Director Iancu worries current state of Section 101 ‘weakens the robustness of our IP system’

By Gene Quinn
May 15, 2018

“I do worry that the current state of Section 101 in patentable subject matter weakens the robustness of our IP system in the affected area,” Iancu said.

On April 27, 2018, I had the opportunity to speak on the record with new USPTO Director Andrei Iancu. In part one of our interview we discussed the Patent Trial and Appeal Board, inter partes review, the difficulty I and others have getting what should be public documents from the Office when making Freedom of Information Act requests, and much more. During this second and final installment we begin with me trying to get Director Iancu to make a comment on the just decided Oil States v. Greene’s Energy, and whether he personally believes patents are a property right. We then pivot to discuss patent eligibility, the Berkheimer guidance, and we spend a few minutes with some personal questions to get to know him a bit. At the end of the interview we shared a moment discussing our fathers.

While others will no doubt have their opinions, I believe Director Iancu will do everything he can to work to establish a better, more certain, stable and fair patent system. I am also cautiously optimistic that he will have success. Of course, how much success he has will be determined by how much cooperation he receives from Congress. But if the Berheimer guidance and the proposed rules relating to converting PTAB claim construction to the Phillips standard are any evidence, he is off to an excellent start.

Without further ado, here is the finale of my interview with Director Iancu.


 

QUINN: Okay.  So, moving along.  Before I forget and not to just constantly throw tough questions at you, but do you personally think a patent is a property right?

IANCU: So, look.  The Supreme Court has issued this decision now.  And I won’t comment.  At least for now beyond what the Supreme Court has said.

QUINN: Okay.  Well, you can’t blame for trying.  So, moving on to 101, I heard you testify at the Senate hearing and I must say I was surprised.  It seemed to me at the end of that hearing when you were talking about 101 you were inviting a legislative discussion that would open up the statute.  Did I hear that correctly?

IANCU: What I said is that in a variety of my speeches what I’ve said is that something must be done with respect to 101 in general.  And there are certain things we can try to do from here from the PTO such as through guidance.  And we began doing that with a memo I think last week or two weeks ago something like that.  And we’re looking to do more.  We’re obviously constrained by court decisions and obviously by Supreme Court decisions.  And we must and we will comply with Supreme Court precedent.  And what I said is that if Congress decides that it wants to engage in a legislative proceeding we would be happy to work with them and provide all the assistance necessary for them.

QUINN: Okay.  Let me try one more time because I don’t think you answered the question exactly.  And let me try and be more direct.  I don’t think previous Directors went looking for or inviting that level of scrutiny from the Committee.  Did you say that purposely to get them thinking that maybe they should be opening up the statute?

IANCU: Well, at this point I’m focused on the PTO and what the PTO can do.  And what the PTO can and cannot do given the various judicial decisions.  And we’ll try to do whatever we can from here.  And what the legislation does, what Congress does that ultimately is up to them.  But again, and I don’t want to speak for prior administrations, but for us if they do go ahead and they decide to look into the statute then we will be very happy to work with them on that.  And let me just say obviously, and I’ve said this at the hearing I believe, the statute hasn’t changed at all since 1952.  Obviously technology has made great progress since 1952.  In fact, if you look carefully at the statutes it substantively hasn’t changed since 1793.  The categories of what’s patentable according to the words of the statute are almost identical now in 2018 as they were in 1793.  With on the phrase that matters the only thing that’s different is that now we have the word “process” which was introduced in 1952 and prior to that it was the word “art.”  And there is some legislative history that suggests that that’s just a modern term for the word “art.”  And it is hard to imagine that folks who wrote this statute in 1793 and even folks that wrote or amended the statute in 1952 had in mind or were even able to predict all the new technologies that we’re grappling with today.  Algorithms, software algorithms is an example.  The world of software and computer algorithms back in 1952 was in its infancy.  And certainly wasn’t around or anticipated in 1793.  So it’s not a surprise that courts are struggling right now to figure out whether some of these are in or out.  A diagnostic tests, DNA analysis not around in 1952 certainly not in 1793.  So those are just some examples.

QUINN: Does it worry you that so much startup investment in artificial intelligence is moving to China?

