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As much as you might want it to be, the case is FAR from closed....
The dismissals were all based on Alice.....what's that you say, the Senate is going to put forward a bill to change all that? Wonder what kind of effect that will have....stock dropped a lot on the Judge's ruling -what happens when it's overturned.....?
If you view the 3 month chart you will see the downtrend that was the result of Judge Koh's "Alice" ruling.
but things may soon change......
fluff PRs?
Oh you must mean the one where the SENATE is proposing a BI-PARTISAN BILL to repeal Alice?
You meant THAT ONE....I see.....yes the US SENATE taking action is sure "fluffy"
the day is still young.....
they know the patents cover what they are doing. They also know that the system favors them courtesy of the AIA.
Things change, however....
Most of the companies that should be interested are hoping that the system will stall and stall, and that VPLM will just go away...If and when Alice is repealed, it will change their thought process
Changes Coming To Section 101 Patent Eligibility?
Senators have expressed a serious interest in patent reform -- that is, strengthening the rights of patent holders.
By KRISTA L. COX
Apr 25, 2019 at 11:42 AM
Earlier this month, U.S. Senators Tillis (R-NC) and Coons (D-DE), the Chair and Ranking Member of the (newly revived) Senate Judiciary Subcommittee on Intellectual Property and Representatives Collins (R-GA), Ranking Member of House Judiciary, Johnson (D-GA), and Stivers (R-OH) released a “framework” on Section 101 patent reform. While legislative language has yet to drop, here are some quick thoughts on the “framework” document.
First, keep in mind Senators Tillis and Coons have both expressed a serious interest in patent reform and it’s always been clear that such reform would take the shape of strengthening the rights of patent holders. Indeed, according to Tillis, the senators requested re-instatement of the Subcommittee on IP to specifically address patent reform and both have been critical of SCOTUS decisions limiting patentability. In particular, Tillis and Coons have targeted Section 101, the portion of the Patent Act addressing subject matter eligibility and have already engaged stakeholders on this issue. The release of the framework document and much of the content is, therefore, not a surprise.
Over the past several years, SCOTUS has addressed patent subject matter eligibility in several cases, often unanimously reversing the Federal Circuit. For example, in Mayo v. Prometheus (a method of giving a drug to a patient then using measurements to determine whether the dosage needs to be increased or decreased was directed to natural law and not patentable subject matter); Association for Molecular Pathology v. Myriad Genetics (isolated DNA is a product of nature and, as such, ineligible for patent protection); and Alice Corp. v. CLS Bank International (computer-implemented process covering abstract ideas was not enough to transform a non-patentable idea into patentable subject matter), SCOTUS unanimously ruled against patent eligibility for the patents at issue. It is under this landscape that patent holders have lobbied Congress to “fix” the Patent Act, claiming that SCOTUS’s decisions are anti-innovation.
The released framework proposes to amend Section 101 by having a defined, closed list of subject matter that is not eligible for patent protection. In other words, everything would be subject-matter eligible for a patent unless it fell under a specific exclusion. The framework includes several categories of potential exclusions (though it says “might include” and we can certainly expect lobbying to narrow or remove some of these): 1) fundamental scientific principles; 2) products that exist solely and exclusively in nature; 3) pure mathematical formulas; 4) economic or commercial principles; and 5) mental activities. Some of these exclusions appear to target recent SCOTUS rulings on patent eligibility. For example, the isolated BRCA genes discovered in the Myriad Genetics case may not fit under the definition of “products that exist solely and exclusively in nature,” depending on how final language is crafted, since isolated DNA exists as part of a larger sequence in nature. Narrowly drawn exclusions could also target Mayo v. Prometheus and Alice Corp. The framework explicitly states an intention to also include a “‘practical application’ test to ensure that the statutorily ineligible subject matter is construed narrowly.” This approach would eliminate judicially created exceptions to subject matter eligibility through a closed and narrow list.
