Average Claims and Figures

Visualizing Patent Claims and Figures Over Time

How have the number of patent claims and patent figures changed over time?

Let’s let the numbers speak for themselves.  I recommend that you use the full screen mode for this visualization.  Click on the full screen icon on the right.

The interactive visualization above provides a clear indication that at a high level for US utility patents, the average number of claims have gone down over time, while the average number of figures have gone up.  In 2005, the average number of claims per patent was 18.83, while the average number of figures was 12.04.  Compare that to 2019, where the average number of claims per patent was 16.22, and the average number of figures was 14.84.

The reasons for these changes are open to interpretation but the data shows some very interesting outliers to the averages when you slice the data by art unit.  For example, when you look at the business method art units of 3621-3629, the data shows the exact opposite from the entire patent field as a whole.  In 2006, the average number of claims per patent was 24.83, and the average number of figures was 17.00.

The xml data powering the Power BI visualization above is automatically downloaded weekly by our patent analytics system from the USPTO using the Bulk Data Storage System.

To learn more about how you can use patent analytics to inform your practice, visit our Patent Analytics website HERE.

 

In Response to the COVID-19 Outbreak, USPTO Extends Certain Patent Deadlines

By Ted Nissly, Associate

On Tuesday, March 31, 2020, the United States Patent and Trademark Office (USPTO) announced that it has exercised its authority under section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to make 30-day extensions available to certain patent and trademark-related deadlines.  Prior to the enactment of the CARES Act, the USPTO did not have authority to extend deadlines because most patent and trademark-related deadlines are defined by statute.

Rather than take a uniform approach to extending deadlines for all filings and payments, such as other patent offices have taken across the world, the USPTO has focused on allowing extensions to only certain filings and payments.  Patent application extensions apply to, for example, responses to office actions, issue fee payments, and certain appeal filings that are due between March 27 and April 30, 2020.  Notably, the USPTO has excluded replies to pre-examination notices and maintenance fee payments to most applicants, unless an applicant is a small entity or micro entity.  The USPTO also granted extensions for certain filings before the Patent Trial and Appeal Board (PTAB), including requests for rehearing of a PTAB decision.  Any qualifying filing or payment due between March 27 and April 30, 2020, will be extended 30 days from the initial date that it was due.

To qualify for an extension, a delayed filing or payment must be accompanied by a statement that the delay in filing or payment was due to a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or payment being personally affected by the COVID-19 outbreak, including through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.

The USPTO has clarified, in a frequently asked questions (FAQ) section of its website that the statement that the delay was due to the COVID-19 outbreak should be a separate statement (e.g., not as part of a response to an Office action) but does not need to be verified or provided in an affidavit or declaration form.  However, the COVID-19 outbreak must materially interfere with a filing or payment to qualify as a delay due to the COVID-19 outbreak.

The USPTO’s extension of deadlines under the CARES act is just the latest relief that the USPTO has granted due to the COVID-19 outbreak.  Last month, the USPTO waived fees for reviving applications that became abandoned because of failure to meet a deadline for responding to an Office communication due to the COVID-19 outbreak and waived requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.

As of the date of this posting, the USPTO’s extension of deadlines under the CARES act applies to deadlines through April 30, 2020, but the USPTO may extend the time window based on the continuing impact of the COVID-19 outbreak.

The USPTO’s Notice of Waiver of Patent-Related Timing Deadlines under the CARES ACT can be found here.

The USPTO’s FAQs concerning the Extension of Deadlines under the CARES ACT can be found here.

 

Elaine Spector Named First Female Partner at Harrity, LLP

WASHINGTON, DC (January 28, 2020) Harrity & Harrity, LLP is pleased to announce Elaine Spector as one of three newly named partners at the firm.  Already a driving force in legal innovation, diversity initiatives, and charity involvement, Elaine’s new role is sure to implement even more progressive ideas at Harrity.

“Truly, something extraordinary is happening here at Harrity; where a woman, or any other lawyer for that matter, can have the opportunity to be a partner, but not at the sacrifice of their family.  I am unaware of any other firms that provide the flexibility that Harrity offers; that can allow a mom like myself (who likes to cook for her family and be involved) an opportunity to work reduced hours, while still caring for my family in a way that feels good to me,” said Elaine.  “I am very excited for the opportunity I’ve been given and for what the future holds for this awesome firm.  The best is yet to come.”

Elaine is a patent attorney with over 20 years of experience in intellectual property law.  Her current practice consists primarily of prosecuting patent applications with a focus on electromechanical technologies. She is Harrity’s first female partner.

Prior to joining Harrity & Harrity, Elaine worked in private practice for over 15 years handling various intellectual property matters, including patent application drafting and prosecution, trademark prosecution and enforcement, as well as litigating complex patent cases in federal courts. Elaine’s extensive litigation experience provides her with a unique perspective in prosecuting patent applications.

Most recently, Elaine worked in-house for 6 years at Johns Hopkins Technology Ventures, where she managed over 500 matters in medical and software related technologies before moving to Harrity, LLP in May, 2017.

Elaine serves as Chair of the Harrity Diversity Committee and Chair of the AIPLA Women in IP Law Committee’s Global Networking Event and Outreach Subcommittees. She is also on the IPO Diversity Committee’s Management Team and is a Board Member at the non-profit No More Stolen Childhoods.

To learn more about Elaine’s background and leadership involvement, please visit her Harrity Bio Page.

 

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300®. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Clause 8’s Eli Mazour Named Partner

WASHINGTON, DC (January 28, 2020) Harrity & Harrity, LLP is excited to announce that Eli Mazour has been named partner of the firm. Mazour’s expert knowledge of the patent field, creativity and efficiency in patent prosecution, strong business acumen, and large network within the patent community will be crucial factors in the growth and advancement of the firm. He is one of three new partners at Harrity, as announced by the firm last week.

“I’m excited to now be a partner at America’s most innovative patent preparation and prosecution boutique,” commented Mazour.  “This will allow me to continue to provide the greatest possible value to technology companies that are interested in growing high-quality patent portfolios that best fit their business needs.”

Mazour leads the firm’s patent prosecution team with a focus on helping Patent 300® companies build valuable, high-quality patent portfolios in an efficient manner. He has extensive experience in all aspects of patent prosecution, including preparing and prosecuting hundreds of patent applications related to computer software, Internet and e-commerce, telecommunications, networking devices, electronic consumer products, and medical devices.

