Patent Office Secrets Revealed!
by Alex Moss | November 17, 2021
The point of the patent system is to encourage people to disclose inventions to the public instead of keeping them secret. In exchange for describing their inventions in public documents (patents), inventors get certain exclusive rights to their use. To obtain those rights, inventors have to comply with substantive requirements of the Patent Act and the procedural requirements of the Patent Office. To help people understand those requirements and how they are applied, the Patent Office publicly discloses the guidance given to examiners—the people who examine and decide whether or not to grant patent applications.
But the Patent Office has been keeping some examination guidance secret instead of disclosing it publicly. This guidance gives examiners a roadmap for ignoring the Supreme Court’s rulings and the Patent Office’s own rules so they can grant invalid patents that stymie innovation, competition, and access to technology.
The secret guidance concerns the application of the part of the Patent Act that prohibits patents on abstract ideas, laws of nature, and natural phenomena. The Supreme Court has repeatedly upheld this prohibition. Each time, it has emphasized that patents combining these categories of subject matter with generic or conventional components are invalid. To be eligible for patent protection, an applicant must claim something more than subject matter no human could have invented. For example, the Supreme Court held in Alice v. CLS Bank that a patent claiming a computer system for intermediating the exchange of financial obligations (basically, escrow) was invalid because it merely combined the basic idea of using an intermediary with generic and conventional computer equipment.
Former President Trump’s chosen Director, Andrei Iancu, made his hostility to the Alice decision apparent. Upon taking office, former Director Iancu rescinded the Patent Office’s then-existing guidance on applying Alice and issued new guidance. At the time, public commenters objected that the new guidance contradicted Supreme Court precedent and threatened innovation, competition, and access to computer-implemented technology. Still, the new guidance went into effect.
Since then, the Patent Office has granted numerous patents that are invalid under Alice. For example, it granted a patent on a telehealth system with computers that start and stop communicating with each other. That is something every computer network does by definition and that any generic computer can do. Still, the patent was granted and remains in effect.
It was not entirely clear how the Patent Office was justifying grants of such obviously invalid patents. Then a patent examiner anonymously alerted us that the Patent Office had issued additional guidance that was not available to the public. We filed a Freedom of Information Act request for all guidance given examiners on this part of the law. In response, the Patent Office released 15 pages of material. Although 8 pages were completely redacted, what we could see made clear how patent examiners were being guided to flout the Supreme Court.
The non-redacted pages include a hypothetical patent and a chart showing how examiners should analyze the elements of each patent claim. The patent claims are broad methods with steps like “determining, by a remote server, a first predicted path of a first vehicle located within 500 feet of a second and third vehicle,” and “temporarily storing the first, second, and third predicted paths in the remote server.”
The written description of the hypothetical invention describes the “server” and “vehicle” as conventional and generic; there is nothing specific or inventive about them. That is important because the Patent Office’s rules require patent examiners to give applied-for claims their “broadest reasonable interpretation.” Even if a patent owner might argue in court for a narrower construction (e.g., that the “vehicle” must be an autonomous vehicle), they cannot obtain a patent by making arguments like that to the Patent Office. Because of the “broadest reasonable interpretation” rule, patent applicants have to change the language of their claims to change how examiners interpret them. The rule protects the public because broad patent claims can be used to accuse more types of products and services of infringement than narrow patent claims.
Despite the claim language requiring a “vehicle,” and the broadest reasonable interpretation rule, the exemplary chart instructs examiners to assume the vehicle is an “autonomous vehicle,” and narrowly interpret the claim language as if it were. For example, it says: “In the autonomous vehicle technology, a ‘predicted path’ has an ordinary and customary meaning to one of ordinary skill in the art as the predicted trajectory along which the vehicle is predicted to travel over time taking into account numerous different inputs such as: known destination, real-time road and traffic conditions, merge lanes, traffic signals, speed limits, and location of objects near the vehicle.” By applying an unreasonably narrow interpretation of claim language, the guidance violates the Patent Office’s own rules and standards for patent examination.
The guidance goes further, using the unreasonably narrow interpretation to justify conclusions that are both wrong and irrelevant. After reciting the narrow interpretation of “predicted path,” the guidance states: “Given that, determining a predicted path for the three vehicles is not something that is practically performed in the human mind.” Whoever wrote this guidance must not have taken high school physics or else they would realize that humans can and do use their minds to predict the trajectories of moving objects based on numerous factors and conditions.
Regardless, the Supreme Court in Alice held that a patent directed to an abstract idea, which could not be performed in the human mind, was still invalid because the required non-human components were purely conventional and generic. Despite that ruling, the Patent Office’s guidance instructs examiners not to consider whether the required components—the “remote server”—is conventional or generic. Instead, it directs them to accept the claim without further analysis.
This guidance is deeply troubling, but illuminating. Now we know how examiners are granting patents on abstract ideas that are invalid under Alice. But we also know they are doing so systematically. That means there will be more abstract patents, more unfair and anticompetitive accusations of patent infringement, and more wasteful litigation for years to come.
The Patent Office cannot retract unlawfully granted patents, but it can and must prevent such patents from being granted in the future. It can do so easily by re-instating the guidance the last Director unilaterally rescinded. That guidance is consistent with Supreme Court precedent and fully open to the public. The next Patent Office Director can and must restore it.