Bilski Briefs: Supporting the Government (In Name)

UPDATE: More briefs added Oct 5, 2009, 11:30 am

The final round of amicus briefs have been filed in the pending Supreme Court case of Bilski v. Kappos. Mr. Bilski is appealing the Federal Circuit's en banc rejection of his patent application. In that decision, the court held that Bilski's claimed method of hedging risk did not qualify as patentable subject matter under 35 U.S.C. 101 because the method was neither tied to a particular machine nor transformative of any physical article. Bilski challenges this "machine-or-transformation" test as unduly narrow. Bilski's legal position was supported in a large set of amicus briefs including a strong textualist argument made by Professor John Duffy.

Briefs supporting the government position have been filed. As summarized below, the vast majority of briefs also reject the Federal Circuit's machine-or-transformation test as the sole test of patentable subject matter for a claimed process. In my summaries, I have attempted to capture what I learned from each brief, of course the briefs and arguments are much more extensive and nuanced than my squibs suggest.

Electronic Frontier Foundation (EFF) and the Kauffman Foundation: Business method patents are harmful and should not be allowed. The long history of US patentable subject matter indicate that a patentable process must provide a technological advance. Likewise the mere fact that a process uses a machine or computer does not immediately render the process patentable subject matter. Rather to be patentable, the advance must be a technological advance. EFF etc amicus brief.pdf.

Red Hat: Software methods do not become patentable simply because they are tied to a computer. Benson. Download 08-964bsacRedHatInc.

William Mitchell College of Law IP Institute: This case does not properly present the issue of patentability of claims that include a mix of statutory and non-statutory subject matter. The court should wait for an appropriate case to decide that issue. Parsing Section 101 provides few real answers as to patentable subject matter. Download 08-964 William Mitchell College of Law Intellectual Property Institute.

SFLC (Moglen and Ravicher): Standing alone, software is not patentable. This result is derived from the Supreme Court's decision in Microsoft v. AT&T that “[a]bstract software code [uninstalled in a machine] is an idea without physical embodiment.” 550 U.S. 437, 449 (2007). Download 08-964 Software Freedom Law Center.

SIIA: The patent eligibility of software is well established and should not be disturbed. Download 08-964 Software & Information Industry Association.

Knowledge Ecology Int'l: The goal of the system is to encourage progress, not to reward inventors. Further, patent protection is not a "necessary policy intervention to reward successful investment in new medical technologies. . . . [M]any of the greatest medical advances have benefited significantly, and in some cases exclusively, from mechanisms that exist completely outside of the patent system." Download 08-964 Knowledge Ecology International.

Mark Landesmann: The evidence of the negative social impact of business method and software patenting is properly directed at the PTO's allowance of patents that were not substantially novel and that were not properly disclosed or claimed. There is no evidence that patents on novel, non-obvious and properly disclosed business-method process inventions create any harm. Download 08-964 Mark Landesmann.

Nevada State Bar Ass'n: The machine-or-transformation test harms emerging Nevada businesses – especially in the growing areas of solar energy, gaming, and digital communications. Download 08-964bsacintellectualpropertysectionnevadastatebar.

American Bar Ass'n: The court should use an incremental approach to excluding claims to subject matter where patenting does not make sense and creates a problem. Categorical limits such as the machine-or-transformation test may limit innovation. That said, the "[p]atent law should not interfere with the exercise of human intellect by granting a monopoly on processes in which thinking is central." A specific target of the ABA is to eliminate patents covering tax planning methods. Download 08-964 American Bar Association.

American Insurance Ass'n: Regardless of their novelty, insurance policies should not be the subject of patent protection – even when combined with a computer. Download 08-964 American Insurance Association.

Bank of America, Google, et al.: The patent laws should bar patentability of "accounting methods, tax mitigation techniques, financial instruments, and other means of organizing human behavior—or software used to implement those methods." Download 08-964 Bank of America et al..

Bloomberg: Limiting a method to use on a general purpose computer should not render the method patentable. Download 08-964 Bloomberg.

CCIA: It is important that the Federal Circuit eliminated the overbroad State Street test. The current tension in the patent system can largely be traced to that unprecedented over-expansion of the system. Tight limits on patentable subject matter are important because (inter alia) of the strict liability nature of patent infringement. "Tying patentability to physical subject matter is not a perfect solution. However, it limits the reach of patents in important ways that can significantly reduce the risks of inadvertent infringement and the scope of potential liability."Download 08-964 Computer & Communications Industry Association.

FFII: Patents on business methods have been considered and were rejected by the Statute of Monopolies in 1623. Patents greatly harm the Free & Open Source Software (FOSS) movement. Download 08-964 Foundation for a Free Information Infrastructure.

Professors Menell and Meurer: The Constitution creates a real limit on patentable subject matter – i.e., the subject matter of the patent must be within the "useful Arts." Economic evidence indicates that business method patents (especially internet related business methods) are harmful. 08-964 bsac Menell.pdf.

Law Professors and the AARP (Including Josh Sarnoff): Patents should only cover "inventions in the application." Patents can not cover "non-inventive applications of public domain science, nature, and ideas." The right interpretation of the statute requires that the invention "reside in the application, rather than in a discovery preceding or employed by it. This is because the science, nature, or ideas must be treated as if they are already in the prior art, i.e., are publicly known and free for all to use. Absent invention in applying such discoveries, there is simply no invention to patent." 08-964 bsac Brief of Eleven Law Professors and AARP.pdf.

Microsoft, Philips, and Symantec: Nobody (except Bilski) believes that his claims deserve patent rights. The machine-or-transformation test should not be seen as the exclusive test of patentable subject matter of a process claim – in part because the test has already "proven overly difficult to implement in practice." Like Professor Hollaar, Microsoft would simplify the test by requiring that the invention "involve one or more disclosed physical things." Today's computers – although complex – are not fundamentally different from Babbage's 1836 mechanical computer. Process claims that use computers should be patentable. Am Brief.pdf.

Professor Hollaar and the IEEE: Just restating the general principles of patentable subject matter is unhelpful. Rather, clear rules are needed – especially because the subject matter question is most frequently addressed by patent examiners who have little legal training and little time to ponder abstractions. A clear and time-tested rule would be: A process is patentable subject matter when it involves making or using a machine, manufacture, or composition of matter. This means that software method patents that require a computer would be patentable, but Bilski's method of hedging would not be patentable. bilski-sc-amicus.pdf.

American Medical Association: The machine-or-transformation test should not supplant the requirement that a patent claim "address a technology." A patent should not be allowed to cover "every possible application of a scientific observation." Rather, claims should be limited to "a particular new and useful application or use of the observation. The Supreme Court should use this case to make a statement especially directed to "overreaching claims in the life sciences. . . . Such patents chill research, and patents such as those in Labcorp and Prometheus chill talking and thinking of ideas by making talking and thinking into a tort." 08-964 bsac The American Medical Association.pdf.

Adamas Pharma and Tethys: Section 101 should be interpreted in a way that is objective, predictable, and not duplicative of the other patentability requirements. The machine-or-transformation (MoT) test does not meet any of these requirements. The Federal Circuit test also violates US treaty obligations under TRIPS and NAFTA and potentially subject the US to trade disputes adjudicated at the World Trade Organization (WTO). Under these US-initiated treaties member countries agreed to offer patent rights "in all fields of technologies." A major purpose of the agreements was to ensure that countries offered a full scope of patent rights, and by limiting the scope of rights, the US "will no longer be able to credibly argue in Special 301 trade disputes that failure to protect healthcare inventions made by cutting-edge U.S. companies constitutes inadequate protection of intellectual property rights." Some Congressional intent can be gleaned from the legislative history of Section 287(c) of the patent act. As originally proposed, that provision would have limited the subject matter eligibility of medical and diagnostic methods. After some debate, a compromise was reached to continue to allow their patenting, but to limit the remedies available. 08-964 bsac Adamas Pharmaceuticals.pdf.

Robert Sachs and Daniel Brownstone: Software should be patentable and has been for a long time. The Federal Circuit test greatly confuses the issue. Although software is an abstraction from the physical world, it is not "abstract." SF-5270929-v1-Bilski_v_Doll_Amicus_Brief_of_R_Sachs_and_D_Brownstone_as_amici_curiae_2009-08-06.PDF.

Big Internet Retailers, including Crutchfield, Overstock, and LL Bean: Patent Trolls are hurting online retailers and one way to stop them is to eliminate business method patents (including software business method patents). In effect, business method patents amount to a tax on Internet commerce. (The companies don't mention – unlike offline retailers – internet companies are often exempt from paying sales tax…) Internet Retailer Amicus Brief.pdf.

Brief of CASRIP (U. Washington): The US Constitution sets a bound on the scope of patentable subject matter – limiting them to the Constitutionally proscribed "useful Arts" as that term was understood at ratification. For new methods, one key is to consider the purpose of the method. Methods of entertaining a cat using a laser and telling a joke into a microphone should not be patentable regardless of their tie to particular machines because neither of those functions have ever "been considered a useful Art, and surely . . . is not the kind of discovery that the Patent Clause contemplates." Some methods also exist that should be patentable even though they fail the machine-or-transformation test. Despite its problems, the machine-or-transformation test is "superior to its competitors in filtering out preemptive claims to basic principles." However, it should not be the sole test of eligibility. Bilski's claim is unpatentable because hedging against price inflation (the purpose of the method) is not within the useful Arts. CASRIP am cur brf.pdf.

172 thoughts on “Bilski Briefs: Supporting the Government (In Name)

  1. curious wrote: “I doubt that the Supreme Court will set forth a clear test (they certainly didn’t in KSR).”

    Why do we even need a test for 101? We already have the four categories. Isn’t placing an invention in the category of process, machine, composition and manufacture enough? After that just let 112, 102 and the enormously steep 103 do its job and there should not be any problems for anyone.

  2. (We do know the name of the person who patented the first high performance sorting system. It was Marty Goetz, and the patent is US #3,380,029, “Sorting System”. The company SyncSort, which is still in business, was built on that patent. That was the first sorting algorithm to break the O(N log N) speed barrier, previously thought, incorrectly, to be a theoretical limit.)

    As for the Bilski briefs, they’re frustrating to read. There are several “Briefs for Respondent”, including the ABA and Google briefs, which reject the “machine or transformation” test, want something more restrictive than the “means plus function” test, but don’t suggest a test that provides any clarity. This suggests that we’re going to get a Supreme Court decision which doesn’t provide anything close to a clear resolution of the issue.

  3. 6 wrote:
    “Question: If a process has utility, how can it be an “abstract idea”?”

    “I don’t know by what mechanism this occurs in nature Ned. All I know is that it happens.”

    6 if you had any experience in systems analysis, or industrial engineering, or even an undergrad class in cognitive psyche, you would know that a process and an abstract idea are opposites. Yes, this is a trick question posted by Ned, and perhaps unfair to the less informed but nonetheless the science is firm and fair. All processes by the very nature of their construction and function, have utility. Now if you want to discuss the science of mental and industrial production systems I would be glad to elaborate. Until then just know that all processes are technological and/or industrial and therefore eligible for patentability.

  4. MM Wrote: “AI, but I’ve responded to plenty of your strawmen and other misleading horsecrxp. You’ll have to forgive me if I missed a few here and there.”

    Yes, you write plenty on this blog but you have consistently failed to provide any substantive evidence based on law, science, fact, or reason for the non patenting of business method – processes. Simply typing expletives, and juvenile insults to individuals or their positions is not substantive, nor is responding with fallacious ad hominem accusations such as troll, straw man, etc.

    But I suspect you already know this. The reason you, and self proclaimed scofflaw patent examiners such as 6 act out so is that you have absolutely nothing to offer, even with 22 amici briefs on the subject!

    You and all the anti patent/anti business method-process crowd are simply on the wrong side of the law, history and most important, the wrong side of progress.

  5. AI: “For the record here are the questions that have been ducked, avoided, and evaded by the anti patent and especially the anti business method process patent posters on this blog. Their silence speaks volumes.”

    I can’t speak for the other “anti business method process patent posters”, AI, but I’ve responded to plenty of your strawmen and other misleading horsecrxp. You’ll have to forgive me if I missed a few here and there.

  6. “The true benefit of business method patents will not be known unless and until these patents are
    enforced and sanctioned to the point where
    infringement is actually deterred, and new
    inventions are given the market opportunity that the patent system was designed to afford them.”

    This clown apparently believes that the “true benefit” of increasing one’s profits won’t be understood until new methods of improving profits are “promoted”by the patent system. I thought I’d seen it all but never understimate the idi0cy of a Diehrbot.

  7. “”Question: If a process has utility, how can it be an “abstract idea”?””

    I always find it odd that seemingly “intelligent” people ask questions like this without apparently trying to answer it for themselves.

  8. “Question: If a process has utility, how can it be an “abstract idea”?”

    I don’t know by what mechanism this occurs in nature Ned. All I know is that it happens.

    Observe:

    1. A method comprising: thinking about punching Ned in the face.

    This method has a utility in that, by performing the method, I am then able to decide whether or not to punch Ned in the face. Right? Right? AMIRITE?

    Try on:

    1. A method comprising deciding not to add 100000 tons of cake mix based upon a cake mixing bowl’s size being only 1 ft across and 1 foot thick.

    The utility is not to bury your cake mixing bowl AMIRITE?

  9. “Im quite sure my money only exists in the form of 1’s and 0’s on a server somewhere.”

    Actually that just means your money doesn’t exist. All that exists is some data somewhere that a bank will agree to give you some money based upon (if they so choose).

    “But as a peice of software it many perform a function in a new and innovative way.
    Therefore it has the same rights as any other patentable invention.”

    That assumes that anything that performs a function in a new an innovative is patentable. Unfortunately, that is not the lawl.

  10. “Software is “NOT” abstract, High level programming languages are an abstraction of the basic machine code.”

    Where machine code is itself an abstraction though right?

    AMIRITE?

  11. “”Could it be that the PTO is granting patents on old and obvious business methods and that this might be the source of the problem instead?”

    Nobody ducked these questions AI. Here’s a refresher.

    “”Could it be that the PTO is granting patents on old and obvious business methods and that this might be the source of the problem instead?”

    Yes it could and the answer is irrelevant.

    “”still cannot understand, so please help me, why it is bad to give the inventor of an new business method a patent and it is good instead to allow other to copy his method?”

    Because a plurality of reasons, starting with the fact that they aren’t technically an “inventor”. The list continues with: because in this country at least we have a thing called the constitution that explicitly rejects the notion of giving such people patents over such methods. The list then continues on and on with other reasons, those should tide you over.

    “”Any American that invents a series of successive steps, that when applied solved the global financial crisis would win a 20 year patent on the invention! So, providing someone could actually do it, would it be worth it to the United States to grant that patent?”

    No, granting a patent on it is not worth 20 years of the people of the US not being able to apply the method freely.

    “”One, most processes are conducted behind closed doors and are not, in the way you speak, tangible for all to see and appreciate. On the other hand, the patent document fully discloses the method for all in a way that no secret process is ever discoverable. Without the quid-pro-quo of exclusive rights for a limited time, this will, of course, end. How can that benefit society?”

    No secret process is ever discoverable? LOL WUT? What are you talking about Ned, you need to rephrase your statement to make a bit of sense.

    I assure you that there are “secret methods” within the methods that the majority of the apps which are on my desk. They might even be a secret to the inventor. But not necessarily, they might only be a secret to someone who is outside the company.

    “”This cannot be a serious objection to business method or software patents, as it would amount to an objection on the whole concept of patents.”

    What cannot be a serious objection? I don’t know the context of the question in order to answer it for you.

    “”Now, we have heard the contrary argument from others who have large established businesses and who are used to copying the products of others without compensation, particularly up and comers who whittle at their dominant position. But what is this but an argument in FAVOR of monopoly, not against.
    Think of what you are saying, MaxDrei. Your very argument favors the creation and maintenance of real monopolies built on theft.”