Another proposed change to Section 101 would be to focus eligibility solely on the utility requirement, removing the current requirement that the invention or discovery represent a “new and useful” process or article. This change would lower the threshold for eligibility but would not eliminate the novelty requirement. Instead, once determined to be eligible, the invention or discovery would also need to demonstrate the conditions for patentability thresholds in Sections 102 and 103. Section 102 clearly establishes that the invention must meet a novelty standard. Section 103 provides the non-obvious requirement. Ultimately, this change may not make a huge difference since inventions that are not new could still be rejected under a Section 102 analysis.
While legislative language stemming from this framework will likely create greater clarity and could promote investment in the patent industry, exceptions cast too narrowly could potentially lock up fundamental building blocks that are currently not patent eligible (such as isolated DNA). Even with a narrow, closed list of non-patent-eligible subject matter, courts could still find that inventions or discoveries outside that list are not eligible based on Article I, Section 8, Clause 8 of the Constitution. The Constitutional rationale for the intellectual property system is “to promote the progress of science and useful arts,” which SCOTUS has repeatedly pointed out, serves as both a grant of Congressional power, as well as a limitation. If the closed list of exclusions are deemed to be too narrow, a Constitutional challenge could emerge.
IP Watchdog is hardly "just another blog"....It is probably one of the top 3 websites that tracks IP litigation and laws, supports inventor rights, and provides commentary by leading patent litigation firms.
Mock away -people who are knowledgeable know better...
From the National Law Review -the winds of change for Alice 101 are blowing strong
ARTICLE BYDaniel T. Taskalos
Sheppard, Mullin, Richter & Hampton LLP
Intellectual Property Law Blog
Sheppard, Mullin, Richter & Hampton LLP full service Global 100 law firm handling corporate law
National Law Review Legal Publishing
Returning to the Status Quo? – Proposed Outline for Section 101 Reform
Monday, April 22, 2019
On April 18, 2019, Senators Thom Tillis (R-NC) and Chris Coons (D-DE), along with Representatives Doug Collins (R-GA), Hank Johnson (D-GA), and Steve Stivers (R-OH), released a bipartisan framework for 35 U.S.C. § 101 reform, available here. The framework outlines specific goals that any proposed legislation should aim to address.
The impetus for such reform stems from uncertainties in recent case law regarding what qualifies as “patent-eligible” subject matter since the U.S. Supreme Court’s holdings in Mayo Collaborative Services, DBA v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014). The relative fluidity of patent eligibility jurisprudence since the Court’s decision in Alice has caused difficulties not only for potential inventors and industry, but also for the patent bar at large. Since the Alice decision, the USPTO has issued new guidance regarding how patent examiners are to analyze claims under section 101 at least once a year, with the exception of 2017. As many practitioners would attest, the application of the guidance can vary between examiners and art units, resulting in general confusion as to what exactly makes one claim patent eligible over another.
The proposed framework, developed following discussions with stakeholders, seeks to remove some of the judicial discretion that has left this era of patent eligibility analysis in a state of indefiniteness. A major aspect of the proposed framework is statutory language expressly reciting subject matter categories that are deemed to be patent ineligible. Currently, Section 101 only recites broad categories of patent-eligible subject matter: namely “any new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The well-known and oft-quoted exceptions were judicially-created. Under the proposed framework, exclusive categories of patent ineligible subject matter would be identified, and any other judicially-created exceptions would be expressly abrogated. The proposed framework also seeks to remove the “new and useful” requirement, simply requiring that “the invention meet existing statutory utility requirements.” This appears to be an attempt to create a firmer division between the patent eligibility determination under section 101 and the analyses under sections 102 and 103.
