PTAB Generally Affirms Eligibility Rejections

by Dennis Crouch

If affirmances by the Patent Trial and Appeal Board (PTAB) are any guide, patent examiners appear to now have a good handle on applying the PTAB eligibility examination guidance.  I looked at  PTAB patent eligibility decisions from the past month and found that examiner eligibility rejections were affirmed in 92% of cases (55 of 60 decisions). There were also five cases where the PTAB added eligibility as a new ground for rejection.

92% affirmance for eligibility issues is quite high compared to other issues being appealed.  So far in FY2021, the PTAB is fully affirming examiner decisions in only 56% of cases and partially affirming in an addition 10%.

The PTAB’s general approach is to follow the USPTO’s eligibility examination guidance and then supplement that approach with Federal Circuit and Supreme Court cases.  Most often, the PTAB is able to draw a direct analogy with a prior appellate decision.

The following are three recent affirmances:

= = =

Ex Parte Ausubel, Appeal No. 2021-000765, 2021 WL 2982136 (PTAB)

Lawrence Ausubel is a Professor of Economics at Maryland and has published dozens of articles on efficient auction design and holds several patents. His pending patent application claims a computer-implemented system for allowing smaller-quantity intra-round bidding during a “clock auction.”

The examiner rejected the claims as directed to a fundamental economic practice rather than a practical invention and that, absent the computer limitations, the method is a mental process (with pencil + paper). On appeal though the PTAB affirmed:

Hedging risk is a fundamental economic practice. … Here, claim 1 seeks to hedge risk in a clock auction by using intra-round bids with generic computers and components that perform generic data processing of sending and receiving data to auction securities, contracts, commodities, spectra, and other items.

The Board’s analysis directly analogized to Bilski’s patent application which the Supreme Court rejected.

= = = =

Ex parte Knoll, Appeal No. 2021-000035, 2021 WL 3015118 (PTAB) (Philips Medizin)

The invention here is directed to a method of approximating a patient’s pulse-wave using the pressure signal from a blood pressure cuff.  The claims require receipt of repeated measurement of pulse-curves as the clamp pressure changes.  Those curves are weighted and combined to create the approximated pulse wave.  The examiner rejected the claims as directed toward ineligible abstract idea.   On appeal, the PTAB has affirmed, finding the claims directed to a series of mathematical calculations based upon selected information.  Further, the fact that data is received from a blood-pressure cuff does not transform the idea into a patent eligible practical application.

= = = =

Ex Parte Tazono, Appeal No. 2021-000816, 2021 WL 3015120 (PTAB) (Alpine Electronics).

Tazano’s application is directed to methods of acquiring and presenting information about upcoming events.  The PTAB affirmed the examiner rejection — finding the claims directed to the abstract idea of organizing human activities.  Further, the claims rely only upon generic computer technology and do not “recite an improvement to a particular computer technology. . . . All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results.”

 

73 thoughts on “PTAB Generally Affirms Eligibility Rejections

  1. 9

    Perhaps this comment was already made, but I’m not going to look through all the comments that were posted.

    The fact that “that examiner eligibility rejections were affirmed in 92% of cases (55 of 60 decisions)” is not dispositive as to whether Examiners are making good rejections. Rather, this fact is dispositive only as to those appeals in which the Examiner maintained the rejection (as opposed to withdrawing the 101 rejection or reopening prosecution or straight up allowing the application) after the appeal.

    Also, the Board is working with the 2019 Patent Eligibility Guidelines (PEG) these days. I suspect that when many of these appeals were filed, the 2019 PEG was just being digested by patent practitioners. With that in mind, many claims and arguments being made in appeal briefs likely to do not line up with the 2019 PEG as well as they should have. Personally, my arguments involving the 2019 PEG are far better now than they were 24 months ago.

    Also, the fact that I’ve gotten my share of decisions by the Board in which 101 rejections were affirmed doesn’t mean the claims aren’t savable. Some examiners have been pretty good in helping to identify limitations that will get a set of claims over the 101 hump. Also, the claims that I have to redraft were oftentimes written 3 or 4 or 5 years ago. I know better now how to address 101 concerns that I did then.