    That isn’t a question so it certainly can’t be a question that I, or anyone else, is dodging. The lack of a question mark anywhere within the sentences should have tipped you off.

    To the extent that “But what is this but an argument in FAVOR of monopoly, not against.” is a question without a question mark I’ll explain.

    It is an argument against the government creating a monopoly. Monopolies may exist in a market if nobody has the balls and strength to compete with the monopoly. The government does not need to dole out monopoly rights in order to fight this. If you want, simply take them to court for anti-trust issues.


    “So tell me Malcolm, why should big businesses have the legal right to steal the original, novel, and non obvious inventions of the small time entrepreneur that just wants to make an honest living and put his/her kids through college?”

    First because infringement isn’t a “legal right” even if we make people not be able to create infringement for business methods. And second because infringement isn’t “stealing”. Third because nobody assured an inventor an “honest living” or the ability to “put his kids through college” based upon nothing but coming up with methods of doing business (without actually going into business himself and performing them to make money).

    Amirite AI or AMIRITE?

  12. For the record here are the questions that have been ducked, avoided, and evaded by the anti patent and especially the anti business method process patent posters on this blog. Their silence speaks volumes.

    “Could it be that the PTO is granting patents on old and obvious business methods and that this might be the source of the problem instead?
    Posted by: Ned Heller | Oct 04, 2009 at 06:14 PM”

    “still cannot understand, so please help me, why it is bad to give the inventor of an new business method a patent and it is good instead to allow other to copy his method?
    Posted by: Ned Heller | Oct 04, 2009 at 07:25 PM”

    “Any American that invents a series of successive steps, that when applied solved the global financial crisis would win a 20 year patent on the invention! So, providing someone could actually do it, would it be worth it to the United States to grant that patent?
    Posted by: Actual Inventor | Oct 05, 2009 at 12:25 AM”

    “One, most processes are conducted behind closed doors and are not, in the way you speak, tangible for all to see and appreciate. On the other hand, the patent document fully discloses the method for all in a way that no secret process is ever discoverable. Without the quid-pro-quo of exclusive rights for a limited time, this will, of course, end. How can that benefit society?
    Posted by: Ned Heller | Oct 05, 2009 at 12:08 PM”

    ::Max Totally Ducked This Issue::
    “This cannot be a serious objection to business method or software patents, as it would amount to an objection on the whole concept of patents.
    Posted by: Ned Heller | Oct 05, 2009 at 11:59 AM”

    “Now, we have heard the contrary argument from others who have large established businesses and who are used to copying the products of others without compensation, particularly up and comers who whittle at their dominant position. But what is this but an argument in FAVOR of monopoly, not against.
    Think of what you are saying, MaxDrei. Your very argument favors the creation and maintenance of real monopolies built on theft.
    Posted by: Ned Heller | Oct 05, 2009 at 12:17 PM”

    “So tell me Malcolm, why should big businesses have the legal right to steal the original, novel, and non obvious inventions of the small time entrepreneur that just wants to make an honest living and put his/her kids through college?
    Posted by: Actual Inventor | Oct 06, 2009 at 12:55 PM”

  13. Do you honestly believe, that removing software patents will “fix up” the free software industry.

    It’s not like software patents are stifling innovation, as FSF stated they could not use MPEG standard because of possible patents.

    So what did they do, they developed their own format and method, Ogg-Theora.

    Where in this story did patents stifle innovation ?

    It did NOT.

    Killing software patents will not make it easier for FOSS people to steal whatever idea they like and use/claim it for themselves.

    It will force MORE DRM type restrictions on you, DRM is there (ONLY) to stop theives.

    It’s just that simple, locks are to stop criminals.
    If people did not steal “digital things”, then DRM would not be necessary.

    What would happen if there was no patent protection on innovation ?

    All the big players would have a free for all, on you’re and anyones dime.

    They would see someone with a great idea, and instead of paying him for his invention and effort they would just use it.

    Thats what the FOSS people are trying to do, make it legal to steal.

    This will force innovation and invention underground, if a big company cannot protect it’s code with patents, it will force that code to be even more obscured and probably on-the-fly encrypted.

    No reverse engineering, no stealing others good idea.

    The result of this will be what FOSS is trying to avoid in the first place.

    Having to innovate and invent on their own.

    They can do it, (Ogg-theora) but THEY JUST DONT WANT TOO.

    Why, it’s far easier to take someone’s eles efforts and make it your own.

    No brain required.

    Just see what someone else has done and copy it. Job done!!!

    The problem, is if you have to resort to this method, you WILL ALWAYS be playing catchup.

    You’ll be too busy copying what someone else is doing to actually do ANYTHING USEFULL YOURSELF.

    This is a systemic problem in FOSS and GNU, very very little from FOSS or GNU is original.

    Linux is a knockoff of UNIX, we all know that, even gcc is a knockoff of comercial products.

    I have great deal of trouble finding any examples of where FOSS has led the way in terms of INNOVATION and not IMMATATION.

    None of this fruitless bickering over patents will amount to anything.

    Why should (as someone else stated) a software developer be denied his right for protection of his invention, when the hardware designer he sits next too has no problems.

    Software is “NOT” abstract, High level programming languages are an abstraction of the basic machine code.

    You can try to push this weak argument, but it seems you (anti-software people) have not really thought this throught very well.

    Software is about as ‘abstract’ as my account balance at the bank.
    Im quite sure my money only exists in the form of 1’s and 0’s on a server somewhere.

    But to me, and everyone else, that is NOT abstract, it’s real it’s physical and it’s mine.

    if you look at source code, there is no way of telling about the function of that code without a detailed knowledge of the machine it runs on.

    If you dont know the memory map, cpu type, structure, instructions, microcode and so on.
    and block of assembly or binary code is meaningless.

    But as a peice of software it many perform a function in a new and innovative way.
    Therefore it has the same rights as any other patentable invention.

    Equally, FOSS has NO RIGHT to think that they can get the laws changed to allow legal theft of others work.

    Whatever happens the FOSS people will have to do it by themselves sooner or later.

    They want that FREE RIDE bad, they can almost taste it.

    It’s sad so much effort goes into trying to legialise theft, when that effort could be better spent on making your products commercially vaible. Usefull, and innovative in their own right.

    FOSS, STOP STEALING OFF PEOPLE.

  14. Mark concludes, and this is important:

    “For some of the country’s largest technology
    companies to, first, be repeatedly found guilty of
    defying, and interfering, with the government’s
    attempted protection of patented technologies, and
    then come before this Court (and before the media),
    to argue that some of that protection has proven to
    be socially unbeneficial, requires an amount of
    chutzpah that can only be explained by the size of
    their lobbying, legal, and public relations budgets.
    The true benefit of business method patents will not
    be known unless and until these patents are
    enforced and sanctioned to the point where
    infringement is actually deterred, and new
    inventions are given the market opportunity that the
    patent system was designed to afford them.”

    Amicus Brief of Mark Landesman in Bilski, at 29-31

  15. I have just got to post this from Mark Landesman’s brief:

    “Venture capital firms and private equity companies
    generally do not fund non-organic software or
    business method solutions, no matter how novel or
    non-obvious, regardless of the strength of their
    patent protection and regardless of their ultimate
    market potential. This is because they assume that
    large companies will, as a matter of implicit policy, and based on their past behavior, not honor other people’s issued patents. As a general rule, they therefore simply do not fund non-organic
    applications, even those that would have great
    potential and that are backed by great teams.

    “Guy Kawasaki, most probably the world’s most
    widely-read startup venture capitalist,22 cites
    “Patents make our business defensible” as the single
    worst answer that an entrepreneur can give when
    asked what makes her business defensible. He
    explains:
    As a startup, it’s highly unlikely that
    patents will make your company defensible
    because you won’t have the time or money
    to do battle with a Microsoft-esque
    competitor.23
    Venture capitalists do not expect even the strongest
    patents on the most novel and useful inventions to
    deter infringers, because they have not deterred
    infringement in the past.24 Infringement prevents
    startups from penetrating and establishing
    themselves in the marketplace, and therefore leaves
    the further development of the startups’ technologies in the hands of established incumbents. However, because of their vested interests, these incumbents can neither be expected to fully develop these solutions, nor to compete as well and as aggressively for these solutions as their rightful owners would have, had patent protection been an effective deterrent.” Id. at 29

  16. [Patents can not cover “non-inventive applications of public domain science, nature, and ideas.” ]

    If they are “non-inventive” they are obvious, aren’t they?

  17. Hagbard Celine: Thanks for the discussion of the development of Benson-like claims in Europe. I don’t know which came first, Benson or Gale, but they seem to have essentially the same approach to computer algorithms. It seems, now, that Gale is no longer good law. Hopefully, Benson will soon also join the ashcan of history.

  18. MaxDrei: “Mr Heller, may I ask, what do you mean by “Finally”? (Finally from me, or finally in this thread?). Had you perhaps been thinking up to that point that EPO law was lacking in common sense? That worries me, in that it suggests that I had been poor in explaining it. But I’m consoling myself with the thought “Better Late than Never”. Maybe you want to go back and re-read my earlier contributions, in the light of your recognition that there is some common sense in there after all.”

    MaxDrei, “finally” in this and many other threads. Everyone seems to accept that Benson was right when it obviously was wrong. Improving computer execution through circuits or code are somewhat equivalent. Benson was a form of the latter.

    The way the Supremes found it unpatentable was by dissecting the claim into old and new elements, treating the new — the algorithm — as the common resource of all mankind, and the old elements, the computer, as “insignificant.” Flook followed this approach as well. This whole approach was seemingly discarded in Diehr, but Benson still stood there — largely uncriticized.

  19. “reveal not only his frustration with his career”

    Frustration with my career? I’m wildly successful beyond my expectations for myself already. The only thing I find frustrating is my having any will left to improve myself. Why I have this I’ll never know, and I could certainly do without it.

    But you’re absolutely right about my love life. Bit ches just ain’t the marryin’ type around these parts. And if they are, they’re 1. but ugly or 2. they may as well have “future divorcee” written on their foreheads. That wasn’t what I was brought up to be looking for. I’m a country boy. City life is indeed taxing in this respect. By rights I should be married and have a little house out in the country somewhere.

    But on the other hand, you really can’t beat the amount of easy as present here in the country. At the same time, dodgin’ tha aids is a lot more easy. Can you believe the infection rates here in this city? Completely out of hand.

    To the matter at hand however. Bigguy, I see you’d rather not simply admit to being clueless and instead offer a free profile of me to attempt to cover it up. Typical lawlyer behavior.

    “But it’s not going to happen. ”

    If I had to guess, it likely will happen one day. I’ve got a good 5 years to get a good test case, and eventually who I am will likely get out to everyone because I will unwisely fail to keep a low profile irl.

    “6 doesn’t think he has to follow the Law, ”

    Not technically true Noise, I follow the lawls, just not what you regard the lawls as being. They’re two separate and distinct animals.

  20. “6 doesn’t think he has to follow the Law, much less mere guidance.”

    Noise, I think it is more likely that 6 is simply full of hot air. He does exactly what he’s told, then tries to re-inflate his ego after (and during) a hard day as a low-level bureaucrat with self-puffery and affected machismo. What he doesn’t realize is that his reflexive responses to any real or perceived challenge tend to reveal not only his frustration with his career, but his frustrated love life as well.

    I’d love to see a copy of one of those 102(b)’s where 6 applies a general purpose computer against a processor configured to carry out a specific process. But it’s not going to happen.

  21. Ned

    The EPO does allow claims for “software methods” that are internal to computers and whose only technical benefit is to improve the performance of the computer itself.

    The UK finally fell into line with this idea with the Symbian case last year, although the UK office still seems more reluctant to grant “software patents” than the EPO and there still seems to be a difference as regards the boundaries of what each regards as a “technical contribution”.

    There was a landmark British case, Gale, which was similar to Benson. It concerned a computationally efficient way of calculating square roots. All claims were refused even when expressed in terms of an encoded ROM, on the basis that the substance of the invention was still nothing more than a mathematical method.

    This was in the days when microprocessors had very limited power and memory was hugely expensive. The application of the method to electronic calculation clearly had significant technical and economic merit. It’s highly debatable whether either the EPO or UK would decide it the same way nowadays.

  22. Mr Heller, may I ask, what do you mean by “Finally”? (Finally from me, or finally in this thread?). Had you perhaps been thinking up to that point that EPO law was lacking in common sense? That worries me, in that it suggests that I had been poor in explaining it. But I’m consoling myself with the thought “Better Late than Never”. Maybe you want to go back and re-read my earlier contributions, in the light of your recognition that there is some common sense in there after all.

    Mind you, common sense isn’t everything. Isn’t that the way 15 year old future scientists see the world, before they realise that many things are counter-intuitive?

    Same with “technical”. At one level, it is common sense. But, at a deeper level, say, Board of Appeal level at the EPO, deciding whether a calculating machine claim survives or falls, it can get pretty abstruse. Compare adult/child. We all know the difference. Pure common sense. But on the question whether any particular individual should be classified as “adult” or “child” opinions may differ, even depending on the time of day or the day of the week.

  23. BigGuy,

    6 doesn’t think he has to follow the Law, much less mere guidance.

    6, still waiting for you to pick up the challenge on examination based on Law (which you also purport that your boss says you don’t have to follow).

    How is that 112 sentence structure challenge coming along?

    A L A P P A T.

    That’s gotta hurt!

  24. “However, for Mr. Mergesort or Mrs. Quicksort–they woulda made bank (and deservedly so).”

    Wait a minute- did you say MRS. Quicksort? Are you suggesting that female computer programmers exist???

    *** glimmer of hope ***

  25. One more item; the attack by Eolas today* on pretty much everyone on the internet with any money acts as an ideal visual aid. They had nothing to do with the creation of the internet or with the innovation that makes it great today, yet the current system entitles them to shake down everyone later because of an over-broad, non-physical patent claim. The madness has to end and SCOTUS has the opportunity to do it.

    * link to news.cnet.com

  26. MaxDrei: “Mr Heller, if we say that “calculating machines” is a field of technology, started with an abacus and graduated to the electronic machines of today, then an improved calculating machine might well be patentable also in Europe. The statutory exclusion of a computer program, as such, seems to me to be avoided. But as Sarnoff points out, the invention is then in the application of the algorithm, not the algorithm as such.”

    Good. Finally some common sense.

    It would be great if Bilski would ram this idea home to the Supremes that Benson and Flook were wrongly decided.

  27. “So the PTO issued Interim Instructions for Examination to examiners and then told them that they didn’t have to follow them? If so, the PTO is in far worse shape than I thought. ”

    Yes. I’m not sure what you think is binding about “guidelines”. We’ve had them before in other areas, and they were never binding. It is to help examiners know the current lawl, not bind them to a certain interpretation. Why not just go ahead and tell us all that you were talking out your arse about a subject you had no clue about? No hard feelings, you’ll not be the first to do such.

    “So, again, go ahead and tell your supervisor that you’re not going to follow the instructions, because you don’t deem them to be binding. But don’t forget to tell us how that works out.”

    I see no need to, I send out rejections, he approves them. They don’t always follow the guidelines. In fact, I’ll send one out tonight if that makes you feel better, and I’ll let you know when it gets signed. If you remind me next monday.

    “”Rebel without a clue” is the phrase that springs to mind.”

    No, “commenter without a clue” pops more immediately to mind.

    We even went over the non-binding nature of the guidelines in the PO post on the topic a few weeks ago. Maybe you were playing hookie?

  28. “Actually they (the Interim Instructions) aren’t (binding on examiners). We were explicitly told as much.”

    So the PTO issued Interim Instructions for Examination to examiners and then told them that they didn’t have to follow them? If so, the PTO is in far worse shape than I thought.

    However, I doubt that this is what happened. Far more likely is that they told you that Applicants can’t appeal or petition on the grounds that the instructions weren’t followed. But that doesn’t mean you don’t have to follow management policy.

