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is the founder/owner of the newly launched Onyx IP Group in Orlando, Fla. With 15 years of experience in the field of IP law, he was the inaugural graduate of Harrity & Harrity’s Minority Firm Incubator, a program initiated in 2019 to foster minority firm ownership and to address the fact that the practice of law remains one of the least diverse professions in the U.S.
Asserting that diversity has made significant strides within today’s legal profession would, unfortunately, not be a winning case. And while it’s a hot topic today, the true importance of diversity, equity and inclusion seems to be overlooked. The fact of the matter is, embracing diversity is just good business. The practice of law is advanced by a diverse team. With diversity comes quality legal innovation. We need to manage conscious and unconscious bias to be open to people from all demographics, ethnicities, genders, orientations, educations, perspectives and backgrounds. Instead of a homogenous group of professionals with a singular approach, with a diverse team you gain the benefit of differential skillsets, outlooks, approaches and ways of processing that make a team stronger, bringing varied insights to cultures, systems, procedures and policies.
In many of the decisions, the examiners and appellants had an opportunity to make arguments based on Alice before the PTAB reached a decision. Yet, the outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection. As indicated above, the reversal rate for a § 101 rejection in December 2016 based on Alice was less than 9%. Equally worrying for potential appellants is that some decisions introduced a § 101 rejection even when prior art rejections were reversed. The PTAB seems to have stopped the practice of urging examiners to review the claims for compliance under § 101 in light of Alice, and, instead, has become more active in introducing § 101 rejections on their own.
The United States Supreme Court is commonly known to resolve difficult issues of law. Yet, Alice v. CLS Bank[ii], last year’s unanimous Supreme Court decision, has caused confusion about whether computer-implemented business methods and software innovations are patentable under 35 U.S.C. §101. The question of patentability of software-related innovations – even those involving merely implementations of business-related innovations – seemed…