American Axle: The Latest Twist on Patent Eligibility

Last month during the AIPPI Congress in London I had the privilege of interviewing USPTO Director Andrei Iancu for a full hour during one of the lunch sessions. As always, Director Iancu's comments were thoughtful, candid, and delivered with entertaining flair. We spent a good part of our time discussing the issues around patent eligibility in the United States under 35 U.S.C. § 101. He discussed the USPTO's most recent guidelines on patent eligibility (see our earlier article here) and the Director's belief that if those guidelines are followed, an equitable balance can be reached between preventing patents on truly abstract concepts and allowing patents that protect and encourage innovation. When asked by the audience if any court has followed the USPTO guidelines, he gave a simple answer: "not yet."
As encouraged as I believe all of us in the room were by Director Iancu's positive comments, the latest § 101 decision from the Federal Circuit not only fails to follow the logic of the USPTO guidelines, it reaches what is, in the opinion of this author, a new low in patent eligibility jurisprudence. Because, if a method of manufacturing a propeller shaft is not eligible subject matter, it is difficult to imagine where a future line might be drawn. Beyond the unfortunate outcome for American Axle & Manufacturing, Inc. ("AAM"), the majority's analysis "smushes" the law of patent eligibility, enablement, claim definiteness, and substantive patentability together into an "eligibility goulash" that serves only to foster further uncertainty in an area of law already fraught with unpredictability. Indeed, well beyond this one appellee, industry as a whole will suffer from this latest attempt to cast technical (albeit perhaps not adequately described or new) inventions as abstract concepts.

USPTO Extends After-Final Consideration Pilot 2.0 (AFCP 2.0) Program
The United States Patent and Trademark Office (USPTO) has formally extended the After-Final Consideration Pilot 2.0 (AFCP 2.0) program through September 30, 2020. The AFCP 2.0 program was first introduced on May 19, 2013, and is part of the USPTO's on-going efforts towards compact prosecution and increased collaboration between examiners and patent applicants. The AFCP 2.0 program was based on the previous After-Final Consideration Pilot program, and was scheduled to run only through September 30, 2013, but has been extended every year since then given the continued success of the program. More information can be found on the AFCP 2.0 program at the USPTO's  website . (Update courtesy of James Carlson

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Eastern District of Texas Implements New Local Rules for Challenging Patent Eligibility

On July 25, 2019, the Chief District Judge of the Eastern District of Texas Rodney Gilstrap issued a standing order specifying new local rules for patent cases assigned to his docket. These new rules establish additional procedures for parties asserting that a patent claim does not qualify as patent-eligible subject matter. Previously, a party to a court proceeding would file a motion, e.g., a summary judgment motion or a motion to dismiss a complaint, in order to challenge a patent claim as being directed to ineligible subject matter under Alice Corp. v. CLS Bank Int'l , 573 U.S. 208 (2014). Now, the new rules require patent challengers in Judge Gilstrap's court to serve eligibility contentions on all parties.
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Patent Term Adjustment (PTA) Update: Federal Circuit Clarifies PTA Calculations in After-Final Practice
In mid-September 2019, the Court of Appeals for the Federal Circuit (CAFC) decided an appeal related to the calculation of Patent Term Adjustment (PTA) in a case involving after-final practice. In this decision, the CAFC was persuaded that the U.S. Patent and Trademark Office (USPTO) interpretation of the PTA statutes was a permissible construction. Further, the Court's holding illustrates a clear attempt at limiting broad interpretations of USPTO rules by patent applicants seeking to be afforded additional PTA. Accordingly, this decision provides valuable guidelines for after-final practice where PTA is an important consideration for the patent applicant.



AIPPI's 2019 World Congress was recently held in London. During the event, AIPPI Reporter General Jonathan Osha held an intriguing hour-long discussion with USPTO Director Andrei Iancu. This session was covered at length by IP Watchdog. Read more via the link below. 

Images courtesy of WIPO
Jonathan Osha spoke on the issue of data policy and AI during WIPO's day-long "Conversation on IP and Artificial Intelligence"  on September 27 in Geneva, Switzerland.  The panel was moderated by Professor Ryan Abbott of the University of Surrey School of Law and featured panelists Erich Anderson, Chief IP Counsel, Microsoft, Virginie Fossoul, Legal and Policy Officer, European Commission, Prof. Andreas Wiebe, University of Göttingen, and Jonathan Osha, Reporter General of AIPPI.  To start off this very interesting day, Director General Gurry led a discussion of the impact of AI on IP among a group of panelists including USPTO Director Andrei Iancu.  Other panels addressed the topics of whether the current IP law is adequate for protecting AI-related inventions, socio-economic and ethical impacts of AI on the IP system, AI's impact on copyright (featuring Ms. Karyn Temple, US Registrar of Copyrights), and finally a look at IP and its use at patent offices.  More information is available here .    [WIPO event photo album]
Congratulations to Osha Liang Attorney 
Tammy Dunn  who was ranked among the "Top 50 Women in PTAB Trials List" according to the PTAB Bar Association. 

"This special publication, released by the Association's Women's Committee as part of a two-year long focus on women practicing before the U.S. Patent & Trademark Office's Patent Trial & Appeal Board, recognizes female practitioners currently in private practice or at companies who have appeared in the highest number of PTAB trial proceedings since 2012."   (Courtesy of the  PTAB Bar Association)

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