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Understanding the Limits of the 2019 Revised Subject Matter Eligibility Guidance

This is Dan Bell of Bellcertified.com.

I am a US patent lawyer with an undergraduate degree in computer science. I have been helping leading software companies obtain patents on their computer-related inventions for 20 years.

I also help train patent engineering teams to provide patent services supporting lawyers. When trained properly for a particular process, a patent engineering team, managed by the right lawyers, will result in considerable cost savings for clients. The right team of trained engineers can perform some functions of a patent process, better than lawyers. Sometimes the deeper technology insight makes all the difference in the world.

Part of our training responsibility has included teaching engineers how to identify and document legal issues. The engineers perform search, analysis, and drafting. The engineers deliver initial work product and issue spotting to patent lawyers assigned to a project. The lawyer decides which identified issues to raise with the (corporate) client. Lawyers must remain in charge of the process to manage quality, confidentiality, export restrictions, and unauthorized practice of law.

The engineers must be trained to know what the lawyers need. Engineers study issues such as subject matter eligibility (35 USC §101), written description and enablement (35 USC §112), novelty (35 USC §102), obviousness (35 USC §103), prosecution history estoppel, direct infringement, search date verification, freedom to operate, etc. These are just the biggies. There are hundreds of other issues they need to learn depending on the projects they are assigned.

Subject matter eligibility has been one of the most dynamic areas of patent law change over the last decade.

Lawyers are more comfortable with grey areas of reason than engineers and scientists. A legal test that has no consistent basis in reason can be perceived as an insult to intellectual integrity when presented to engineers and scientists. Patent lawyers are scientists so they live in both worlds of law and science. Sometimes it is better to tell engineers and scientists the truth–the king has no clothes.

In 2014, the US Supreme Court (SC) decided Alice Corp. v. CLS Bank (Alice). In Alice, the SC restated, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U. S. C. §101.

Next, they identified the judicial exceptions. “[L]aws of nature, natural phenomena, and abstract ideas” are basic tools of scientific and technological work, and thus cannot be patented. Allowing monopolization of such tools of human ingenuity via patents might impede innovation more than it would tend to promote it.

The job of the USPTO and the courts has been to identify the difference between claiming the tools of human ingenuity and claiming something that integrates those tools into “something more,” a practical application.

However, as noted in the 2019 Guidance, the Alice test for patent eligibility has proven to be unreliable in practice. Patent lawyers and the USPTO have been unable able to use the Alice test to effectively predict patent subject matter eligibility.

Patent lawyers, the USPTO, and the Federal Circuit have reacted and developed other tests. In one such case, they just compare patent claims in question to patent claims deemed eligible or ineligible in previous court cases. I affectionately call this the duck test. If it looks like a duck, and it quacks like a duck, it is probably a duck. Not very professional sounding I know. But that is the state of the law on the day of this post. 

In practice, the patentee holds their patent claims up next to claims found eligible by the appellate court. They argue that their claims are more like claims found eligible in a previous case. The accused infringer would argue that the claims are more similar to claims found ineligible in a different case. The courts would decide which duck the claims quacked more like.

The lawyer that was able to convince the court that their claims were more like a previously decided case, had the greatest chance of winning their argument in the courts and before the USPTO. Amdocs v. Openet, 841 F.3d 1288 (2016).

The problem with this method of making legal determinations is unpredictability. There is no predictable logic that can be used to ascertain results with any certainty. Only the most egregious claims on either side of the issue are clearly predictable. This uncertainty invites parties to litigate every case instead of negotiating with reason. The duck test invites an inefficient use of social resources and brings the legal profession’s ability to reason like scientists into question.

Here is a short summary of the Federal Circuit cases determined to be patent eligible in the computer science domain. If your specification and claims quack like these, you have a decent chance of winning in this post-Alice world. But there is no guarantee that any of these cases will remain good law when the SC inserts itself back into the analysis. These ducks are patent eligible today.

