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May 29, 2017


Excellent write-up.

Outstanding analysis and excellent summary of the situation.

It doesn't take much smarts to see through the EFF's anti-patent propaganda and based on its member's perceived benefits to take advantage of the efforts of others without compensating them so they themselves can make more money.

Irrespective of that Alice is not workable in part because it does not address the basic question of what are the useful arts

Every word of this essay is well said.

Hey Michael,

You're spot on about the EFF's disingenuous and propaganda-driven "entitlement" view of IP generally and patents specifically. Contrary to what Ranieri and the EFF believe, if you don't encourage protection of invention/patent rights, those inventions will either be kept as trade secrets or won't be developed at all.

As I have said in my recent Recognicorp posting and elsewhere, the subject of affirmative categorical compliance within Section 101 is a neglected area of study amongst academic commentators, attorneys and judges.

We still live with the after-effects of State Street Bank, in the sense that broad claims considered arguably valid in that more liberal era are now coming before the courts. Section 101 categorical compliance should be a concern of every prosecution attorney, and obtaining of main independent claims of undue and difficultly-defendable scope risks setting off a judicial avalanche in which valid subject matter within a patent gets buried. As the EPO Enlarged Board has told us in Europe, claim scope is ultimately the responsibility of the inventor(s) and the prosecution attorney(s) representing him or her (them). The fact that a claim can be slipped past a weary examiner on a Friday afternoon is not an indication that it is desirable or in a client's interests.

The question, therefore, for every prosecution attorney nowadays should be: is the claimed subject-matter a new and useful process, machine, manufacture or composition of matter, and if challenged what arguments have been built into the written description and allowed claims that provide a clear positive defence against such challenge?

Those who question the value of such analysis are invited to consider the representative claim at issue in Mayo and the available in arguments in support of the proposition that it is a transformative process falling plainly within the eligible category of section 101. A reading of the Supreme Court opinion sets out strong and credible arguments that it is not.

That being said, there is a range of possible interpretations of the Alice test ranging from mainly harmless to severely damaging. Why pick on the broadest and most damaging interpretations?

The USPTO and the lower courts have paid insufficient attention to the caution which is expressed by the Supreme Court in its recent section 101 opinions and its intention not to eviscerate the patent system. Lack of attention to detail, "gold plating" of Supreme Court dicta, failure to conduct detailed study of these important decisions and extract the true rules of law that are applicable are exemplified in the Federal Circuit decisions in Sequenom and Recognicorp.

Equally exemplified by these two decisions is inattention to the underlying facts and consequential decision based on what would nowadays be called "fake news" or in a judicial context "fact facts". That is exemplified in Sequenom where Judge Reyna notoriously said (slip opinion at page 11): "Because the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful." Presumably he has no daughter of child-bearing age. If he had such a daughter and asked her, she would have expressed in no uncertain terms her preference for a simple blood test at 11 weeks gestation over an invasive and inherently risky amniocentesis at 17 weeks gestation. It is notable that the same Judge concluded in Recognicorp that the claimed process began and ended with data, whereas it is plain to any reader who has reached secondary school age that the claimed process begins and ends with images. Such a decision based on "fake fact" has nothing to do with the Alice test, however interpreted, and much to do with inexcusable inattention to and disregard of plain claim wording and the integers expressed by such wording.

Unfortunately, many recent Section 101 decisions have done nothing to enhance the reputation of the US courts either domestically or internationally.

Incidentally I claim credit in the judicial context for the terms "fake fact decision" and "fake law decision." Possibly an academic commentator could compile a list of Federal Circuit and other significant decisions since Mayo which fall into one or both of these categories

Mr. Cole,

Perhaps you would like to reevaluate the case serving as the lynchpin in your statement of

"We still live with the after-effects of State Street Bank, in the sense that broad claims considered arguably valid in that more liberal era are now coming before the courts."

Considering the historical analysis on "software" patents at: http://www.ipwatchdog.com/2017/05/21/alice-over-half-u-s-utility-patents-issued-annually-software/ the use of the "State Street" case as some type of 'Scape Goat should be critically evaluated.

...I will also add Mr. Cole, that your lament does not accord with the facts of the Alice case itself.

In that case, claims stipulated by both parties as firmly meeting your desired "affirmative categorical compliance" were none-the-less swept up by the Supreme Court and made to be "Abstract."

I KNOW that I have already "told you so" regarding this - must I do so again (and again...)?

The driving problem here just is NOT what applicants are doing.

Pretending otherwise - even with the best intentions - remains pretending and to the degree that such pretending PACIFIES a righteous anger with the Court scrivening its own patent law, your laments are part of the problem rather than a factor in a solution to the real problem.

@ Skeptical

What matters is not whether a claim has a form that fits one of the statutory categories but whether as a matter of substance it indeed does so. If you read the representative claim in Alice, you get a powerful feeling at the end: "so what?!" The Alice parties were well represented in Europe and conspicuously failed to get their claims past the EPO. I have not seen, on re-reading Alice, any stipulation that the representative claims were statutorily compliant, and in any event such stipulation matters nothing if the claims do not in substance comply. If you consider that the Alice claims in fact comply, a detailed explanation why you credibly believe this to be the case and what the transformative nature of the claimed subject matter indeed is would be helpful.

One of the driving problems is that applicants have in the past got large numbers of dubious patents through the USPTO. Judges hate dealing with bad patents, and by human nature throw them out, even if they use bad reasoning to do so.

One of my concerns is not what applicants HAVE DONE in the past but what they CAN DO IN THE FUTURE to avoid falling down the section 101 rabbit hole. It CANNOT be a part of the problem to explain what applicants can and should do to better themselves.

That being said, the IPO and AIPLA proposals are a pointer in a better direction. Until then, better claims prosecuted through the USPTO and brought before the courts in combination with better opinions from the judges would do much to help. We are where we are NOW, and if we cannot solve the problem completely there is much that can be done to mitigate its worst effects.

"One of my concerns is not what applicants HAVE DONE in the past but what they CAN DO IN THE FUTURE to avoid falling down the section 101 rabbit hole. It CANNOT be a part of the problem to explain what applicants can and should do to better themselves."

Yes is can be - to the extent that such distracts from a focus on the waywardness of the Court.

You miss the point that ANY change by applicants will more than likely NOT work, because the Court will simply move the goalposts.

Have you ever heard the phrase "patent profanity?"

Have you been paying attention to the Supreme Court denigrate attorneys as "scriviners?"

Your path Paul is just going to lead to (yet) another "I told you so"...

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