The Growth In Garbage? 1,000 per year to 600,000 per year...

by Steve Reiss (stevenreiss@scienbizippc.com)

1836 John Ruggles Senate Committee on Patents Report (April, 1836):

The extent of the evils resulting from the unrestrained and promiscuous grants of patent privileges may be imagined when it is considered that they are now issued, since this year commenced, at the rate of more than a thousand a year; a considerable portion of which are doubtless void for want of originality in the inventions patented...

Senator John Ruggles, 1836

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2018 Statement of Director Andrei Iancu Before the Senate Committee on the Judiciary (April 18, 2018):

In FY 2018, we expect to receive more than 600,000 new patent applications. 
    
In general, quality patents are those that are issued in compliance with all the requirements of Title 35 of the United States Code as well as relevant case law at the time of issuance, and survive challenge down the line.  Performing a complete prior art search and ensuring claims are properly scoped are important parts of issuing quality patents that can stand up to scrutiny if challenged.  In addition, any action must include sufficient detail so that applicants and the public can better determine the basis for examiner decisions.

We will continue to look for ways to improve our prior art search and quality of examination

Director of the USPTO Andrei Iancu, 2017

  

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The Patent Poetry of Queen Elizabeth I of England

by Steve Reiss (stevenreiss@scienbizippc.com)

The English royal patent prerogative reached its high-point with the end of the Tudor Dynasty (Queen Elizabeth I) and the beginning of the Stuart, when "Parliament wrung the Statute of Monopolies out of King James I"[1], in 1624, just before his death in 1625.

[1] Floyd L Vaughan, The United States Patent System 15 (1986).

Queen Elizabeth I - Believer in Strong Patent Rights? Jury Still Out!

But, ah, Queen Elizabeth I, Queen of England and Ireland from 17 November 1558 until her death on 24 March 1603; and the predecessor of James I.

The Virgin Queen cherished her patent prerogative. Her extensive use of the prerogative to favor select courtiers and petitioners has been written about for centuries.

Elizabeth's disputes with Parliament over her use of the prerogative, unfulfilled promises on the Queen's part to limit their use, and her reported dismissal of Parliament when it tried to limit her use of the prerogative [2] , would set the stage for James' I's concession of the Statute of Monopolies, which most historians peg as the beginning of the modern patent era (the Republic of Venice's patent statute notwithstanding). 

What gets lost in the centuries to many writer's, however, is that Elizabeth's "patent" abuses were primarily concerned with the granting of business and importation monopolies. Her granting of patents in the modern sense of the term, i.e., patents for new inventions, was (and remains) far less controversial.

But, to me, all that is besides the point.

Few, if actually, anyone, including those great Elizabethan-era writers, Shakespeare or Marlowe, or the Victorian-era Dickens (in his "Poor Man's Tale of a Patent") ever spoke as poetically about patents as Good Queen Bess does in just one sentence.

The Queen said that the royal patent prerogative:

was the chiefest flower in her garden and the principal and head pearl in her crown and diadem.[2]

In my opinion, unmatched.

Of course, I had no idea what a diadem was and had to look it up.


[2] E. Burke Inlow, The Patent Grant at 21 (citation omitted). 



Update:

I cannot believe, but I have found the use of the word "diadem", in another patent context. This time in the patent for the Statue of Liberty (USD11023: 1879).

In the patent, it says: 

What I claim as my invention is the herein-described design of a statue representing Liberty enlightening the world, the same consisting, essentially. of the draped female figure, with one arm upraised, bearing a torch, while the other holds an inscribed tablet. and having upon the head a diadem, substantially as set forth. (emphasis added).

Lady Liberty's Seven Rayed Diadem

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Another Troubling 35 USC 101 ("Abstract Idea") Case From the Federal Circuit.

by Steve Reiss (stevenreiss@scienbizippc.com) (image from PatentVue by Envision IP)

On October, 16, 2017, the Federal Circuit handed down Secured Mail Solutions v. Universal Wilde, Inc. (2017).

In this case, Secured Mail Solutions asserted, against Universal, several patents in several different technologies concerning "snail mail" handling.

Ultimately, the court found all the patents to contain ineligible subject matter according to Alice Corp. v. CLS Bank Int'l (2014) and the Alice 2 Part Test.

I am only going to discuss claim 1 of the 7,818,268 ('268) patent, which was deemed a representative claim for technologies called Intelligent Mail Barcode.

