9 ms·

The Patent Office is “adjusting” to a Supreme Court ruling by ignoring it

220 points by DiabloD3 7y ago

wegs 7y ago
I like and trust the EFF, but that's not my lived experience, and so I don't believe the stats say what the EFF claims they mean. 1) My patent lawyer, following Alice, told us to not even try for most patents we were previously considering, because patents like that would just get rejected. I'd believe acceptance rates have gone up, but that's because people aren't filing as many frivolous patents. 2) The back-and-forth process with the patent office the EFF advocates for is a really bad idea and bad deal. Big companies can hire specialists who do this. For individual inventors, the costs here get astronomical. Now, the bar for patents is still way too low. But Alice did bring it up. If I had my druthers: * The bar for patents would be high. * The processes for applying for patents would be straightforward, quick, and easy. There would be an appeals process, but it'd look much more like sending a plain-language letter than one couched in byzantine process and baroque terminology.
- stefan_ 7y ago
  So why do the drops in rejection rates line up strictly with new Patent Office guidance? Remember, Alice was in 2014. Rejection rate didn't drop until 2019, where it suddenly collapsed after the guidance was issued. Individual inventors are already not applying for meaningful patents. That's political folklore to tell a warm story around patents.
  - pnw_hazor 7y ago
    It is completely understandable that Alice rejections will go down as new guidance is provided. This is because people drafting patents react to the same new guidance and draft patents accordingly. Guidance documents often come with examples, language from the Alice-overcoming examples will be included in patent applications and in arguments against Alice rejections. Often, word for word if possible. Note, there have been several rounds of 'new guidance' since Alice came down. Most of them (maybe all?) include examples from courts showing claims invalidated under Alice and examples claims that made it past Alice in court. It doesn't take that much effort to draft patents or arguments that match the good examples. Note, this doesn't change the scope of the inventions, it simply puts magic words into applications or claims to get around Alice if needed.
    - hcknwscommenter 7y ago
      You almost got it. SO close. But you are completely wrong about the following "this doesn't change the scope of the inventions, it simply puts magic words into applications or claims to get around Alice if needed." This is wrong. The scope of the claims that result post-alice are completely different. And this is something the EFF post simply ignores. Just think about it. YOu are an inventor and invent some amazing new idea in the year 2000 like location track a plurality of requests for transportation, location track a plurality of transportation providers, use a novel form of graph theory to optimally match requests with providers with an optimized price that maximizes utility for driver and requestor (think uber-like service). You try to patent that. The patent office POST_ALICE says NOOOOO!!!!! That's just a concept. Abstract concepts are not patentable. But you, you smart cookie, you know that there are only a few practical ways to have a sufficiently fast database-lookup architecture to actually implement this at scale and that implementation and all its details is what you actually patent. Because you had the guidance, you knew what you could get and you went for it.
      - pnw_hazor 6y ago
        Alice was about subject matter, not novelty. The Alice game was drafting/amending claims to look more like a machine. I talk about it more below in my response to your other comment. Often that can be accomplished by including claim language that doesn't limit the novel aspects of the invention. In other words, prior art is not a really a consideration when getting over a 101 rejection.
- bchociej 7y ago
  Applications average about 2 office actions to disposition, so some back-and-forth is implicit
  - hcknwscommenter 7y ago
    IF you count a request for continued examination a "disposition" sure. However, many (most?) applications include one or more such requests. And so, there is much more back and forth than your post implies. Filing such a request typically gets you at least two more back and forths.
    - bchociej 6y ago
      I agree with your point, and I don't consider RCE a disposition. Still, the average application has about two office actions (CTFR, CTNF, CTRS, CTEQ) before an allowance or abandonment.
- jessriedel 7y ago
  > I'd believe acceptance rates have gone up, but that's because people aren't filing as many frivolous patents. That the article doesn't even address this obvious hypothesis makes it pretty much worthless.
johnnyo 7y ago
