USPTO - Manual of Patent Examining Procedure (MPEP) Revised on January 25, 2018

Today, the USPTO announced that it has revised the MPEP:

"On Jan. 25, the ninth edition, Revision 08.2017, of the Manual of Patent Examining Procedure (MPEP) was made electronically available as an update to the eMPEP.

The revision includes changes to chapters 200, 700-1000, 1200, 1400, 1500, 1800, 2000-2300, 2500, and 2700. Each section that has been substantively revised in this revision (published January 2018) has a revision indicator of [R-08.2017], meaning that the section has been updated as of August 2017. Appendices L and R were revised to include the laws and rules current as of Aug. 31, 2017, and Appendices T and AI were revised to reflect the PCT Articles, Rules, and Administrative Instructions that were in force effective July 1, 2017.

Learn more on the MPEP web page."

The MPEP is published by the USPTO to give guidance to examiners. However, I found it useful because it gives details not discussed in the 35 USC, 37 CFR, and federal court decisions, and also the USPTO's interpretation of the legal authority. It is free, in PDF and HTML, and searchable.

Copyright © 2018 Robert Moll. All rights reserved.

USPTO - Updated US Patent Fee Schedule Effective Today

Today, the USPTO announced the adjusted US patent fees became effective:

"The USPTO Fee Schedule has been updated to reflect the fee changes. For more information on the revised fees, see the Federal Register Notice of a final rule: Setting and Adjusting Patent Fees During Fiscal Year 2017 (Effective January 16, 2018).

The fee schedule provides information and fee rates for products and services provided by the USPTO. For more information, call the USPTO Contact Center at (571) 272-1000 or (800) 786-9199."

Copyright © 2018 Robert Moll. All rights reserved.

Supreme Court - WesternGeco LLC v. ION Geophysical Corp. - International Damages

On January 12, 2018, the U.S. Supreme Court granted a petition for certiorari in WesternGeco LLC v. ION Geophysical Corp.

The issue to be considered is whether the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. § 271(f).

As a reminder, 35 U.S.C. § 271(f) states "Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer."

Copyright © 2018 Robert Moll. All rights reserved.

Tech Crunch - IBM Led on Patents in 2017, Facebook Broke into Top 50 for the First Time

Tech Crunch's article IBM Led on Patents in 2017, Facebook Broke into Top 50 for the First Time lists the top 20 companies in US patent awards and an overview of what they patented in 2017.

Copyright © 2018 Robert Moll. All rights reserved.

IP Watchdog - With 9,043 U.S. Patents, IBM Tops for 25th Consecutive Year

In IP Watchdog With 9,043 U.S. Patents, IBM Tops for 25th Consecutive Year, Gene Quinn has an article on IBM's receiving 9,043 patents in 2017, including 1,900 cloud related patents, 1,400 artificial intelligence (AI) related patents, and 1,200 cybersecurity patents.

Copyright © 2018 Robert Moll. All rights reserved.

Supreme Court - Impression Products, Inc. v. Lexmark International, Inc. - Patent Exhaustion

In Impression Products, Inc. v. Lexmark International, Inc., the US Supreme Court held that a patent owner's authorized sale exhausts all patent rights.

As the Court stated when a patent owner chooses to sell an item, that product is no longer within the limits of the monopoly and instead becomes the private, individual property of the purchaser with the rights and benefits that come along with ownership. A patent owner is free to set the price and negotiate contracts with purchasers but may not by virtue of his patent control the use or disposition of the product after ownership passes to the purchaser. The sale terminates all patent rights to that item.

Copyright © 2017 Robert Moll. All rights reserved.

Supreme Court - SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC - Laches

In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the US Supreme Court held that laches-- unreasonable delay plus prejudice-- cannot be raised as a defense against a claim for damages brought within the six-year limitations period of 35 USC 286, which provides "no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action."

Copyright © 2017 Robert Moll. All rights reserved.

Professor Janicke - Patent Venue: Half Christmas Pie, And Half Crow

Professor Janicke's Patent Venue: Half Christmas Pie, And Half Crow gives a nice summary of how patent venue works after the US Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands. 

Copyright © 2017 Robert Moll. All rights reserved.

USPTO - Public Tour San Jose CA - January 4, 2018

The USPTO announces:

"The Silicon Valley USPTO will host an informational public tour of its office located in the 3-story Wing building of the San Jose City Hall Complex. Participants will tour the office and learn about the U.S. Patent and Trademark Office from USPTO representatives. The event is free and open to the public Please RSVP here by January 4, 2018

Please note that the Silicon Valley USPTO is a federal facility.  Visitors are required to show a valid form of government-issued identification (driver license or passport) and may be subject to security screening to gain access.

