More abstract idea sh... stuff

[ChrisWhewell]

... the new fOA goes into significant detail defending (without citing any law at all) the application of Alice as follows: strip all functional language, then see if a generic computer could be programmed to do whatever remains.  Garbage.

Yep, that's how they do it at the EPO.  And, remember that patent laws are being "harmonized" globally for quite some time now since NAFTA, GATT.   And, it would not be to change other countries' laws to harmonize with those of the USA, rather the other way around.  So, the examiners are going to be applying EPO law to US patent cases, to the extent AIA changes permit it.   It seems clear that this was part of the motivation for AIA in the first place - AIA being the result of treaty obligations.  We will know when the change is complete - at that time Rule 56 will be abolished.

http://www.patents.co.uk/Downloads/CIIAtTheEPO.pdf

edit:  I'm not convinced Alice is the proper case to use to assert an EPO-style rejection.  When the right case comes along, then it will be cast in stone, like Bilski, KSR, Alice, etc.   Look for it on the horizon is what I'm thinking.

[Sam Bergstrom]

Hi Chris,

I'm not sure I understand your POV. I've prosecuted hundreds of cases before the EPO, and have only 1 case sunk because of a 101/Art. 52 issue. Really, as soon as a computer is involved (or some other technical means), then it is patent eligible so long as the "technical" aspect goes beyond what a computer does for all programs (e.g., toggle transistors, etc...).

To me, this is a very low and OBJECTIVE bar that's almost embarrassingly simple compared to the current state of US 101 law.

Now when it comes to inventive step (ART. 56), then, yes, non-technical features are stripped from the claims unless the non-technical features interact with technical features in some way to form a tech. solution to a tech. problem. A functional feature that is technical would not be stripped out of an inventive-step determination.

I've had many a fight with EPO examiners, but subject-matter eligibility was hardly ever raised, even for the bulk filers that I represented.

[ChrisWhewell]

It is a matter of style of rejecting.   In the US, it appears to me that the latest fad at the PTO are these 101-type rejections, and eventually it will go away or diminish with passage of time.   Example, just take the Alice case - it would have been perhaps just as easy for the US examiner, PTAB or courts to argue the obviousness or lack of inventive step, since all the process steps were longstanding.  In my experience, the EPO goes the route of inventive step rejection in the vast majority of cases, maybe its just a cultural patent examiner thing.  In any event, I think the authors of the pdf I'd copied above gave a good analysis and now that Mr. Ivey mentioned a case where a US examiner stripped the technical features and looked at what's left... that seems to fit the M.O. outlined in article by the UK firm lawyers like a glove.