IANCU: Well, that’s a very important question.  So I don’t know for sure if that is the fact.  There is a lot of anecdotal evidence to this effect and there is a bunch of stories that are surrounding this issue.  And I think more studies need to be done and in particular even if it were the case there is the second question is just what’s causing it, right?   But for our purposes what I know for a fact is that in order to incentivize American innovation whether it’s artificial intelligence, DNA processing, or anything else we need to have a robust predictable reliable intellectual property system here at home.  And I do worry that the current state of Section 101 in patentable subject matter weakens the robustness of our IP system in the affected areas.  And if industry cannot predict in a relatively reliable way whether their investments will be protected from an intellectual property point of view I think that will result in less investment, less growth, fewer jobs created in the affected industries.  So I do think it is critically important for our economy.  And again whatever industry we’re talking about and whatever industry we want to grow it’s critically important to have a strong reliable and predictable intellectual property system.

QUINN: Yes.  You know, I was at the Newsuem for the LeadershIP 2018 event and David Kappos asked a question of Congressman Stivers. David explained that he has been in communication with the Cleveland Clinic and said that they have completely given up on medical diagnostics because investors simply will not fund them, so they’re moving on.  When you hear that what’s your first thought about that?

IANCU: Well, my first thought is that if accurate I am very concerned about it.  And my second thought is what’s causing it.  And then if it is the IP system then we need to fix it.  Now, the fact of the matter is that I do believe it is more difficult now than I think it should be to know whether medical diagnostics, artificial intelligence and other such areas are patentable or not.  And without knowing that, without knowing for sure where the lines are, what’s in and what’s out I absolutely do think that it is more difficult to raise funds for a startup and to grow a particular company and therefore an industry.  And that is one of the main reasons I’m very focused on this issue.

QUINN: What do you think you can do here at the Patent Office specifically?  Because as you mentioned, you’re to some extent constrained by the decisions, which others have observed — I think Judge Linn when I interviewed him said that he even has trouble reconciling all of the Supreme Court’s 101 decisions.  How can you as a Director help the examiners get on the same page?

IANCU: So, there are several things we can do through guidance.  We have to work with the current test that the Supreme Court has given us.  Now that test – and the courts are trying to apply that test on a case-by-case basis.  And then what happens is and what’s happened in the past federal circuit comes out to the variety of case decisions, we summarize those cases and we provide further guidance to the examiners in reaction to those cases.  And that’s all well and good and it’s important to keep doing that.  but what I think we can do in addition to that is forward looking guidance what we think the law is or should be within the balance of the Alice-Mayo test.  So just to use the example from last week, okay?  On the second step of the Alice-Mayo test where one has to look at whether something is conventional or not the additional elements whether they’re conventional or not.  Well, what does that mean?  What does the word “conventional” mean?  And how does it differ from just having prior art in the record?  And are our examiners supposed to do now a conventionality search of some sort or analysis of some sort?  And more importantly how are they to document it?  So those are things that we just looked at this one narrow issue of conventionality and we provided this guidance.  The guidance there’s two things.  First it tells our examiners how to document their conclusions.  Okay.  You’ve got to put it in writing.  You’ve got to support it with evidence.  And unless you’re absolutely sure then that it’s so common that you can just take traditional notice but then if challenged then you still have to support it with evidence.  So that’s on the documentation front and I think that can help with the records and it can help our applicants.  But then there’s also the question of what does it mean?  How is an examiner to know what conventional means?  And we said look it’s the same analysis as you would do for Section 112 which you’re used to.  Our examiners know how to do Section 112 analysis we’ve been doing at the office Section 112 analysis for years on years.  So now our examiners have something to ground themselves in.  they have the experience and the knowledge of how to approach this one issue.  So that was that guidance.  There are other areas where we can try to do similar things and provide similar types of guidance to help not just the examiners but also the applicants who come before us.

QUINN: Okay.  Well, we’re running a little short on time here now.  I sometimes ask a series of rapid fire questions that are of a “get to know you” nature.  Are you game?

IANCU: Sure.

QUINN: In your free time, if you have any, what are your hobbies?

IANCU: First of all I haven’t had any free time since I’ve moved to D.C.  But just generally speaking I love to read about invention and innovation especially in the United States.  The story of the Wright Brothers for example.  The biography of Edison you’ll see it on my shelf back there I just finished that.  And things along that nature.  I love to read American history.  I read whatever biography of American presidents especially the Founding Fathers.  And I do a lot of that.  I’ve read Washington, Madison recently by Lynn Cheney.  I’ve read the just recently the Hamilton book.  So anyway so that’s one thing.  I love to ski.  So whenever I can I try to get to the mountains to ski.  This year was a little bit truncated because I moved to D.C. in the middle of February so I missed out on probably the best part of the season.  So hopefully I’ll get to do more of that next year.

QUINN: You mentioned the Founding Fathers.  If you could meet one and only one who would it be and why?

