Posts Tagged: "Eligible Subject Matter"

Dissecting Dissents for Ex Parte Appeals

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB. A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge. Relying on internal USPTO policies and former PTAB judges’ personal experiences, a recent spate of commentary has provided different explanations regarding the rarity of dissents for ex parte appeals. We were still left wondering why some judges go out of their way to write dissents. In an effort to better understand this issue and what the dissents might reveal about the ex parte appeal process in general, we conducted a statistical analysis of dissents in recent ex parte appeal decisions.

Eli Mazour & Sora Ko

September 10, 2018

Software Patent-Eligible Subject Matter: Claiming Improvements in Computer Functionality

Particularize the claims. This helps overcome the “abstract” part of a 101 rejection. Put details into the claims to define the steps performed in the software and hardware to a granular degree. Don’t claim a result; claim the steps performed in accomplishing the result. That is, define the software computer program and hardware in discrete steps. Define what’s going on in each step of the computer program code. Go to the level of a software design engineer that annotates their code, to inform others as to what’s going on in the code. If there is an algorithm claimed, particularize the claims to include the steps performed in implementing the algorithm.

G. Michael Roebuck

August 8, 2018