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July 16, 2017


great summary of the case!


Could anyone provide me an idea of how many
in-house patent lawyers per researcher are hired in industry? What is the rule of thumb?

It's ironic how rigorous standards are still required for 103, but for 101 the 'gist' is just enough and you can COMPLETELY make things up as you go along.
Three years post Alice and the USPTO is still issuing software patents by the THOUSANDS which may or may not be valid under the Alice standard. I have clients who come to with me such inventions and ask me if it passes Alice, and the best reply I can give them is "Vodoo" -- I just try to navigate the (self-contradictory) USPTO guidelines as best as I can, and WHO THE HELL knows if ANY of this stuff (i.e. SW patents being issued in 2017 !! post-Alice !!) can be enforced. I guess the simple 'Alice enforcement' guideline is if the defendant is a well-moneyed Silicon Valley crybaby efficient infringer, then NOTHING can actually be enforced and it's all invalid under Alice/Mayo/etc.

@ Moshe

If you look at my amicus brief in Recognicorp, you will find arguments that the all elements rule applies as strongly for section 101 as it does for section 102. Adoption of that would remove much of the arbitrariness of the present run of decisions.

Also have a look at the stature and the pertinent case law in MPEP concerning the four categories. If the novel feature(s) of the claim is (are) themselves within a clearly eligible category, then Alice objections are likely not to prevail. If your novel features do not pass that test, then it is time to rethink and make sure that they are defined so that it is clear that they do so.

And bear in mind that categorical compliance is a matter of substance and not mere outward appearance. We should bear in mind the quote attributed to Abraham Lincoln: How many legs does a dog have if you call his tail a leg? Four. Saying that a tail is a leg doesn't make it a leg. Similarly merely calling a set of steps a process does not make them an eligible process having the transformative properties called for in Cochrane v Deener. Will your proposed claim satisfy the Viagra criterion: is it strong enough not just to get through the USPTO (difficult enough these days) but also to stand up in court? Generalised waffle probably will not do, but detailed claims directed to genuine new functionality have a much better chance.

Thanks for the clear summary

Mr. Cole,

How do you square the 9-0 takeaway from Bilski regarding the rejection of Machine or TRANSFORMATION as a requirement with your comment here concerning methods "that transform?"

Also, you have Prometheus which runs counter to Cochrane v Deener.

MoT(ransformation) is neither necessary, nor sufficient.

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