Patent Law

Just-n-examiner on apologies and 35 USC 101

By Lawrence B. Ebert, Esq.

Another instance where I get the urge to issue an apology has to do with 101 rejections. For a while, the guidance that we were receiving on the interpretation of 101 was, um, evolving.

I'd send out a 101 rejection, and by the time the amendment came back, the Office's position on 101 interpretation had changed. "Thanks for making those changes for me, but things have changed and now you'll have to do these other things to satisfy the requirements for statutory subject matter." Once again, I feel bad about it, but in this case I'm just following the guidance of the Office (and getting stuck writing a second non-final for it). It feels like I should include an apology with the action, but under those circumstances I don't think it's called for.

Hmmmm, IPBiz wonders if law professors ever apologize from writing false things in law review articles? Like when numbers for patent grant rate were, um, evolving, as when Mark Lemley went from rational ignorance to (not) rubber stamping.

Full post as published by IPBiz on May 31, 2008 (boomark / email).