Mazour has specific expertise in developing and implementing innovative patent prosecution strategies for reaching favorable results at the U.S. Patent and Trademark Office. He assists clients in evaluating existing patent portfolios, identifying strategic areas for patenting, and creating processes for harvesting disclosures of patentable inventions.

Mazour began his patent law career at the law firm of Finnegan, Henderson, Farabow, Garrett, & Dunner and has been with Harrity, LLP since 2010. Throughout his tenure, Mazour has been helping clients resolve complex patent assertion and licensing issues. As a result, he is keenly aware of the pitfalls to avoid and opportunities to grasp during patent prosecution.

In addition to providing outstanding prosecution support, Mazour is the creator and host of the Clause 8 podcast, which was recently picked up by the IP field’s largest online publication, IPWatchdog.com.  Clause 8 features interviews with prominent members of the IP community in which the most interesting and influential topics of today’s patent world are discussed. As a result, Mazour is sought out by clients and professionals for his insight on various patent policy developments, including legislative proposals and changes at the United States Patent and Trademark Office (USPTO). Mazour has also partaken in several speaking engagements focused on patentability and authored a number of articles on patent strategy.

To learn more about Mazour’s background, and to view all of his speaking engagements and publications, please visit his Harrity Bio Page.

 

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™ Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Senior Associate Neil Kardos Promoted to Partner

WASHINGTON, DC (January 28, 2020) Harrity & Harrity, LLP is pleased to announce that senior associate Neil Kardos has recently been named partner.  As the firm continues to expand, Neil will play a key role in its ability to stay current with new technologies, provide excellent service to the firm’s clients, become increasingly efficient, develop patent automation tools, and drive forward-thinking business development. Neil is one of three new partners at Harrity, as announced by the firm last week.

“I’m excited and thankful to be part of an innovative firm that’s blazing a trail toward what a patent law firm should look like,” Neil said of the announcement.

Neil is a patent attorney specializing in preparing and prosecuting patent applications. His practice focuses on electrical, computer, and mechanical technologies, including telecommunications, 5G, vehicle-to-everything (V2X) systems, financial technologies, computer hardware and software systems, computer networking, search engines, optical systems, internet hardware and software systems, machinery, sensors, control systems, e-commerce, and business methods.

Neil is actively involved with the Intellectual Property Owner’s Association (IPO) and has spoken at the IPO annual meeting on several occasions, most recently about diversity and gender disparity among inventors.  He has partaken in several speaking engagements regarding innovation and the IP field, including presentations at IPO and the Corporate IP Institute as a panel member to analyze and discuss trends in corporate IP management, as well as to share strategies for using patent analytics to manage IP portfolios and IP teams. As part of his work on the IPO’s Corporate IP Management Committee, for which he has served as Vice Chair, Neil helped develop a benchmarking survey that assists in-house counsel in the management of their IP departments and patent portfolios.

Prior to joining Harrity, Neil worked as a Primary Patent Examiner at the United States Patent and Trademark Office, where he examined patent applications directed to computer-related technologies, operations research, e-commerce, computer software, complex network analysis, internet applications, and business methods. While working at the USPTO, Neil attended The George Washington University National Law Center and served as a member of The George Washington Law Review. He has been with Harrity, LLP since April of 2012.

To learn more about Neil’s background, and to view all of his speaking engagements and publications, please visit his Harrity Bio Page.

 

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300®. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Harrity Promotes Three Attorneys to Partner, Including First Female Partner

WASHINGTON, DC (January 24, 2020) Harrity & Harrity, a leading patent law firm based in the Washington, DC metro area, is pleased to announce the promotion of three top patent attorneys into partner roles, effective January 1, 2020.

Neil Kardos, Eli Mazour, and Elaine Spector have consistently demonstrated excellence in their practices while going above and beyond to contribute to the firm’s accomplishments in the intellectual property sector. The announcement comes at a time when Harrity is on track to be national leaders in innovation, automation, analytics, charity, and diversity initiatives in the legal field. The transition of Neil, Eli, and Elaine into partnership roles will be a driving force in the continued growth and advancement of the firm.

“Neil, Elaine and Eli are an exceptional group of talent. During their collective time at Harrity, each has demonstrated a tremendous amount of leadership, innovation, efficiency, and progression, both within the firm and the IP community as a whole- all while providing top quality services to our clients. We are thrilled to have these three attorneys begin a new chapter with us as partners and know they will play an instrumental role in furthering Harrity’s accomplishments into the new decade,” said the firm’s Managing Partner, John Harrity.

Neil Kardos, a former Primary Patent Examiner at the United States Patent and Trademark Office (USPTO) and active member of the Intellectual Property Owner’s Association (IPO) and Corporate IP Institute, specializes in preparing and prosecuting patent applications. His practice focuses on electrical, computer, and mechanical technologies, including telecommunications, 5G, vehicle-to-everything (V2X) systems, financial technologies, computer hardware and software systems, computer networking, search engines, optical systems, internet hardware and software systems, machinery, sensors, control systems, e-commerce, and business methods. Neil is a graduate of The George Washington University National Law Center and has been with Harrity since April of 2012.

Eli Mazour joined Harrity in 2010 and currently leads the firm’s patent prosecution team with a focus on helping Patent 300® companies build valuable, high-quality patent portfolios in an efficient manner. In this role, he develops and implements best practices for managing workflow and innovative patent prosecution strategies for reaching favorable results at the USPTO. Eli is also the creator and host of the Clause 8 podcast, which features interviews with prominent members of the IP community, and has written and presented about various patent-related trends. As a result, he is sought out by clients and other professionals for his insights on various patent policy developments, including legislative proposals and changes at the USPTO.

Elaine Spector has over 20 years of experience in intellectual property law. Her extensive experience in the IP field includes patent application drafting and prosecution, trademark prosecution and enforcement, as well as litigating complex patent cases in federal courts. Elaine’s current practice consists primarily of prosecuting patent applications with a focus on electromechanical technologies. Elaine is a driving force in legal service quality, diversity programs, and charity involvement at the firm, and currently serves as Chair of the Harrity Diversity Committee and Chair of the AIPLA Women in IP Law Committee’s Global Networking Event and Outreach Subcommittees. She is also on the IPO Diversity Committee’s Management Team and is a Board Member at the non-profit No More Stolen Childhoods. Elaine has been with Harrity since 2017 and is the firm’s first female partner.