For accessibility requests, please email siliconvalley@uspto.gov or call (408) 918-9900."

Copyright © 2017 Robert Moll. All rights reserved.

IP Watchdog: What Mattered in 2017: Industry Insiders Reflect Biggest Moments in IP

IP Watchdog: What Mattered in 2017: Industry Insiders Reflect Biggest Moments in IP does a nice job of using industry experts to highlight the key events in patent law in 2017.

Copyright © 2017 Robert Moll. All rights reserved.

Supreme Court - Oil States Energy Services, LLC v. Greene’s Energy Group, LLC - Oral Arguments Today

Today, the US Supreme Court heard the parties oral arguments: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.

Copyright © 2017 Robert Moll. All rights reserved.

USPTO - General Information Concerning Patents

If you are looking for an introduction to US patent law, I recommend General Information Concerning Patents on the USPTO website.

This article is well organized and gives a nice overview of the US patent system, explains the difference between utility and design patents, and the difference between inventions protected by patents and other intellectual property (IP) protected by copyright or trademark. It should help new inventors understand the requirements of patent applications, drawing requirements, and patent prosecution in general.

My critical comment is the description of patentability searching is way out of date. It actually recommends searching in the Public Search Facility of the USPTO or in patent libraries throughout the US or worse in CDs. This is not the way to conduct searches today and hasn't been the way since Web searching took over about 1995.

Copyright © 2017 Robert Moll. All rights reserved.

Professor Epstein - Patent Respect

In Patent Respect, Professor Richard Epstein continues to discuss Oil States Energy Services, LLC v. Greene's Energy Group LLC, which will be heard by the Supreme Court on November 27. Again, some persuasive arguments by a smart professor who is a leading expert on property law for decades. This case considers question of whether inter partes review by the USPTO to analyze the validity of patents violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. If the Supreme Court rules inter partes review is held unconstitutional in Oil States, it should benefit many small entity patent owners.

Copyright © 2017 Robert Moll. All rights reserved.

Time - The 25 Best Inventions of 2017

Time Magazine's The 25 Best Inventions of 2017 is my pointer to readers tonight.

Copyright © 2017 Robert Moll. All rights reserved.

Forbes - USC Sees The Future With New Course Offering - Intellectual Property

In USC Sees The Future With New Course Offering, Marshall Phelps reports that University of Southern California is offering an intellectual property course for undergraduates through the Marshall Business School.

Here's an excerpt from the article: "... intellectual property is the new watchword for almost any career of the future. The only problem is, most of our higher education institutions haven't gotten the memo yet, and that’s a real bummer for young people.

Here’s why: Intellectual property (IP) now accounts for a whopping 38.2% of total U.S. GDP and 30% of total national employment. Yet despite IP's enormous role in the U.S. economy, almost no American universities offer any undergraduate courses on the basic workings of patents, copyrights, trademarks and trade secrets in U.S. social and economic life."

This “IP education gap” poses a real threat to U.S. leadership of the 21st century knowledge economy. To understand why, just imagine how U.S. leadership of the industrial economy of one hundred years ago would have been hamstrung had there been no Wharton School or Forbes or Harvard Business Review to teach industrial management and the organization of mass production enterprises to 20th century business leaders. Similar stakes exist today.

That’s why it’s such good news that the University of Southern California (USC) has stepped forward with a first-of-its-kind course for general undergraduates on the basics of IP. This new program, launched by the Greif Center for Entrepreneurial Studies within USC’s Marshall School of Business, will train tomorrow’s leaders in the skills they need to navigate our IP-driven economy. If successful, it will be rolled out to some 40 other colleges and universities nationwide.

Pioneered by USC President C. L. Max Nikias and billionaire medical inventor Dr. Gary Michelson, USC's new undergrad course — named “The Entrepreneur’s Guide to Intellectual Property” — launched this fall semester. Taught by Kirkland & Ellis partner Luke Dauchot, this innovative new course has already attracted a who’s who of IP luminaries as guest speakers.

These include former Patent Office director David Kappos, long-time Google head of patents and current Facebook IP chief Allen Lo, Dolby’s General Counsel Andy Sherman, Chinese smartphone maker Xiaomi’s chief of IP strategy Paul Lin, and a dozen of the senior-most IP leaders of Apple, Nike, Teva Pharmaceuticals, Dollar Shave, and other high-flying IP-intensive companies."

