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« Regents of the University of Minnesota v. LSI Corp. (Fed. Cir. 2019) | Main | USPTO Presentation on Evaluating Computer-Implemented Functional Claiming under 35 U.S.C. § 112 »

June 17, 2019

Comments

As to (the Trojan Horse effect of):

"The intent behind the draft bill was to offer clarity with regard to what technologies and scientific discoveries are eligible for patenting"

More than one witness made it clearly a point that the US Sovereign choice of Useful Arts is NOT LIMITED to the subset of "technological arts" (a la the EPO).

This is NOT a semantic point, and very much needs to be maintained, given the fact that the nature of innovation cannot be known a priori (and as witness the innovation within business methods by Deming et al).

"A wildcard is how the Senators will attempt to handle the issue of abusive litigation."

Agreed - and a more than a little disappointed that there were no solid suggestions for this aspect of the problem.

The first thing that I would emphasize in ANY approach would be to separate what is a Civil Procedure problem from the unfortunate rhetoric (spin/propaganda) against strong patent rights that is so evidently (and so self-serving) comes from those that fear DISRUPTIVE innovation (yes, I am talking about at least in part Askeladden's representative).

The second thing to do would be to emphasize that ANY "bad actor" controls can be applied regardless of whether or not an underlying "item" happens to be a patent item or not.

The third thing to do would be to emphasize that ANY "real world" quality control program needs to actually enable change in the examination process itself (and NOT some "band-aid," horse has already left the barn, Post-grant mechanism with zero tie back to actual examination).

Lastly, I did NOT get the impression of:

"The changes to § 112(f), which effectively require more detailed disclosure to support functional claim language, were generally viewed positively but with some trepidation"

I got the opposite take-away that the proposed changes to § 112(f) are not workable as is, and that THIS is an area that needs much more work.

"[T]he U.S. could lose its leadership positions in artificial intelligence, quantum computing, diagnostic methods, and genetics if inventions in these fields were not eligible in this country while being more easily patentable in Europe and China."

One hears this argument all the time, but it makes no logical sense. The U.S. patent system does not uniquely incentivize U.S. industry. Inventors in Europe and China depend just as much on the incentives that the U.S. patent system provides as do inventors in the U.S.

If the EP allows patents on a given technology but the U.S. does not, that will not lead to a decline in U.S. R&D relative to EP R&D on that tech field. It will simply lead to a general, worldwide decline on R&D in that tech field. The relative position of the U.S. in that declining tech field, however, will be determined by U.S. tax law and immigration policy much more than by U.S. patent law.

"Concern was raised about the patenting of human genes in their natural state, which was eventually shot down by Senator Tillis. He and Senator Coons made it clear that doing so was not a goal of the legislation."

One has to feel for Sen. Tillis, who is tasked with the unenviable task of shooting down a dumb argument that is being made with a loud megaphone. U.S. law pre-Myriad did not allow patents on genes in their natural states. U.S. law after Myriad does not allow patents on genes in their natural states. Even if this bill text is enacted into statute as-is, it will not allow patents on genes in their natural states. The argument is as silly as it is tedious.

"The changes to § 112(f)... were generally viewed positively..."

Hm, can you cite to a specific instance of such expressed positivity? I happen to support these §112(f) revisions, but I do not recall hearing much support for them from the witnesses.

"One proposal briefly discussed was to allow §101 challenges in the USPTO's Inter-Partes Review (IPR) proceedings."

This seems like a goofy way of dealing with the problem that the opponents of these §101 revisions purport to fear. If we expand IPRs to include §101, then effectively the only thing that sets PGRs apart from IPRs is the ability to adjudicate §112.

Is there a reason why we should have one platform for assessing §112 with a 9-month time limit (except for "non-technological" inventions involving "business methods," in which case the time limit is lifted, but only for patents that have been asserted in litigation)? To ask the question is to answer it. If we are going to allow §101 in IPRs, we should just cut to the chase and collapse IPRs & PGRs together. Create a forum not limited by time, but restricted to patents that have actually been asserted, where the PTAB can reconsider the propriety of a granted claim in view of *any* grounds of invalidity. Bob Armitage has been advocating this idea for a few years now, and I think it a good idea.

