have applicants amend their claims to overcome rejections under the more objective standards of patentability before examining for eligibility. We note that this approach in no way shortcuts or truncates examination under Section 101, and the eligibility analysis sequenced this way would be every bit as thorough as under present practice – just conducted at a point in the examination process where it can be conducted effectively. Our conversations with former officials suggest that for examiners using this sequenced approach, applicants rarely received a rejection on grounds of
    patent eligibility.
    This is because by bringing claims into compliance with Sections 102, 103, and 112, examiners inevitably brought the claims into compliance with Section 101 as well.”

    Is he talking about some ancient history before compact prosecution (which I believe dates to the late 1960s), or something recent?

    1. 6.1

      They may be talking about the time in the 1990s and 2000s where the PTO first examined for 102, 103, and 112, and then ignored 101.

      1. 6.1.1

        That’s quite wry.

        But this seems almost like a serious issue to me. It sounds like he’s saying the PTO engaged in a secret pilot program that modified examination procedures and resulted in favorable outcomes to the applications that the office chose to include in the program. Was the change to procedure made part of the record? How were the applications selected to be included, and why wasn’t everyone given a fair shot to get this advantage?

    2. 6.2

      Good point Ben, as being inconsistent with compact prosecution IF they really meant not giving any 101 rejection at all until after an art search and first action on all other grounds. They would perhaps at least have to provide a first action warning that possible 101 rejections are held in abeyance until after there are no remaining 102, 103, and 112 rejections not overcome?

  11. 5

    silly

  12. 4

    Nice big L I E in the premise of the letter.

    There is nothing about the “clarity” of eligibility jurisprudence that distinguishes it from 112 or 103.

  13. 3

    The letter seems to suggest that under the proposed pilot program, a section 101 rejection would not be issued in any Office Action until all section 102, 103, and 112 issues have been resolved, or at least not in a first Office Action.

    I would worry this would create a bit of a “hide the ball” problem for patent applicants.

    If the examiner suspects that there are eligibility issues with claims, patent applicants deserve to be apprised of such findings at the earliest available opportunity, in interest not only of compact prosecution, but of basic administrative fairness and due process. Imagine if criminal defendants were only charged seriatim, and weren’t apprised of a forthcoming criminal count until they had proven their innocence with respect to a prior-charged count.

    Senators Tillis and Cotton would be better off leading the charge to legislatively overrule Alice/Mayo and narrow the judicially created, judicially expanded abstract-idea and law-of-nature doctrines.

    1. 3.1

      “I would worry this would create a bit of a “hide the ball” problem for patent applicants.”

      I suspect that everyone can rationally agree that not informing applicants of 101 issues early on is a problem.

      Even so, I think there would be some shift the the favorability of outcomes if this was implemented.

      I suspect that, especially under the Iancu test and the corresponding managerial interest in dropping 101s, examiners are significantly more likely to fall on the side of “no 101” having already committed to “no 102/103/112”. It is probably not legally correct, but it is so much easier to convince yourself that 101 isn’t an issue when you’ve already convinced yourself that the claim is non-obvious and appropriately drafted. Of course, many 101 rejections continue long past the 102/103/112 under the current regime, but I suspect that frequently those rejections continue because the examiner had already convinced themselves of the case when the 102/103 was still on the table.

  14. 2

    I would also push back against the Senator that while this might help the Patent Office (and its examiners), this places MORE costs on actual inventors and simply does not solve the more pressing problem (the Supreme Court generated one).

    It simply does not do any good — at the end of the day — because the (judicial) mess is still very much present.

    We need LESS grandstanding letters like this and more backbone from our Legislative Branch to take back their authority from the Court, and while they are at it, exercise their Constitutional authority of jurisdiction stripping of the non-original jurisdiction of patent cases from the Supreme Court and provide a reset (non-fire-hosed-Simians-in-a-cage) Article III body to preserve Marbury.

  15. 1

    As you know, examination under Sections 102, 103, and 112 is based on well-developed and objective criteria under the law. Unfortunately, current patent eligibility jurisprudence lacks the clarity, consistency, and objectiveness the other grounds of patentability possess. Our concern is that by conducting an inherently vague and subjective analysis of eligibility early in the examination process, examiners may be spending inordinate time on Section 101 at a time when it is difficult or impossible to conduct a meaningful examination under Section 101, at the expense of the more rigorous analysis and precise and thoughtful work that can be conducted at the outset of examination under Sections 102, 103, and 112.

    This plays directly into one of the shears of the Kavanaugh Scissors.

      1. 1.1.1

        Nice / but I would posit that the proper name should be Kavanaugh alone, as both shears derive directly from him and predate the appointment of Barrett.

        Of course, any application to cut the Gordian Knot will require the pivot point of a majority of the Supreme Court Justices, so Barrett does have a role.

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