• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent
      • Utility Patents
      • Design Patents
      • Patent Application
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademark
      • Trademark Search
      • Trademark Application
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Patent application process / Before filing a patent application / Patent Eligible Subject Matter / Plager calls to overturn current patent eligibility analysis

Plager calls to overturn current patent eligibility analysis

October 20, 2018 by James Yang

The holding of Interval Licensing LLC v. AOL, Inc. (Fed. Cir. 2018) is similar to Electric Power Group, LLC v. Alstom (Fed. Cir. 2016).  In these cases, the courts invalidated the patent as being directed to an abstract idea for claiming an end result and not the how to achieving it.  In Interval Licensing LLC, the dissent’s opinion is much more interesting.

  1. He explains the frustration over the current legal analytical framework (Alice/Mayo two step format) for determining patent eligibility.
  2. He suggests that the “inventive concept” analysis was replaced with the obviousness analysis in the 1952 Patent Act.
  3. He gives specific next steps to fix the current problems with Alice/Mayo two step analysis.

1.  Frustration over patent eligible subject matter laws

Interval Licensing LLC v. AOL, Inc. is significant for the dissenting opinion.  The dissenting opinion explains the frustration at the Federal Circuit level over the current Alice/Mayo framework.

Judge Plager (dissent) explains that he and at least two other judges on the Federal Circuit have gone on record to voice their frustration with the current Alice/Mayo analytical framework for deciding patent eligible subject matter.  Judge Richard Linn in Smart Systems Innovations, LLC v. Chicago Transit Authority and Judge Alan Lourie in Berkheimer v. HP Inc.  He additionally indicated that there are more judges that are frustrated but only behind the scenes.  Judge Plager states that:

“I do not mean to suggest that they are the only two such judges on the court – to my knowledge, other than myself, they are the only two who have gone on record in such clear terms regarding the law of ‘abstract ideas.’”

Judge Plager’s main objection appears to be that the current legal framework for deciding which patents are patent eligible does not give confidence that the outcome is necessarily correct and impossible to know with any certainty whether the invention is or is not patent eligible.  He wants a just result and a clear framework that is more repeatable.  That is what others want but are not getting with the current Alice/Mayo framework.

Commentators have recognized the current problems with our Section 101 jurisprudence.  See comments by former head of the USPTO has called for abolishing Section 101.  See also USPTO Report on Patent Eligible Subject Matter.

For Judge Plager, the problem exists because abstractness is just one of degree. It is impossible to tell when an abstract idea turns into a concrete idea.  He gives an example where two statements are both abstract but one is more abstract than the other.  He argues that the statement “let’s have hamburgers for dinner” is less abstract compared to “I have an idea-I am going to invent how to make time go backwards.”  He rhetorically asks:

  • How much abstractness is a function of concreteness?
  • How do we pick the line where the articulation and explication of an idea is sufficiently concrete to be ‘non-abstract,’ but not such much as to be ‘generic and conventional?’
  • Does it help to phrase the notion as the difference between claiming a desired result and claiming how to produce that same result?
  • Or are we just substituting one set of vague notions for the other, with the same line-drawing problem?

Another source of frustration is the current method of comparing your case with other similar cases to determine patent eligibility.  Why? He states that “’Abstract ideas,’ like the term ‘obscenity,’ may provide a cultural consensus in a given instance regarding whether a past event qualifies, but it fails to provide the kind of specificity and clarity that makes it useful for future prediction of outcome.”

2.  Inventive concept was abolished long ago with the advent of the nonobviousness requirement

On page 7 of the dissenting opinion, importantly, Judge Plager explained the history of 35 USC 103 (i.e., Section 103) and how it relates to the current analysis for determining patent eligibility.   Section 103 is a statutory requirement that the claimed invention must be nonobvious in light of the prior art or existing technology. The dissenting opinion suggests that historically the “inventive concept” analysis was replaced by the nonobviousness requirement.

The dissenting opinion explained that before enactment of the 1952 Patent Act, nonobviousness was not a requirement to secure a patent.  During this time, the court had injected a “requirement for invention” to secure a patent.  For 100 years prior, the courts opined on what did and did not amount to “invention” which was not very fruitful.  At the end, the courts concluded that “’invention’ resulted from the exercise of the ‘inventive faculties’ and other circular reasonings.”  With the enactment of the 1952 Patent Act, Congress had made nonobviousness a requirement to secure a patent.  Later, a famous judge, namely, Judge Rich shortly thereafter had written about the 1952 Patent Act.  He wrote:

“that when 103 has been complied with, there is no further and different requirement called ‘invention’; that compliance with 103 is the policy judgment of Congress on how to bring the invention within the Constitutional purpose.” Giles S. Rich, The Vague Concept of “Invention” as Replaced by Sec. 103 of the 1952 Patent Act, 46 J. Pat. Off. Soc’y 855 (1964).

Before the 1952 Act, the “requirement for invention” had caused problems for the court.  Judge Plager suggests that the current “inventive concept” requirement in the Alice/Mayo framework is just the “requirement for invention” but in different words.  He suggests that the current nonobviousness analysis can do the work to ferret out and exclude abstract ideas that the “inventive concept” step in the Alice/Mayo framework is trying to do.

3.  Next steps

Judge Plager reaches out to the Supreme Court.  He asks them to abolish the abstract idea rules.  For the district courts, he suggests that they analyze 102 (novelty), 103 (obviousness) and 112 (enablement and written description) before analyzing 101 (patent eligibility).  Lastly, he asks Congress for help in resolving this issue.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

  • Facebook
  • Twitter
  • LinkedIn

Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?
  • Why patent your invention in a bad economy?

Patent Book

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Prosecution Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney