Bilski Not So Bad for Software Patents After All

On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued its much anticipated decision in In re Bilski. The question that was presented by this case was whether a purely mental process is patentable subject matter. The Federal Circuit, however, took it upon themselves to call into question whether software patents are patentable subject matter. We had been expecting a far reaching decision that dealt a blow to business method patents, but few would have predicted just how far reaching the decision would be and that it would call into question thousands of software patents granted over the last 10 to 15 years. Ever since this decision was rendered there has been rampant speculation as to what Bilski means and how it will be interpreted. As one who works in this area and one with my own patent application pending in class 705, I was greatly interested both professionally and personally. Thankfully, I can report that it does not seem as if Bilski is turning out to be the impediment to patentability that many feared. In fact, based on what is going on at the USPTO one could make a convincing argument that it is actually getting easier to obtain patents that related to software and computer related processes. This is good news indeed.

I am particularly interested in what happens in this area because I have my own patent application pending, United States Patent Application 20070055560, which relates to a method for assisting individuals create their own patent application while still obtaining professional assistance to make sure that the invention is described properly and errors are minimized. This is a process I invented to be used in conjunction with LegalZoom, and was successfully used for years until the Patent Office decided to change the rules of practice and made the LegalZoom process the unauthorized practice of law because inventors would first come into the process through LegalZoom. All that needed to change was the order of the LegalZoom process, but LegalZoom refused and simply decided to proceed in largely unaltered form and engage in the unauthorized practice of law. The Director of the Office of Enrollment and Discipline, Harry Moatz, decided he could not actually require individuals to be represented by patent attorneys and patent agents, so he feels that he is powerless to enforce Patent Office rules and regulations against anyone who is not a patent attorney or patent agent. Even more bizarre is that LegalZoom continues to engage in unauthorized practice of law with respect to trademarks . Crazy I know, but the USPTO position seems to be that the rules do not apply to LegalZoom.

Shortly after I ended my relationship with LegalZoom a number of competing services appeared, including Patent Express and now Rocket Lawyer. In each case, I was in contact with these companies, provided my patent application and offered to put together a service for them. They all choose to move forward and copy my process. I have notified LegalZoom, Rocket Lawyer and Patent Express that as soon as my patent issues I will be taking appropriate action to shut them down and recover reasonable royalty damages from the time my application published moving forward. While I have not heard back from Rocket Lawyer, who just started this process today, LegalZoom and Patent Express have both confirmed in writing they know about my patent, which is almost unbelievable they would do, particularly since Patent Express is run by a patent attorney. Thankfully, they have expressed full knowledge about my patent application and have told me that they think Bilski will make it impossible to obtain a patent. It is great news to see in my practice representing others just how easy it is to make successful Bilski arguments. I am looking forward to the day I can shut these folks down, but that is another story for another day.

What we are seeing in our practice is that patent examiners are looking at the language of Bilski and requiring only that a computer be included within the claim. We have seen this same Bilski rejection in a number of cases, and if you look at paragraph 7 and 8 of this redacted Office Action you will see that the patent examiners are focusing in on what Bilski ought to have been limited to, which is a purely mental process. The examiner explains that the process as defined could potentially be carried out in the mind of an individual, or with paper and pencil. The examiner then goes on to suggest that we explicitly claim the medium or structure within the claim to tie the claim to a computer or other tangible, identifiable apparatus so as to “recite the technological arts” required by Bilski.

Data Transformation Claim Strategies after Bilski
1 Hour CLE ? June 30, 2009 ? Example Claims Practitioners Can Use

I think what we can safely say is that Bilski is not nearly the impediment to patentability that was feared. It almost seems that Bilski has provided a roadmap to allowance for examiners. So if you adequately describe a computer related process and define the process as a system, as good applications do, you should be good to go and anticipate an allowance. This taken together with the Patent Office new approach to encourage examiners to identify allowable matter early and issue patents should mean that real innovations will not be caught up in the Bilski net.

