On November 26, 2018, Director Iancu delivered remarks on The role of the courts in shaping patent law and policy as it relates to the complex topic of patent eligibility under 35 U.S.C. § 101.
Director Iancu refers to Judge Rich's guidance on applying 35 U.S.C. §101: "problems can arise due to the unfortunate … though clear commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of invention in § 101 which may be patentable, and to the conditions for patentability demanded by the statute …."
As Director Iancu stated "pursuant to the Patent Act of 1952, we should keep invalidity rejections in their own lanes. If something is not novel or is obvious, we should invalidate it under 102 or 103. If something is indefinite, or too broad to be fully enabled or described, we should invalidate it under 112. We have decades of case law from the courts and decades of experience at the PTO examining millions of patent applications, which guide us in our 102, 103 and 112 analyses. People know these standards and know how to apply these well-defined statutory requirements."
Judge Rich co-drafted the modern U.S. patent system in 1952. Much of that Act remains today. We might have been saved confusion and frustration that ensued in combining §§101/102/103 analysis if we simply took Judge Rich's advice. See Judge Giles Rich Wikipedia.
Copyright © 2018 Robert Moll. All rights reserved.
