USPTO & Alice's Adventures In Patent Land - Cesari-Reed
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Alice in wonderland sketch used for USPTO

05 Feb USPTO & Alice’s Adventures In Patent Land

Why is your invention like a writing desk? Give up yet? I haven’t the slightest idea! However, I have been contemplating the mysterious proclamations of abstract ideas under the USPTO’s ever-changing Patent Subject Matter Eligibility.  For those not up to date, the USPTO has published attempts to explain it’s overly-broad application of the Supreme Court’s decision in Alice Corp. v. CLS Bank International573 U.S. __, 134 S. Ct. 2347 (2014).

A client recently asked me, “why should we invest money in filing patents when the Patent Office is now rejecting almost every idea as not subject matter eligible?”  Good question.

I tried to explain to the client that this is part of the USPTO’s war on software patents, yet the Supreme Court specifically chose not to rule software patents ineligible for patent protection (I hate double negatives, but that is what they did.)  See Alice Corp.  Instead, they gave us an illogical test to determine whether something is directed to an abstract idea.  And, as anyone with common sense could have predicted, the USPTO has taken the narrow ruling of the Supreme Court and applied it to almost everything!  (I’m sure the Supremes will disclaim responsibility since they warned “At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law.”  But that was merely a CYA so they could defer blame for the havoc their opinions have wreaked in substantially changing the law.) (Yes, I love parenthetical notes. (Especially nested notes.))

For example, in the July 2015 Update Appendix 1, the USPTO provides a substantial contradiction in Example 23.  They provide 4 sample independent claims, claim 1 has a 5-step computer-implemented method.  The Guidance states “the claim is not directed to a judicial exception (Step 2A: NO). The claim is patent eligible.”  Thus, stating that Claim 1 does not cover an abstract idea; which is a good analysis.  Claims 2 and 3 are both 3-step methods for generating data and doing a calculation without using the result for anything.  They hold this as patent ineligible as being directed to an abstract idea; I can live with this since the result of the calculation doesn’t affect anything.  However, the problem comes when Claim 4 is discussed.  Claim 4 is all of the elements of Claim 1 with Claim 2’s calculation added in, and an additional step that specifically ties the calculation into the Claim 1 decision steps.  Thus, Claim 4 is narrower than Claim 1 and includes all the same elements.  The Guidance, in determining if the claim is directed to a judicial exception, inexplicably states “The claim recites similar steps to those recited in claim 2 … Therefore, the claim is directed to an abstract idea (Step 2 A: Yes).” and NEVER mentions that it also includes all of the elements of Claim 1.  This is the equivalent of saying “your car’s engine uses a processor, and that processor uses calculations to determine MPG, so your car is directed to an abstract idea.”  Could this be more illogical?  (I’m probably asking for the USPTO or Courts to make it so, we may yet see something much worse than Alice.)  Taking this analysis even further, what would the ruling be if Claim 2 was dependent from Claim 1?  Per the USPTO’s analysis, the independent claim is NOT directed to an abstract idea, however the narrower, dependent claim is.  This makes no logical sense.

“If I had a world of my own, everything would be nonsense. Nothing would be what it is, because everything would be what it isn’t. And contrary wise, what is, it wouldn’t be. And what it wouldn’t be, it would. You see?” (finding the proper citation proved fruitless, as most websites misquote this.  Though, information suggests it is from the 1951 Disney film “Alice in Wonderland”; however, I cannot verify due to Disney’s overly protective copyright claims. And, I don’t really care to research further since I have a multitude of ridiculous 101 rejections to respond to.)

The USPTO’s application of Alice and the July 2015 Interim Guidance on Subject Matter Eligibility is overly broad and illogical.

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