Good job President Nikias and Dr. Michelson!

Note the author Marshall Phelps led the very profitable IBM and Microsoft patent licensing programs.

Copyright © 2017 Robert Moll. All rights reserved.

USPTO - Finalizes Revised Patent Fee Schedule

Today, the USPTO announced patent fees for fiscal year 2017. This is effective on January 16, 2018.

"The revised fee schedule is projected to recover the aggregate estimated cost of the USPTO’s patent operations, Patent Trial and Appeal Board (PTAB) operations, and administrative services. The additional fee collections will support the USPTO’s progress toward its strategic goals like pendency and backlog reduction, patent quality enhancements, technology modernization, staffing optimization, and financial sustainability.

 In response to feedback from patent stakeholders, the USPTO altered several of the fee proposals presented in the Notice of Proposed Rule Making (NPRM). The key differences between the NPRM and the final rule are:

In response to stakeholder concerns, the USPTO reduced both plant and design issue fees from the levels proposed in the NPRM. Still, the large entity plant issue fee increases to $800 (+$40) and the large entity design issue fee increases to $700 (+$140). Plant and design patents do not pay maintenance fees, and the majority of plant and design applicants are eligible for small and micro entity fee reductions, which remain available.

Stakeholder feedback suggested that increased appeal fees could discourage patent holders’ access to increasingly important USPTO appeal services. In response, the USPTO elected to maintain the existing Notice of Appeal fee at $800 instead of increasing it to $1,000 as proposed in the NPRM. Likewise, the fee for Forwarding an Appeal to the Board increases to $2,240 (+$240) instead of $2,500 as proposed in the NPRM. The revised fees still do not fully recover costs, but taken together should allow continued progress on reducing the backlog of ex parte appeals.  Since the 2013 patent fee rulemaking, ex parte appeal fees have enabled the PTAB to hire more judges and greatly reduce the appeals backlog, from nearly 27,000 in 2012 to just over 13,000 at the end of FY 2017. Additional appeals fee revenue will support further backlog and pendency reductions.

Increases to the PTAB AIA trial fees are aimed at better aligning these fees with the USPTO’s costs and aiding the PTAB to continue to meet required AIA deadlines. The Office’s costs for Inter Partes Review requests are consistently outpacing the fees collected for this service.  These fee adjustments seek to more closely align fees and costs. Trial fees and associated costs still remain significantly less than court proceedings for most stakeholders.

Inter Partes Review Request Fee – up to 20 Claims increases to $15,500 (+$6,500)

Inter Partes Review Post-Institution Fee - Up to 15 Claims increases to $15,000 (+$1,000)

Other fee changes proposed in the NPRM remain the same."

Copyright © 2017 Robert Moll. All rights reserved.

Renjun Bian - Many Things You Know About Patent Infringement Litigation in China Are Wrong

The conventional wisdom is filing a patent in China is a waste of money, because China is lax in enforcing patent rights especially those of foreign patent owners. Now U.C. Berkeley law student Renjun Bian's article Many Things You Know About Patent Infringement Litigation Are Wrong gives some data that suggests that conventional wisdom is wrong.

Here's the Abstract:

"As the Chinese government continues to stimulate domestic innovation and patent activities via a variety of policies, China has become a world leader in both patent applications and litigation. These major developments have made China an integral venue of international patent protection for inventors and entrepreneurs worldwide.

However, due to the lack of judicial transparency before 2014, westerners had virtually no access to Chinese patent litigation data and knew little about how Chinese courts adjudicated patent cases. Instead, outside observers were left with a variety of impressions and guesses based on the text of Chinese law and the limited number of cases released by the press.

Taking advantage of ongoing judicial reform in China, including mandated public access to all judgments made since January 1, 2014 via a database called China Judgements Online (CJO), this paper analyzes 1,663 patent infringement judgments – all publicly available final patent infringement cases decided by local people’s courts in 2014. Surprisingly, many findings in this paper contradict long-standing beliefs held by westerners about patent enforcement in China.

One prominent example is that foreign patent holders were as likely to litigate as domestic patentholders, and received noticeably better results – higher win rate, injunction rate, and average damages.

Another example is that all plaintiffs won in 80.16% of all patent infringement cases and got permanent injunctions automatically in 90.25% of cases whose courts found patent infringement, indicating stronger patent protection in China than one might expect."

Copyright © 2017 Robert Moll. All rights reserved.

