Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense

I raised this up a year or two ago, but what the heck…  Here's a fuller statement.

The Supreme Court was wrong to read 101 to limit eligible subject matter.  Although it has done so for 50 years, it has never analyzed the statutes closely.  Further, only in the last few years (Prometheus onward) has it held that lack of eligible subject matter is a defense to an issued patent.  This holding is clearly wrong.  Competent lawyers need to raise this issue (how's that for my ethics hook?).

What is now in 101, 102, and (implicitly) 103 was prior to 1952 in one section, 4886. It provided:

 Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tubor-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than one year prior to his application, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may… obtain a patent….”

Congress created a commission in 1948 to study the definition of “invention” applied by the Supreme Court, and also, more importantly, the holding of In re Thau, which in dicta stated that a process using an old composition of matter was not eligible for patenting.  See also 100(b), quoted below.  (Thau involved poorly drafted claims. Long story.)  Congress wanted to reject Thau and make it clear that, while a product claim to an old material was not patentable, a process claim using an old material was eligible for patenting. In other words, Congress set out to broaden section 101 to overrule Thau and to eliminate subjective tests of "invention" that the Supreme Court had made up in the years leading up to 1952.  See the materials cited in Chief Judge Rader's opinion in CLS Bank.

This culminated in 1952 legislation. The text of what became 100(b), 102, and 103 were developed, and Congress expressly split 101 away from the conditions of patentability it put into 102 and 103:

Pre-1952 Section 4886

1952 Patent Act

Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tubor-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than one year prior to his application, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may… obtain a patent….”

100(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

 

101 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

 

 

102 “conditions of patentability”

 

103 “conditions of patentability

 

282 – defenses include “conditions of patentability" in Part II of Title 35, section 112, and some other defenses, including equitable defenses.  Section 101 is not listed and is not a “condition of patentability.”

Congress indisputably did not want any distinction between “invention” and “discovery” to be relevant.  It wanted a process claim that happened to use something old to be a "process."  It wanted clarity and an objective test (this drove adoption of 103) as to "inventiveness."

Now to run through it. Here is why I believe Congress did not want "violations" of Section 101 to be either conditions of patentability or a defense to infringement of an issued patent.  Starting with the plain text, Section 282 is states that “conditions of patentability” in part 2 of Title 35 are defenses.  While in Part 2, section 101 is not labeled as a “condition of patentability:” only 102 and 103 are.  (112 is set forth in mandatory terms, unlike 101 which says “may,” and section 112 is referred to in Section 282, as are some equitable defenses).  Further, there are glaring textual differences between 101 and 102/103/112:

  •  102/103:  There is no burden of proof in Section 101 on the patent office to grant unless the claim is to unpatentable subject matter, unlike 102/03, which require PTO to grant unless it establishes that the claimed invention is not new/nonobvious.
  • Finally, and I think tellingly, all section 101 does is say that someone who invents a new/useful thing can go get a patent if they want to.  That's it. It doesn't even say the PTO can only issue patents on processes/products/etc.  That's not what it says.  Read it.

The legislative history and drafter/leader comments show 101 is not an invalidity defense because it is not a “condition of patentability:"

  •  Earliest bill explained that the original statute, 4886, was being “split into two sections, section 21 relating to the subject matter for which patents may be obtained, and section 22 relating to the conditions under which a patent may be obtained.”
  • S Rep.:  “Section 101 sets forth the subject matter that can be patented, ‘subject to the conditions and requirements of this title.’  The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.” 
  • S. Rep:  “The… definition [of process in 100] clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of mater, or materials; they are processes or methods under the statute and may be patented provided the conditions for patentability are met.” 
  • S. Rep. testimony of Federico:  “Now, under section 101 a person may have invented a machine or a manufacture, which may include anything under the sun that is made by man, but it may not necessarily be patentable unless the conditions of patentability are fulfilled.” (I.e., something is an invention but may not be new or nonobvious; but whether it is an "invention" is not an issue.)
  • Giles Rich 1960: “Section 101 lays down, too, with respect to all categories of patentable inventions, the basic requirements of novelty and utility…. Sections 102 and 103 both have headings which commence with the words ‘Conditions for Patentability.
  • Federico:  Section 4886 had “specified the subject matter for which a patent could be obtained and recited conditions for patentability.  In the new code, this section has been divided into two sections, section 101 relating to the subject matter for which a patent may be obtained, and section 102 which defines statutory novelty and states other conditions for patentability.”

