Iancu Calls for Section 101 Fix in Address to AIPPI Congress

By James Nurton
September 22, 2019

“I believe our [Section 101] framework gives more consistent results more often. If you like the [US]PTO approach, make it known. We want to find consensus from industry.” – Andrei Iancu

USPTO Director Andrei Iancu said “something has to be done about” Section 101, as it has been thrown into flux following various U.S. Supreme Court cases, in comments made at the AIPPI Congress in London, United Kingdom last week.

Iancu took part in an hour-long discussion with AIPPI Reporter General John Osha, and also took questions from the audience last Monday. He addressed topics including AI, anti-IP sentiment, litigation costs, bad faith trademark filings and gender parity. But it was issues of patent eligibility that were chief on his mind.

Iancu said the Administration “has tried to bring consistency and predictability” to Section 101 with its January 2019 guidance, but added: “Courts are independent. They don’t have to follow our guidance. And so far, I have seen no evidence that they want to.”

The Director argued that the “key problem” is that case law in the past few years has introduced an inventive step test into Section 101. “You don’t need it,” he said. Instead, he proposed that Section 101 “should only keep out things that are never patent eligible however brilliant they are, no matter how careful and detailed the claims,” such as mathematical formulas and mental processes.

How that can be achieved, though, remains to be seen. “I think the legislators can legislate. Courts can do it too, including the Supreme Court,” Iancu said. In response to a question from the audience, he said he was optimistic about a Congressional solution, as it was a bicameral, bipartisan issue: “I think it’s doable with the PTO framework as a starting point … I believe our framework gives more consistent results more often.” And he urged patent practitioners: “If you like the PTO approach, make it known. We want to find consensus from industry.”

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The Impact of AI

Another topic Iancu addressed was artificial intelligence (AI), which he described as “absolutely real” and likely to have an impact within the next two to three years. He described AI tools as “must-have not nice-to-have” for IP offices, and said they are being developed in areas such as text search, image search, and classification. AI would also become essential given the “exponential growth” in prior art, as he didn’t think “it’s humanly possible or realistic” for one examiner to identify all relevant prior art in technical fields and multiple languages. He added that various IP offices are working on this issue and said: “The best technology will prevail.”

Turning to policy issues concerning AI innovation, such as how inventions created entirely by machines should be treated, Iancu highlighted the 12 questions recently published by the USPTO and urged people to respond to them by the October 11 deadline. He also noted that the European Commission is planning to publish a policy statement on AI within the next 100 days.

One question he highlighted concerns what IP protection should be provided for data. “Right now, companies maintain it as a trade secret, but that might not be the perfect answer in the long run. Might there be some other form of IP?” he asked. But he added that the answer might be simply: keep on doing what you’re doing. After all, the invention of the camera did not mean the end of copyright.

Harmonization Initiatives

While in Europe, Iancu had also held meetings at the European Commission in Brussels, the European Patent Office in Munich and the UK IP Office, where he discussed preparations for Brexit. In his comments, he commended the progress made on patent harmonization, citing the Patent Prosecution Highway and Global Dossier. But he acknowledged that agreement had been much more difficult on substantive issues, such as a grace period: “I don’t know if we will make progress on that. But we should keep trying.”

He also warned those in the audience against using “negative, pejorative terminology” about IP, saying that abuses should be attended to and solved, but it was damaging to dwell too much on any negative implications. “We need to continuously raise the profile of IP,” he added.

In a speech at the Opening Ceremony of the Congress, former England and Wales Court of Appeal judge, Professor Sir Robin Jacob, criticized recent decisions by both the U.S. Supreme Court and UK Supreme Court and identified seven challenges for IP practice in the future. These included:

  • The risk of competition law and economics eroding patents “based on theories [such as hold-up] rather than evidence”.
  • Protecting new methods of diagnosis—Professor Jacob said the UK Supreme Court “has gone wrong” in its recent pregabalin decision and described its approach to plausibility as “a very dangerous doctrine.”
  • Maintaining an effective litigation system with bright judges. In this respect, he commended China for the progress it has made.

He also argued that there is “too much IP” in certain areas: “The over-reach of trademarks is getting greater and greater and doesn’t do any good whatsoever … Copyright protection is miles too long and is ridiculous.” But he expressed confidence that patent law would adapt to accommodate AI, which he described as “not a major problem.”

In his welcoming speech, former IP minister Jo Johnson acknowledged that there is “considerable turbulence” in UK politics due to Brexit but said: “The UK will remain one of the best places to obtain and protect IP rights going forward.” He added: “IP touches everything that makes modern life easier, more prosperous and more enjoyable.”

About 2,400 IP practitioners attended the 2019 AIPPI Congress, and 49% of the more than 100 speakers this year were women. Resolutions were passed on questions addressing copyright in artificially generated works; consumer survey evidence; IP damages for acts other than sales; and plausibility.

