In my post back in March 2018, I analyzed an upward change in allowance rates in the 36XX art units based on my practitioner’s observation that inventions were finally beginning to be more frequently found eligible for patenting following a string of pro-eligibility Federal Circuit decisions.

It has now been 1.5 years since the USPTO issued its 2019 Revised Patent Subject Matter Eligibility Guidance in January 2019, specifying that patent prosecution henceforth should cite to the Guidance rather than directly to caselaw, and over half a year since the USPTO’s follow-on October 2019 Patent Eligibility Guidance Update. Since the 2019 Guidance represents one of the most significant changes in patent eligibility analysis since the Supreme Court’s 2014 Alice decision, I thought it was high time for another inquiry into the state of eligibility findings in the USPTO.

Continue Reading Further Thawing: Patent Eligibility Rates Continue Trending Upward in the Wake of USPTO Guidance

On April 30, the Federal Circuit issued a precedential opinion in Uniloc v. LG Electronics, concerning claims to a software invention for a local communication system that reduced latency for parked secondary systems, e.g., when connecting a local wireless peripheral device to a computer.

Although the court’s reasoning itself is not of particular note, in concluding that the claims were in fact patent-eligible, the court stated that “[t]o the extent [defendant] LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error. Claims need not articulate the advantages of the claimed combinations to be eligible” (emphasis added). Given that some patent examiners require applicants to recite the advantage expressly within the claim, the court’s opinion provides applicants with a succinct, unambiguous, authoritative quotation to use in rebuttal.

On Thursday, April 23, the USPTO released a new study entitled “Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International.” The report illustrates the dramatic impact of two developments in the application of § 101 law: first, the Supreme Court’s Alice decision in June 2014, and—second and more recently—promulgation to patent examiners of the USPTO’s internal documents providing more specific guidance for how to apply the doctrine of Alice.

Although the illustrated results are hardly unexpected to anyone following the developments of § 101 law over the years, the study provides intuitive graphical summaries of the trends over time, specifically with respect to the metrics of (a) percentage of first actions with a § 101 rejection, and (b) variability of the issuance of § 101 rejections by examiners. (Metric (b) is of note, since it tracks the level of uncertainty, which—as the USPTO mentions in the introduction—tends to reduce investment as it rises.) Specifically, Figures 1 and 2 (reproduced below) illustrate how Alice led directly to dramatically elevated levels for both metrics; similarly, Figures 3 and 4 illustrate how the USPTO’s January 2019 Patent Subject Matter Eligibility Guidance (PEG)—and to a lesser extent its earlier Berkheimer memorandum—led directly to equally dramatic reductions in the metric levels.

Continue Reading New USPTO Study Examines the Effects of Alice and USPTO Guidelines on Patent Eligibility

Under the America Invents Act, the USPTO is to stop accepting petitions for review of covered business method patents after September 16, 2020. Given the various other priorities Congress will be dealing with between now and then, it appears virtually certain that Congress will not do anything to prevent the scheduled sunset of this transitional proceeding.

Two years ago, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet held hearings on the upcoming sunset of the CBM program, and even back then the statistics did not bode well for its continuance. Now, the writing on the wall is even clearer. According the USPTO statistics, 589 CBM petitions have been filed since inception of the program in 2012, but in only three of the last twelve months have any CBM petitions been filed at all. In the 2018 hearings, both subcommittee members and witnesses espoused a wide range of views, but with relatively little vehemence. Other than a few blog post/law review commentaries, virtually nothing happened in the wake of the hearings. Continue Reading Whither (more likely wither) CBMs

Recent comments from Representative Hank Johnson of Georgia offer a counterpoint to my last post on the state of patent eligibility reform, in which I noted that Senator Tillis had recently expressed that modifications to the existing legal framework were unlikely to take place in the near future.

Speaking to Law360, Rep. Johnson, who chairs the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, stated that although reform is “very complicated,” “we’re working our way through that process and hopefully before the end of this session of Congress we’ll have something that stakeholders can all come together and agree on.”

To paraphrase Mark Twain, then, perhaps rumors of the death of legislative change have been greatly exaggerated.

Since I last wrote on the Coons-Tillis patent eligibility reform in Congress, the Federal Circuit declined to take up an en banc rehearing of Athena v. Mayo. The court was deeply divided in the 7-5 decision, with all 12 judges believing that the diagnostic claims at issue should be patentable despite their holding, and with 7 judges writing separately to express their concerns, many of them expressly entreating the Supreme Court and/or Congress to reconsider and revamp the law of patent eligibility. (E.g., Judge Moore’s closing comment to the plaintiff: “Your only hope lies with the Supreme Court or Congress. I hope that they recognize the importance of these technologies, the benefits to society, and the market incentives for American business. And, oh yes, that the statute clearly permits the eligibility of such inventions and that no judicially-created exception should have such a vast embrace. It is neither a good idea, nor warranted by the statute.”)