Joe Mullin - Supreme Court Won't Hear Apple v. Samsung Round Two

In Supreme Court Won't Hear Apple v. Samsung Round Two, Joe Mullin reports that the US Supreme Court has left in place Apple's damage award of $120 million for Samsung's infringement of US Patent No. 8,074,172 (auto correction), US Patent No. 5946647 (quick links), and US Patent No. 8,046,721 (slide-to-unlock).

For background details on this lengthy battle see the Supreme Court of United States blog: Samsung Electronics, Ltd. v. Apple, Inc. 

Copyright © 2017 Robert Moll. All rights reserved.

Northwest University Kellogg School of Management - Waiting to Protect Intellectual Property Could Doom Your Startup

Northwest Kellogg School of Management's publishes a free online magazine that has a section on entrepreneurship with well written articles on innovation and intellectual property (IP) that is worth checking out. For example, here's an article that may help startups seeking to protect their IP: Waiting to Protect Intellectual Property Could Doom Your Startup. In this article, Mark McCareins, Northwestern's clinical professor of business law argues a startup really needs to spend time and money to protect its IP and interviews four patent attorneys' for tips on protecting IP.

Copyright © 2017 Robert Moll. All rights reserved.

Professor Richard Epstein - The Supreme Court Tackles Patent Reform

In The Supreme Court Tackles Patent Reform, NYU Professor Richard Epstein discusses the Oil States case currently being reviewed by the U.S. Supreme Court and raises some interesting constitutional arguments against AIA inter partes review (IPR).

Because IPRs have been effective at invalidating U.S. patents based on written prior art, the article is worth reading whether you do or don't like patents. I agree the case could be significant. As Professor Epstein states in the article, "Oil States Energy Services, LLC v. Greene’s Energy Group, LLC is the most important intellectual property case to come before the Supreme Court in many years. It challenges some of the innovative dispute resolution provisions of the 2011 American Invents Act (AIA) the most significant legislative reform of patent law since the Patent Act of 1952. Oil States assumes its vast significance because its outcome will determine, perhaps for decades, the litigation framework for all future patent disputes."

Copyright © 2017 Robert Moll. All rights reserved.

PTAB - Athena Automation Ltd v. Husky Injection Molding System Ltd.- Assignor Estoppel Cannot Prevent Inter Partes Review

In Athena Automation Ltd v. Husky Injection Molding System Ltd., the Patent Trial and Appeal Board (PTAB) held that assignor estoppel does not prevent anyone who is not the patent owner from filing a petition for inter partes review to challenge patent validity.

With regard to assignor estoppel, PTAB reasoned:

"The only argument that Husky asserts in its Preliminary Response is that Athena is barred from bringing this Petition by the doctrine of assignor estoppel. Prelim. Resp. 1. Husky contends that Mr. Robert Schad, one of the named inventors of the ’536 Patent, is the founder, co-owner, President, Chief Executive Officer, and one of two directors on the Board of Directors of Petitioner Athena and is, therefore, in privity with Athena. Id. Thus, according to Husky, Athena is estopped from challenging the patentability of the ’536 Patent under the doctrine of assignor estoppel. Id.

The Federal Circuit has explained, [A]ssignor estoppel is an equitable doctrine that prohibits an assignor of a patent or patent application, or one in privity with him, from attacking the validity of that patent when he is sued for infringement by the assignee. . . . Assignor estoppel is thus a defense to certain claims of patent infringement. Semiconductor Energy Laboratory Co., Ltd. v. Nagata, 706 F.3d 1365, 1369 (Fed. Cir. 2013) (emphasis added) (citations omitted).

Under the AIA, “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” 35 U.S.C. § 311(a) (emphasis added). Consequently, under the statute, an assignor of a patent, who is no longer an owner of the patent at the time of filing, may file a petition requesting inter partes review. This statute presents a clear expression of Congress’s broad grant of the ability to challenge the patentability of patents through inter partes review.

In contrast to § 311(a), in International Trade Commission (ITC) investigations involving patent disputes brought under 19 U.S.C. § 1337(c), Congress provided explicitly that “[a]ll legal and equitable defenses may be presented in all cases.” From this statutory mandate, the ITC concluded that it must consider the defense of assignor estoppel in cases in which a patent owner may seek to have infringing goods excluded from the United States. See Lannom Mfg. Co. v. Int’l Trade Comm’n, 799 F.2d 1572, 1579 (Fed. Cir. 1986).