As for my invention, so many are always tempted to say that it is obvious and cannot be patented. If that is your belief you are entitled to that opinion, but it is not accurate. I have demonstrated my invention to many patent attorneys, patent agents and to retired patent examiners and former Patent Office Officials. To a person they cannot believe those without formal training can be coached into creating a meaningful patent application, but that is exactly what happens. In fact, my invention is unobvious by definition because people of skill in the art (i.e., patent attorneys) never think it will work, but become believers once they see it in action. So I have every confidence that a patent will issue as soon as the Patent Office gets around to taking it up for action. In the meantime, I am working on another application on the invention, and probably a continuation-in-part (CIP).

As it turns out, this system is also extremely useful for collecting information from clients. Clients who are not interested in doing the patent application themselves, because they realize that is a little like taking out your own appendix, can use the system to provide extraordinarily detailed information to their patent attorney or patent agent. There are already a few patent attorneys and patent agents who are using the invention with their own clients, and are having remarkable success. This makes the end product far more detailed, cuts down the amount of time it takes to create the patent application, makes attorneys and agents more efficient and can, if you chose, pass on savings to clients, thereby making it easier to compete on price without sacrificing quality.

Gene Quinn Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people [...see more]

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

21 comments so far.

ironicslipwhereryou
May 26, 2009 02:44 pm
Mr. Quinn:

Interesting assertions; but, there has been a lot of activity in the “DRM” space which arguably relates to your filing in the sense that you are patenting subject matter to protect intangibles. Namely, DRM > copyrighted material. One issue that is raised is reasonable interpretation. Can a claim really be valid if prevention of copying is not possible as most DRM patents claim? Is the claim invalid because it did not actually prevent any copying?

Similarly, a lot of cryptography-related filings look more and more like business methods with little if any novel or nonobvious claim elements. Suggest you look at the following, a personal favorite because of the history of the filing & its relationship to arguments concerning “robots” & “Turing machines” being “inventors” though said robots and Turing machines cannot pass the Turing test! This is also a pet peeve with regards to first to file versus first to “invent”.

Bao Q. Tran Systems and methods for generating intellectual property 20010049707 Filed Dec 6, 2001 (though there is plenty of related art: broadly speaking, crypto is about as protecting value. Kerckhoff’s Principles are well-known primitives.)

if the link below works …

http://appft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=20010049707&OS=20010049707&RS=20010049707
Gene Quinn
May 25, 2009 09:49 am
Ian-

Just pure common sense. If they don’t purchase the patent that is fine, I will sue them. Obviously the further down the road I get the more valuable the right gets, so the decision to not acquire the rights or license the rights or do business in good faith under our previous contractual arrangements will eventually be looked back upon as extremely naive.

I also had talks with Patent Express (Raj Abhyanker) regarding acquiring or licensing my rights. He told me he was not interested and then set out to copy my invention. When I discovered this I contacted him and told him that as soon as the patent issued I would sue him. He said that after the claims issued we could talk about a license, to which I replied that at that point talking will long since have passed. He called that immature. I suppose we will see who was immature or unreasonable in a couple years.

It is, of course, your prerogative to believe I am acting unreasonably. I disagree 100%. LegalZoom is a major corporation with a lot of money. Everyone in the patent field knows that even a weak patent in the hands of an owner with a large amount of funding can be extraordinarily strong. The fear of being sued by a party with resources and funding has an extreme deterrent effect. LegalZoom has never really understood intellectual property rights, as evidenced by the incorrect information they tell clients. On top of that, they have a long history of entering partnership negotiations without first securing confidentiality agreements and non-compete agreements. In one situation they laid their entire model out on the table without any agreements in place and the party they disclosed to simply started competing with them. With respect to me, they never once during our relationship acquired any intellectual property rights or acquired a license, choosing to believe that because they coded the invention they owned the invention. LegalZoom’s Board of Directors also authorized the purchase of IPWatchdog.com back in the Fall of 2007, but the General Counsel never wrote up the terms and I ultimately withdrew my offer to sell. Originally the deal was to purchase IPWatchdog.com for 6 figures, then the GC wanted to purchase all assets, but would never actually talk to me about the deal. One has to wonder who is running LegalZoom, and why investors are not upset with their repeated poor business decisions. I understand from those inside LegalZoom that the Board was quite upset when I pulled my offer to sell. I guess I was supposed to just sit tight. I waited 9 months and was ignored all along the way. LegalZoom has left in its wake a lot of vendors, constantly moving to the lowest bidder, which is no doubt why they make so many mistakes.