    There is a never-ending learning process about this job — even as to statutory law that hasn’t changed in decades.

    1. 9.1

      “this fact is dispositive only as to those appeals in which the Examiner maintained the rejection (as opposed to withdrawing the 101 rejection or reopening prosecution or straight up allowing the application) after the appeal.”

      Probably worth noting that filing an RCE after receiving an examiner’s answer is a good way to get an examiner to hate you. So factor that in, if you’re considering an appeal balloon (har-har!).

      1. 9.1.1

        And not figuring out the art and the claims and then reopening prosecution after we have to write an appeal brief is a good way to get an attorney to hate an examiner.

        1. 9.1.1.1

          I sympathize with that frustration.

          Serious question, have you tried informing examiners of your intent to appeal prior to filing the appeal brief? It won’t work all the time, but it could save you the effort/expense of an appeal brief. If the examiner is already aware their position is plainly untenable, the appeal warning should induce a rationale examiner to reopen immediately rather than waiting to for the appeal brief to force their SPE to review the mistake.

          I personally appreciate the warning, even if my response is always ‘if I can’t convince you of such-and-such, that’s probably the best path forward.’

          You may also get a more favorable response on an AFCP filing that’s just oriented to fixing 112s if the examiner knows you intend to file the appeal.

          1. 9.1.1.1.1

            Serious question, have you tried informing examiners of your intent to appeal prior to filing the appeal brief?

            Every single time.

            It’s called a Pre-Appeal Conference Request, and filed with the Notice of Appeal.

            Are you telling me that you are unaware of this?

            1. 9.1.1.1.1.1

              Ah, I meant to say: prior to filing the notice of appeal.

              1. 9.1.1.1.1.1.1

                You have every chance at the pre-appeal conference.

                You want more than that?

    2. 9.2

      I am still looking for good cites when all that is left is 101.

      It seems to me that if there is only a 101 rejection that it must be eligible as there is an “well-known” art around that can be used to reject it.

  2. 8

    OT, but Tiffany Cunningham confirmed today.

    63-33. (4 abstentions.) All 33 were Rs. To put that in perspective, all Obama appointees that I found stats on were unanimous. (Stats for O’Malley weren’t readily available.)

  3. 7

    I regularly read fresh PTAB decisions, for a number of reasons, and I see numerous instances where the PTAB makes a new 101 rejection. Sometimes they make a new 101 after reversing the examiner’s faulty 101 or they come up with a completely new 101.
    Does anyone know a link to the statistics relating to the PTAB coming up with new grounds of rejections in ex parte appeals?

    1. 7.1

      Have you heard the good news of our new PTAB search functionality?

      link to developer.uspto.gov

      It should be easy enough to query for decisions expressly labeled as new grounds.

      1. 7.1.1

        The “names” option still fails to include the examiner’s name.

        1. 7.1.1.1

          It hadn’t occurred to me to use the search functionality for that… but if you’re right, it’s a pity.

  4. 6

    And do you think that one skilled in the art in view of the specification would construe the claim to include a human brain performing the method?

    And there are system and CRM claims as well.

    1. 6.1

      And what about systems/CRMs that make a determination by asking an operator a question, receiving a response, and uses that response as the determination?

      This is not some absurd hypothetical. Facebook used to use user input to determine the identities of faces in a photo.

      So, when someone today claims a processor determining the identity of a face in a photo… doesn’t that include an operator’s mental process?

      1. 6.1.1

        And what about systems/CRMs that make a determination by asking an operator a question, receiving a response, and uses that response as the determination?

        This is also how one trains a machine learning algorithm.

      2. 6.1.2

        >>This is not some absurd hypothetical.

        Yes it is because no one skilled in the art would construe the claims to include this scenario based on the claims view in the context of the specification.

        >>So, when someone today claims a processor determining the identity of a face in a photo… doesn’t that include an operator’s mental process?

        No. This is ridiculous. If the specification does not support this, then the claims could not be construed to include this. Why? Because people skilled in the art construe a processor determining something as it executing instructions to make that determination and not asking a person for the answer.