Congress issued no similar statutory mandate to the Office in connection with AIA post-grant reviews. Husky concedes that the Patent Office does not apply assignor estoppel in reexamination proceedings, but argues that assignor estoppel should be available to patent owners in inter partes review proceedings based on the adjudicative nature of the proceedings. Prelim. Resp. 15-25. However, none of Husky’s arguments addresses the language of § 311(a). Because we are not persuaded that assignor estoppel, an equitable doctrine, provides an exception to the statutory mandate that any person who is not the owner of a patent may file a petition for an inter partes review, we decline to deny this Petition based on the doctrine of assignor estoppel."

Copyright © 2017 Robert Moll. All rights reserved.

USPTO - Patent Eligible Subject Matter: Report on Views and Recommendations from the Public

The USPTO's Report: Patent Eligible Subject Matter: Report on Views and Recommendations from the Public.

Patent eligibility for software and life science has been a controversial issue for decades. And it has not resolved itself despite a set of US Supreme Court's decisions seeking to clarify the patent eligibility standard. The USPTO has issued memos after each decision with guidelines that tend to befuddle applicants and examiners. So this 69 page report appears to restate the support (pages 23-27) and critical views (pages 27-33) rather than a solution. Sure Congress can amend the patent eligibility standard, but the money at stake will always drive the new standard into controversy.

Copyright © 2017 Robert Moll. All rights reserved.

Professor Stephen Haber - Patents and Wealth of Nations

Tonight, I recommend reading Professor Stephen Haber's article Patents and Wealth of Nations. This article debunks the myth that the US economy is harmed by patents. I haven't read the entire article, but whatever I read made sense and was interesting. For example, please check out this passage addressing Bessen and Meurer's misleading claim that PAE's resulted in a $29B tax on innovation:

"There is also no convincing evidence that PAEs negatively affect innovation. Professors Schwartz and Kesan, for example, analyze the data and methods employed by Bessen and Meurer to produce the widely cited claim that in 2011 PAEs generated a direct tax on innovation of $29 billion.

Their analysis effectively undermines the Bessen-Meurer claim. Kesan and Schwartz point out that the Bessen-Meurer estimate is generated from a survey of eighty-two business enterprises regarding their experiences with PAE litigation, but those firms were neither randomly selected nor chosen so as to generate a representative sample. Rather, Bessen and Meurer relied on a survey sent to “‘about 250 companies,’ which include ‘RPX clients and nonclient companies with whom RPX has relationships.’” RPX is a business enterprise that describes itself as a defensive patent aggregator. There are therefore multiple reasons to be concerned about sample selection bias.

Kesan and Schwartz also demonstrate that Bessen and Meurer conflate “costs” with “transfers.” Slightly less than one-quarter of their $29 billion figure ($6.7 billion) represents actual litigation costs; the vast majority of the $29 billion is composed of settlement, licensing, and judgment amounts, which are the rewards that patent holders should have received for their intellectual property in the absence of infringement.

Kesan and Schwartz also point out that Bessen and Meurer do not ask whether the $6.7 billion in litigation costs is a large number in relation to some benchmark. They ask how $6.7 billion compares to the amounts spent by operating companies that regularly sue each other for patent infringement (e.g., cases such as Apple v Samsung). We would point out deadweight losses are usually assessed as a percentage of GDP, and on that basis the $6.7 billion in PAE litigation costs in 2011 amounted to only 0.05 percent of America’s $15.5 trillion national product. To put this in context, $6.9 billion was the amount Americans spent in 2015 on Halloween.

Finally, Kesan and Schwartz note that any analysis of costs must be balanced by an analysis of benefits, but these are ignored by Bessen and Meurer. Recall here the history of the laser. The initial patents generated lengthy and costly litigation financed by a PAE. But who would maintain that those costs represented a deadweight loss to the U.S. economy in light of the hundreds of billions of dollars generated by the commercialization of laser-based products over the past five decades?"

Copyright © 2017 Robert Moll. All rights reserved.

PWC - 2017 Patent Litigation Study - Change on the Horizon?