What I say with respect to LegalZoom is what I would counsel any client. If there is a dominant patent portfolio that covers what you are doing and which can be acquired on the cheap, which you can then mine for patents for years, the decision is really easy from a business perspective. You acquire the portfolio. Of course, when the Board authorizes the purchase of assets the General Counsel has to follow through.

If you look around, since my patent application published there have been a number of companies that have gotten into this market, and they are siphoning market share from LegalZoom. For me, it just gives me more targets to sue ultimately, which I will do. If LegalZoom owned the portfolio we both know that these other companies likely would not have entered the market. Just because others refuse to operate in an appropriate and wise business manner does not me I am the one who is being unreasonable.

In the meantime, should anyone want to have a club to dangle over LegalZoom or any of the others, I am always willing to listen to offers.
ian
May 25, 2009 05:05 am
Gene,

I’ve been a long time reader and admirer of your website. Your articles are interesting and informative. Yet, I am somewhat disillusioned at your post above. I think you have lost sight of the woods for the trees. It’s a difficult role to play both attorney and inventor successfully. You write this blog as an attorney but I think the inventor must have taken hold of your last post.

Is this attorney speak or that of the lone inventor:

“If I were an investor I would want LegalZoom to acquire the patent rights.”
Gene Quinn
May 22, 2009 11:12 am
Just looking-

This will be the last post of yours that will ever be posted. I know who you are and your personal grudge against me will not get air time on my site. So how is the weather in New Hampshire. Those were the days!

I never thought you were an attorney or knowledgeable about patent law, but went along until it became clear that you were not just taking an alternative view, but rather that you had an agenda. I am sure that you realize that “free speech” rules and laws apply only to the government. You do not have an opportunity to be heard on channels owned privately. The First Amendment says that the government cannot infringe upon free speech. I am not the government, and I do not tolerate profanity or personal attacks. I also do not tolerate posts that incorrectly characterize the law.

It is humorous to hear you talk about “gonads” as you put it. I am putting myself out here every day, with my name and contact information. You, on the other hand, are hiding behind a fictitious name and a fictitious e-mail address. Even though I know your true identity I am not going to violate my own ethics and reveal you. Nevertheless, I have no patience for one who throws personal attacks, uses profanity and makes misstatements about the law when they also seek to hide behind a cloak of complete anonymity. A lot is tolerated in terms of heated debate and differing viewpoints, but those who do not have the courage to use a real e-mail address receive absolutely no latitude.

As for your substantive comments, we will see who laughs last. Everyone can see that there is plenty of allowable material in the specification. I am sure it never crossed your mind that someone would file extremely broad claims so as to keep others guessing what might actually issue, particularly when there is such a long pendency period in this field. Those who are engaged in this market should worry. They can see the support in the spec, and should clearly understand that from this application alone there will be patents issued, not to mention from my other pending applications. Starting and expanding a business when there are patent applications pending that will cover what you are doing is reckless, and I will shut those down who are infringing once patents have been issued. At that point in time they will have so much invested in their business model it will be painful, but that is the choice these folks have made.

Cheers.

-Gene
Just looking
May 22, 2009 09:05 am
It seems that Gene has deleted my last two posts.