Not sure what the EFF is trying to get at here. After the decision, it says rejections rose 31%, but now they have fallen back down. The EFF contends this is because the Patent Office is ignoring the law, but they don't offer any evidence to back up this assertion. Another likely explanation is that patent applicants are adjusting their applications to be in line with the decision, and thus the rates have gone back down. This assertion by the EFF would only make sense if patent applicants didn't know about the rule change. But applicants do know, and have adjusted their applications accordingly in the intervening time.
- pnw_hazor 7y ago
  "Another likely explanation is that patent applicants are adjusting their applications to be in line with the decision" This. We had/have no problem getting past Alice if the application was drafted post-Alice. (Except for one art unit that was being unreasonable -- but even they seemed to have given up. Maybe their boss retired?) Nothing changed except we included additional language in the spec and claims for no other reason than to get around Alice rejections.
  - hcknwscommenter 7y ago
    Really? YOu have some magical language in the spec and claims that universally gets around Alice but (and I'm inferring here) doesn't narrow the scope of your claims? Please please please do tell me what this magical "additional language" is. I am not trying to troll. I am genuinely curious. I have upvoted your post. You can send me a private message if you like.
    - pnw_hazor 6y ago
      I call it magic language because it had nothing to with the novelty of the inventions. Note, Alice wasn't the first time this was required. We always adjust the language we use in applications as new case law comes down. Further, gibberish included in claims to defend against Alice rejections usually had nothing do with novelty because Alice was about subject matter patentability not novelty. Before the early Alice guidance came out we tried a lot of different things, much of it superficial in my opinion. Including: emphasizing that the machine did the work; showing that inputs are being transformed into something new by the machine; writing claims that show different parts of the system interacting with each other; and sometimes nonsense like "wherein each foobar is stored in a hardware memory" or "displaying the bizbaz on a hardware display." In some hard cases (mainly apps drafted before there was any Alice guidance or useful case law) we included claim limitations like "modifying performance rates based one or more sensor inputs" (e.g., CPU temperature) Later, when the first case in district court found that a patent satisfied Alice, we started including language verbatim from that case in specs, claims, and office action responses whenever possible. As more guidance memos came out, we included relevant language from those as well. Sometimes this resulted in claims that had a lot of words that were unrelated to the novelty of the inventions. By this I mean, we included limitations that would be present in every computer program/system by default. Storing things, displaying things, two or more processes or machines interacting or exchanging data, receiving inputs from sensors, transforming data from one shape to another, and so on. The specifics could vary for each patent application because art units or sometimes examiners were using different standards before reasonable guidance started coming out. Some patent attorneys focused more on arguing with examiners and appealing Alice rejections. We don't like to argue with examiners, so we typically keep amending claims until they are satisfied. And, then file continuations with broader claims that omit the amendments that didn't work. This type of practice requires high budget applications and may not be practical for everyone. But generally we always could get over Alice using these techniques.
pnw_hazor 7y ago
"...examiners practically never make final rejections based on Alice. " I beg to differ. I have seen cases that get multiple final rejections based on Alice. Usually based on garbage reasoning. Alice was such a terrible holding -- it was based on a crappy patent so we got bad law. Well drafted and well prosecuted patents don't often end up in court, let alone in the Supreme Court. Over coming Alice is/was easy if the patent application was drafted after the first Alice based rejections came out. That is an indication of the weakness of the holding, including meaningless details or structure in the form of "magic words" often could get around early Alice rejections. Until recently, the main driver for stubborn Alice rejections were particular art units that seemed to have an informal policy to never let anything through.
- unsrsly 7y ago
  Interesting. My sense is that valuable patents end up in court almost 100% of the time (e.g. CRISPR).
  - pnw_hazor 7y ago
