The Patent Office is “adjusting” to a Supreme Court ruling by ignoring it
eff.org
eff.org
In this case, the USPTO released new guidance on how reviewers should consider the Supereme Court's Alice decision. EFF thinks this guidance is bad. They have metrics and talking points. But the EFF fail's to deliver the single most important information:
What did the new guidance say! -- EFF is silent on this.
WHY? I think in this case it's because the EFF doesn't like software patents at all. They know much of their audience feels the same way. So they don't care about actually explaining what the new guidance says-- All they care about is presenting metrics about increased software patent grants that show how bad the new policy must be, because it's doing what the EFF hates: granting more software patents. I find it emotionally manipulative, and the more time goes on the more I avoid their articles.
They used to be better than this.
Did they? I've been a member for 20 years and I don't remember it ever being different.
They've always been a pro-technology anti-patent lobbying machine. All of their materials are biased this way.
I don't agree with everything they lobby for, and I tell them that when I renew each year. I know a few of the folks there, and from what I hear, they take that into consideration when they discuss budgeting.
But I'm pretty sure they've always been like this.
Alice is an incoherent and disjointed holding (well several holdings). Which is no surprise because trying to craft a stable informative legal standard that limits or improves so-called software patents based on 35 USC 101 (subject matter/patentabilty) is inherently unworkable.
Besides, patent attorneys are usually smart enough to draft around Alice-type subject matter issues. There were so many early Alice rejections at the USPTO and patents invalidated in courts because they usually involved applications or patents that were drafted before Alice was decided. Alice changed the standard out from under them after they were filed or granted.
Patent attorneys familiar with software technology could/can easily draft around Alice limitations now that they know what they are.
I think that's more or less the state of affairs they wanted to get to, but they never quite worked out any comprehensible way to get to that and just kinda punted.
This makes sense to me for some reason. I wish this remained the 35 USC 101 standard for software patents, I think it cleanly resolves subject matter problems. Then the courts and Congress could focus on developing better law using 35 USC 102, 103, and 112 rather than trying to use subject matter, which is by design the broadest patent law on the books.
Given that inventions are not rivalrous and actual practitioners of the art don't generally go around reading patents in the first place (other than, perhaps, those newsworthy due to litigation or sheer idiocy), this makes an area ripe for trivial lawsuits from people taxing the work done by others while providing no actual benefit from the patents themselves.
This leaves the two arms of the scale badly unequal. Supposedly, we derive the benefit of knowledge in exchange for patents. Instead, we're getting "do X on a computer" we already know how to do and make for any given X in exchange for a huge number of lawsuits from patents filed by lawyers who have never actually built a thing, who have at best a vague idea as to how something might be done.
The real work is the implementation. Maybe you could convince me if they actually had to build the software and release it to all alongside the patent so that society benefited from that when it expired, but the patent terms are too long for such software to be useful at the end and the various patent lawyers I've interacted with are adamantly against that idea.
However, I think 35 USC 103 (non-obvious requirement) could be used knock out the X plus Computer claims these days.
E.g., If X is not novel and computers are not novel -> no invention because it is obvious to combine them.
Also, I agree that USPTO (and courts) should require more proof of invention/implementation. This could be handled by increasing the requirements for meeting 35 USC 112 (enablement). For example, I think it would reasonable to require more explicit disclosure of pseudo code, data structures, protocols, sequence diagrams, state machines, experimental proof of claimed performance improvements, and such. Quality software patents tend to have a lot of this stuff already. The idea here is to prove the inventors have actually invented the innovations they are claiming not necessarily restrict the invention to one particular data structure or protocol.
Some bio/chem patents have additional requirements when compared to gadget patents. Software patents could be improved similarly.
I would also be open to considering changes in the length of patent terms for certain types of software patents. Not sure how that rule would work though, because there really is no such thing as a software patent. Inventions in so-called software patents are usually described as being part software and part hardware with the assertion that some or all of the software parts could be implemented as hardware or vice versa.
We got into this current mess, because courts latched on the subject matter arguments instead of looking harder at novelty, non-obviousness, and enablement. I am not sure why they didn't rely on obviousness more when they started down this path. The early software patent cases screwed things up back when no one knew how to handle them.