"Some were... concerned about how making § 112(f) any more strict would impact the length and complexity of specifications for computer-implemented inventions."

I have seen this concern expressed, but this is a very weak objection. Most of those who read this blog are familiar with the pharma patent world, and know from experience that sometimes it takes 150, 200, or even 500+ pages to write an application that adequately supports the claims. All other things being equal, shorter is better than longer, but all other things are rarely equal. If longer software patent specifications are the price we must pay for enhanced clarity of claim scope, the good being purchased is worth the cost.

Mr. DeLassus is employing the "hey, wear my glasses, they work for me" LACK of critical thinking.

Maybe you should avoid commenting on things you clearly do not understand, Mr. DeLassus.

Re: "They repeatedly asked the witnesses to suggest ways of tamping down on lawsuits brought with subpar patents without using § 101, but there were few concrete suggestions."
One such suggestion that has been made by patent litigators but ignored is to require Markman hearings early-on in patent litigation to dispose of the many asserted patents not infringed by any rational reading of the asserted claims on the accused products, well before huge discovery and trial preparation expenses.
I was also surprised by the lack of references to IPRs.

Greg-- Right now I barely have to work. I describe function of the software, include some boiler plate paragraph on what a computer is, a couple flow charts showing empty squares, and thats it. Sounds like you want me to actually have to think and draft 400+ pages describing various representative algorithms in order to get broad functional claims. Do you know how much work that would take me? Please stay in your lane.

Mr. DeLassus, thank you for your comment on collapsing PGRs and IPRs. That makes a lot of sense. I also often wonder about why we are told that patent policy and rules must be technology neutral when clearly the computer-related and pharma/biotech-related fields have very different dynamics and needs. Does anyone else understand why it would necessarily be a bad idea to have, for example, less or shorter patent protection for computer-related ideas than for pharma?

"Do you know how much work that would take me? Please stay in your lane."

;-)

"[W]hy [would it] necessarily be a bad idea to have, for example, less or shorter patent protection for computer-related ideas than for pharma?"

I cannot say that it would *necessarily* be a bad idea, but here are three reasons why I would not favor an explicit statutory distinction between "pharma patent law" and "computer patent law."

1) Boundary drawing. There is no clean line separating "pharma" tech from "computer" tech. The intersection between these two is, in fact, a hot area of research and commercialization right now. If we are to have two explicitly separate bodies of law to govern "pharma" patents and "computer" patents, then there will have to be a lot of cases developing the indices by which we discern one from the other. My bet is that those cases will be messy, and the (putative) boundaries will be confused and confusing. Patent law works best when it is predictable and transparent in its effects ex ante. Encouraging the law to move in a direction that is confusing and arbitrary in its application defeats the point of patents, which exist to incentivize investment.

2) Political Economy. Right now, the pharma innovators and the computer innovators are on the same page vis-a-vis patent law. X cannot throw Y under the bus without running the risk that Z might turn around and throw X under the bus. If we create different patent law rules for different industries, that shifts the political economy. Now X can more easily throw Y under the bus without X having to worry about being thrown under the bus in turn. This could very easily lead to a race-to-the-bottom dynamic in the system as a whole.

3) The Future is Unpredictable. Right now the felt needs of the pharma industry vis-a-vis patent law are different from the felt needs of the computer industry, but that has not always been the case, and may not be so in five (or ten, or twenty) years. Meanwhile, new industries will emerge, and whether you draft the statute with only three categories in the law (pharma, computer, mechanical) or four (pharma, computer, mechanical, material science) or five (pharma, computer, mechanical, materials, ag tech), etc, the new industry will have to be shoehorned into one of those existing categories until the next statutory revision (which come only rarely). This creates both a really messy instance of the boundary drawing problems mentioned in pt. 1 above, but also a substandard incentive structure for this (likely exciting) new industry.

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