    So, again, go ahead and tell your supervisor that you’re not going to follow the instructions, because you don’t deem them to be binding. But don’t forget to tell us how that works out.

    “Rebel without a clue” is the phrase that springs to mind.

  29. NWPA, my point is that “solving computer mathematical problems more efficiently” is not like “increasing the horsepower of an engine by adding a turbocharger.” Solving computer mathematical problems more efficiently is still just solving a math problem, no matter how you slice it. Properly applied, 101 precludes patents on methods for solving math problems.

    Now, if you would like to APPLY your solution to the math problem to, say, creating an engine with increased horsepower, then be my guest. Hopefully you’ll have some unexpected results to help you get a patent on your new engine.

    But granting patents on all the calclulations that go into the patentable invention is really a losers game. That’s the game that most software and “business method” applicants are playing now: trying to get patents to the thinnest of intellectual contributions, the sort of developments that are inevitable and require no “promotion” in the form of a government-issued monopoly. In truth, it’s the fact that the developments are inevitable that drives most of the filing of these patent applications. The more inevitable the development, the more urgent the filing!

  30. Suits me fine Hans,

    I have an MBA as well as JD, and Tech Degree (including design credentials). Bring on the more requirements baby!

  31. “what is the rationale for the PTO requirement that practitioners have scientific or technical education/training/experience”

    There is no rationale for that requirement if you are a serious Sunner.

  32. Hans–

    What about design patents? I would argue that a scientific or technical background could actually be a hindrance to effective assistance with a design patent application.

  33. For all you patent attorneys and agents out there who think that hedging risk and other non-transformative processes should be patent-eligible, be careful for what you wish. If this stuff is patent-eligible, then what is the rationale for the PTO requirement that practitioners have scientific or technical education/training/experience? I mean, does anyone really need a scientific or technical background to write a patent application directed to hedging risk via commodities trading?

  34. >>Is it? Or is it like solving a mathematical >>problem that could be used to increase the >>horsepower of an engine?

    There you go again, MM-trollbot. That could? So, the computer is running faster based on something that could be done in the future. Interesting. I suppose the angels that spin clockwise and counter clockwise to represent new algorithms outside of the physical world have something to do with the computer running faster.

  35. Malcolm: You wrongly attributed the quote at Oct 06, 2009 at 01:34 PM to AI. However the following question which you are afraid to answer was asked by Actual Invention, how about showing some intellectual courage and honesty and answer it.

    “So tell me Malcolm, why should big businesses have the legal right to steal the original, novel, and non obvious inventions of the small time entrepreneur that just wants to make an honest living and put his/her kids through college?

  36. Mr Heller, if we say that “calculating machines” is a field of technology, started with an abacus and graduated to the electronic machines of today, then an improved calculating machine might well be patentable also in Europe. The statutory exclusion of a computer program, as such, seems to me to be avoided. But as Sarnoff points out, the invention is then in the application of the algorithm, not the algorithm as such.

    As I have said, this is not my field. I comment (as ever) to stimulate comment from others.

  37. Ned Heller Wrote: “Think of what you are saying, MaxDrei. Your very argument favors the creation and maintenance of real monopolies built on theft.”

    BINGO! Did Max ever respond to this very astute observation? Or did he duck and dodge his way out of it as is usual when intellectually backed into a corner?

    This is very much a civil rights issue and Bilski is the new Brown Vs Topeka Board of Education!!!

  38. AI: “Solving computer mathematical problems more efficiently increases the overall utility of the computer as a tool. It is like increasing the horsepower of an engine by adding a turbocharger.”

    Is it? Or is it like solving a mathematical problem that could be used to increase the horsepower of an engine?

  39. >>Stern was on the government brief in both >>those cases.

    The man behind the Benson opinion in semi-retirement who slaves away endless to rid the world of software patents.

    But why does he do it? Why?

  40. “Solving computer mathematical problems more efficiently increases the overall utility of the computer as a tool.”

    Not technically true as the computer was always utilizable in that fashion.

  41. MaxDrei, I am not putting down the EPC system. I was showing you how similar the Benson case was to the EPC system when considering the BCD->Binary algorithm. The US Supreme Court and the EPC are very very close in substantive analysis given the opening paragraph of Benson I quoted. They both require, it seems, some solution to a technical problem separate and apart from the improved method of calculation.

    In Benson, the lack of a defined technical use for the algorithm doomed it. In Flook, the Supremes condemned its algorithm for the same reason. It was, they said, not tied to an specific chemical process. As such to the Supreme Court, it was no more than a disembodied algorithm for updating alarm limits, everything else in the claim being “insignificant extra solution activity.”

    The approaches to the issue in these two cases is almost identical to that in Europe.

    The departure between Europe and the States takes place in step 2. There is no step 2 in the States now , that being eliminated in State Street Bank. Before State Street, step 2 would have looked to the purpose of the computerized method, found it to be a business method and declared it to be patent ineligible.

    Stern’s brief again calls for step 2 to be reinstated, formalizing the implicit test set forth in Benson and Flook. As noted before, Stern was on the government brief in both those cases.

    Now, I find nothing inherently wrong in these two fundamental approaches. What I find wrong is the result in both Benson and Flook, and in any European case that does not recognize the utility of improved computer algorithms, per se, not tied to any other end use. Solving computer mathematical problems more efficiently increases the overall utility of the computer as a tool. It is like increasing the horsepower of an engine by adding a turbocharger. That is useful even if the claim does not go further and define a specific technical utility for the engine.

  42. Jefferson Zhou wrote:

    “With two business ideas in mind, I have registered my own small business, and started to look for angel investors to fund the business and get it off the ground quicker. But the current ruling on the business patents really drive me nuts because I am afraid that my ideas will be stolen and unprotected.”

    As an Actual Inventor my empathy is with you. However things are not as bleak as they may seem.
    First of all you need to remember that the current ruling of Bilski does not ban business method patents, in fact it upholds and reaffirms that business method patents are legal.
    Next make sure you get a NDA signed before you discuss your business methods with anyone, even if you have Pats Pending.
    Now when dealing with Angels only show embodiments of the invention and corresponding claims that are iron clad Bilski, meaning tied to a particular machine or apparatus or transforms an article. Keep the broader process inventions for yourself until the SCOTUS rules.

    Finally do not be dismayed by the very few anti business method patent trolls that vent on this blog. They know their days are numbered so that’s why they are here screaming and acting out. There are some excellent patent attorneys that not only understand 21st century technology and business methods but will fight for you and help you protect your inventions. Just look at the fine work Bilski’s attorney’s did on his brief. I would hire them for my appeal in a heart beat.
    Most important, remember that business method patents are your constitutional and civil right. So remain dedicated and fight for your right to pursue the American dream!
    May God bless you and your family. And may God bless America!

  43. “small businesses will be not as protected as they once were at least for my case.”

    See, that’s where you’re wrong though Zhou. You never were protected. An attorney that couldn’t figure out what the lawl really was simply got you to believe you were going to be protected. The minute someone fought you, you’d go down in flames.

    Perhaps Ned.

    “Did you notice the larger picture of what your Boss said and just between the two of us, which reading of Alappat it subscribes to?”

    I would suspect that my boss would subscribe to my own were I to present him with the case I’ve made for my interpretation. Never the less, you may be right and he may currently subscribe to one similar to your own. He is, after all, a former IBM hotshot and they want it to be the true reading so bad it wouldn’t matter to them one bit whether or not it was the true reading. They have thousands and thousands of patents that depend upon it by now I’m sure. Who wants to see millions of their own dollars of their own work go down the drain? Nobody.

  44. “Think again, 6. They’re not binding on me, or on the courts, but they’re binding on you – at least for the interim. ”

    Actually they aren’t. We were explicitly told as much.

  45. AI “If I go invent a new business method/process, series of successive steps, that when applied produces a hamburger faster, cheaper and better tasting than McDonald’s what do you think will happen as soon as I open my hamburger joint?”

    Your upstairs neighbor will complain about the smell.

  46. Malcolm Mooney : News flash: if you keep your business methods secret, they are less likely to be stolen than if you published them as a patent application.

    Malcolm you are wrong yet again. Very few Business Methods and/or processes can be implemented and then kept as trade secrets. If you were an Actual Inventor and Entrepreneur, rather than a troll that likes to play one on the internet, you would know this. But let’s take this as an opportunity to educate.

    If I go invent a new business method/process, series of successive steps, that when applied produces a hamburger faster, cheaper and better tasting than McDonald’s what do you think will happen as soon as I open my hamburger joint?

    I’II tell you what! The Guys and Gals from McDonald’s will be over for lunch to observed every thing and write it all down. Next day on commercials all over the world McDonald’s is advertising it’s new McBrilliant System for making hamburgers faster cheaper and better tasting than ever!

    And in 800 million stores around the world McDonald’s is using MY invention and I am out of business. And you Malcolm support this!

    So tell me Malcolm, why should big businesses have the legal right to steal the original, novel, and non obvious inventions of the small time entrepreneur that just wants to make an honest living and put his/her kids through college?

  47. MM-trollbot wrote: >>>Then why can’t I

    ’cause you haven’t admitted your mistake. Admit that algorithms do not exist “outside the physical world.” You silly trollbot.

  48. Just Visiting–

    Sorry about Wiki, but

    link to en.wikipedia.org

    There IS protection, but it is THIN, and it is the arrangement of non-copyrightable elements wherein the copyright resides.

    Original, but not necessarily novel. Maybe this Supreme court discussion details a difference between novelty and originality, and will inform the court’s decision in Bilski.

    They invoke Article 1.8.8 also.

  49. Mooney!

    Get back to work. I told you to stop bothering those patent attorneys!!!

    Those french fries aren’t going to put themselves in the fry tank!!!

  50. NWPA, I agree that public disclosure is underrated. Thanks for your response and reminder of that, even though my question was posted sloppily and in haste.

    The law changed from publication upon patent grant to publication 18 months after filing, largely for international harmonization. What else though, is this 18 months based on? Was it pulled from a hat?

    Nowadays with the internet, many things publish in the blink of an eye. I envision instant publication when filing for a patent. I am sure there must be some problem with that though, because some inventions, brace yourself, are actually real inventions! And disclosing those to the public with nothing in return is just opening the door for quick and easy design-arounds.

    What then is the solution or happy medium? Maybe the status quo is acceptable, but I would be interested in seeing a full detailed analysis arguing one way or the other why 18 month publication should or should not be the norm.

  51. NWPA: “your brain represents symbols with neurons”

    Then why can’t I patent “A human brain with neurons storing a new algorithm, wherein said algorithm comprises blah blah blah…”

    The answer is that you can, at least you can on your planet.

  52. Alun “Malcolm, in your example, the first and true inventor is actually Bob the transit guy”

    How can you make such judgments without seeing the claims, specification and the file history?

    “Your example proves nothing.”

    It wasn’t intended to prove anything. It is, however, very similar to the way the real world works, particularly when it comes to “software inventions.”

  53. “But the current ruling on the business patents really drive me nuts because I am afraid that my ideas will be stolen and unprotected”

    News flash: if you keep your business methods secret, they are less likely to be stolen than if you published them as a patent application.

  54. >>Do that qualify as “using” the prior-invented >>algorithm then?

    Jules one of the purposes of the patent system is disclosure that allows other people to improve the invention. Disclosure is one of the great under appreciated benefits of patents. Evenhtough few people read patents, since the material is disclosed in the patent applications, researchers feel free to publish articles and discuss the disclosures. Few people appreciate how 30 years ago researchers in computer science would keep secret how their inventions operated.

  55. Readers, I have nothing to quibble about, in the contribution from Hagbard Celine earlier today. He knows his stuff.

    Heller, I don’t understand your put down of the European position. I respectfully submit that assessing thread contributions under the principle of synthetical propensity (Google will deliver cites to EPO Decisions, including T_0190/99) will get you further than you are getting using your present approach.

  56. This whole software/algorithm discussion reminds me of a parallel in copyright law–the ineligibility of floor plans for copyright protection.

    I’m a patent specialist, not a copyright specialist, but I seem to remember that some court decided that there could be no expressive content in a floor plan because there was effectively a finite number of floor plans that was possible, therefore it was a matter of selection and arrangement, and not of “creation”.

    Same would apply to algorithms, software, and anything based on any logic system, except for the development of a new logic system.

    The floor plan thing has always bothered me. What if an applicant could prove through empirical evidence that a particular floor plan produced greater productivity, or less injury, than other floor plans? That might be worthy of patent protection based on a “newly discovered property” of an existing or otherwise obvious floor plan, but runs into problems of inherency.

    I’m forced to conclude that this 101 discussion is merely a distraction from the more important business of developing workable 103 and 112 tests and associated jurisprudence.

    101 should be a COARSE test, for things that are immediately obvious to all. 103 should be the fine test. After all, OF COURSE software was made by Man. OF COURSE algorithms were written by Man. OF COURSE axioms were described by Man. OF COURSE logical operations were described and subsequently selected by Man.

    SC and CAFC, leave it alone, and stop avoiding the real work of 103.

    Bilski–improvidently granted.

  57. Would it have been good for Mr. Bubblesort? Maybe, but probably not that good.

    However, for Mr. Mergesort or Mrs. Quicksort–they woulda made bank (and deservedly so).

  58. Following zbc’s lead, let’s define eligible subject-matter as “that which, when disclosed to the public, confers a realizable and repeatable benefit that did not exist before said disclosure.”

    Does that get us any further, or is it effectively a re-statement of an existing subject-matter eligibility construct?

  59. NWPA: >>Hierarchy: “An “algorithm itself” is a pure >>mathematical abstraction. It’s a symoblic >>description that can exist apart from the >>physical world.

    Hahahahahahaha. Now that is the funniest thing I have seen here since last I read one of your posts. Where do things exist without physical form ”

    NWPA, how about the algorithm being used by some researcher writing a paper in expressing their derivation of a new equation. That new equation can then be used independently and without the use of the old algorithm used to derive it?

    Do that qualify as “using” the prior-invented algorithm then?

  60. “I see no point in excluding software per se, and then granting a patent on software so long as it is claimed as part of a computer. The distinction is not one of substance, but of claim drafting. If there is a distinction of substance, please explain.”

    Ned

    That’s not a correct understanding of the EPO position.

    Let’s take Bilski as an example. The Bilski claims as they stand would be rejected as a non-eligible business method (nothing more than a “business method as such”). A claim to computer-implemented Bilski WOULD be eligible, because the EPO applies the exclusion to the claim as a whole, and any technical elements get the claim past the exclusion.

    BUT, when it comes to assessing the inventive step (obviousness) of the computer-implemented claim, non-technical elements can’t contribute to inventive step. So if the only novelty lies in the (non-technical) details of the business method, the computer-implemented claim lacks inventive step because it makes no technical contribution to the art. It doesn’t matter whether the non-technical elements are novel or non-obvious, they can’t contribute an inventive step.

    So, “mere computerisation” of a non-technical method DOES pass the EP equivalent of 101, but the requirement for technical innovation means that it fails on 103.

    Now, not everyone likes the logical underpinning of the EPO methodology. In the UK, “mere computerisation” isn’t enough to pass “101”. They dissect the claim and judge eligibility on the technical character of the “contribution to the art”. The end result should (usually) be the same as the EPO, you just get there by a different route and use a different weapon to deliver the coup de grace.

    Note also, however, if you have a computer-implemented method that has a novel and inventive technical aspect, you can get a claim to your method, you can get a claim to your programmed machine, AND you can get a claim to a computer program product for implementing the method, without needing to tie it to a data carrier. Such a claim might look like a claim to a “computer program as such” that should be excluded matter, but the EPO justifies its allowance on the basis that the real subject of the claim is not merely a computer program, but a component of a technical solution to a technical problem.