    1. Ancor v. HTC, 908 F.3d 1343 (2018): The claimed advance is a concrete assignment of specified functions among a computer’s components to improve computer security. The claimed improvement in the computer functionality of security is eligible for patenting. The claim recites, using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record.
    2. Data Engine v. Google, 906 F.3d 999 (2018), 906 F.3d 999 (2018): Thus, instead of finding information by scrolling different parts of a large spreadsheet, or by invoking multiple windows of a conventional three-dimensional spreadsheet, the present invention allows the user to simply and conveniently ‘flip through’ several pages of the notebook to rapidly locate information of interest. This improved interface allows for rapidly accessing and processing information on the different pages, including, for example, displaying a plurality of page identifiers for selecting individual pages. This is based upon a technical improvement that also happens to improve the user experience locating information more rapidly with less work.
    3. Core Wireless v. LG, 880 F.3d 1356 (2018): The disclosed invention improves the efficiency of using the electronic device by bringing together a limited list of common functions and commonly accessed stored data, which can be accessed directly from the main menu. Displaying selected data or functions of interest in the summary window allows the user to see the most relevant data or functions without actually opening the application up.
    4. Finjan v. Blue Coat, 879 F.3d 1299 (2017):Claims directed to a behavior-based virus scanning method directed to patent-eligible subject matter because they employ a new kind of file that enables a computer security system to do things it could not do before, including accumulating and utilizing newly available, behavior-based information about potential threats. Enabled more nuanced virus filtering in analyzing whether a downloadable’s code . . . performs potentially dangerous or unwanted operations. Directed to a non-abstract improvement in functionality, rather than the abstract idea of computer security.
    5. Visual Memory v. Nvidia, 867 F.3d 1253 (2017): Claims directed to an improved computer memory system with programmable operational characteristics defined by the processor directed to patent-eligible subject matter. The claimed invention provided flexibility that prior art processors did not possess, and obviated the need to design a separate memory system for each type of processor.
    6. Thales Visionix v. US, 850 F.3d 1343 (2017): Claims reciting an improved method of utilizing inertial sensors to determine position and orientation of an object on a moving platform not directed to an abstract idea or law of nature. Even though the system used conventional sensors and a mathematical equation, the claims specified a particular configuration of the sensors and a particular method of utilizing the raw data that eliminated many of the complications inherent in conventional methods.
    7. Trading Technologies v. CQG, 675 Fed. Appx. 1001 (2017): Directed to improvements in existing graphical user interface devices that have no pre-electronic trading analog. Recites more than setting, displaying, and selecting data or information that is visible on the graphical user interface device. Specific technologic modifications that solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter.
    8. Amdocs v. Openet, 841 F.3d 1288 (2016): Components are arrayed in a distributed architecture that minimizes the impact on network and system resources. Minimizes network impact by collecting and processing data close to its source. Distributed data gathering, filtering, and enhancements enabled load distribution. Allows data to reside close to the information sources, thereby reducing congestion amount of data moving causing network bottlenecks. Yet data still accessible from a central location. The specification explains how the technical arrangement provides an advantage over prior art systems that required massive record flows from the network devices and which required a huge centralized database.
    9. McRo v. Bandai, 837 F.3d 1299 (2016): Claimed processes using combined order of specific rules improved an existing technological face animation processes. Defendants provided no evidence that the prior art process used by animators used the same rules required by the claims.
    10. Bascom Global v. AT&T Mobility, 827 F.3d 1341 (2016): Technical feature of network filtering system associates individual accounts with their own filtering scheme while locating the filtering system on an ISP server. This specific applications or improvements to technologies of filtering Internet content is not conventional or generic. The claims carve out a specific location for the filtering system (a remote ISP server) and require the filtering system to give users the ability to customize filtering for their individual network accounts.
    11. Enfish v. Microsoft, 822 F.3d 1327 (2016): Claims reciting a self-referential table for a computer database eligible under step one because the claims were directed to a particular improvement in the computer’s functionality. The self-referential table enables faster searching and more effective storage of data than previous methods. An improvement to the capability of the system as a whole.
    12. DDR Holdings v. Hotels.com, 773 F.3d 1245 (2014): Claims are necessarily rooted in computer technology that overcomes a problem specifically arising in the realm of computer networks. DDR’s patent claimed a technical solution to a problem unique to the Internet—websites instantly losing views upon the click of a link, which would send the viewer across cyberspace to another company’s website. A hybrid webpage that combined visual elements of the first website with the desired content from the second website was a specific technical solution that solved the problem of losing views to another company’s website.

How to Make Your Patent Quack Like A Duck

So how do you get your specification and claims to look like a duck and quack like a duck?

In a moment, I am going to discuss the new 2019 Guidance issued by the USPTO. However, even if you can get the USPTO to issue your claims by following the 2019 Guidance, there is no guarantee your patent will survive litigation. You see, the 2019 Guidance, like the previous guidance, will only be persuasive to the Federal Circuit. The Federal Circuit gets to determine whether or not the 2019 Guidance is consistent with Alice. Once the Federal Circuit decides, the parties may appeal to the SC. If the SC decides to hear the appeal, then we will find out if the SC agrees with the Federal Circuit.

Until then, I suggest you make write your patents to follow the above duck cases. So here are my suggestions for getting your specification and claims to quack like the above ducks.

  1. Duck Specifications: In many of the duck cases, the court looks to the specification for a technical description of how the technical arrangement is a technical improvement over the prior art arrangements. If you are familiar with European law, this should sound faintly familiar. In the written decisions for the Duck cases, the judges tend to find and summarize the advantages that the new arrangement provides over the prior art ways of doing things. They often quote from the specification when they describe the technical advantages. Historically, many US patent lawyers have stayed away from describing technical advantages. They feared the claims would be limited to exclude infringement if the accused embodiments did not provide the described technical advantages. Lawyers in the US tended to merely describe the technical arrangement of the invention and remain silent with respect to advantages. That doesn’t seem to be enough today. The courts need more information about why and how a new technical arrangement (not shown in the prior art) is able to improve the computer system functioning. The more concrete the description of the technical advantage (speed, reduced cycles, reduced latency, reduced bandwidth, reduced memory requirements, quicker/better user experience, etc.) the easier it is for the court to justify the nonabstract nature of the improvement. A discussion of advantages to the user are often given secondary weight to the technical efficiencies to the computer as a consequence of the technical improvement.  The way the judges analyze the cases in this area of law makes sense. In essence, they are answering the question, “How can this thing be abstract when it is providing real-world advantages to computer science, the user, and/or related technologies?” That is a test that the judge-engineer-scientists on the Federal Circuit understand.
  2. Duck Claims: The claims need to contain the technical elements arranged in a way that provides the technical advantage discussed in the Duck Specification. If the claims do not clearly call out the arrangement that provides the technical advantage described in the specification, they might not be duck claims even if the specification quacks properly. So far, the courts have not seemed to require adding the expected technical advantage to the claim language. As far as I know, in the post-Alice world, we haven’t seen many cases where the court imports an unclaimed technical advantage from the specification into the claims. If you know of one, please comment below, and I’ll give you credit in the update to this post. Thank you in advance.

Nobody really knows what the SC will do the next time they hear a patent subject matter eligibility case. So duck claims and duck specifications are no guarantee either. But I have no other ideas for you. I would suggest that you simply comply with the Alice test. However, if I knew what the Alice test meant in practice, I would already have explained that to you. But the truth is, I don’t know.  Which is not good.  I have a summa cum laude BS in computer science and I have very few ideas about how to apply Alice in my computer science practice. I feel incompetent every time I look at this issue. So I just follow the duck test set by the Federal Circuit.