 Further, the language of 101 concerning processes was amended in substantial part to overcome court decisions that had construed “invention” in 4886 to mean that methods applying old and well known materials, processes, or devices to new uses were not patentable methods (E.g., In re Thau).  There was no concern whatsoever about 101 being too broad and patentable subject matter needing to be restricted.  In fact, a proposed narrowing of the concepts now in 101/100(b) was not adopted.

 

 

78 thoughts on “Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense

  1. “Do I think the patent statutes can deal with the issues we’re talking about, yes, through 102/103/112. ”

    There, you said it again but you’re still not explaining how those statutes work to prevent the patenting of, e.g., purely mental processes, given your “plain language” constraints.

    Why aren’t you answering this obvious straightforward follow-up question to your own assertion, David? Stop dancing around and just tell us all how you believe those statutes work to prevent the patenting of, e.g., purely mental processes.

    You say that “it’s not your point”, David, but … you brought it up. You have no evidence that Congress intended such subject matter to be patentable (and, frankly, the idea that Congress did intend for such to be patentable is absolutely laughable, as everyone knows). You want to take an incredibly constrained and strict constructionist approach to the statute, on one hand, but then to address this obvious elephant in the room you simply wave your hands around and proclaim that 112/102/103 can handle it. And then you refuse to explain how that works, in practice, given your own incredibly constrained and strict constructionist approach to stautory intepretation. I mean … seriously?

    That’s pretty pathetic, David.

  2. Let’s give another example.

    This one sounding close to Ned’s 102(f) repealed item.
    We have three competitors, ‘A,’ ‘B,’ and ‘C.’ ‘A’ patents a particular innovation. ‘B’ and ‘C’ copy that innovation during the life of the patent. ‘A’ sues ‘C’ but chooses not to sue ‘B.’

    Can ‘C’ sue ‘B’ for infringement of ‘A’s patent? What would be ‘B’s defense? Is that defense one of those explicitly listed in the Patent Act?

  3. “if I read 101 in a vacuum, I agree with you that it implies a lot of things”

    That’s just it Prof. Hricik, you KEEP ON saying something I am not saying.

    I am not reading 101 in a vacuum.
    I am not taking any implicit meaning (inherent meaning and implicit meaning are two different things).

    I am reading the plain words – exactly what you and the Court suggest.

    I am placing the separate clauses in the context of the whole. And no, this does not make 102 superfluous. You still have to jump over the hurdles in my track analogy.

    It is only when YOU make the additional arguments THAT I AM NOT MAKING and try to suggest something I AM NOT SAYING that you run into the difficulties that you are running into.

    To avoid those difficulties I suggest that you read what I am actually saying, and not the different argument that you want me to make.

  4. MM,

    You’re mixing apples and oranges. Do I think the patent statutes can deal with the issues we’re talking about, yes, through 102/103/112. Do I think 101 is a defense to invalidity, no, and deliberately not.

    I hope that’s simple.

  5. MM,

    There have been two (2) cases in the Supreme Court about whether 101 is a defense to infringement, Prometheus and Myriad. So, not sure what long history on the issue I’m focused on you’re talking about. I’m also not talking about obtainability or enforceability, but the narrow question of whether Congress authorized 101 as a defense to infringement of a patent. If your argument, therefore, in terms of statutory construction is that Congress has acquiesced, by not doing anything in the last two years, I disagree. If your point is that, for patentability purposes, it has acquiesced, that I think is stronger. But, even then, it is only since Bilski, really, that this has been an issue. I don’t know of a single case where the Court has found Congress acquiesced in an interpretation, except the baseball antitrust case.

    I understand you believe you are right.

  6. “read as a whole that Congress (a) knew how to label a condition and (b) knew how to write them, and didn’t in 101. It simply didn’t. I understand you’re reading 101 in a vacuum. If there were no 102, 103, 112, or statutes about inventorship and many things, I could read by implication many limitations on patentability into 101. But basic canons of statutory interpretation say that’s a nullity. ”

    Basic canons are wonderful. Courts, too, look at the Patent Act “as a whole” when they consider whether claims to purely mental processes (or claims that effectively protect such processes) are obtainable and/or enforceabe. Given the long history of our patent system and the various legislative acts that have been passed to regulate that system, what’s the best answer to that question, David?

    Mind you, this isn’t the only bit of subject matter that presents a minor, um, problem for your “plain reading” scheme to remove subject matter eligibility as a defense. But it’s a fun one to discuss. I suppose it’s more fun for me, given that I’ve got 99% of the public, probably 95% of the judiciary, and a solid majority of both patent practitioners and patent law academics on my side. ;)

  7. And just to be clear, David, this is not an answer:

    “If you think Congress didn’t get it right, well, then persuade Congress to fix it.”