The rest of the framework is less ground breaking. The framework calls for a “practical application” test to be created, which appears to be consistent with the USPTO’s recent subject matter eligibility guidance issued on January 7, 2019. There is also a call for ensuring that “generic technical language or generic functional language” remains insufficient to salvage an otherwise ineligible claim, though there is no additional indication of how those categories could be more precisely defined to alleviate current issues with examiner’s use of such boilerplate language in rejecting claims. Lastly, the framework restates the requirement that examination is to be conducted in light of all limitations, without regard to the requirements under the other statutory provisions (i.e., sections 102, 103, and 112).
In all, the proposed framework appears to focus on returning the 101 analysis to its previous status as more of a low hurdle to patentability, but a hurdle nonetheless. Many issues caused by recent case law have been attempts to analogize clear cases of ineligible abstract ideas, such as the use of a computer to perform general steps in hedging risk (see Bilski v. Kappos, 561 U.S. 593 (2010)), to more technologically-advanced inventions, such as those directed to data analytics, artificial intelligence, and machine learning. In some cases, examiners and courts have run afoul of the Supreme Court’s warning that too broad an interpretation would eviscerate patent law because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. Depending on what legislative language (if any) ultimately arises from this proposed framework, it would appear that Congress wants to deemphasize the role section 101 has on the ultimate patentability determination (instead relying on the other statutory requirements) to streamline the analysis.
Copyright © 2019, Sheppard Mullin Richter & Hampton LLP.
Tried to what? Warn shareholders of a legal system stacked against patent owners?
Looks like the "trying" is ongoing....
Curious given that there is a move afoot to repeal Alice
I have "double thought it"...I am very confident that Alice will be repealed or that our appeal will get Judge Koh's decision over-turned
I'm content to wait.
As long as the US system doesn't allow our company to get to court, why would Apple license anything.
You can't prove theft without getting to trial
You can't prove infringement without getting to trial
You can't sell or license if all of the alleged infringers know that the system is stacked against you
That's the whole point of Emil's Op-ed
And you missed it...
no bigger than Apple....
There's no "weak attempt"...the Alice issue is VERY real and if and when it is repealed, the shares of VPLM will recover bvery nicely, thank you
Actually, it is a very realistic assessment of the many things wrong with our patent system. As a patent owner myself (3), the fact that after massive prior art examinations, all patents granted, massive IPR challenges, all of them won, that Voip-Pal is being subjected at this stage to a vague Alice 101 battle (which I believe will be overturned and we will win) is EXACTLY what Emil is referring to.
Unless America gets its act together, Silicon Valley and big pharma will control IP and how it is enforced (or not), and we will continue down the path to a monopolistic country. This is why many inventors are FLOCKING to China and Europe where ENFORCEMENT of patent rights is realistic...putting small companies through what Voip Pal has gone through including being attacked for having to raise capital to pay the legal bills is simply WRONG.
IP Watchdog is a HIGHLY respected blog on patent law.....Alice reform is very likely and will have a very positive impact on Voip Pasl's cases
just posted on IP Watchdog. An op-ed by Emil Malak. Excellent read.
Beyond 101: An Inventor’s Plea for Comprehensive Reform of the U.S. Patent System
By Emil Malak
July 8, 2019
“Shenzhen is becoming the new world leader and global technology hub, rapidly leaving Silicon Valley behind. China’s Huawei has assigned about 10,000 of its developers to work across three shifts in Shanghai, Shenzhen and Xi’an to eliminate the need for American software and circuitry.”
https://depositphotos.com/69798509/stock-photo-woman-holding-microphone.htmlInventors are seeing the light and are looking increasingly to the East for protection of their patents. Specifically, to China, where patent protection was once non-existent; China has overhauled its patent system and become more attractive to inventors than the once mighty USPTO. In 2016, the State Intellectual Property Office of the People’s Republic of China (SIPO) received 1.3 million patent applications. That’s more than the combined total for the United States Patent and Trademark Office (USPTO; 605,571), the Japan Patent Office (JPO; 318,381), the Korean Intellectual Property Office (KIPO; 208,830) and the European Patent Office (EPO; 159,358).