    Generally, if the patent is high quality, people settle because there isn't much to argue about. At most they do some preliminary hearings (claim construction) and then to a summary judgment hearing. The Alice case opened the door for awhile because practically any tech/computer related patent had a good change of being invalidated at summary judgment. I don't practice in bio so I am not familiar with CRISPR patents.
- PatentlyDC123 7y ago
  I've seen a quite a few cases to back up your assertion about final rejections based on Alice (or other subsequent 101 cases).
- hcknwscommenter 7y ago
  I'm trying to figure out what sort of "meaningless details or structure" you are referring to. Do you mean the "sending" "receiving" junk that briefly surfaced to allow patents to "doing random things on a server"?
ineedasername 7y ago
I like the EFF's mission, but I find many of the EFF's posts like this to be awful and quite propaganda-like in style. They present an issue and spend time talking about how it's bad, provoking an emotional response of anger or righteous indignation, and leave out the most important details. In this case, the USPTO released new guidance on how reviewers should consider the Supereme Court's Alice decision. EFF thinks this guidance is bad. They have metrics and talking points. But the EFF fail's to deliver the single most important information: What did the new guidance say! -- EFF is silent on this. WHY? I think in this case it's because the EFF doesn't like software patents at all. They know much of their audience feels the same way. So they don't care about actually explaining what the new guidance says-- All they care about is presenting metrics about increased software patent grants that show how bad the new policy must be, because it's doing what the EFF hates: granting more software patents. I find it emotionally manipulative, and the more time goes on the more I avoid their articles. They used to be better than this.
- jedberg 7y ago
  > They used to be better than this. Did they? I've been a member for 20 years and I don't remember it ever being different. They've always been a pro-technology anti-patent lobbying machine. All of their materials are biased this way. I don't agree with everything they lobby for, and I tell them that when I renew each year. I know a few of the folks there, and from what I hear, they take that into consideration when they discuss budgeting. But I'm pretty sure they've always been like this.
  - pnw_hazor 7y ago
    Critiquing the USPTO is fine and welcome. But going to bat for Alice is a fools game. Alice is an incoherent and disjointed holding (well several holdings). Which is no surprise because trying to craft a stable informative legal standard that limits or improves so-called software patents based on 35 USC 101 (subject matter/patentabilty) is inherently unworkable. Besides, patent attorneys are usually smart enough to draft around Alice-type subject matter issues. There were so many early Alice rejections at the USPTO and patents invalidated in courts because they usually involved applications or patents that were drafted before Alice was decided. Alice changed the standard out from under them after they were filed or granted. Patent attorneys familiar with software technology could/can easily draft around Alice limitations now that they know what they are.
deleted 7y ago
[deleted]
D13Fd 7y ago
Clear guidance is a good thing. Clear guidance should result in fewer rejections, because with good guidance fewer people should be filing bad applications to begin with. The real test will be whether the applications that issue survive challenges in the courts. The courts do not consider the PTO's guidelines in determining whether the patents are valid. In other words, the PTO can't change the actual standard. All they can do is reject patents that don't meet that standard, and if they fail to do so, the patents will be found ineligible by the courts when they are asserted. The PTO's guidance is only useful in helping attorneys and examiners shepherd through patents that will then be tested in the courts. Bad patents will still be shot down if they survive the PTO (as they should be). In short, I love the EFF but I'm not sure why they are complaining about this.
bchociej 7y ago
Edit: new guidance is from 2019 so my comment is not relevant, but we haven't had a chance to analyze much published data from this period anyway
- slaymaker1907 7y ago
  The new guidance came out in 2019.
Simulacra 6y ago
1500 is not a lot of people. If that’s the best EFF can come up with on its mailing list then I think this may be an issue they should rethink. Not that I disagree, I completely agree, but it doesn’t seem like they are going about it the right way.
- jagged-chisel 6y ago
  1,500 out of how many who interact with the USPTO for some reason (e.g. filing a patent [via attorney], researching patents, etc.)? I can't expect large portions of the general population know enough about the patenting process (or even patents in general) to contact the USPTO over this issue.