    Upthread you seemed to indicate that Congress did “get it right” and the other statutes were perfectly capable of “handling” the issue of applicants attempting to protect novel mental processes with patents. If you’re correct, there’s nothing to fix, is there? But there’s no way to evaluate that unless you explain what you are talking about.

    Alternatively, if you believe that purely mental processes (and facts embodied in those processes) should be protectable with patents, then, too, there is nothing for Congress to fix.

    So which is it, David?

  8. David, are you ever going to explain how 102 and 103 address claims to purely mental processes, which are surely eligible “processes” according to your “plain reading” of 101?

    Upthread you indicated that those statutes were adequate to address the patenting of purely mental processes (not to mention claims that recite old conventional non-mental processes in addition to novel mental processes). Please explain how those statutes work to accomplish that goal.

    If, on the other hand, you refuse to answer this obvious follow up question to your own assertion, just let me know that you are going to refuse to answer and I’ll stop asking you to answer.

    Thanks in advance, David.

  9. Like I said, anon, if I read 101 in a vacuum, I agree with you that it implies a lot of things. But when I read it in light of adjacent sections, nope. Not even close. Statutes can’t be read the way you suggest. Indeed, 102 is superfluous under your approach, since 101 says “new.” It falls apart fast the way you’re approaching it, but I understand your point: read in a vacuum, your argument is reasonable.

  10. 101 says more than just ‘who may apply’ – and what it says are inherently conditions of who (with what, and with what important albeit easy to meet characteristic) is invited to the track race.

    No implications required.

    Your eyes are still closed to the plain meaning of the words.

  11. Anon,

    When I read 102/03 and they say “conditions of patentability,” and 101 does not, and when I read 102/03 and they say “a person shall be entitled to a patent unless” and 101 says who may apply (it doesn’t even mention the PTO), and doesn’t use the words “a person shall be entitled,” I see, read as a whole that Congress (a) knew how to label a condition and (b) knew how to write them, and didn’t in 101. It simply didn’t. I understand you’re reading 101 in a vacuum. If there were no 102, 103, 112, or statutes about inventorship and many things, I could read by implication many limitations on patentability into 101. But basic canons of statutory interpretation say that’s a nullity. Under your approach, everything in the Act is a ‘condition’ of patentability, since every statute has words in it, and every word limits meaning further.

  12. Again, Prof. Hricik, I am not arguing your position of the titles used. I get that. I get that patent eligibility and patentability are different concepts.

    I am merely noting the actual words used by Congress and their inherent meanings – no implications required, and in pari materia fully sustained as shown by my racetrack analogy.

  13. If you believe that, given the title of 102 and 103, and given the clear fact that Congress knew, not only how to “title” a condition, but to write one explicitly that, nonetheless, the plain language of 101 is a condition, that is your opinion. I completely understand that.

  14. “Deal with what you are trying to do is imply, in that scheme, that, nonetheless, 101 is a condition.”

    Except a condition of patent eligibility is in the plain words of 101. There is NO implication necessary as the plain words speak for themselves. Think of my race track analogy. You cannot win a prize of a patent if you cannot be on the track.

    That is something you must deal with.

  15. Somehow my comment didn’t show up.

    Fair observation about the medium.

    But here is my point on this point:

    If you want to argue 101 is a defense or a condition of patentability, deal with the reality that 102 and 103 say “condition of patentability,” and 101 does not. Deal with the reality that 102 and 103 are, in substance, explicit mandatory conditions to obtain a patent, and 101 is not. Deal with what you are trying to do is imply, in that scheme, that, nonetheless, 101 is a condition.

    Anyone engaged in rigorous statutory interpretation will realize that implying a condition in that scheme is about impossible… unless you just want to reach the result.

  16. I perfectly agree – but it seems inescapable given the medium and the players involved.

    The option not to engage is there, but to NOT engage is the desire of those calling names. They would like nothing better to be able to pull out their soapbox and be unchallenged.

    A thicker skin is a small price to pay.

  17. Prof. Hricik,

    You are guaranteed a ‘debate’ (or at least of many many posts) when you choose the topic of 101.

    As you might imagine, the power to level entire categories of invention and keep them from the patent system is an addicting power, and that power draws many antagonists who seek to eliminate what they perceive as patents being too accessible (it is no accident that Flash of Genius was also meant to be dealt with in the 1952 Act).

    The power of patents to be game-changers and the rise of recognition of intellectual assets has created enemies of patents from both the entrenched large corporations and the ‘wild liberals’ who traditionally despise the results of a society geared to property: the Right and the Left.

    I am in full agreement with you that the larger danger of a Court legislating should be kept firmly in mind – especially in patent law, in which the founding fathers were explicit as to which branch of the government had the power to write that law.

    If the Court wants to say that the explicit words of Congress would stymie the intent of the Constitution, the proper action of that Court would be to hold the law AS IT IS to be unconstitutional, forcing Congress hand – NOT to draw upon ‘implicit’ words that the Court chooses to find (how deep the rabbit hole of ‘implicit?’).

    But to the immediate thread (and any future thread on 101), you should be prepared for the type of blogging response you see. The philosophical battle goes back more than fifty years and will not change overnight.

  18. How is my attempt to put your strawman aside and have you answer a very pertinent and direct question ‘utterly non-responsive?’

    Clearly, you have a major flaw in your pet ‘theory.’

    You might attend to that flaw before shoving that theory down anyone’s throat.

  19. Malcolm,

    Have you no shame?

    Can you at least leave your poison at the main Patently-O site?

    Your ‘game’ of accusations is really quite silly and quite transparent.

    Your “N” word problems were of your own creation – your use of the word and your support of 6’s use of the word must be owned by you. Sorry Malcolm, but the fact that your own posts can be used against you only shows that you need to put more thought (not less) into what you write.

  20. Guys and gals,

    Calm down. Read the statute. That’s all I want people to do, just like the Constitution says they should do. If you think Congress didn’t get it right, well, then persuade Congress to fix it. That is how our system works. Courts don’t legislate.

    I’m usually the wild liberal, and look at me.

    Over and out,

    David

  21. perhaps it would be helpful to explain to Prof. Hricik that you really do believe that machines think

    Perhaps it would be useful to explain to Prof. Hricik that you really do beat your wife, Tr0 llb0y.

    Fun game. Will you start the next round as usual, Tr0 llb0y? Or maybe you want to accuse me of being prejudiced against blacks like you did on another thread?

  22. “we might as well get used to the idea of a weak-patent period”

    As I already noted, that’s a pretty ridiculous statement given how big the bubble has already been inflated. Reminds me of this recent exchange between Barney Frank and Dancin’ David Gregory (and his investor-class apologist friends):

    link to flickr.com

    That nervous silence from the defenders of the “job creators” (aka the “financial innovators”) sounds so very, very familiar.

  23. No Ned, it does not.

    How many times must I remind you that patent eligibility and patentability are different concepts?

    Stop conflating.

  24. anon, one problem: Frederico stated that his goal was to include in 102/103/112 all grounds for patentability/validity.

    Frederico’s intent flies in the face of your argument.

    Now I urge your to compare Brenner v. Manson with Application of Manson. The CCPA had held that the spec. did not have to disclose the utility of a compound, that utility was presumed. The PTO appealed. The Supremes, relying on 101, reversed. Utility had to be known and disclosed.

    Now consider the result had the Supreme Court applied the statutes as written instead of overriding the statutes with their view of 101. Perhaps they would have held that 112 required one to describe how to use a compound and that it could not be presumed.

  25. “must grant a patent unless”

    This is true.

    But it still misses the actual language, and the limitation inherent in that language.

    Revisit the track analogy, Ned.

    Discuss.

  26. I have asked this question before as well (perhaps Ned Heller will provide an answer, given his historical leanings):

    Why has the modern day Supreme Court (post-1952) exclusively dealt with a variety of items on a strictly 101 basis (items reflecting the Morse claim – which would be made to ‘appear’ to be a 112 issue and the Product of Nature doctrine – which would be made to ‘appear’ to be a 102/103 issue?

    Here’s a hint: the 101 policy basis is NOT a prior art/timing basis.

    Think about it.

  27. Perhaps Malcolm we can have you verify what you know the controlling law is in regards to claims that merely have steps that are mental steps – not the strawman total claim as mental step that you so eagerly jump to.

    How about it? Can we have that admission on patent eligibility of claims – not wholly but merely containing elements that are mental steps?

    Eligible? Yes or no.

  28. Malcolm, perhaps it would be helpful to explain to Prof. Hricik that you really do believe that machines think (as humans do – thus the tie to the Mental Steps doctrine), and your refusal to discuss the controlling law of the exceptions to the printed matter doctrine – even though you have volunteered the admission that you are aware of the controlling law.

    Then we can all share in the wonderfulness of the word ANTHROPOMORPHICATION and what it portends for your anti-software patent agenda.

    Wouldn’t that be a wonderful contribution?

  29. David writes: *Personal attacks aside, we have different views of the role of courts. You think they should legislate; I don’t.*

    I’m not sure what “personal attacks” you are referring to or who you are responding to. Try using the comment threading options (e.g., hit “reply” when “replying” to a specific post).