Tonight, I recommend reading Price Waterhouse Cooper's 2017 Patent Litigation Study - Change on the Horizon? Here are few findings of the PWC study with my comments:

1. In 2016, US patent cases dropped 9% from 2015. Thus, we continue the downward trend in patent cases filed from 2013. Lobbyists pushing the "out of control patent litigation button" to persuade Congress to pass more anti-patent reform may have a credibility issue.
2. Patent owners saw a 74% success rate in jury trials and 52% success rate in bench trials in 2016. This rate of success at trial was surprising, but is a subset of patent owners that overcame pre-trial motions, summary judgment and challenges in AIA trials.
3. The median damage award of $10.2M in 2015 has decreased to $6.1M in 2016.
4. The median jury award was 15 times greater than median bench awards in last five years. Give that fact, I am not sure why any patent owner wouldn't request a jury trial.
5. Jury trials to bench trials have increased from 75/25 in 2015 to 80/20 in 2016. The report states the increase in jury trials is due to their larger awards and success rates.
6. Medical devices and telecommunications median awards are significantly higher than other technologies such as consumer products. 
7. Top five districts for patent cases filed: ED Texas, Delaware, Northern District of California, Illinois Northern, and New York Southern.
8. Damage awards for non-practicing entities (NPEs) are 3.8 times greater than for practicing entities. This is surprising given the negative press about "patent trolls" that should undermine jury damage awards to NPEs.

The PWC study is based on the Lexis Advanced database and 2,446 district court decisions since 1997.

Copyright © 2017 Robert Moll. All rights reserved.

AIPLA - Proposes Legislative Amendment to Subject Matter Eligibility Test Under 35 USC 101

The US Supreme Court's decisions in Alice and Mayo have generated considerable uncertainty and confusion on what subject matter is patent eligible since 2014. Although the Federal Circuit somewhat clarified the subject matter eligibility test in 2016, the current test is still uncertain. It makes no distinction between the separate requirements set forth in 35 USC 101 (subject matter eligibility), 35 USC 102 (novelty and statutory bars), and 35 USC 103 (obviousness). For example, without rigorous comparison to the prior art, decision makers are free to speculate on whether the claim has an "inventive step." Note "inventive step" is an European patent term for what we refer to as non-obviousness in the US. All statutory sections come into play in unpredictable ways in the Alice/Mayo subject matter eligibility test. Yet Judge Rich a primary architect of US patent law of 1952, cautioned that 35 USC 101, 102, and 103 are independent requirements in determining patentability. Unfortunately, the wisdom of this insight appears to be lost.

Thus, courts now talk about whether the claim is an abstract idea based on how they viewed prior subject matter eligibility cases. Yet any patent lawyer knows each patent case has it own facts so it is hard to know the outcome of subject matter eligibility. Sometimes it is eligible and sometimes not. The Supreme Court's unwillingness to define what is an abstract idea in so called step one invites decision-makers to exercise their opinion without much if any limit. Those attacking validity of the patent argue the abstract idea of any claim is a high level idea that none of us would be happy to see patented. Former Federal Circuit Judge Markey told us reducing a claim to the "gist of the invention" is legal error! Now it is the first step of Alice. What happened to the rule the claim determines the scope of the invention. To let each defendant rewrite a carefully drafted detailed claim to its gist clears the way for straw man arguments. Anyway, after step one the decision maker continues to opine on whether the claim limitations he or she read out of the claim constitute "significantly more" than the abstract idea. To put it bluntly 35 USC 101 subject matter eligibility is what the decision-maker decides.

As people especially those with novel and nonobvious software related inventions have grown impatient with the unworkable nature of this uncertain confusing legal test, the largest organization of patent attorneys, that is, the American Intellectual Property Law Association (AIPLA) has stepped in and announced a reasonable legislative proposal for amending 35 U.S.C. §101 to address the confusion and uncertainty in patent ineligibility.

Here's the AIPLA announcement verbatim:

The AIPLA proposal preserves most of the language of the current Section 101, but replaces the judicial exceptions to eligibility with a new framework that uses clearly defined statutory exceptions. It is intended to provide a clear and objective test for eligibility and to expressly reaffirm the gatekeeping conditions of patentability in Sections 102, 103, and 112. The AIPLA Board of Directors approved the following resolution:

RESOLVED that the American Intellectual Property Law Association (AIPLA) favors, in principle, amending 35 U.S.C. § 101 to recite the following:

35 U.S.C. § 101—Inventions Patentable

(a) Eligible Subject Matter.—Whoever invents or discovers any useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

(c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

The Legislative Proposal derives from the work of the AIPLA Patent Eligible Subject Matter Task Force, which spent over two years considering the current state of the law and a wide variety of alternative solutions. It concluded that the Supreme Court can no longer be expected to remedy the confusion and uncertainty that its rulings have created among the courts, the USPTO, and inventors.

To read the AIPLA Legislative Proposal and Report on Patent Eligible Subject Matter, click here."

Copyright © 2017 Robert Moll. All rights reserved.