SC is the highest court in the land. Thus, the Alice case is controlling law. Whether or not duck cases are properly interpreting Alice, is yet to been seen. If the SC continues to use abstract reasoning (did you get my joke?) when applying subject matter eligibility law, then Congress will need to step in and amend 35 USC §101.

I am going to continue to write duck specifications and duck claims whenever I can get that information from my clients. I believe that will have a longer shelf-life than the new 2019 Guidance. Don’t get me wrong, I like the 2019 Guidance. I just hope the courts agree. When I am arguing a case before the USPTO, I will follow the 2019 Guidance. However, I will also prepare my specification and claims to comply with the Federal Circuit’s duck cases.

Main Ideas of the 2019 Guidance

Okay, with that context in mind, I will now summarize the 2019 Guidance.

The United States Patent Office (USPT0) has issued the 2019 Revised Patent Subject Matter Eligibility Guidance. However, both the USPTO agency and the Federal Circuit are required to follow Alice. If the SC later interprets the 2019 Guidance as broader or narrower than Alice, the SC can reject this 2019 Guidance.

If you are a patent lawyer or patent engineer, you need to be intimately familiar with the 2019 Guidance. I am only going to cover them superficially here. I presume that you will study them completely when drafting and prosecuting patent applications.

Revised Step 2A–(“directed to a judicial exception?”)

Step 2A is a two-pronged inquiry.

Prong One of 2A (P1-2A): Prong one requires determining whether a claim recites a judicial exception.

The guidelines limit examiners to “subject matter groupings” when determining whether a claim “recites a judicial exception.” The subject matter groupings have been limited to “mathematical relationships,” “methods of organizing human activity,” and “concepts [that could be?] performed in the human mind.”

When determining whether a claim recites a judicial exception of the abstract idea kind, the guidelines limit examiners to only the above subject matter groupings. If the claim does not recite one of these limited groupings, then it is patent eligible.

If the examiner determines that a claim recites one of the limited groupings, they proceed to prong 2 of 2A analysis.

If prong two analysis is required, the examiner must first make findings of which claim elements specifically are judicial exceptions and which judicial exception the identified claim elements fall under. With findings enumerated, the examiner analysis continues at prong 2 of 2A.

Prong Two of 2A (P2-2A): The examiner must determine whether the claim recites additional elements that integrate the judicial exception claim elements into a practical application. P2-2A adds a more detailed analysis of the eligibility analysis than required in the previous guidelines.

In making this practical application determination, examiners are no longer allowed to determine at this stage whether any other such limitation is well-understood, routine, or conventional activities. Examiners must determine whether other limitations help integrate the identified limitation into a practical application–even if those other limitations are conventional, well-understood, or routine.

The guidelines provide the following examples of when one of the other limitations of the claim (for claims in the computer science domain) integrate the identified judicial exception into a practical application.

  1. The additional element(s) reflects an improvement in the functioning of a computer or an improvement to another technology or technical field.
  2. The additional element(s) uses a judicial exception in conjunction with a particular machine or manufacture integral to the claim.
  3. The additional element(s) transforms a particular article to a different state or thing.
  4. The additional element(s) uses the judicial exception in a meaningful way beyond merely linking it to a particular technological environment.

Examiners are reminded (multiple times) in the guidance that a claim that includes other limitations that are conventional, well-understood, or routine, may still integrate a judicial exception into a practical application during P2-2A.

A claim that does not integrate a judicial exception into a practical application may still be subject matter eligible under following Step 2B.

Step 2B: Claims may still be patent subject matter eligible if the additional elements recited in the claim provide significantly more than the judicial exception. Under step 2B, examiners should determine whether the additional elements, individually or in combination, amount to an inventive concept (i.e., “significantly more than the judicial exception itself”). In this step, examiners are allowed to consider whether any of the additional limitations are conventional, well-understood, or routine.

Summary

I recommend following the duck test when drafting your patent applications. That law is the current and controlling law set by the Federal Circuit. In your specifications, include a technical description of how the technical arrangement is a technical improvement over the prior art arrangements. In your claims, call out the arrangement that provides the technical advantage described in the specification. Because this is the format that the Federal Circuit seems to prefer, it is likely to remain the format that survives a subject matter eligibility challenge in litigation.

I also suspect, that claiming the arrangement that provides the technical advantage described in the specification, will result in claims with “other limitations” that survive the revised 2A analysis under the 2019 Guidance. Following this path, your specification and claims are more likely to survive both prosecution and litigation.

Invalidity and Infringement Analysis Courses: Certified Patent Analysts**

Figure 1 small

This document provides an introduction and overview of the Patent Infringement Analysis Process and the courses offered to teach this process.  The Patent Infringement Analysis Process is conducted to identify, verify, and provide evidence that a patent is being infringed.  A patent is a government granted right to exclude others from practicing a patented (claimed) technology.  However, a patent does not give its owner the right to practice their own invention if doing so infringes the patents of others.  Not having a right to practice your own invention creates a fascinating world of layered rights to exclude others from manufacturing products and services, but manufactures of products and services must traverse these layered rights carefully to avoid significant liability.  Even after the government has granted a patent, it may be routinely infringed by others.  Since it is not a criminal act to infringe a patent, a patent owner can’t expect the police to unilaterally identify and stop infringement.

Instead, patent owners need to enforce their rights against infringers using various government sanctioned procedures.  For example, in the USA, the federal courts can award damages to the patent holder for past infringement and may also issue an injunction which stops the infringer from continuing future infringement.  A patentee may also petition the International Trade Commission (ITC) to stop infringing products from being imported into the USA.  Often, before filing an action in the federal courts or the ITC, the patent owner will ask their lawyer to contact the infringer to negotiate a settlement.  A negotiated settlement will allow all parties to save the significant investment required for litigation.  If a settlement is not reached, the patent holder’s lawyer may file an action and proceed to litigation.

