Patent Eligibility Jurisprudence

The USPTO is seeking comments on “the state of patent eligibility jurisprudence” and how eligibility law impacts both innovation and investment-in-innovation.  The deadline for submissions is October 15, 2021..

The USPTO is planning a report to Congress and the agency is hoping that these comments will serve as fundamental building blocks for the report.

The following comes from the Notice:

Since 2017, the Federal Circuit has issued numerous decisions applying the Supreme Court’s legal framework in a variety of contexts, and many petitions for writ of certiorari have been filed. In 2019, the Supreme Court called for the views of the Solicitor General. HP Inc. v. Berkheimer, No. 18-415, 139 S. Ct. 860 (Jan. 7, 2019); Hikma Pharms. USA Inc. v. Vanda Pharms. Inc., No. 18-817, 139 S. Ct. 1368 (Mar. 18, 2019). In both cases, the Government argued that the Court’s recent decisions have strayed from earlier precedent and have fostered uncertainty regarding the patent eligibility standards. Brief for United States, HP Inc. v. Berkheimer, No. 18-415, 2019 WL 6715368, at *10-13 (Dec. 6, 2019) (Berkheimer CVSG Brief); Brief for United States, Hikma Pharms. USA Inc. v. Vanda Pharms. Inc., No. 18-817, 2019 WL 6699397, at *13-21 (Dec. 6, 2019) (Vanda CVSG Brief). While the Government contended that neither of the cases was an optimal vehicle to consider those standards, it urged the Court to grant certiorari in an appropriate case. Berkheimer CVSG Brief at *10, *14, *19; Vanda CVSG Brief at *8, *22-23. In particular, the Government highlighted the then-pending certiorari petition in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, a case involving medical diagnostic methods in which the Federal Circuit, in denying rehearing en banc, issued multiple separate opinions asking the Supreme Court for further guidance in the area. Berkheimer CVSG Brief at *13, *19; Vanda CVSG Brief at *22-23. Ultimately, the Supreme Court denied writ of certiorari in all three cases. HP Inc. v. Berkheimer, No. 18-415, 140 S. Ct. 911 (Jan. 13, 2020); Hikma Pharms. USA Inc. v. Vanda Pharms. Inc., No. 18-817, 140 S. Ct. 911 (Jan. 13, 2020); Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, No. 19-430, 140 S. Ct. 855 (Jan. 13, 2020).

Last year, after a split panel decision concluding that a method for manufacturing drive shafts was patent ineligible, the Federal Circuit again issued a decision denying rehearing en banc that included multiple separate opinions with differing views on the scope of patent eligible subject matter. Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 966 F.3d 1347 (Fed. Cir. 2020). Like the dissenting judge on the panel, several of the opinions denying rehearing en banc faulted the panel majority for establishing a new “nothing more” test—if the claimed invention “clearly invokes a natural law, and nothing more, to accomplish a desired result”—for patent ineligibility. Id. at 1366 (O’Malley J., dissenting); id. at 1361 (Stoll J., dissenting); id. at 1359 (Newman J., dissenting). American Axle petitioned for writ of certiorari on December 28, 2020, and the Supreme Court called for the views of the Solicitor General on May 3, 2021. Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, No. 20-891, 2021 WL 1725166 (May 3, 2021). The questions presented in the petition are: (1) What is the appropriate standard for determining whether a claim is directed to a patent-ineligible concept under step one of the Alice two-step framework?; and (2) Is patent eligibility a question of law for the court or a question of fact for the jury?

On March 5, 2021, Senators Thom Tillis, Mazie Hirono, Tom Cotton, and Christopher Coons sent a letter to Mr. Drew Hirshfeld, Performing the functions and duties of the Director of the USPTO, asking that the USPTO Start Printed Page 36259publish a request for information on the current state of patent eligibility jurisprudence in the United States (since the Supreme Court’s decisions in Mayo and Alice), evaluate the responses, and provide a detailed summary of its findings by March 5, 2022. The Senators indicated a particular interest in learning how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence,[6precision medicine, diagnostic methods, and pharmaceutical treatments.

Request for Information: To aid in the study that Senators Tillis, Hirono, Cotton, and Coons requested, the USPTO invites stakeholders to submit written comments on the questions below. In the questions, the phrase “the current state of patent eligibility jurisprudence in the United States” should be understood as referring to the body of patent subject matter eligibility decisions issued by the U.S. Federal Judiciary.

When responding to the questions, please identify yourself and your interest in the U.S. patent system. If applicable, please indicate whether you fall within one or more of the following categories: (1) Inventors, patent owners, or investors (e.g., venture capital, investment bank, fund, etc.); (2) licensees or users of patented technology; (3) entities that represent inventors or patent owners (e.g., law firms); (4) recipients of demand letters concerning alleged patent infringement or accused infringers in a patent lawsuit; (5) entities that represent accused infringers; (6) government agencies or officials; (7) academic or research institutions; (8) intellectual property organizations or associations; and (9) nonprofit organizations or advocacy groups. Additionally, if you are a patent owner or inventor, please include the number of U.S. and foreign patent applications you have filed; the number of U.S. and foreign patents you hold; the number of patents you have licensed or sold; and the number of patent cases you have been involved in since the Supreme Court’s decision in Bilski in 2010.