IANCU: [Laughs]  Oh, boy.  I think all of them in combination.  The unbelievable luck or of history that they were all combined at the same time it’s I think that provided significant impetus for what we have here.  Boy, just one.  I guess I would go with Hamilton for now.  To some extent he has a bit of a similar history to mine.  He was an immigrant to this country, he came here with nothing and he worked really hard and he got to where he got by simply unbelievable perseverance and his own wits.  It is such an amazing symbol of what this country provides and I can attest to it firsthand that the opportunities provided in this country to folks who are willing and want to work hard are unparalleled anywhere in the world and anywhere in the history of mankind.  So I related to him a little bit more perhaps than the others.  But I have to say it’s a tough question because each one of them have, I mean Jefferson obviously I mean I don’t have to go through them all but Washington nothing would have happened without him.  So.

QUINN: Okay.  So now to the more mundane.  Do you have a favorite movie?

IANCU: Dead Poet Society.

QUINN: How about coolest invention of all time?

IANCU: Oh, again so tough to choose.  But given my background I will go with the wing warping by the Wright Brothers.

QUINN: How about the best fictional inventor of all time.  And I can give you a couple so popular choice might be Tony Stark from Ironman, Q from James Bond, Emmet Brown from Back to the Future those are a couple popular choices that you can pick from one of those or go off the board.

IANCU: I’ll go with Q from James Bond because they were somewhat real and practical.  Back to the Future is also very cool but I haven’t really actually seen that in practice and I’m not sure we’re going to see it in our lifetime so it’s a little bit too fictional.

QUINN: I could go with any of them.  I always say if you can invent your way to becoming one of the Avengers then that’s something special.  Oh, I just had it – I lost it.  Maybe –

IANCU: Well, while you are thinking but keep thinking over the next question.  But there are so many cool real inventions of all time I should say that one of the coolest in my opinion is Edison’s speaking machine, or phonograph.  It revolutionized the world at the time.  we’re still living that revolution.  It democratized sound in so many different ways.  And the story of how he  came up with it is phenomenal.  But I’ll save that story for a speech later on.

QUINN: Okay.  Star Trek or Star Wars?

IANCU: Oh, for me Star Trek.

QUINN: Oh, I knew I liked you.  [Laughter]  And why?

IANCU: Oh, just –

QUINN: There is a right answer here by the way.  [Laughter]

IANCU: Well, for me a whole host of things but the different characters and the different worlds that they keep on visiting it makes it tremendously interesting and the diversity of individuals and societies that combination is unique.

QUINN: See, and I like both.  But Star Wars always seems to me to be more about science fantasy and Star Trek is science fiction, you know, there was always another gadget, there was always another invention and so for me that was I thought always the real cool thing.  Did you have anybody along the way a teacher, somebody in your family that inspired you to become an engineer or that pushed you forward that you look back and you say you know without that person I probably wouldn’t be sitting here today?

IANCU: Well, that’s an easy question so that’s my dad.  My dad who passed away about two and a half years ago was and is my hero.  He was an engineer himself but he was much more than that.  He was a mentor to me in all aspects of life not just my professional life.  And is one of my if I have any regrets or sad parts of this experience it’s I’m having now is that he’s not here to experience it with me.  And I should say, Gene, and I mentioned this to you beforehand that when your dad passed away you had an amazing column and it was I read it contemporaneously when you put it out and it was very inspirational for me and I reviewed it actually again last night because I knew you were coming here today.  That was so moving, that tribute was so moving to me it said a lot about you actually and it also tells me what an important role you have in just in life and in your professional career now you have a podium and you’re using it and people read it and you have an impact on a variety of things.  But your story and your tribute to your father had an impact on me.  And then I didn’t even know you back then so that’s so to speak the power that you have and good for you for using it.

QUINN: Well, thanks.  I appreciate that and as we talked briefly about our fathers it’s, you know, it’s hard you know and one of the things that is coming up for me that I always shared with my father is, you know, he was the only person I knew that was really into horseracing.  I grew up literally a block away from a horseracing track,  so we shared that interest.  And so, the Kentucky Derby is next Saturday and wherever we were that was always a time and we’d watch it together on TV wherever we were and we’d talk about it.  And so, I don’t want to be alone for the first Kentucky Derby we’re apart, so I’m having a small party with some friends and – but fathers, you know.

IANCU: That’s great.  You can’t replace a parent.  But the qualities in them and the messages that they delivered still live on and we have the memories and that’s important.