220 points by DiabloD3 7y ago

wegs 7y ago

I like and trust the EFF, but that's not my lived experience, and so I don't believe the stats say what the EFF claims they mean. 1) My patent lawyer, following Alice, told us to not even try for most patents we were previously considering, because patents like that would just get rejected. I'd believe acceptance rates have gone up, but that's because people aren't filing as many frivolous patents. 2) The back-and-forth process with the patent office the EFF advocates for is a really bad idea and bad deal. Big companies can hire specialists who do this. For individual inventors, the costs here get astronomical. Now, the bar for patents is still way too low. But Alice did bring it up. If I had my druthers: * The bar for patents would be high. * The processes for applying for patents would be straightforward, quick, and easy. There would be an appeals process, but it'd look much more like sending a plain-language letter than one couched in byzantine process and baroque terminology.

stefan_ 7y ago
So why do the drops in rejection rates line up strictly with new Patent Office guidance? Remember, Alice was in 2014. Rejection rate didn't drop until 2019, where it suddenly collapsed after the guidance was issued. Individual inventors are already not applying for meaningful patents. That's political folklore to tell a warm story around patents.
- pnw_hazor 7y ago
  It is completely understandable that Alice rejections will go down as new guidance is provided. This is because people drafting patents react to the same new guidance and draft patents accordingly. Guidance documents often come with examples, language from the Alice-overcoming examples will be included in patent applications and in arguments against Alice rejections. Often, word for word if possible. Note, there have been several rounds of 'new guidance' since Alice came down. Most of them (maybe all?) include examples from courts showing claims invalidated under Alice and examples claims that made it past Alice in court. It doesn't take that much effort to draft patents or arguments that match the good examples. Note, this doesn't change the scope of the inventions, it simply puts magic words into applications or claims to get around Alice if needed.
  - hcknwscommenter 7y ago
    You almost got it. SO close. But you are completely wrong about the following "this doesn't change the scope of the inventions, it simply puts magic words into applications or claims to get around Alice if needed." This is wrong. The scope of the claims that result post-alice are completely different. And this is something the EFF post simply ignores. Just think about it. YOu are an inventor and invent some amazing new idea in the year 2000 like location track a plurality of requests for transportation, location track a plurality of transportation providers, use a novel form of graph theory to optimally match requests with providers with an optimized price that maximizes utility for driver and requestor (think uber-like service). You try to patent that. The patent office POST_ALICE says NOOOOO!!!!! That's just a concept. Abstract concepts are not patentable. But you, you smart cookie, you know that there are only a few practical ways to have a sufficiently fast database-lookup architecture to actually implement this at scale and that implementation and all its details is what you actually patent. Because you had the guidance, you knew what you could get and you went for it.
    - pnw_hazor 6y ago
      Alice was about subject matter, not novelty. The Alice game was drafting/amending claims to look more like a machine. I talk about it more below in my response to your other comment. Often that can be accomplished by including claim language that doesn't limit the novel aspects of the invention. In other words, prior art is not a really a consideration when getting over a 101 rejection.
bchociej 7y ago
Applications average about 2 office actions to disposition, so some back-and-forth is implicit
- hcknwscommenter 7y ago
  IF you count a request for continued examination a "disposition" sure. However, many (most?) applications include one or more such requests. And so, there is much more back and forth than your post implies. Filing such a request typically gets you at least two more back and forths.
  - bchociej 6y ago
    I agree with your point, and I don't consider RCE a disposition. Still, the average application has about two office actions (CTFR, CTNF, CTRS, CTEQ) before an allowance or abandonment.
jessriedel 7y ago
> I'd believe acceptance rates have gone up, but that's because people aren't filing as many frivolous patents. That the article doesn't even address this obvious hypothesis makes it pretty much worthless.