“Truly, something extraordinary is happening here at Harrity; where a woman, or any other lawyer for that matter, can have the opportunity to be a partner, but not at the sacrifice of their family.  I am unaware of any other firms that provide the flexibility that Harrity offers; that can allow a mom like myself (who likes to cook for her family and be involved) an opportunity to work reduced hours, while still caring for my family in a way that feels good to me,” said Elaine.  “I am very excited for the opportunity I’ve been given and for what the future holds for this awesome firm.  The best is yet to come.”

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300®. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Harrity Continues to Expand, Adding Four Patent Attorneys, Two Law Clerks

Harrity & Harrity, LLP, a leading patent preparation and prosecution law firm, is pleased to announce the addition of four highly skilled patent attorneys and two law clerks to its legal team. This includes Joseph Lentivech, a former Administrative Patent Judge with the U.S. Patent and Trademark Office (USPTO) and Marine Corp. Veteran, who the firm announced last week returned as counsel.

“We are excited for this seasoned group of superstars to join our team and assist the firm in continuing to provide excellent customer service to our Patent 300 clients,” said Partner Paul Harrity. “It’s great to have Joe back as he brings highly valuable experience and insights through his recent work as a USPTO Administrative Patent Judge that will greatly benefit our clients.”

Patrick Hansen, based in Raleigh, NC, specializes in the preparation and prosecution of patent applications in electrical, computer, and mechanical technologies.  Hansen has represented petitioners and patent owners in post-grant proceedings before the Patent Trial and Appeal Board.  He utilizes his comprehensive understanding of the industry and extensive legal experience to build high quality patent portfolios.

Joseph Lentivech, based in Mobile, AL, specializes in the preparation and prosecution of patent applications in electrical and computer technologies, including telecommunications and computer hardware and software systems.  Lentivech returns to the firm, where he was a patent attorney for four years, after working as an Administrative Patent Judge at the USPTO, where he decided appeals from adverse examiner decisions in patent applications directed to electrical and computer-related technologies and business methods.

McCord Rayburn, based in Charlotte, NC, has significant experience in all aspects of patent preparation and prosecution for U.S. and international applications, including leading teams of patent attorneys to efficiently obtain high-value patent protection.  Rayburn brings extensive technical knowledge and international legal experience, including the coordination of inbound U.S. national stage patent application filings for foreign corporations with global patent portfolios.

Bret Tingey, based in Raleigh, NC, focuses his practice on patent preparation and prosecution for inventors in mechanical and electrical technology fields.  He began his legal career with a specialty in IP litigation and wrote memos and briefs, including those for submission to the United States Supreme Court.  He primarily focuses on patent preparation and prosecution, applying his litigation experience to every patent that he drafts or prosecutes.

Sora Ko, based in the Washington, D.C. metro area, is a law clerk specializing in patent preparation and prosecution before the USPTO. She has experience in different aspects of patent prosecution, including assisting with the preparation and prosecution of patent applications related to computer software, telecommunications, networking devices, and mechanical devices.  Ko previously served as Editor-in-Chief of The University of Richmond Law Review and worked as a summer associate at Harrity & Harrity before joining the firm full-time.

Abigail Troy based in the Washington, D.C. metro area, joins Harrity as a law clerk specializing in the preparation and prosecution of patent applications with a focus on computer hardware and software, telecommunications, computer networking, business methods, and consumer products.  She is a former Primary Patent Examiner at the USPTO, where she worked for nearly a decade examining patent applications directed to mechanical devices, including jewelry and fasteners. Troy also worked as a training assistant in the Patent Training Academy and as a technology center trainer in TC 3600.

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

 

Joseph Lentivech Harrity Counsel

Former USPTO Administrative Patent Judge and Marine Corp. Veteran Joseph Lentivech III Rejoins Harrity as Counsel

WASHINGTON (December 5, 2019) – Harrity & Harrity, LLP is pleased to announce that Joseph P. Lentivech III, a former administrative patent judge with the U.S. Patent and Trademark Office (USPTO), has returned to the firm as counsel. He was a patent attorney at Harrity & Harrity from July 2010 until late 2014 when he joined the USPTO.

“We are thrilled to welcome Joe back to our firm,” said Harrity & Harrity Managing Partner John Harrity. “Joe brings highly valuable experience and insights through his recent work as a USPTO administrative patent judge that will greatly benefit our clients.”

Lentivech will be joining Harrity’s patent application drafting team, where he will draft patent applications for the leading technology companies in the world.  He will also oversee all PTAB appeals at the firm.

As an administrative patent judge, Lentivech served as a member of the Patent Trial and Appeal Board (PTAB) of the USPTO. The PTAB conducts trials, including inter partes, post-grant, and covered business method patent reviews and derivation proceedings; hears appeals from adverse examiner decisions in patent applications and reexamination proceedings; and renders decisions in interferences.

Lentivech also was a patent attorney at Brouse McDowell L.P.A. before his earlier stint at Harrity & Harrity. Prior to his law career, Lentivech served with the U.S. Marine Corp., most recently as a captain/artillery officer.

Lentivech received his J.D. (cum laude) from the University of Akron School of Law and his Bachelor of Science from State University of New York at Buffalo.

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

USPTO October 2019 Update On Subject Matter Eligibility

By Tim Hirzel

The PTO’s Revised Patent Subject Matter Eligibility Guidance (2019 PEG) has been generally well received for providing a more reliable manner of applying the Alice/Mayo test used by the courts.  Even so, the 2019 PEG still left some matters unclear and the PTO has now responded to public feedback by providing further clarification in the October 2019 Update.  Below, we discuss the updates and how practitioners can use the updated guidance in practice.

Step 2A Prong One

In Step 2A Prong One, the 2019 PEG instructs examiners to evaluate whether a claim recites an abstract idea by a) identifying specific limitations in the claims believed to be an abstract idea, and b) determining whether the identified limitations fall within any of the three specific groupings of abstract ideas (mathematical concepts, certain methods of organizing human activity, and mental processes).

However, there was some question as to how explicitly limitations in the claims have to recite an abstract idea.  The October 2019 Update clarifies that “recites” should broadly be construed to mean that the claims either explicitly set forth the abstract idea or merely describe the abstract idea without explicitly using words that identify the abstract idea.  The PTO further clarifies that claims may recite multiple abstract ideas, which may fall in the same or different groupings, and that the groupings are not mutually exclusive (i.e., a single claim limitation may fall into more than one abstract idea grouping).

