Anticipate This!™ | Patent and Trademark Law Blog

Oral arguments were heard today at the CAFC for In re Bilski.  The CAFC had earlier ordered an en banc hearing of Bilksi to address the following questions:

(1)  Whether claim 1 of the [Bilski] patent application claims patent-eligible subject matter under 35 U.S.C. § 101?
(2)  What standard should govern in determining whether a process is patent-eligible subject matter under section 101?
(3)  Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?
(4) Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?
(5) Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

Gene Quinn at PLI attended the oral arguments, and has a great post on the conduct of the judges, the opposing parties, and the amici present for the arguments here.

Professor Crouch at Patently-O reads his tea leaves here.

Listen to the oral arguments here.

See our previous AT! post providing background on the case here.

Per this recent press release at the State Intellectual Property Office (SIPO) of China:

On August 25, Open Day of the State Intellectual Property Office (SIPO) of China, SIPO launched a patent information Chinese-to-English machine translation online service, Li Yuguang, Deputy Commissioner of SIPO attended a ceremony to celebrate the event.

SIPO launched the service to meet global demands for Chinese patent information. The service allows English language searching for the bibliographic data and abstracts of the published Chinese patent documents, on-the-fly machine translation English results of the searched fulltexts (claims, specifications) of inventions and utility models will be provided as a helpful way for browsing Chinese patent documents.

The first launch of the patent information machine translation service is mainly for test purpose with an aim to collect users’ feedback during their use, which is of crucial importance for the further improvement of the machine translation readability. Technologies supporting the service are mainly developed by the China Patent Information Center (CPIC), a subsidiary organization of the SIPO.

The new database may be accessed here.

U.S. Pat. No. 6,983,493: Retractable table top for a toilet.

What is claimed is:

1. A device for providing a working surface while a user is seated on a toilet, said device comprising:
          a table having substantially planar top and bottom surfaces and a centrally disposed longitudinal axis, said table including a plurality of opposed edge portions equally spaced from the axis and extending substantially parallel thereto, said table further including a plurality of opposed end portions integral with said plurality of edge portions, said table further including a plurality of elongated legs having opposed end portions attached thereto and engageable with a ground surface respectively, said table further having a plurality of elongated support rods secured to said bottom surface and adjacent said plurality of end portions respectively; and
         a support member positionable on alternate sides of a toilet seat and comprising
         a rear end portion securable to a wall adjacent a toilet and extending outwardly and forwardly therefrom, and
         a telescopic front end portion connected to said rear end portion and being extendable along a substantially horizontal plane, said front end portion being removably attachable to one said plurality of support rods so that said table can be selectively moved between up and down positions and pivoted thereabout.

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Excerpts below from a recent interview with Commissioner Jon Dudas, via C|NET News.com: 

Patent Commissioner Jon Dudas says his office is all about staying “technology neutral,” so long as the invention meets certain standards.

“The system we’ve had has worked to promote technology for 200 years, and it can do that in the software industry, so long as you follow the principles that (a technology) is useful, new, and nonobvious.”

On particular topics, Commissioner Dudas was quoted as saying: 

On software patents: “Software, biotechnology, business methods–In the United States, the Supreme Court has consistently held that those are areas where there should be patents, and those industries have flourished.

“Specifically with open source, I think the two should coexist very well. If someone gets a patent, then that intellectual property has to be respected, but so long as that patent isn’t used, open source can be as open as it needs to be. You can license some (patents) and not license others. There are some who feel by definition you should only have open source or only have a patented model. The administration’s position has always been that…both open source and patents help innovation thrive.”

On business method patents: “We essentially said, we shouldn’t base whether or not something is patentable on what type of technology it is or even what kind of method it is…so long as it’s new, useful, and nonobvious.

“Probably in the last three years, of all the (business method patent) applications that have come in the door, the office has said 85 percent of these are not allowable. The patent system, I believe, is working very well… We’re starting to get a higher percentage of business method patents being approved, probably in the 20 percent range.”