He says that he does “not allow comments that provide inappropriate adivce” — presumably as a reason for deleting the first post, but he doesn’t delete any of the others. Looks hypocritical to me. As I asked you in my second (deleted) post, why don’t you delete all of my other posts. They provide the same “inappropriate advice.”

Once you went down the path of deleting posts — just because I had very harsh criticism of your patent (and on very valid legal issues), you’ve lost a lot of crediblity. There is no such thing as “free speech” on a message board, but people still value the concept behind the phrase “free speech.” You put a spotlight on your patent application when you posted it on this board for all the world to see — so you shouldn’t be surprised if that spotlights highlights its warts.

If you had a set of gonads, you return my other two posts. If you did that, I would provide you an e-mail address so you can bitch and moan to me personally.

However, I don’t expect that’ll happen. Instead, I expect this post to also get deleted. However, those that follow this board will know that and know how you were afraid to deal with criticism.
Gene Quinn
May 21, 2009 12:54 pm
Just looking-

It is not interesting at all. Your comments were deleted for several reasons. First, the comment you are complaining was deleted was insulting and used profanity. Vigorous debate is fine, insults are not fine. Profanity is never acceptable either. Second, if you care to provide a real e-mail address and/or a real identity then you can say almost whatever you want, provided it is not insulting or profane. Hiding behind a bogus e-mail address and name, while at the same time obviously proving that you do not understand patent law is not going to allow you to post on my site. While differing points of view are allowed, I do not allow comments that provide inappropriate advice, are wrong or simply ignore facts and reality.

E-mail address are not published, so there is no fear in providing a real e-mail address, unless you are trying to hide something. If that is your M.O., then I am not interested in providing you the opportunity to comment on my site. I never reveal e-mail addresses, and I never reveal names or sources. The only time I require a real e-mail or a real name is when it is clear someone has an agenda and/or is offering bad advice and/or saying things that clearly demonstrate a failure to understand the law.

-Gene
Just looking
May 21, 2009 12:09 pm
Interesting, it seems like my last comments have been deleted.

The truth hurts …..
Gene Quinn
May 20, 2009 04:43 pm
Just looking-

Can you explain why you think that you are the only one who read Bilski?

My application clearly talks about a semi-automated process that can be carried out over a computer network, using e-mail and electronic transmission of information and the utilization of word processing programs, such as Word, the insertion of comments and suggestions into a document using footnote, end notes and comments. One illustration shows a word document. If you want to mislead that is your choice, but lets try and be honest here for one minute. You can say whatever you want about my application and my claims, but it doesn’t change the reality that you are ignoring what is clearly disclosed.

Why do you think your opinion is so valid when you have admitted in this chain that you are having difficulty getting these types of patents issued to your clients, and that adopting recommendations of examiners to get patents issued is not wise?
Gene Quinn
May 20, 2009 04:35 pm
Just looking-

It amazes me how you could be unfamiliar with the concept of writing new claims based on what is in the specification.

It also amazes me that you, or any attorney, would be at all worried about Festo or the doctrine of equivalents. The doctrine is completely dead and shouldn’t even be considered or worried about. Thanks to the brilliance of the Supreme Court to be entitled to an equivalent you have to provably demonstrate that it was unforeseeable that a claim could be written to cover the equivalent, which means you have to demonstrate that you were not in possession of the equivalent at the time of filing, which means your specification could not possibly support the equivalent. So to be entitled to the equivalent you must demonstrate you didn’t invent and your application does not cover. The doctrine of equivalents is dead.

Taking what is offered is always the best way to proceed, and then file a continuation. Just because you take what is offered doesn’t mean you are giving up ground, it means you want a patent and why look a gift horse in the mouth. If you don’t take what is offered to get your clients rights that make their entire portfolio more valuable then you are not very business savvy, and doing them a real disservice.

As for inviting a final action, you should know that you have to have a first action in order to invite a final action, and presumably you are also aware that preliminary amendments can be filed at any time prior to a first action. You do know that, right?