Commenters need not respond to every question and may provide relevant information even if not responsive to a particular question.

Topics for Public Comment

Section I—Observations and Experiences

1. Please explain how the current state of patent eligibility jurisprudence affects the conduct of business in your technology area(s). Please identify the technology area(s) in your response.

2. Please explain what impacts, if any, you have experienced as a result of the current state of patent eligibility jurisprudence in the United States. Please include impacts on as many of the following areas as you can, identifying concrete examples and supporting facts when possible:

a. Patent prosecution strategy and portfolio management;

b. patent enforcement and litigation;

c. patent counseling and opinions;

d. research and development;

e. employment;

f. procurement;

g. marketing;

h. ability to obtain financing from investors or financial institutions;

i. investment strategy;

j. licensing of patents and patent applications;

k. product development;

l. sales, including downstream and upstream sales;

m. innovation; and

n. competition.

3. Please explain how the current state of patent eligibility jurisprudence in the United States impacts particular technological fields, including investment and innovation in any of the following technological areas:

a. Quantum computing;

b. artificial intelligence;

c. precision medicine;

d. diagnostic methods;

e. pharmaceutical treatments; and

f. other computer-related inventions (e.g., software, business methods, computer security, databases and data structures, computer networking, and graphical user interfaces).

4. Please explain how your experiences with the application of subject matter eligibility requirements in other jurisdictions, including China, Japan, Korea, and Europe, differ from your experiences in the United States.

5. Please identify instances where you have been denied patent protection for an invention in the United States solely on the basis of patent subject matter ineligibility, but obtained protection for the same invention in a foreign jurisdiction, or vice versa. Please provide specific examples, such as the technology(ies) and jurisdiction(s) involved, and the reason the invention was held ineligible in the United States or other jurisdiction.

6. Please explain whether the state of patent eligibility jurisprudence in the United States has caused you to modify or shift investment, research and development activities, or jobs from the United States to other jurisdictions, or to the United States from other jurisdictions. If so, please identify the relevant modifications and their associated impacts.

7. Please explain whether the state of patent eligibility jurisprudence in the United States has caused you to change business strategies for protecting your intellectual property (e.g., shifting from patents to trade secrets, or vice versa). If so, please identify the changes and their associated impacts.

8. Please explain whether you have changed your behavior with regard to filing, purchasing, licensing, selling, or maintaining patent applications and patents in the United States as a result of the current state of patent eligibility jurisprudence in the United States. If so, please describe how you changed your behavior.

9. Please explain how, in your experience, the status of patent eligibility jurisprudence in the United States has affected any litigation for patent infringement in the United States in which you been involved as a party, as legal counsel, or as another participant (e.g., an expert witness). For example, please explain whether this jurisprudence has affected the cost or duration of such litigation, the ability to defend against claims of patent infringement, the certainty/uncertainty of litigation outcomes, or the likelihood of settlement.

Section II—Impact of Subject Matter Eligibility on the General Marketplace

10. Please identify how the current state of patent eligibility jurisprudence in the United States impacts the global strength of U.S. intellectual property.

11. Please identify how the current state of patent eligibility jurisprudence in the United States impacts the U.S. economy as a whole.

12. Please identify how the current state of subject matter eligibility jurisprudence in the United States impacts the global strength of U.S. intellectual property and the U.S. economy in any of the following areas:

a. Quantum computing;

b. artificial intelligence;

c. precision medicine;

d. diagnostic methods;

e. pharmaceutical treatments; and

f. other computer-related inventions (e.g., software, business methods, Start Printed Page 36260computer security, databases and data structures, computer networking, and graphical user interfaces).

In responding to this question, please provide concrete examples and supporting facts when possible.

13. Please identify how the current state of patent eligibility jurisprudence in the United States affects the public. For example, does the jurisprudence affect, either positively or negatively, the availability, effectiveness, or cost of personalized medicine, diagnostics, pharmaceutical treatments, software, or computer-implemented inventions?

41 thoughts on “Patent Eligibility Jurisprudence

  1. 5

    Large clients very rarely have patents invalidated because they don’t get asserted as onesies and twosies — they get asserted by the gross.

    I have no idea where this notion originated, but it is howlingly wrong. First, I infer that you do not mean that “large” litigants are literally asserting 144 patents at a time. I gather, rather, that you meant “gross” as a colorful exaggeration, I would challenge you to name a recent case in which the plaintiff went to trial on two dozen or more patents. I cannot think of many district judges who would let that happen. I think that you will find that you are merely imagining that anyone—large or small—asserts patents by the gross (or even by the dozen).