 

The Author

James Nurton

James Nurton is a freelance journalist and editor, based in London, United Kingdom. He was previously editor of Managing Intellectual Property magazine and has worked on publications and events for AIPPI, AIPLA, INTA, WIPO, the EPO and EUIPO. He is editorial consultant to MARQUES and a partner of Lextel, which provides editorial and thought leadership services to law firms.

For more information or to contact James, visit his Firm Profile Page.

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 22 Comments comments. Join the discussion.

  1. concerned September 22, 2019 4:40 pm

    I appreciate the efforts of the Director.

    There is a disconnect with his examiners though. The examiners do not even apply the USPTO “practical application” policy, which practical application is consistent with Benson:

    tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 566 U. S., at ___ (slip op., at 2). At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2). Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U. S. 175, 187 (1981). “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972).

    The examiners also insist that a process using a generic computer has to improve the computer hardware. What SCOTUS ruling mandates this improvement, certainly not Alice? We shall see if SCOTUS will even answer the preceding fair question in the TT certiorari. Doubtful per many on this site.

    And improvement in the computer hardware is certainly not mandated in examples 34 and 35 of the USPTO guidance of 2014. The process only has to be a practical application not well known, not routine and not well understood in the applicant’s own field of technology, (not all fields of technology which is another examiner go to rejection).

    While we hope for a Congressional solution, it would be nice if the USPTO examiner follow their own policies during the interim.

  2. Ternary September 22, 2019 6:06 pm

    “Instead, he proposed that Section 101 “should only keep out things that are never patent eligible however brilliant they are, no matter how careful and detailed the claims,” such as mathematical formulas and mental processes.”

    Sorry, Director Iancu,however well-intentioned, you are too limiting. You are fighting a last century’s battle. Mathematical formulas are now at the heart of new technology. From advanced image processing to artificial intelligence to modern cryptography. And the mental process fiction is what caused Alice in the first place. SCOTUS believed and believes that if you can think it, you can program it on a computer. Thus, certain inventions, in SCOTUS’ opinion, are directed to abstract ideas (because they are a ‘mere’ programming of an abstract idea, in the opinion of SCOTUS.) That is what this whole mess is all about. This is also the trouble that inventors such as “concerned” are mired in. The whole process of Social Security rules are human rules, made up rules, that can be modified by human intervention. Thus directed to an abstract idea of human origin, according to Alice. Mathematical expressions, from that perspective, are also human rules, made-up rules if you want. And thus abstract.

    I would not be surprised if SCOTUS, even after a change in 101 enacted by Congress, will continue to declare certain computer implemented inventions to be directed to an abstract idea. Potentially referring to speeches made by experts/authorities like Director Iancu. Like: “Director Iancu of the USPTO acknowledged that mathematical formulas are not patent eligible.”

    Anything under the sun, including mathematical formulas and mental processes, performed by a machine, providing a useful result should be patent eligible.

  3. angry dude September 22, 2019 7:33 pm

    Ternary @2

    Mathematical formulas are just shortcut conventions on how to express certain operations on paper for everybody (except Scotus critters) to understand
    There is no utility beyond that
    Utility arises when someone converts those formulas into computer-executable code thus creating a specialized machine
    Whether it’s done in software (programming “general-purpose” computer) or hardware (making an ASIC) is not even relevant

  4. concerned September 22, 2019 8:03 pm

    And with regard to mental processes and/or organizing human thought, no explanation is given by USPTO or SCOTUS how hundreds of thousands of working professionals and also (disability) attorneys across the nation could not perform such an alleged mere mental task for decades if that is the extent of my invention.

    Until the USPTO or SCOTUS can provide such an explanation, a little professional courtesy is in order as well as the patent. Now that would be new and useful.

  5. BP September 23, 2019 8:23 am

    Too little, too late.

    The “true” AI story is: “Under Utah’s newly approved plan, an accounting firm could soon offer legal services in the state alongside its accounting services, a technology company could use artificial intelligence to help consumers complete legal documents, or a nonprofit could allow a paralegal to offer limited legal advice to clients without lawyer supervision.”

    The illegal technology-driven advertising/privacy theft/patent pirate monopolies of Silicon Valley will continue to erode the legal profession. Imagine a clickwrap agreement that holds them harmless for any errors or omissions in their AI driven wills, trusts, divorce, patent, or other “legal” documents. Or, that uses your private information (and info as to allegations against any opposing parties) for directed advertising, lobbying, psychological manipulation, credit ratings, and more.

    The anti-patent sentiment at the USPTO today demonstrates that the past director served her masters well.

    As @1, Concerned notes, more and more examiners are abandoning the January 2019 guidance. The examples have been rendered meaningless.

    Iancu’s getting a schooling as to who is in charge.

