Bonum Certa Men Certa

Patent Law Firms That Profit From Software Patent Applications and Lawsuits Still 'Pull a Berkheimer' to Attract Business in Vain

These patents and lawsuits would still be a waste of time and money

Pulling a Berkheimer



Summary: The Alice-inspired (Supreme Court) 35 U.S.C. ۤ 101 remains unchanged, but the patent microcosm endlessly mentions a months-old decision from a lower court (than the Supreme Court) to 'sell' the impression that everything is changing and software patents have just found their 'teeth' again

"The Berkheimer Memorandum," wrote Marks & Clerk's Julian Asquith and Tobias Eriksson in their headline just a little while ago, is "Good news for software patents in the US" (perpetuating the old hype, such as "Berkheimer Effect" and ‘pulling a Berkheimer’). The USPTO offered a consultation after Berkheimer and there are still months to go. Quoting Marks & Clerk:



The Berkheimer memorandum, issued by the USPTO on 19 April 2018, is good news for applicants of US software-related patents.

In summary, an examiner at the USPTO is now obliged to factually prove that any “additional features” of a claim are well-understood, routine, and conventional in order to support an "abstract idea" rejection. Hence, if a claim is novel and inventive, it should now be easier to show that it is also patent eligible (i.e. that it relates to patentable subject-matter).

It is widely acknowledged that the patenting of software-related inventions became more difficult in the US following the decision in 2014 of the US Supreme Court in decision known as "Alice" (Alice Corp. v. CLS Bank International).


That in no way changes Alice, only burden of proof associated with it. In that regard, not much will happen.

"That in no way changes Alice, only burden of proof associated with it. In that regard, not much will happen."On May 1st Robert Curylo wrote about "Loopholes In The USPTO's Berkheimer Memo". To quote: "Rejections of patent claims under 35 U.S.C. €§ 101 are often criticized when examiners take an “I know when I see it” approach rather than applying any objective standards for assessing patent eligibility. However, in an April 19, 2018, memorandum, the U.S. Patent and Trademark Office imposes new limitations on rejecting patent claims as ineligible for being directed to abstract ideas without significantly more."

But there are still loopholes there, albeit the paywall puts them out of view. Several days ago in IAM's sponsored ads/'analyses' (Baker Donelson in this case) the lawyers were 'pulling a Berkheimer' (even months later). As they put it:

The US Patent and Trademark Office (USPTO) has recently provided additional guidance to its examiners on the issue of subject-matter eligibility, which could make it easier for applicants to overcome rejections under 35 USC Section 101. The memorandum, issued on April 19 2018, addresses the limited question of whether an additional claim element (or combination of additional claim elements) represents well-understood, routine and conventional activity.


But again, Alice itself isn't being sidelined; so the law remains more or less the same (if that memorandum leads to any material changes to guidelines at the end).

What we see above are "sales pitches" rather than honest analysis/advice.

Recent Techrights' Posts

Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Saturday, November 23, 2024
IRC logs for Saturday, November 23, 2024
[Meme] GAFAMfox
Mozilla Firefox in a state of extreme distress
Google Can Kill Mozilla Any Time It Wants
That gives Google far too much power over its rival... There are already many sites that refuse to work with Firefox or explicitly say Firefox isn't supported
Free (as in Freedom) Software Helps Tackle the Software Liability Issue, It Lets Users Exercise Greater Control Over Programs
Microsofters have been trying to ban or exclude Free software
In the US, Patent Laws Are Up for Sale
This problem is a lot bigger than just patents
ESET Finds Rootkits, Does Not Explain How They Get Installed, Media Says It Means "Previously Unknown Linux Backdoors" (Useful Distraction From CALEA and CALEA2)
FUD watch
Techdirt Loses Its Objectivity in Pursuit of Money
The more concerning aspects are coverage of GAFAM and Microsoft in particular
Techrights' Statement on Code of Censorship (CoC) and Kent Overstreet: This Was the Real Purpose of Censorship Agreements All Along
Bombing people is OK (if you sponsor the key organisations), opposing bombings is not (a CoC in a nutshell)
Links 23/11/2024: Press Sold to Vultures, New LLM Blunders
Links for the day
Links 23/11/2024: "Relationship with Oneself" and Yretek.com is Back
Links for the day
Links 23/11/2024: "Real World" Cracked and UK Online Safety Act is Law
Links for the day
Links 23/11/2024: Celebrating Proprietary Bluesky (False Choice, Same Issues) and Software Patents Squashed
Links for the day
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Friday, November 22, 2024
IRC logs for Friday, November 22, 2024
Gemini Links 23/11/2024: 150 Day Streak in Duolingo and ICBMs
Links for the day
Links 22/11/2024: Dynamic Pricing Practice and Monopoly Abuses
Links for the day
Topics We Lacked Time to Cover
Due to a Microsoft event (an annual malware fest for lobbying and marketing purposes) there was also a lot of Microsoft propaganda
Microsofters Try to Defund the Free Software Foundation (by Attacking Its Founder This Week) and They Tell People to Instead Give Money to Microsoft Front Groups
Microsoft people try to outspend their critics and harass them
[Meme] EPO for the Kids' Future (or Lack of It)
Patents can last two decades and grow with (or catch up with) the kids
EPO Education: Workers Resort to Legal Actions (Many Cases) Against the Administration
At the moment the casualties of EPO corruption include the EPO's own staff
Gemini Links 22/11/2024: ChromeOS, Search Engines, Regular Expressions
Links for the day
This Month is the 11th Month of This Year With Mass Layoffs at Microsoft (So Far It's Happening Every Month This Year, More Announced Hours Ago)
Now they even admit it
Links 22/11/2024: Software Patents Squashed, Russia Starts Using ICBMs
Links for the day
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Thursday, November 21, 2024
IRC logs for Thursday, November 21, 2024