You can rip up the claims if you want, that is fine. That is your prerogative, but that would be a jerk move, not to mention a stupid move. So let me get this straight, back in 2005 and 2006 you would have written claims with an eye toward Bilski which issued as a decision in October 2008? You must be psychic!
Just looking
May 20, 2009 04:00 pm
“I don’t have time for a long analysis, but I think your method claims are going to get Bilskied and the application doesn’t have adequate support to amend the claims such that they are tied to a specific machine. (The application does not even disclose a generic computer system, much less a specific machine).”

Since I’m being a PITA, I’ll move on to somebody else ….

Why doesn’t anybody ever read the case law. The relevant passage in Bilski (which I reproduced above) states that the requirement is for a “particular machine or apparatus.” In my book, a computer (of any flavor), is a specific machine or apparatus. It isn’t windshield wiper. It isn’t a lamp. It isn’t a stapler. Additionally, many types of computers are incapable of being used to perform the steps described by Gene. The computer in your automobile is unlikely unable to perform those steps. The computer in Apple’s Nano is likely not capable of performing those steps. My guess is that there are far more computers incapable of performing those steps than are. When people say “computer,” the masses think about the PC (or Mac if you swing that way). However, that is just a tiny subset of the many types of computers that exist, many of which are incapable of performing those steps.

I’ve seen the BPAI get worked up over the distinction between a “general purpose computer” and a special purpose computer. However, these distinctions are legal fictions made up by the BPAI. Every computer has a special purpose.

Also, even if the compter performing the method could be considered a “general purpose computer,” it would have to be programmed to perform the method. The majority in In re Alappat stated the following:

We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Freeman, 573 F.2d 1237, 1247 n.11, 197 USPQ 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ at 549 n.29.

This is why many claims pass muster by just reciting “computer-implemented.”
Just looking
May 20, 2009 03:33 pm
For one … I have no association with anybody you might sue. Second, to say that anybody you could sue on those claims is worried is laughable. Those clams are DOA. I would be willing to bet you a month’s worth of steak dinners at Mortons I am so sure about that.

You may have patentable matter in your specification, but if it is only in your specification, it isn’t helping you. Examiners examine claims, not specifications. If you want a decent examination, you should put what you want allowed in the claims. All you are doing now is inviting a final office action after you are forced to amend your unbelievably broad claims.

Argue all you want about what is in the specification, but neither the BPAI nor the examiner will care unless you put it in the claims.

I’ve seen lot of prosecution histories in which the practitioner goes on and on about all these great things in the specification and how their invention is so much more different than the prior art. I then look at the claims and see that most of what was argued by the pratitioner is not in the claims. The examiner then (properly) ignores those arguments. If it isn’t in the claims, it isn’t going to help you. I cannot believe the number of patent attorneys I have seen that argue the specification and not the claims.

My criticism has not been with what you’ve disclosed, it has been with what you’ve claimed. If one of my attorneys came to me with those claims, I wouldn’t have even bothered to edit them. I would rip them up in front of the attorney (to make a point) and tell them to try again from scratch.

“When an examiner suggests allowable material the prudent thing to do is take what you can get, get a patent issued and then continue the good fight.”
Not if what the examiner has offered is overly limiting and/or Festos you. Continuations take a while to get back into the examination queue. Do you want to go after potential infringers with something that has potential problems or wait a little bit and go after them with something tighter? There is no cut and dry answer for this, but your error has been to presume that “taking what is offered” is always the best course of action.
Gene Quinn
May 20, 2009 02:01 pm
New here-

Thanks for joining the debate and reading IPWatchdog.com. You identify the real problem with business method patents. This is exactly why the Patent Office instituted what was called “second pair of eyes review.” After issuing some patents on things that had existed for many years, in some cases hundreds of years, the Patent Office wanted to make sure that only those methods that were innovations were patented.

