Last week I talked about the pending legal case between CLS Bank and v. Alice Corp., now I would like to continue further with the topic of patent eligibility.
In the article posted on PatentlyO, the author mentioned about the difficulty of the patentability.
Whether a subject matter is patentable is determined by possibly a judge or by a jury and a patent examiner. I can certainly imagine a patent examiner should know what s/he is talking about in terms of the expertise in the relevant technical field. However, a patent examiner may have little knowledge of legal matter, which judges often communicate in such terms. Whereas a judge usually doesn't have much understanding of the technical side of the subject matter. This leads to the question of how to determine patentability? Who should be the one that finalizes the decision? Or even better, how do the expert and the judge should work together to draw a fine line of patentability?
Luckily, USPTO (United States Patent and Trademark Office) put some effort into simplifying/clarifying the patentability process by providing useful information:
- Flowchart
- Guideline reference
Note that the second question in the flow chart asks whether the claim involves judicial exception. This is the issue of CLS Bank v. Alice Corp. and many other litigation cases. Judicial exception is a claim involves an abstract idea, such that it needs careful judgement on the novelty of the idea.
Though each question can only be answered yes or no, the final decision is made on the totality of the weight for each question. Therefore, it really is not a yes/no question, more of a evaluation process that involves different degrees of judgment. I would like to discuss a little bit of the details about each factor USPTO weights based on the provided guideline.
Hi Rae! I want to commend you on your well written, interesting posts and YouTube video. I especially appreciate your intelligent writing, the great links/references you include, and that you embed the YouTube video-clips in your blog.
ReplyDeleteGiven that one would expect the decision maker to know both the technical and legal aspects of patents, I think having two experts each in their own field is sufficient enough. The subjects of law and patents are very dense, and I would expect it very difficult for a single person to be completely competent in both areas, not that it is impossible. As you mentioned, the process is more of an evaluation rather than a yes-no matter. Therefore, the collaboration between the judge and patent examiner will lead to a proper deliberation.
ReplyDeleteI like that you went one step further to draw on analysis. As you mentioned, the process seems to be more of analyzing the patent rather than it should be a patent or no. Also, I read from other articles that one has one or two appeals if it gets denied. Patent eligibility on software seems to be controversial though.
ReplyDeleteI think the overall impression I got from reading the guideline on USPTO's website is that everything is very vaguely defined and can be interpreted very subjectively. Take for example the third factor for eligibility, they asked if the claim recites something "significantly different" than any judicial exceptions, which in itself are already hard to define. I think this matter of ambiguity and subjectivity plays a huge part in why so many patents get rejected in the first place and require further rounds of appeal to obtain approval - I think it is necessary that the examiner meet with the inventor and personally learn about the details of the patent from the creator's perspective in order to truly determine the patent's eligibility. Making a judgement through simply reading about one's invention on paper often can lead to misinterpretations, that is why I think every inventor should strive for the opportunity discuss their intentions and ideas with the examiner in person upon rejection. Just some food for thought!
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