johnnyo 7y ago

Not sure what the EFF is trying to get at here. After the decision, it says rejections rose 31%, but now they have fallen back down. The EFF contends this is because the Patent Office is ignoring the law, but they don't offer any evidence to back up this assertion. Another likely explanation is that patent applicants are adjusting their applications to be in line with the decision, and thus the rates have gone back down. This assertion by the EFF would only make sense if patent applicants didn't know about the rule change. But applicants do know, and have adjusted their applications accordingly in the intervening time.

pnw_hazor 7y ago
"Another likely explanation is that patent applicants are adjusting their applications to be in line with the decision" This. We had/have no problem getting past Alice if the application was drafted post-Alice. (Except for one art unit that was being unreasonable -- but even they seemed to have given up. Maybe their boss retired?) Nothing changed except we included additional language in the spec and claims for no other reason than to get around Alice rejections.
- hcknwscommenter 7y ago
  Really? YOu have some magical language in the spec and claims that universally gets around Alice but (and I'm inferring here) doesn't narrow the scope of your claims? Please please please do tell me what this magical "additional language" is. I am not trying to troll. I am genuinely curious. I have upvoted your post. You can send me a private message if you like.
  - pnw_hazor 6y ago
    I call it magic language because it had nothing to with the novelty of the inventions. Note, Alice wasn't the first time this was required. We always adjust the language we use in applications as new case law comes down. Further, gibberish included in claims to defend against Alice rejections usually had nothing do with novelty because Alice was about subject matter patentability not novelty. Before the early Alice guidance came out we tried a lot of different things, much of it superficial in my opinion. Including: emphasizing that the machine did the work; showing that inputs are being transformed into something new by the machine; writing claims that show different parts of the system interacting with each other; and sometimes nonsense like "wherein each foobar is stored in a hardware memory" or "displaying the bizbaz on a hardware display." In some hard cases (mainly apps drafted before there was any Alice guidance or useful case law) we included claim limitations like "modifying performance rates based one or more sensor inputs" (e.g., CPU temperature) Later, when the first case in district court found that a patent satisfied Alice, we started including language verbatim from that case in specs, claims, and office action responses whenever possible. As more guidance memos came out, we included relevant language from those as well. Sometimes this resulted in claims that had a lot of words that were unrelated to the novelty of the inventions. By this I mean, we included limitations that would be present in every computer program/system by default. Storing things, displaying things, two or more processes or machines interacting or exchanging data, receiving inputs from sensors, transforming data from one shape to another, and so on. The specifics could vary for each patent application because art units or sometimes examiners were using different standards before reasonable guidance started coming out. Some patent attorneys focused more on arguing with examiners and appealing Alice rejections. We don't like to argue with examiners, so we typically keep amending claims until they are satisfied. And, then file continuations with broader claims that omit the amendments that didn't work. This type of practice requires high budget applications and may not be practical for everyone. But generally we always could get over Alice using these techniques.

pnw_hazor 7y ago

"...examiners practically never make final rejections based on Alice. " I beg to differ. I have seen cases that get multiple final rejections based on Alice. Usually based on garbage reasoning. Alice was such a terrible holding -- it was based on a crappy patent so we got bad law. Well drafted and well prosecuted patents don't often end up in court, let alone in the Supreme Court. Over coming Alice is/was easy if the patent application was drafted after the first Alice based rejections came out. That is an indication of the weakness of the holding, including meaningless details or structure in the form of "magic words" often could get around early Alice rejections. Until recently, the main driver for stubborn Alice rejections were particular art units that seemed to have an informal policy to never let anything through.

