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January 06, 2016

Comments

Hey Michael,

The Perfect Patent Storm: misapplication of Section 101 (based on the broken and nonsensical Alice test) combined with "lowering the bar" on when Section 285 applies (based on Octane Fitness).

If, as you, state post-Alice "approximately 70% of all patents challenged under 35 U.S.C. § 101 have been invalidated in district courts, while the rate of § 101 rejections has exceeded 80% in some of the USPTO's art units where it was previously below 40%," we have a serious and alarming situation created by the Royal Nine who continually fail to render order out of this chaos, including refusing to define what an "abstract idea" is, and especially what is not an "abstract idea." Such does not engender respect from the patent bar or the public at large that the rule of law is being applied consistently and fairly in compliance with "due process."

What effect, if any, will this jurisprudence likely have on the payment of maintenance fees for software and business method patents, and on the USPTO's income from those fees?

@Jim McKeown

Hard to say, but I'll speculate.

Some patentees might let their more vulnerable patents lapse. While issued patents are supposed to have the presumption of validity, we've seen that that is not the case in practice when you are in front of some courts with a 101 challenge.

On the other hand, having an issued patent in your portfolio can be a valuable asset, and some patentees will be reluctant to let any go without an invalidity decree from a court.

So I don't see too many maintenance fee payments going intentionally unpaid because of 101. Some, but not many.

The ambiguity of 101 "abstraction" rejections is certainly a major new problem. But how bad all the decisions based on 101 are from a public policy standpoint depends to a considerable extent on whether or not these were claims that would not have survived a 103 or 112 challenge at the Fed. Cir. anyway? [As clearly indicated by the judge in this case.]
One check might be to look for how many patents with asserted claims defeated by 101 defenses also had narrower asserted claims that were NOT held invalid on a 101 basis and still infringed?

"But how bad all the decisions based on 101 are from a public policy standpoint depends to a considerable extent on whether or not these were claims that would not have survived a 103 or 112 challenge at the Fed. Cir. anyway? [As clearly indicated by the judge in this case.]"

Paul,

With all due respect, it is for the courts to apply the statutes, as enacted, by Congress, not to engage in "public policy"; that it is for Congress, not the courts to determine. The reason we have such chaos on patent-eligibility is because the Royal Nine repeatedly refuse to confine themselves to interpretation of the statutes AS WRITTEN, and refrain from engaging in "public policy" judgments which isn't there's to decide. The Royal Nine has also repeatedly failed to define what they mean by the key phrase, "abstract idea," leaving us "mere mortals" to scratch our heads as to how rationally advise our clients. That doesn't engender respect from the patent bar which is rightly frustrated and irritated by a High Court that repeatedly meddles in patent law jurisprudence, but provides minimal guidance and no clarification on how to abide by their nebulous, illogical, and imperious rulings that amount to nothing more than judicial fiat.

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