    In any event, I don’t see anyone here who is arguing that “courts should legislate”. I’m not arguing that. My argument is that it’s 2013, we have an exploding patent system where people have taken cases to the Supreme Court arguing that the defendent infringes when they merely *think* about data which was obtained by practicing the prior art, and therefore something needs to be done.

    Now you seem to be suggesting that “legislation” is what needs to happen. But that’s not what you said upthread. Upthread you indicated that 102 and 103 were sufficient to deal with the issue of using patents to prevent people from thinking about new facts. I’m asking you to explain what you were talking about, i.e., how can those statutes be applied to address the issue?

  30. With your view that the courts should not legislate (especially in patent law for which the Constitution explicitly provided a certain branch with the power), we are in complete agreement.

  31. Sorry Prof. Hricik, but my response to you is NO – you still need to open your eyes.

    The very plain words of 101 are just not as wide open as you think.

    Please note that I am not taking the position that you are trying to argue (vis a vis the titles). I am simply using the words themselves. I am not implying anything. Patent law pertains to patents. 101 spells out the playing field. In my analaogy, it is the invitation to the track meet. If you are not on the field, you cannot run the race. It really is that simple that I am NOT implying anything.

    Please discuss the point that I am actually making – not some ghost that you would rather have me be arguing.

    (and the nothing else to be done comment is rather absurd – almost rudely so)

  32. Sorry malcolm, but your retread of a strawman deserves the same retread of notice to you that you are engaging in a strawman.

  33. Indeed, from what I can tell from all these posts, the entire patent act is actually in 101,

    [eye roll]

    Just answer the question, David: are purely mental processes eligible for patenting in the United States? Was that what Federico intended? What is your evidence for that?

    Again, your argument is that “plain reading” trumps everything but you haven’t explained how your “plain reading” of 102 or 103 prevents people from protecting subject matter (e.g., thinking about new, useful facts) that nobody in Congress has ever suggested should be protectable.

    So where are you going with this? Do you want the case law on subject matter eligibility to be obliterated to satisfy some anal-retentive desire for “clean judicial interpretation”, or do you want the statute to be re-written to expressly call out the subject matter that isn’t eligible for patenting? Either way, some genuine input is going to be needed about how to rebuild the bed. Do you feel like you have anything to contribute in that regard? It seemed like you did upthread but you went pretty quiet when you were asked to explain what you were thinking.

  34. The bottom line is that the Court does not care what the Statute says or what the legislature intended; nor does the Court seem to feel it is bound by either. I don’t know why this is

    Very likely it’s for the same reason that nobody except the deeply invested True Believers blinked an eye when the Supreme Court handed down its Prometheus decision: they are trying to make sense of statutes that were written by people who really didn’t think too deeply about the system they were trying to regulate, nor how that system would be manipulated in the age of dirt cheap information processing.

    In other words, the issues that the Supreme Court has addressed in the context of 101 are issues that should have been addressed when the statute was written. But they weren’t. They are doing their best to determine what what the purpose of the patent statutes are they are doing that with reasonably complete knowledge of the history of patents in this country and a less full (but not negligible) understanding of what certain interested parties are attempting to “own” via exploiting the patent system.

    If the public or its representatives in Congress feel really strongly that the Supreme Court is messing up with its reading of eligible subject matter, they are certainly free to speak up about it. But anyone can see that’s not happening. What is happening is that those who are already deeply invested in inflating the patent bubble for their own selfish purposes are grasping at straws or, in this particular case, they are grasping at Professor Hricick’s half-baked midnight musings about “plain reading of the stuatute”. Well, if Professor Hricick should ever have his “day in court”, it’ll be great fun. We’ll be looking at another 9-0 decision and not one that will change the eligiblity of any subject matter for patenting.

    Maybe Professor Hricick can talk to Professor Chen about this and urge the President to urge Congress to rewrite 101 to explicitly remove, e.g., mental processes from subject matter eligibliity. He seems loathe to discuss that elephant in the room, perhaps because he hasn’t given it much thought and doesn’t feel prepared to (that would be odd if he’s been paying any attention for the past several years). Instead, he waves his hands around and says “102/103/112 can handle it” but he doesn’t explain how or why. That’s an old trick. It’s called “moving the deck chairs around.”

    C’mon, David. Step up. Talk to Professor Collins, maybe, and figure out where you’re going with this.

  35. Anon,

    Let me try it this way. Read 102, 103. They clearly state conditions, right? No doubt. They’re titled “conditions of patentability.”