        Just f’ing unbelievable the shxt these anti-patent judicial activists come up with.

        1. 6.1.2.1

          I supposed you would try to construe a tractor with a shovel configured to dig dirt as including a person digging the dirt as an onboard processor could ask a person to dig the dirt.

          So all mechanical claims are invalid as including a person performing the work and, since they are physically performing the work, they must be performing the work in the heads. So all these claims read on mental processes.

          Just f’ing unbelievable the crxp these POS come up with. The problem is that most of the judges at the CAFC are POS.

        2. 6.1.2.2

          “because no one skilled in the art would construe the claims to include this scenario based on the claims view in the context of the specification.”

          Haven’t you been saying that the scope of the claim is every enabled solution for the last few years? This looks likes an enabled solution.

          1. 6.1.2.2.1

            Asking a person is not an enabled solution in view of the specification unless the specification discloses this embodiment.

            Again, the issue is the construction of the claim terms. A “processor configured to” would not be construed to include asking a person for the answer. So the scope of enablement can’t go past how the claims are construed.

            1. 6.1.2.2.1.1

              Scope of enablement is how a person of ordinary skill in the art in view of the specification would construe the claims.

              “A processor configured to”, does include an infinite number of other solutions that one skilled in the art would not view as an embodiment.

              So your little game of “could do” is not the issue. But rather how would one skilled in the art view the meaning of these words in view of the specification.

              I am busy but I am sure I could play the same games you are playing with any set of claims for any art unit.

              1. 6.1.2.2.1.1.1

                Scope of enablement is how a person of ordinary skill in the art in view of the specification would construe the claims.

                “When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.” “The question is,” said Alice, “whether you can make words mean so many different things.” “The question is,” said Humpty Dumpty, “which is to be master—that’s all.”

                1. Greg, please. I could play the same games with words in a biotech patent.

                  Ben is just making things up. Under Ben’s proposal there is no limit to what any term could mean.

                  Scope of enablement is based on a person skilled in the art in view of the specification.

                2. Greg, I could play the same game with any claim term in any AU that Ben is playing.

                  Is a “processor configured to” include selling the processor to another person for them giving you the answer? I am sure that has happened. Does that include the “configured to”? Not to a person of ordinary skill who would view configured to mean that the information is processed by the processor.

        3. 6.1.2.3

          “Because people skilled in the art construe a processor determining something as it executing instructions to make that determination and not asking a person for the answer.”

          I’ve had lot of claims where “A processor configured to determine” meant a processor asking a remote system for a determination. So I’m not buying this convenient excuse that a processor determining means that the processor itself makes the determination.

          Why don’t you just come out and say that your theory of patent law is that the claims mean what you need them to mean in a given moment. It’d be a lot more honest, Mr. Full Scope of Enablement.

          1. 6.1.2.3.1

            Ben boy>>I’ve had lot of claims where “A processor configured to determine” meant a processor asking a remote system for a determination. So I’m not buying this convenient excuse that a processor determining means that the processor itself makes the determination.

            I’ll bet either the claims claim that solution or the specification disclosed that solution.

            And I notice you’ve gone from asking a person to having a remote system perform the determination, in which case it would not read on a mental process. So you have no example of there being an actual mental process in your experience, but like to yap on.

            1. 6.1.2.3.1.1

              “So you have no example of there being an actual mental process in your experience, but like to yap on.”

              Goalposts, sir.

              Maybe you should be an expert witness? When the defense comes up with anticipating art, you can unilaterally declare that the art’s solution wasn’t in the scope of the claim because OSITA would’ve excluded that solution for no articulatable reason.

              1. 6.1.2.3.1.1.1

                Ben your tone is always one where you pretend to be reasonable but trying to include in the claim scope for “a processor configured to” everything under the Sun is not reasonable.

                A processor configured to does not include selling the processor and hiring a human to perform the calculations either. Nor does it include an infinite number of other absurd claim constructions that I am sure run through your head.

                1. Dude,

                  I’m just extrapolating from your previous assertions that the claim scope included all enabled embodiments. I’m perfectly content with your retreat from that position. Cheers.