QUINN: Well, thank you. I really appreciate you taking all this time and –

IANCU: I’d be remiss before we go off the record for not mentioning patent 10 million.

QUINN: Oh, yes, that’s right.  Have you picked –

IANCU: That is coming up.

QUINN: Do you know which patent it’s going to be yet?

IANCU: No. But it’s an important milestone that we’re looking forward to celebrating this summer.

QUINN: Well, very good.  Very good I look forward to seeing it and if I can give a plug, it would be great if it was an independent inventor.  [Laughter]  But thank you, Director.

IANCU: Thank you.

[End of recording]

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 32 Comments comments.

  1. Night Writer May 15, 2018 11:41 am

    http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2081.Opinion.5-14-2018.1.PDF

    “The claims here are ineligible because their
    innovation is an innovation in ineligible subject matter.
    Their subject is nothing but a series of mathematical
    calculations based on selected information and the
    presentation of the results of those calculations (in the
    plot of a probability distribution function). No matter
    how much of an advance in the finance field the claims
    recite, the advance lies entirely in the realm of abstract
    ideas, with no plausibly alleged innovation in the nonabstract
    application realm. An advance of that nature is
    ineligible for patenting.”

    Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.
    TARANTO, Circuit Judge.

  2. Night Writer May 15, 2018 11:43 am

    It is not possible to have functioning patent system with judges like this.

    Not too that Taranto is saying that “abstract ideas” are “ineligible subject matter.” But, that is not really right. The abstract idea exception is supposed to apply to any subject matter where the claims are abstract. There is not a separate “subject matter” that is abstract ideas.

    The other thing is that Taranto is basically holding that heuristic methods that are capable of doing the work of people are not eligible for patentability.

    This is legislation and this is why the Google Judge Taranto needs to resign, be impeached, or the CAFC needs to be disbanded.

  3. Moocow May 15, 2018 2:55 pm

    An interview with the USPTO Director featuring the Wright brothers as heroes of American invention, nice. Not so long ago the Wright patents were held up, in major national publications, as early examples of patent trolling that immeasurably harmed American innovation.
    http://time.com/4143574/wright-brothers-patent-trolling/
    Just saying. I hope the public patent narrative will change for the better.

  4. Jason M May 15, 2018 4:21 pm

    Mr. Iancu is only a pawn, BIG business runs Government and SCOTUS. Patents as it stands now in the United States is worthless, nothing more then “Government Franchises” that can be over tuned by the PTAB. No chance The STRONGER Patent Bill will see the light of day. The Oligarchy puppeteer the out comes in favor of the big business and the Hedge Funds to fleece small patent inventors. The system is a laughing stock, anyone with an idea needs to stay well away from patenting it in America. The system is completely corrupted and its seems to little to late, much to late to do anything about it. Apple Google, Amazon win!!

  5. Night Writer May 15, 2018 4:31 pm

    @4 Jason M

    The key is that the big corporations decided to burn the patent system down because they are afraid of it.

  6. Night Writer May 15, 2018 4:32 pm

    A history lesson is that Jimmy Carter is the one that pushed for the CAFC (Reagan signed the Bill) to make patents stronger and the reason was that the big corporations had become stagnant.

    The patent system was strengthened to end the great malaise and it worked.

  7. Anon May 15, 2018 4:37 pm

    …and perhaps until the next great malaise shows itself….

    (and under the Big Corp “feudal” system, it will)

  8. Jason M May 15, 2018 5:07 pm

    @Night Writer

    Apple makes $20Billion a quarter they are not scared of the system, they own the system. Patents do not work for the average person. Patents only work for the elites the bourgeois the upper Echelon that have the money to fight. As we have seen not even SCOTUS cares about patents, as they them selves own shares in Google, Apple Amazon, FB and do not want to see their investments drained by small patent holders asking for their cut of their own invention the big players have stolen…. Its the modern day Mafia and everyone is in on it, except the small patent holder. Its time to look at Europe and China, America has sold its soul to the devil.

  9. Paul Cole May 15, 2018 5:19 pm

    May I place on record how encouraging it is to see such a positive attitude from Mr Iancu and how much our clients and our profession stand to benefit from his influence.

    As a positive suggestion, the USPTO has a fine team of legal advisors well-placed to work out what the Supreme Court case law since Mayo REALLY means. I have said many times that if you analyse the decisions properly, they are narrower than currently thought. The USPTO is well placed ponder the question and come up with a new analysis. Hiring some time on Deep Thought (thanks to Douglas Adams) might help.

