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March 24, 2021


If it's not patentable in the first place, why do waste time and energy to assess prior art, inventive step or obviousness?

Pure waste of time, all of that because Mr Tillis and the patent mob wants to restore software patents at any costs.

This sounds wrong headed. First determine if an invention is patentable and then determine if it is patent eligible? If they are trying to focus on the ridiculousness of 101 caselaw there should be a better way. What applicant wants to take time to find out their invention is patentable only to then learn that it cannot be patented?

Why are the senators shifting the burden to the USPTO? The USPTO is following the caselaw. Changing the USPTO procedure will not change how the courts determine validity.
The senators should be pulling up their socks and drafting and passing legislation that overrides the caselaw.

I agree with the above comments. The diagnostic claims at issue in Athena has already been found to meet all the criteria for patentability (Of course, the claims were in an issued patent) but then the Fed. Cir. tossed them as an attempt to patent a natural phenomenon. There is no reason to think that any pending application having diagnostic claims would fare any better, however the PTO examination proceeds.

The Senator Tillis and Senator Cotton proposal Is a bold and new sequenced approach to patent application examination where a patent examiner would evaluate claims of a patent application under Sections 102, 103, and 112 first. Last should be patent examination under Section 101. Siomple arguments for this and some other issues needed a fix are listed below.

1. Section 101 is in overuse mode by the USPTO and courts. This is hurting the US economy by denying patents (IP)and it drags out US patent application prosecution time. New US businesses are fragile at their start and have limited cash burn time. Investors shy away from such new companies if they lack IP. Without cash, the new business just ends. Without IP the investors then walk away. The start-up dies.

2. Without the survival of start-ups, the US goods consumer must settle for non-US products made in China and India or elsewhere They flourish in a large number of obvious ways, and they have freedom to operate and import. The US becomes the victim. Made in the USA becomes a no more. Take away US IP and this no more continues to expand. The US cannot afford to be just be a white-collar economy any longer. The private business model of the USPTO is a force driving this harm and can be fixed.

3. The USPTO needs to become a Federal Government institution so it can be in part government-funded. This change is needed urgently. The number of US patent applications each year is increasing and limiting a timely functionality of the USPTO.

4. It is important for a patent examiner to become familiar and more careful than currently they can given their per case time budget constraints. The Tillis and Cotton proposal would allow a patent examiner gets better educated about an application case. Examiners currently get only a few hours to do an office action. This is a USPTO operational mistake

5. Section 101 abuse by the USPTO and courts now helps the USPTO stay within an Examiner allocated patent examination time budget.
The time budget fuels the RCE (Request for Continued Examination) game by the USPTO. RCE proliferation is a means permitting the USPTO to initially do a more superficial examination rush job. RCE adds fees and so the examiner get more time to do their basic job. But this delays patent issuance. The USPTO is work overloaded and financially strapped. The RCE game serves simply as a USPTO survival game means. I have spoken to many examiners about this and they agree and feel trapped in this RCE game.

6. The Tillis and Cotton proposition is testable. The legal system (the Mount Olympus judiciary and white-collar lawyers should endorse the Tillis and Cotton proposal fuel. it a chance to level the playing field between applicants and the USPTO. The USPTO cannot fix itself alone and the legal system has no motivation to fix itself in a timely manner.

7. The bottom line is why wait for the USPTO to drown further. It is drowning badly. How good and how soon a USPTO system does the US need to be fixed. Immediately is my opinion for the US to return to being a competitive economic power and capable of being new technology leader.

The Senators' proposal seems akin to asking for your ID after you've been served the drink. The proper approach, as noted by so many, is to fix the law on eligibility.

The end result does not - and cannot - change with this effort.

As such, this is simply a waste of time - and coming as it does from the person that has the power - and responsibility - of PROPERLY correcting the errors written into patent law by the judicial branch, I (sadly) am only more:

I applaud Senators Tillis and Cotton for continuing to advocate this issue. The Senators provide excellent reasons for trying their proposed sequence approach.

It's important to note that the Senators are "requesting that the Commissioner initiate a PILOT PROGRAM to determine whether a sequenced approach would be more effective..." While we continue to wait for legislative action why not give the program a try?

Mr. Voelelr,

Why not?

Easy - it is a waste of time, a placating fig leaf that simply cannot resolve the issue to which it is aimed for.

That you seem to want to buy the reasons 'for trying,' tells me that your patent judgment is not mature enough to see just why this is a waste of time.

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