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« FDA Announces "Purple Book" | Main | PTAB Update -- A Review of the First Round of Comments (Part 1) »

September 17, 2014


Well done in getting a speedy report of this important discussion.

What would be good would be for USPTO to put the present draft informally on its website and enable further comments to be made before revised Guidance is published in October. That way we might have a revised draft which is (nearly) right first time.

I'm optimistic that things are moving in a positive direction. However, I'm a little skeptical that the so-called smaller net cast as a result of the difference between "directed to" and "reciting" or "involving" a judicial exception will be better for applicants. In particular, without sound guidance and examples as to when a claim is "directed to" a judicial exception, there is a risk of conclusory assertions by the PTO that will be difficult to rebut. In any event, it is clear that the PTO wants and needs our continued input so keep it up!

Extremely helpful. Thanks.

I would not want the job of giving examples close to the border, however. How could you be confident the Courts would agree? CAFC and SCOTUS clearly don't.

What the USPTO wanted, above all, was EXAMPLES.

My comments contained a number of new examples worked through on the scheme proposed by the USPTO.

However, the outstanding effort along those lines was submitted by Coalition for 21st Century Medicine (see documents received after 1 August). Their efforts exceed mine by a factor of 2 or 3.

The best way forward is to take up the challenge refused by Bob Cook-Deegan and create further instructive examples that USPTO can use. It is probably still not too late to do some work in that regard, and everyone, both USPTO staff and the profession, will benefit from your efforts.

Re: Examples in view of the Courts and SCOTUS.

There are two completely different considerations. The first one is clear that the courts do not always agree with what the USPTO does. That's not going to change. The second, which is more important at this point considering everything that has happened, the USPTO has to devise a process that is clear and consistent for all applicants now. It may be that later the courts come back and tell the USPTO that they still have it wrong. The USPTO must not cower and do nothing or be overly and hence improperly restrictive out of fear of SCOTUS telling them that they are wrong. Such will drive a wrench into the engine of innovation (and also how our government is supposed to work... recall checks and balances -- the Executive Branch, the Legislative Branch, and the Judicial Branch each have a particular role to play).

As was discussed at the meeting, the Examples provided in the Guidance were intended to be clearly eligible or ineligible. Examiners sometimes incorrectly view the Examples as establishing the bright line between eligibility and ineligibility. Perhaps, the new Guidelines not only can provide Examples closer to the eligibility line, as Dr. Naik mentioned, but also provide instructions for interpreting the Examples, such as disclosing limitations in the Examples that are not critical to eligibility determination.

Good point, Mark Freeman, especially since Ms. Cohan noted that Alice took the approach of separating elements from the claims for analysis (thus negating the 'old' approach/rule of considering the claim as a whole).

Not intending to be contrary to Paul Cole, I just do not agree with his post in reply to Bob Cook-Deegan.

Paul - I do not think that Bob is "refusing any challenge" whatsoever. I think instead that he is pointing out that the examples that are far from the "grey zone" are examples that we need the least. It is explicitly the close calls wherein guidance is most beneficial. Examples that are clearly one way or the other are completely unhelpful in precisely the situations wherein we need the most help.

Decreasing the alarm we should feel is not a help to rectifying the situation. Rather, I would posit that sounding more alarm is in fact more helpful to resolving something that should have been resolved if the Court had chosen to act in a more decisive (and more helpful) manner.

In fact, I would posit that the Court has settled for a "peace for out times" AVOIDANCE of the critical challenge. Instead of accusing Bob Cook-Deegan of the avoidance, I would place the "blame" somewhere more appropriate.

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