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July 26, 2022


I respectfully disagree that "Congress is the answer * * * ." The SC has based its utterly irrational subject matter jurisprudence on Constitutional grounds, not on statutory interpretation. Therefore, the only things Congress can do to correct this idiocy are (a) propose a change the Constitution and/or (b) change the SC. I don't see either happening.

Is this in the vein of "The Lady doth protest too much, methinks"...?

I have to disagree with Kevin's view as well. There is much that can improve regarding the process for issuing 101 rejections, and most of the improvements should happen as a matter of good agency action, not cryptic 101 standards.

For instance, facts must have evidentiary support, even when those facts are supporting 101 findings (When is something well-understood, routine, conventional? When facts demonstrate it.). The courts get away with judicial notice only because they can, not because they should. No reason to let examiners do it, too. The USPTO should make examiners actually find evidence (it is literally the primary job qualification, after all...).

As another example, you should need to actually say what the judicial exception is if you want to reject a claim. The current guidance is construed as allowing examiners to simply copy/paste the majority of a claim and say it falls within this group or that group (where those groups are defined using overbroad language expanding case dicta far beyond its context). Examiners can't even articulate what idea they are alleging is abstract much of the time because of the way they use the current guidance. This is a process ripe for abuse, and it is abused.

I could go on, but the point is that there is some very low hanging fruit here: examiner guidance can require belt-and-suspenders work from examiners, and simple good governance will enhance predictability and reliability of 101 rejections without requiring "the authority under the law to bind judicial decision-making."

This is a good effort by the new Director.

I agree with Easwaran - on both points:

1) I have even seen examiners deny that they are required to provide ANY evidentiary support (even in the face of the Berkheimer Memorandum).

2) boilerplate of "which group" has served as "notification" of what the abstract idea is. But that "group identification" is NOT what the case law dictates.

Easwaran: I admire your optimism, and agree with the comment above that the Court’s decisions are based on Constitutional grounds. As for what you propose the Director can do about the LHF, if that is the goal then the request for commentary seems unnecessary at this stage. The Office could craft guidance to that effect and then ask for commentary. I am skeptical that your apprehension of what the Director intends to do is accurate.

As for the constitutional bases for the Court’s decisions the same was true of obviousness until Congress enacted Section 103 in 1952. The lesson is that the constitutional principle wasn’t the problem it was how the Court had implemented it (or mandated it’s implementation). So there is room for Congress to cabin application of the principle here to avoid decisions like American Axle.

Congress is also the answer because the goal is not to obtain a patent but rather to obtain a patent that can be enforced. As shown expressly in the Cleveland Clinic case, Office policies don’t bind the courts.

Thanks for the comments

"The SC has based its utterly irrational subject matter jurisprudence on Constitutional grounds, not on statutory interpretation."

I do not think that this is correct. Justice Stevens' *concurrence* in Bilski grounds the exceptions in the Constitution, but Justice Stevens was writing for a minority on the Court, not for the Court itself. Justice Kennedy's opinion for the Court in Bilski grounds the exceptions in statutory stare decisis, not the Constitution.

None of Benson, Flook, Diehr, Mayo, or Myriad even mention the Constitution. Alice and Chakrabarty both mention the Constitution as a sort of throw-away along the way to analyzing the statutory text. Neither of them purport to ground the so-called exceptions in any sort of Constitutional mandate.

In other words, it really is not the *Court* that has grounded the so-called exceptions in any sort of Constitutional requirement. There is a minority of *jurists* who have attempted that move, but the *Court* has never made such a pronouncement. Indeed, the Court is frustratingly vague about the *source* of the so-called exceptions.

Dear Greg: I think the constitutional issue is a subtext to the Court's decisions, the ultimate basis for the Court's authority. After all, to the extent granting patents is a power of Congress in Article I the only basis for the Court to have any opinion at all (outside due process, takings, etc.) over how Congress exercises its power is that the Court thinks permitting Congress to grant patents on natural laws, natural phenomena, and abstract ideas would not promote progress, which is the qualifier to the exercise of that power under Clause 8.

But if push came to shove (for instance, if Congress passed a law abrogating the judicial exceptions) I don't think it would take the Court long to render a decision based expressly on this rationale. Indeed, I think the genius of Giles Rich and PJ Federico in crafting Section 103 was to do so in a way that the Court thought they had codified the Court's gatekeeping over incremental innovation.

I also think that the emphasis needs to be on amending/redrafting Section 101 to be focused on process of how to effectively cabin the scope of patent-eligible subject matter to avoid the inhibiting progress bogeyman while at the same time reducing the capacity of courts to impose their idea of what should be eligible, analogous to the effect of Section 103 in tying obviousness to the prior art rather than subjective tests like flash of genius.

Thanks for the comment.

The Supreme Court has said that the judicial "exceptions" are historic _interpretations_ of the statutory language in 101 and its predecessor provisions (e.g., Flook's explicit statement that "process" in 101 did not include all commonly understood processes). So they are not in fact based on constitutional requirements (even if the constitutional purposes may have informed those statutory interpretations). I think it is much less clear that the Court would invalidate as contrary to the Authors and Inventors Clause (whether under the "promote the progress" preamble or the "discoveries of ... inventors" body language) an express legislative abrogation of the Court's interpretive precedents on 101. Personally, I would encourage them to do so. But I doubt we'll ever get there as that would require enacting such legislation.

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