Jessica M. Karmasek Sep. 24, 2014, 2:13pm

WASHINGTON (Legal Newsline) - The U.S. Patent and Trademark Office says it is doing its best to handle the implementation of the U.S. Supreme Court’s ruling in Alice Corporation Pty. Ltd. v. CLS Bank International and CLS Services Ltd.

But it’s not without its critics - mainly patent practitioners, companies and inventors at risk of losing or not receiving their patents.

About a week after Alice, on June 25, the PTO’s Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, issued preliminary guidance to all patent examining corps.

In his four-page memorandum, Hirshfeld pointed out there is no new category of innovation that is patent ineligible. Also, he noted, there are no new eligibility requirements for either software or business methods.

Soon after, the PTO sought public comment on the preliminary guidance - even though it wasn’t required to do so.

“We aren’t required to seek public comment - examiner guidance is not like rulemaking - but we knew it was a matter of importance to many,” said Patrick Ross, the deputy chief communications officer for the PTO.

“We then extended the deadline for comments, and posted comments on our website when the deadline closed.”

Law firms, companies and various intellectual property groups - the American Bar Association Section of Intellectual Property Law, Computer and Communications Industry Association, Electronic Frontier Foundation, Institute of Electrical and Electronics Engineers, and Intellectual Property Owners Association, among others - filed comments.

Then, in August, the PTO’s Commissioner for Patents, Peggy Focarino, wrote a blog post on the office’s implementation of the high court’s ruling.

“It provides some detail on steps the agency took in terms of patent applications after initial guidance was issued to examiners,” Ross said.

Focarino explained in her post that the office has applications that were indicated as “allowable” prior to Alice but that haven’t yet issued as patents.

“Given our duty to issue patents in compliance with existing case law, we have taken steps to avoid granting patents on those applications containing patent ineligible claims in view of Alice Corp.,” she wrote. “To this end, our primary examiners and supervisory patent examiners (SPEs) promptly reviewed the small group of such applications that were most likely to be affected by the Alice Corp. ruling.”

When asked exactly how many of these particular applications that were “indicated as allowable prior to Alice” were reviewed, the PTO could not provide a specific figure.

Focarino also explained that the office withdrew notices of allowance for some of the applications due to the “presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions.”

“After withdrawal, the applications were returned to the originally assigned examiner for further prosecution,” she wrote. “Over the past several days, our examiners have proactively notified those applicants whose applications were withdrawn.”

Applicants who had already paid the issue fee for applications withdrawn from allowance could request a refund, a credit to a deposit account, or reapplication of the fee if the applications return to allowed status, she noted.

When asked how many notices of allowance were withdrawn, the PTO said it could not provide an exact number.

It also could not say if more patent applications were being rejected in the wake of the decision, nor could it provide any figures.

“Because the final guidance is still being written, there’s not much more we can say right now,” Ross said, adding that the office anticipates issuing further examination guidance this fall.

Keith Grzelak, a practicing patent attorney and co-chair of the IEEE USA’s IP Professional’s Initiative, said that’s not good enough.

“The patent office needs to give us guidance,” he said. “We have to be able to advise people on how to proceed forward.

“The patent office really needs to step up here.”

David Stevens, the head of a Silicon Valley law firm, Stevens Law Group in San Jose, Calif., already has received some rejections from the patent office.

He called the situation “complexing”

“They pulled issuances within weeks of Alice,” he said. “That means (examiners) were probably told, drop what you’re doing and start pulling allowances.

“Otherwise, I don’t see how they could do it within weeks (of the ruling) -- come to conclusions in all of these individual cases.”

Faith Driscoll, who spent much of her career writing applications for computer-based patents, said, in a way, the patent office’s hands are tied.

“The examiners are just using the court ruling as a road map,” she said. “And that’s unfortunate.”

Stevens questions the patent office’s motivations.

“They’ve been building up their judicial corps, the attrition in examiners is dropping and now this,” he said.

“They are certainly aligned with Congress in wanting to obliterate software patents.”

From Legal Newsline: Reach Jessica Karmasek by email at

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