                2. I am not retreating from that position.

                  Enabled in view of the claim construction. That has always been the case. You are being ridiculous again.

                  A processor configured to does not include asking people for the answer nor does it include an owner of the processor selling the processor and hiring someone to answer the question.

        4. 6.1.2.4

          In my view, this response does not account for the realities of patent litigation. Trolls regularly argue that a processor “determines” information when a person merely enters the information into a computer.

          Claim construction typically happens after discovery. The troll’s objective is to punish the accused with discovery until the accused settles. Claim construction usually never happens.

          Examiners are right to consider how claims might be abused. In fact, BRI obligates them to do so. Night Writer would be correct under plain and ordinary, but neither examiners nor trolls apply this standard.

          1. 6.1.2.4.1

            Night Writer’s point is sharper than you appear to realize in that BRI requires Broadest Reasonable Interpretation.

            Inserting a type of “Oh Noes Tr011s” policy objective cannot change what “Reasonable” stands for.

            1. 6.1.2.4.1.1

              The world would be a better place if more people shared your definition of “reasonable.” In reality, the positions that you and Night Writer dismiss as “absurd” etc. are positions patent owners take in litigation.

              1. 6.1.2.4.1.1.1

                Your “litigation” and “Tr011s” angle casts doubt on your perspective.

                The “unreasonable widening” that you appear to want to stress would make your defense job of finding pertinent prior art easier rather than more difficult.

                Not to ‘out’ you, and certainly I do not doubt that there are instances of unscrupulous assertions, while further keeping in mind that the “Tr011s” narrative is largely propaganda, do you have a particular sample in mind?

  5. 5

    Office: We’re only going to make the most clear-cut 101 rejections.

    Lawyers: [Appeal Anyway]

    PTAB: [Upholds clear cut 101 rejections]

    Lawyers: This high affirmance rate is MADNESS!

    1. 5.1

      Though I jest, I do want to be clear: The 92% affirmance rate DOES evidence a problem with judicial exceptions at the PTO, it’s just not the problem you think it is. There are unquestionably proper 101 rejections being left on the table (as partially evidenced by the PTAB adding 101 rejections) and those people are going to try and enforce their patents only for the courts to do what the Office should have done – apply the actual standard.

      1. 5.1.1

        The 92% affirmance rate DOES evidence a problem with judicial exceptions at the PTO, it’s just not the problem you think it is.

        Begging your pardon, but the idea that the PTO is shying away from meritorious §101 rejections (and thus letting through claims that will never stand up in court if asserted) is exactly the problem that some of us see with the Iancu guidelines. Please do not imagine that this point is lost on those outside the PTO.

      2. 5.1.2

        apply the actual standard
        What the “actual standard”? If it is brought before of panel of Prost, Dyk, Chen then it is patent ineligible?

        The actual standard at the Federal Circuit is: (i) pull an abstract idea out of thin air, and (ii) ignore the rest of the limitations. This is done by examiners, the Board, and the Federal Circuit.

        1. 5.1.2.1

          Yup.

          Been there, felt that.

          In other cases, allege that a large portion (or even all) of the many-limitations claim/s is/are the abstract idea itself.

          Ends justifies the means, don’t ya know.

    2. 5.2

      I mean, can you blame them? They have to say something to distract from the implications that a 92% affirmance rate has for the value of their services.

    3. 5.3

      Office: We’re only going to make the most clear-cut 101 rejections.
      LOL. You can take the same invention and have it examined in 2100/2400 result in no 101 rejection and get a 101 rejection in 3600.

      I’ve seen limitations added to claims before one art unit in 3600 yet very similar limitations added before another art unit result in the 101 rejection being maintained.

      There is NO consistency at the USPTO. What is “clear-cut 101 rejection” for one examiner is allowable subject matter for another.

      Actually, there is some consistency at the USPTO — find your invention classified in 3600 and I can all but guarantee that you’ll get a 101 rejection.

      1. 5.3.1

        Yes Wandering this is very true.

        In fact people pay money to get an evaluation of which AU the application will be put in so they can avoid 3600 at all costs.