On “so-called” patent trolls and whether they’re overhyped: “It depends on how someone defines a patent troll. ‘Patent troll’ is meant to be a pejorative term. Some have defined it as someone who doesn’t develop a project commercially. Certainly, someone who comes up with a great idea and licenses it, that’s a very efficient way to do it.

“I think the concern there is more a concern with the judicial system as a whole than it is with the patent system.”

On gripes by large technology companies that patent infringement fines are too high: “The administration has said we do think judges could give better guidance to juries. We definitely feel that in the case of damages, it would be good if judges could give very specific guidance to juries. With the provisions in the existing bills right now, the administration has said, ‘We oppose the entire bill based on that because they favor one type of damage model over another.’

“There are a variety of different factors you can apply to determine what the right compensation is, and you, as best as possible, want to mimic the market. But the bills direct you to a certain couple of factors that may or may not mimic the market. We’re saying the judge should tell the jury; don’t just say, ‘Here’s 15 factors; figure it out for yourself.’ The judge should tell jury, ‘Here are a number of factors. These 3 seem critical; look at factors 2, 5, and 6.”

“When they talk about damages awards and things like that, people say there’s a lot of bad patents. When you get to the point of a damages award, there’s a judge and jury that already determined this is a valid patent… By the time you look at damages awards, you’re talking about good patents and you’re talking about actual infringement of intellectual property.”

On weeding out “bad” patents from the get-go: “Making sure applicants can give good information up front…will lead to a much better patent system–more than anything else. (The Patent Office is proposing that applicants) do a basic search (for “prior art,” which is previously published technology that relates to an invention) and short report about why their invention should be patented.

“In 27 percent of cases, nothing is submitted in terms of prior art. In another 17 or 18 percent of cases, people just give us a long list of references. There really is a responsibility for people to come in and say, ‘Here’s why I think I deserve a patent; here’s some of the areas to look at.’ The decision will always rest with the patent examiner. The patent examiner will always do the full search and review and analysis.”

On reducing in-court patent litigation: “The administration proposed post-grant review (a process within the Patent Office where people would be able to challenge patents just after they’re issued). It has to be a true alternative to litigation. We don’t think the idea is to have another way to question a patent, and then you can go to court and you can go to post-grant. The standard we’ve held is that there should be a threshold in order to get a post-grant review, an actual threat of litigation.

“The second thing–this is the critical point–if you choose to go to post-grant review, any issue you raise or could’ve raised, you have to raise there, or you can’t raise it again. You don’t want an innovator to have hurdle after hurdle after hurdle after they’ve gotten a patent.”

On whether Congress and the Bush administration can reach an accord on new patent system rules: “We feel like senators and members are cognizant and care about concerns of the administration. Ideally we’ll have a bill with a letter from the administration saying we support this bill as it is. That’s our goal.”

On handling a flood of patent applications: “We’ve hired more examiners in terms of raw numbers and percentages in the history of the office. We’ve said very clearly, hiring more examiners in and of itself won’t be the solution. Even hiring 1,200 examiners, even increasing a lot of different flexibility initiatives that increase productivity…we still get more applications in the door than we’re able to examine.

“What we really need to do is get higher quality applications. The allowance rate, those applications that are approved, used to hover between 62 and 72 percent, back 35 to 40 years ago. In the last 6 years, it went up to 72 percent in 2000, then dropped steadily down to a 43 percent allowance rate. So what we see is 57 percent of what comes in the door doesn’t lead to a patent. “

On the long line to get a patent–and how some may game the system: “Most of the time when people say it takes me 33 months to get a patent, people think, “What’s taking so long?” The examiner only takes a few weeks. That time is all waiting in line. That line is getting longer and longer and longer–filled with applications that never get approved. What’s, in lots of ways, more disturbing is in over half the cases where we say this isn’t patentable, people just file again and get back in line.

