Alternative Routes to Protection of Innovation

By Robert Stoll
June 13, 2018

Innovative algorithms and even diagnostic methods may be easier and more effectively protected by trade secret.  Trade secret protection avoids the uncertainty of compliance with the vague patentability standard set forth by the Supreme Court.

Image Source: Deposit Photos.

Every year different groups provide rankings of patent prosecution law firms and a company’s patent count for the year.  Patent law firms will tout their rankings based upon the number of filings at the U.S. Patent and Trademark Office (USPTO) or the number of allowances they obtained for clients over the previous year.  And companies will boast about their patent prowess based upon the size of their portfolios.

But things are changing.

In the recent past some companies demanded low flat fee drafting and prosecution to file more patent applications and bolster the size of their portfolio.  And some firms were very willing to provide a bare-bones drafting and prosecution product to get the work.

But this mindset is too simplistic for today’s dynamic industries and has real downsides:  it has encouraged the assertion of many improvidently granted patents against unsophisticated startups and clogged the system with patents of dubious value.

During the past few years the patent community has been consumed with trying to fix parts of the system that permitted abuse and has met with some success.  But many fixes, like those needed on patent subject matter eligibility, have proven elusive.  There have also been complaints that the USPTO should do a better gate-keeping job and deny the bad applications – and I will acknowledge that the office needs to continuously improve their quality safeguards.  But the USPTO can’t do it alone, the applicant community has responsibilities as well.

The above noted problems and the new availability of other mechanisms for protecting some intellectual property, like the new federal trade secret law, have led to a more nuanced view of the patent system and how to develop a portfolio of intellectual property that provides more benefits.  The changes have also crystallized new thinking about patent portfolios and how to use them.

Sophisticated companies are already filing fewer and better applications.  While flat-fee arrangements are still the norm, the level of those fees has been increasing.  Large filers are becoming less focused on their filing numbers.  They look to rationalize filings with company products and profitable lines.  Many are also developing systems to evaluate the nexus between those goals and the filing of each application.  Ranking the importance of filing a new application in a particular area has taken on new importance.  Does the application cover a marketable product?  Is it in a core area?  Is it central to the goals of the company?  Is it incremental?

And new metrics are being employed to evaluate the drafting of the application and its prosecution.  It is now rare that a savvy in-house IP counsel will just count numbers.  Amendments to get an easy allowance on a “picture claim”, one that is so detailed that it is unlikely to ever be infringed, are frowned upon as they don’t cover anything of value.

But the limitations by the courts on patent subject matter eligibility related to computer-implemented processes, diagnostic methods and personalized medicine have focused some pioneering companies to re-think their patent agenda.

Innovative algorithms and even diagnostic methods may be easier and more effectively protected by trade secret.  Trade secret protection avoids the uncertainty of compliance with the vague patentability standard set forth by the Supreme Court.  Trade secret protection also avoids lengthy and costly validity and infringement determinations.

Patents in some subject matter areas make good sense, but it’s about a lot more than having a high number of patents or a top spot on the lists.  A quality patent will allow a prospective infringer to evaluate a clear and well-bounded claim and decide whether to take a license or invent around it.  But it also makes good sense to consider other forms of protection in some of the emerging technologies that have been hampered by the devolution of patent law recently.

Inventiveness will not be deterred.  Even when some avenues seem blocked!


The Author

Robert Stoll

Robert Stoll is a partner with Drinker Biddle and is co-chair of the Intellectual Property Practice Group.

Bob retired from the USPTO as Commissioner for Patents at the end of 2011 after a distinguished 34-year government career. He was instrumental in the passage of landmark patent legislation, the America Invents Act, and lauded for his efforts to reduce patent pendency and improve patent quality. Having risen from the rank of examiner to lead the 8,000-employee organization, he has spent his career improving the intellectual property system.

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 59 Comments comments.

  1. Tesia Thomas June 13, 2018 3:17 pm

    Let’s put invention on the blockchain in the form of blockchain Inventor’s Journals.

    Then asymmetrically encrypt the text and drawings information in what would’ve been patents.

    Then write a short description of what the invention does that is public. Like an abstract.

    If the world wants the invention then it pays for decryption of the ‘patent’ text.

    We could even have “proof of work” where the blockchain patent is confirmed as being used only once (novelty, likely non-obviousness too.)

    This way, we completely cut out USPTO examination, executive employee “judges,” and weird laws.
    It just becomes what the people want and will pay for.
    Anti-IP Libertarians would be happy because we cut out the government. Blockchain would enforce everything.