Often, before settlement negotiations begin, the patent lawyer will gather evidence of infringement to prove the seriousness of their position.  The courses described below will teach you how to document the evidence the lawyer will need to prove their infringement claim.  It will teach how to document the evidence in a deliverable called an Infringement Claim Chart (or Evidence of Use Chart) and how to spot and comment on any issues spotted during your analysis.

If you are working for the lawyer for the patent owner, he will be looking for your arguments about why the patent is infringed.  If you are working for the lawyer of the accused infringer, she will be looking for your arguments about why the patent is not infringed.  All of the following business contexts will typically require an infringement analysis and claim chart on both sides of the transaction.  So make sure you know who the lawyer is working for before conducting your analysis and preparing the described deliverables.

Lawyer Motivation: Business Context

Freedom to Operate: A freedom to operate is a study performed by a company before releasing a product in order to see whether their product will infringe patents owned by others.  Some companies employ patent lawyers to conduct a freedom to operate study and some of  those lawyers have an engineer conduct the preliminary search and or mapping of evidence of infringement.  During a freedom to operate study, the lawyer first determines how the proposed product or service will operate, and then, the lawyer studies patents in that domain to see if any of the patents owned by others would be infringed by the proposed product or service.  Once risky patents are identified, the engineer may have recommendations about how to design around the those patents so the product will not infringe upon release.  After the lawyer determines whether the design around recommendations are substantial enough to avoid infringement, the lawyer will discuss these design changes with their client manufacturer.

Eyes Closed Development:  Some companies just develop and sell products and services without conducting freedom to operate studies.  Some products are so complicated and/or in such crowded fields, that it would take forever to design around all the patents.  This could be the case with complex systems such computers and jet airplanes.  Instead, the manufacturer may use statistical analysis to estimate how much they will likely have to pay in patent licensing fees and infringement damages, and will build that estimated expense into the product pricing.  One benefit of eyes closed development is that you are less likely to have to pay treble damages for willful infringement.  If you don’t know about a patent, an accusation of willful infringement is less likely to be successful.  A company operating in this way will simply wait for the patent owners to approach them with a letter asking the manufacturer to stop infringing a patent or asking for royalties for past and future infringement.  Once the infringer receives the letter, then they must design around the patent in order to avoid treble damages that may accrue if they continue to infringe after being warned.  A patent analysis team that includes both engineers and lawyers, is arguably the best way to neutralize these threats when they occur.  Patent lawyers are necessary to make recommendations to their client about a strategy, but an engineer is better suited to do the initial analysis on many issues.  As a lawyer, if you have a team of engineers, the aggregate savings to your client may be significant, especially if the engineers reside in a country with lower salaries.

Due Diligence: The lawyer could be conducting a due diligence study on the patent before recommending whether their client purchase the patent.  The lawyer’s client may be interested in buying the patent, buying the company that owns the patent, or lending money secured by the patent.  Before entering into such a transaction, the lawyer will want to know if the patent is presently being infringed by anyone.  Even if the patent has value, the lawyer may want to know any arguments of non-infringement or invalidity, in order to factor in the  risks of ownership or otherwise gain leverage for their client in acquisition or security interest negotiations.

Offensive (Infringement) Review:  The patentee may want to assert their patent against anyone using their claimed technology with the goal of creating royalties.  The patentee may also want to stop anyone else from using their technology so they are the only provider and can increase their pricing strategy.  Having a temporary monopoly in the marketplace is one of the original intents of the US constitution.  The idea was to reward inventors with temporary monopoly profits in return for for teaching the world how to perform the invention.  During the patent term, the patent owner has the right to either stop everyone from using the invention and/or asking anyone using their invention to pay reasonable royalties.

Defensive (Infringement) Review:  Defensive review is similar to the offensive review except that the analysis is done by the alleged infringer instead of the patent owner (i.e., patentee).  The alleged infringer needs to verify whether the patent is valid and infringed before agreeing to pay any royalties to the patentee.  The lawyer will need to understand the most significant arguments before recommending a course of action to their client.

Invalidity Analysis:  Even if the lawyer recommends licensing or acquiring the technology, the royalties or price paid will vary substantially based upon the perceived possibility of being able to invalidate the patent during litigation.  So the lawyer needs the best data available to help the client make these business decisions. Before the patentee spends significant resources developing infringement arguments against someone believed to be using the claimed technology, the patentee’s lawyer will want to make sure the patent will survive a challenge in court.  Under US federal court rules and procedures, if a patent is asserted without reasonable investigation into the facts, the patentee or their lawyer could be subject to certain sanctions, such as paying the opposing party’s legal fees.  The patentee’s lawyers will want to conduct an investigation to verify that the patent is both valid and infringed before any action it is taken.  Thus, the evidence of use chart is only as strong as its weakest link.  If an infringed patent can be proved invalid based upon defects in written description or enablement, or it is anticipated or rendered obvious by the prior art, then it ultimately won’t matter that you have a strong evidence of use chart.  Any lawyer filing a lawsuit without conducting an invalidity analysis, is putting themselves and their client at risk.  However, many lawyers will do everything but file a lawsuit before conducting an invalidity analysis.  In that case, the lawyer may instruct you to hold off on the invalidity analysis until after license negotiations have failed and they are about to file the lawsuit.  So, although all of the below concepts are important for you to understand, not all of the below processes will necessarily be performed for each case.  The report-requesting lawyer remains in charge and will let you know when to do which of the following described processes.

Sub-Process Steps and Training Phases (Courses)

There are literally hundreds of issues that the lawyer may want you to note in your analysis and report.  These courses are designed to give you a working vocabulary and understanding of what the lawyers desires for each case.  Each of these issues may also have multiple subtle nuances that occur to the lawyer upon further investigation and research.  It is not the intention of these training materials to teach you every single issue or subtle nuance, but you do need a very strong working understanding of the main issues.  Even an expert patent litigator would not be able to memorize all the issues.