    And also some thought about the positive aspects of section 101 – machine, manufacture, composition of matter and process. We may not need new statutory definitions from Congress, but we should be thinking about how inventions like InvestPics might fit into one of these categories and what is the relevant jurisprudence that can help decide whether or not it does. Norman Peale wrote an inspirational book on the power of positive thinking, and some of that and some attention to the positive attributes of section 101 could help advance our understanding and our drafting skills.

    As a final suggestion for an invention history, I would cite the development of penicillin as an outstanding example both of inventive effort and of of Anglo-American cooperation under circumstances of great urgency and difficulty. The drugs devised and patented by Big Pharma may sometimes seem expensive, but they may also just save your life. In these days of increasing antibiotic resistance we need some new compounds and the positive influence of reliable and respected patents could help.

  10. Curious May 15, 2018 6:33 pm

    Well, at this point I’m focused on the PTO and what the PTO can do. And what the PTO can and cannot do given the various judicial decisions. And we’ll try to do whatever we can from here. And what the legislation does, what Congress does that ultimately is up to them.
    I think Director Iancu needs to recognize that his #1 job is to be the chief cheerleader/advocate of the United States patent system. Congress is looking to the USPTO for guidance as to what is working and what needs to be fixed. If Iancu is sitting on his hands and saying “Congress, you are going to do what you are going do,” then we aren’t going to get any change out of Congress. Iancu is the only person with enough stature to lead the charge for change.

    If we leave it up to industry, we’ll get the likes of Google and Facebook saying “we don’t need no stink’n patents … let the system burn for all we care.” It is sad to say but individual inventors have VERY LITTLE sway in Congress. The little guy has neither clout nor the dollars to line the reelection campaigns of his/her representative in Congress. Only Iancu has the clout to persuade Congress.

    Iancu needs to go to Congress with fire in his eyes and his belly and state the following: “We’ve tried implementing the case law that SCOTUS and the CAFC have provided us, but it is UNWORKABLE. There are too many inconsistent decisions and too many holes in the Court’s analysis that leave too many questions unanswered for us to provide consistent and workable guidance for our examiners. There are important technologies, such as X, Y, and Z, that are dying on the vine because investors won’t invest in technologies that cannot be patented. Unless Congress steps up and and solves this problem and quickly, we are in danger of losing our dominance in technologies A, B, and C to places like China and Europe that have much clearer eligibility standards.”

    Michelle Lee was more than happy to talk down the patent system, and it continued to burn while she was at the helm of the USPTO (to the benefit of her past employer in Google). The USPTO providing “better guidance” to the Examiners isn’t going to help. The Federal Circuit decisions are chock full of exceptions and special fact patterns that the 5-15 word snippets previously provided by the USPTO (e.g., “collecting information, analyzing it, and displaying certain results of the collection and analysis,” “parsing and comparing data,” “tailoring content based on information about the user,” “organizing and manipulating information through mathematical correlations,” “collection, storage, and recognition of data,” “filtering content”) do an extremely poor job of describing the Court’s actual analysis. However, it is unrealistic for Examiners to read 2 page writeups on each and every precedential Federal Circuit decision. Moreover, as the body of case law grows, coalescing all of this guidance into some manageable body only becomes harder.

    35 USC 101 has gone from a simple threshold test to something that is requiring massive resources from the USPTO’s legal staff, the Examiner’s themselves, the Courts, and applicants/patentees in order to implement/understand the case law. The problem is only going to get worse as time goes by, and trying to fix it at the USPTO is going to be a useless endeavor.

    The Supreme Court started the mess. The Federal Circuit took that mess and made in 10x worse. Fixing it at the USPTO is not possible. There are just too many (inconsistent) Court decisions such that all it takes is an Examiner to choose apply one Federal Circuit decision over another in order to obtain a complete different result. The only people capable of fixing this mess is Congress, and Iancu needs to LEAD the charge to make this happen.

  11. Anon May 15, 2018 6:37 pm

    Mr: Cole,

    I recognize that what you want is all well and good, but you really need to take off th blinders as to the mess that the Supreme Court has rendered. Their decisions simply are not the paragons that you wish that they were.

  12. Night Writer May 15, 2018 9:07 pm

    Curious >>>35 USC 101 has gone from a simple threshold test to something that is requiring massive resources from the USPTO’s legal staff, the Examiner’s themselves, the Courts, and applicants/patentees in order to implement/understand the case law. The problem is only going to get worse as time goes by, and trying to fix it at the USPTO is going to be a useless endeavor.