Claim 1 of the '268 patent, recites:

A method of verifying mail identification data, comprising:

affixing mail identification data to at least one mail object, said mail identification data comprising a single set of encoded data that includes at least a unique identifier, sender data, recipient data and shipping method data, wherein said unique identifier consists of a numeric value assigned by a sender of said at least one mail object;

storing at least a verifying portion of said mail identification data;

receiving by a computer at least an authenticating portion of said mail identification data from at least one reception device via a network, wherein said authenticating portion of said mail identification data comprises at least said sender data and said shipping method data; and

providing by said computer mail verification data via said network when said authenticating portion of said mail identification data corresponds with said verifying portion of said mail identification data.

The Federal Circuit opinion starts out with a review of the current state of American patent eligibility law:

The Patent Act defines patent-eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The courts have created certain exceptions to the literal scope of §101, determining that laws of nature, natural phenomena, and abstract ideas are not patent-eligible. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)).

The court summarized the 2-part Alice Corp. test and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016), the significant post-Alice Federal Circuit decision holding a software-like claim contained eligible subject matter.


The court then went ahead to attack claim 1 of the '268 patent. Concerning Alice Test, part I, the court said (highlights are mine): 

Secured Mail argues that the claims are specifically directed to a sender generated unique identifier, which improved on the existing process both by reliably identifying the sender of the mail object and by permitting the sender to create a bi-directional communication channel between the sender and recipient of the mail object. The fact that an identifier can be used to make a process more efficient, however, does not necessarily render an abstract idea less abstract.

The claims of the Intelligent Mail Barcode patents are not directed to specific details of the barcode or the equipment for generating and processing it. The claims generically provide for the encoding of various data onto a mail object but do not set out how this is to be performed.

The claims state that various identifiers are affixed to a mail object, stored in a database, scanned from the mail object, and retrieved from the database. No special rules or details of the computers, databases, printers, or scanners are recited. Cf. McRO, 837 F.3d at 1315 (finding patent eligibility where the “claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results”); Thales, 850 F.3d at 1349 (finding patent eligibility where the “claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors”). There is no description of how the unique identifier is generated or how a unique identifier is different from a personal name, or return address. Rather, the claim language cited by Secured Mail merely recites that the unique identifier is generated by the sender. The fact that the sender generates a barcode, which itself is not claimed, does not render the idea any less abstract.

Concerning Alice Test, part II ("something more"), the court was no more merciful, saying (highlights again are mine):

In the Intelligent Mail Barcode patents, the sender-generated identifier is created by combining various pieces of data, such as a unique identifier, sender data,recipient data and shipping method data. The data need not even be in the form of a barcode, much less a specific new type of barcode. The claim language does not explain how the sender generates the information, only that the information itself is unique or new. The claim language does not provide any specific showing of what is inventive about the identifier or about the technology used to generate and process it. The district court is correct that the sender-generated identifier is not a sufficiently inventive concept. Id.at 1051–53.

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In software/computer tech patents, if a claim is going to recite a result, it is looking more and more like you must specifically claim how that result is achieved.

The problem with where these Alice Corp.-test cases are taking us is, all these requirements of specific showings and claim limitations, are totally severed from scope of the prior art. It ultimately feels like the courts are going to be requiring applicants to start out with a claim potentially far narrower than the prior art may actually require if you are going to get passed Section 101. So, even if the claims pass the Alice Corp. test and are deemed eligible, the resulting claims may not be as valuable as originally hoped.
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Canine Intellectual Property Protection

by Steve Reiss (stevenreiss@scienbizippc.com)

 

After almost 30 years of successfully practicing intellectual property law globally, my life long love of the canine has been calling me more loudly lately. Through these barks, I hear them telling me...protect our and our owners' Intellectual Property.

I am pleased that a portion of my practice will more closely focus on the canine and protecting them and their intellectual property. Including:

• Representing dog breeders and kennels with trademark and service mark acquisition;
• Helping dog breeders and kennels with contract preparation, negotiation, and review;
• Helping canine-focused entrepreneurs protect and brand new businesses and animal products, such as gourmet dog foods, toys, and clothes;
• Copyrighting canine photos, arts, and crafts;
• Assisting dog breeders and kennels with AKC kennel registration.

I will also be blogging on these subjects.

If you have any questions or intellectual issues, feel free to bark me a message here or at Facebook.

He stood up, listening and scenting. From far away drifted a faint, sharp yelp, followed by a chorus of similar sharp yelps. As the moments passed the yelps grew closer and louder. Again Buck knew them as things heard in that other world which persisted in his memory. He walked to the center of the open space and listened. It was the call, the many-noted call, sounding more luringly and compelling than ever before. And as never before, he was ready to obey.

Call of the Wild, Jack London (1903).