The real question the Federal Circuit should have addressed, if they wanted to go further than the Bilski pure method fact pattern, was whether an old method carried out with new technologies that are known can be patented. I think most would say the answer is that such methods should not be patented. Unfortunately, by skirting that issue what might happen is making it easier to patent old methods carried out with new technologies. Time will tell.

-Gene
New here
May 20, 2009 01:51 pm
I’m not an Attorney so I will stay with my own view on patents. I’am though an independent business and method patents are a threat to me if they supersede in my area of business. The patent system is important however when method patents may force me into court when having done business for years within the method(s) covered by given patent(s). It is clear in my opinion that patents do supersede without notice of those independent business owners that pay the cost to do business as they were.

Thank you.
Gene Quinn
May 20, 2009 01:13 pm
Just looking-

To claim you have a superior understanding of law is odd, and it seems you are intentionally misreading my comments to suit your own purpose. I did not at all say I would cave. I said I would take what the examiner was giving, file a continuation and continue to argue that I am right. Exactly how is that caving? If you do not do this for your clients then you are not advising them properly and not assisting them achieve their objectives. When an examiner suggests allowable material the prudent thing to do is take what you can get, get a patent issued and then continue the good fight. No caving or admissions if you know what you are doing and do it properly. This is what major corporations do, so exactly how and why is this wrong? This is a well known and accepted patent strategy. Acting like it is inappropriate shows your lack of experience.

Your position suggests that you are not that familiar with patent law, or how to adequately represent clients. I hear all the time that clients cannot get patents, and I think in a large part that is because attorneys make all or nothing arguments like you are suggesting, which simply does not serve clients at all. You see, the goal is to get a patent issued. From a business standpoint having an issued patent makes the entire patent portfolio more valuable. The trouble is many patent attorneys simply do not understand basic business and are not interested in helping clients build a portfolio.

Why you keep bringing up the BPAI is curious, and informative. I never mentioned going to the Board. I said take what I get, file a continuation and keep going.

Luckily you are not an examiner, for me and everyone else. Thanks for focusing on the claims so much, but patent law 101 says that what is in the specification can be claimed. So you can argue that claim 1 might not be patentable, but that is the case many times with issued patent applications. You know that, I know that, everyone knows that. There is plenty of support in the specification for allowable claims, and the specification talks repeatedly about a patent application, provides a patent template, the questions from a hypothetical questionnaire and shows how professional assistance is given. The specification also talks about how one can be trained to provide meaningful assistance and guidance without sophisticated training, so what you say is bad about claim 1 is in fact one of the reasons (among many other reasons) why the system is unique and patentable.

Why you choose to ignore that is curious. Are you from LegalZoom or Patent Express and really worried about my patent applications?
Gene Quinn
May 20, 2009 01:00 pm
Old Timer-

I am always game for a friendly wager, particularly when a steak dinner is on the line, so even if I didn’t think I would win I would take the bet. Having a meal with someone who really enjoys this stuff is always a fun evening.

You are right when you say that getting the patent is only half the battle. I am not sure we have enough data to say that the courts are wielding Bilski like a sword yet, but that may be the case. I think some courts do wield KSR like a sword, but that is largely inconsistent at this point, but problematic no doubt. With this particular area being so backed up, and the likelihood that the law will change several times, I would focus on getting a patent issued and see what happens in the future.

I don’t think KSR is a problem because that only deals with obviousness, not secondary considerations, and I have great evidence. I have been told many times it won’t work, yet it does at an astonishing level.

Lets assume that this application (which is only one that I have on file, and the one that has published) doesn’t have enough for the first Bilski prong. I think it does, but the invention does have significant transformation. If you could see the garbage that is provided by some inventors and how it is massaged and turned into a patent application through an iterative smoothing process I think meeting the transformation prong could be easy. Of course, this presupposes a certain definition for “transformation” and we will have to wait and see what the courts ultimately say it means. My follow on applications will certainly satisfy Bilski though.