    This way, the inventor’s incentive is still there (exchange new tech for money)…with no terrible backside (losing all money invested in the new tech, IP, litigation, IPR.)

    We get paid upfront once we reveal our invention and then anyone can make the product in the market.

  2. Night Writer June 13, 2018 3:29 pm

    Trade secret protection is what Google and the other giant international corporations want. It is terrible. Terrible for society. It hides what was done. It binds a person to the corporation. The nebulous binding is between what the person did/knows from working for the corporation and what they can do next. It is very hard to move to a new job after being under trade secret protection.

    Patents are great for society. Disclose what you did. And the people can freely move because what they did is now owned by the company in form of a patent.

    Trade secret protection is worse than no protection for small inventors and engineers.

  3. Anon June 13, 2018 5:12 pm

    While Trade Secrets is a growingly viable path, one has to wonder how such actually promotes innovation or, as the attempted spin here puts it:

    Inventiveness will not be deterred.

    There is no Quid Pro Quo or actual legal mechanism for advancement. Instead, what you have is the cloistered, anti-patent aspects of NON-sharing and feudal-like model of the guilds.

    Actively “promoting” the likes of Trade Secrets then can – and should be – seen as a step backwards.

    Sure, I “get” that we owe it to our clients to make sure that they are aware of all avenues of protection, and of the changes in relative risk and reward.

    But this is a blog, obstinately dedicated to promoting innovation – Trade Secrets do NOT do that.

    Other than that, the article here provides some rather excellent points (vis a vis metrics and value (fee versus strategy).

  4. Paul Cole June 13, 2018 5:29 pm

    In order to be useful, patent claims have to meet the Viagra criterion (strong enough not just to get through the USPTO but also to stand up in court). Famously, in the UK and Canada the patent on Viagra did NOT stand up in court, in the UK because the claim was over-broad and in Canada because insufficient data had been disclosed in the specification. Over-broad over-functional claims accompanied by cursory descriptions arrived at without much discussion with the inventor simply cannot do the job.

    If you doubt this contention, simply have a look at the patent specification in the State Street case. The real objection, which would have cost far less to decide, was NOT patent eligibility but WAS lack of support for means + function claims under 35 USC 112(6) as it then was. The structure for the claim elements was a black box diagram, but there was no disclosure of any structure to populate the black boxes. If you wanted to build a State Street hub and spoke system, how would you go about it. Essentially you would have to start from the beginning because the amount of really useful information in the specification was near zero. Even in those days there was nothing new about 35 USC 112(6) – it had been around for decades.

    It is all very well to go on about algorithms, but what does any potentially inventive algorithm achieve? What is the transformative result in the real world? If positive answers to these questions can be given, and the necessary non-trivial investment of inventor and attorney time and effort is expended, then a good patent should result.

  5. Night Writer June 13, 2018 6:41 pm

    >>“Inventiveness will not be deterred.”

    Actually—the reality of human history is that inventiveness is often deferred. Without the proper legal system in place inventions often are deferred for hundreds or even thousands of years.

    There is no reason to believe that inventions will continue at a great pace without patents and all the evidence is to the contrary.

  6. Curious June 13, 2018 7:55 pm

    Trade secrets? Oh please. Trade secrets require secrecy, and in today’s day and age, who has any confidence that anything can be kept secret for any length of time? If it has value, somebody is going to find a way to hack into a company’s computers and steal whatever it is.

  7. AnonExaminer June 13, 2018 9:40 pm

    A great book on the importance of patents for invention that I recently started reading is:

    “If You Want to Invent” by Herbert Dyson Carter, published in 1939:

    https://www.amazon.com/Want-Invent-Herbert-Dyson-Carter/dp/B00085RVA4/ref=sr_1_1?ie=UTF8&qid=1528940242&sr=8-1&keywords=if+you+want+to+invent+dyson

  8. Benny June 14, 2018 5:35 am

    Paul@4,
    That is the problem with far too many patents, and stems from poor examination at the USPTO.
    As for Robert Stoll’s suggestion that the applicant should take responsibility for reducing the number of bad applications – what’s my incentive? As long as there is an even chance of a cruddy application becoming a granted patent, given the known poor quality of work at the USPTO, It’s worth my while to give it a shot.

  9. CP in DC June 14, 2018 8:42 am

    I agree with this statement by Paul Cole:
    Over-broad over-functional claims accompanied by cursory descriptions arrived at without much discussion with the inventor simply cannot do the job.

    The problem is that clients won’t pay for proper drafting, believing that bigger is better and it should be cheap too.

    Mr Stoll provides the reason:
    In the recent past some companies demanded low flat fee drafting and prosecution to file more patent applications and bolster the size of their portfolio. And some firms were very willing to provide a bare-bones drafting and prosecution product to get the work.