unsrsly 7y ago
Interesting. My sense is that valuable patents end up in court almost 100% of the time (e.g. CRISPR).
- pnw_hazor 7y ago
  Generally, if the patent is high quality, people settle because there isn't much to argue about. At most they do some preliminary hearings (claim construction) and then to a summary judgment hearing. The Alice case opened the door for awhile because practically any tech/computer related patent had a good change of being invalidated at summary judgment. I don't practice in bio so I am not familiar with CRISPR patents.
PatentlyDC123 7y ago
I've seen a quite a few cases to back up your assertion about final rejections based on Alice (or other subsequent 101 cases).
hcknwscommenter 7y ago
I'm trying to figure out what sort of "meaningless details or structure" you are referring to. Do you mean the "sending" "receiving" junk that briefly surfaced to allow patents to "doing random things on a server"?

ineedasername 7y ago

I like the EFF's mission, but I find many of the EFF's posts like this to be awful and quite propaganda-like in style. They present an issue and spend time talking about how it's bad, provoking an emotional response of anger or righteous indignation, and leave out the most important details. In this case, the USPTO released new guidance on how reviewers should consider the Supereme Court's Alice decision. EFF thinks this guidance is bad. They have metrics and talking points. But the EFF fail's to deliver the single most important information: What did the new guidance say! -- EFF is silent on this. WHY? I think in this case it's because the EFF doesn't like software patents at all. They know much of their audience feels the same way. So they don't care about actually explaining what the new guidance says-- All they care about is presenting metrics about increased software patent grants that show how bad the new policy must be, because it's doing what the EFF hates: granting more software patents. I find it emotionally manipulative, and the more time goes on the more I avoid their articles. They used to be better than this.

jedberg 7y ago
> They used to be better than this. Did they? I've been a member for 20 years and I don't remember it ever being different. They've always been a pro-technology anti-patent lobbying machine. All of their materials are biased this way. I don't agree with everything they lobby for, and I tell them that when I renew each year. I know a few of the folks there, and from what I hear, they take that into consideration when they discuss budgeting. But I'm pretty sure they've always been like this.
- pnw_hazor 7y ago
  Critiquing the USPTO is fine and welcome. But going to bat for Alice is a fools game. Alice is an incoherent and disjointed holding (well several holdings). Which is no surprise because trying to craft a stable informative legal standard that limits or improves so-called software patents based on 35 USC 101 (subject matter/patentabilty) is inherently unworkable. Besides, patent attorneys are usually smart enough to draft around Alice-type subject matter issues. There were so many early Alice rejections at the USPTO and patents invalidated in courts because they usually involved applications or patents that were drafted before Alice was decided. Alice changed the standard out from under them after they were filed or granted. Patent attorneys familiar with software technology could/can easily draft around Alice limitations now that they know what they are.

deleted 7y ago

[deleted]

D13Fd 7y ago

Clear guidance is a good thing. Clear guidance should result in fewer rejections, because with good guidance fewer people should be filing bad applications to begin with. The real test will be whether the applications that issue survive challenges in the courts. The courts do not consider the PTO's guidelines in determining whether the patents are valid. In other words, the PTO can't change the actual standard. All they can do is reject patents that don't meet that standard, and if they fail to do so, the patents will be found ineligible by the courts when they are asserted. The PTO's guidance is only useful in helping attorneys and examiners shepherd through patents that will then be tested in the courts. Bad patents will still be shot down if they survive the PTO (as they should be). In short, I love the EFF but I'm not sure why they are complaining about this.

bchociej 7y ago

Edit: new guidance is from 2019 so my comment is not relevant, but we haven't had a chance to analyze much published data from this period anyway

slaymaker1907 7y ago
The new guidance came out in 2019.

Simulacra 6y ago

1500 is not a lot of people. If that’s the best EFF can come up with on its mailing list then I think this may be an issue they should rethink. Not that I disagree, I completely agree, but it doesn’t seem like they are going about it the right way.

jagged-chisel 6y ago
1,500 out of how many who interact with the USPTO for some reason (e.g. filing a patent [via attorney], researching patents, etc.)? I can't expect large portions of the general population know enough about the patenting process (or even patents in general) to contact the USPTO over this issue.