March 28, 2014
Making It Up
Patent subject matter eligibility under 35 USC §101 has been clarified by the Supreme Court in recent years. In providing new guidance to examiners, USPTO management decided to ignore the law and inventively go their own way. The guidance criteria has an examiner ask whether a claim is "significantly different" than "judicial exceptions." Such "exceptions" to patentability (i.e., cannot be patented) are "abstract ideas, laws of nature/natural principles, natural phenomena, and natural products." Explaining what "significantly different" means is well elaborated. But the upshot is that for years to come, patents will be denied or granted based upon criteria that are not well rooted in law. In other words, business as usual at the patent office.
March 20, 2014
Enablement Out of Order
In Alcon v. Barr (2012-1340), a CAFC panel reminds that the U.S. patent regime is rotten to the core. Applicants may get patents for so-called "inventions" that don't work: "a patent does not need to guarantee that the invention works for a claim to be enabled. It is well settled that an invention may be patented before it is actually reduced to practice."
A vexatious corruption haunts the USPTO: examiners that repeatedly pull applications out of appeal with a new rejection. Freda Nelson plagued this inventor for years with her fresh witless rejections after my filing for appeal. In the recent patent board appeal - ex parte Sheklam (2012/009,005) - the offending unnamed examiner is caught out. Other experienced prosecutors report that examiners gaming the system in this way is not especially unusual. PTO management continues to largely turn a blind eye to this practice.