    So here is the problem. Clients continue to demand “low flat fee drafting” (they have moved on from this model) and very high quality work. Clients crave this low price work, it makes in-house counsel look great before their bosses as they meet their budgets. The problem is that they are buying junk, and the bosses are unsophisticated (that’s why they hire in-house counsel) to recognize it’s junk.

    And this cost analysis conflicts with Mr. Cole’s goal to draft better patents. No matter what, it takes time to properly draft an application and it’s a difficult task to master. As I’ve argued before, it can’t be done properly with the budgets. As Mr. Stoll puts it “some firms” are very willing to do the work at those low budgets, which continues to perpetuate the myth of low cost high quality work.

    I don’t agree that the alternative is to use trade secrets for the same reasons discussed above. It’s a short term solution with long term problems.

    I do believe the PTO has to get its house in order and start doing a better job during examination and fix the system at the front end and not the back end with IPRs; but, as we all know, this will never happen. It’s a difficult task that no one wants to do.

  10. Night Writer June 14, 2018 8:54 am

    Frankly, anyone that is pushing trade secrets is doing the bidding of Google.

    There is no question about it. Trade secrets would mean much lower salaries and lower mobility for all the tech workers and it is further justification for burning down the patent system.

    Soon, I am going to have to start asking for financial disclosures from people that push trade secrets.

  11. Paul Morgan June 14, 2018 9:07 am

    A number of unusually good comments above.

  12. Tesia Thomas June 14, 2018 9:48 am

    I totally do not understand why attorneys get on here to preach about getting paid for quality drafting when a lot of inventions are being disclosed and then the apps rejected under 101.
    Another day, another 101 rejection.

    The drafting is not really even being considered. And the patents of very well funded companies are being overcome by 101. Even “patent troll” term innovator Intel just recently.

  13. Tesia Thomas June 14, 2018 10:04 am

    If ANYONE pays you $1 Billion per patent on whatever abstract idea (yet to be defined), nothing in the world is going to get that patent issued.
    (except maybe if it belongs to Google)

    So, really, I’m tired of the preaching especially when this blog posting clearly is talking about protecting the inventions that get 101’d.
    Stoll is not saying “trade secrets!!” for trade secrets sake. He’s saying instead of paying and disclosing tech for the hope of getting a patent, stop hoping… Just keep it a secret.

  14. CP in DC June 14, 2018 10:04 am

    I hate when this happens.

    the comment in paragraph 4 should read:

    (they have NOT moved on from this model)

    I think the context clarifies it, but just in case.

  15. angry dude June 14, 2018 10:23 am

    “…the applicant community has responsibilities as well”

    Dude, r u mocking us ???

  16. Paul Cole June 14, 2018 12:38 pm

    On reflection, I think the Section 101 problem arises from two sources.

    One is the inadequate disclosure/over-generalised claim problem referred to above.

    The other is over-enthusiastic litigators who put before the courts cases that obviously should not go there.

    If I remember right, the Alice applications before the EPO were handled by my friend Keith Beresford who wrote a book on software patenting and in my opinion is one of the most able UK patent attorneys of my generation. His efforts were unavailing and the applications were allowed to become withdrawn without even the hearings to which the applicants were entitled. An attorney who recommends taking a US case to the Supreme Court where the positive patentability case in Europe did not even justify a hearing possesses a remarkable combination of stupidity and irrational optimism, driven also perhaps by an inappropriate enthusiasm for $$$. The number of cases I have seen and commented on which foreseeably should never have been taken to the US courts is considerable, and these cases have done our profession and our more deserving clients no good whatsoever.

    As I have said, we need better drafting. We need litigator restraint. And for those cases that DO go before the courts we need better litigator advocacy comprehensible to judges with neither technical training nor patent law training. Then we will start to see some improvements.

    The answer is NOT to turn our backs on the patent system and to go for trade secrets. It is to work harder and more skilfully with our clients, select the inventions that truly comply with the positive requirements of section 101, and be careful how and what we litigate.

  17. Tesia Thomas June 14, 2018 12:56 pm

    Attorneys do what they are told & paid to do as long as it’s not illegal. PTAB ‘judges’ are picked based on relationships.
    Who’s policing/restraining the legal field and/or its practitioners? People within the legal field. The people themselves.
    That requires personal and professional integrity FROM EVERYONE in a cutthroat field.

    CAFC and PTAB don’t usually agree.

    The problem with trade secrets is it cuts patent attorneys out of the picture.

