As you have probably guessed, Sue D. Nym is not a real person. Occasionally we receive an article and the author wishes to remain anonymous. All such anonymous posts, whether contributed by a man or a woman, are attributed to Ms. Nym.
In an article published on April 23, 2017, Gene Quinn wrote about President Trump’s workforce reduction plan and his proposal for what it should mean for the United States Patent and Trademark Office. I agree with many of those proposals for reducing the size of the USPTO in accordance with the mandate set forth by President Trump, but believe that concentrating on a reduction in the number of patent examiners is not the only or necessarily the best approach… Review of USPTO middle and upper level management to determine who assigns junior, senior, primary and supervisory patent examiners to specific art units and reassignment of Office personnel is necessary.
The Australian Patent Office yesterday released its new guidelines in response to Australia’s High Court decision on the patentability of genetic material. The good news for Australia, though cold comfort for us on the other side of the Pacific, is that the Australian Patent Office has shown our counterpart US institutions the correct way to interpret and apply an important new case carving specific subject matter out of the broad default of patent eligibility. Rather than declaring ineligible from patenting everything under the sun “involving” a law or product of nature, Australia has instead read the High Court’s decision faithfully yet narrowly to exclude exactly what it said it excluded.
A couple months ago I commented on Ex parte Khvorova, expressing disappointment in its analysis and concern over what this might mean since it is “the first PTAB decision in molecular biology since patenting in that field got turned upside down.” To follow up on these notions, and to give credit where credit is due, I wanted to briefly comment on Ex parte Boyden, which the PTAB issued September 2, 2015.
The first and most critical task in most eligibility analysis is carefully and precisely defining the subject matter of the claims as well as the natural phenomenon that is potentially being claimed. The superficial definitions in current court decisions are usually found in the part of a decision where the court explains what the patentee “essentially” or “generally” claimed. I understand that judges are not technology experts, but the current shortcut of boiling claims down to their “essence” is particularly problematic in a § 101 case. Everything is a “natural phenomenon” if this term is treated expansively.