Today, AIPLA President Wayne Sobon announced that the vacant position of Executive Director of the AIPLA will be filled by Lisa K Jorgenson. Ms. Jorgenson is an experienced patent attorney, most recently working at STMicroelectronics. One of the patents she wrote is entitled “Thread Execution Scheduler for Multi-Processing System and Method.” Somehow, I don’t think that this relates to sewing. Ms. Jorgenson will occupy the position last held by Q. Todd Dickinson, the former Commissioner of the USPTO. We wish Lisa good fortune and as smooth sailing as possible through the turbulent legal waters that we all hope she will help to calm.
The increasingly intense conversation about patentable subject matter post-Mayo, Myriad and Alice got off to a slow start at the “Partnering for Patents” meeting held at the PTO on Wednesday. The meeting was a scattering of in-house PTO reports and wish-lists, with some “outside presenters.” Alan Hirschfeld spoke briefly about the Alice decision and the first round of PTO Guidelines, but he offered nothing in the way of new insights, simply reminding the audience that the Guidelines should not be considered final and that the process would be reiterative.
Over at the big AIPLA Annual Meeting in DC, Karen Canady moderated a session today that covered topics ranging from post-grant proceedings under AIA to ethics. Of course the s. 101 presentation by Donna Meuth of Eisai and David Wille of BakerBotts was of the most interest to me. Donna used an example of the rejection of claims involving natural products that Hans Sauer of BIO posted on this website. The claims to the compound, a composition containing it, and its use to treat three types of cancer were all rejected as involving a natural product and as impermissibly tying up the building blocks of human ingenuity. Of course, many in the audience noted that that was what patents were intended to do, but that was cold comfort to the applicant, who failed every one of the test factors in the Guidelines but one.
David Wille attempted a look into the thought processes of the judges applying Alice in district court decisions. He felt that the key to “success” may lie in keeping the focus on the manipulation of real matter, like checks, and emphasizing that the focused claims are not directed to fundamental economic practices, but to the transformation of specific types of data. I think he referred to success as passing the “technological arts test.” The significance of these lessons is far from clear, but they are a start. Still, I feel like the narrator in the Dylan song who laments: “It’s not dark out yet, but its getting there.”
Since I am suffering from section 101 fatigue, tomorrow I will be speaking at this program on indefiniteness post-Nautilus. However, this meeting gets interesting earlier in the afternoon when Andrew Hirschfeld presents on “Updates on 101 training and Examiner Guidance” (working title) followed by Michael Stein, the “AIPLA Speaker” whose topic is “Understanding Patent Eligibility After Alice, Practical Tips for Practitioners and Examiners.”
The big question for my computer law and software brethren is whether or not there is any patent eligibility post-Alice for the inventions claimed in most of their pending applications? A quick survey by one of my partners indicates that over 90% of the applications filed by one big “software company” in Class 705 (Data Processing; Financial, Business Practice, Management, or Cost/Price Determination) that have received Office Actions in August received 101 rejections. As a stock car race driver once said to me when he was boxed in and about to “take the wall,” “I had nowhere to go but up.”
BIO recently generated a letter to the PTO on the March 6th Guidelines on the patent-eligibility of subject matter in the life sciences, particularly “natural products.” BIO invited a group of in-house and private practitioners to comment on the Guidelines and a number of them – including myself – signed off on the letter. Following appearances by a Mr. Hirschfeld at a number of industry conferences and symposia, the biotech/pharma community felt that there is a realistic chance the initial Guidelines will be released in revised form in the near future.