    And Max,

    Yes there are shades of EPO thinking in some of the briefs, including the USPTO’s own: in particular their notion that the real meaning of “machine or transformation” is that anything “technological” must involve a “machine or transformation”; i.e. a claim must be drawn to something having a technological character…

  61. MaxDrei, the fact that the EPC does not allow patents on the medical treatment of humans goes a long way in explaining the tortured claims in cases like Mayo and Metabolite. They end with an “inference” but do not actually require the administration of a drug. So now we know the culprit.

  62. The requirement for some separate utility for computer programs rather that the more efficient solution to a mathematical problem, such as compression, encryption, and the like, it really, really beyond the pale. It makes no sense whatsoever. It is almost like saying, “Well, you’ve claimed the more efficient blast furnace method for making high quality steel, but you can only claim the method with some specific use for the steel. Nonsense. Utter nonsense.

  63. “‘Interim Instructions’ (implicitly non-binding)”

    Think again, 6. They’re not binding on me, or on the courts, but they’re binding on you – at least for the interim. Go ahead, tell your supervisor that you’re going to disregard the Interim Instructions because you choose not to recognize them as binding. But be sure to let us know how that turns out.

  64. MaxDrei: “A computer program, as such, fails to make the 101 cut. A programmed computer survives 101 (Art 52) but may well fail to make the 103 cut (Art 56). Put in the app how the algorithm is the solution to an objective “technical” problem and your programmed computer will end up protected. But if your app reveals no solution to any real life “technical” problem (maybe only a travelling salesman mathematical problem) you will be unlikely to succeed, at the EPO.”

    MaxDrei, you really have to read Gottshalk v. Benson. Its opening paragraph reads

    “MR. JUSTICE DOUGLAS delivered the opinion of the Court.

    Respondents filed in the Patent Office an application for an invention which was described as being related “to the processing of data by program and more particularly to the programmed conversion of numerical information” in general-purpose digital computers. They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals. The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use. They purported to cover any use of the claimed method in a general-purpose digital computer of any type.”

    Once you read that paragraph, one understanding the true utility of the BCD->Binary algorithm, stands appalled. But the whole argument that it must have some separate utility, rather than the more efficient computer program that it was, sound very much like the analysis that takes place in Europe. To anyone who actually builds computers or who programs them, the requirement of a separate utility outside of the computer is dumbfounding and virtually incomprehensible.

  65. Except: look what happened in biotech, where patents were available from the get go. Did those early and outrageously wide claims inspire design-arounds. What effect did they have, on the speed of technical progress? With hindsight, would the US have been better off without the absurdly wide claims of those “pioneer” inventions? And, was it only the prospect of pre-empting an entire industry that got the pioneering research paid for, in the first place? I think…..not.

  66. “Would it have promoted the technological arts? Of course not.”

    Hold off on the Of Course Not assumption.

    With a patent in place, perhaps design around would have generated even more advancement.

    Damm, we shoulda had patents in place a long time ago

  67. I shudder to think of where we would be today if early software developers had been given patents on each of their developments. Does it make sense to lock down bubble sort for 20 years? Would it have been good for Mr. Bubblesort? Of course. Would it have promoted the technological arts? Of course not. Alas, we will never know Mr. Bubblesort’s real name as he was eaten by his starving children.

  68. >>>BTw, nice skirt today 6.

    Are you serious? Is 6 a female? If you are a female 6, then good job pretending to be a male.

  69. >>Hierarchy: “An “algorithm itself” is a pure >>mathematical abstraction. It’s a symoblic >>description that can exist apart from the >>physical world.

    Hahahahahahaha. Now that is the funniest thing I have seen here since last I read one of your posts. Where do things exist without physical form MM-trollbot? Haven’t we gone through this before that your brain represents symbols with neurons. Apart from the physical world on the head of pin represented by some angels turning clockwise and some angls turning counter clockwise.

    Trollbot: you know that computers are information processors just like a human brain.

  70. I’m thinking about my own question. The EPO uses its 103 provision to filter out claims directed to clever computer-implemented innovation in a non-technical field. Such a filtering step arrived in Europe more by luck than judgement, emerging gradually, from hundreds of EPO Technical Board of Appeal Decisions unconstrained by Binding Precedent.

    I can’t imagine how 103 can be shaped to perform the same service, in the USA. And I can’t imagine how 101, by itself, can filter as effectively as the Art 52/Art 56 combo does it today, in Europe. Can’t wait to read how SCOTUS works it out.

  71. Heller wrote to me: “MaxDrei, I will not assume that I fully understand anything about European patent law. However, I see no point in excluding software per se, and then granting a patent on software so long as it is claimed as part of a computer. The distinction is not one of substance, but of claim drafting. If there is a distinction of substance, please explain.

    For example, how would the EPO handle the claims in Benson? The claims were not to the BCD->binary algorithm per se, but as part of a computer. One claim even described the computer hardware involved and how to manipulate it.” I should reply.

    In Europe, you get through to issue only when you tick all the 101-3, 112 boxes. Thus, you need in your app:

    1. when it is “DNA”, a use

    2. When it is a method claim in an app directed to an electro-surgical instrument, a use that is other than a (forbidden by the EPC) method of surgery or therapy performed on the human or animal body

    3. When your invention is an algorithm, a use in a technical field.

    After that, the scope of protection you can get out of the EPO can cover all that the Statute allows, but no more.

    A computer program, as such, fails to make the 101 cut. A programmed computer survives 101 (Art 52) but may well fail to make the 103 cut (Art 56). Put in the app how the algorithm is the solution to an objective “technical” problem and your programmed computer will end up protected. But if your app reveals no solution to any real life “technical” problem (maybe only a travelling salesman mathematical problem) you will be unlikely to succeed, at the EPO.

    Is Benson the one about curing rubber? That’s technical. We can probably all agree, that Benson solved a technical problem, so his algorithm is a clever, patentable contribution to a field of technology. What Buckets has in mind is more borderline. Real cases in the field of “data processing” can go one way or the other, depending on the facts. But “a puzzle at the margin” is meat and drink to lawyers. SCOTUS will soon give us its vision, where the margin ought to lie.

    Meanwhile, it has been crystal clear for many years now, everywhere in the world (Japan, China, India, Korea, eastern Europe) what the drafter has to do, to get protection for a computer program in Europe. IBM knows. Will you ask somebody from IBM?

    I lack the time to read the Amicus Briefs. With KSR, I had hoped that SCOTUS might have some time to muse on EPO-PSA. With Bilski, I like to think that EPO jurisprudence has something to offer. Tell me, does anybody detect an echo of it, anywhere in any of the Bilski Briefs?

  72. Malcolm, in your example, the first and true inventor is actually Bob the transit guy, so he can file an interference and end up the owner of the patent (or in practice his employers will). Of course, most people would rather have teeth extracted without painkillers than file an interference, but that’s just a detail. Your example proves nothing.

  73. 6, I will concede the point on hedging. I also agree with Stern’s test and it has the beauty of being fully based in Supreme Court president and in the Constitution.

    We still, though, have to slay the dissection side show that is an unnecessary relic of Flook.

  74. With two business ideas in mind, I have registered my own small business, and started to look for angel investors to fund the business and get it off the ground quicker. But the current ruling on the business patents really drive me nuts because I am afraid that my ideas will be stolen and unprotected.

    Whatever reasons that support a ban on business patents, there is a fundamental hole in that reasoning that innovators will be discouraged as the infringement risk is by no means a forbidden cost. For small business owners, they have no resources to infringe the patents invented by larger companies. The opposite however is definitely true; small businesses will be not as protected as they once were at least for my case.

  75. Malcolm,

    You finally listened to me and responded, or attempted to respond, substantively. See, a little goading can work.

    HOWEVER, You have miles to go before you can sleep. Here are a few pointers:

    – Substantive does not mean volume. Try to say more by saying less. In other words, think through your position and only type intelligently. Rapid fire but empty typing impresses no one.

    – Analyze your thoughts before you commit to a position. You often come across as an a$$. Most times it is because I doubt that you care what you say and only care that you are saying something (see Jules guidance to 6 – it applies to you as well). Being contrarian is no way to go through life son.

    – lose the attitude. For whatever reason your anger about patents, especially in regards to computer-related patents, taints everything you say and no one takes you seriously. Hierarchy has been probably the biggest exception. Where he (she?) gets his patience, Lord only knows, but you should realize how much your snark works against what you try to say. Your comments are mostly mere fodder and buffoonery – There’s a reason I harp on this site as a Trainwreck – and you are the predominant part of it. You are making a start towards respectability – a small start mind you, but a start nonetheless. Keep at it. MaxDrei’s response to my challenges has been immensely better than yours. Use MaxDrei as inspiration – some of his postings are downright enjoyable for the thoughtfulness he is putting into them and I find myself actually caring what he has to say.

  76. Any invention capable of producing revenues for its inventor should be patentable or else the usage of it will be stolen thereby violating the inventors cival rights and fraud statues.We May never know what could have been if we dont provide a financial incentive to to invent.Those in opposition are usually involved in efforts to fraud inventors by various methods or dont want to pay anything.Ibelieve the bilski case may not represent a marketable invention therefor not deserving of a patent.

  77. TJ, these briefs comply with Rule 37 since they request that the *judgment* of the CAFC, in the Respondent’s (PTO) favor, be affirmed. They just don’t support the Fed Cir’s reasoning. Offering alternative grounds for affirming a judgment does not convert the position to one favoring the petitioner or neither party.

  78. “And there are non-computer uses that aren’t precluded. Other researchers are free to tinker with the algorithm in the way a mathemetician would; there’s no “mental infringement”. You can print the algorithm in a text book and sell it.”

    A mathematician who doesn’t work on computers? Seriously? I’d like to know what the “useful application” of the mathematician “tinkering” with the algorithm is. Not just theorizing, but an actual useful application that wouldn’t require a computer. My understanding is (correct me if I am mistaken) that in the context of not allowing patents on algorithms to pre-empt all useful applications of the algorithm, the term useful isn’t limited to the mere dictionary definition of “use”, but rather the same expectation we would have of any useful patent, which is that it can be used to accomplish some meaningful task. A tinkering mathematician doesn’t seem to be a useful application. In that respect, re-printing it in a book hardly qualifies either.

    I understand your grander point about Pat and his SVM algorithm, and I think there’s merit to it. As far as the “ought”, I don’t disagree that Pat deserves some protection. However, as a computer scientist (and I don’t think this makes my view more valid, it’s just where I’m coming from), I think the problem with most software patents is that they patent things which are entirely too obvious (and I don’t mean in the 103 sense). I can’t speak for other arts, but many software patents boil down to a list of features that any PHOSITA could have made simply from reading the list of features – that’s not inventive, its applicative. Many software patents, described merely as a list of their features, would be descriptive enough for a PHOSITA to figure out. If the whole idea behind the patent system is the quid pro quo of the public gaining knowledge, then why grant protection to an invention where the knowledge gained in return is superfluous?

  79. “No, I think your allusion to a world where skilled software programmers aren’t able to be feed their children because patents on software are curtailed is “a desperate appeal.””

    The point is clear to anyone not reading with a bizarre bias. Some people make their livelihood creating software, some of which merits ownership and added reward.

    Good evening, Mr Taggart.

  80. Hierarchy: “An “algorithm itself” is a pure mathematical abstraction. It’s a symoblic description that can exist apart from the physical world. On the other hand, the computer is real, and its the point where the algorithm becomes useful to people other than other mathematicians. Even if it’s just flipping bits, it’s a useful flipping of bits. And there are non-computer uses that aren’t precluded.”

    But those other “uses” are trivial. You just said so yourself.

    Can I patent “A brain, wherein said brain comprises new algorithm X”? If not, why not? After all, it doesn’t preclude putting the algorithm on a computer.

  81. Hierarchy: “You think the opinion that programmers who invent new and useful software should have the possibility of being compensated is a “desperate appeal”?”

    No, I think your allusion to a world where skilled software programmers aren’t able to be feed their children because patents on software are curtailed is “a desperate appeal.” There’s also more than a little bit of a sense of entitlement to the appeal, but I’ve grown used to that attitude from propenents of software patenting proponents who seem convinced that software patents are responsible for everything good that has happened to the American economy since 1980 or thereabouts.

    “in fact the PTO may have oversteered in response to the quality problem”

    In what regard?

    “If I could point out a bunch of “crappy” drug patents, would you agree to stop patenting all drugs?”

    Apples and oranges, for the reasons I outlined in my previous comment. I could draft and file several viable software applications tonight, each reciting novel and non-obvious claims, if I was so inclined. I would expect to receive patents on each, barring a welcome change in the application of existing laws. You won’t be able to do the same for a drug patent.

  82. “But plenty of start-ups will occur without software patents. In fact, a lot of them will occur that wouldn’t occur otherwise because crappy patents stood in their way.”

    Malcolm, all your arguments fall back on the “crappy patents” argument. If it’s not a crappy patent, potential start-up should not have a business plan centered on infringing an un-crappy patent. Let’s get rid of crappy patents.

    “The business that will be affected most by the Supremes’ decision is Bilski is the business of pure patenting, i.e., the business of creating pieces of paper with the potential to create a windfall for the owners of the paper. The reason software gets targeted is because (1) software claims are among the most poorly exaimined claims, with a culture built around an enterprise that appears to be immune from the considerations faced by other patent applicants; and (2) the “inventions” themselves, as claimed, typically require no effort on the part of the applicants other than to conceive of a series of routine “determinations” that lead to a bit of information being spat out, or possibly a “transaction” taking place. Because of the facile nature of the “technology” and cheap cost of filing, the patent office has been inundated with garbage, with much of it leaking out in the form of issued patents.”

    I completely agree that a lot of bogus patents issued, but I also have seen the PTO adjust and become much more savy at examining software apps, and in fact the PTO may have oversteered in response to the quality problem. Still, your point has nothing to do with the nature or usefulness of software, or whether it is the type of activity that we should encourage. If I could point out a bunch of “crappy” drug patents, would you agree to stop patenting all drugs?

    “It’s a fun sandbox to play in, if you’ve got a bit of spare change to play with. One problem is that real people who really transform actual physical objects (!!!!) and try to patent their new methods and compositions are forced to do so in a sandbox increasingly cluttered with vapid, abstract trash.”

    When my brand new shiny algorithm starts flipping bits, it’s changing a physical object, as sure as breaking atomic bonds transforms a physical object, even if you can’t see it.

    “This desperate appeal reminds me of earlier this year when some cable TV wanker pointed to some traders on the floor of the stock market and said that they were “ordinary Americans” we should all feel sorry for. As if.” You think the opinion that programmers who invent new and useful software should have the possibility of being compensated is a “desperate appeal”? Whatever.

  83. “Then isn’t Pat effectively attempting to patent all useful applications of that algorithm? No human would ever use Pat’s algorithm – people don’t sort efficiently using machine algorithms and vise versa. The only useful domain for Pat’s algorithm is in a computer. How is this fundamentally different from patenting the algorithm itself?”

    An “algorithm itself” is a pure mathematical abstraction. It’s a symoblic description that can exist apart from the physical world. On the other hand, the computer is real, and its the point where the algorithm becomes useful to people other than other mathematicians. Even if it’s just flipping bits, it’s a useful flipping of bits.

    And there are non-computer uses that aren’t precluded. Other researchers are free to tinker with the algorithm in the way a mathemetician would; there’s no “mental infringement”. You can print the algorithm in a text book and sell it.

    Anyway, it’s easy to confuse the “is” with the “ought”. I agree with your conclusion about the “is”, and the case you allude to has always bothered me, but my views in this blog thread are about the “ought”. As a society, do we or don’t we want to make available an incentive that will encourage some people to invent new algorithms and publish them? If an electrical engineer can get preclusive rights on a new type of memory cell, should his patent not cover all computers that use the memory cell? I don’t see why the algorithm should be treated differently.

    The whole preempt-all-uses notion is hard for me to understand, because I thought that was what a patent was supposed to do.

  84. Noise wrote, “In fact, in a delightful twist, the government is practically guaranteeing that Alappat will continue to be the Rule of Law (since Bilski doesn’t actually touch on computer software, and any pronouncement from the Supremes would be mere dicta).”