        3600 is the graveyard AUs.

        1. 5.3.1.1

          In fact people pay money to get an evaluation of which AU the application will be put in so they can avoid 3600 at all costs.

          I have seen advertisements of such.

        2. 5.3.1.2

          “In fact people pay money to get an evaluation of which AU the application will be put in so they can avoid 3600 at all costs.”

          Seems like a good investment if you want an easy allowance. Every time I see a patent with absurdly broad claims classified in my area, it was examined in the 2X00s.

          Setting aside the question of which technology center is doing a better job of examination, we should all be able to acknowledge how that disparity demonstrates what a joke the idea of consistent examination at the PTO is.

          1. 5.3.1.2.1

            Less so “an easy allowance” and more so “avoid a Just Say No” situation.

            You might want to understand the difference there…

  6. 4

    Yet more PTAB rubber-stamp ineligible baloney.

    “All your innovations are belong to us.”

    — Your PTAB Overlords

  7. 3

    >>On appeal, the PTAB has affirmed, finding the claims directed to a series of mathematical calculations based upon selected information.

    So, in other words, every information processing machine ever built.

    Greg >>>(1) surely the PTAB is correct here that the claim reads on purely mental processes;

    It is a machine that is performing information process. What has a “metal process” have to do with it? Can you explain how a person thinks is related to a machine? A claim to a machine does not read on a person’s mental process.

    1. 3.1

      The Knoll claims recite a method, not a machine.

    2. 3.2

      “A claim to a machine does not read on a person’s mental process.”

      If your interpretation of the law was correct, wouldn’t it though? You’re always saying that the scope of a claim to a function is every enabled way of achieving that function known to those skilled in the art.

      What about a claim to “a processor configured to determine [information processing result]”?

      One of ordinary skill in the art would know that a you could make such a processor by having it output a request to a human operator for the relevant determination, receive a response from the operator, and use the response as the result of the determination.

      In that way, every claim to a generic information processing result would also be a claim to a human’s mental processes. If your interpretation was right, that is.

      1. 3.2.1

        See above.

        No. One of the solutions is not asking a person for the answer unless the specification says so.

        I suppose under you ridiculous logic that a shovel is ineligible as reading on a mental process. Figure out why.

        F’ing POS.

        1. 3.2.1.1

          “One of the solutions is not asking a person for the answer unless the specification says so.”

          And why not? It’s a way of getting the job done. In some cases (e.g., face tagging) it’s even a useful way of getting the job done.

          You’rejust mad because your line about not needing to describe the solutions has hit a wall. If you don’t describe the solutions, then some of the solutions are a mental process.

          The answer here is of course that applicants DO need to describe their solutions. But that’s also unacceptable to you. Why don’t you just say “I want to have my cake and eat it” and we can be done?

          1. 3.2.1.1.1

            Asking a person is not considered by a person of ordinary skill in the art to have processor configured to do something. That is not a solution to a person skilled in the art.

            To a person skilled in the art, a processor configured to means that the processor is going to execute instructions to determine. And determine does include asking someone else what the answer is.

            Seriously, Ben, don’t you have something else to do?

            Your statements are just absurd to people skilled in the art and you are obviously playing to ignorant people.

  8. 2

    The U.S. claims in Knoll are substantially narrower than the granted claims in the corresponding EP file. This surprises me because: (1) surely the PTAB is correct here that the claim reads on purely mental processes; and (2) the claims read on methods of treating the human body. I would have thought that either of those two points would trigger an EP exclusion, but evidently not. If MaxDrei should wander through here, I would be obliged if he could comment on whether he thinks that the examination division got EP 13000376 right.

    1. 2.1

      Greg, I see that at the EPO the as filed claims were seen as lacking novelty. Applicant added wording to method claim 1 and independent logic unit claim 13 whereupon the EPO issued the patent and nobody opposed it.