The October 2019 Update also provides clarification on what the three groupings of abstract ideas entail.

  • Mathematical Concepts – The 2019 PEG defines “mathematical concepts” as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The PTO interprets the courts as having declined to distinguish between types of math when evaluating claims for eligibility, and the PTO will do the same.  For example, math used to solve a particular technical problem (e.g., an engineering problem) will still be considered to fall within the mathematical concepts grouping.  However, a claim does not recite a mathematical concept if it is only based on or involves a mathematical concept.
  • Certain Method of Organizing Human Activity – The PTO clarifies that not all methods of organizing human activity are abstract ideas, and this grouping is limited to only fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people.
  • Mental Processes – Under the 2019 PEG, “mental processes” are concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. A footnote in the 2019 PEG indicates that a claim limitation is not a mental process when it “cannot practically be performed in the mind.”  The October 2019 update expanded on this and clarified that this is “when the human mind is not equipped to perform the claim limitations.”  The PTO reemphasized that claims can recite a mental process even if they are performed by a computer in the claim and further clarified that there is no requirement that the claim be performed entirely in the human mind to fall into the mental processes grouping.

The 2019 PEG also allows for the possibility that a claim limitation that does not fall into one of the three groupings of abstract idea may be still determined to be an abstract idea upon TC Director approval.  The October 2019 update indicates that the public will be notified once such an office action issues.  At this time, the PTO has not provided any such notification.

Step 2A Prong Two

In Step 2A Prong Two, the 2019 PEG instructs examiners to evaluate whether the claim as a whole integrates the abstract idea into a practical application and gives several considerations in making this determination, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.

The October 2019 Update reemphasized that this analysis considers the claim as a whole, and that the additional elements of the claim (i.e., those not identified as an abstract idea) are not to be evaluated separately from the limitations reciting the abstract idea.  Moreover, the PTO clarified that merely claiming a specific way of achieving a result is not a stand-alone consideration in Step 2A Prong Two and is not enough by itself to integrate the abstract idea into a practical application.  However, the specificity of the claims is relevant to the considerations related to using a particular machine, a particular transformation, and whether the limitations are mere instructions to apply an exception.

The October 2019 Update devotes lengthy discussion to how a claim improves the functioning of a computer or a technical field and provides a two-step procedure for how examiners are to perform this analysis.

  • Step One – Examiners are to evaluate the specification to determine if sufficient details are provided to establish the claimed invention provides an improvement to technology. However, there is no requirement that the specification explicitly recite the improvement.  The improvement is not relative to what is well-understood, routine, conventional activity in the field, but rather relative to existing technology.  Importantly, the PTO noted that an improvement to an abstract idea is not an improvement to technology.
  • Step Two – If the specification sets forth an improvement in technology, the claims must be analyzed to determine if the claims recite features that provide the improvement described in the specification. However, there is no need for the claims to explicitly recite the improvement.

Step 2B

In Step 2B, examiners are to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea.  The October 2019 Update itself provides almost no discussion or clarification of Step 2B other than to reemphasize that well-understood, routine, conventional activity will only be considered under Step 2B and not Step 2A.  However, the PTO provided Example 43 along with the October 2019 Update that shows how a claim can fail Step 2A but still be determined eligible under Step 2B.  Such an example was notably absent from the examples provided with the 2019 PEG.

Example 43 is a hypothetical based on the well-known Diamond v. Diehr case.  Example 43 is directed to a controller for an injection molding apparatus that repeatedly obtains temperature measurements of a mold, calculates an extent of curing completion based on the temperatures and an equation, and determines a percentage of curing completion.  Claim 3 specifies that the controller is connected to a means for temperature measuring (which is specifically interpreted to be an ARCXY thermocouple).  Under Step 2A Prong One, the claim is determined to recite a mathematical concept.  Under Step 2A Prong Two, the step of obtaining the temperature measurements is deemed to be insignificant extra-solution activity of data gathering and does not integrate the abstract idea into a practical application.  Notably, the fact that claim 3 uses an ARCXY thermocouple to obtain the temperature measurements is not considered in Step 2A Prong Two (not even to establish use of a particular machine).  Thus, claim 3 is determined to be directed to the abstract idea.

However, the consideration of whether the ARCXY thermocouple feature is mere insignificant extra-solution activity is reconsidered under Step 2B taking into account whether such extra-solution activity is well-known.  The PTO found that while use of ARCXY thermocouples is known in the aeronautical industry, the use of ARCXY thermocouples was not routine or conventional in injection molding apparatuses.  Because the ARXCY thermocouple resulted in better long-term performance, durability, and response time than other thermocouples, the result of using the unconventional thermocouple in the claimed manner amounts to significantly more than the abstract idea (i.e., mathematical concept) and the claim is patent eligible.

Key Takeaways

The October 2019 Update reinforces the idea that the best practice when drafting a patent application is to describe the invention as providing a technical solution to a technical problem.  In this way, should a Step 2A Prong One argument fail, practitioners can rely on a Step 2A Prong Two argument that the claims improve the functioning of a computer or other technology.  This argument seems to be the argument preferred by examiners and often cited by the courts as a basis for patent eligibility when there is a 101 issue.

Specifically, practitioners should keep in mind that examiners will heavily rely on the specification to determine if such a technical solution or technical improvement is provided.  The improvement should not be merely recited in a conclusory manner (e.g., an unsupported assertion that the invention provides a specific improvement), but should be explained in sufficient detail to tie specific features of the invention to the improvement.  Importantly, the claims should be drafted in such way to include the features that provide the improvement.  Examiners have often requested, or even required, that the claims explicitly recite the improvement to overcome a 101 rejection even though these claim features are often considered intended use or given little patentable weight.  The October 2019 update makes it clear this is not necessary.

The PTO also appears to narrow at least some of the three groupings of abstract ideas in Step 2A Prong One.  Practitioners should use this to their advantage when drafting applications to characterize features that may be arguably abstract in a way that avoids falling into the three groupings of abstract ideas.  For example, when appropriate, the application could describe the complexity of steps that may be arguably mental processes (e.g., determining steps, processing steps, analyzing steps, etc.) to establish that these steps cannot be practically performed in the human mind.  However, practitioners should be careful not to try to game the system by describing a simple step, which truly could be performed in the mind, as a complex step that cannot be performed in the mind because such a characterization could have unintended consequences for potential infringement and claim interpretation.  Moreover, if a feature truly could be performed in the mind, then there is most likely a better way to establish eligibility under Step 2A Prong Two or Step 2B.

The 2019 PEG stripped Step 2B of most of its previous considerations and moved them to Step 2A Prong Two.  While the 2019 PEG indicated that Step 2B was still a viable option to establish eligibility, there was little instruction on how practitioners could actually present a successful argument and no examples of succeeding under Step 2B were given.  Given this, examiners have been reluctant to seriously consider Step 2B arguments.  Although arguments under Step 2B are likely to remain an improbable way to overcome a 101 rejection in view of the of the October 2019 Update, practitioners should keep in mind that new Example 43 provides a manner of establishing an inventive concept and a rationale that can be used as a backup position under Step 2B going forward.  Therefore, practitioners should draft their specifications to highlight how their inventions differ from what is well-understood, routine, conventional in the field, even if it is a feature that is more tangentially related to the core invention that could be considered extra solution activity.

Overall, the October 2019 Update should help the PTO continue to provide more reliable subject matter eligibility analysis and clarify what kinds of arguments will successfully overcome a 101 rejection.

John Harrity, Harrity Team

Law360 Law Firm Leaders: Harrity & Harrity’s John Harrity

Law360 (October 16, 2019, 2:04 PM EDT) — John Harrity has served as managing partner of Harrity & Harrity LLP, the patent law firm he founded in 1999 with twin brother Paul Harrity, since 2016. During that time, the law firm’s revenue has grown by 127%, profits have gone up by 167% and the attorney headcount increased by 100%.

Here, Harrity discusses how his law firm has streamlined and automated the patent application process a la McDonald’s, why lawyers are not paid based on origination credits and why charity is such a big part of the firm’s culture.

How is your law firm different from a traditional law firm?

There’s a lot of ways that we’re different. From the very beginning, we’ve had this focus on quality. People talk about quality in our field, but one of the things we like to do when we talk about something is we want to make sure that it’s measurable. From the very beginning of our firm, my twin brother and I, we started with the traditional question: Why us? Why would anyone send us work over the thousands of firms doing patent prosecution and preparation? After some discussion, we honed in on quality. We implemented a couple of procedures, one was adopted from my brother’s former firm, Finnegan, and the other we created on our own.

We made sure everything goes through a very thorough second attorney review. It’s all about expectations here. Attorneys know that when they hand something in to me, there’s a certain level of quality that’s expected. And when we send things out to clients, there’s a certain expectation. When we send it to an inventor or in-house counsel, we’re going to send something that thoroughly, accurately and technically describes your invention and in our eyes is ready to be filed.

It’s tracking some statistics in relation to that to see: Are we succeeding or are we failing? How often, when we send out a patent application to an inventor or in-house counsel, do we get “looks good” [in response]? That’s our level of expectation. Going back to the beginning of the firm, so over the course of 20 years and having drafted over 5,000 patent applications, 67% of the time we’ve gotten a “looks good.”

The other [quality procedure] is writing style. I liken it to McDonald’s. Why is McDonald’s successful? Every McDonald’s you go to in the United States and you order their premier burger, the Big Mac, it’s going to have the same look, the exact same flavor every single time. And it’s going to come out in roughly the same amount of time. Our uniform writing style works exactly the same. Individual companies have preferences for how they want their patents to look, often the attorneys that work internally have individual preferences. We have a uniform writing style for every single attorney and every single company so that when they come to our firm, regardless of the drafting professional, they’re going to get their uniform writing style every single time.

Your firm has eliminated origination credits. Why have you done that and what kind of impact does it have?

Let’s think about origination credits. When you look inside these firms that have origination credits, what you see inside these firms are law firms within a law firm. You’ve got all of these partners with their origination credit, rowing in different directions. When you look at my firm, every client here is the firm’s client. We make business decisions about whether to bring on a client and whether to keep a client. Our firm’s mission is to be the No. 1 firm in the world doing what we do. We do patent applications and prosecution and we just do it in the electrical and mechanical space. I can tell you, every single individual at my firm, we’re all rowing in the same direction. Since we opened up 20 years ago, every single client has been the firm’s client. I might manage some of them and be the face to our firm for a particular client, but it’s the firm’s client, it’s not mine. That’s why we can be so agile, and move so quickly in the field, because we’re all rowing in the same direction.

How does the law firm then figure out how to determine whether a particular lawyer is successful?

We track some statistics internally. Every patent application that’s drafted at my firm, every response to a rejection from the patent office that’s drafted, goes through a second attorney review. And if I’m the reviewer, I fill out a scorecard and I’m grading this application or response on a little over a dozen different categories. This gives feedback to our attorneys. You can see your statistics for the year, you can compare them to last year. If you’re struggling in a particular area of drafting a patent application, don’t you want to know what that area is? There’s a quality score that all of our attorneys have.

There’s also a production element. One of the things we do is we pay our attorneys for production. We’ve experienced, in the lifetime of this firm, the same thing other firms experienced. The pricing of patent applications continually went up from 1999 until it plateaued for four to five years and then we started seeing it dip and it’s come down almost all the way to 1999 numbers. Back in 2013, one of our clients decreased their prices and we had a discussion internally and said, this is a wake-up call. We can walk away from the client and say we only do work for top-paying clients. If we do that, there will be less and less companies willing to pay top dollar and every firm in the United States is going to be lined up fighting for that work. The other route, the one we chose, is: Let’s get efficient. I put [the patent application process] in steps. Which of these steps must be performed by an attorney? All of the other steps, I hand those off to support staff members. And then, at the beginning of this year, I said: Let’s start automating some of the stuff the support staff is doing and let’s start automating some of the stuff the attorneys are doing.

2012 was before our efficiency journey. Our top drafting attorney drafted 54 patent applications that year, second place was 42. Last year, we had four attorneys draft more than 90 patent applications. We had one attorney in December draft 19 patent applications. This year our automation tools have rolled out. We have an attorney this year who is on track to draft 150 patent applications.

Let me tie that back into pay. You join our firm and when you’re assigned a patent application to draft, you’re given a number of hourly credits. If the hourly credit is 40 hours, you get that same hourly credit regardless of your actual time spent on it. So if you spend 40 hours, you’re getting hour-for-hour credit. If I can get you efficient, without sacrificing quality, down to 20 hours, now you’re drafting two patent applications. If I can get you down to 10 hours, then in that same 40 hour period you’re drafting four, which means you make four times as much money. The big producers at our firm make what partners make at other firms.