    I agree. And the whole is absurd. The SCOTUS made up things that make no sense. And again, tell me how whether something is part of a system already or whether it is well-known has anything to do with an abstract idea?

    Just think suppose you had a list of abstract ideas and you had to give criteria to subjects of experiment to determine whether they were abstract idea. How would it matter if the abstract was previously known? Or if it was part of a system? Actually, if something is part of a system like in Alice that would probably mean that it is not an abstract idea. And whether the abstract idea was known or not would not help one to determine if it was an abstract idea.

    The whole thing is just total nonsense.

    A real abstract idea: Build a machine to perform the same functions but with fewer parts.
    Does it matter if that was well-known to determine if it is an abstract idea. No. Does it matter if it is currently part of some system? Not really, except if it was implemented in some way then it would probably mean it isn’t an abstract idea.

  13. Night Writer May 15, 2018 9:09 pm

    Curious >>Moreover, as the body of case law grows, coalescing all of this guidance into some manageable body only becomes harder.

    It is becoming like Europe where 101 is just determined based on whether some big corporation had the money to fight to make something eligible or not. There is no consistency to it. You have to go through the cases to try to match your patent application with one of the cases.

  14. Bemused May 15, 2018 10:56 pm

    “QUINN: Okay. So, moving along. Before I forget and not to just constantly throw tough questions at you, but do you personally think a patent is a property right?

    IANCU: So, look. The Supreme Court has issued this decision now. And I won’t comment. At least for now beyond what the Supreme Court has said.”

    Spoken like a true political creature. I would have preferred President Trump’s meaner, nastier twin brother for this job. It’s the only way to unscrew the screwing that the Courts, the Swamp (Sewer) and the USPTO have been giving inventors for the past decade or so.

    I don’t want and the US cannot afford a “slow, steady as she goes” type of politically-minded USPTO Director. The old ways of doing things are over. Just ask 16 Republican party 2016 primary candidates and one bitter, angry old woman from the Democratic side.

    Anarchy towards the old political order and the entrenched bureaucracy and judiciary that brought us here is the order of the day. And if you think I’m being reckless; ask yourself this: How much longer can the US continue to exist when those three forces of evil (Congress, the Courts and the USPTO) have led to a virtual shut-down of innovation and start-up funding in this country?

  15. Night Writer May 16, 2018 7:08 am

    All of this 101 analysis is just offensive to the intellect.

    And–AGAIN–someone tell me how something being well-known has to do with it being abstract. Show me something before Alice that showed some relationship between something being abstract and something being well-known.

  16. Night Writer May 16, 2018 7:42 am

    @10 Curious

    Is right that there will be no substantial relief without Congress acting.

  17. Paul Cole May 16, 2018 9:29 am

    @ Night Writer

    “The Supreme Court started the mess. The Federal Circuit took that mess and made in 10x worse. ”

    I totally agree with the second sentence. Judge Reyna, for example, has the high judicial distinction of writing on opinion based on a finding of fact that is wrong by a factor of 1,000 to 1,000,000 on the face of what he himself wrote. Even if your degree is in economics, that is a gross error margin.

    May I repeat what I said earlier: the USPTO is well-placed and has the resources to study these decisions and make sense of them. And the principles of interpretation of judicial opinions are well-known and (presumably) taught in US law schools but not properly applied.

    It occurs to be that if the Federal Circuit needs guidance (which it undoubtedly does) then the USPTO is well-placed to offer that guidance by way of authoritative and well-reasoned amicus briefs. That is what is called leadership. Over to you Mr Iancu.

  18. Anon May 16, 2018 10:53 am

    I continue to struggle with contemplating why Mr. Cole fights so strongly for the notion that the Supreme Court is (largely?) blameless.

    It does not take much study into the Court’s makeup and its own politics to disabuse oneself of any such notion.

  19. Gene Quinn May 16, 2018 12:38 pm

    Anon @18-

    I think the Supreme Court is blameless in the way that children are blameless. They are just clueless. The problem is they have real power and real ignorance.

    The Federal Circuit is really quite to blame. They have abdicated. They do not see their role as moderating the extraordinarily broad pronouncements and limiting them to the facts of the cases. Instead, they apply them to real innovations and real technologies when the Supreme Court made them about rather dubious claims and questionable innovations/technologies (for the most part). The Federal Circuit is to blame in a big way.

  20. Paul Cole May 16, 2018 1:48 pm

    @ Anon 17

    What matters, as any lawyer should appreciate, is in each particular decision the essential findings of fact that have been reached, the conclusion that has been reached, and the essential legal rule that enabled the court to reach that conclusion. Dicta are also significant, but are persuasive, not binding. Investigating these matters is the task of the lawyer.