China Steps Up
My relationship with China began in 2005, when Digifonica International Inc. (now Voip-Pal.com Inc.) had an office in Beijing. It was my honor to be introduced to and become friends with Deng Pufang, the oldest son of former Paramount Leader Deng Xiaoping. This wonderful and caring man is a legend in China. Left crippled by Mao’s Red Guard in 1968 at the age of 24, he has dedicated his life to improving the lives of the almost 80 million people in China with disabilities. Deng Pufang invited me to give a speech to the China Disabled Persons Federation (CDPF), which was an unforgettable honor for me.
Not long ago, I was contacted by some high officials from China’s Ministry of Industry and Information Technology (MIIT) requesting my input for further improvements to China’s patent system. I asked, “Why the sudden interest in protection of intellectual property?” Their answer was simple and quite informative. They want foreign inventors to see China as a safe haven for patent monetization and trust their patents will be protected. They also recognize this as a great opportunity to fill the vacuum created by the unfair treatment of inventors in the United States. They are very aware of the difficulties small inventors/patent holders encounter in their monetization and patent enforcement efforts.
USPTO: Beware the Newly Proposed Agency “Far East Patent Issue and Enforcement Department”
According to sources close to the author, China is in the process of forming an alliance with other far east countries with a combined population of about 3.6 billion people, nearly half the total world population. This proposed alliance of far east countries would create and coordinate its own allied patent courts, which would deal with all matters of patent enforcement, infringement and damages. Chinese patent examiners would handle all technical issues equivalent to U.S. Section 101/ abstractness, Sections 102 and 103, prior art, indefiniteness and novelty etc. The new coalition would reportedly be called the Far East Patent Issue and Enforcement Department. When the Department finds in favor of the patent owner, injunctive relief would be granted, and the infringer would be ordered to cease and desist using the patent or patents in question. The infringer would be compelled to enter into a licensing agreement with the patent owner before resuming use of the patent.
This new proposed office would be headquartered in Shenzhen. As I have previously stated, Shenzhen is becoming the new world leader and global technology hub, rapidly leaving Silicon Valley behind. China’s Huawei has assigned about 10,000 of its developers to work across three shifts in Shanghai, Shenzhen and Xi’an to eliminate the need for American software and circuitry.
Soon they will no longer rely on Intel or other western chip makers. Additionally, Huawei is quite far along in the development of their own search engine and smartphone operating system, both of which will deal a major blow to Google’s search engine and their Android operating system. Where will this leave Apple’s iPhone?
Inventors are Losing Patience With the U.S. Patent System
I, along with others, have been quite vocal that change like this has been needed here for some time, but no one has been listening. The U.S. patent system is in dire need of streamlining. The process is far too long and combative. Patent owners have a right to enjoy the benefits of their patents without becoming embroiled in constant and prolonged legal battles just to assert the rights to their intellectual property.
Until recent years, America was the place that welcomed and supported inventors. Today, the anti-patent system and the courts seem to be determined to subjectively invalidate good inventions. America must lead the world once again in encouraging and supporting all inventions, particularly those in the computer science field that control the way the world communicates. Innovators should be encouraged to turn their abstract ideas into real inventions that improve all of our lives. I am also a strong supporter and a big fan of Director Andrei Iancu. His appointment was a very positive move which will hopefully bring about the necessary changes. He has made excellent decisions since taking the helm at the agency, but to a large extent much of his efforts are for naught until current patent laws are changed and the America Invents Act is repealed and replaced with a set of laws that is fair for all.
While China and the far east have taken big steps to embrace patents and innovation, we in the west continue to fight it and keep inventors from ever achieving monetization of their intellectual property. The broken U.S. patent system facilitates the stealing and unauthorized use of patents by the Silicon Valley and other giant corporations. We must wake up now, before it is too late.