What tasks and processes have you automated?

One simple one I‘ll tell you about is form filling. There are certain forms that need to be filled out when you’re filing a patent application. And these forms were taking our staff about 15 to 30 minutes. Now it takes them about five seconds to fill them out — it’s being populated based on our docketing system.

You had a massive heart attack in 2016 at age 49, how has that impacted the way you operate your law firm?

Let me start with charity. I had this health scare back in 2016 and it really set the firm on a different course. I was in intensive care for eight weeks. It took me a couple of months after that to actually get back to the firm. I became hugely service-focused and that bled over to everything we do at the firm now. Harrity for Charity, that’s our giving back initiative. We’ve committed at the partner level to give 5% of profits to our partner charities. Those are the American Heart Association, that was my health scare, I had a heart attack; Inova Children’s Hospital; UNICEF; and Zero, which is the fight against prostate cancer. What makes Harrity for Charity infinitely better than the 5% coming out of partner profits is every single employee at my firm is committing a portion of their paycheck to one or more of these partner charities. Service is hugely important to us.

On the diversity side, we started our diversity journey kind of late in the game. We started our firm in 1999 and we started diversity efforts in November, 2015. At the time we started the conversation, we were 8% [ethnically] diverse at the attorney level. We implemented our Rooney Rule 2.0. What we’ve done is this. For every single position at my firm, support staff included, when we interview a white male for a position, we will interview a non-white male for that same position. Fast forward three years and we’ve gone from 8% diverse to 30% diverse today.

The newest thing we did is our minority firm incubator. It is a unique, innovative program. We’re willing to spend the time and money to make this thing successful. What we’re doing is creating minority-owned firms, female-owned firms that are replicas of our firm. We’re going to teach them what we do here and spin them off into their own firms. What makes the program a truly once-in-a-lifetime opportunity is we’re going to line up companies that will commit to give work to these minority-owned firms. Accenture has already made that commitment. The biggest pain point any time you start your own business is: Where am I going to get the work? We’re going to get [top patent-owning] companies to make that commitment to try them out.

They’re completely independent. They’re with us for three years; the fourth year, they leave our firm to start their own.

By Aebra Coe
Editing by Katherine Rautenberg

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

 

Flexibility for Lawyers, Clients Helps Harrity & Harrity Stay Competitive

Law.com (September 10, 2019) “We allow our attorneys to work where they want, when they want, and how much they want,” managing partner John Harrity says.

Firm Name: Harrity & Harrity, LLP
Firm Leader: John Harrity, Managing Partner
Head Count: 30 attorneys, 20 professionals
Location: Fairfax, Virginia
Practice Area: Intellectual Property
Governance structure and compensation model: Management by a three-person management committee, compensation is a pay for performance model
Do you offer alternative fee arrangements? Yes

**The following answers were provided by Harrity and edited lightly for style.**

What do you view as the two biggest opportunities for your firm, and what are the two biggest threats?

Our biggest opportunity stems from the fact that we are consistently able to provide high-quality, uniform patent work in a timely and efficient manner. Other firms, especially those that are using the traditional law firm model, are struggling to compete in today’s competitive, price-conscious patent environment. While some firms think that it is impossible to provide outstanding customer service in today’s environment, we are thriving. Our biggest threat is the difficulty we have attracting superstar attorneys to join our firm. This has long been one of our challenges. Big Law firms offer high starting salaries to attorneys who have very little experience. It can be difficult for us to compete when our model is pay for performance.

Some other opportunities for our firm are related to our remote staffing model. We don’t need every attorney at the firm to operate from our central office location, so we benefit from a pool of candidates that many law firms won’t consider because the candidate is interested in working remotely, or isn’t in the geographic footprint of other firms. We also see opportunity in the price pressure that is impacting the practice of patent law—while the big law firms struggle to find profitability in this area while bowing to the price pressures mandated by the large corporations that are setting the pricing standard for patent applications, we leverage technology and process improvements to ensure efficiency without sacrificing quality or our ability to make a profit.

The legal market is so competitive now—what trends do you see, and has anything, including alternative service providers, altered your approach? Is your chief competition other mid-market firms, or is your firm competing against big firms for the same work?

We go head to head with law firms of every size. Although we don’t directly compete with alternative service providers, I would still consider them to be competition. In the patent field, we have seen pricing for patent application drafting and prosecution come down, and we don’t expect it to go back up. Law firms tend to think that Patent 300TM companies will come to understand that higher prices are required to be able to provide outstanding customer service, including outstanding quality. This just simply isn’t the case. We have been focusing on efficiencies for more than six years. When I say efficiencies, I’m talking about leaning out our process steps and creating automation tools. Being able to provide outstanding customer service while charging less for patent services is not only doable for us in today’s patent field, but we are also simultaneously able to pay our attorneys top dollar.

There is much debate around how law firms can foster the next generation of legal talent. What advantages and disadvantages do midsize firms have in attracting and retaining young lawyers, particularly millennials?

I think we have a huge advantage over the big firms with respect to attracting and retaining young lawyers, including millennials. One thing you hear about with respect to millennials is that they want freedom. So, we give it to them. We allow our attorneys to work where they want, when they want, and how much they want. This freedom is an instrumental reason why we attract such a large group of candidates for open attorney positions. In addition to this freedom, we have a pay for performance model, which allows hardworking young professionals to make substantially more than their peers at the big law firms.

Does your firm employ any nonlawyer professionals in high-level positions (e.g. COO, business development officer, chief strategy officer, etc.)? If so, why is it advantageous to have a nonlawyer in that role? If not, have you considered hiring any?

An integral (nonlawyer) member of our firm is Rocky Berndsen, who leads Harrity Patent Analytics. He oversees an analytical team using cutting-edge capabilities to analyze patent data and extract insights for clients to use when making strategic decisions regarding patent portfolios. The team recently published its inaugural Patent 300TM Report, which ranks and analyzes the top 300 companies, organizations, and universities in the patent field.

What would you say is the most innovative thing your firm has done recently, whether it be technology advancements, internal operations, how you work with clients, etc.?