    Right, because courts routinely ignore Supreme Court dicta, like the concurring opinion in eBay?

  85. Hierarchy: “Some software developers make a nice chunk of change. That’s the market at work .. in theory it’s people getting compensated in proportion to the value they contribute. You take away the software patents, and you take away some of their worth. These aren’t basement hackers, these are people with pecuniary needs, they need food, clothes for their kids, housing.”

    Everytime the Supreme Court issues a decision that narrows patent rights, a kitten dies of starvation!!! Seriously, give me a break. This desperate appeal reminds me of earlier this year when some cable TV wanker pointed to some traders on the floor of the stock market and said that they were “ordinary Americans” we should all feel sorry for. As if.

    “You take away the patents _today_ (not in 1980) and a lot of start-ups never occur.”

    But plenty of start-ups will occur without software patents. In fact, a lot of them will occur that wouldn’t occur otherwise because crappy patents stood in their way.

    The business that will be affected most by the Supremes’ decision is Bilski is the business of pure patenting, i.e., the business of creating pieces of paper with the potential to create a windfall for the owners of the paper. The reason software gets targeted is because (1) software claims are among the most poorly exaimined claims, with a culture built around an enterprise that appears to be immune from the considerations faced by other patent applicants; and (2) the “inventions” themselves, as claimed, typically require no effort on the part of the applicants other than to conceive of a series of routine “determinations” that lead to a bit of information being spat out, or possibly a “transaction” taking place. Because of the facile nature of the “technology” and cheap cost of filing, the patent office has been inundated with garbage, with much of it leaking out in the form of issued patents.

    It’s a fun sandbox to play in, if you’ve got a bit of spare change to play with. One problem is that real people who really transform actual physical objects (!!!!) and try to patent their new methods and compositions are forced to do so in a sandbox increasingly cluttered with vapid, abstract trash.

  86. All, what is “non technical” about new encryption techniques? They clearly are useful. When briefs argue in favor of defining Section 101 subject matter as being “technical” or “technological” do they mean to include useful mathematical algorithms such as these?

    Circling back, what was the vice in the Benson algorithm? It essentially comprised a translation between BCD and binary.

    Morse was granted a patent on his code. The code was a translation between dots and dashes and the alphabet.

    Unless the Courts make clear the distinctions between these cases, they all seem to fall within the useful Arts, they are all technological, assuming useful Arts and technological are the same thing, and all should have been and should be granted patents regardless of the form of the claim.

  87. “Suppose Pat came up with a new sorting algorithm that for certain sets sorts in O(n) time.”

    Then isn’t Pat effectively attempting to patent all useful applications of that algorithm? No human would ever use Pat’s algorithm – people don’t sort efficiently using machine algorithms and vise versa. The only useful domain for Pat’s algorithm is in a computer. How is this fundamentally different from patenting the algorithm itself?

    At least with Pat’s SVM, the algorithm is limited to SVMs. If it has useful applications outside of SVMs, then it’s actually a patent on the a subset of the applications of the algorithm.

  88. MaxDrei, I will not assume that I fully understand anything about European patent law. However, I see no point in excluding software per se, and then granting a patent on software so long as it is claimed as part of a computer. The distinction is not one of substance, but of claim drafting. If there is a distinction of substance, please explain.

    For example, how would the EPO handle the claims in Benson? The claims were not to the BCD->binary algorithm per se, but as part of a computer. One claim even described the computer hardware involved and how to manipulate it.

  89. 6 We agree that Useful Art is limited grant of power to Congress. But, if something is useful, but did not exist in 1791, should the default rule be to exclude it or to include it as a Useful Art? I suggest the latter.

    As to “hedging.” I will grant you it is more like trading than smelting. But it gives no one a monopoly on the sale of articles regardless of invention, which is the vice excluded by the St. of Monopolies. And it is “useful,” which to me means it is more like a Useful Art than an “odious monopoly.”

    The judgment that it is one and not the other still seems rather ad hoc and not easily predictable. Circling back, if all we do is decide that machines and things physical, and their use, transformation and manipulation, are within the Useful Arts, aren’t we chasing our own tail? Isn’t this the MOT test? What of Stern’s argument then that MOT is not enough?

  90. Bucket, your “Touring Award” amused me. Presumably it is really “Turing” but maybe those in the know call it the “Touring Award” as a sort of “in joke”. It’s a “travel bursary”, right?

  91. Now comes the cop out. Such stuff is not my field. I don’t know enough to tell whether yours is a “trick” question. I suspect you know more than I do, and that now you are sitting on the razor edge of patentability in Europe.

    Question of my own: if I am right, then is it a totally useless razor edge, or a defensible one?

  92. Max: “What is “same end”? Is it a technical end or a non-technical end. Solving a technical problem faster is a technical effect that will help you establish non-obviousness under Art 56 EPC.”

    The end is getting input that is a vector of features, feeding to the SVM, and getting as output a category to which the vector belongs. Possibly applicable to any categorization problem.

    But there’s no need for a highbrow example. Suppose Pat came up with a new sorting algorithm that for certain sets sorts in O(n) time. The ‘end’ is sorting numbers represented in memory.

  93. RE anon. @1:32 …

    Awe, hit a sore spot? Sure there are some things that are hard to rev eng. Some things are impossible. The conclusion is still correct: copying today is a _lot_ easier, and most copying doesn’t technically require reverse engineering.

    It may be true that a patent holder might copy an Open Source idea. But that was a choice made by an individual to make that idea public and free. On the other hand, the patent holder might have employess who need to be paid and investors that needs to be paid back. It’s absurd to suggest that legal copying by a patent holder somehow makes it unfair that the patent holder own their creations.

    “except all that troubling Supreme Court precedent (Benson, Diehr, etc.), which caused many to believe for decades that software was unpatentable. ” … Benson: “it is said that the decision precludes a patent for any program servicing a computer. We do not so hold.” If it was a clear issue – then or now – we wouldn’t be here discussing it.

    “In view of your inability to concede one valid point”… vacuously true; since I only raised one point, how could you know whether I concede others?

    “you, sir, very likely have a vested interest in the continued patentability of software. Is this correct?” Hmm, does the Open Source community have a vested interest in the non-patentability of software? The fallacies from the OS folks never stop. 2500 years ago the Greeks knew that the validity of an argument was independent of the person who made it. Catch up sometime.

    “This correlation provides EVIDENCE that software patents are not beneficial. ” No. It is evidence that a software industry can start up and businesses can succeed and profit in the absence of patents. But we already know that fields that don’t have patents can do this. It begs the question of whether patents provide a net benefit to society today. Not only that, but software patents actually have been around for many years, even back to the 1980s, so the correlation itself is weak. In other words, it’s not quite correct to say that the software industry blossomed without patents.

    Banter aside, it’s not an academic issue. I work with real software developers. They get a paycheck. Part of their compensation comes from stipends for inventions. Some software developers make a nice chunk of change. That’s the market at work .. in theory it’s people getting compensated in proportion to the value they contribute. You take away the software patents, and you take away some of their worth. These aren’t basement hackers, these are people with pecuniary needs, they need food, clothes for their kids, housing. You take away the patents _today_ (not in 1980) and a lot of start-ups never occur.

    I won’t argue that there’s no “friction” cost that comes with the patent system, but that friction is better reduced by improving the system. I have great respect for Open Source and used GNU-CC and gnu emacs for years. But I don’t think Open Source developers or anyone else should be able to freely copy someone else’s original and useful idea.

  94. 6 oh so cleverlylol retorts at 1:33 PM above:

    “Hint: Alappat doesn’t make a hill of beans to the Supremes or me. MoT takes it to task, and hopefully the Supremes will do as I’ve just been advocating in this thread and the whole thing will be moot anyway. Like I’ve told you, I’ll have a 102b general purpose computer waiting for any that slip through the cracks.”

    Downright hilarious. C’mon 6, read again the government’s brief at pages 38 and 39. Doesn’t mean a hill of beans when your error is shoved in your face? – yeah, like anyone believes that.

    Here let me get the quote for you 6:

    “the machine-or-transformation definition may readily encompass most software claims because such claims could be said to concern the use of a machine (i.e., the computer itself ) or involve a transformation of matter (i.e., the writing and re-writing of data, represented by magnetic changes in the substrate of a hard disk or the altered energy state of transistors in a memory chip).”

    And

    “The Interim Instructions state that “computer implemented processes” are often disclosed as connected to a machine, i.e., a general purpose computer. Such a computer, “when programmed to perform the process steps” so that it performs the specific function contemplated by the process, “may be sufficiently ‘particular’ ” for purposes of the machine-or-transformation test. ; cf. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc) (“[A] general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”).”

    This is hardly “taking it to task”. This is full blown capitulation. In fact, in a delightful twist, the government is practically guaranteeing that Alappat will continue to be the Rule of Law (since Bilski doesn’t actually touch on computer software, and any pronouncement from the Supremes would be mere dicta). How often have I lectured you on what Alappat means? How often have you tried to deny it. Now here, in black and white in your own boss’s statement to the Supremes is what I’ve been telling you. It’s delicious to see my view espoused in your Boss’s brief.

    Watching you twist and squirm over this is surprisingly enjoyable. Come again what was your response? You’ll have a 102(b) general purpose machine waiting? – what the “f” has that got to do with anything? Software transforms the general machine into a particular machine – even your Boss says so. So you are waiting with a 102(b) for something that will no longer be there – the gp has been transformed. You’ll be waiting a long long time.

    Do you get it yet? Your battle with Alappat is over.

    As for the other Noisy Examiner, Malcolm has been reduced to a semblance of the Jame Gumb psychopath, referring to me as “It” and “the troll”. MM=BB. Humorous to contemplate that he is thinking himself clever while showing everyone just how disturbed he is.

    BTW, Hierarchy, did you notice that Malcolm evaded ANY substantive reply to your post?

    …thought so.

  95. Bucket writes: “Max I enjoyed your post. Here is my problem though with the EPC approach, and it’s a problem left unresolved by Bilski: are algorithms, divorced from any particular real-world application, yet claimed as implemented by a processor/computer/memory/hardware/etc patentable? The “technical problem” is that other algorithms that accomplish the same end are slower. Is that enough”

    Heller writes: “MaxDrei, allowing patents on software that operates on computers and not allowing patents on software per se, which must operate on computers, is sublime.”

    First Heller. The word “sublime” is a bit ambiguous, isn’t it? I suppose here, in context, it is supposed to mean “laughable”. I suppose Heller has no knowledge of the distinction between Art 52 (“101″ absolute) “technical character” and Art 56 (“103″ relative) “technical problem”. Am I right, Heller?

    Now Bucket. Good question. But I need more. What is “same end”? Is it a technical end or a non-technical end. Solving a technical problem faster is a technical effect that will help you establish non-obviousness under Art 56 EPC.

  96. “It is not “trade” per se,”

    Actually it is. But at least your mischaracterization of his article is getting less severe. Perchance later I will write you a summary hitting some high points you apparently skipped over. They really are a joy to repeat. And perhaps after having read such you will agree with me that there is substantial subject matter which you have choosen to ignore for the purpose of this discussion even though it is very relevant.

    “Which means the test actually does not answer the question.”

    No, the test does answer the question, it simply doesn’t answer it in one of the ennumerated ways, which Stern provided, and you recited that the court can look to deciding whether a given art is within the Useful Arts. That is, Stern gave a few examples of how the Court can go about making the “list” of things which are in and not in the Useful arts. His examples are not exhaustive.

    However, one way that he suggests a court can go about determining whether an art is within the useful arts which you neglected to bring up is looking back at the history of the art in question. From which art did the art in question spawn from? In hedging’s case, it unquestionably spawned from trading. That is, it is an offshoot of trading.

    And that method would only need be employed if, through some curious leap of logic, a court managed to determine that hedging isn’t encompassed within the term “trading” itself. You need to be aware that the term “trading” is also subject to more than the strict interpretation “buying and selling goods” etc. It is also amenable to a definition that encompasses all activities closely related to the actual buying and selling of goods and which directly lend themselves to such actions. Such as, e.g. negotiation, deal planning, logistics and etc. All are important, and useful, but none of which belong to the “Useful Arts” and all are squarely within trading.

    There is at least one other way a court can go about this business, and that is to use their brains. In so far as that is involved, hedging fails. Like I told you, 99% of cases like this can be decided with anyone with a head on their shoulders who has read any old books touching on the subjects of state without blinking an eye. “Useful Arts” as a term is, in effect, a “term of art” as we use the phrase today. And bilski’s method is not in the 1%.

    “The problem is that “hedging” is not clearly included or excluded from either list.”

    To anyone with any understanding of what the term “useful arts” is used to mean it is very clear. If you are not included in this class of people, I feel for you, I really do.

    Let me try to break this down for you in layman’s terms since you obviously have 0 historical perspective despite having a substantial amount of history laid out for you to read. If the typical practicioner within the art in question would go to a workbench (or directly analogous location) to perform the method then it is very likely to be a useful art. If they go to a stock exchange, a store, get on a telephone, or simply talk to people, etc. to perform the method then the method is very likely not within the useful arts. Of course, if there is some evidence as to why a suspect art would fall one way or another then a court can take it into consideration.

    “Now Stern’s position in this type of situation is to conclude that if it is not clearly akin to the historical Useful Arts, even though useful, it is beyond the power of Congress to authorize the grant of patents.”

    That is true.

    “But is this right? I am not so sure that we shouldn’t default in the other direction: if it was not among the classes clearly excluded, and it is useful (and not a law of nature, etc.) it should be patentable.”

    Yes it is right because the constitutional clause is an enabling one, and not one that was specifically provided to exclude things. That is, the exclusionary content of the provision is not an “exclusion by list of things not included” it is an on the side exclusion, in other words, all things are excluded which are not specifically provided for.

    For example, if I say:

    You may have a cookie.

    That means you have permission to have a cookie. It doesn’t mean that you don’t also have permission to have some cake, but I haven’t spoken to that, so it is excluded by lack of inclusion. You do not have permission to have cake, you simply have the lack of permission or denial of permission. You therefore may not have cake without risking the attention of the authority, your mother.

    If I say:

    You may have a cookie, but not any cake.

    That is an exclusion by listing of things specifically not included.

    In the first situation however, you default to not including cake in the list of things permitted. Unless you want a spanking when your mother finds out you ate all the cake. To pretty much everyone that is a clear exclusion.

    Seriously, how did you not learn these principles when you were 8? The rest of us did.

  97. Max: “…EPC, which recognises the patentability of new, non-obvious and enabled technology but not of non-technical subject matter, like a pure algorithm. In Europe a patentable “invention” is the non-obvious technical solution to an objective technical problem. ”

    Max I enjoyed your post. Here is my problem though with the EPC approach, and it’s a problem left unresolved by Bilski: are algorithms, divorced from any particular real-world application, yet claimed as implemented by a processor/computer/memory/hardware/etc patentable? The “technical problem” is that other algorithms that accomplish the same end are slower. Is that enough?

    I’ve worked with a number of researchers who spend their days working on general computer science problems of this nature. Just as an example, think about a faster Support Vector Machine, which is a kind of AI learning algorithm. Suppose Pat invents a teriffic SVM that is an order of magnitude faster, inherently noise tolerant (unlike any other SVM), and useful in an unlimited number applications. Everyone in Pat’s field agress the algorithm is brilliant, innovative, and he wins the Touring Award that year. Now the Supreme Court comes along and tells Pat he can’t “own” his creation, that it’s for all the public to use without paying Pat a penny (though it’s the product of years of dogged investigation and trial and error). Why?

    Forget the philosophical gymnastics of the Constution, 101, the byzantine interpretations of 101. What is it exactly about the nature of Pat’s work that makes him less entitled to profit from it than the electrical engineer who built the computer that runs Pat’s SVM (which of course would be much less useful without algorithms running it)? Is Pat’s work not beneficial enough? Is it somehow preventing others from using what they would never have had to begin with? Is it foreclosing research? If the claims require that the SVM run on a computer, then any researcher can grab a pad of paper and start tinkering (and if research is an issue, then create a fair use exception like in copyright land).