The current U.S. patent system is hostile towards inventors and was designed to drive small inventors and companies like mine into bankruptcy. How much longer are we supposed to wait and how much more will we be forced to endure before we reap any rewards for our labors? I am now 67 years old, having dedicated the last 15 years of my life to developing technology covered by certain patents related to Routing, Billing and Rating (RBR). Thus far, we have been 100% successful in defending eight Inter Partes Reviews (IPRs): four from Apple, three from AT&T, and one from Unified Patents. We are presently in litigation against Apple, Verizon, AT&T, Twitter and Amazon.
Are the defendants hoping I die of old age before this is settled? Patents have a life of 20 years, and because of the current process, many patent lawsuits are actually disputes over expired patents. In spite of these huge obstacles thrown at us, we are never dismayed. We will continue to battle until we win this war. The system will not beat us. We will beat the system.
your post makes me optimistic....
Why is that "good news"?
The whole point of getting to court is to PROVE infringement, as I have stated 10,000 times previously.
All shareholders understand that infringement is not PROVEN until you get to court.....and that is exactly what we are going to do.
we shall see....
Oh I think that companies that use other people's IP without license are a problem also.
If they get to court, the defendants will ultimately pay if infringement is ruled.
I care that they won at the PTAB -most companies don't. its an important step
Reaching beyond? The Senate is proposing a BI-PARTISAN bill to help patent owners...clearly our government thinks that Alice has been an "over-reach"
"Full" VPLM Arguments
8-0 wins at the PTAB (unheard of)
Apple appeal of PTAB won by VPLM
Motion to dismiss by Apple in District Court is under appeal
and Alice repeal is likely...
Time will tell
VPLM has won EVERY IPR at the PTAB.
The dismissal is under appeal, and there is an excellent chance VPLM will WIN, yet again
If and when Alice is repealed, this stock ends the year much higher, IMHO
Alice 101 repeal appears to be coming soon....This will impact Apple's motion to dismiss (which is under appeal) which was granted based upon 101....
Stock plummeted based on the Alice ruling...what will happen if and when Alice is repealed?
of course Judge Koh's Alice ruling didn't impact the share price at all, did it....
Two Words Alice Repeal
Two More Trial follows
Perhaps one more Watch
Patience is a virtue - Bipartisan legislation has been submitted to repeal Alice 101, which was the ONLY basis for the first Apple case being dismissed.....
IMPORTANT- MUST READ for all VPLM Shareholders
Draft Text of Proposed New Section 101 Reflects Patent Owner Input
By Eileen McDermott
May 22, 2019
“The Supreme Court should never have created its own exceptions to U.S. patent laws. It has taken far too long for Congress to finally correct these errors, but this draft bill would finally strengthen our patent system.” – Russell Slifer
A group of Senators and Representatives has just released the draft text of a bipartisan, bicameral proposal to reform Section 101 of the Patent Act.
Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property; Representative Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee; Hank Johnson (D-GA-4), Chairman of the House Judiciary Subcommittee on Intellectual Property and the Courts; and Steve Stivers (R-OH-15) sent the draft text via press release today. The stated goal of releasing the draft is to solicit feedback—there will be additional stakeholder feedback and Senate hearings, according to the press release.
Senate hearings on the topic will be held on June 4, 5 and 11 featuring three panels of five witnesses each, for a total of 45 witnesses over three days.
Key Changes
The draft text explicitly states that “the provisions of section 101 shall be construed in favor of eligibility.” It also includes the following provision:
No implicit or other judicially created exceptions to subject matter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated
from the National Law Review
The proposed framework, developed following discussions with stakeholders, seeks to remove some of the judicial discretion that has left this era of patent eligibility analysis in a state of indefiniteness.
A major aspect of the proposed framework is statutory language expressly reciting subject matter categories that are deemed to be patent ineligible. Currently, Section 101 only recites broad categories of patent-eligible subject matter: namely “any new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The well-known and oft-quoted exceptions were judicially-created.