“We put out a rule (that was supposed to take effect last November) saying that you can only do that three times. But we were sued. (A judge issued a temporary injunction against the rule.) Right now, the way the law has been interpreted is people have unlimited opportunities to refile their application. You have more opportunities to have us look at your patent application than you do to appeal your death sentence.

“We want to make certain that people can’t apply with a very broad patent application, which they know will get rejected. And then they get back in line, and meanwhile, they’re looking out and seeing what’s happening in the market. Sometimes they see that if they focused that broad claim, it could cover an existing technology… Then, (going by) the date of first filing, they can then say, ‘I own that technology’… That’s a very real concern. That gets more in line with concerns of troll behavior–someone who is literally watching the technology…so they can rise up out of the bridge and sue people.”

JW Note:  Insightful interview.  PLI Blog - Quinn thinks the views espoused by Dudas reasonable.  Thoughts from our readers?

In light of the recent self-unmasking of the Patent Troll Tracker as Cisco employee Rick Frenkel (and particularly in view of the recent litigation surrounding his anonymous blogging), Cisco has implemented a new corporate blogging policy, which notably states: 

If you comment on any aspect of the company’s business or any policy issue in which the company is involved and in which you have responsibility, you must clearly identify yourself as a Cisco employee in your postings or blog site(s) and include a disclaimer that the views are your own and not those of Cisco. In addition, Cisco employees should not circulate postings they know are written by other Cisco employees without informing the recipient that the author of the posting is a Cisco employee.

See the Cisco post unveiling the new policy here.  Probably not a bad policy to emulate, if your company or its employees operates or posts to blogs or like websites.

The U.S. Patent Office regularly schedules On-line Chats for independent inventors to ask questions about the patenting process.  The transcript from the chat held on February 28th, 2008 is now available here.  Transcripts from each of the chats held from October 2004 to the present may be found here.

The next USPTO on-line chat is scheduled for April 15, 2008. 

The Patent Prospector has a well written post today that creatively ties the USPTO’s recent comments concerning the plummeting allowance rate to the advantages of performing a good prior art search prior to preparation of a patent application.  A highly suggested read if you have a few minutes to spare. 

On February 27, 2008, USPTO Director Jon Dudas spoke before the U.S. House of Representatives Committee on the Judiciary in a “USPTO Oversight Hearing”.  His prepared testimony may be found here.  Others who also gave testimony include Robin Nazzaro from the U.S. General Accounting Office (GAO), Robert Budens, the President of the Patent Office Professional Association (POPA), and Alan Kasper, the First Vice President of the American Intellectual Property Law Association (AIPLA).

A USPTO press release relating to the hearing may also be found  here.

A notable quote from the testimony of Mr. Dudas follows:

Mr. Chairman, as we look to the future, we will make every effort to improve on our successful record in fiscal year 2007. Our patent examiners completed over 362,000 patent applications in 2007, the largest number over, while maintaining for the second year in a row an examination compliance rate of 96.5 percent, the highest in a quarter of a century. The allowance rate for patents is currently 44%. This is in contrast to allowance rates in excess of 70% just eight years ago.

Also, over the past few years, the percentage of Board of Patent Appeals decisions in which the examiner is affirmed or affirmed in part has increased from 51% to 69%. Finally, since the pre-appeal brief program was established in midyear 2005, the percentage of applications reviewed under the program in which the examiners action is deemed correct has increased from 45% to 56%.

Allowance rate of 44%?  BPAI affirming rejections 69% of the time?  A seemingly difficult time to be a patent applicant.

One has to wonder whether a dropping allowance rate is reason to celebrate.  We are admittedly biased, but does a dropping allowance rate really mean the patent system is improving?  Or does this just mean that more inventors are being denied their right to patents for their inventions?   

35 U.S.C Section 102:  A person shall be entitled to a patent unless–

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