3 ms·

"...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. U

"...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 6y ago
Interesting. My sense is that valuable patents end up in court almost 100% of the time (e.g. CRISPR).
- pnw_hazor 6y 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 6y 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 6y 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"?
- pnw_hazor 6y ago
  I mean claiming machine details that have nothing to do with novelty such as "...; and wherein the received xxx is stored in one or more locations in a memory hardware buffer." Clearly, clauses like this do not support novelty but neither are they practically limiting because every computer does this. Sometimes it took more effort/amendments, but this shows the general idea. Though, I guess such amendments could be seen as limiting old-school business method claims, but I don't consider business method patents to be software patents.

unsrsly 6y ago

Interesting. My sense is that valuable patents end up in court almost 100% of the time (e.g. CRISPR).

pnw_hazor 6y 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 6y 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 6y 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"?

pnw_hazor 6y ago
I mean claiming machine details that have nothing to do with novelty such as "...; and wherein the received xxx is stored in one or more locations in a memory hardware buffer." Clearly, clauses like this do not support novelty but neither are they practically limiting because every computer does this. Sometimes it took more effort/amendments, but this shows the general idea. Though, I guess such amendments could be seen as limiting old-school business method claims, but I don't consider business method patents to be software patents.