About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs

Docs on Twitter


Disclaimer

  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat_165
Juristat #8 Overall Rank

Pharma-50-transparent_216px_red

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

July 26, 2021

Comments

Mike:
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

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.

Mike

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

https://www.patentdocs.org/2020/11/stupid-101-tricks.html

Verify your Comment

Previewing your Comment

This is only a preview. Your comment has not yet been posted.

Working...
Your comment could not be posted. Error type:
Your comment has been saved. Comments are moderated and will not appear until approved by the author. Post another comment

The letters and numbers you entered did not match the image. Please try again.

As a final step before posting your comment, enter the letters and numbers you see in the image below. This prevents automated programs from posting comments.

Having trouble reading this image? View an alternate.

Working...

Post a comment

Comments are moderated, and will not appear until the author has approved them.

Your Information

(Name is required. Email address will not be displayed with the comment.)

September 2021

Sun Mon Tue Wed Thu Fri Sat
      1 2 3 4
5 6 7 8 9 10 11
12 13 14 15 16 17 18
19 20 21 22 23 24 25
26 27 28 29 30