Why I say LegalZoom is being foolish is because my conception date relates back quite a bit, and I have some good dates. Even from this application I am confident some patent will issue. We will disagree about how broad it will be, which is fine. Nevertheless, with the funds of LegalZoom behind what will ultimately be a patent portfolio, even if the patents are weak (which I am not admitting) they would be formidable in the hands of a party with vast resources. If LegalZoom were sophisticated they would see that, and since they cannot understand basic patent strategy one would have to question why you would want them to assist with the preparation and filing of a patent application.

-Gene
OldTimer
May 20, 2009 12:44 pm
I wish I could agree with your analyisis of Bilsky, but I can’t. We are having the same experience with Examiners and are getting lots of Bilsky rejections overturned simply by adding “computer implemented” or similar language to the claims. But if the last few years have made anything clear it is that getting claims issued is no longer the cat’s meow. I watch the courts and the BPAI for more meaningful data, and they are both wielding KSR and Bilsky like a sword.

As to your patent application, I’ll lay you friendly wager of a steak dinner at the restaurant of the loser’s choice that the application will not issue with claims that even remotely resemble the current claims. I don’t have time for a long analysis, but I think your method claims are going to get Bilskied and the application doesn’t have adequate support to amend the claims such that they are tied to a specific machine. (The application does not even disclose a generic computer system, much less a specific machine). That leaves you with the transformation prong of the Bilsky test, and based upon a cursory review I just don’t see a transformation in your claims.
Just looking
May 20, 2009 11:38 am
“If an examiner requires limitation of the claims to cover aspects of the specification that is fine. I will be happy to do that to get a patent issued, then file a continuation to continue arguing for more.”

Then thanks for caving to the examiner on a bad rejection and reinforcing an incorrect understanding of the law. When I (or another attorney who understands 101 jurisprudence) wants to argue this examiner’s bad 101 rejection, we are going to be stuck with an examiner who thinks he is right because you (among others) caved. The reason why examiners are addicted to the “RCE gravy train” is because practitioners give in too easily — which makes it that much more harder for those of us who want to get the broadest claims without amendment. If all practitioners held examiner’s feet to the fire on bad rejections, all of our clients would benefit. However, once some practitioners cave, it makes it harder on all of us.

“the terms that you seem to have problems with are defined by the context of the specification”
Good luck with that. Examiners will interpret claims as broadly as possible without regard to “the context of the specification.” They shouldn’t but good luck if you want the BPAI to uphold your proposed claim construction. Going to the BPAI on a claim construction issue is asking for the examiner’s rejection to be affirmed.

The term “trained professional” is useless. How much “training” does one need to be a trained professional? A JD? An engineering degree? A single class? A single instruction consisting of a 10 minute oral conversation with another trained professional? If you have somebody that writes documents (based upon questionnaires), if I was an examiner, I would argue that such a person was a “trained professional.” They could be self-trained, but I don’t your specification excludes that interpretation.

“So you can believe no patent will issue, but we both know that is not accurate.”
I never said that, but I am very confident that no claims should issue on the originally-presented claims.

“There is a big difference between asking for information and explaining how one can and should provide the information.”
Where is all of this reflected in the claims? Claim 1 requires (i) a questionnaire be provided; (ii) receiving answers; (iii) creating a first draft with the answer, (iv) reviewing the first draft and inserting comments; (v) returning the first draft (w/ comments) to the individual.