    Second, I can easily, just off the top of my head, think of half a dozen cases from the last six months in which large companies saw patents invalidated (Baker Hughes Oilfield v. Innovex Downhole Sol’n., Ethicon LLC v. Intuitive Surgical, NuVasive Inc. v. Hirshfeld, Teva Pharma v. Eli Lily Co., MagSeis LLC v. Seabed Geosolutions, Amgen v. Sanofi).

    This happens all the time. You may want to leave off from the vapid ravings of malcontents in patent blog comment sections and spend more time reading CAFC cases. The comment quoted above bespeaks a loss of contact with reality.

  2. 4

    “Is your name on the patent after it issues? I think it is. Regardless, keep dodging responsibility for not doing your job … if there is anything that are “above average” at, it is this.”

    Yeah, as the REVIEWER. Not the DRAFTER (although I do help out on that sometimes). My review work is 99%+ on the ol 112s and 101’s I assure you. My REVIEW work is great. If you happen to be the 1% that managed to slip bad drafting by me, sucks for you, learn to draft.

  3. 3

    “The USPTO is seeking comments on “the state of patent eligibility jurisprudence” ”

    My comment is that the state of patent eligibility jurisprudence is FUBAR.

  4. 2

    The Senators indicated a particular interest in learning how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence,[6] precision medicine, diagnostic methods, and pharmaceutical treatments.

    Oh, those fields have just been decimated by the lack of patents.

    I was told by a doctor yesterday that he has stopped trying to learn from his work on his patients because what’s the point really? Someone is just going to make the same correlation and you won’t be able to stop them and make money off it.

    1. 2.1

      Hi Malcolm,

      What would the discussion be like without your “damm grifters” angle…?

  5. 1

    “the state of patent eligibility jurisprudence”
    Is in total disarray.

    1. 1.1

      How about…

      Gordian Knot

      1. 1.1.1

        Apropros of nothing, the Federal Register notice indicates that anonymous comments will be accepted.

        1. 1.1.1.1

          Thanks!

    2. 1.2

      Absolutely true.

    3. 1.3

      Continued from other thread now locked:

      “They do? This must be the handout generation.”

      Lelz, it’s always been this way. If you don’t have people hitting you personally up its because either people don’t know you have money or don’t consider you a person interested in business. I know plenty in my immediate circle, and it’s a constant thing year over year, as it should be btw, good ideas should be getting funded. Also just fyi, tis not a “handout” to have raised money, businesslet.

      “There was a time when a patent meant something. You may not remember it, but that time existed.”

      Yeah way back when the guy that fought ford got his as s handed to him and near sui ci ded over it iirc. Some nice rose colored glasses stuff there. It was like totally meaningful n shi t n like totally leveled the playing field between david n goliath in this one story I remember n stuff.

      “a 112/101 problem, then it is the applicants’ fault.”

      We’re literally inundated with them. A statistically small amount do get out obviously as they will through any org dmbf ck. Literally all bad drafting is ultimately the applicant’s “fault” as well dmb fck. They literally need to make a public service announcement clarifying this for ta rds like yourself. The gubmit is not responsible for your bad drafting. Ever. The congress was so generous as to allow you to do your own drafting, the gov, as a whole, takes literally 0 responsibility for your fck ups. If the gov was to take responsibility for it, then it would do the drafting, not you.

      “Way to take responsibility for your work product. ”

      Patent drafting is not my work product dmbfck. The congress explicitly made that the applicant’s work product. Literally.

      “If your attitude doesn’t epitomize why many people dislike the attitude of government workers, I don’t what would.”

      Yeah, we know, people outside the gubmit think that the gubmit is their crutch. The gubmit is not your crutch.

      “The Benson claims would probably pass 101 today”

      Um no they would not. You must not have read them. They are 100% not allowable.

      “They do? This must be the handout generation.”

      Lelz, it’s always been this way. If you don’t have people hitting you personally up its because either people don’t know you have money or don’t consider you a person interested in business. I know plenty in my immediate circle, and it’s a constant thing year over year, as it should be btw, good ideas should be getting funded. Also just fyi, tis not a “handout” to have raised money, businesslet.

      “There was a time when a patent meant something. You may not remember it, but that time existed.”

      Yeah way back when the guy that fought ford got his as s handed to him and near sui ci ded over it iirc. Some nice rose colored glasses stuff there. It was like totally meaningful n shi t n like totally leveled the playing field between david n goliath in this one story I remember n stuff.

      “a 112/101 problem, then it is the applicants’ fault.”

      We’re literally inundated with them. A statistically small amount do get out obviously as they will through any org dmbf ck. Literally all bad drafting is ultimately the applicant’s “fault” as well dmb fck. They literally need to make a public service announcement clarifying this for ta rds like yourself. The gubmit is not responsible for your bad drafting. Ever. The congress was so generous as to allow you to do your own drafting, the gov, as a whole, takes literally 0 responsibility for your fck ups. If the gov was to take responsibility for it, then it would do the drafting, not you.

      “Way to take responsibility for your work product. ”

      Patent drafting is not my work product dmbfck. The congress explicitly made that the applicant’s work product. Literally.

