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September 24, 2018


This is a most welcome development, and the arguments parallel those filed e.g. on behalf of CIPA and the EPI in the Ariosa case, see http://www.scotusblog.com/wp-content/uploads/2016/04/15-1182.amicus.final_.pdf and http://www.scotusblog.com/wp-content/uploads/2016/04/15-1182-ac-Institute-of-Professional-Representatives-Before-the-Europe....pdf and further arguments that I filed in a personal capacity in Recognicorp http://patentdocs.typepad.com/files/amicus-brief.pdf.

The Recognicorp brief argued that refinement of the first stage of the Alice test and evolution of rules that are more fixed and are rooted in the claim language are important to the public both from the standpoint of those conducting proceedings before the USPTO and those involved in litigation before the courts. New and beneficial results should be considered under Alice to ensure that the test for eligibility under § 101 is no more severe than the test for nonobviousness under § 103. Furthermore, When broadly interpreted, the two-part Alice test raises issues of compliance with TRIPS.

It is encouraging to see that arguments of this type which have been advanced by many practitioners over the last five years are beginning to see increased favour, and that the extreme deviation represented e.g by Ariosa may be less likely to be repeated in future.

I will look forward to seeing what Director Iancu says in his address to AIPlA.

This is indeed encouraging news, thanks for the report.

Paul - as you stated, "New and beneficial results should be considered under Alice to ensure that the test for eligibility under § 101 is no more severe than the test for nonobviousness under § 103." Except that 101 (under current court jurisprudence of Mayo, Myriad, and Alice, as well as pre-Diehr jurisprudence of Flook and pre-101 jurisprudence of "invents or discovers" from Funk Brothers and Brogdex) considers the "contribution" (to use the EU parlance) of the ineligible discovery when considering whether the claim is "directed to" such subject matter and whether any other limitations then convert it into an eligible "invention." Where that ineligible discovery is a _new_ one made by the applicant, it doesn't qualify as 102 prior art against the applicant, but does contribute to eligibility analysis. Hence, 101 _IS_ in fact more stringent than 103, Judge Rich's revisionist history notwitstanding -- see Application of Ducci argued by the other co-author of the 1952 Act P.J. Federico. (For details for anyone else reading the post, read my SCOTUS brief for law professors in Myriad, article at 63 Hastings L.J. 53 (2011), or Jeffrey Lefstin's fine article, Inventive Application: A History, 67 Fla. L. Rev. 565 (2015), which documents that the Courts of Appeals continued to apply Funk Brothers after the 1952 Act, and Congress proposed but did not adopt language that would expressly have overruled Funk Brothers.) And this difference between 101 and 103 (with 101 being "stronger" for non-102 new discoveries) will remain the law unless and until SCOTUS changes course or Congress overturns that approach (and no constitutional prohibitions to doing so are found).

So, as I suggested to Kevin off-line, Director Iancu's approach may lead to the grant of many patents _that the courts will then hold invalid_. It also will impose high costs of litigation (due to the variation from existing court jurisprudence) and to society from the costs of licenses for what (by hypotheses) will be invalid (but not invalidated) patents. And the associated costs to innovation and to fairness will be (perhaps) even worse than the costs of not issuing in the first place patents that currently fail under 101 under existing jurisprudence (if the PTO follows the existing jurisprudence). I, for one, believe that getting too far out in front of the courts and playing chicken (to see if the courts will take down the patents after the fact) is not a good idea. Much better to try to get a legislative fix (and seek to have Congress impose it retroactively, which if it expands patent rights the public has no grounds to challenge that _their_ property has been taken, particularly after Golan v. Holder and notwithstanding the dicta in Graham v. John Deere that Congress may not privatize through patent rights information that has already entered the public domain).

In contrast, Director Iancu's efforts to define "abstract" in "abstract idea" are both helpful and likely to prove very productive. Particularly as the courts have yet to provide any clear jurisprudence here. I wish him much luck in these efforts.

Hey Josh,

I agree with you that we need a legislative fix to this mess created by SCOTUS with its nonsensical and broken Mayo/Alice framework for supposedly determining patent-eligibility. And we should use Director Iancu valiant efforts here as the "tip of the spear" to make this happen.

There certainly is historical revisionism going on here (and it is NOT Judge Rich being the perpetrator).

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