    Let’s say Stoll is paid by Google or what have you and that’s why he’s advocating for trade secrets.
    Well… Big Tech is taking down competitive startup patents, patent drafting & prosecuting attorneys, employee mobility… and soon patent litigators in ‘one fell swoop.’

    We’re all trying to get money from the same money source in the end.

    Inventors should turn their backs on the patent system if we don’t feel we’re getting a fair deal. We shouldn’t supply a system that fails us.
    Inventors need to stop disclosing technology that ends up published and rejected under 101…and that typically happens before an RCE or any rejection based on thorough examination.

  18. Tesia Thomas June 14, 2018 1:15 pm

    I mean…
    Are you kidding me?!?!
    Drafting!??

    USPTO examiners are probably keyword searching and killing IP for 101 rejections.
    Are you saying drafting to not include key terms in the field of computer science and whatnot will help these patents?
    Well…maybe so if it is really keyword-search-to-kill.

    Patent drafting and prosecuting attorneys are saying to one inventor, “We can get this IP for you if you pay us $100 Billion cash.”

    The patent prosecution team is saying to a competitor inventor, “We can kill that IP for you if you pay us $100 Billion cash.”

    The inventors are both saying, “I don’t know. My budget is for $1 Million…and look at what just happened to John Doe’s patent…”

    Meanwhile, Tech Giants: “We have a budget of $10 Billion to kill this whole patent system. What do you mean IPWatchdog and USInventor are causing trouble and you need more money to buy politicians and revolve doors?!?!?!!!!!??”

  19. Gene Quinn June 14, 2018 2:09 pm

    Paul @16 and Night @10-

    I agree that we shouldn’t turn our back on the patent system, but at the moment I don’t think we as advisors are representing clients properly if we don’t acknowledge that under the current tests in place there are a number of innovations that are simply difficult (if not impossible) to protect via patent and need to be preserved as trade secrets… at least for now.

    Bob’s article saying that is something that I think we all should be saying. I don’t think this is doing Google’s bidding. We need to draw attention to this unfortunate reality. The result of bad policy and unreasonable decisions over the past decade is to drive innovation under ground. That doesn’t benefit anyone, at least not maximally, but it is a reasonable business response to the chaos that has been leveled upon the industry.

    Congress and the Courts need a wakeup call. They might not like to hear that businesses are abandoning areas of innovation because of their decisions, but that is precisely what is happening. They need to hear the unvarnished reality.

  20. CP in DC June 14, 2018 2:23 pm

    Tesia

    Your singleminded obsession with 101 just demonstrates how little you know about the process of drafting. IPRs don’t judge on 101, so I guess it’s something different there, yes it’s about prior art.

    Not everything dies under 101. Mayo and Sequenom did, but Vanda and Cellzdirect didn’t. Ever wonder why? Probably not, but a good patent attorney does wonder and then reads and studies.

    Also, did you ever file in other countries? Your application was a PCT? So you know that Europe, China, Japan, Korea, Canada, etc., don’t follow identical requirements to the US. Sure novelty is easy, but obvious, enablement, description? Use a case drafted only for the US and you will soon learn of the problems in other jurisdictions. Hey, but you know all that stuff is easy and takes no time to learn or write…

    My point is that we need more time, time to read, time to understand, time to review prior art, time to draft, time to talk to inventors, time to edit, time to redraft after others comment on the application, time to think about how the product is infringed and what are the best claims to use, time to learn your technology. Somehow everyone thinks their patent attorney is an expert in every field without prior knowledge. What about office actions? We have to read them, read the references cited, and then read the specification (it can be up to three years after filing that you get your first office action). Do you remember what you did three years ago today?

    So a well written patent takes time. A well written patent can overcome 101 because it is written knowing the problems. A well written patent can overcome the prior art, because someone ran a search and knew the most relevant references. Also, a well written patent can be used in other countries with minimal effort.

    The advocacy of trade secrets as a short cut to this effort is short cited. I do medical diagnostics and personal medicine patents and pharma. The disclosure to the FDA (yeah your patent attorney needs to KNOW that too) can kill secrecy. US Pharmacopeia is often a great source of public information, well there goes secrecy again. Want to know what is undergoing clinic trials, the US puts that information online for all to know. Yeah, your patent attorney knows that too. Now what? Well, it’s a race to cheapest manufacturer and big boys rule that world.

    The article fails to mention the necessary disclosures to federal agencies for safety and efficacy. FDA in the US, EMA in Europe, PMDA in Japan and other countries have their own agencies.

    So go ahead and use secrecy for medical work. It makes your competitor’s work much easier.