The purpose of these courses is to (1) familiarize you with most of the significant issues, (2) help you understand whether the evidence in front of you proves (a) that a patent is invalid, or (b) that a patent is infringed, (3) provide you with a step-by-step processes that you can use to complete an invalidity analysis and or an infringement analysis, (3) provided you with example process documents, issue checklists, sample comments (for spotted issues), and quality metrics for confirming process compliance, and (4) give you experience completing sample templates and quality metrics.

This is an art not a science, so please do not assume you are an expert just because you completed these courses.  Even a new patent lawyer properly licensed in their relevant jurisdiction, should practice these processes under the supervision of an expert patent litigator for several years before expecting to achieve consistency and quality.  These courses are designed to create a common interface upon which an engineer and a lawyer can communicate.  The lawyer needs to understand what the engineer knows and does not know.  These materials give a jumping off point so the engineer understands what the lawyer is saying and so the engineer can speak meaningfully with the lawyer.  They also show the lawyer what is not taught so the lawyer can supplement these materials if the lawyer wants to assign even more critical work to the engineer.

The Patent Infringement Analysis Process Flow Chart:

As shown above in Figure 1, the patent analysis process has been broken down into phases that will be taught as separate courses.  Priority Law Course 100 is the most fundamental concept upon which all other concepts rely.  For that reason, Priority Law 100 is shown as the context from which all other concepts are understood.  Once you understand Priority Law 100, you can begin to study other concepts.  We then teach the Invalidity Analysis process 200 followed by the Infringement Analysis process 300.  As shown in Figure 1, the Invalidity Analysis process 200 has been broken down into three courses.  These three courses include (1) the Specification Chart Process Course 220, (2) the Prior Art Search Process Course 240, and (3) the Reference Chart Process Course 260.  Finally, the Infringement Analysis process 300 has been broken down into two courses, the Infringement Evidence Search Process Course 320 and the Infringement Chart Process Course 340.  Each course is discussed briefly below:

Priority Law Course 100: 

The Priority Law course teaches one of the most important and fundamental subjects in Patent Law.  These concepts may appear simple at first glance, but they are actually some of the most complex.  Although there are hundreds of concepts covered in this course, the level of complexity of the law in this area is shown by these two examples:

1. How to properly set the multiple 35 USC 102 searches dates for each claim of a given target patent including considering proper support for each claim if there is a priority claim to earlier filed family members including both foreign, domestic, and PCT.  Also, how the AIA changes things, and how to integrate the AIA with existing priority law for the next 20 years, including practical examples.

2. How to determine whether or not an identified reference qualifies as prior art under at least one of the sections of 35 USC 102 including considering whether or not invalidating language has continuous support to earlier filing dates.  Also, how the AIA changes prior art admissibility law and how to integrate the AIA with prior existing law for the next 20 years.

This course teaches analysts how to properly set these dates as they read the most significant issues that arise under statutory law, federal case law, federal regulations and the MPEP.

There is almost nothing more aggravating to a patent lawyer than to realize that (1) a search needs to be redone because the search date for a claim was set incorrectly, or (2) a reference does not actually qualify as prior art because of some nuance in law that was missed in the study.  The lawyer may not have time to recover from such a mistake, and her confidence in your abilities might be damaged forever if the mistake does not materialize until raised by the opposing party.  These two main issues along with hundreds of other nuances that you absolutely must memorize in order to deliver on time … are explored and tested in this course.

In Figure 1, the Priority Law Course is shown in light blue with the other courses contained therein.  All other processes of an invalidity or infringement analysis exist in a context of priority law.  When commercial activity performs a patent claim it either invalidates or infringes that patent claim.  Priority law is the intellectual puzzle that must be carefully understood to make this determination.

Lawyers have time to ponder these issues while they sit thoughtfully at their desk.  But a patent analyst may need to make decisions within two or three seconds, many times per day.  If any one decision is wrong, they will lose credibility when the lawyer catches their mistake.  For this reason, this course starts out as a theoretical analysis of the statutes, CFRs, MPEP, and case law, in order to give you a reasoned understanding of the decisions you must make.  However, it quickly evolves into a methodology that will require you to test your understanding of dates on over three hundred scenarios in a certification exam lasting only a few hours.  With this solid understanding of priority law, you will go sailing into the following courses.

 

Invalidity Analysis Process 200

The Specification Chart Process Course 220:

The first step that lawyers often take when conducting a patent invalidity analysis is to prepare a specification map for the target patent. The lawyer uses the specification map to determine whether the target patent satisfies legal requirements such as written description, enablement, subject matter eligibility, claim definiteness, prosecution history estoppel, etc.  The specification chart also helps the lawyer construe (i.e., determine) the legal meaning of the claims. The course walks the student step-by-step through the data fields of example specification charts and teaches how to complete each field.  Finally, the course shows how to set the search date for each claim in the patent studied.

Participants read statutory law, federal case law, federal regulations and the MPEP to provide context for the issue checklists.  The course teaches the law behind the specification chart process so students can better identify and present legal issues to the report requesting lawyer.  The course includes issue checklists, example templates, example comments, the preparation process, practical and theoretical questions, graded assignments, sample test questions, and a final examination.

The Prior Art Search Process Course 240:

Once the search dates and the meaning of each claim is established from the specification map process (see above), the prior art search begins.  The Prior Art Search Process Course explores various techniques that can be used to find the best prior art.  Search techniques explore how to find relevant patent and non-patent literature, along with the patentee’s own activities, if any.

The search process is recursive in nature.  As references are discovered in the search, those references are scanned to see which claim elements, if any, are missing from the reference.  This information is used to alter the search strategy.  In practice, this prior art search process is tightly coupled with the following reference chart process, since references are scanned during the search in order to verify whether they anticipate or merely render the claim obvious.