      “If your attitude doesn’t epitomize why many people dislike the attitude of government workers, I don’t what would.”

      Yeah, we know, people outside the gubmit think that the gubmit is their crutch. The gubmit is not your crutch.

      “The Benson claims would probably pass 101 today”

      Um no they would not. You must not have read them. They are 100% not allowable.

      “When I go from <5% of applications receiving a 101 rejection to 70+% receiving a 101 rejection, then the changes are not miniscule"

      Thanks for confirming that there is no problem with the patent system, all of your btching and whining is about a problem with you. Can't stop drafting bad claims can ya? Working in an art that probably isn't even a useful art art ya? All this typing because you're, personally, gar bage. Btchn n moaning about others not doing an honest days work when it was you all along!

      "Which is why the efficient infringers of the world were begging for IPRs because the USPTO is so bad at examination. Which is why the vast majority of the patents that get taken to the Federal Circuit get invalidated. I’m sorry, the reputation of the USPTO is that of a hot mess, inside of dumpster fire, inside a train wreck. When the USPTO’s issued patents stand up in court more frequently then you’ll have a reason to crow about 95% of examiners being ‘above average.’"

      Um no, it's because the PTO is good at examination as done under the statute. You pass a review of the formatting and 112 substance, and you pass a comparison of your claims vs the prior art revealed in a search performed and any other submitted in IDSs. They want IPRs so as to not have to go through the expense of adding more art, or cleaning up the few remaining 112's/101's or the very rare missed 102/103 on art already of record. And remember, all cases brought in an IPR or a district court are a small tiny percent of all patent disputes around the country. It's the gigtantic amount that goes on without formal suit/IPR etc. that confirm the decency if not outright amazingness of examination as an overall process.

      "When the USPTO’s issued patents stand up in court more frequently then you’ll have a reason to crow about 95% of examiners being ‘above average"

      Those are self-selected re re, the ones that are either least likely to withstand a challenge as they have a problem in them, or just ones where they spend big $$$$$$$ to make an issue because the patent is super valuable. The courts making the decision to not overlook de minimus issues and allowing for every single technicality to sink claims is not an issue with the office.

      "Also, the relevant percentage is not the percentage of patents that get invalidated versus the total number of patents issued. Rather, the more relevant number is how many patents get invalidated versus the number of patents that get challenged."

      Um no, it's not re re. We're discussing the system as a whole. Not the system as it applies to one or a hundred or 100000 of the millions of patents floating around.

      "Accused infringers are going to challenge a block of 100 or 1000 patents. However, any small number of patents being asserted WILL be challenged." "

      That sux bro, but is not but barely even tinesy relevant to the system of examination as a whole. The system as a whole includes those big gigantic chunks. I myself am almost exclusively dedicated to those chunks that will never be challenged. And, funny enough, that's probably where the toughest ones to challenge likely reside anyway lol because they have big boy drafters instead of try hards like yourself. Grow up and join the useful arts at some point, maybe your issues with the patent system will magically go away. As if by magic.

      1. 1.3.1

        Ah, 6 hits the Count Filter…

      2. 1.3.2

        Also just fyi, tis not a “handout” to have raised money, businesslet.
        Considering how infrequently people get paid off … it is a handout.

        Um no they would not. You must not have read them. They are 100% not allowable.
        I’ve read them dozens of times as well as the case. A “shift register” is a specific type of digital circuit (i.e., a specific machine).

        Patent drafting is not my work product dmbfck.
        Is your name on the patent after it issues? I think it is. Regardless, keep dodging responsibility for not doing your job … if there is anything that are “above average” at, it is this.

        The gubmit is not your crutch.
        The government works for the people — not itself. Again, expressing an attitude that exemplifies why many people have a low opinion of the government.

        And remember, all cases brought in an IPR or a district court are a small tiny percent of all patent disputes around the country.
        No. Don’t add into the denominator a 1,000 patent strong bloc being asserted by some mega company against another. Those will never be contested because there is too many. Any small number of patents (let’s use 5 or below) for any commercially valuable technology will be challenged. The reason is simple — the challenger almost always wins. Why pay a licensee fee when you can just kill the patent for good? Since you are an examiner, you likely wouldn’t have an opportunity to talk to patent litigators. If you did, you would know that 101 challenges and IPR challenges are steps 1 and 2 of the infringer handbook.

        Those are self-selected
        Why aren’t cases being upheld at the Federal Circuit? Why do we see so very few 102/103 issues being decided at the Federal Circuit? Why do we see so few damages cases at the Federal Circuit? We don’t see those cases because so few patents survive the gauntlet these days. In patent cases, when the stakes are usually very high, both sides have an incentive to appeal. In that situation, you would expect the disposition of cases going to the Federal Circuit to mirror those coming out of the District Court.

