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July 16, 2020


This is nothing but a mess.

More of the rope for the Gordian Knot.

By the way, the 'attempt' to make sense of that mess with writing like: "A potentially more workable definition of patent eligibility is that a claim is directed to an abstract idea if all of its elements are either non-specific, address a non-technical problem, or known in the art. Thus, a claim is more likely to survive a § 101 challenge if it has three qualities: specificity, a technical problem that it solves, and some degree of novelty."

is NOT helpful.

"Technical" is just not the same as the US Sovereign's choice of Useful Arts, and Justice Stevens was rebuffed and LOST his majority position on the Bilski case when he tried to overwrite the words of Congress in an attempt to make it so.

Just because the years have passed does NOT mean that we should 'boil the frog' by trying to insert the very thing that was rejected back then.

The two-part Alice test, in my view, is not being applied in a cogent or reasonable fashion. Thus, trying to understand how it impacts what we (patent professionals) do is a futile exercise.

But the three factors (specificity, a technical character, and novelty) are a much better description of how the courts and the PTO are actually viewing 101 these days.

This is not to say that I like it. I don't.

This is not to say that it is a correct interpretation of the law. It is not.

But you can draw a pretty clear line between eligible and ineligible in CAFC cases by looking at these three factors. You cannot do it with the two part test (or at least, I am not aware of anyone who has).

Still not on board? Take a look at the recent DropBox case, where the Court wrote "Our cases have consistently held that an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art." There it is, plain as day.

Michael, I like your summary except for one niggle: if we are going to focus on the word "technical" let us please try to keep in mind the crucial difference between the EPO's "technical character" test of eligibility and the UK's "technical contribution" approach. You begin with a reference to technical "character" but end with a quote about technical "improvement". As you (I suspect) already know, the patent judges in England dismiss the EPO's "technical character" approach as "intellectually dishonest". I suspect you yourself do understand the difference but I wonder if your readers do and I'm not sure your comment will be helpful to anybody who is unclear as to the difference.

Why "technical"? At least because i) that is the modern way to talk about what were in the 18th Century the "useful arts", and ii) GATT-TRIPS (to which the USA has signed up) equates eligibility with "all fields of technology".

The reason why the EPO "technical character" approach attracts the opprobrium of the patent judges in England is that it takes the claim "as a whole". Why does SCOTUS nevertheless adopt the English "contribution" approach? Is it also uneasy about the intellectual dishonesty jibe? Or is it perhaps because 35 USC 101 includes the word "new"?

The problems with the contribution approach are obvious though. It requires i) dissection of the claim and ii) an enquiry into novelty and the "inventive concept" even before one has prepared to embark on the task of enquiring into the prior art relevant to Sections 102 and 103.

I should add that the EPO avoids tainting its eligibility enquiry with any enquiry into novelty or "inventive concept" only because there is a "technical" filter at the heart of its unique to the EPO 103 enquiry. I look forward to the day when it dawns on other jurisdictions how intellectually rigorous, efficient, economical and fair is the EPO approach to eligibility/patentability. But for as long as patent academics, attorneys and judges still don't grasp how the EPO approach works, that day will never dawn. A pity, in my opinion.

Max, I was writing about US law.

Dr. Borella,

With all due respect, you were talking about the 'boiled frog' abomination of the attempt to rewrite US law.

I simply do not accept any such abomination.


Yet again, you provide a plainly false statement with:

"Why "technical"? At least because i) that is the modern way to talk about what were in the 18th Century the "useful arts"

This is simply not so.

Do not attempt falsehoods.

Dr Borella, quite properly, you remind me that you are talking about US law. But it was you who wrote:

"...the three factors (specificity, a technical character, and novelty) are a much better description of how the courts and the PTO are actually viewing 101 these days."

so I thought that "technical character" must be part of US law.

If this notion of "technical character" is being appropriated out of the case law of the EPO, then I would like readers to understand the difference between i) looking at the claim as a whole to see if it exhibits "technical character" and ii) dissecting the claim to find its "inventive concept" (or the contribution to the art) and then enquiring whether that "contribution" has "technical character".

Or is it that you don't see any such difference. Under US law, of course.


There is absolutely no notion of technical character in Section 101 and it is only implied by Alice. What we are seeing is feature-creep on the part of the Federal Circuit.

It is not defined clearly, but the terms are showing up on 101 decisions pretty frequently. Not to mention the PTAB uses it as well.


I pit it you Dr. Borella that THAT "feature creep" is the improper use of Common Law law writing, not to 'discern' or even to 'gap fill,' but to re-write the statutory law in violation of the Separation of Powers.

Most** attorneys per the state bar oaths have an ethical duty to the Constitution and should be speaking out against the inappropriate use of Common Law law writing.

**the SINGLE case of the oath of the Commonwealth of Massachusetts provides a hint of one of the states in which it may be argued otherwise.

Mike many thanks for your explanation (feature creep) of the appearance in Fed Ct and PTAB decisions of the notion of "technical character", so eponymous by now in the established case law of the Boards of Appeal of the EPO. They find it so useful and so apt, despite the clamour from the UK, the past decade or so, that it can be found nowhere in the patentability/validity provisions of the EPC.

Yesterday I saw a summary of a learned Paper, reporting that the COVID-19 virus is circulating up in the clouds. Here another example of "feature creep". Today, we all live in a small and densely interconnected world. Good thing or bad? Who knows.

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