This is a fair point, but 'novel' seems to get read as 'someone has already patented this before'.
> This could be handled by increasing the requirements for meeting 35 USC 112 (enablement).
This is also reasonable, enablement right now is kind of a joke, higher standards for that would generally be good. I'd like to see any working implementation of the claimed invention in software for patents that include that. It need not be a fully formed app, but it should compile and demonstrate whatever is claimed, IMHO.
> Some bio/chem patents have additional requirements when compared to gadget patents.
I don't claim to have read many patents in that area, but I'd expect that bio/chem patents should have to give the chemical formulas and synthesis, which should do a lot for enablement.
> I would also be open to considering changes in the length of patent terms for certain types of software patents. Not sure how that rule would work though, because there really is no such thing as a software patent.
Yeah, I know there are complications on defining 'software patent', but generally we understand when someone patents a process performed on an ordinary computer or something similar.
> The early software patent cases screwed things up back when no one knew how to handle them.
They're trying too hard to preserve existing precedent while moving in a new direction. I agree that they need to reform some of those factors to get to a better place and that the existing rulings just aren't very clear.
Reading the EFF's article, it sounds like they want to take a tact much like the one I want. I just wish the Supreme Court had written a clearer holding.
If you really wanted to know what the guidance was, literally the first link in TFA leads to an EFF backgrounder that explains it, including linking to the actual source.
EFF's mission is to effect positive change in technology. If you disagree with their views on software patents, you should expect to not like what or how they have to say. Their mission is not to convert you, it's to drive support and engagement for their ideals among their supporters and undecideds.
I personally do agree with them on software patents, and so I approve of their methods because I can see that they optimize for effectiveness of their campaign, as they should.
The EFF clearly knows what the guidance says, it would have taken little effort to give an abstract of it. But more and more they seem to have little interest in generating reasoned agreement with their cause, only reflexive support induced by anger and indignation. The cynic in me says it's because they realized it works better, gets more donations. But regardless if their intentions, it comes off as a bit scummy.
And patent trolls? They’re hardworking American businesspeople? Last I checked, their tactics were vexatious litigation, bullying, browbeating, and buying support.
In short, if you’re going to fight a pig, you’re going to have to get in the mud with it.
If you just stand there making reasoned arguments as to why the pig should lie down, the pig will just look at you, shit on the floor, and continue doing what it was doing.
If you want to be a “good guy” patent holder, why don’t you get involved in fighting patent trolls?
...no? Well, that’s because, unfortunately, the distinction between a troll and a “good guy” is a fine, often blurry line.
There are other ways to monetise research, like, actually building things.
Why not try that?
> High Tech companies, both large entities and SMEs, face a disproportionate number of NPE-related threats as compared to other sectors.
https://portal.unifiedpatents.com/ptab/annual-report?year=20...
I suppose, to be fair, if you are an NPE asserting a claim over what is legitimately your invention, are you a troll?
Perhaps, since NPE enforcement is basically a game of threats and legal costs, you don’t see what is actually happening?
Opinions vary.
My position is quite simple: if you are an NPE, you’re a troll.
Use it, or lose it.
In this particular case, where the messages are borderline propaganda, that is unacceptable, especially when they could have kept the same exact content but added an abstract of the new guidance and greatly improved the quality of their article by actually providing material support for their point of view.
Convenient metaphors of pig fighting are misleading and inaccurate. They promote a mentality of action based on anger rather than effectiveness. To avoid metaphors and give a concrete example of not lowering one's self to scummy tactics, you have only to look to the non-violent civil rights movements that have prevailed in the last hundred years.
You also assume the "dirty pig" or scummy tactics are directed at the "opposition". They are not. When the EFF actually fights these battles, say in court, they cannot refer to general platitudes and content-less rhetoric, they must use reasoned arguments. Their scummy tactics in this article are directed at those they seek to support them!