        We’re discussing the system as a whole. Not the system as it applies to one or a hundred or 100000 of the millions of patents floating around.
        You can tell an examiner because of his inability to string together a logically-sound argument. Let’s say that out of 100,000 patents, only 100 are actually asserted. This isn’t to say that there are just 100 that are directed to commercially valuable technology. For example, there could be several thousand but many of those are in portfolios of very large companies — who typically run cross-licensing deals with competitors (think of it, if AMD and Intel sued one another, the number of patents at issue would number in the tens of thousands and the attorney costs would be in the hundreds of millions if not more) or assert patents in such mass that they cannot be challenged. Whether those patents are invalid or valid is UNKNOWN. Moreover, the fact they have not been challenged does not establish that they are necessarily valid, as there can be other reasons why the patents weren’t challenged aside from their validity. Putting all of those patents in the denominator is wrong for the simple fact that there are certain patents that will never be challenged — regardless of their validity.

        And, funny enough, that’s probably where the toughest ones to challenge likely reside anyway lol because they have big boy drafters instead of try hards like yourself.
        LOL. 95% of what I do is for those “big boy” companies. Don’t confuse who I’m advocating for here (i.e., the little guy) with who pays my bills.

        1. 1.3.2.1

          “ Is your name on the patent after it issues?”

          This is the commenter all you patent huffers are fluffin lately? Dennis’ new star?

          LOL

          1. 1.3.2.1.1

            huffer and fluffin….

            Same old Malcolm.

        2. 1.3.2.2

          Is your name on the patent after it issues? I think it is. Regardless, keep dodging responsibility for not doing your job…

          The conceptual framing here is worrisome. You appear to envision a system in which it is the examiner’s job to spot the defects in an application, and the applicant’s attorney is there to keep the examiner honest.

          Such an arrangement is inevitably going to lead to a lot of claims going to grant that will not hold up in court. The examiner has no skin in the game. The examiner is much more likely to suffer adverse consequences from rejecting disputably invalid claims than from allowing them. Indeed, the whole PTO is more likely to suffer adverse consequences from rejecting disputably invalid claims than from allowing them.

          Therefore, if your working model depends on examiners spotting and rejecting disputable §101 & §112 defects, you are pretty much setting your clients up to finish with a bunch of §101- and §112-invalid claims. Setting aside whether such an examiner is “dodging responsibility,” you—the applicant’s chosen legal expert—have both the means to prevent your clients from taking a bunch of §101- and §112-invalid claims to grant and the tangible motivation to do so. It is surely partly the examiner’s failure when an applicant end up with unenforceable claims, but it is much more the patent attorney’s failure.

          1. 1.3.2.2.1

            Greg misses again — and misses badly.

            You don’t do any actual prosecution yourself, do you Greg?

            The conceptual framing here is worrisome.

            Your attempted spin here is what is worrisome.

            Here, let me fix this for you:

            You appear to envision a system in which it is the examiner’s job to

            examine the application.

            And examining means examining under the law — ALL of the law and yes, that means 101 and 112.

            You keep on stating that examiners have no skin in the game — as if that were a “don’t bother to do your F n job” card.

            While their skin in the game could — and likely should — be made meaningful, you simply do NOT get to dismiss the entire point of their responsibility For them to do their job.

            1. 1.3.2.2.1.1

              Bru what does responsibility even mean to you? I heard a good definition the other day: It’s who has to pick up the sht after it hits the fan if it hits the fan.

              How exactly is the examiner going to pick up the sht after claims go down at the district court in the current system? Let’s set aside that the government has already washed its hands of the matter and discuss it as if the government cared to involve itself and specifically the examiner (since literally the beginning of the patent system). I will be honest with you though, I do think the government should be allowed to go ahead and offer a drafting/101/112 insurance program for claims. That is, the government’s court branch should give the executive branch full faith and credit if the applicant submits to having the executive branch involved in the drafting and pays for it (up to maybe some extreme screw up maybe as exception). The current setup is not that process, and thus why the gubmit washes its hands is clear, but the gubmit could offer that as a service. If we changed to the proposed new process above, any changes the courts made to 112/101 would only apply to apps filed after the change.

              1. 1.3.2.2.1.1.1

                I heard a good definition the other day: It’s who has to pick up the sht after it hits the fan if it hits the fan.
                Unsurprising that it is a definition that absolves you of any responsibility for doing your job.

                This is from the USPTO’s own website:
                USPTO examiners work closely with inventors and entrepreneurs to process their patent applications and determine whether or not a patent can be granted.
                If a patent application is not patent eligible under 101 then it cannot be granted. If a patent application does not meet 112 then it cannot be granted. That’s your job. Examiner’s examine.

                Under 35 USC 131, “[t]he Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.” The examination of these applications have been delegated to examiners who examine the applications (note the frequent use of the term “examine”). Examining a patent for compliance with the law is the examiner’s job.

                This is from 37 CFR 1.104(a)(1):
                On taking up an application for examination … , the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application … with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.
                Your responsibilities (and those of your brethren) are clearly laid out. Nobody is asking you to do anything more than that — in the words of a future Hall of Fame NFL coach, just do your job.

                1. “Unsurprising that it is a definition that absolves you of any responsibility for doing your job.”