  98. >>The docket is heavy with business cases. One >>asks whether a way of hedging financial risk >>can be patented. Patents should be limited to >>more physical creations.

    The New York Times take on Bilski.

  99. Question: who did the least to promote progress in Brickville?

    1. Bob, who merely posed a “what if?”.

    2. Brickville for taxing its residents to run a public transit system that hires people like Bob.

  100. TJ, the Bilski docket is here:
    link to origin.www.supremecourtus.gov

    The Sachs & Brownstone brief appears to have been timely filed about 2 months ago.

    I haven’t read the Adamas brief, and it’s not reflected on the docket (yet?). If you’re right, it only hurts the credibility of the brief to file it with a dark green cover and have the people reading it discover that it doesn’t actually support the party it purports to. I don’t think the Clerk’s office reads briefs for substance to look for this sort of thing, but I could be wrong.

  101. “The Constitution creates a real limit on patentable subject matter – i.e., the subject matter of the patent must be within the ‘useful Arts.’ Economic evidence indicates that business method patents (especially internet related business methods) are harmful.”

    The juxtaposition of the two sentences suggests illogic that Professors Menell and Meurer do not indulge. Instead, the professors separately argue the two propositions.

  102. “Consider one application for conducting such measurements…. where it’s only useful if you want to have airline crew selection based, in part, on whether the crew will get along – AKA US Air/Hudson River, or FIGHT – rather than doing their job in an emergency (or not fight when critical and necessary, AKA the Tenerife 747v 747 disaster).”

    I think I’d argue long-felt need:
    link to mirror.co.uk

  103. “Good thing for international businessmen to know ? Yea, no doubt.”

    Lots of abstract concepts are “good to know.” That does not mean they are patentable.

    If there was ever an abstract concept, “emotional distance” between human beings is certainly one. Methods for assigning numbers to various “measurements” or “estimates” of the abstraction does not make it any less abstract. It merely obscures the issue.

    “Consider one application for conducting such measurements…. where it’s only useful if you want to have airline crew selection based, in part, on whether the crew will get along – AKA US Air/Hudson River, or FIGHT – rather than doing their job in an emergency (or not fight when critical and necessary, AKA the Tenerife 747v 747 disaster).”

    LOL. Yes, we must allow people to patent crap like this or else planes will fall from the sky.

  104. “Question: who did the least to promote progress in Brickville?”

    The patent Examiner who allowed claims to an obvious invention. The patent is also invalid for incorrect inventorship.

  105. 6, regarding Stern’s argument, in substance, it is this:

    “Useful Arts” is a limit on Section 101 independent of MOT. Useful Arts is as understood at or shortly after 1791. Useful Arts cannot include “trade” as that was banned by the St. of Monopolies and a trade patent on tea was a spark for the Revolution. It cannot include the Liberal, Artistic or Martial Arts, as Useful Arts were understood as being different than these.

    He then suggested the courts develop a list of patents that were actually granted and compare these to that which we know the Framers intended to exclude. Against this framework, one can judge whether the asserted invention is more like the patents actually granted or more like the subject matter well understood at the time not to be Useful Arts.

    Now, I hope you will agree that this is Stern’s argument and I agree with it in substance. The problem is that “hedging” is not clearly included or excluded from either list. It is not “trade” per se, nor is it among the other excluded subject matter. Neither is it akin to patents granted at that time. Which means the test actually does not answer the question.

    Now Stern’s position in this type of situation is to conclude that if it is not clearly akin to the historical Useful Arts, even though useful, it is beyond the power of Congress to authorize the grant of patents.

    But is this right? I am not so sure that we shouldn’t default in the other direction: if it was not among the classes clearly excluded, and it is useful (and not a law of nature, etc.) it should be patentable.

  106. US 6029975
    US 6394453

    Each directed to methods of “measuring emotional distance” between human individuals. Put together in a game format. Probably OK with Bilski, might be out the door with many other briefs. Invented in the field of the psychological sciences. Good thing for international businessmen to know ? Yea, no doubt.

    Is it directed to the “Useful Arts” ???

    Consider one application for conducting such measurements…. where it’s only useful if you want to have airline crew selection based, in part, on whether the crew will get along – AKA US Air/Hudson River, or FIGHT – rather than doing their job in an emergency (or not fight when critical and necessary, AKA the Tenerife 747v 747 disaster).

    An instructive, well reasoned, but unpublished, BOPAI decision in the file history of the first case to issue.

    Most of the Bilski briefs reflect a fundamental starting point of “wouldn’t our business be easier if we didn’t have to put up with such patents” rather than any legitimate constitutionally based rational argument that such subject matter would have been prohibited by the Founding Fathers….

  107. Don’t let the 6’s and MM-trollbots get you down. They are silly examiners who seem to enjoy to pull the chain of attorneys and inventors.

  108. >> I imagine Max has never had a client come to >>him and say, “If you get me a patent on this >>idea, my angel investor will fork over $5 >>million, and we’re in business”, or “if we get >>the patent, MegaCorp will buy us for $40 >>million, just to get our patents”. Has Max had >>a “real” client come to him and say “those >>SOBs are copying my idea and it’s killing my >>business… what about that patent we got last >>year?”

    Nor have they worked at a large corporation where your manager hands you a product or URL to software and says figure out if they have their product covered by patents. Guess what happens if they don’t? They become a commodity supplier at best.

  109. Your review of the FFII amicus letter is a bit sloppy.

    “have been considered an were rejected”

    The argument can be found in II:
    “The Machine-or-Transformation test [] provides a means to an end: A clear limit to patentable
    subject-matter in accordance with case law, which
    consistently rejects the patentability of abstract ideas. …it is necessary to apply patentability standards to the claimed object rather than to the patent
    claim as a whole”

  110. Consider the portside city of Brickville looking to improve its bus system. The buses Brickville in tend to be more or less on time, although individual buses are occasionally up to ten minutes late at a given stop. What is needed is a way to inform would-be passengers where the bus actually is.

    Bob the Transit Guy decides that the way to do this is to take GPS information (the buses already have GPS) and send news about the buses location to waiting riders (Bob read about this idea on the Internet). Bob hires Doug the Software Genius to create an application that local bus riders can install on one of their personal hand-held computing devices that will communicate the info to riders.

    Doug says sure but he informs Bob that he will be filing a patent application to protect his software and the city will have to take a license. Bob laughs until he passes out and a week later hires Mike to do the job, and Mike soon (two months) creates a wonderful application that is quickly adopted and loved by Brickville’s citizens. Meanwhile, Doug filed his software patent application the day after speaking with Bob.

    Two years later, Doug’s patent issues and he sues the city for infringing his patent which issued with Bearegard claims covering just about any software using GPS information and a personal hand-held computing devices for communicating bus location information and arrival times, wherein said bus system is in a portside city.

    Question: who did the least to promote progress in Brickville?

  111. MaxDrei, allowing patents on software that operates on computers and not allowing patents on software per se, which must operate on computers, is sublime.

  112. “6, the so-called “odious” patents banned by the St. of Monopolies were monopolies on trade in articles regardless of invention.”

    I’m aware, and so what? It really doesn’t matter one bit if you came up with a new way of selling something to me, or the founders. If the East India company invented trading Tea to the colonies do you think that would make them any less outraged? Traders are simply not engaging in the useful arts what so ever. We have as much established from citations in the brief. And hopefully from your own knowledge of the world at that time. It simply amazes me how little historical perspective some of you attorneys have.

    “which the inventor discovered, ”

    If they “discovered” it Ned then that means someone else was doing it and they watched them do it and thus “stole” the idea from the person doing it first. I think you mean that they simply thought it up, not “discovered” it.

    But in any case, no these aren’t patents strictly on things directly analogous to the odious monopolies. Never the less, they are patents directed towards arts which are not the useful arts. And no “discovery” is ever involved what so ever.

    “Monopolies are not involved.”

    Perhaps since Ebay you’re right, but monopoly rents are certainly involved. And does it really matter if you have a monopoly if you’re simply sucking in a monopoly rent (without even providing the product or service) in its stead?

    It is still useful to consider the monopoly economic model even if we are discussing the monopoly rent instead.

    “As delineated in Stern’s brief, the Useful Arts comprise things useful as opposed to the Liberal, Artistic and Martial. ”

    No, as more clearly delineated in Stern’s breif, if you bother to read it, the Useful Arts comprise a subset of things useful. I’m trying hard to resist thinking of you just being purposefully obtuse. If you have read the brief, you need to stop trying to read bullsht into his brief when you know good and well what it says. Just because you believe bullsht doesn’t mean you have to force your asinine, on purpose, misunderstanding or misrepresentation on his brief as well. Feel free to malign your own good name, but spare his at least.

    “No if we grant this, ”

    Now if we grant bullsht, then bullsht follows. You’re right. That’s why I don’t grant bullsht in the first instance. And when you can cut it out as well, you’ll be on the path to understanding the patent lawls and how the supremes will be very likely to view them. Till then, you’re just floundering around in the dark under your own propagandized warped world view.

    “Hint: Alappat.

    …thought so.”

    Hint: Alappat doesn’t make a hill of beans to the Supremes or me. MoT takes it to task, and hopefully the Supremes will do as I’ve just been advocating in this thread and the whole thing will be moot anyway. Like I’ve told you, I’ll have a 102b general purpose computer waiting for any that slip through the cracks.

  113. Ah but HierarchyOfPontificationBuckets, it is you who have presented the fallacious arguments. Take, for example, this ad hominem:

    “Looked over the Red Hat brief and wonder why such smart folks lose their reasoning ability when discussing software patents.”

    Lost their reasoning ability indeed! Where did my reasoning ability go?

    Also, Red Hat’s argument that the software industry was fine without software patents is not fallacious. This correlation provides EVIDENCE that software patents are not beneficial. It would be fallacious to say that the correlation in fact mandates as true that software patents have no beneficial effect on the industry. THAT would be the fallacy of correlation. However, it is fair to say that this correlation provides evidence that software patents have no beneficial effect.

    Your rebuttal to this argument – that reverse engineering is easy now, is not persuasive. Try reverse engineering DirectX or any of these newfangled DRM schemes that often take months, sometimes years to crack. Copying software design can be easy yes, but to the extent that it is easy, it was likely also very easy to design, and granting of a monopoly of 20 years for some minor UI tweak, or more notoriously – something as simple as one-click ordering, seems a bit excessive, yet these are the sorts of things that pass through the office.

    Also, while it is true that Open Source developers often copy ideas directly from proprietary software, the reverse is also true. It’s a revolving door.

    “How would Visicalc and the other early losers – which Red Hat ignores – have faired with a patents on key spreadsheet concepts? Would they have better advanced their art? ”

    I submit that they would likely have not advanced the art much, and more likely would have sat on their laurels for 20 years given that nobody would be permitted to enter the market as a competitor because of their patents! Perhaps they could have even patented every incremental improvement to their product thus insuring a perpetual monopoly in the spreadsheet software market, which could only be contested by another entrenched incumbent with a massive software patent arsenal.

    “If there is a policy issue as to whether computer software/algorithms do or don’t benefit the public vis-a-vis the software industry and possible constraint on open-source deveopment, then that is an issue for CONGRESS, not the courts.”

    Agreed, except it is well known that the courts are often persuaded by these policy arguments, whether they say so or not, so why not make them? Proponents of software patents are making policy-related arguments as well.

    “Given the usefulness and technical nature of software, how anyone can suggest that s/ware (or computer-implemented algorithms) should be excluded under 101 is mind boggling.”

    Gee, except all that troubling Supreme Court precedent (Benson, Diehr, etc.), which caused many to believe for decades that software was unpatentable. It doesn’t boggle my mind that someone would argue, as a legal matter, against the patentability of software. I don’t see why it boggles yours.

    In view of your inability to concede one valid point to the opponents of your position, I submit that you, sir, very likely have a vested interest in the continued patentability of software. Is this correct?

    Also, the update to include the Red Hat and FFII briefs is duly noted. Thanks.

  114. Malcom Mooney, actually, it does depend on the business type. A business in sales, for example, does not need patents. However, a business in a new product does.

    I exist in Silicon Valley where the value of patents to new businesses is well understood.

  115. John Nagle: read ADAMAS PHARMACEUTICALS brief, Section III. It gives a good summary of the “dissection” problem and how it relates to Flook.

  116. “you may be labeled a TROLL.”

    It’s cute that the troll worries about other commenters, but nearly all of those other commenters lack the troll’s defining characteristics. Someday the troll will figure out what those characteristics are, perhaps by reading one of the many earlier comments in which those characteristics were explained to the troll in a gentle yet forthright manner.

  117. Dear Ned and Bucket, my frame of reference is the EPC, which recognises the patentability of new, non-obvious and enabled technology but not of non-technical subject matter, like a pure algorithm. In Europe a patentable “invention” is the non-obvious technical solution to an objective technical problem. Thus, examination of subject matter in, say, the computer gaming arts threads a logical line between technical and non-technical subject matter.

    This boundary keeps most people in the interested circles moderately happy, both the free software brigade and the “software should be patentable” crowd. See the pleading for retention of the status quo in most of the 100+ Amicus Briefs in the current President’s referral to the EBA. Why don’t you ask the President about it when she comes to the AIPLA AGM in DC later this month.

    As her about the German Autobahn system. The Minister of Transport tells the German motor industry he will never introduce blanket speed limits. The next day he addresses the Green Party and says “What are you complaining about. Well over 40% of the entire Autobahn network is subject to stringent speed limits”. He has his cake, and he eats it too.

    Ask her about the cost of asserting patent rights in Germany. Peanuts, so any little monkey can do it. They’re all going at it like rabbits in Germany, litigating, that is. Don’t believe me? Just ask somebody else then.

    I agree it’s more difficult to operate the “technical” test under English common law than in the civil law (no Binding Precedent) environment of mainland Europe. but SCOTUS is not one to shrink away from intellectual difficulty, is it?

    As to my real inventor clients, I can’t remember one who did not suffer from wishful jam tomorrow thinking. That’s the basic, isn’t it, if you are going to be an inventor Applicant?

    As to corporate clients, well of course each needs a bigger pile of posturing patents than any of his competitors and we patent attorneys are here to help them acquire their piles.

  118. “Given the usefulness and technical nature of software”

    Software is “technical”? If so, the “technical” aspects of software rarely appear in the typical Beauregard claim which is about as “technical” as organizing a sock drawer so one’s “favorite” socks are on top. BFD.

  119. (The previous “id” reference in the above brief is to DIAMOND v. DIEHR, 450 U.S. 175 (1981). That’s about a computer-controlled process for curing rubber, and doesn’t reference any form of computerized search either.)

  120. At page 34 of the Government brief (“/media/docs/2009/09/08-964bsunitedstates.pdf”), we have “For instance, a step that involves a machine will not suffice to bring an otherwise ineligible process within the ambit of section 101 if that step is merely insignificant extra-solution activity – i.e. activity that is not central to the purpose of the method, such as the step of downloading search results on a computer in the context of a method for evaluating and ranking search results. See id. at 191-192, Flook, 437 US at 590.”

    What does Flook have to do with search results? Flook, decided in 1978, is about a method of updating alarm limits for a chemical process. There’s no reference to any form of computerized searching in the Flook decision. Did the Solicitor General get the cite wrong, or what?

  121. Hierarchy,

    Your post at 11:38 AM is well written, articulate, and substantive. Well Done.

    This also guarantees that you will not receive a substantive reply from Malcolm or 6.

    However, you may be labeled a TROLL.

    6,

    On another thread you were labeling the Kappos Brief as a thing of poetry and reveling in its beauty (somewhere in the page 20 area). What are your thoughts on the beauty of pages 38-39? Hint: Alappat.

    …thought so.