    Judicial biographies are always of interest; As to politics, it does not matter if the Justice is a member of the Flat Earth Society or some strange political organization if these are irrelevant to the opinion handed down. And, frankly, I have not yet met a member of the US judiciary who is not trying (according to his or her lights) to reach the best possible decision on the facts under consideration.

  21. Night Writer May 16, 2018 2:58 pm

    @19 Gene I think the Supreme Court is blameless in the way that children are blameless. They are just clueless. The problem is they have real power and real ignorance.

    No way. The SCOTUS knew exactly what it was doing with Alice. They knew they were creating a way for district courts to invalidate any claim they didn’t like and they knew they just fabricated the definition of “abstract idea.”

    The justices don’t just accidentally burn down an area of law. They do it intentionally. Look at anti-trust law. Same thing that is happening to patent law.

  22. Night Writer May 16, 2018 3:00 pm

    I am sure what Paul is saying is correct in the sense that the justices believed that patents were out of control and not in the interest of the USA anymore.

    But, they knew exactly what they did with Alice.

  23. Anon May 16, 2018 8:22 pm

    Sorry Gene,

    But if a child were as haughty and full of themselves as the Supreme Justices were, there would be indictments for their parents.

    This is just not a matter of incompetence – this is a matter of philosophy and an overstepping of their limited authority (just because “Supreme” and all).

    It is NOT a matter as you and Mr. Cole would have it: “reaching the best possible decision” – it is reaching a desired decision come what may – and come what Gordian Knot is created with whatever past decisions that they may have rendered.

  24. Night Writer May 16, 2018 10:42 pm

    @23 Anon

    You guys are very naive. The SCOTUS knew exactly what they were doing in Alice.

  25. Anon May 17, 2018 7:07 am

    Night Writer,

    Not sure why you think to lump me in with Gene and Mr. Cole – I am on your side here regarding the Supreme Court.

    They are NOT children. To “excuse” what they do as if they were children is to capitulate on accountability.

    That path is a no-win path.

  26. Bemused May 17, 2018 9:34 am

    Gene, while I don’t disagree with your statement about the CAFC abdicating its obligation to correctly interpret the patent decisions handed down from Mount SCOTUS, I have to echo what Night Writer and Anon said: SCOTUS is to blame for knowingly burning down the US patent system.

    Oil States is a perfect example (and don’t even get me started on e-Bay). Throwing out centuries of precedent, purposefully misreading/misinterpreting their own prior decisions and making a mockery out of the Constitutional concept of patents as private property rights is pretty damn strong indictment that the Arrogant Seven acted both willfully and knowingly to destroy patent protection.

    Shameful behavior and incredible hubris by activist justices who think they know what’s best not just for the law but for this country’s future.

  27. Gene Quinn May 17, 2018 10:16 am

    Bemused-

    Did the Supreme Court knowingly burn down the U.S. patent system? I wonder? I think that is going to be the title of an upcoming article. Perhaps I’ll write that one on the plane on the way home from Minneapolis on Sunday (here on business this week).

    The Supreme Court is many things, and I do think it is perfectly accurate to say that they are anti-patent. But are they really intentional actors? That would assume that they have knowledge and understanding about what they are doing. Personally, I find them to be the perfect example of the emperor without any clothes (Gorsuch excluded). They are certainly intentionally ignorant, and they are intentionally arrogant and the hubris is off the charts. As if they are the only Court ever to consider these issues and get it correct. But they simply don’t understand invention, they don’t understand patent law, and they seem completely incapable of understanding what they are doing to the U.S. economy (or perhaps they don’t care enough to understand). So does that make them intentional actors or ignorant actors? I think it makes them ignorant actors.

    Congress needs to save us from ignorant actors. They are incapable of forming patent policy. It isn’t their job in the first place, and there is no debate that they have run the patent system into the ditch.

  28. angry dude May 17, 2018 11:16 am

    Gene Quinn @27

    “So does that make them intentional actors or ignorant actors?”

    They are BOTH intentional AND ignorant

    Their intent is to cripple US Patent system and they don’t have to be knowledgeable in order to do that

    breaking things is so much easier than building or fixing them

  29. Paul Cole May 17, 2018 12:12 pm

    @ Gene and Angry Dude

    As has been said, I think that the blame for the present mess is far more to be found in the Federal Circuit than the Supreme Court.