    Now look at 101. It’s not called “condition of patentability.” Now, what you want to do is, despite the fact that when read next to 102/03 it’s clear 101 is NOT a condition — Congress clearly knew how to make a condition (in addition to labeling it so, it wrote it so), you want to imply that it is.

    Well, fair enough, sometimes courts imply things. But I know of no canon of construction that would get you there: where an express condition is made, and another thing is not an express condition, you can’t imply that it is. It’s really simple.

    I understand you want to imply all sorts of things into 101. Indeed, from what I can tell from all these posts, the entire patent act is actually in 101, with nothing else to be done!

    :-)

    David

  36. Are you going to explain how, e.g., 102 or 103 “does the job”, David, when the new thought process is novel and non-obvious? Recall that 103 actually includes some “plain” express language in it about “reading the claim as a whole.”

    It would seem if you are championing “plain reading” of a statute than you’d have a much better argument that 103 is the last place you would look to deal with the “concerns” over claims to purely mental processes or even claims with mixed subject matter (i.e., old eligible process steps and new mental thoughts). And yet you argue the opposite.

    What exactly are you thinking? Are you going to explain how, e.g., 102 or 103 “does the job”, David, when the new thought process is novel and non-obvious? Or is that something that “can wait” and in the meantime we should just “trust you”?

  37. “we might as well get used to the idea of a weak-patent period, such as the 1940s-1970s”

    LOL. Some “weak period”, when more patents are being granted, filed, asserted and litigted than during any other five year period in the history of our country.

    What did you really mean to say, Nick?

  38. Prof Hricik,

    I do not catch your drift or understand why you make the “in pari material” comment.

    My stressing the difference between patent eligibility and patentability does not violate that concept.

    Furthermore, the analogy I use of the track meet is sound, and treats patent law as a whole.

    As to you not seeing words of limitation in 101, you need to look again. Utility and categories are inherently words of limitation. The plain language sets a condition in itself. Your desired version NOT being used does NOT make the condition any less there.

    In essence, I feel that you are not addressing my comment as to your over-reading

    (“101 is not entirely permissive. – It is widely permissive, but not entirely so. – You do have to have utility, and you must fit into at least one of the statutory categories.”).

    I will take this as my point not being refuted. The inherent condition in 101 tells you who may race (and thus, who may rightfully have the trophy of a patent). If you want to continue to say “I don’t see it” I will continue to reply “Open your eyes.”

    Lastly, I am in full agreement with you regarding the copyright term extension cases (I have actually stressed these points in past discussions with Ned Heller). On a separate topic, those cases do set up a serious (potential) problem for patent law in how ‘prior art’ is treated (the movement in and out and back in again of copyright protection based on the exact same constitutional clause potentially obliterates the patent theme of ‘prior art.”). Let’s save that for another day.

  39. The repeal of 102(f) DOES have constitutional dimensions in my view. That, or its analog, has been in the statutes from the very beginning and for a reason. The first congress thought it to be a constitutional requirement.

  40. Product of nature was treated as a novelty issue in the original PTO decision.

    We had 102(f). That could have supported a rejection based on product of nature.

    But 102(f) is repealed.

    Now the repeal of 102(f) is the real problem from a constitutionality point of view. How can we grant patents to named inventors who did not invent the subject matter of the patent?

  41. anon, Morse, I believe pegged utility to 112’s requirement to describe the manner of making and “using.” If I discover a new composition that has no known utility, this can be a 112 problem.

  42. It is a very, very different thing to say that if a patent is “eligible” that 101 is unconstitutional. See the copyright term extension cases for that sort of thing.

  43. Anon,

    Because of 282, 102, 103 and 112 relate to invalidity. Because of their wording, they relate to patentability. But, it is wrong to suggest that in pari materia does not apply, which means you read the act together, as a whole. Doing so reveals no doubt.

    I see no words of limitation in 101. You’re reading it as implied conditions or requirements. I’m not implying something against the plain language. Congress knew how to write conditions and requirements; it did not in 101. It could have said “a person may only obtain a patent if” it fits within the categories; it did not.

    This is not a close case.

  44. I would point out that certain people (myself included) have maintained a discussion of the Useful Arts throughout 101 discussions – so such is not necessarily a very different mode.

    Antagonists such as Ned Heller, IANAE, Malcolm Mooney (MM or any number of his alter egos), and MaxDrei can attest that I continuously point out the need to be clear as to the Useful Arts.

  45. David,

    101 is not entirely permissive.

    It is widely permissive, but not entirely so.

    You do have to have utility, and you must fit into at least one of the statutory categories.

    I would further advise NOT to attempt to read 101 in light of the other conditions (102/103/112) as such only serves to conflate patent eligibility with patentability.