  21. Tesia Thomas June 14, 2018 2:30 pm

    @CP in DC,

    So tell me just how drafting helps when PTAB and examiners say, “These claims are directed to non-eligible subject matter”???

    Because that’s what I’m talking about. If the inventors of those patents paid you $100 Billion would you have gotten the patent issued for them?

  22. Tesia Thomas June 14, 2018 2:34 pm

    @CP in DC,

    SIT THE EFF DOWN. Or tell us your name so we can see your/your firm’s examination history.

    So PTAB doesn’t judge abstract ideas?

    See: Ex parte Hiroyuki Itagaki

  23. Tesia Thomas June 14, 2018 2:39 pm

    @CP in DC,

    And Ex parte Hiroyuki Itagaki is specifically the abstract nature of med devices.

    Do YOU read?

    Did you write that medical device patent?
    Sell your services to MRI inventors since you’re the drafting wizard.

  24. Tesia Thomas June 14, 2018 2:55 pm

    @CP in DC,

    And that same med device was, if I remember correctly, issued in other countries.
    But, I never even mentioned other countries. I’m talking about the US here.

    I know that PTAB is more than IPR.
    But inventors get 101’d by examiners then go to PTAB on appeal. So you’re saying that examiners absolutely look at the whole entire patent instead of just rejecting it as abstract?
    The freaking PTAB just reversed a 103 and affirmed a 101 of Goldman Sachs!!
    Oh my gosh, you know what that means?



    non obvious but abstract.
    from PTAB
    😮

  25. CP in DC June 14, 2018 4:50 pm

    Tesia

    Personal attacks? Isn’t that amature hour that belongs in the the other blog?

    By the way, I said “IPRs don’t judge on 101.” I did NOT say “So PTAB doesn’t judge abstract ideas?. I didn’t speak of the PTAB. You see I DO read, I also comprehend. Oh that takes time.

    How about your example, Ex parte Hiroyuki Itagaki. US App No. 12/598168 filed April 22, 2008 from a PCT application written in Japanese PCT/JP2008/057712 claiming priority to a Japanese priority filing, filed on May 9, 2007. I can’t read Japanese, so the info on the PCT is from the cover page.

    To answer your question: I did not write that medical device patent. I’m not fluent in Japanese, just so you know.

    A history lesson. Alice was decided on June 19, 2014. That is 7 years before the priority date and 6 years prior the filing date of your example. Please feel free to check my math, I do chemistry…

    So either your Japanese drafter (I assume he/she was Japanese because the priority document and PCT are in Japanese, but don’t take my word for it) knew of Alice 7-6 years prior to the Supreme Court making the decision or they didn’t. I’m going with the second. So you expected the foreign entity to draft a US application with enough information to overcome a case that has yet to be decided? Such high expectations! Did you expect the Japanese patent attorney to know US law and draft an application that could overcome all US rejections?

    The rejected claims to an MRI apparatus reads as follows (just the big parts)
    A magnetic resonance imaging apparatus comprising:
    an image acquisition unit configured to divide an imaging region of an object…
    a display control unit configured to display the plurality of images… and
    a classification processing unit configured to classify the plurality of images…etc.

    I knew that claim wasn’t surviving. Read Vanda and Cellzdirect, they are instructive.

    Oh PCT reports that they only got patents in China and Japan.

  26. Night Writer June 14, 2018 9:22 pm

    @19 Gene

    I think that Google etc. want trade secrets more for their ability to lower the wages of their employees and tie their employees to their company than for IP protection.

    That is what I think. And I think this is huge!

  27. Ternary June 15, 2018 12:07 am

    CP in DC@25

    You summarize the claims either selectively, or you don’t fully grasp the meaning of the claims.
    In claim 1:
    “… to divide an imaging region of an object to be examined into a plurality of stations, and acquire a plurality of images having different image types for each station.” There is nothing abstract in this. Plurality of stations, that is physical. The different image types may be confusing for the uninitiated, but “type” has a specific meaning in the context of the specification and MRI imaging.

    Claim 2. The magnetic resonance imaging apparatus according to claim 1, wherein: the image acquisition unit acquires the plurality of images by varying the imaging parameters; the classification processing unit classifies the plurality of images by the imaging parameters; and the display control unit displays the plurality of images by the imaging parameters.

    Claim 3 in the application:
    The magnetic resonance imaging apparatus according to claim 2, wherein the classification processing unit classifies the plurality of images based on at least one of the imaging parameters including inversion time (TI), slice plane, imaging method, echo time (TE) and repetition time (TR).

    Inversion time, slice plane, echo time and repetition time are technical aspects of MRI imaging, nothing abstract in that. These imaging parameters are in effect physical parameters of a machine.