More recently, the Court declined to grant cert on Athena, Vanda, Berkheimer, Cellspin or Power Analytics, and on January 27 further declined three petitions related to ChargePoint and Trading Technologies. The refusal to consider Athena was not only despite the opinions expressed by all 12 Federal Circuit judges writing en banc, but also contrary to the U.S. Solicitor General’s express recommendation that the Court opine on the case. In view of this pointed refusal, it seems entirely safe to conclude that the Court has no interest in reconsidering patent eligibility law.

In a recent Q&A session, Senator Tillis— one of the two senators who introduced the proposed legislation—stated that “I don’t see a path forward for producing a bill—much less steering it to passage—in this Congress. … If we’re going to get anything done on this issue, everyone will have to compromise. Anything less than that is dead on arrival.”

Given the Court’s disinclination—and Congress’s present inability—to effect change, significant modification of the existing legal framework seems unlikely to take place any time soon.

Sharply differing majority and dissenting opinions in the Federal Circuit’s recent American Axle & Manufacturing v. Neapco Holdings decision present yet another case where the Federal Circuit appears to be in need of further patent eligibility guidance from the Supreme Court. The American Axle case centers on the patent-eligibility of a method for dampening vibrations in vehicle driveshafts. In its recent decision, the Federal Circuit upheld the district court’s grant of summary judgment in that dispute, holding that under controlling precedent the asserted claims are ineligible under § 101 as preempting a natural law.

Continue Reading Rough Ride for Split Federal Circuit on Eligibility of Driveshaft Vibration Reduction Method

Congratulations to former Fenwick partner and frequent Bilski Blog author Robert Sachs on publishing his detailed two-part series (see Part 1 and Part 2) analyzing patentability decisions in the five years since Alice v. CLS Bank. Fenwick’s patent team has been tracking eligibility decisions both in the courts and at the USPTO since well before Alice (as the name of our blog suggests!). We use such information for various purposes, including fueling our Patent Eligibility Case Analysis Tool and providing statistics for academic and legislative use.

In his latest article, Bob organizes and visualizes the statistics to help others draw their own informed conclusions based on more than just anecdotal evidence.

The timing of Bob’s work is excellent, as Congress is in the midst of considering revisions to the patent eligibility requirements and collecting wide-ranging perspectives from stakeholders, as we have previously summarized on the Bilski Blog.

 

 

 

 

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.

Back in March, I reported on the breadth of comments the USPTO received in response to its new Guidance on patent subject matter eligibility. Now, Congress has taken up the issue with a proposed draft of a new bipartisan, bicameral bill, and the Subcommittee on Intellectual Property (under the Senate’s Committee on the Judiciary) recently completed three days of hearings. Sen. Thom Tillis has already stated that based on the testimony, he realizes revisions will need to be crafted to address issues with the new definition of “utility,” to reconsider the proposed amendment to § 112(f), to consider an appropriate enhancement of exemptions for experimental use and research, and to clarify that the legislation is not intended to promote patenting of human genes.

The range of commentary from the hearing’s 45 witnesses largely matched that provided in response to the USPTO Guidance. In addition, however, the witnesses collectively provided a breadth and depth of thinking that should be extremely helpful as the subcommittee considers what to do next. Provided below is a summary of the written testimony that each witness brought to the hearings. Though the summary is somewhat lengthy, reviewing the various perspectives really helps one understand why the balancing of interests involved in this fundamental issue of patent law is so important. I also hope that the summary below may be a useful shortcut for stakeholders to find testimony relevant to issues they may want to focus on.

Continue Reading Still No Shortage of Viewpoints as Eligibility Debate Moves to the Hill

In April, Senators Coons and Tillis proposed a draft framework for legislation reformulating the standards for determining patent eligibility under § 101 of the Patent Act. The framework largely codified the Patent Office’s latest internal eligibility standards that went into place in January 2019, formulating a closed list of categories excluded from patent eligibility and creating a “practical exception” test to ensure that such categories are construed narrowly.

On May 22, Senators Coons and Tillis were joined by Representatives Collins, Johnson and Stivers in proposing a bicameral draft bill containing—among other things—new text for § 101, as well as new supporting definitions in § 100.

It should be noted that the draft bill is still very much open to discussion, with hearings of the Senate Judiciary Subcommittee on Intellectual Property to be held on June 4, 5 and 11. That said, I’ve summarized some of the draft language’s key points below:

Continue Reading Patent Eligibility Reform in Congress: Updates on the Coons/Tillis Proposal