Under the proposed framework, exclusive categories of patent ineligible subject matter would be identified, and any other judicially-created exceptions would be expressly abrogated. The proposed framework also seeks to remove the “new and useful” requirement, simply requiring that “the invention meet existing statutory utility requirements.” This appears to be an attempt to create a firmer division between the patent eligibility determination under section 101 and the analyses under sections 102 and 103.
I see a repeal of Alice very very soon, followed by VPLM getting into court with the defendants and trying the case.
Draft Bill Released to Reform Section 101 of the Patent Act
May 28, 2019
By Denise Main, Ph.D.
Edited by Adriana L. Burgy
Congress continues to discuss the patent eligibility requirements; on May 22, 2019, a bipartisan, bicameral bill was proposed which could redefine what kinds of inventions may be patented. If enacted, the bill will remove the judicial exceptions to patent eligibility. This draft bill arrives on the heels of the USPTO’s revised guidance on patent eligibility that went into effect on January 7, 2019, and feedback from stakeholders, inventors, and industry representatives from an earlier draft in April.
The draft bill text released by Senators Tillis, Coons, Collins, Johnson, and Stivers proposes the following:
Section 100:
(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.
Section 101:
(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.
Section 112
(f) Functional Claim Elements — An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
According to the draft bill, the following additional legislative provisions are proposed:
The provisions of section 101 shall be construed in favor of eligibility.
No implicit or other judicially created exceptions to subject matter eligibility,
including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.
The eligibility of a claimed invention under section 101 shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.
Senate Judiciary Subcommittee on Intellectual Property hearings will be held on June 4th, 5th, and 11th regarding the state of patent eligibility in the United States. Those hearings are expected to generate additional stakeholder feedback. In addition, the Subcommittee will hear the perspective of a variety of witnesses from different industries regarding the current patent eligibility laws. Stay tuned for further updates as the hearings progress and feedback is provided.
And if Alice is repealed,(which it looks like it will be), VPLM will cross AMFE on the way up....
The repeal of Alice will change everything
https://www.jdsupra.com/legalnews/alice-s-last-birthday-highlights-from-32869/?fbclid=IwAR1eVWRPUVx_43BefUdAlice's Last Birthday? Highlights from the Senate Hearings to Abrogate Alice v. CLS
In Short
The Situation: The Senate is considering legislation to abrogate the Supreme Court's decision in Alice v. CLS and related case law, potentially nullifying more than 100-years of Supreme Court jurisprudence.
The Development: A final bill may be introduced after Congress's July 4 recess.
Looking Ahead: A proposed bill that abrogates Alice and creates a presumption in favor of patent eligibility may lead to an increase in the number of patent infringement suits.
The Supreme Court's game-changing decision on patent eligibility, Alice v. CLS, turned five this month. But it may be Alice's last birthday. In a rare and sweeping move, the Senate is considering legislation to overturn Alice.
A bipartisan draft bill led by Sens. Chris Coons (D.-Del) and Thom Tillis (R-N.C.) creates a presumption in favor of patent eligibility under 35 U.S.C. § 101. The draft bill also goes so far as expressly abrogating any case that has interpreted "abstract ideas," "laws of nature," or "natural phenomena" as judicially created exceptions to patentable subject matter. Such legislation could potentially nullify more than 100 years of Supreme Court jurisprudence.
This month, the Senate heard testimony from 45 witnesses, including former judges, scholars, and industry leaders. Supporters of the bill argued for Congressional action to eliminate uncertainty under Alice and encourage investment in innovation. Opponents argued that legislation would go too far and result in a resurgence of weak patents and nuisance-value suits.
The following are different perspectives on section 101 reform that emerged from the Senate hearings:
Former Federal Circuit Chief Judge Paul R. Michel (June 4, 2019)
"If I, as a judge with 22 years of experience deciding patent cases on the Federal Circuit's bench, cannot predict outcomes based on case law, how can we expect patent examiners, trial judges, inventors, and investors to do so?"