      Of course the ED got it right. The claimed subject matter is not a method of surgery, diagnosis or therapy practised on the human or animal body, is it? It has technical character. It is not abstract. It delivers a technical contribution to the art, and it solves a technical problem in a non-obvious way, namely, how to derive non-invasively pulse data important for diagnosis, that hitherto demanded an invasive procedure. You know, like getting data from a retina without having physically to invade the eyeball. I don’t know about you, Greg, I’m in favour of promoting the progress of technology in such areas of human activity.

      According to GATT-TRIPS, patents are supposed to be issued in all fields of technology. The USA should look at itself and ask itself if it is in compliance with the undertakings it gave when signing up to GATT-TRIPS.

      Greg, which jurisdiction is the outlier here? The USPTO or the EPO? What happened in other countries? From the EPO patent family listing, there are patents issued in China and Japan, I see:

      link to register.epo.org

      1. 2.1.1

        According to GATT-TRIPS, patents are supposed to be issued in all fields of technology

        What was that (non-circular) definition of “technology” again…?

        1. 2.1.1.1

          A definition of “technology” is not needed. Just like a definition of “obvious” is not needed.

          A definition is contra-productive. As soon as one is coined by a supreme court it is out of date and so does more harm than good.

          There is consensus what “technical” means. There is no consensus what “abstract” means. The notion of “abstract” as a litmus test of eligibility is ridiculous.

          1. 2.1.1.1.1

            LOL – you want to talk about something (without defining said thing) and then want to indulge Greg in a view of how different nations may be held accountable to this undefined thing….?

            Too funny.

            There is consensus what “technical” means.

            Balderdash. If you cannot even define it, then you cannot have consensus over the undefined thing.

          2. 2.1.1.1.2

            As soon as one is coined by a supreme court it is out of date and so does more harm than good.

            What does that even mean?

            Sounds instead like you are parroting the US Supreme Court’s (untoward) fear of ‘scriviners’…

      2. 2.1.2

        The USA should look at itself and ask itself if it is in compliance with the undertakings it gave when signing up to GATT-TRIPS.

        Thanks, Max, for all your reply. I particularly agree with the quote above. Early on into the Mayo regime, I had hoped that one or more of our WTO partners would sue us for TRIPS non-compliance, but this has not happened. The ongoing failure to bring a TRIPS enforcement action against the U.S. suggests to me that it is not going to happen. If, however, you know anyone who can urge (e.g.) Germany to bring such a WTO action, I will be cheering them on.

        1. 2.1.2.1

          Greg, when the USA is out of step with the rest of the world, and sets a more restrictive test of eligibility than RoW, why should RoW bring a WTO compliance action against the USA? What’s in it for the complainant?

          Best ask Philips. It was their US patent application that was rejected here, wasn’t it? How much harm has that refusal done to that corporation? Will its country’s government bring an action? that strikes me as exceedingly unlikely.

          1. 2.1.2.1.1

            Here you make a good point – why point out the harm that the US Sovereign is doing to its own Sovereign protection system?

            Of course, you are speaking to “One World Order” Greg – the Big Pharma Shill – DeLassus, so your point is most likely to be missed.

          2. 2.1.2.1.2

            [W]hy should RoW bring a WTO compliance action against the USA?

            Presumably because various “RoW” nations negotiated for the rights of their citizens to obtain U.S. patents and the U.S. is failing to deliver on the bargain. That is the usual reason why one nation brings a TRIPS enforcement action against another nation.

            Do you mean to say that the citizens of Germany do not value the ability to obtain market exclusivity in the U.S. market—i.e., the single largest and most lucrative market in the world? Such a contention runs opposite to my own experience.

            1. 2.1.2.1.2.1

              Greg, in answer to your question, I’m thinking there is an important difference between imposing tariffs and imposing an overly-restrictive test of patent eligibility. The former applies only to aliens whereas the latter bites USA residents just as hard as aliens.

              Is the playing field level? With tariffs, no. With overly narrow eligibility, yes.

              And anyway, anon tells us that nobody knows what technology is, so despite GATT-TRIPS, SCOTUS is free to say that technology = useful arts = non-abstract = nothing more = whatever. In that case, a WTO action would be futile gesture anyway, no?

              1. 2.1.2.1.2.1.1

                Try again…

                I did NOT say, “… that nobody knows what technology is

                Think of the definition as important so as to demarcate the perimeter.