  6. B September 23, 2019 1:22 pm

    ““Instead, he proposed that Section 101 “should only keep out things that are never patent eligible however brilliant they are, no matter how careful and detailed the claims,” such as mathematical formulas and mental processes.”

    I actually agree with this.

    No one should be able to patent what goes on in the human mind, and how would you prove infringement anyway.

    Mathematical formulae by themselves have no use. It is, however, easy to apply a mathematical formula to a particular end, such as curing rubber, data compression, etc.

  7. Ternary September 23, 2019 3:37 pm

    “Mathematical formulae by themselves…” That is not what Director Iancu says. It is also not what Examiners, PTAB and the Courts limit themselves to.
    Mathematics in its application is extremely useful. Basic arithmetic (addition and multiplication) are human inventions that allow many useful applications. Calculus is a human invention. So are quarternions, invented by Hamilton and applied by Maxwell in his 20 laws of electromagnetism and vector analysis, invented by Heaviside to reduce the 20 laws to the 4 Maxwell Laws we now know.

    For some strange reason, mathematicians prefer to talk about “discovering” or “describing” novel mathematical concepts. Like there is a mathematical space where all these concepts and formulas exist, waiting to be discovered. That is of course nonsense.

    As far as I know, no one nowadays tries to claim a mathematical formula per se. It is a fiction, a red herring to justify the “abstract idea” ineligibility. The abstract idea fiction is used to almost any recitation of a mathematical formula in a claim, using the completely empty and misleading allegation that the formula in a device claim “pre-empts” a person to use that formula. Absolute horse manure. To complete this Theatre of the Absurd, the Courts defend their idiotic decisions that the Formula is limited to computer devices and thus any computer user is pre-empted to use that formula on a computer. So, the claim still pre-empts the use of the formula. They should all be stand-up comedians.

    If you want a good laugh about the limited understanding of the Court on math, re-read the decision in Benson. They really have no clue.

    And before you want to agree with Director Iancu, read the original RSA patent (4,405,829). The claims are full of formulas. The basic invention is to apply Euler’s theorem (a mathematical concept) to exponentiation. And if you select large enough numbers therein, a computer, let alone a human, is unable to factorize numbers used and generated. I am not the only one who is concerned that, due to the mathematical description, nowadays RSA would be patent ineligible.

    Many people have a distaste and/or fear for math. I assume many Judges and Justices are among them. Scientifically (let alone mathematically) unschooled people are determining the direction of the patent system. Don’t cater to these uneducated. Do not agree with idiotic statements, just to advance the discussion. And if you want to be critical, be extremely precise, because your words will be used against you.

  8. American Cowboy September 23, 2019 4:00 pm

    Iancu’s getting a schooling as to who is in charge.

    The Deep State, clearly.

  9. Anon September 23, 2019 5:09 pm

    B,

    I agree with the particular expression of yours that true mental steps are the type of things that would not be able to have infringement proven anyway,

    That being said, the real problem is that the smokescreen of “mental steps” is being used to deny innovation protection for innovation within the computing arts.

    The real problem is that protection for innovation is being sought to be denied when that innovation is merely reflective of the Kondratiev fifth wave.

  10. Paul Morinville September 23, 2019 7:13 pm

    “harmonization”…. I’ve heard that term before. The last time it brought us the PTAB. What will it bring this time in our race to become mediocre like the rest of the world?

  11. Pro Say September 23, 2019 8:11 pm

    “Courts are independent. They don’t have to follow our guidance. And so far, I have seen no evidence that they want to.”

    While disappointing (though not surprising) that the Courts are not following the well-founded guidance, IT IS surprisingly disappointing to see many Board panels also not following the guidance; often by giving lip service to the guidance, but then ignoring the multiple guidance step-by-step requirements as they proceed to go on their merry way doing whatever they darn well please.

    So thank you Mr. Director and Patent Office leadership for your valiant efforts to end this 101 / eligibility morass.

    Now how about actually enforcing the mandatory guidance.

    You know; making mandatory … mandatory.

  12. B September 23, 2019 10:33 pm

    @ anon “That being said, the real problem is that the smokescreen of “mental steps” is being used to deny innovation protection for innovation within the computing arts.”

    Absolutely. That retard Justice Stevens first applied it to computing in Flook, and did so citing pre-1952 cases. Then he doubled-down in his dissent in Diehr, and tried again in his Bilski concurrence. One of the worst justices ever.

  13. orbital September 24, 2019 4:42 am

    No software developer on earth should be bothered by patents.

    We deserve free speech, not intervention of the state between us and our keyboard.

  14. concerned September 24, 2019 8:49 am

    “That being said, the real problem is that the smokescreen of “mental steps” is being used to deny innovation protection for innovation within the computing arts.”