    The decision in this case was truly idiotic, because classifying was determined to be abstract.

  28. Night Writer June 15, 2018 8:19 am

    @27

    The fact is that saying something is abstract is absurd. Abstract was meant to be an exception for things like build a machine that works twice as fast with one half the parts.

    In all of these cases that the CAFC and SCOTUS have decided there is nothing abstract about the case. In each case there is real structure that is used to perform the invention of the claims. Scope of enablement may be a problem, but abstract is not.

    Again–there is structure there for a real thing that is doing useful work. That cannot be abstract.

  29. Jianqing Wu June 15, 2018 9:00 am

    This is now the PTO normal practice to reject patent applications by unreasonable reading claims. Keeping rejecting claims forces applicants to include details in their patents. The PTO essentially grants patents that are infringement-proof.

    Then, fewer and fewer people will file patent applications. Although trade secret protection is good in some cases, it cannot protect many types of intellectual properties. People just do not want to bother inventing and innovation in subjects that cannot be protected.

  30. Paul Morgan June 15, 2018 12:57 pm

    This article is being cited for support for the frequent assertion that “fewer and fewer applications will be filed” due to Alice, IPRs, etc., even though that is not this authors position. In Patent Commissioner Hirshfeld’s recent webinar were official statistics that not only have new U.S. patent application filings still been increasing since those changes, but recently even the RATE of their increasing is increasing – 3% versus 1% or so in prior years.
    I note this merely to reiterate that if you want to get Congress to strengthen patent protection you need to use credible assertions that are not easily refuted.

  31. Night Writer June 15, 2018 3:33 pm

    @30 Paul Morgan

    Do you have a link to those statistics? My understanding is that US patent applications have been rising but from foreign applicants. That original US patent applications have decreased.

  32. Tiburon June 15, 2018 3:53 pm

    Tesia @ 12, 13:

    Sssshhhh – you are making a good argument that there is no difference in “quality” between patents. It matters not whether you pay $5k or $25k to get to issue – they all end with the SAME RESULT: a worthless piece of paper that is extremely costly to defend AND potential licensees laughing in your face before copying it wholesale.

  33. step back June 15, 2018 3:58 pm

    Night Writer @28

    I suspect you are an old dog at this patent stuff like me.
    However the Alice/Mayo courts are not saying that the claimed subject matter in its totality is “abstract”.

    Rather they are saying that you and I are devious scriveners. After the inventor comes to us with their abstract idea, we scriveners cover/disguise the abstract wolf in the skins of generic computer stuff (sheep’s skin).

    They seek to unmask us devious scriveners by stripping away all that generic computer stuff so that they can get at the true nature of the invention, the original abstract idea that the claim was from the get go “directed to”. See?

  34. Paul Cole June 16, 2018 2:11 am

    @ 33 Step Back

    A useful reminder and a very helpful comment, insightfully expressed.

    The difficulty is to separate natural skin from an artificial covering. The “all elements” rule is important here and is too freely disregarded.

  35. Anon June 16, 2018 7:46 am

    Mr. Cole,

    That very same “freely disregarded” is a direct result of the political entity to which you appear to be adverse to criticizing: the Supreme Court.

    It was the Supreme Court that fashioned the “Gist/Abstract” sword.

    It was the Supreme Court that overstepped their limited authority in order to mash the nose of wax to their liking, in at least:

    a) Congress set forth the entity that has the authority to determine what the invention is, and that entity is not the Court – see 35 USC 112; and

    b) the Court excused their action by overreaching to the Constitutional phrase and violated the “current case or controversy” limitation with their basis of action somehow being needed to what merely MAY happen in the future (and the choice of the word “may” is critical, for that choice necessarily includes the possibility of “may not”); and

    c) our Constitution allows but one branch the authority to write patent law, and that branch is not the judicial branch. Prior to 1952, it may be argued that Congress shared their authority with the Court to use the t001 of common law evolution to define the word “invention, BUT it is clear that the Act of 1952 rescinded that authority.

  36. Night Writer June 16, 2018 12:46 pm

    @33 step back.

    I get it. I get it very well. I have spent many hours arguing with R. Stern about Benson, which he effectively wrote as his friend at the SCOTUS merely adopted his brief as the head of IP at the DOJ.

    My point is that what it misses is scope of enablement. That this supposed abstract idea cannot be an abstract idea within the scope of enablement of the application.

    But that was a good explanation you gave.

    Still waiting to see a link Paul saying that original US filings are up. My understanding is that this is not true at all.