Former USPTO Director David J. Kappos, (June 4, 2019)
"[U]nder current U.S. law governing patent eligibility, it is easier to secure patent protection for critical life sciences and information technology inventions in the People's Republic of China and in Europe, than in the U.S."
Michael M. Rosen, Adjunct Fellow, American Enterprise Institute (June 4, 2019)
"The 101 inquiry must remain distinct from the 102, 103, and 112 inquiries…. The Supreme Court's Mayo and Alice requirement that the claimed invention must transcend a 'well-understood, routine, conventional activity,' which the Federal Circuit in Berkheimer v. HP declared was a factual inquiry, has unfortunately led examiners and courts down the primrose path of conflating novelty, obviousness, and eligibility."
Barbara A. Fiacco, President-Elect, American Intellectual Property Law Association (AIPLA) (June 5, 2019)
"In our view, current section 101 jurisprudence has had a negative impact, in particular, on the life sciences and software industries … AIPLA believes that closing the eligibility door on certain advances in the life sciences and software industries (including some that we cannot even predict today) could impede innovation to the detriment of our economy and society as a whole."
Dr. William Jenks, Internet Association (IA) (June 5, 2019)
"Here, the proposed change to patent-eligibility law is unnecessary and will likely do more harm than good … If there were a crisis in patent eligibility law, we should expect a radical reduction in the number of patents issued by the PTO. To the contrary, the PTO has been issuing record numbers of patents."
Christopher A. Mohr, Vice President for Intellectual Property and General Counsel, Software and Information Industry Association (SIIA) (June 5, 2019)
"[T]he draft bill's simplicity of language belies the complexities and harms that await when its language is applied to our members' activities. It would turn back the clock and enable the patenting of nontechnical business methods claimed 'on a computer,' encouraging the type of low-quality business method patents that plagued the industry prior to the Alicedecision. And, under the guise of creating certainty, it would adopt a test that invites a whole new raft of litigation and examiner confusion over the meaning of 'usefulness.'"
Jeffrey K. Francer, Senior Vice President and General Counsel, Association for Accessible Medicines (June 5, 2019)
"The proposed revisions—which include expressly overruling more than 150 years of carefully crafted Supreme Court precedent—would incentivize monopolistic bad actors, deny patients access to lifesaving treatments and diagnostics, and reverse progress this Committee has made to lower drug prices for Americans."
A final bill may be introduced after the July 4 recess.
Three Key Takeaways
The final bill may expressly abrogate Alice v. CLS and any case that has interpreted "abstract ideas," "laws of nature," or "natural phenomena" as judicially created exceptions to patentable subject matter.
The final bill also may create a presumption in favor of patent eligibility under 35 U.S.C. § 101.
The final bill may strike "new" from the "new and useful" requirement under § 101 with the purpose of eliminating overlap with other sections of the Patent Act, including 35 U.S.C. §§ 102 and 103.
7MsAGvMIT48kwnoPsSlLtWP65loU8LLrq_Mo--Ac
Jones Day
United States: Alice's Last Birthday? Highlights From The Senate Hearings To Abrogate Alice v. CLS
Last Updated: July 2 2019
Article by Rita J. Yoon and Yury Kalish Ph.D.
Jones Day
The Situation: The Senate is considering legislation to abrogate the Supreme Court's decision in Alice v. CLS and related case law, potentially nullifying more than 100-years of Supreme Court jurisprudence.
The Development: A final bill may be introduced after Congress's July 4 recess.
Looking Ahead: A proposed bill that abrogates Alice and creates a presumption in favor of patent eligibility may lead to an increase in the number of patent infringement suits.
The Supreme Court's game-changing decision on patent eligibility, Alice v. CLS, turned five this month. But it may be Alice's last birthday. In a rare and sweeping move, the Senate is considering legislation to overturn Alice.