                  That’s a general definition for all of life re re, not just here in this context. It doesn’t absolve of responsibility, or put on any responsibility, of/on anyone. It’s just a definition of what it entails.

                  “This is from the USPTO’s own website:
                  USPTO examiners work closely with inventors and entrepreneurs to process their patent applications and determine whether or not a patent can be granted.
                  If a patent application is not patent eligible under 101 then it cannot be granted. If a patent application does not meet 112 then it cannot be granted. That’s your job. Examiner’s examine.”

                  So what? I’ve known since we began what the muh jerb is, and as I’ve said a million times, it’s done exceedingly well across the office. You have yet to rebut that at all, save to sit and bs about it, and to largely confirm it to be correct, and it is true. You’re talking like 95%+ across the office of 112’s cleaned up. More for the better examiners. Thems good to excellent nums. None of that establishes any “muh responsibility” for your fck ups. Our “responsibility” of REVIEW, is discharged over-well if anything re 112’s/101’s in the current system.

                  “Examining a patent for compliance with the law is the examiner’s job.”

                  Yes we know re re. But the drafting of the claim, as we’ve discussed, the literal only possible place to f up a 112/101, is not.

                  “Your responsibilities (and those of your brethren) are clearly laid out”

                  Yeah, and as asserted a million times now, it’s done over=well if anything. No amount of tar dation or making up additional responsibilities is ever going to change that ta rd.

                2. 6,

                  This is pure mindlessness:

                  That’s a general definition for all of life re re, not just here in this context. It doesn’t absolve of responsibility, or put on any responsibility, of/on anyone. It’s just a definition of what it entails.

                  The specific point of what has been presented to you is directly on point to THIS context and simply wrecks the position that you are trying to etch out for your bureaucratic self.

                  Bottom line is that YOUR job entails the responsibilities that are directly on the point that Wt is putting to you.

                  Here’s a hint: you would be simply better off accepting that point.

                  (and on a slight tangent, this does remind me of my own schooling you a number of years ago as to the examiner responsibility for doing more than mere key word search of claims — including actually studying the entirety of the specification — do you remember that?)

                3. “Bottom line is that YOUR job entails the responsibilities that are directly on the point that Wt is putting to you.”

                  Yes, I know what the “muh bottom line” is. You guys want more responsibility. It’s on you to set forth what all that will look like, how much extra you’ll be paying for it, and etc etc.

                  “and on a slight tangent, this does remind me of my own schooling you a number of years ago as to the examiner responsibility for doing more than mere key word search of claims — including actually studying the entirety of the specification — do you remember that?”

                  Yeah I remember your larping as a SPE. You like to do it all the time even though you still haven’t even got your sig.

                4. Yes, I know what the “muh bottom line” is. You guys want more responsibility. It’s on you to set forth what all that will look like, how much extra you’ll be paying for it, and etc etc.

                  That would be a huge miss from you — but then again you have already missed with thinking that somehow the whining about internal metrics is not connected here.

          2. 1.3.2.2.2

            “Such an arrangement is inevitably going to lead to a lot of claims going to grant that will not hold up in court.”

            You would think these dmbas s would understand this, there really needs to be a PSA for these guys to put them on notice. The gubmit does not accept responsibility for your bad drafting, when the gubmit GENEROUSLY allowed you to do the drafting in the first place. Je sus, the absolute childlike state of some people. To be fair to them, the office should perhaps offer a drafting service for a fee to help them out. I guess they don’t because oh wait, attorneys already offer that.

            “you are pretty much setting your clients up to finish with a bunch of §101- and §112-invalid claims.”

            You would think Mr. “muh logical argument” would understand this. But alas, real life hasn’t beaten it into him by now.

          3. 1.3.2.2.3

            The response you got back regarding USPTO fees versus EPO fees was downright ridiculous.

            You need to recognize that your advice regarding anon is equally applicable to WT.

            1. 1.3.2.2.3.1

              Could be. I chose to block Anon & MM after years of bad faith interactions. So far, WT strikes me more as someone who disagrees with me in good faith. Nothing wrong with that. That is the kind of interaction from which one learns and improves. I am always, however, updating my impressions in view of additional data.

            2. 1.3.2.2.3.2

              Ben?

              Just because your feelings may be ‘hurt’ and you don’t like what is said to you, does NOT make the other person into being a “bad guy.”

              Grow a pair.

          4. 1.3.2.2.4

            Greg, I think I kind of agree with you on 112 and 101 as they are both basically legal problems and both are in flux.

            I think that the examiner at a minimum should be responsible for finding the best prior art.

            I think we should raise the search fee and try to get searches that are at least as good as the EPO’s searches.

          5. 1.3.2.2.5

            You appear to envision a system in which it is the examiner’s job to spot the defects in an application
            What else is the Examiner’s job?