  37. Paul Morgan June 16, 2018 1:12 pm

    NW, I cited the source of new U.S. patent application numbers, the Commissioner of Patents, in a internet public presentation, which I watched. You can email him if you think you have more accurate information than he does.

  38. Anon June 16, 2018 2:24 pm

    Mr. Morgan,

    Night Writer is not asking about trends of patent filing on an overall basis (and so, no one is questioning the accuracy of USPTO reported numbers, per se).

    His point is geared specifically to US-based filings.

    I would take his point one step further, and would love to see all US-based filings that are NOT filings from actual Transnational corporations that (conveniently, and for the moment), call US their base of operations.

    I think that understanding the data from these different perspectives offer some merit.

    I am not fully in Night Writer’s camp on his view here, mind you. I think that foreigners choosing to file in the US is an important indicator (of something, and perhaps, something different than what Night Writer wants to focus on).

  39. Benny June 16, 2018 2:38 pm

    Anon,
    Foreigners filing applications in the US is an indicator of where the market and competition is to be found.

  40. Paul Morgan June 16, 2018 3:20 pm

    As I recall, the Patent Commissioner did also say foreign applicants still being roughly half of the total. The actual numbers must be available from the PTO.
    The U.S. now has a rapidly decreasing % of the total world GDP, consumption and R&D because of their rapid increases in some other countries. [That should have logically decreased foreign U.S. filing?] More traditional arguments include the U.S. being cheaper to get and maintain patents yet having strong judicial patent enforcement. [The relative decline of the latter does not seem to have had much effect?] My impression is that filings by individual inventors have been regularly decreasing for a long time, in spite of the big fee reduction subsidies they have been getting from larger company applicants. Presumably the PTO has statistics for that somewhere.

  41. Anon June 16, 2018 7:35 pm

    Benny @ 39,

    On this point, I do not disagree with you.

    Mr. Morgan @ 40,

    My impression is that filings by individual inventors have been regularly decreasing for a long time, in spite of the big fee reduction subsidies

    Those subsidies are from the government who plays the incentive game – and only indirectly from any non-small entity.

    That being said, that relative cost (and the trend of the individual filer) has been noted over at that other blog: https://patentlyo.com/patent/2018/06/phosita-not-a-person-people-having-ordinary-skill-in-the-art.html#comments

    Interestingly enough, your question here actually makes use of the chosen axis on that graph (percentage), whereas the story to which that graph attaches is not proper to use percentage as an axis.

    As noted in the comments there, the actual numbers (and not the percentage numbers) of individual inventors will most likely look vastly different than the pretty and linear percentage graph shown.

  42. Paul Cole June 17, 2018 1:42 am

    Anon @ 35

    Respectfully, I do not read the Supreme Court opinions quite as you do.

    But there are favourable and unfavourable ways of reading them. It is unfortunate that they have been read in such an unfavourable manner by judges who, perhaps through age, have forgotten what they ought to have learned at law school about judicial interpretation.

    On separation of powers, I completely agree with you and have made this point both in briefs I have submitted and in many comments. If subject matter falls as a matter of substance and not mere outward presentation within one of the four eligible categories, then it cannot also fall within a judicial exception. Our profession appears to have forgotten this helpful fact.

    Very importantly many judges lack technical or patent law training. The arguments submitted therefore have to be comprehensible and attractive to non-experts. This is too often forgotten.

  43. step back June 17, 2018 4:58 am

    Paul @42

    The argument that is “attractive” to them who have no scientific training is that ANY 2nd year college student found in a coffee shop can do it at home over the weekend.

    The argument that is “attractive” to them who have no scientific training is that scientific know how is no big thing at all. Why even the young kids know how to fuddle with them smart phone contraptions. We Supremes don’t have time to belabor our higher level cosmic minds with such trivia.

    https://i0.wp.com/divine-cosmos.net/images/posts/illusion-of-time/consciousness-not-in-brain.jpg?resize=577%2C303

  44. Benny June 17, 2018 5:27 am

    Step,
    I take issue with your comment.
    Nearly all the software related applications I have read are not enabling, and only spell out a means (hardware input, processor, and output) and a function (facial recognition, drone navigation, WHY). For an engineer reading the specification, it is obvious that the document is little more than a wish list, and has been prepared even before the project has been fully defined, let alone the first line of code has been written. Yes, second year college students can come up with some original and not so original ideas, which an attorney can translate to a patent specification, and the student would then need to work for 6 months to a year with a team of her superiors to actually create a proof of concept. Does it matter to the USPTO examiner that the specification is not enabling? I hardly think so.
    Take US9828094, for example. Does that look like a disclosure of innovative technology, or something a second year college student sketched on a napkin after one too many beers?