In September, we introduced our Minority Firm Incubator program, established to help train, cultivate, and launch minority-owned patent law firms. The program is an integral and innovative part of our ongoing initiative to advance attorneys who will contribute to the diversity of the patent field. Our firm will select two candidates from a pool of skilled applicants, and begin training them through an exhaustive four-year program that will not only prepare them to draft and prosecute patent applications, but also prepare them to successfully run their minority-owned patent firm as a business. In addition, what makes this a truly once-in-a-lifetime opportunity is that these selected attorneys will develop, during their time at our firm, relationships with Patent 300TM companies that are part of our program. Ultimately, the selected attorneys will learn how to successfully run their law firms abiding by Harrity & Harrity’s proven best practices, then formally launch their firms assisted by the already established corporate relationships.

Does your firm have a succession plan in place?  If so, what challenges do you face in trying to execute that plan? If you don’t currently have a plan, is it an issue your firm is thinking about?

As a 20-year-old firm, our leadership is far from retirement age, but that has not stopped us from putting succession framework into place. We have established training programs that will help our associates develop the leadership and management skills they need to ascend the partner ranks. We have also engaged outside resources to make sure we’re doing the things we need to do to prepare for the day—many years down the road, we hope—when the firm’s leadership will transition to a new guard. We are prepared for that, and see no imminent challenges to implementing our succession plan.

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

 

Eli Mazour Harrity Team

Why the Revised 101 Guidance Continues to be Important After Cleveland Clinic

By Eli Mazour

After the 2014 Supreme Court Alice decision, the judges of the Federal Circuit failed to reach a meaningful consensus regarding how the subject matter eligibility test set out in Alice should be applied.  As a result, new USPTO Director Andrei Iancu recognized that there was no practical way for examiners to navigate all of the patent eligibility decisions for each individual patent application.  To address this problem, the USPTO released the “2019 Revised Patent Subject Matter Eligibility Guidance.”

In the recent Cleveland Clinic Foundation v. True Health Diagnostics decision, a panel of the Federal Circuit invalidated claims related to cardiovascular testing under § 101 and stated that “[w]hile we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance” (Fed. Cir. 2019).  The decision caused consternation among some practitioners regarding the value of relying on USPTO guidance.

Director Iancu’s comments regarding Cleveland Clinic

This past Thursday, at the ABA’s annual IP conference, Iancu addressed those concerns.  First, he pointed out that Cleveland Clinic did not even mention the 2019 revised guidance.  Instead, Cleveland Clinic discussed Example 29 from guidance that was published by the PTO on May 4, 2016, which is almost two years before Iancu became the director.  Second, Iancu noted that Cleveland Clinic just stated that to the extent that Example 29 contradicts a court decision, the court decision controls.  In other words, Cleveland Clinic pointed out facts that were clear before the 2019 revised guidance was even released: 1) courts are not bound by guidance released by the USPTO and 2) incorrect guidance released by the USPTO would not override previous court decisions.  Cleveland Clinic did not in any way directly undermine the 2019 revised guidance.

Moreover, Iancu indicated a change in approach by the USPTO: instead of reacting to each new Federal Circuit decision that deals with § 101, the USPTO is now taking a look at the § 101 issue holistically.  And, Iancu argued that the Federal Circuit should address the § 101 problem through en banc decisions by the full Federal Circuit.  In totality, this suggests that a single Federal Circuit decision by a panel of three judges is unlikely to significantly change the USPTO’s approach set out by the 2019 revised guidance.

Practical tips for drafting & prosecution

As it stands now, USPTO examiners and PTAB judges are expected to apply the 2019 revised guidance for § 101 analysis.  In fact, ex parte appeal decisions that deal with § 101 are currently being reviewed at the PTAB to make sure that the 2019 revised guidance is being applied by PTAB judges.  Therefore, in order to ensure efficient prosecution and positive appeal results, practitioners should primarily rely on the 2019 revised guidance to overcome § 101 rejections.

However, when drafting new patent applications, practitioners should plan for the possibility of the Federal Circuit, the Supreme Court, or even possibly Congress taking a narrower view of patent eligibility.  Therefore, to the extent possible, patent applications should be drafted with all of the relevant court decisions in mind.  The goal should be for an eventual patent to be able to withstand – or even better yet avoid – the most stringent § 101 scrutiny during litigation.

https://soundcloud.com/clause-8/episode-8-aaron-cooper

Aaron Cooper – Clause 8 – Episode 8

Check out the new Clause 8 interview about the passage of the American Invents Act (AIA) and how to effectively influence IP policy. Eli Mazour talks to Aaron Cooper, who served as Chief IP Counsel on the Senate Judiciary Committee and is now head of global policy at BSA | The Software Alliance.

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

Harrity Blog

In-depth Summary of USPTO Revised Guidance on Subject Matter Eligibility

By Tim Hirzel

The PTO released their highly anticipated revised guidance on subject matter eligibility that take effect on January 7, 2019.[1]  Below, we discuss the changes to the subject matter eligibility analysis made by the revised guidance and how Applicants may address these changes in practice.

Summary of Revised Guidance

The revised guidance maintains the two step Alice/Mayo Test but revises the procedure for determining whether a claim is directed to a judicial exception (e.g., an abstract idea) under Step 2A.  Previously, the PTO guidelines (wrongly) equated a claim merely “reciting” an abstract idea with a claim being “directed to” the abstract idea under Step 2A.  The PTO has replaced this approach with a new two prong analysis.

In the first prong of Step 2A, Examiners evaluate whether a claim recites an abstract idea.  The first prong is similar to the previous approach with one important change.  Previously, Examiners were to describe the subject matter claimed and identify whether the subject matter had previously been found to be directed to an abstract idea by the courts.  The PTO found this approach impractical due to the ever-increasing number of court decisions and rightly noted that it has been difficult for Examiners to apply this approach in a predictable manner, especially between different technology centers.

Instead of this case law specific approach, the PTO newly identified three groups of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes.  Examiners must now a) identify specific limitations in the claims believed to be an abstract idea, and b) determine whether the identified limitations fall within any of the three newly identified groups.  If the identified limitations fall within the three groups of abstract ideas, the analysis proceeds to the second prong of Step 2A.

In the second prong of Step 2A, Examiners evaluate whether the claim as a whole integrates the abstract idea into a practical application.  The million-dollar question then becomes what is a practical application?  The PTO broadly answers this question by stating “[a] claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception.”  The PTO also gives several examples based on case law that indicate an additional element or combination of elements may have integrated an exception into a practical application, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.