                Certainly most (but not all – think too of garage door openers, tuned drive shafts and other such things) items will be seen as “technological,” but THAT is not the point of seeking a legal definition.

                Or do you want to insist on being obtuse?

              2. 2.1.2.1.2.1.2

                [A]n overly-restrictive test of patent eligibility… bites USA residents just as hard as aliens.

                Exactly. That is why I would cheer for the plaintiff in a suit against the U.S. on this point. That plaintiff would be doing the whole world (very much including the U.S.) a favor by coercing us to come back in line with global norms around subject matter eligibility.

                [A]nyway, anon tells us that nobody knows what technology is, so… a WTO action would be futile gesture anyway, no?

                Any hypo whose premise depends on “if anon is correct” is immediately, ipso facto not worth my time to contemplate or answer.

                I am all in favour of a Rules-based order of trade between sovereign States. The USA should support the WTO, rather than (as in the Trump administration) do its best to sabotage it. You agree, I assume.

                Definitely and emphatically.

                Litigation ought to be always a last resort.

                Agreed. Mayo came down in 2011, however, so the EU would scarcely be jumping the gun to bring a TRIPS enforcement action by this point.

                There should never be any “WTO suit” between two reasonable (as opposed to posturing populist irresponsible) sovereign States which both cherish representative democracy and the Rule of Law.

                Huh? What is the point of having an orderly and peaceful mechanism for resolving international IP disputes if the responsible participants feel that it is untoward to use it?

                1. Any hypo whose premise depends on “if anon is correct” is immediately, ipso facto not worth my time to contemplate or answer.

                  LOL – translation: anon was mean to me while correcting me and I am still pouting.

                2. But Greg, that is exactly the point. If we can get the Rules right, then two rational Parties would know in advance who is going to win at trial and so would settle prior to trial. Every case that goes to trial is a warning signal that something about the Rules or the system is sub-optimal.

                  As to Mayo and the absence so far of a petition to the WTO, this is beyond my “pay grade”. Best ask Professor Paul Cole, who used to frequent this parish but hasn’t been seen recently. He (sort of) has a dog in the fight.

          3. 2.1.2.1.3

            What’s in it for the complainant?

            Naturally, that depends on the complainant. The nation who wins a WTO enforcement action wins the boon of being able to impose tariffs on goods from the offending nation—tariffs that would otherwise be prohibited by the GATT treaties.

            More enlightened nations (like the U.K.) realize that tariffs do mostly more harm to the country imposing them than to the country against which they are imposed. Germany, however, seems perversely fond of protectionist trade laws, so they might enjoy the boons that come from winning a WTO suit.

            1. 2.1.2.1.3.1

              Greg, I don’t understand your remarks about the perversity of Germany. It is but one of 27 Member States of the EU and it’s the EU, not the Member states, which sets trade tariffs as between Europe and the USA.

              I am all in favour of a Rules-based order of trade between sovereign States. The USA should support the WTO, rather than (as in the Trump administration) do its best to sabotage it. You agree, I assume.

              Litigation ought to be always a last resort. There should never be any “WTO suit” between two reasonable (as opposed to posturing populist irresponsible) sovereign States which both cherish representative democracy and the Rule of Law.

              1. 2.1.2.1.3.1.1

                Way to kick up dust, MaxDrei.

                Can you put aside the non sequitur and get back to the point of Greg’s difference?

  9. 1

    “92% of cases”

    Between the Iancu test and PTO middle management operating to discourage examiners from giving 101 rejections in all but the most egregious cases, one would expect the affirmance rate of 101 rejections to skyrocket.

    1. 1.1

      Between the Iancu test and PTO middle management operating to discourage examiners from giving 101 rejections in all but the most egregious case

      Two things:

      2) Those “middle management types” are VERY art-unit skewed as to ANY such “discouragement.”

      1) The article here took a rather explicit window of cases AFTER Iancu had left (and was no longer running the show).

      I have to wonder if this study was extended we would see an Iancu departure effect, of if this trend was indeed longer running. This might impact the first part of your statement.

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