            Therefore, if your working model depends on examiners spotting and rejecting disputable §101 & §112 defects, you are pretty much setting your clients up to finish with a bunch of §101- and §112-invalid claims.
            The application I drafted 20 years ago was perfect with regard to 101 and 112. Is it today? As far as 112 goes, most likely yes. However, if you’ve ever been in a patent litigation, you would find it laughable as to what terms are allegedly “indefinite.” I was tangentially involved in a litigation in which nearly ever single term was alleged to be indefinite — terms that have art-recognized meanings and/or terms that are littered throughout hundreds/thousands of patents. All it takes is a single indefinite term to torpedo a patent and defendants tried mightily to do just that.

            As far as 101 rejections go, it was rare 10 years ago to run across a 101 rejection — even in the worse of art units. Today, I have claims far, far more detailed than the ones I had issued 10 years ago still get rejected under 101. However, even assuming that the current claims are issued, there is no guarantee that they’ll pass muster under 35 USC 101 for the reason that patent eligibility jurisprudence is in total disarray. I don’t know about you, but I don’t have perfect foresight. I have little idea as to how to draft claims today on software-related inventions that will be patent eligible 15 years from now. I can only draft patents based upon the current patent eligibility standards — not future ones.

            You statement regarding depending upon examiners spotting and rejecting “disputable” 101 defects evidences a clear lack of experience with how the USPTO operates here. Anything that is even close to being patent ineligible under 35 USC 101 gets rejected.

            It is surely partly the examiner’s failure when an applicant end up with unenforceable claims, but it is much more the patent attorney’s failure.
            It would be if the patent attorney could foresee the future.

            As a practical matter, there is little good reason to draft claims that are on the edge of 35 USC 101. Patent attorneys are not performing some kind of risk analysis in which the weigh the positive benefit of drafting claims to get around 101 versus some negative result for doing so because this ‘negative result’ is nebulous at best.

            I don’t get to tell my clients to come back with a different invention — it is what it is. When presented with that invention, I try to characterize it in a way such that it clearly does not fall within the exceptions to patent eligible subject matter. However, it is a fact that what works today in that regard does not necessarily work tomorrow. You putting blame on the patent attorneys for this fact ignores the real source of the problem — a meddlesome judiciary that has taken it upon themselves to STEADILY REDUCE what constitutes patent eligible subject matter.

            1. 1.3.2.2.5.1

              I don’t get to tell my clients to come back with a different invention…

              But you can. Sometimes, the most value that a lawyer can bring to the client is to tell the client “don’t waste your money, because you cannot get a patent on this invention that will likely hold up in court.”

              I agree that the state of §101 jurisprudence is a mess, but we are past the point where it is hard to give our clients practical advice about §101 issues. If a client comes to you with a software invention or a diagnostic, you can reliably advise them that the most you can get for them is a ribbon copy. You will not be able to get them any more than ~15% chance of enforceable market exclusivity. That is accurate advice, and valuable to a hard-headed business thinker for its accuracy.

              1. 1.3.2.2.5.1.1

                Sometimes, the most value that a lawyer can bring to the client is to tell the client “don’t waste your money, because you cannot get a patent on this invention that will likely hold up in court.”
                I’ll say that to any small inventor that walks through my door. However, that has far more to do with how the current patent system works than the actual invention.

                Granted, I’ve been informally described a lot of things (when people find out that I’m a patent attorney — something I avoid doing to avoid hearing these things) that aren’t patentable and/or patent eligible. However, those kinds of ‘inventions’ are not what I’m talking about here.

                If a client comes to you with a software invention or a diagnostic, you can reliably advise them that the most you can get for them is a ribbon copy.
                True for small clients. Not true for larger clients. Large clients very rarely have patents invalidated because they don’t get asserted as onesies and twosies — they get asserted by the gross. Regardless, the vast majority of my work is from large clients who already have (vast numbers) of inhouse patent attorneys who make the evaluation of patent eligibility before it even hits my desk. They understand the risks just as well as anybody.

        3. 1.3.2.3

          “Considering how infrequently people get paid off … it is a handout.”

          Absolutely false. You this Mark Cuban et al. are just giving out money every year and not making money? Can anon tell me how I know that this guy I’m talking to is a businesslet? It’s because he doesn’t know how to make money on startups. Yes, most new businesses fail including startups. That’s why you spread your investments ouuuuut and invest wisely, and then you derp herp make a pay out/have ownership of a valuable company. And the numbers of people that make money that way is LARGE and it is ridiculously repeatable. I’ve had at least 13 projects pitched to me over the last ~4 years, I’m in 2 at the moment (outside of stocks etc) and probably going to join 50k in with my uncles company (natty gas equipment). It will pay out 20% in rental money on whatever I invest. Immediately. (minus taxes). Obviously not assured to keep making that forever, but we’ll see. And I’m just getting started as a youngen, and on comparably tiny money (I only have 40-50k per year to invest after retirement contribs n taxes n expenses, n women, not counting dividend reinvestments of some thousands n stock gainz etc).