The PTO acknowledges that these examples and the second prong of step 2A overlap considerations that the courts and the PTO’s guidance consider under Step 2B but feels that this new approach will increase certainty and reliability.  For clarity, the PTO reiterated that merely using a computer as a tool to perform the abstract idea, adding insignificant extra-solution activity, or generally linking the abstract idea to a technical field will still not be enough to establish a practical application and patent eligibility.  If the claim does not integrate the abstract idea into a practical application, then the claim is directed to an abstract idea under Step 2A and the analysis proceeds to Step 2B.

Step 2B has not been changed under the revised guidance and Examiners are still to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea.  However, the incorporation of several Step 2B considerations into the second prong of Step 2A limits how much additional analysis the Examiner needs to apply in Step 2B.  Importantly, whether the additional elements are well-understood, routine, conventional activity is not evaluated under the second prong of Step 2A and is unrelated to whether the claim integrates the abstract idea into a practical application.  This evaluation is still done in Step 2B pursuant to the Berkheimer memo[2] to determine whether the additional element or combination of elements adds limitations that are not well-understood, routine, conventional activity in the field which is indicative that an inventive concept may be present.

Our Impressions

The new two prong approach to Step 2A should make it easier to work with Examiners, especially during interviews, to overcome 101 rejections.  Under the prior guidance, Examiners would often dismiss any Step 2A arguments because their guidelines simply said a claim was directed to an abstract idea if any part of the claim recited an abstract idea.  This made it very easy for Examiners to establish the claims were directed to an abstract idea without much analysis.  The revised guidelines will make it much more difficult for the Examiner to simply dismiss an Applicant’s Step 2A arguments.

Equally as frustrating was Examiners misapplying case law when attempting to identify a decision that found subject matter, similar to the claims, to be directed to an abstract idea.  Applicants should be able to avoid the necessity of debating case law cited by Examiners (which was rarely an effective manner of overcoming a 101 rejection anyway) because the Examiners are not required to cite specific decisions in their rejections anymore and merely must identify one of the three newly defined groups of abstract ideas.

Instead, Applicants can now focus on the newly articulated “practical application” consideration in the second prong of Step 2A.  While the examples of practical applications given in the revised guidelines are nothing new and come straight from case law Applicants should have already been using to overcome 101 rejections, the examples were not always given much weight by the Examiners or simply dismissed nominally in Step 2B.  The revised guidelines’ focus on the “practical application” consideration and the given examples may make it easier to use these examples to effectively overcome the 101 rejections (without necessarily having to argue the case law behind the examples).

Moreover, the PTO broadly describing the case law as establishing a “practical application” consideration gives Applicants more leeway than relying on specific court decisions as done in the past.  For example, it may be easier to convince an Examiner on a technical level that claims “apply, rely on, or use the judicial exception” in a meaningful manner than to convince the Examiner that claims are similar to subject matter previously held by the courts to be directed to statutory subject matter.  However, Applicants must be mindful that the goal is not simply to get patent applications allowed by satisfying the PTO’s revised guidelines, but to have claims that are statutory as supported by case law and that can withstand the 101 analysis performed by the courts.

Any noticeable change in examination will depend heavily on how Examiners are trained to implement the new guidance.  Accordingly, it may be months before we fully realize how significant the changes will be to 101 rejections in practice.

[1] 2019 Revised Patent Subject Matter Eligibility Guidance

[2] Revising 101 Eligibility Procedure in view of Berkheimer v. HP, Inc.

For a shorter summary of the above, visit here.

https://soundcloud.com/clause-8/episode-7-tariq-hafiz

Tariq Hafiz – Clause 8 – Episode 7

A must-listen episode of Clause 8 for anyone interested in patent prosecution.  Eli Mazour talks to Tariq Hafiz – USPTO Director of Technology Center 3600 Business Methods – about his career at the USPTO, soon to be released 101 guidance, overlooked strategies for effectively dealing with examiners and their Supervisors, and many other subjects. 

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

https://soundcloud.com/clause-8/episode-6-representative-henry

Henry Waxman – Clause 8 – Episode 6

In the latest episode of Clause 8, Eli Mazour talks to legendary Congressman Henry Waxman about the passage of the Hatch-Waxman Act, current proposals to deal with the impact of new PTAB proceedings on pharma patents, effectively influencing IP policy in DC, and many other subjects.

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

https://soundcloud.com/clause-8/episode-4-david-kappos

David Kappos Interview – Clause 8 – Episode 4

Eli Mazour recently interviewed former USPTO Director David Kappos. Learn about his time at IBM and the USPTO, what in-house IP counsel should keep in mind, the importance of 5G technology, and so much more! You do not want to miss this insider interview!

Find the full Clause 8 podcast interview here https://www.clause8.tv/ or via your favorite podcast app. 

Harrity Blog

Analysis of December 2016 USPTO Subject Matter Eligibility Examples

By Kris Rhu & Paul Gurzo

On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims, which can be found here.  The purpose of these examples is to give guidance on how claims should be analyzed using the 2014 Interim Guidance on Subject Matter Eligibility, recent Supreme Court and Federal Circuit decisions, and recent Memorandums published by the USPTO.  These examples seem to indicate that the power of §101 to restrict patentability has been whittled down since Alice and that the USPTO would like to reduce the number of §101 rejections for technological claims in light of court decisions post-Alice.  Below, we describe each example provided by the USPTO, explain the USPTO guidance for each example, and provide practical practice tips that practitioners can use to help reduce or overcome §101 rejections.

READ MORE >

Alice in Wonderland falling surrounded by playing cards

Alice on Dulany Street: How the PTAB Handles 101 in Ex Parte Appeals

By Eli Mazour & James Bennin

“The outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection.”

Previously, we analyzed ex parte appeal decisions by the Patent Trial and Appeal Board (PTAB) from the year following the Alice v. CLS Bank decision. At the time, we concluded that the PTAB is unlikely to reverse § 101 rejections based on Alice. We decided to revisit this conclusion based on ex parte appeal decisions from December 2016.

READ MORE >

IPO Education Foundation Girl Scout IP Patch Event

May 7, 2016 – Harrity & Harrity had a wonderful time hosting
a booth at the IPO Education Foundation Girl Scout IP Patch Event at the United States Patent & Trademark Office. The patch curriculum was developed jointly by IPO Education Foundation (IPOEF), U.S. Patent and Trademark Office (USPTO), and Girl Scout Counsel of the Nation’s Capital (GSCNC). Patches were presented by U.S. Secretary of Commerce Penny Pritzker and USPTO Deputy Director Michelle Lee at a ceremony at the Langdon Education Campus.

Watch the video below to highlights of this great event!