None of your claims mention anything about the documents being legal documents or that the documents have anything to do with patents or patent applications. Frankly, the dependent claims are useless. If the Examiner finds claim 1 anticipated or obviousness, there is nothing in any of the dependent claims that the Examiner wouldn’t find obvious. Well, maybe claims 8 and 9 might help a little, but they depend upon claims 1-7. As we all know, there are many different reasons for dependent claims, but I think any well-written application should include dependent claims that narrow the claimed invention to an embodiment that the inventor would be willing to live with if the dependent claim was allowed.
Gene Quinn
May 20, 2009 10:43 am
Just looking-

You really are missing a lot if you don’t read the specification though, because there is discussion about how versions are indeed tied to a computer and how the process is carried out through the use of computer systems. There is also detailed discussion about how the process works and why it works despite disbelief in the industry by so many attorneys and agents. The process is well defined. It is conceivable that claim 1 will need to be amended to specifically overcome Bilski, but the terms that you seem to have problems with are defined by the context of the specification, so there is support there. If an examiner requires limitation of the claims to cover aspects of the specification that is fine. I will be happy to do that to get a patent issued, then file a continuation to continue arguing for more.

Your comments also ignore the fact that the specification is primarily, although not exclusively, related to coaching unsophisticated individuals to provide legally relevant and adequate responses based on the professional review. There is a big difference between asking for information and explaining how one can and should provide the information.

Anyone who objectively reads the specification will certainly know that there is allowable subject matter here, and it will cover the processes used by LegalZoom, Rocket Lawyer, Patent Express and others. So you can believe no patent will issue, but we both know that is not accurate. We both know there will be patents issued, and it is reckless and naive for a major company like LegalZoom to refuse to acknowledge that and roll the dice. If I were an investor I would want LegalZoom to acquire the patent rights.

-Gene
Gene Quinn
May 20, 2009 10:19 am
Breadcrumbs-

I understand your disbelief, trust me. Unfortunately, I could only ever access the last 20 comments on the PLI site unless I went to each page. The pages have been removed, and the comments are not accessible. There was never a real transfer, just starting over.

-Gene
Just looking
May 20, 2009 09:35 am
I didn’t get past claim 1 before I started to shake my head. You use the phrase “draft,” and I think I know what a “draft” is. However, I was unable to find any definition of that phrase within your specification.

It maybe isn’t the first rule of patent drafting, but it is a rule that I’ve seen violated many times – “unless you want to the patent office to give your claim term the worse possible interpretation, make sure you define important terms that are found within your specification.”

Let me give you an example of why having an example of having a clear-cut definition would have been helpful for you when it comes to the 101 matters. As the Federal Circuit described in Bilski, “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”

If your “first draft” was a written document on a piece of paper or other writing material, then you can claim that the process is patent-eligible since it transforms a particular article. A piece of paper is an article, and the act of providing comments on the piece of paper transforms the particular article into a different state.

However, if you wrote that the document was an electronic document, you can easily argue that the method is tied to a particular machine (i.e., a computer) since the step “using the answers to completed questionnaire to create a first draft” would clearly require the use of a computer, which is a “particular machine.”

As to the claims themselves — come on. HR asks a lawyer to fill in a sheet that includes relevant information (practice area, schools, etc.). Somebody drafts a biography to be put on the firm website and inserts a comment (e.g,. “Did you really graduate last in your class?”) and sends it back to the attorney. Bam – claim 1 is dead.

Find an immigration lawyer that allows his clients to submit their own paper work. She provides a client with a questionnaire (name, date of birth, address, etc.). The client fills in the questionnaire and an application is prepared. However, there is something missing so the immigration lawyer inserts a note within the document (e.g., “please sign here” or “I need more information about your potential employer”).

Come on Gene. I really like your blog and your work, but claims like this is what give “business methods patents” such a bad name. BTW: I wouldn’t rely too much on the phrases “do-it-yourself individual” or “trained professional” as those phrases are as about as “squishy” (i.e., easily malleable by the examiner) as I’ve seen in a long time.
breadcrumbs
May 20, 2009 07:55 am
Gene,

It is unfortunate that the historical posts on this subject have been lost in the transition from PLI. This topic in particular was covered in some detail (literally hundreds of posts), and as I recall, the position you are now taking is quite similar to the position I posted (and that you and John White heatedly disagreed with).

Not that my view was the only view of value – the debate was indeed lively and well argued from various vantage points. It is hard to believe that that information cannot be culled from a server or backup tape somewhere.