  122. MaxDrie wrote: “Even if Gerald meant to say “software innovation” he still doesn’t convince this patent professional. Where is the proof that patent monopolies foster software innovation, like they do drug development? I for one would assert that they inhibit software innovation.”

    MaxDrei, every up and coming business has to invest in patents. This is just as much true for software as it is for the new light bulb. Real investors look to whether their investments are protected.

    Now, we have heard the contrary argument from others who have large established businesses and who are used to copying the products of others without compensation, particularly up and comers who whittle at their dominant position. But what is this but an argument in FAVOR of monopoly, not against.

    Think of what you are saying, MaxDrei. Your very argument favors the creation and maintenance of real monopolies built on theft.

  123. MaxDrei: “I imagine AI has never actually encountered the chilling effect that all these junk business method patents have on “real” investment in new jobs. I guess he has never had to sign off on an infringement clearance opinion for a real client.”

    I imagine Max has never had a client come to him and say, “If you get me a patent on this idea, my angel investor will fork over $5 million, and we’re in business”, or “if we get the patent, MegaCorp will buy us for $40 million, just to get our patents”. Has Max had a “real” client come to him and say “those SOBs are copying my idea and it’s killing my business… what about that patent we got last year?”

    If this is a policy discussion, let’s distinguish between anecdotal and systemic facts. Also, it shouldn’t be a question of whether patents affect business decisions, it should be a question of the net benefit/detriment to progress. As someone else mentioned, the issue of “junk patents” is not the same as the issue of “whether patents on new, unobvious, and useful software inventions should be granted”.

  124. Gerald said, “More specifically, software or a business method (process) may be useful, but without a tangible product for others to see and appreciate, it’s not patentable.

    The Bilski claim failed patentability because the claim openly allowed a user to omit a computer or other machine, and even pen and paper, for the whole of the process and thereby excluded a tangible product for others to see and appreciate.”

    Gerals, this is somewhat of a non sequitur in two ways. One, most processes are conducted behind closed doors and are not, in the way you speak, tangible for all to see and appreciate. On the other hand, the patent document fully discloses the method for all in a way that no secret process is ever discoverable. Without the quid-pro-quo of exclusive rights for a limited time, this will, of course, end. How can that benefit society?

  125. MaxDrei: “I imagine AI has never actually encountered the chilling effect that all these junk business method patents have on “real” investment in new jobs. I guess he has never had to sign off on an infringement clearance opinion for a real client.”

    Is it the presence of patents or the presence of “junk” patents that concerns you, MaxDrei? “Junk” to me implies that the patents cover old or obvious methods. If that is what you mean, I agree with you. If you mean that the presence of the patents themselves is the problem, then I disagree. Many, if not most, businesses, not just banks and the like, have the patent thicket problem. This cannot be a serious objection to business method or software patents, as it would amount to an objection on the whole concept of patents.

  126. I would have described the main point of our brief differently. It focuses almost exclusively on the use of non-patent mechanisms to reward or stimulate R&D in the area of medical innovations, making the point that patents are not the only way, and if patents are not available for a particular area, policy makers have plenty of other options. Our brief is available here: link to keionline.org

  127. “Also, briefs from Red Hat, SFLC, etc. provide a valuable counterpoint to all the self-interested software patent cheerleading that pervades this site. For the sake of perceived objectivity at least one of them should be listed, in my humble opinion.”

    Looked over the Red Hat brief and wonder why such smart folks lose their reasoning ability when discussing software patents. For instance, they argue that there is no need for software patents because the software industry did fine without them (in particular the 1980s are referred to).

    Early success in the software field resulted from a number of factors. Tools for reverse engineering were poor or unavailable. Much of the effort in producing a program was not in the design but in the actual coding; the cost of producing an imitation was still high. Tools like Visual Studio, various Java IDEs, Rational Rose, etc etc, were not available in the 1980s. So the cost to imitate was much higher, and being first to market was a greater advantage than it is today. Basically, copying is easier today.

    Another thing to consider is that nowadays the stakes are higher. A company like Microsoft, for example, might spend several hundred million dollars just studying user behavior, testing and developing based on study results and insight, resulting in product that improves user efficiency. This kind of large-scale invesment was just not happening in the early days. Would a company like Microsoft invest in innovation if they knew that the Open Source community would copy their ideas in short order? Do we want companies to make capital investment in software innovation?

    Finally, there is a huge fallacy behind the argument that “the industry did well without patents” argument. To evaluate the impact of a factor on an industry, we shouldn’t look at whether the industry was doing well or not without the factor. That is the fallacy of correlation. Because software industry was successful in parallel with minimal software patents tells us little about the relation between the two, either or – even more so – today. It could be the case that the software industry would have been more successful if solid software patents had been known to be available. The question can only be answered by detailed cause-effect analysis. If we removed patent protection for chemical compounds, companies would still perform research and market and sell drugs. If we had nothing to compare to, we could say “look, companies are making drugs for profit, they don’t need patents”, but we would be wrong to say that the public wouldn’t be better off with patents.

    Also, this may not be a huge factor, but consider that the scope of protection for copyright protection in the 1980s was unclear, with many cases verging on allowing coverage of function as opposed to expression. Some vendors may have taken this into account to either avoid imitation or to forego patent protection as unecessary.

    The Red Hat brief mentions the success of early products like Excel, but doesn’t mention that Excel was a knock-off of Visicalc, Lotus 1-2-3, and others. How would Visicalc and the other early losers – which Red Hat ignores – have faired with a patents on key spreadsheet concepts? Would they have better advanced their art? Would investors have put more money in the industry early on if a flaw in the business model was fixed (the flaw being threat of imitation)?

    If there is a policy issue as to whether computer software/algorithms do or don’t benefit the public vis-a-vis the software industry and possible constraint on open-source deveopment, then that is an issue for CONGRESS, not the courts. The courts should only be asking if software is the type of thing that the patent laws were historically intended to encourage. Given the usefulness and technical nature of software, how anyone can suggest that s/ware (or computer-implemented algorithms) should be excluded under 101 is mind boggling.

  128. Looking at the arguments made by the Triumvirate (Sarnoff, AARP, AMA), I wonder what they think of their devastating loss in Prometheus…

  129. “The right interpretation of the statute requires that the invention “reside in the application, rather than in a discovery preceding or employed by it.”

    Unless I am reading this incorrectly, the test from, no surprise, Mr. Sarnoff and “law professors” appears to favor wiping out improvement patents all together.

    Doesn’t seem to make sense. But then, that’s no surprise either.

  130. It’s always easy to see where you stand on this issue Dennis. I know you disagree, but the Red Hat brief was definitely noteworthy as it was highly publicized elsewhere e.g. link to groklaw.net

    Also, briefs from Red Hat, SFLC, etc. provide a valuable counterpoint to all the self-interested software patent cheerleading that pervades this site. For the sake of perceived objectivity at least one of them should be listed, in my humble opinion.

  131. Gerald writes “Software is too important to financial transactions and valuable to society to dismiss patent protection of software on a wholesale level.”

    What sort of an “argument” is that then? Fresh air, water, electricity and a strong code of ethics are even more “valuable to society”. Wait a minute. Is there anybody out there who thinks that improvements in codes of ethics should be patentable? Since when was “value to society” a reason for the Government to issue a 20 year monopoly right?

    In fact, Gerald, does your argument not work against you? Society will benefit if “value to society” is disseminated, licence fee-free, as far and widely as possible, no? Given the tendency of patent owners to patent stuff in order to make sure the invention is never used, best make sure such valuable stuff can never be patented, no?

    Even if Gerald meant to say “software innovation” he still doesn’t convince this patent professional. Where is the proof that patent monopolies foster software innovation, like they do drug development? I for one would assert that they inhibit software innovation.

  132. To qualify for patent protection, the invention must be a legal process, machine or product that “promote[s] the Progress of Science and useful Arts.” To rephrase the quid pro quo decision of Simpson (US 1964), the application must disclose the invention in a way so that someone other than the inventor can make and use the invention in a way that society can tangibly see the invention’s usefulness.

    More specifically, software or a business method (process) may be useful, but without a tangible product for others to see and appreciate, it’s not patentable.

    The Bilski claim failed patentability because the claim openly allowed a user to omit a computer or other machine, and even pen and paper, for the whole of the process and thereby excluded a tangible product for others to see and appreciate.

    There is not a dispute that an algorithm is not patentable, but the Supreme Court did not reverse State Street. In the software world, the program must do more than simply take input and compute an output. My thought is the Supreme Court will require that the software process have a tangible connection to the real world beyond the mere numbers and characters of the output. I think State Street met this requirement in having bank accounts as the tangible connection to the software. Software is too important to financial transactions and valuable to society to dismiss patent protection of software on a wholesale level.

  133. Fantastic thread to illustrate that age old Golden Rule “Do as you would be done by”. Otherwise put: “The Rules that are for all the others bind me too”. Isn’t this the fundamental distinction between civilisation and anarchy?

    Actual Inventor imagines each entrepreneur unable to create hundreds (no, thousands) of new jobs simply because he can’t get his new business method patented. It hasn’t occurred to him that real investors seriously contemplating taking on more labour have to take account of the hundreds (no, thousands) of junk patents on “business methods” spewed out by the USPTO and either “bet the farm” or drop their investment idea.

    I imagine AI has never actually encountered the chilling effect that all these junk business method patents have on “real” investment in new jobs. I guess he has never had to sign off on an infringement clearance opinion for a real client.

  134. Well it looks like the folks at ADAMAS PHARMACEUTICALS have been reading my posts in the last few weeks. They repeat virtually every argument I have advanced concerning Mayo, Metabolite, Flook and Benson, including the multi-party infringement issue. Well done! Hope the Supreme read it and understand.

  135. 6, the so-called “odious” patents banned by the St. of Monopolies were monopolies on trade in articles regardless of invention. You seem to think, and I have no idea how you think this, that granting a patent to a new invention will give that patentee a monopoly on trade equivalent in some fashion to the “odious” monopolies. All a patent grants one is the right to exclude others from practicing the invention which the inventor discovered, brought to the world, described in his specification, and for which description he is granted, for a limited time, an exclusive right to the invention.

    Monopolies are not involved.

    What I believe is that the Framers intended to ban patents on trade per se (the selling of good regardless of invention), and allow patents on inventions and discoveries that advanced Science and the Useful Arts (per the constitutional grant of power to Congress). As delineated in Stern’s brief, the Useful Arts comprise things useful as opposed to the Liberal, Artistic and Martial.

    No if we grant this, the only real question is whether the Bilski method of hedging is a “useful art;” a Liberal, Artistic or a Martial Art; or is a trade in articles regardless of invention banned by the St. of Monopolies. Clearly it is not a Liberal, Artistic or Martial Art. Equally clear, it is not a trade in articles regardless of invention. The method has utility. It would seem that it is patent eligible subject matter under the very test advanced by Stern, but ignored when he simply declared it patent ineligible.

  136. MM Wrote: “Does AI not recall that it was so-called “financial innovation” which spawned these crises in the first place? ”

    Your inference that business method patents caused the financial crisis is wrong and patently dishonest. And I wouldn’t waste time bringing it up, you being MM and all, except I also noticed at least one amici for the Governments position is also guilty of the same dishonesty. And when do you call a few individuals stealing or cheating as being innovative? I guess thats your way of taking a backhanded swipe at capitalism, as if socialism and communism would be superior.

    I also find it sweetly ironic that the PTO filed the Bilski case to stop business methods in lieu of inventing new business methods that would have allowed it to meet the needs of the information age.

    Now ten years later we have advanced even further to the quantum age and the PTO management is still stuck in the early 20th century industrial age with its dichotomous social technical approach to managing and running a complex organization.

    But then again so is most of our Government. And Malcolm wants to turn everything over everything over to Dear Leader? Yeah that will save us!

  137. nerd burglar wrote: “”In fact, I see a great benefit to having business method patents that extend to free markets”

    LOL, what an oxymoron.”

    Actually no oxymoron exist, since history demonstrates that patents do offer benefits for a free market system. Instead, the cognitive dissonance you are experiencing is being brought about by what is sometimes referred to as an innocuous analogy or Innoculation loop. The metaphor being derived from the practice of being injected by the flu virus to prevent the flu virus.

  138. “It fact, I see a great benefit to having business method patents that extend to free markets”

    LOL, what an oxymoron.

    I also like when he disparages monopolists for not promoting technological progress, then suggests that the solution is to give him a monopoly so that he can promote technological progress.

  139. President Obama should have a press conference and announce that:

    Any American that invents a series of successive steps, that when applied solved the global financial crisis would win a 20 year patent on the invention!

    Now the caveat would be that no one ever in the history of the world could have ever disclosed the same exact invention, and that it have to also be non obvious to try. And the exact steps have to be written out and explained in detail so that a person with ordinary skill in the art, could understand and perform the steps. And one last condition. After the 20 year patent period ends, the invention will then be free for all to use.

    So, providing someone could actually do it, would it be worth it to the United States to grant that patent?

  140. MM Wrote:

    “The underlying premise of this comment appears to be that the solution to the “global economic crisis” and/or “healthcare crisis” will require the invention of new “business methods” which requires granting more patents to “entrepeneurs”. From previous experience we can be certain that Acual Inventor is not going to provide us with a single example of his/her own novel contributions to this area that would help solve any of these crises.”

    You must not be a very good patent attorney because every “Actual inventor” knows that you must keep your invention a secret until you have a patent on it. To disclose any invention here before filing for a patent, would be to risk losing the rights to the invention.

    And if I did invent a series of successive steps that when applied produced a certain result of solving the global economic crisis or providing affordable health care to all I would not waste time discussing it with you on this blog.

    I would immediately build a business around that patent and start hiring hundreds, maybe even thousands of people to work in what would be a fast growing service business. As a result more people would have jobs and health care. And to meet the needs of my growing business, other entrepreneurs would start their own businesses as well, thus hiring more people that would have more money to spend and America, indeed the world would begin a new era of prosperity. God, you gotta love capitalism and the free market system! :-)

    Oh, and I might point out that after all that ducking and dodging you still failed to answer Ned’s brilliant question. Here, I will repost it.

    “”I still cannot understand, so please help me, why it is bad to give the inventor of an new business method a patent and it is good instead to allow other to copy his method?”

    :: MM Silenced::

  141. @James Daily – interesting points. However, it begs the question to point out that the phrase is taken from the Constitution, as that does not provide it with any meaning. Arguing that patents should be limited to the ‘useful arts’ is a tautology and the center-piece of a circular argument as indicated.

  142. I only took high school french, how do you expect me to read that?

    Even if they were issued in France briefly that merely supports the dominant side, that of the gov. It’s like saying, for awhile some adventurous but stupd people tried it but then quickly corrected themselves before they got the guillotine. But then they got the guillotine later anyway.

    link to en.wikipedia.org

    Time periods match up exactly.

    There might not be any better evidence that business method patents are, and should remain strictly, the domain of the soon to be beheaded.

    Man, read this part:

    ““There is no more Vendée. It died with its wives and its children by our free sabres. I have just buried it in the woods and the swamps of Savenay. According to the orders that you gave me, I crushed the children under the feet of the horses, massacred the women who, at least for these, will not give birth to any more brigands. I do not have a prisoner to reproach me. I have exterminated all. The roads are sown with corpses. At Savenay, brigands are arriving all the time claiming to surrender, and we are shooting them non-stop… Mercy is not a revolutionary sentiment.”[56][57]”

    Whew, that’s some sht. It’d be like having a revolution here and someone going to my hometown and just slaughtering everyone, man, woman or child.

    As best I can piece together it appears that the villagers were “pro-business method patent” and the soldiers were “anti-business method patent”.

    That’s what business method patents do :(

  143. AI: “Yet none of these companies have been able to invent and apply any new business methods that can solve our global economic crisis, healthcare crisis, or create more jobs. You want more jobs? Empower entrepreneurs to create them with patents on their inventive business methods.”