A bipartisan draft bill led by Sens. Chris Coons (D.-Del) and Thom Tillis (R-N.C.) creates a presumption in favor of patent eligibility under 35 U.S.C. § 101. The draft bill also goes so far as expressly abrogating any case that has interpreted "abstract ideas," "laws of nature," or "natural phenomena" as judicially created exceptions to patentable subject matter. Such legislation could potentially nullify more than 100 years of Supreme Court jurisprudence.
This month, the Senate heard testimony from 45 witnesses, including former judges, scholars, and industry leaders. Supporters of the bill argued for Congressional action to eliminate uncertainty under Alice and encourage investment in innovation. Opponents argued that legislation would go too far and result in a resurgence of weak patents and nuisance-value suits.
The following are different perspectives on section 101 reform that emerged from the Senate hearings:
Former Federal Circuit Chief Judge Paul R. Michel (June 4, 2019)
"If I, as a judge with 22 years of experience deciding patent cases on the Federal Circuit's bench, cannot predict outcomes based on case law, how can we expect patent examiners, trial judges, inventors, and investors to do so?"
Former USPTO Director David J. Kappos, (June 4, 2019)
"[U]nder current U.S. law governing patent eligibility, it is easier to secure patent protection for critical life sciences and information technology inventions in the People's Republic of China and in Europe, than in the U.S."
Michael M. Rosen, Adjunct Fellow, American Enterprise Institute (June 4, 2019)
"The 101 inquiry must remain distinct from the 102, 103, and 112 inquiries.... The Supreme Court's Mayo and Alice requirement that the claimed invention must transcend a 'well-understood, routine, conventional activity,' which the Federal Circuit in Berkheimer v. HP declared was a factual inquiry, has unfortunately led examiners and courts down the primrose path of conflating novelty, obviousness, and eligibility."
Barbara A. Fiacco, President-Elect, American Intellectual Property Law Association (AIPLA) (June 5, 2019)
"In our view, current section 101 jurisprudence has had a negative impact, in particular, on the life sciences and software industries ... AIPLA believes that closing the eligibility door on certain advances in the life sciences and software industries (including some that we cannot even predict today) could impede innovation to the detriment of our economy and society as a whole."
Dr. William Jenks, Internet Association (IA) (June 5, 2019)
"Here, the proposed change to patent-eligibility law is unnecessary and will likely do more harm than good ... If there were a crisis in patent eligibility law, we should expect a radical reduction in the number of patents issued by the PTO. To the contrary, the PTO has been issuing record numbers of patents."
Christopher A. Mohr, Vice President for Intellectual Property and General Counsel, Software and Information Industry Association (SIIA) (June 5, 2019)
"[T]he draft bill's simplicity of language belies the complexities and harms that await when its language is applied to our members' activities. It would turn back the clock and enable the patenting of nontechnical business methods claimed 'on a computer,' encouraging the type of low-quality business method patents that plagued the industry prior to the Alice decision. And, under the guise of creating certainty, it would adopt a test that invites a whole new raft of litigation and examiner confusion over the meaning of 'usefulness.'"
Jeffrey K. Francer, Senior Vice President and General Counsel, Association for Accessible Medicines (June 5, 2019)
"The proposed revisions—which include expressly overruling more than 150 years of carefully crafted Supreme Court precedent—would incentivize monopolistic bad actors, deny patients access to lifesaving treatments and diagnostics, and reverse progress this Committee has made to lower drug prices for Americans."
A final bill may be introduced after the July 4 recess.
Three Key Takeaways
The final bill may expressly abrogate Alice v. CLS and any case that has interpreted "abstract ideas," "laws of nature," or "natural phenomena" as judicially created exceptions to patentable subject matter.
The final bill also may create a presumption in favor of patent eligibility under 35 U.S.C. § 101.
The final bill may strike "new" from the "new and useful" requirement under § 101 with the purpose of eliminating overlap with other sections of the Patent Act, including 35 U.S.C. §§ 102 and 103.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
I've heard it can be as long as 6 months, but I am looking into it....the system is a joke...we will win the appeal, IMHO, but the price we are paying is insane