    If it helps at all, you might think of an analogy of a track race, say the 110 meter hurdles. Eligibility then is being invited to the race. Patentability are the hurdles that you must jump over. The patent is the award to the winner of the race. Without eligibility, you are not even on the track.

    If you want to stand there with an award of a patent (and all that comes with such an award – including enforcing that award), then you must have been able to have been on the track in the first place.

  46. Tony,

    In the debate I’m having on a law professor list serv, people finally got around to that: that really what this is is, “if Myriad’s patent is ‘eligible/valid/whatever’ then 101 is unconstitutional as read because as read it no longer promotes the useful arts.” That is a very, very, very different mode of analysis than we’re seeing.

    David

  47. I don’t quite understand. I’m reading (a) the titles of 102 and 103, both of which say “conditions of patentability,” and (b) their language, which are conditions (“entitled to a patent unless”) compared to 101, which is entirely permissive and descriptive.

    If you can point me to any condition or requirement in 101, read in light of 103 or 112, I’d love to see it. Congress knew how to write conditions (102/103) and requirements (112’s shall). It didn’t in 101. There is no doubt — no ambiguity, nothing — that 101 is not labeled “condition of patentability.” It is not. There is no doubt that it is not a condition when read next to 102/103.

    There’s no absurd result unless you begin with the premise that 101 is what it is not: a condition or requirement of patentability.

    Read 102, 103 and 112 then read 101. Congress knew exactly what it was doing.

  48. Professor,

    If 101 is not a condition or defense, could you argue that the statute then allows things to be patented that are not in the “useful arts,” and thus unconstitutional?

  49. You’re seeing something that isn’t there. 282(b)(2) does not say “any ground denominated in part II as a condition for patentability,” which is what you read it to say. Section 101 specifies the types of inventions that are patentable. Having a patentable invention is ipso facto a condition of patentability. There’s no need to look at legislative history, the statute is clear.

    Even if you argue the word “specified” in the statute is ambiguous, it must be construed to avoid an absurd result. You counsel the opposite. It would surely be absurd if a defendant could not argue that he is not liable for infringing a patent on an unpatentable invention just because there is no prior art. After all, since most prior art consists of evidence of prior inventions, a lack of prior art might just mean that the PTO had been doing its job.

  50. Prof. Hricik,

    But the Supreme Court says more than just follow the plain language of the statute.

    Much more.

    They have found refuge in the words of Congress by implicitly reading words into the explicit words.

    I’ve asked before: where does ‘implicit’ stop?

  51. The Court stopped reading the text of section 101 long ago. The statute says “whoever invents or discovers,” yet the Court keeps quoting its pre-New Deal decisions that discoveries are not patentable. Not a single one of the Court’s exceptions to patentability finds support in the statute, and all contradict Congress’s statement that Section 101 encompasses “anything under the sun that is made by man.” Now the Court has resurrected the “inventiveness requirement” that was explicitly countermanded by the 1952 Act. The bottom line is that the Court does not care what the Statute says or what the legislature intended; nor does the Court seem to feel it is bound by either. I don’t know why this is, but the same behavior by the Court prompted the passage of the 1952 Act and the establishment of the Federal Circuit 25 years later. There is no constitutional mechanism to overrule erroneous Supreme Court decisions, so we might as well get used to the idea of a weak-patent period, such as the 1940s-1970s.

  52. David: not sure I understand you here. There are several equitable defenses to patent infringement. I agree that the Supreme Court has entirely departed from the plain meaning of the statute and its statutory history.

  53. iwasthere, no, the applicant could rely on the legislative history to say that there is no 101 grounds for rejection and traverse.

    The conditions for patentability state the Director must grant a patent unless…

    There is no such statement in 101.

  54. ” Just following”

    No.

    Just creating a strawman that no one is arguing about, while avoiding any discussion of patent eligibility of claims that merely have elements that are mental steps.

    You are so transparent Malcolm.

  55. One could also add that it is a matter of agency deference – as to the determination to issue the patent – thus again barring the defense of 101 to an issued patent.

    Indeed, if that were the case, 101 would only arise if pto refused to issue the patent as not within the scope of 101 and then – classically – the inventor – could ‘sue out the patent’ and ask for an adjudication of the 101 and claimed subject matter issue.

    Funny how agency ‘expertise’ and deference wins the day in so many court reviews of statute – but not the red headed step child of patent law.

  56. Equity is not a defense to patent infringement. Congress could have said so, but it didn’t. Nor did Congress say, “If courts in their subjective views think the claim is like, wow, abstract or something weird like that, it’s invalid.” It is precisely the opposite.

