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July 30, 2020


'Celebrating' a broken system or methodology will NOT fix what is broken.

Instead of trying to import 'credibility,' the ethical thing to do is to challenge the broken items.

This article turns into nothing more than a slow uptick on the 'boil the frog' slowly motif.

In Vanda the Court defined five specificities for a patent-eligible method of treatment claim. Your approach might gain some traction if persuasively argued to the Court

The "take home" from what is for me a very impressive empirical study is that:

"...if one element of a claim is specific, another has technical character, and yet another is novel, that probably will not cut it. Instead, a single element should exhibit all three....."

To me, this looks like the "contribution approach" used by the specialist patents courts in England. The Boards of Appeal of the EPO don't like it because it requires dissection of the claim in order to pursue the preliminary enquiry into "eligibility". Is it now established, in the courts of the USA that 101 eligibility requires picking the claim apart in order to determine the point of novelty?

I like you attempt to analyze the requirements for patent-eligibility. But I think you should consider that the Fed Cir. has effectively grafter an "improvement" requirement onto what you have reviewed as a "technical solution to a technical problem." In fact you recognize this throughout your articles, e.g., as you define the "technical character of 2." This leaves open the question "Is technical novelty sufficient" sufficient per se or must the invention provide an advance over the prior art"?


Love ya man, but we'll continue to agree to disagree on this one.


In a previous article, I've adapted the five specificities of Vanda to the abstract idea exception:

"Ideally for § 101 purposes, a claim recites a specific function of a specific element that does something in a specific way to obtain a specific result and thus solve a specific problem. Not all five specificities need be present in each claim, but the more of these specificities there are, the more likely the claim will survive an eligibility challenge. Conversely, the fewer specificities in the claim, the more likely it will be found abstract."


Under 101, the US courts have routinely been picking the claim apart despite stating that they review the claim as a whole.


Good point. As far as I know, this has not been addressed in the case law (at least by the CAFC). One could certainly argue that a non-trivial, novel technical feature is an "improvement". But the requisite extent of any such improvement remains undefined.

Thanks for that confirmation, Michael. Perhaps "as a whole" and "picking apart" are compatible though.

Thus: before you start picking the claim part you must carefully consider it "as a whole" because only by first carefully considering it "as a whole" can you go on then to pick it apart in a way that is fair to the inventor.

Thought provoking post, as usual. I think this is a good framework for drafting applications to address 101. And to address other things too, because if you think about it, you're also covering your 112 and art concerns with the specificity and novelty elements. And perhaps the "technical" lens is a good one for attaining a non-3600 classification.

That said, I would propose taking a more objective look at the cases to really determine the predictive power of this framework. For instance, rather than use the court characterizations on each metric to assign a score, explicitly do not do so and just review the courts representative claim. For instance, when a court says words to the effect of "this claim is specific," those statements are likely a run-up to an eligibility determination. But the claim might not actually be more specific than the representative claim of another case going the other way. Do if you think the right score is a 2, give the 2, then see what the court says. Similarly, it may be good to add an "overlap" score that reflects whether there are particular features contributing the favorable character in the various categories.


Your comment indicates one of the more insidious "boil a frog by slow degree" problems with the post hoc attempt to 'fit' the judicial muckery into some semblance of reason (and NOT to note that such Common Law law writing in the first instance is NOT the providence of the judicial branch):

EVERY SINGLE branch of the government from CAFC judges, to Director Iancu, to key senators have remarked that the judicial re-writing of 35 USC 101 has created a Gordian Knot of CONFLICTING case law.

This (ongoing) effort by the otherwise respectable Dr. Borella is NOT respectable.

It is itself a blight on patent law, and we will NOT rectify the mess by this type of post hoc 'rationalization.'

We should NOT be purposefully obfuscating 101 with the likes of 112, 102, and foreign law. We should NOT be supporting any such attempts.

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