The Reference Chart Process Course 260:

The final step in the invalidity analysis process is completing a reference chart.  The reference chart maps the most relevant parts of prior art references in a column adjacent to the claim language.  The course explores the law of anticipation, inherency, and obviousness which is used to determine whether or not a target patent is valid in view of the prior art.

The course walks the student step-by-step through the data fields of example reference charts and teaches how to complete each field. The course explores the legal basis of the issues that arise under statutory law, federal case law, federal regulations and the MPEP. The course teaches the law behind reference charts so students can better identify and present legal issues to the report requesting lawyer.  The course includes issue checklists, example templates, example comments, the preparation process, practical and theoretical questions, graded assignments, sample test questions, and a final examination,

 

Infringement Analysis Process 300

 

Infringement Search Process 320:

Once the search dates and the meaning of each claim is established from the specification map process (see above), the infringement evidence search begins.  Evidence of commercial activity performing every element of a claim, that does not qualify as prior art, is mostly likely to be evidence of infringement.  There is literally a moment when activity goes from being prior art to proof of infringement.  That is why an understanding of priority law is so important to all of these other courses.  The Infringement Evidence Search Process Course explores various techniques that can be used to find the best infringement evidence.

The search process is recursive in nature.  As infringement evidence is discovered, that evidence is scanned carefully to see which claim elements are not clearly described in the evidence of use.  This information is used to supplement the search strategy.  In practice, this infringement evidence search process is tightly coupled with the following infringement chart process, since evidence is scanned to verify whether all elements of the claim are present in the implementation, and whether more detailed information or reverse engineering needs to be performed to verify the actions of an implementation not described in the evidence.

Infringement Chart Process 340:

The last step that lawyers often take when conducting a patent infringement analysis is to prepare an infringement chart for the target patent. The lawyer uses the infringement chart to determine whether the infringement evidence satisfies legal requirements such as direct infringement, the doctrine of equivalence, inducement to infringe, contributory infringement, product made by patented process, or attempting to avoid infringement by exporting unassembled components.  The course walks the student step-by-step through the data fields of example infringement charts and teaches how to complete each field.  Finally, the course shows how to verify whether the provided evidence proves infringement or invalidity.

Participants read statutory law and federal case law to provide context for the issue checklists for this process.  The course teaches the law behind the infringement chart process so students can better identify and present legal issues to the report requesting lawyer.  The course includes issue checklists, example templates, example comments, the preparation process, practical and theoretical questions, graded assignments, sample test questions, and a final examination.

Process Certification Levels:

All of these courses end with a comprehensive examination that rates students based upon their performance on graded assignments, attendance, and a final examination.  If a student does well, they will receive a certificate from Bell Certified.  The certificate will indicate whether they are certified to perform the process themselves or whether they have have done so well that they are also certified to review the work performed by others.  In either event, they will need to perform a significant number of processes under the direction and control of a lawyer who is experienced in this area of law before any certificate can be considered more than just a theoretical evaluation.

Disclosures:

Those who score well are certified to perform a process and top scores are certified to perform review. A certification does not entitle its recipient to practice law. A certified person must perform these processes under the direction and control of a properly licensed lawyer in order to avoid the unauthorized practice of law. In the end, it is always the lawyer assigning the project who reviews the documents, makes legal observations, and presents the issues to their client. An issued certification does not entitle anyone to work directly with the non-lawyer public.

**Any certification issued to a student, certifies only that (1) the student holding the certificate has successfully completed a course created by me (Dan Bell) and (2) the student scored well enough on a final examination to be deemed “certified by me.”  The certificate does not imply anything else.  I have not sought approval from any private, public, or government entities for the course materials and thus the word “certification” or “certified” only implies my personal approval of an individual student’s performance in one of my courses.  I am a computer science (BS) and law graduate (JD) from Arizona State University (USA), and I have also worked at a well-respected US patent law firm.  If you would like to speak to a US lawyer who has engaged me to teach his team, please let me know.  The past is a good indication of the future.  Although I am maintaining my membership in the Washington State Bar, the Oregon State Bar, and the United States Patent Bar, I will not be acting as your lawyer.

We are teaching scientists and engineers how to work for lawyers. We are not your lawyer, we are not taking new clients, and we are not performing legal services. Since we are not your lawyer, you should not disclose any confidential information to us. We are just teaching now.

If you have come here to learn about patent litigation, patent prosecution, and patent analysis processes, and you agree: (1) to not disclose confidential information to us without your lawyer’s permission, (2) to not perform trained processes directly for the non-lawyer public, and (3) to not disclose our teaching materials to anyone else without our advanced written consent, then you have come to the right place.

Welcome to your future!

Dan Bell,

Chief Learning Officer

(Contact Me)

 

Are Present CLE Methodologies Worthless?

I spent 40 months living in India while training patent engineers about patent law. 

I thought you should know the history and evolution of my teaching methodology.  I owe the lion’s share of my success to others, as you shall now read. 

When I first arrived in India, I used to give CLE type lectures.  I assigned reading materials (e.g., MPEP) and we discussed them in class.  I did not assign homework nor grade it.  It was mainly ‘push’ training, and not many people were reading.  I was lecturing.  The trainings had neither carrots nor sticks.  We were not even testing anyone for retention.  Often in class, it seemed like just me and 3 or 4 other students were having a discussion about the reading materials.  The other 20 students often listened without comment. 

At that time, a few students approached me and said, if you want people to read, you should assign questions from the reading materials and have each student hand in answers at the beginning of class.  I realized that there were too many students for me to grade essay style answers, so I used true-false and multiple choice questions.  They would hand them in and the students would debate the answers during class and ask questions.  The difference was amazing.  Their comprehension and interest increased in a significant way.    

