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« Is This the WTO Waiver End Game? | Main | PTAB Denies Two CVC Requests Regarding Motions »

July 26, 2021


One disagreement with your writeup. You state that "it ultimately requires that the finder of fact (or of law -- patent eligibility is a strange amalgam of both) decide whether certain claim elements can be ignored for purposes of the § 101 inquiry." It is not that elements are ignored, it is that the "claim as a whole" reflects no creativity beyond mere application of the otherwise ineligible abstract idea. This confusion was expressly addressed -and rejected - in Flook, and remains the law (notwithstanding Diehr's implicit overturning of Flook and Bilski's implicit overturning of Diehr). So you may want to argue that adding the claim elements is sufficient creative (and thus "inventive" in a manner that qualifies as a relevant "invention or discovery") before addressing 103 (given its limited set of prior art that doesn't address novel but ineligible discoveries of the applicant). But let's not go back to the "ignoring claim elements" argument - which misses both the point and the actual applicaiton of the law that the courts are performing. Whether the additional elements add "enough" to qualify as an invention is where the discussion should focus. And yes, that is somewhat similar (for good reason) to 103 analysis, but we don't usually discuss for 101 the secondary considerations or analyze "inventive enough" in regard to the same kinds of technological prima facie evidence that we discuss for 103. Best, Josh


Whether we call it ignoring claim elements or evaluating the "creativity" of the claim, it is the same issue - a highly subjective process. See Yu v. Apple. At least for 103 there needs to be (say, 99% of the time) some reference to prior art to conclude that a claim is not patentable, but with 101 saying "I don't like it" is enough. Not that all judges / examiners do that, but some do and that is problematic.

The ones getting hurt are small and mid-sized companies with limited budgets for long proceedings and appeals.


For an example of the types of shenanigans that I see frequently in practice:


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