    The underlying premise of this comment appears to be that the solution to the “global economic crisis” and/or “healthcare crisis” will require the invention of new “business methods” which requires granting more patents to “entrepeneurs”. From previous experience we can be certain that Acual Inventor is not going to provide us with a single example of his/her own novel contributions to this area that would help solve any of these crises.

    Here on earth, most thoughtful people understand that both the depth of the current recession and the rising unemployment rates could have been helped by providing more economic stimulus in the form of, e.g., additional funding of projects to repair our nation’s eroding infrastructure and more aid to the states so they could keep their governments and public school systems running. But Republicans insisted that such aid would make the country exactly like Nazi Germany, or something.

    Now we have AI and his ilk who believe that the solution is to hand out more business method patents. Does AI not recall that it was so-called “financial innovation” which spawned these crises in the first place? Does AI really believe that “new” methods of rating securities, “new” methods for “targeting” consumers, and “new” methods for cooking books is the answer? That seems highly unlikely because AI can write a complete sentence and so must possess some rudimentary level of intelligence. A more likely and consistent explanation is that AI is simply advocating a solution that would personally benefit AI, much in the same way that businesses tend to lobby Congress with their own views on how various laws should be “reformed.”

    AI: “The existing monopolies will just copy freely what ever they want and refuse to innovate, while raising prices at will, and from that we all suffer.”

    Yes, it will be a terrible day when Disney raises its prices. What will I do when I can’t afford cable TV? Truly the end of America as we know it.

    AI: “The existing monopolies will just copy freely what ever they want and refuse to innovate”

    Two words: New Coke.

  144. The USPTO brief mentions an 18th century English patent issued to John Knox for a type of insurance. While searching for it, I stumbled upon the following fascinating volume from 1811 France. link to bit.ly

    Patents for financial inventions were briefly issued by France in 1791 and 1792. This volume prints all fourteen of them at the end.

    Did any of the briefs make reference to this?

  145. “I still cannot understand, so please help me, why it is bad to give the inventor of an new business method a patent and it is good instead to allow other to copy his method. ”

    Let’s start off with you understanding why it is “bad” to give the inventor of anything a patent and it is good instead to copy his method.

    Then we can move on to advanced topics like why we see that it is good to protect inventions within the useful arts, so that they might be advanced, and why this good outweighs the bad.

    Then, after having covered those topics we can discuss why the good doesn’t really outweigh the bad for business methods. That is, why it doesn’t currently, and why the founders didn’t think that it did, and why it never will.

    Finally, after having discussed all that, we can discuss how the founders drafted a law to allow for the protection the useful arts and specifically meant to exclude all other arts.

    As an epilogue we can discuss whether or not you would have thrown tea into the harbor or if you would have contentedly paid monopoly rents to the Company.

    But let’s not get ahead of ourselves. Let’s start at the beginning.

    Do you believe that monopolies, irrespective of whether or not government granted, are a good or a bad thing?

    Do you believe that the purpose of a patent is to set up a government granted monopoly of 20 years?

    Do you then believe that a patent system inherently involves some bad (regardless of whether or not they are a net “good”)?

  146. Ned Heller wrote: “I still cannot understand, so please help me, why it is bad to give the inventor of an new business method a patent and it is good instead to allow other to copy his method.”

    Thanks Ned. That’s an excellent question. As an Actual Inventor and Entrepreneur I see no harm in business methods being eligible for patents. It fact, I see a great benefit to having business method patents that extend to free markets, job creation, and a higher quality of life for all.

    Having just a few big multi-national corporations is what’s harmful to our economy. Just look at the big companies deemed “too big” to fail that our government has gone into debt to bail out. We have a nation of the big three automakers, the big three networks, now the big 5 media companies and the one big telephone and one big software company.
    Yet none of these companies have been able to invent and apply any new business methods that can solve our global economic crisis, healthcare crisis, or create more jobs.

    You want more jobs? Empower entrepreneurs to create them with patents on their inventive business methods. If you take away the entrepreneurs right to business method patents, and that includes software, then there will be no incentive to invent the new methods and processes we need to solve our greatest problems.

    The existing monopolies will just copy freely what ever they want and refuse to innovate, while raising prices at will, and from that we all suffer.

  147. All 22 briefs in support of the PTO (as well as the other 43 supporting Bilski or neither party) can be found at link to AwakenIP.com, which also includes all FedCir briefs, party briefs, the patent application, and links to other commentary.

    Is 65 a normal number for amici at the Supreme Court?

  148. 6 You are right. The entire list of what are Liberal Arts, etc., listed, plus trade, are excluded.

    I still cannot understand, so please help me, why it is bad to give the inventor of an new business method a patent and it is good instead to allow other to copy his method.

  149. “But if the subject matter is not on trade, per se, is useful and if it passes the MOT test (sans dissection) it should be patent eligible. ”

    What makes you say that? He just got through listing a whole list of things that are “useful” but wouldn’t be in the “useful arts”. Astronomy, poetry, blah blah blah, he gives a whole list. You just didn’t look at it. Even so, the list isn’t comprehensive and could be made longer.

    Besides that, you guys are making an issue out of a non-issue. In 99% of potentially failing cases it is a simple matter to determine if it is within the “useful arts” or not. The ones that are worth arguing about can be argued about.

    “Could it be that the PTO is granting patents on old and obvious business methods and that this might be the source of the problem instead?”

    Could be, but even if it is, what we see playing out in reality is that the problem you mention is unavoidable, so it hardly matters.

    I love people who argue “but but but if only the law was followed properly we wouldn’t (or might not) have that issue!”

    Who cares? We have the issue, and you’re not going to stomp it out by giving examiner’s lectures on obviousness and novelty. It is, therefore, a legitimate issue even if the law doesn’t mandate that it be one. Stop thinking “law law law” and start thinking “reality reality reality”.

  150. 6 said, “‘Professors Menell and Meurer: The Constitution creates a real limit on patentable subject matter – i.e., the subject matter of the patent must be within the “useful Arts.” Economic evidence indicates that business method patents (especially internet related business methods) are harmful’

    Thas mah boyz right thar.”

    Could it be that the PTO is granting patents on old and obvious business methods and that this might be the source of the problem instead?

  151. Ugh! Stern’s brief establishes that the St. of Monopolies was intended to ban patents on trade — meaning the “selling” of goods. Beyond this point, the brief is unconvincing on the issue of what was intended to be included and excluded as a “useful art.” In the end, despite arguing for a test, the brief simply states that “hedging” is not a useful art. This is exactly the kind of ad hoc approach to the topic that the brief argues against.

    The brief also states that an “old” machine or apparatus is not a “particular” machine or apparatus, correctly citing Flook. But such analysis imperils not only every software patent, but it would have potentially rendered the result in Diehr wrong, as both the molding process and the molding machine in Diehr were old — the only thing new being the well known mathematical algorithm.

    What I am left with is that patents on “selling” articles are not within the Useful arts. So too are patents on the Liberal or Martial Arts, and the like, listed in the brief. Beyond that, there is not clear constitutional basis for exclusion.

    Stern’s brief additionally shows that the MOT can be both under-inclusive and over-inclusive, meaning it should not be the sole test. But if the subject matter is not on trade, per se, is useful and if it passes the MOT test (sans dissection) it should be patent eligible.

  152. “Law Professors and the AARP (Including Josh Sarnoff): ”

    That is a very interesting take.

    “The machine-or-transformation (MoT) test does not meet any of these requirements. The Federal Circuit test also violates US treaty obligations under TRIPS and NAFTA and potentially subject the US to trade disputes adjudicated at the World Trade Organization (WTO).”

    I’m sure everyone will forgive me for not giving two shts what so ever. Should have never engaged in those “treaties” (aka bullsht) in the first instance. And I’ll be dam if I believe that my independent judiciary should be bound by the decision of congress to enter into an agreement that conflicts with its prior issued laws.

    That’s assuming that they’re right and there is some problem under Trips etc.

    “Software should be patentable and has been for a long time.”

    When, specifically, did it magically become patentable I wonder? Further investigation is warranted into these people’s beliefs.

    “A GUI’s underlying functionality is what makes
    it more than just pictures behind glass.”

    A gem from the paper above. Actually, mr. paper there are innumerable technical differences between a “GUI” and pictures behind glass. Innumerable. And just because you don’t want to claim those rather than the “functionality” doesn’t mean we should per vert 101 for you.

    “But clearly there are no
    physical folders inside a computer, nor could one
    locate a “trash can” or “recycle bin” on a hard drive.
    Each of these is an abstraction of the way computers
    store information; they are not themselves “physical
    tangible objects.””

    What more evidence do these guys need that a claim involving only those elements should not be patentable? It’s as if they want to make my case for me.

    “An “abstraction” is not the same as an “abstract
    intellectual idea.”9″

    Actually it is.

    Abstraction-

    a. The act of abstracting or the state of having been abstracted.
    b. An abstract concept, idea, or term.
    c. An abstract quality.

    See definition no. 2. No. 1 is the method of coming up with no. 2. or a description of something falling under no. 2.

    What this should be telling them is that they’re using drafting tricks to avoid the substance of the “invention” by drafting it so that there is no substance. But of course, they want to just gloss right over that.

    “To be sure, a “document” shown on the screen can
    be printed and thus become a tangible piece of paper.
    But if a “document” is created electronically and
    never printed, it cannot represent a physical object,
    because the physical object does not and will never
    exist – and yet, surely, the document is more than an
    abstract intellectual idea.”

    No the “document” never does exist in this example. The “document” is nothing but a picture on a screen and some information throughout the computer that you named a “document”. But you wouldn’t want to claim any of that now would you?

    “Brief of CASRIP (U. Washington): The US Constitution sets a bound on the scope of patentable subject matter – limiting them to the Constitutionally proscribed “useful Arts” as that term was understood at ratification. For new methods, one key is to consider the purpose of the method. Methods of entertaining a cat using a laser and telling a joke into a microphone should not be patentable regardless of their tie to particular machines because neither of those functions have ever “been considered a useful Art, and surely . . . is not the kind of discovery that the Patent Clause contemplates.” Some methods also exist that should be patentable even though they fail the machine-or-transformation test. Despite its problems, the machine-or-transformation test is “superior to its competitors in filtering out preemptive claims to basic principles.” However, it should not be the sole test of eligibility. Bilski’s claim is unpatentable because hedging against price inflation (the purpose of the method) is not within the useful Arts.”

    Sounds like these guys have been reading some of my work. And I hope they do pay good attention to this brief. It is the awesome.

    Everyone should read this last brief. Probably the best suggestion as to what should be done about the 101 problem I’ve read as of yet. Given the chance, the gov. might just change its brief to read exactly as this one does.

    Les, you should read at least page 10 of this brief.

    I do take one issue with their reasoning though.

    “A paradigmatic example is: cleaning a dirty shirt
    by submerging it in a river and beating it. There is no
    “particular machine” and no obvious example of a
    transformation of an article.46″ Is presented as a “false negative” of the MOT. In actual fact there is a transformation, the shirt is transformed from “dirty” (i.e. having a relatively high amount of dirt) to having less dirt on it after it has been beat.

    Additionally,

    “Or consider this low-technology process:
    A method for operating a coal mine where a toxic
    gas may be present, comprising placing a canary
    in the mine, observing it, and running away fast
    if it dies.”

    Simply does not pass the “useful arts” test IMO. Just because something can be used while performing the useful arts does not mean that it is, itself, a useful art.

    I do agree with his premise in this section however: “Such processes are not necessarily transformative and can be such low-technology that they use no machine, much less a particular machine.” and that such methods may never the less pass the “useful arts test”.

    Even despite his oversimplification of some claim worthy processes into ones that likely are not, I still agree with his overall point. MOT needs to be supplemented, or even replaced by, a “useful arts” test because that is really the issue, MOT just gets the right answer most of the time.

  153. “Professors Menell and Meurer: The Constitution creates a real limit on patentable subject matter – i.e., the subject matter of the patent must be within the “useful Arts.” Economic evidence indicates that business method patents (especially internet related business methods) are harmful”

    Thas mah boyz right thar.

    “The PTO Brief seems to ignore the fact that the constitution refers to promoting BOTH Science AND the useful arts.”

    I’ve explained this to you before.

    “I’m not sure how they get away with that. It might be that Science contributions are allegedly protected by copyright.. but, thats assuming facts not in evidence”

    This has to do with your fundamental misunderstanding of what I’ve been telling you for awhile now.

    “Economics might or might not have been considered a useful Art at the time the Constitution was written, but I think that has more to do with the extremely primitive state of economic thought at the time than anything else.”

    I disagree with your characterization of economic thought at the time. One major reason their thinking seems primitive is that their entire markets were primitive. Note also that the thinking at the time was “useful” and even in many instances still is. Also, art galleries are useful for getting pants and expanding the world around you.

    “SteveW”

    I hope you’re not a patent attorney.

  154. It seems a couple of the briefs are on-their-face untimely or seriously trying to game Rule 37. The Sachs and Brownstone brief is in support of “neither party” and should have been filed seven days after the petitioner’s brief. The Adamas Pharma brief is denominated as supporting the PTO, but it clearly doesn’t, so is probably more properly designated as supporting neither party and should also have been filed seven days after the petitioner’s brief. Dennis, have these briefs been filed, or have they just been submitted for filing?

  155. Historical note: Richard H. Stern is counsel of record for CASRIP. He also was on the government’s brief in Benson and Flook.

    Clerks of the Supreme Court will know this and will read Stern’s brief with care.

  156. Steve –
    The PTO Brief goes back to period dictionaries to argue that useful arts referes to technological things and contrasts that with Sciences, which it catorgorizes Bilski’s method as.

    The PTO Brief seems to ignore the fact that the constitution refers to promoting BOTH Science AND the useful arts.

    I’m not sure how they get away with that. It might be that Science contributions are allegedly protected by copyright.. but, thats assuming facts not in evidence.

  157. “What the heck does “useful arts” mean?”

    It refers to the Copyright and Patent Clause of the Constitution: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    The clause is drawing a distinction between ‘Science’ (literally ‘knowledge,’ including art and literature) and ‘useful Arts’ (i.e., applied knowledge, that which artisans do, not that which artists do). It’s a parallel sentence and so may be broken up thus:

    To promote the Progress of Science, by securing for limited Times to Authors the exclusive Right to their Writings.

    To promote the Progress of [the] useful Arts, by securing for limited Times to Inventors the exclusive Right to their Discoveries.

    The first sentence is the basis of copyright law, and the second sentence is the basis of patent law. Economics might or might not have been considered a useful Art at the time the Constitution was written, but I think that has more to do with the extremely primitive state of economic thought at the time than anything else. It would be hard to argue that modern economics, particularly applied economics in the form of finance, business methods, etc, is not a useful Art. I certainly find it useful that modern economics adds liquidity to markets, increases investor knowledge, etc.

    “Economic evidence indicates that business method patents (especially internet related business methods) are harmful.””

    I just wanted to mention that I find this to be a non-argument. Neither the patent statute nor the Constitution say “Inventions of type XYZ may be patented, unless it turns out to be economically harmful.” The patent statute has no such qualifiers, and the Constitution merely requires that progress be promoted. Whether the promotion of progress is worth the economic downside is a policy judgment for Congress, not the courts.

  158. “The Constitution creates a real limit on patentable subject matter – i.e., the subject matter of the patent must be within the ‘useful Arts.’ Economic evidence indicates that business method patents (especially internet related business methods) are harmful.”

    What the heck does “useful arts” mean, and why is it clear that business methods don’t belong? If the business methods were “useless” then no one else would care if they were prevented from doing them. Every one of these arguments is circular nonsense, as would be any argument I tried to present on the matter, as will be the SCOTUS decision on this. SCOTUS needs to put out a clearly articulated rule that allows us to reasonably predict where the line of patentable subject matter lies, and not worry whether they have hit the philosophical sweet spot for an almost 70-year old statute. Let Congress re-draw the line if they think the Courts end up in the wrong spot.

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