Isn't that just a fancy way of saying "The ends justify the means"
I decided to dig in more. The case history was a bit more interesting, and crystallized why this thing went up the chain. The case history actually did involve a small amount of disagreement. Initially, a panel of Federal Circuit judges sided with the petitioner _Alice_, who sought to have the parents reinstated. However, the Federal Circuit subsequently performed _en banc_ review where the entire court (save those judges recusing themselves or otherwise absent) sat to hear the case. The outcome of that _en banc_ review was a seven-judge majority (out of ten) throwing out two of the three claimed patents. In addition, a plurality but not a majority of five judges wanted to throw out all of the patent claims.
In the world of legal appeals, tie votes affirm the decision of the lower court, but such decisions are not considered persuasive or "controlling." Indeed, the opinion of the seven judge _en banc_ majority was a single paragraph. It's hard for anyone to figure out exactly what a plurality opinion means without resorting to reading tea leaves or other forms of divination. Into this ambiguity stepped the Supreme Court in order to provide clarity to both the appeals court and the rest of the judiciary. The only controversial aspect of this case was whether only two patents were bad or whether they all were.
To summarize, every court involved in the case concluded that the three claimed patents covered non-patentable subject matter. The court of appeals explicitly established to serve the interests of patent litigators affirmed this, and the Supreme Court only reviewed the case in order to more definitively demonstrate that the subject matter was not patentable (and it did this in the strongest possible way).
All of this leads me to strongly concur with your reading of this EFF post. The _Alice_ case involved a particularly egregious case of nonsense patents/patent trolling, such that not even the Federal Circuit would save it. Far from being some sort of landmark case, the Supreme Court's opinion mostly relies on existing precedent and serves to further clarify the disposition of the US courts toward patentability of abstract ideas. And most bizarrely, USPTO was not a party in this case. While the patent office does need to follow the law including the judgements of US federal courts, they were not bound by _Alice_ and so more or less can ignore it.
When I consider the actual facts, I think the EFF is sensationalizing this particular case and heavy-handedly hyping it with provocative framing in order to spread propaganda. I even agree with the EFF nine times out of ten on issues of so-called intellectual property, but they undercut their argument when they push junk like this. This is a far cry from the days when the EFF was defending victims of the MPAA and RIAA or fighting to stop internet censorship or even campaigning against the DMCA and it's subsequent abuses.
In short, I affirm your judgment.
That is just wrong. The USPTO must MUST follow ALice. This cannot be disputed. Alice is the law.
Is there anything that's good about patents on software?
But other than that, there's not much good about it.
It’s the last stage of the “they fight you” phase Gandhi famously listed.
Thank you, EFF, for fighting the good fight.
1) My patent lawyer, following Alice, told us to not even try for most patents we were previously considering, because patents like that would just get rejected. I'd believe acceptance rates have gone up, but that's because people aren't filing as many frivolous patents.
2) The back-and-forth process with the patent office the EFF advocates for is a really bad idea and bad deal. Big companies can hire specialists who do this. For individual inventors, the costs here get astronomical.
Now, the bar for patents is still way too low. But Alice did bring it up. If I had my druthers:
* The bar for patents would be high.
* The processes for applying for patents would be straightforward, quick, and easy.
There would be an appeals process, but it'd look much more like sending a plain-language letter than one couched in byzantine process and baroque terminology.
Individual inventors are already not applying for meaningful patents. That's political folklore to tell a warm story around patents.
Guidance documents often come with examples, language from the Alice-overcoming examples will be included in patent applications and in arguments against Alice rejections. Often, word for word if possible.
Note, there have been several rounds of 'new guidance' since Alice came down. Most of them (maybe all?) include examples from courts showing claims invalidated under Alice and examples claims that made it past Alice in court.
It doesn't take that much effort to draft patents or arguments that match the good examples. Note, this doesn't change the scope of the inventions, it simply puts magic words into applications or claims to get around Alice if needed.
This is wrong. The scope of the claims that result post-alice are completely different. And this is something the EFF post simply ignores. Just think about it. YOu are an inventor and invent some amazing new idea in the year 2000 like location track a plurality of requests for transportation, location track a plurality of transportation providers, use a novel form of graph theory to optimally match requests with providers with an optimized price that maximizes utility for driver and requestor (think uber-like service). You try to patent that. The patent office POST_ALICE says NOOOOO!!!!! That's just a concept. Abstract concepts are not patentable. But you, you smart cookie, you know that there are only a few practical ways to have a sufficiently fast database-lookup architecture to actually implement this at scale and that implementation and all its details is what you actually patent. Because you had the guidance, you knew what you could get and you went for it.