    A first necessary presumption for any lawyer is that the binding principle is to be found in the rule of law required to reach the decision on the relevant facts. Finding that rule is a matter of skill and the rule when found is likely to be more specific than casual readers suppose. The rule of law is not to be found in passages of dicta unconnected with the decision in question. Of course in a multi-issue case there may be many rules, but they each need to be isolated and identified.

    The second principle is that long-established precedent is not to be pushed aside by a side-wind. One such decision is the Adrenalin case on isolation of natural products. The principle of eligibility in that case is that isolated natural products with new and useful properties are patent-eligible. Much of the US pharmaceutical industry has relied for the past century, and continues to rely, on that principle. It is not plausible that Justice Thomas intended to strike down that line of authority in Myriad Genetics. Indeed he went out of his way not to over-rule that line of authority, saying at the beginning of his opinion: “For the reasons that follow, we hold that a naturally occurring DNA segment is a product of nature and not patent eligible MERELY because it has been isolated …” and at the end of his opinion: “We MERELY hold that genes and the information they encode are not patent eligible under §101 SIMPLY because they have been isolated from the surrounding genetic material.” If a product not merely comprises isolated naturally occurring material but has disclosed new utility, then the claim is OUTSIDE that rule and covered by the established authorities. To say otherwise is to hold that Justice Thomas would have retrospectively have held invalid the patent on streptomycin, which was almost certainly not his intention. However, those who followed the 2014 guidelines in the USPTO and the comments thereon will be aware that the USPTO gold-plated the Supreme Court opinion in a manner which it is plain Justice Thomas did NOT intend. The opinion in Ariosa/Sequenom is a further example of such wholly unjustified gold-plating.

    The blame for the uncertainty is NOT primarily in the Supreme Court. The blame is with USPTO examiners and district court/Federal Circuit judges who obsequiously gold plate opinions which were intended to be specific and conservative, as is apparent from many significant but rarely-cited passages in the opinions to that effect.

  30. Anon May 17, 2018 12:31 pm

    Once again, I find Mr. Cole seeking to diminish the accountability and the responsibility that must be shouldered by the Supreme Court.

    It is as if he simply turns a blind eye to what they are doing.

    Unfathomable, and quite frankly, unbelievable.

    I feel sorry for you Mr. Cole, for every time you attempt to divorce blame from the Supreme Court, your credibility and the perception that you understand just what they are writing suffers.

    It is THAT Court that has been the “scriveners” and have scriven a Gordian Knot of irreconcilable “common law.”

    It is THAT Court to which the Act of 1952 was a direct rebuttal (the self-proclaimed Court that of its ways, it was described: “The only valid patent is one that has not yet appeared before us.”

    I cannot fathom why you strive so very much to “protect” a judicial body that does not deserve such protection.

    As I have also pointed out, nearly EVERY** state attorney oath here in the US does NOT place any of the branches of the government ABOVE the Constitution, and it is to the Constitution first and foremost that attorneys swear to defend. And that includes defense against our own internal branches of the government.

    I recognize that you have no such oath – and by and large, you have always been cognizant (and respectful) of our Sovereign. But “respect” CAN go too far and be misapplied.

    **Only the Commonwealth of Massachusetts comprises a variant that arguably treats the judicial branch above fealty to the Constitution.

  31. Paul Cole May 17, 2018 1:58 pm

    @ Anon

    Just to quote Roper and More in A Man for All Seasons (as I have done before):

    “ROPER: We don’t need to know the […] wording—we know what it will mean!

    MORE: It will mean what the words say! An oath is made of words! It may be possible to take it. Or avoid it.”

    More is required to take an unwelcome oath. he does not simply say that he will not. He is anxious to comply with it and minimise the damage to himself and his family. If there is an interpretation that is liveable with, he will seek it out and act accordingly. Sadly there was no such interpretation.

    Exactly the same here. Our duty is to find the liveable interpretations of the Supreme Court jurisprudence. if they exist, we should use them positively. It may be that legislation is needed, but that is for the future, and for the present the most we can do is what Thomas More tried to do.

    I am not turning a blind eye to anything, nor am I dismissing the advantages of the approach suggested by Anon. I am merely trying to make life as comfortable as possible in the meantime.

  32. Anon May 17, 2018 2:10 pm

    I do not think that you have properly reflected upon the actual duty of a US attorney, Mr. Cole.

    Subservience and treatment of the Supreme Court as if that Court were above the Constitution is NOT such a duty.

    So no, your “exactly the same here” is most definitely NOT “exactly the same.”

    We are NOT called to be “as comfortable as possible in the meantime.”

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