Observation 1: People read actively, learn more, and retain more when they are asked not only to participate in class, but to hand in assignments to be graded. 

It seems obvious right?  But there were still a few who were not doing as well as I would like.  We were allowing and even encouraging students to work in groups.  We asked them to read and do the assignments first, but then meet in groups before class and discuss their answers together.  But some students were rumored to be free-riding on others in their groups.  They would not read but would show up and listen for the best answers in group meetings.  Another student came up with the idea, why don’t you pick students at random during class to answer the questions.  The idea was to create fear of being picked in class.  This reminded me of the Socratic Method, so I tried it.  It worked.  Picking students randomly to answer questions made a big difference.  Even those who relied upon others to complete their assignments, had to study the answers before coming to class out of fear that they would be picked and appear unprofessional.

Observation 2:  People who may be accountable in a public way are more likely to do their own work, even when a group format might otherwise have allowed free riders.

There were a few students still rumored to be handing in the work of others.  Another student came up with the idea … why not give a quiz at the beginning of class?  The quiz can be just five or so questions so it doesn’t disrupt the class in general, just the first 10 minutes or so.  This will force students who want to do well to read the entire reading materials and not just the portions needed to answer the assignment.  You can still have an assignment handed in, just have the quiz to test who is reading the whole assignment, and not just preparing to discuss the known questions.  This also helped improve reading.    

Observation 3:  Group activities are beneficial and short in-class quizzes will encourage reading and participation by all group members.  

There were times when 20-30% of the students were missing from class.  They were the students who often did poorly later on tests.  A student recommended that we take attendance in class and have attendance be part of the course grade.  As a result, attendance increased dramatically as well as understanding.

Observation 4: Attendance should be part of the grade since it increases understanding and participation.

Some students despite all these methodologies, were not performing to their know capabilities.  We decided that advancement on the team into management positions should depend at least in part upon training performance.  We set training performance metrics that a student must meet to advance within the organization.  This idea has been heavily supported by both client and provider and has made a big difference.

Observation 5: Tying career advancement to continued training scores motivates high knowledge acquisition in this continuous learning environment.

A few students over the last few years have approached me with the idea that some leaders are scoring poorly as compared to their reports.  Some students achieve management levels and then are no longer motivated to maintain their scores.  One student felt that if someone is leading a team and reviewing people for advancement decisions, they should also maintain their own scores.   As far as I know we have not demoted anyone for failing to take their studies seriously, so I have no observation about whether or not that would motivate, but that seems likely on its face.  It does appear silly to require training scores for advancement, but not expect our leaders to be examples of our organizational values.

Observation 6: Demoting leaders who do not score well in a continuous learning environment will help maintain organizational learning values.

Now I ask lawyers reading these observations … is there really any lasting value obtained in existing CLE learning methodologies in the USA?  I just finished 50 hours of CLE in the US over the last three months.  It was a big waste of time when viewed in light of the above observations.  They often assigned hundreds of pages of reading materials with no questions.  The expert lectured the entire time often only taking questions at the end.  The only monitoring of any kind was a sign in sheet or a code word that must be recalled for credit.  I’ll bet that less than 10% of the attending lawyers could pass a test covering the materials.  The purpose of CLE is to maintian continuous learning in the legal profession, but present methodologies do no such thing.  Every lawyer knows this, so why do we all keep pretending? 

Warm Regards,

Dan Bell (Contact me.)

Do not disclose confidential information to me.  This is not legal advice or opinion.  This does not represent the current state of the law and does not include all issues relevant to this topic.  Do not take any action based upon this information without discussing the facts of your case with your lawyer.  I hereby refuse to be your lawyer.   I am only teaching now.  Copyrights © 2010 Dan Bell

What is a Patent Analyst?

Often, you will start your career in patent research doing prior art technology searches.

There are also many other different types of searches that are performed such as due diligence searches, invalidity searches, freedom to operate searches, evidence of use searches, etc.

For all of these searches, the report requesting lawyer will be very concerned about the dates that information first came into being. One date proves that a patent is invalid while another date proves the same patent may be infringed. If you can become as intimately familiar (as the report requesting lawyer) with how these dates arise under US patent law, your earning potential increases dramatically. This area of law is called Priority Law.

Priority Law is the most critical step in your development. Once you understand Priority Law, you will have taken the most important step towards becoming a patent analyst as compared to being merely a search specialist. I am not exaggerating.

I have seen the patent lawyers at one of America’s highest revenue producing technology companies, do a 180 degree turn in how they use their dedicated team of engineers. Once they had confidence that the engineers understood Priority Law, the project complexity increased dramatically over a short period of time and the team size almost doubled. In a two year period, the team went from doing almost exclusively technology research, to doing mostly high-end patent analysis work.  That is the good news.

The bad news is that Priority Law is a fairly difficult topic to learn at this level of detail. Almost nobody outside a US patent law firm understands US Priority Law well enough to perform high-end services for US patent lawyers.

Times are changing rapidly. Most companies around the World are becoming more sophisticated in their legal service purchasing habits. Companies are expecting law firms to employ the lowest cost resource that can get a job done right. Companies no longer believe that a patent lawyer needs to perform every step of the analysis process. Engineers, scientists, or paralegals are sometimes better situated to perform certain parts of a project once they are properly trained.

A well trained patent analyst will help reduce the report requesting lawyer’s time in the file, so the aggregate costs to the client are lower. The Priority Law course teaches and certifies an engineer how to understand and communicate with the report requesting lawyer about US Priority Law.

If you study hard and take this seriously, you will be way ahead of the competition in your pursuit of performing high-end patent analysis services for patent lawyers.  Of course, Priority Law is just the first course in a series of courses that can turn you into a patent analyst.

Please let us know if you would like further information about our courses or watch the below free video tour.