Often that can be accomplished by including claim language that doesn't limit the novel aspects of the invention. In other words, prior art is not a really a consideration when getting over a 101 rejection.
That the article doesn't even address this obvious hypothesis makes it pretty much worthless.
After the decision, it says rejections rose 31%, but now they have fallen back down.
The EFF contends this is because the Patent Office is ignoring the law, but they don't offer any evidence to back up this assertion. Another likely explanation is that patent applicants are adjusting their applications to be in line with the decision, and thus the rates have gone back down.
This assertion by the EFF would only make sense if patent applicants didn't know about the rule change. But applicants do know, and have adjusted their applications accordingly in the intervening time.
This. We had/have no problem getting past Alice if the application was drafted post-Alice. (Except for one art unit that was being unreasonable -- but even they seemed to have given up. Maybe their boss retired?)
Nothing changed except we included additional language in the spec and claims for no other reason than to get around Alice rejections.
Rejection rates immediately after Alice (2014): https://imgur.com/veW7vQ7
Rejection rates immediately after new Patent Office guidance (2019!): https://imgur.com/ylqD5sx
Apparently patent applicants were entirely unable to to adjust their applications in line with the decision for a whole 5 years where rejection rates were consistently >30% (and rising!). Then, immediately after new guidance, they all "get it" and rejection rates drop below 20%?
Remember, guidance is just a summary of applicable law and precedent. It is training material. If there is a significant change in rejection rates, it means Alice was somehow misapplied for 5 years and no one ever meaningfully contested it.
I’m honestly not seeing what the major issue is here.
So yes, your suggestion that "it means Alice was somehow misapplied for 5 years and no one ever meaningfully contested it" seems quite plausible for me, it's not easy to meaningfully contest it (you need an actual situation where such a misapplied patent gets abused and gets contested) and it takes years to do so.
While the majority of Justices agreed that the Alice patent was invalid, a majority did not sign on to one opinion. There were multiple concurring opinions that agreed on the result but not the reasoning. The decision provides at best an "I'll know it when I see it" standard.
To say, lawyers are deliberately or intentionally acting contrary to the decision is not accurate. Lawyers will work to draft patents that comply with Alice, and they will argue that the applications they draft comply with Alice.
Unfortunately, very little in the Alice decision can be used to reason for or against any particular patent because it is so incoherent.
The "all" after the guidance is not the same set as before. Afterwards, some people could foresee a rejection and so didn't bother applying at all, where before the guidance they would have. Thus, rejection rate falls.
Clear guidance should result in fewer rejections, because with good guidance fewer people should be filing bad applications to begin with.
The real test will be whether the applications that issue survive challenges in the courts. The courts do not consider the PTO's guidelines in determining whether the patents are valid.
In other words, the PTO can't change the actual standard. All they can do is reject patents that don't meet that standard, and if they fail to do so, the patents will be found ineligible by the courts when they are asserted.
The PTO's guidance is only useful in helping attorneys and examiners shepherd through patents that will then be tested in the courts. Bad patents will still be shot down if they survive the PTO (as they should be).
In short, I love the EFF but I'm not sure why they are complaining about this.
I beg to differ. I have seen cases that get multiple final rejections based on Alice. Usually based on garbage reasoning.
Alice was such a terrible holding -- it was based on a crappy patent so we got bad law. Well drafted and well prosecuted patents don't often end up in court, let alone in the Supreme Court.
Over coming Alice is/was easy if the patent application was drafted after the first Alice based rejections came out. That is an indication of the weakness of the holding, including meaningless details or structure in the form of "magic words" often could get around early Alice rejections.
Until recently, the main driver for stubborn Alice rejections were particular art units that seemed to have an informal policy to never let anything through.
The Alice case opened the door for awhile because practically any tech/computer related patent had a good change of being invalidated at summary judgment.
I don't practice in bio so I am not familiar with CRISPR patents.
Though, I guess such amendments could be seen as limiting old-school business method claims, but I don't consider business method patents to be software patents.