Thursday, September 4, 2014

Gene Quinn - The Ramifications of Alice: A Conversation with Mark Lemley

Tonight, check out The Ramifications of Alice: A Conversation with Mark Lemley.

Here's Professor Lemley's initial comment during the interview:

"Well, I think Alice is a real sea change on the patentable subject matter issue. I’ve heard a lot of folks talk about how Alice doesn’t really use the word “software” so it doesn’t really change anything, but I honestly think that’s wishful thinking. Here’s what it seems to me Alice does that’s significant. The first thing it does is it makes it clear that Mayo wasn’t a one-off thing, but rather is the fundamental test going forward for all kinds of patentable subject matter issues. I think a lot of patent lawyers had talked ourselves into thinking that the Court didn’t really mean it in Mayo when it talked about having to add a significant inventive component beyond the abstract idea or the natural process. But the court in Alice makes it clear that if your patent covers an implementation of an idea we want proof of an inventive concept beyond that idea before we’ll grant you a patent. You’ve got to add new steps or new hardware, not just conventional hardware or conventional steps. Not just computer technology that is generic or functionally described. And if you can’t do that not only your method claims but also your article of manufacture claims are going to be invalid."

Where's the support for grafting "an inventive concept" requirement into 35 USC 101." Sounds like  "inventive concept" is a synonym for nonobviousness. If not, maybe someone can explain how they differ. If it is the same, why are we performing the obviousness analysis without reference to 35 USC 103, which requires the decision-maker compare the claim as a whole to the prior art?

So let me get this straight, 35 USC 101 allows the decision-maker to identify a portion of the claim that is an abstract idea (and ignore the other part) then decide if the ignored part contains "significantly more" or "an inventive concept?" What's a patent attorney to do? Professor Lemley suggests writing means-plus-function claims .... How about we agree "inventive concept" should be assessed by consideration of the entire claim as required by 35 USC 103?

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