          I swear, you can always tell you’re talking to one of the more re ta rded attorneys when he’s making big $$$$$$$$$$$ at his job, but then he isn’t going and making money in the market/investments in businesses. Mo fer get to investing you worthless sack, they’re already paying you over well to draft gar bage, you may as well invest it in worthwhile stuff.

          “A “shift register” is a specific type of digital circuit (i.e., a specific machine)”

          Yes, and it happens to be the only “specific machine” that uses the abstract idea in Benson. Thus, the claim practically preempts all uses of the abstract idea. Which it was intentionally drafted to do btw.

          “The government works for the people — not itself. Again, expressing an attitude that exemplifies why many people have a low opinion of the government.”

          Stop bsing, there’s a whole lot of people that don’t want the gubmit to be your crutch.

          “You can tell an examiner because of his inability to string together a logically-sound argument.”

          Don’t need made up “logic” using wild nums when you have real life nums.

          “Any small number of patents (let’s use 5 or below) for any commercially valuable technology will be challenged.”

          Well then you better stop fin up your drafting, and you better get it prepared better on your own then instead of trying to rely on bargain basement priced examination, like Greg told you. Maybe, you know, keep a CON alive. Might at some point want to involve your own, or the applicant’s own, brain. Not a novel concept.

          “The reason is simple — the challenger almost always wins.”

          I mean, you say that, and I hear you btching about it a lot, but I don’t remember that being the case from the actual nums of patents that end up at the PTAB or at the district court. I will rely on anon here to remind me if tis so. I don’t remember all lawl school scholars that are pro patents being all up in arms about such things all the time, and there are a few.

          “Let’s say that out of 100,000 patents, only 100 are actually asserted. This isn’t to say that there are just 100 that are directed to commercially valuable technology.”

          How about instead of making up numbers like having .1% of patents be “asserted” (in any fashion), we instead use the real life nums of around 6% (if I recall correctly). How about them nums?

          “or example, there could be several thousand but many of those are in portfolios of very large companies ”

          Right, which happens to be the primary purpose of the patent system at the moment, keeping gigantocorps from each other’s throats, and letting them have an occasional spat. Rather than operating even moreso as a casino, like you want it to. We already have casinos, may as well use them.

          “Whether those patents are invalid or valid is UNKNOWN”

          They’re presumed valid, derpa herpa. But yes, I know and have known for 15 or so years thx.

          “Putting all of those patents in the denominator is wrong for the simple fact that there are certain patents that will never be challenged — regardless of their validity”

          Incorrect. They still make up part of the office’s “work product” as you like to say. We’re evaluating the overall work product and its in real life effects (which is what you care about, the real life effects, you could give a flying f about the technical validity or invalidity). The overall work product is “good”, or better, especially for bargain basement prices. And the overall effects are that it helps those corps and many many other corps and people go about their daily lives. The fact that .1%, or whatever tiny percent, of patents don’t accomplish the goal of establishing a high stakes casino, or whatever other effect that you’re wanting (like a social $$$$ transfer program or whatever like greg noted previously) is precisely what is at issue, and you’re btching about the .1%. Which is obviously why I take issue with your muh argument. Especially when you even have the balls to tell us that 112’s and 101’s are a big concern in these .1% when the only people EVER to f up a 112 or 101 is the drafter/applicant.

          “LOL. 95% of what I do is for those “big boy” companies. Don’t confuse who I’m advocating for here (i.e., the little guy) with who pays my bills.”

          Then why do you even care? Is all this some idealistic nonsense?

          1. 1.3.2.3.1

            I’m just getting started as a youngen
            A fool and his money are easily parted.

            Yes, and it happens to be the only “specific machine” that uses the abstract idea in Benson.
            That type of illogic could be used to invalid a lot of patents — but you don’t see it, do you?

            Sorry, didn’t bother to read the rest.

            1. 1.3.2.3.1.1

              I chuckled a bit as 6 has indeed run into a mix of diarrhea and cut and paste mis-haps of late.

              You may have struck a nerve.

            2. 1.3.2.3.1.2

              “A fool and his money are easily parted.”

              Says the man whose probably making less than me, year on year, tho his salary is larger most likely than my salary.

              “That type of illogic could be used to invalid a lot of patents — but you don’t see it, do you?”

              Yeah, we know re re, it’s a policy decision. One made waaaaaay back when.

              1. 1.3.2.3.1.2.1

                6,

                You might want to pull back from calling others re re when you are getting your arse handed to you.

                1. If only he was able to bruh. As is he’s just another tard on PO with his hat in his hand for other people to take responsibility for his messes.

                2. I obviously will not pull back from tar ds with their hats in their hands. Beggars of millions of dollars worth of sht they probably think should be “free” to them will most certainly get no quarter of such sort.

                3. You have lost your way, your mind, and any ‘point’ that you were attempting to make, 6.

                  There is no “hat in hand” for those asking that the agreed upon bargain be met.

                  And since you still seem to not ‘get it’ that agreed upon bargain is NOT payment for “X” hours of work, but is instead payment for examination under the law.

                  You ARE still confusing internal metrics, and still are not even aware that you are doing so.

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