  45. Anon June 17, 2018 8:59 am

    Benny,

    Do you not realize the conflation in your own quibbles?

    Your complaints are of 112 (or perhaps 103) nature – NOT of 101 nature.

  46. Benny June 17, 2018 9:05 am

    Anon.
    112. Adequate reason a) to deny grant and b) to demonstrate the assertion that the “invention” as claimed is not much more that the musings of a second year college student over the weekend

  47. Ternary June 17, 2018 9:57 am

    Benny, At least in the US there is no requirement to submit a working model of an invention to obtain a patent. System description is generally assumed to be an indication that an inventor is in control of the claimed aspects of the invention. This applies to complex physical inventions, mechanical inventions, chemical inventions and yes: software related inventions.

    For some reasons, very few people are upset about component/system assumptions in specifications of patent applications in mechanical inventions. But software related inventions really gets them upset, including the Supremes.

    I quickly read US9828094. The system description appears to be adequate and detailed. No major obstacles appear to sink the technology as required. That one of ordinary skill would need some time to program and implement the claimed invention is not especially shocking and is not an undue burden. Realizing a complex software project is not a sinecure, no matter what non-techs and Supremes believe.

  48. Anon June 17, 2018 12:21 pm

    Benny,

    As usual, I am left with the distinct impression that you simply do not understand the point at hand.

  49. Night Writer June 17, 2018 6:26 pm

    @40 Paul

    I am pretty sure what is happening is original US filings (i.e., inventions made in the US) have declined. There are more foreign filings (i.e., claiming priority to applications in other countries or inventions made in other countries ) that have kept the numbers up, but the indicator for the health of the US patent system for US companies is that it has decreased.

    I think we should get this clarified. (And I don’t have a problem with greater foreign filings, which I think is ironic as what is happening is that China is trying to use patents to fuel innovation and filing massive numbers in the USA while the USA is burning its patent system to the ground.)

  50. Anon June 18, 2018 7:56 am

    Night Writer,

    Do you mean Paul Cole @42 (as opposed to Paul Morgan @40)?

    Also, as I noted to Mr. Morgan, I would take your view one step further and would want to see the trend for US filers without counting the large Transnational corporations who merely have designated the US as their “home.” Such corporations may easily re-designate their home without impact to their undelying operations (and this is the type of juristic person, and attribute of “nationality” of that juristic person) that diverges from the real person. Any real person changing their “home” nationaltiy incurs real day-day effects. Not so with the large Trans-national. Thus it is no surprise then that it is the large Trans-nationals that are behind BOTH the weakening of the US patent system and international HARMonization. It is the essence of the Trans entity to not have real “home-decision” consequences that scream out that the benefits of the juristic personhood should not rise to the same level as real persons.

  51. Night Writer June 18, 2018 10:45 am

    @50 Anon

    I think what is happening is applications for inventions made in the USA have fallen.

  52. Paul Morgan June 18, 2018 11:34 am

    Since expressing doom and gloom personal views in these comments seem to be more of interest that actual statistics on application filings and their sources, I dug them out myself. They appear on page 19, Fig 4, of the official USPTO “Performance and Accountability Report for Fiscal Year 2016” It shows U.S. origin vs. foreign origin patents from 1962-2016. As also noted above from the recent Patent Commissioner’s internet talk, since 2008 BOTH have been significantly increasing, and their ratio remains about 50-50.

  53. Anon June 18, 2018 1:59 pm

    Thank you Mr. Morgan.

    Did you notice whether or not large Transnationals were tracked?

  54. Night Writer June 18, 2018 2:09 pm

    @52 Paul

    From Mr. Doom and Gloom: FIG. 4 is grants and only goes through 2016 so that data is years old. My understanding — not sure how many times I have to say the same thing–is that patent application filings from US origin are down.

  55. Paul Cole June 18, 2018 6:21 pm

    Any chance I might get the tags word?

    THE LAST WORD

    so over to Anon!

  56. Night Writer June 19, 2018 3:51 am

    @55 Paul

    ?? What ?? So I point out how the data does not reflect the last several years of original US filings and you post “THE LAST WORD.”

  57. Night Writer June 19, 2018 3:53 am

    Oh sorry. Mix-up with the Pauls.

    I think we have reached a tipping point.

  58. Paul Cole June 19, 2018 6:21 am

    THE LAST, LAST WORD (hopefully)

  59. Night Writer June 19, 2018 9:08 am

    Actually, Paul Cole, hopefully I will get a response about FIG. 4 being many years out-of-date for original US filings.

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