Thanks and good luck! 

Dan Bell,  (Contact me.)

Do not disclose confidential information to me.  This is not legal advice or opinion.  This does not represent the current state of the law and does not include all issues relevant to this topic.  Do not take any action based upon this information without discussing the facts of your case with your lawyer.  I hereby refuse to be your lawyer.   I am only teaching now.  Copyrights © 2010 Dan Bell

Patent Prosecution Laches

One of the offshore patent analysis engineering teams I teach just heard about the defense of patent prosecution laches for the first time.  It was listed as an issue in a deliverable list proposed by the US lawyers they serve.  I thought it was interesting that the Federal Circuit would release the below decision at about the same time, so I have provided a few excerpts from the case below.     

In Cancer Research v. Barr Labs, the district court held that “the delay caused by eleven continuation applications, ten abandonments, and no substantive prosecution for nearly a decade was unreasonable and a sufficiently egregious misuse of the patent system to bar enforcement of the ’291 patent for prosecution laches.”  Page 6. 

The Federal Circuit reversed because the accused infringer has “failed to establish … [that anyone] developed or invested in [the claimed technology] during the patentee “period of delay.” Page 14. 

“Prosecution laches is an equitable defense to a charge of patent infringement. The doctrine may render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under the totality of the circumstances.”  Page 7. 

“Two elements underlie the defense of laches: (a) the patentee’s delay in bringing suit was unreasonable and inexcusable, and (b) the alleged infringer suffered material prejudice attributable to the delay.”  Page 9.  To “establish prejudice an accused infringer must show evidence of intervening rights, i.e., that either the accused infringer or others invested in, worked on, or used the claimed technology during the period of delay.”  Page 9. 

In this case, since the evidence presented does not show that the accused infringer or others worked on the technology until “thirteen years after the issuance” of the patent, there is no evidence of prejudice caused by the delay.  Page 13.  Since no prejudice was shown, the court did not consider whether or not the delay was unreasonable and inexcusable.

Dan Bell,  (Contact me.)

Do not disclose confidential information to me.  This is not legal advice or opinion.  This does not represent the current state of the law and does not include all issues relevant to this topic.  Do not take any action based upon this information without discussing the facts of your case with your lawyer.  I hereby refuse to be your lawyer.   I am only teaching now.  Copyrights © 2010 Dan Bell

Infringement Havens

Horacio Gutierrez of Microsoft was quoted as saying that “cloud computing” is as significant a shift in emerging technologies as “the internet or personal computers.”  See IAM Magazine.  Because the binary code is behind a firewall on a server geographically located anywhere in the world, new problems arise in the patent world.  Since you can’t get access to the code, it is harder to prove infringement.  Also, even if you could prove infringement, the server can be moved to a jurisdiction with enforcement issues. 

This reminds me of Tax Havens.  Presently around the world there are Tax Havens where people store assets.  Tax havens are countries that provide favorable tax treatment to encourage business and wealth within their jurisdictional borders.  One can quickly imagine that certain countries will become “Infringement Havens” where weak or non-existent patent laws encourage business to host cloud computing within their jurisdictional boundaries.   

This also reminds me of a paper I wrote back in law school.  I predicted that if the courts decided that software was not patent eligible, they would force software makers to protect their software using self-help techniques such as trade secret law.  Instead of running the software on a PC, the PC would become a thin-client that makes remote procedure calls to a server.  Since most of the software would be located on a remote server, the software could be protected by secrecy.  Further, copyright infringers would be unable to copy the binary code since it would not be in the public domain. 

In the USA today, we can patent software with method claims, system claims, and product claims.  Back in law school, when I wrote the paper, it didn’t occur to me that if software continued to be patent eligible, infringers would look for self-help in the form of an offshore Infringement Haven.  But that is exactly what they will do.  Every computer in the world has a thin-client already—the browser.  Before long, you’ll be hearing about how infringers are running their infringing activities in an Infringement Haven–sort of a counter-punch to non-practicing entities. 

You can imagine cloud computing companies cropping up around the world, advertising that they host only in Infringement Havens.  These are interesting times.

Dan Bell  (Contact me.)

Do not disclose confidential information to me.  This is not legal advice or opinion.  This does not represent the current state of the law and does not include all issues relevant to this topic.  Do not take any action based upon this information without discussing the facts of your case with your lawyer.  I hereby refuse to be your lawyer.   I am only teaching now.  Copyrights © 2010 Dan Bell

The Story of Bell Certified

Hello, my name is Dan Bell. I am a lawyer and a member of the US patent bar.

I have had the unique experience of both (i) working as a patent lawyer at a premier US patent law firm, and (ii) moving to India to teach patent processes to one of the largest non-government patent analysis teams in the world. I lived in India for over 3.5 years. 

After returning to the USA, I started Bell Certified. Bell Certified trains and certifies patent analysts on specific patent processes.  Here is a free video tour and a link to our growing curriculum.

Bell Certified also helps lawyers determine whether teams at outsourcing service providers have the expertise necessary to perform various processes. Service providers are often unaware of the level of detail that lawyers will expect for a given process.  Testing a service provider is the only way to know whether their service offerings are truly competitive. A lower priced provider that appears competitive may turn out to be much more expensive in the long run if you end up spending hundreds of hours preparing them to perform processes they allegedly “know.”

Below is one of the teams I worked with while living in India for 40 months. That’s me in the middle of the bottom row.

Thanks for stopping by,

Dan Bell, Chief Learning Officer   (Contact me.)

Do not disclose confidential information to me.  This is not legal advice or opinion.  This does not represent the current state of the law and does not include all issues relevant to this topic.  Do not take any action based upon this information without discussing the facts of your case with your lawyer.  I hereby refuse to be your lawyer.   I am only teaching now.  Copyrights © 2010 Dan Bell