    I agree. If SCOTUS and USPTO (examiners) want the computing arts not patentable, just officially state it so the public knows where we stand. Official memos and SCOTUS case law supporting computing art patents that solve real problems, then lower courts and USPTO rejecting the same is harmful to inventors. Mental steps….everyone in my profession must be brain dead as my solution escaped many experts for decades (since inception of the program) if the invention is allegedly just mental steps.

    Charles H. Duell, Commissioner of US patent office in 1899, was correct when he stated that “everything that can be invented has been invented.” That is everything invented that will get a meaningful and enforceable patent.

    It just took a few SCOTUS decisions to prove him right.

  15. Anon September 24, 2019 12:09 pm

    orbital,

    Anyone can have an opinion, and thus you can have yours.

    Here, the aim is to have an informed opinion. And that means more than merely “informed” with the rhetoric of the Tech-Dirts and Slash-Dots that is NOT “informed” but rather is “Misinformed” (or if you prefer, MALformed).

    You do realize that the computing machine component of software is merely a design choice of computing wares and that such is the epitome of having a patent system. You confuse “First Amendment” with utility and innovation protection, and neglect the plain fact that innovation protection systems (such as BOTH patents and copyright) operate BEST with both a carrot and a stick approach.

  16. concerned September 24, 2019 12:10 pm

    orbital@ “No software developer on earth should be bothered by patents. We deserve free speech, not intervention of the state between us and our keyboard.”

    Assuming these inventions allowing software programming would have surfaced without incentive. Patents are only a 20 year period, please feel free to use the old way of doing business if the costs of the patent is not properly priced.

    I imagine Willie Sutton wanted to spend his ill gotten bank proceeds without police intervention.

  17. Paul Morinville September 24, 2019 12:40 pm

    Orbital @13. Then I suppose you will release all of your code with no restriction to the world free of charge. If you do, you are not hypocritical. If you dont, you value the fruit of your labor, but do not value mine

  18. Ternary September 24, 2019 1:50 pm

    Orbital @13. Stirring the pot, don’t we. My hunch is that you are not a software developer.
    Fact 1) No patent owner will come between you and your keyboard. It is physically impossible. Only when you sell a program in the US, copied from a US patented method will you run a slight chance of being warned to cease and desist. For the rest, you can code, steal, copy to your heart’s content, if you keep it to yourself. But that, of course, is not what you want. You want to profit from another person’s hard work, without any form of compensation. Your keyboard remark is merely to stir up emotions.

    Fact 2) You are most likely not smart enough to create software methods that have been or are currently patented. The inventors of novel software methods patented their inventions for a reason. They want to protect their inventions and/or receive some compensation and not have it marketed or stolen by free-loaders.

    Fact 3) There is nothing to limit you to invent novel software methods and publish them to create prior art against patent applications. Go ahead mister smarty-pants, make our day. Show us how clever you bunch are. Publish the next RSA, or LWE or Elliptic Curve based cryptography without protecting it in some way.

    I suggest you go your way and make all your software freely available. Nobody in favor of patents will tell you not to. Let others obtain patents to protect their work. You don’t have to steal somebody else’s work. Really, it is your own choice.

  19. Eric September 24, 2019 7:26 pm

    @24., ‘orbital’:

    No software concern on Earth should have the power to ruin the entire field of inventing for inventors.

    Would you or any of your coding colleagues tolerate an inventor dictating to you, your programming language of choice? No? How about – which computing devices being permissible to use for programming? Why not?

    If ‘not’, then: how dare you presume to dictate to inventors, how patent law “should” be applied; especially to *NON-software inventions*.

    Your software-centric view of the world is unfortunately typical: extremely selfish and myopic; as if NO other person or interest in the world, should “ever” come between coders and their precious keyboards.

    You programmer-coder types should get out and take in some sun from time to time; it might just begin to teach you that others’ concerns are not ‘merely beneath’ your sanctimonious, overweening attitude presuming special privileges, only for the ‘superior’ coders.

    [What an a** – on THIS blog? – such cavalier, truculent prejudice].

  20. angry dude September 24, 2019 10:31 pm

    orbital @13

    I just wrote a computer program talking over VPN to my 3D printer and its already printing exact copy of the Bunch-of-Balloons (substitute with any patented hardware product sold at Walmart or elsewhere)

    This is free speech in a free country so, please, bug off with your patents…
    Sue my 3D printer (in China) for patent infringement

    Dude, “software = hardware”
    Write it on your forehead and give it a rest

  21. Anon September 25, 2019 9:02 am

    … and I thought that maybe my comment to first time poster “orbital” was perhaps a bit stern…

    😉

  22. B September 25, 2019 4:58 pm

    @ anon “… and I thought that maybe my comment to first time poster “orbital” was perhaps a bit stern…”

    Orbital has a point. I was about to buy a copy of every Microsoft product and resell it for 10 cents on the dollar to everyone in the world. Forget working for a living; best to live off the labor of others.

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