    The “precise opposite” would be if Congress had put in the statute that “there shall be no equitable defenses to patent infringement and no Court shall ever be permitted to create one because no circumstance will ever exist where patent infringement could ever be excused by any consideration of equity.”

    Can we assume that when the 101 defense to infringement falls under these arguments that the doctrine of equivalents also goes belly up? If not, why not?

  57. ” purely mental processes”

    LOL – and yet again the strawman

    Not a strawman at all. Just following David’s arguments to its “logical” conclusion (and he’s not the only one making the argument; you, of course, have chosen to hide your beliefs on this subject from public … perhaps David will help, um, “flush them out”).

    In a nutshell, the argument is that 101 says that processes are eligible for patenting. A mental process is a process. Therefore, it’s eligible for patenting.

    So, no “strawman” in bringing up mental processes. To “believe” David’s argument is to “believe” that Congress intended purely mental processes to be eligible for patenting.

    I’m asking for evidence that anyone in Congress actually believed that. It seems rather lame to respond by saying, e.g., “Frederico knew what he was doing” and leave it at that.

  58. As for being able to claim purely mental steps, you have 112, 102, and 103. I think they can do the job for what you are talking about.

    Gosh, David, I’ve heard that said before but it’s invariably followed by silence when further elucidation is requested.

    Are you going to explain how, e.g., 102 or 103 “does the job”, David, when the new thought process is novel and non-obvious? Recall that 103 actually includes some “plain” express language in it about “reading the claim as a whole.”

    It would seem if you are championing “plain reading” of a statute than you’d have a much better argument that 103 is the last place you would look to deal with the “concerns” over claims to purely mental processes or even claims with mixed subject matter (i.e., old eligible process steps and new mental thoughts). And yet you argue the opposite.

    What exactly are you thinking?

  59. David, you do not cover the legislative history surrounding 282 and ITS fundamental changes.

    Those changes eliminated, for example, prior invention as a separate defense to infringement. Frederico explained that he was moving those defenses into 102 to bring into line the conditions for patentability and the defenses to infringement, which included invalidity.

    To the extent that the prior analog to section 282 included substantive defenses, including prior invention, those were merged into 102/103/112. Federico intended that 102/103/112 cover all the conditions for patentability and all the conditions for validity.

  60. By the way, I’m just doing what the US Supreme Court says to do… follow the plain language of the statute.

    Please someone use the language of the statute and basic canons of construction and come up with a reasonable construction otherwise. I cannot do it..

  61. Equity is not a defense to patent infringement. Congress could have said so, but it didn’t. Nor did Congress say, “If courts in their subjective views think the claim is like, wow, abstract or something weird like that, it’s invalid.” It is precisely the opposite.

    As for being able to claim purely mental steps, you have 112, 102, and 103. I think they can do the job for what you are talking about.

  62. equity would seem to require that there must be some way (either a litigation defense or a PTO challenge process) to invalidate patent claims that have been granted covering subject matter that is not eligible for patenting.

    Equity. Common sense. A desire for a non-insane patent system.

    According to DH’s “logic”, if I come up with a useful, new non-obvious method of thinking about something, then I get to patent that. That’s because, according to DH, “[t]here was no concern whatsoever about 101 being too broad and patentable subject matter needing to be restricted.” In other words, Congress didn’t go out of its way to expressly negate the desires of the nuttiest patent extremists therefore the Courts are powerless to do anything about it. Surely if Congress thought that patents on purely mental processes were a bad idea, they would have said so!

    For similar reasons, every American has a Constitutional right to own as many hydrogen bombs as he or she wishes. Eventually the Supreme Court will recognize the clear intent of the Framers (after all, no concern was expressed during the writing of the Constitution about the individual possession of doomsday devices). They are just waiting for the right case to present itself.

  63. In my opinion, §101 lists the categories that are eligible for patenting. Expressio unius est exclusio alterius.

    I also agree with Federico that “anything under the sun that is made by man” that falls within these categories is eligible for patenting.

    Notwithstanding §282, equity would seem to require that there must be some way (either a litigation defense or a PTO challenge process) to invalidate patent claims that have been granted covering subject matter that is not eligible for patenting.

    Just as a probate court does not have the authority to conduct a criminal felony trial, the PTO does not have the authority (subject matter jurisdiction) to grant patent claims that fall outside of the categories of §101.

  64. Fully agree.
    101 starts with the word “Whoever” and includes the word “may”. Thus it is open ended and permissive as to the question of who may apply and based on what actions. It provides a safe harbor right for inventors in the four subject matter areas to apply but does not foreclose others from applying. (Which makes sense for example in the case where the inventor is incapacitated or deceased.)

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