Much ink has been spilled in recent times on the standards for, and outcomes of, patent eligibility questions under § 101.  Consider, for example, USPTO Director Andrei Iancu’s remarks in September about providing additional guidance to Patent Office examiners, and various analyses of invalidation rates in the federal courts. (We touched on invalidation rates ourselves in our Bilski Blog update in August, at which time the Federal Circuit’s cumulative invalidation rate since July 2014 was hovering north of 88 percent.)

One topic has received little attention, however: The rulings of the Patent Trial and Appeal Board on pre-grant § 101 examiner rejections appealed by applicants.  In my opinion, this constitutes the proverbial elephant in the room for patent prosecutors.

Continue Reading Still No Path Out of the 101 Swamp?

It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that the primary concern was to avoid preemption of "fundamental building blocks" of human ingenuity.  The Court specifically avoided any suggestion that software or business methods were presumptively invalid.  But those concerns seem to have gone unheeded.  The Court's attempt to sidestep the tricky problem of defining the boundary of an exception to patent eligibility—"we need not labor to delimit the precise contours of the "abstract ideas category in this case""—has turned into the very mechanism that is quickly "swallow[ing] all of patent law.” The federal courts, the Patent Trial and Appeal Board, and the USPTO are using the very lack of a definition to liberally expand the contours of abstract ideas to cover everything from computer animation to database architecture to digital photograph management and even to safety systems for automobiles.

Let's look at the numbers to present an accurate picture of the implications of the Supreme Court’s decision. My analysis is a data-driven attempt to assess the implications of Alice one year out. It is with an understanding of how the Supreme Court’s decision is actually playing out in the theater of innovation that we can better project and position ourselves for what the future holds.

Alice at Court

Table 0 Fed Courts

As of June 19, 2015 there have been 106 Federal Circuit and district court decisions on § 101 grounds, with 76 decisions invalidating the patents at issue in whole or in part.  In terms of patents and claims, 65% of challenged patents have been found invalid, along with 76.2% of the challenged claims. 

Continue Reading The One Year Anniversary: The Aftermath of #AliceStorm

The Palo Alto Area Bar Association (PAABA) and the International Technology Law Association (ITechLaw) are teaming up to provide a luncheon panel discussion on the practical implications of the Alice v. CLS Bank decision. In her dissent to the Federal Circuit Alice decision, Judge Moore predicted that the majority view would result in “the death of hundreds of thousands of patents.” Since the U.S. Supreme Court affirmed that decision in June, it is now becoming clear that both courts and the US Patent and Trademark Office are treating the Alice decision as having changed the law on what types of inventions are eligible for patent protection.

The panel will explain this perceived change and offer practical suggestions for steering clients through these shifting seas, including:

  • How Alice has impacted patent applications at the USPTO, Covered Business Method post-grant proceedings at the PTAB, and invalidity arguments in district court
  • What the USPTO, district courts, and the Federal Circuit have done with the vague tests articulated by Alice regarding “abstract ideas” and “inventive concept”
  • What kinds of applications and patents are most vulnerable
  • What patent owners and applicants who are at risk can do to shore up their IP protection

November 11, 2014
12 – 1:30 pm PST 
Fenwick & West LLP, Mountain View

To register, click here.

Hosted by PAABA, ITechLaw and Fenwick & West LLP. CLE credit available.

Fenwick & West has launched an interactive PTAB Database that details proceedings filed with the USPTO’s Patent Trial and Appeal Board – providing quick and easy access to information about PTAB decisions.

With the creation of PTAB by the U.S. Patent and Trademark Office, core aspects of resolving validity disputes are now governed by newly designed post-grant opposition proceedings. Fenwick’s database offers a searchable tool to follow the latest developments in the post-grant space and to examine key takeaways from recent PTAB decisions.

PTAB Database Proceedings
The PTAB database is designed to help users draw insights into post-grant proceedings trends as they begin to emerge. Currently, the bulk of cases deal with prior art issues, but in both Covered Business Method (CBM) proceedings and in Post-Grant Review proceedings issues of patent eligibility under Section 101 arise. Information about new cases will be added to the database regularly.

The dots on the graph represent recent PTAB decisions. The dots are sorted chronologically by decision date and color coded by issue category. Users choose categories by checking the corresponding box and scrolling over each dot to view details about that proceeding, including the decision date, case name and key takeaways.

PTAB Database Categories
To access the PTAB database, click here: PTAB Database

By: Robert R. Sachs

By now, we've all heard of the controversy regarding the lax oversight at the USPTO of examiners in the Office's Telework Program–what I'll unofficially dub as "Telegate."  Now, the House Oversight and Government Reform Committee just announced an investigation into the abuses of the program.  

In brief, at the request of the Inspector General, the Office conducted an internal investigation into four allegations: 1) time fraud by examiners, 2) "end loading" of work (waiting until the end of a production period, and then cramming), 3) mortgaging of work (recording work as complete in one production period, and then completing it in a later production period), and 4) improper quality control. The task force that conducted the investigation produced a  32-page report that detailed numerous abuses of the system by examiners, and attempts by managers to correct these abuses that were met with procedural roadblocks, resulting in slap-on-the-wrist penalties. But instead of providing this report to the IG, the Office created a watered-down 16-page version that stated that the investigators were unable to find objective evidence of fraud and abuse, a finding contrary to the facts set forth in the original report.

Continue Reading USPTO and “Telegate”

On August 27, the USPTO posted a notice inviting public comments on the “Interim Eligibility Instructions” for evaluating patent subject matter eligibility that were issued to patent examiners on August 24.  Comments are due by September 28.

This is getting interesting, as the new director also posted instructions to PTO staff last week that a thorough examination did not equate with just rejecting cases. 

On August 24 the USPTO published interim guidelines for its patent examiners on patent-eligible subject matter under the Bilski case.  The guidelines include 8 pages of instructions and first and second accompanying flow charts.  They are interim guidelines because the U.S. Supreme Court has agreed to review the Federal Circuit decision in Bilski and has scheduled oral arguments for November 9.  The guidelines supersede instructions in the Manual of Patent Examining Procedure.