Ex Parte Gutta (BPAI 2009)(Precedential)
In its fourth precedential opinion of 2009, an enlarged panel of the BPAI has created a new test for judging whether a claimed machine (or article of manufacture) that takes advantage of a mathematical algorithm falls within the patentable subject matter requirements of 35 U.S.C. Section 101. The two-part test parallels the Federal Circuit’s Bilski decision that focused on the patentablility of method claims. Of course, Bilski is now pending before the Supreme Court and a decision is expected in the Spring of 2010.
The BPAI’s test for a claimed machine (or article of manufacture) involving a mathematical algorithm asks two questions. If the a claim fails either part of the two-prong inquiry, then the claim is unpatentable as not directed to patent eligible subject matter.
(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?
(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
In Gutta, the BPAI applied its new test to find its system claim unpatentable. Gutta’s system claim (claim 14) includes two coupled components — namely a memory and a processor. The claim indicates that the processor is configured to identify a “mean item” whose symbolic value minimizes the variance of a set. On those facts, the BPAI found that the claim failed the first prong by not limiting itself to any “tangible practical application in which the mathematical algorithm is applied that result in a real-world use.” Likewise, the claim failed the second prong because it “encompasses substantially all practical applications” of the algorithm. “That is we are unable to identify any other practical application [of the algorithm] outside of the broadly defined claim.”
Interestingly, the decision was issued in August 2009, but made precedential in December 2009. By then, Gutta had abandoned the application. The patent application (SN 10/014,192) is assigned to Koninklijke Philips Electronics.
Done Deal | wrote: 1. Using the conventional definition of “Constitutional right”, patents are not a Constitutional right.
AI: No such definition was ever presented or established in this thread and certainly no based on any citation of legal authority.
Done Deal : 2. Using AI’s definition of “Constitutional (R)ight”, patents are mentioned in the Constitution.”
AI: I, ( AI) Have not presented any definition of a “Constitutional (R)ight that is mine.
The simple fact is that no one in this thread or the others has been able to cite any legal authority that invalidates the Inventor Rights in the Constitution as not being Constitutional Rights.
Thus the Constitutional Right to a Patent remains valid and shall so remain until proven otherwise with a citation of legal authority or a Constitutional amendment.
Since this thread appears to now have finally died a natural death, I will here summarize its contents for future Patently O archaeologists.
Although the original post was about USC 101 patentability, AI immediately hijacked the thread to discuss his albatross, the Constitutional (R)ight to a Patent. Numerous commenters responded pointing out that the Patent Clause does not require Congress to establish patent rights. AI countered by using examiner-like logic to define “Constitutional (R)ight” to mean any right mentioned in the Constitution. Commenters pointed out that “Constitutional right” generally means a right guaranteed to the people by the language of the document, one that Congress cannot take away. AI countered by admitting that Congress could take away patent rights, but if they did so, WE THE PEOPLE would vote them out and vote in someone who would restore patent rights. Commenters pointed out that AI appears to be oblivious to the fact that he cannot personally speak for WE THE PEOPLE. NAL countered by alternately accusing everyone of being either 6 or Mooney. NWPA countered with “BABOON! BABOON! BABOON! BABOON!” Everyone eventually left, satisfied that they had each won the argument.
So the following facts were gleaned:
1. Using the conventional definition of “Constitutional right”, patents are not a Constitutional right.
2. Using AI’s definition of “Constitutional (R)ight”, patents are mentioned in the Constitution.
3. Only five people comment at Patently O: Mooney, 6, NWPA, NAL, and AI. All others are sox of those five.
4. Arguing on the internet is pointless.
PROSECUTION OF THIS THREAD IS NOW CLOSED. ANY FURTHER COMMENTS MUST INCLUDE A PETITION TO REVIVE DIRECTED TO THE DIRECTOR OF THE PATENTLY-O ALONG WITH ANY REQUIRED FEE(S).
Night Writer Patent Attorney | Feb 22, 2010 at 08:11 AM: I worry, though, in that J. Stevens is the one that took up the banner of Benson from J. Douglas and he is not liking the current decisions at the SCOTUS. I worry that our CJ Roberts may throw him a bone and let him do as he may to the patentability jurisprudence.
NWPA, you may be right in that Stevens is holding on and chomping at the bit to dig into software patents and get his revenge for Flook, A silver lining could be that Stevens is believed to be retiring in May, presumably after the Bilski decision. At least then we can get a new Justice and within a year or two bring a new case to the SCOTUS that sweeps away the cobwebs of Stevens and his 19th century thinking.
NAL: you may be right about what will happen at the SCOTUS. I worry, though, in that J. Stevens is the one that took up the banner of Benson from J. Douglas and he is not liking the current decisions at the SCOTUS. I worry that our CJ Roberts may throw him a bone and let him do as he may to the patentability jurisprudence.
I do think, though, that the Bilski opinion will review and recast Benson and the other SCOTUS cases on patentability. It may be dicta in reality, but it will be what the Fed. Cir. uses and judges like Moore would love to remove software from patent eligibility.
MaxDrei,
As you are no doubt aware, the laws between EP and US have more differences than that – there are pro’s and con’s to each system – I am not sure either has a purely better system, nor am I sure that either can (or even should) fully be matched up with the other.
NWPA,
That’s cool – I think that we are fairly in agreement on the so-called “troll” drumbeat.
I don’t see the Supremes going as far as outlawing software – it doesn’t impinge on the case at hand and would be merely dicta. The opportunity is present, on the other hand, to slap down (yet again) the CAFC and the penchant for brightline tests. There could also be a “recalibration” of some of the more earlier SCOTUS decisions to bring them inline with software-as-a-tool, but I think that would be a stretch.
Happy 600 Everyone.
>>Not sure where you want to go with this link, >>NWPA.
I just thought it was an interesting article related to patentable subject matter.
It is convenient for big corp. to say that if you don’t produce anything then you are a troll. Therefore, everyone that isn’t one of a few big corporations is a troll.
And, I wonder how many people are going to be out of a job in the U.S. if the SCOTUS removes software from patentability. I’ll bet a lot. Microsoft will probably give the boot to many of their new researchers.
The more this thread continues, the more convinced I am, that the US/UK approach to patent eligibility is not as clever as that of the EPO. I think it’s a shame that the Supreme Court can’t follow the urgings of Paul Cole, and take with 101 the same liberal line the EPO takes on Article 52 EPC.
The UK, like the US, seeks to filter out inventions in mathematics with its 101 provision. The EPO not. It acknowledges that the presence of a general purpose computer, or even a pencil and paper, is enough to confer “technical character” on the subject matter of a claim, which gets it over the 101 hurdle and leaves then only 102, 103 and 112.
With math, the complement to the EPO’s liberal line on 101 is its stricter (technical feature/effect) line on 103. That’s the bit that is not accessible to the US Supreme Court, obliging it to stay with 101 as its math filter.
In Gutta, the BPAI applied its new test to find its system claim unpatentable. Gutta’s system claim (claim 14) includes two coupled components — namely a memory and a processor. The claim indicates that the processor is configured to identify a “mean item” whose symbolic value minimizes the variance of a set. On those facts, the BPAI found that the claim failed the first prong by not limiting itself to any “tangible practical application in which the mathematical algorithm is applied that result in a real-world use.” Likewise, the claim failed the second prong because it “encompasses substantially all practical applications” of the algorithm. “That is we are unable to identify any other practical application [of the algorithm] outside of the broadly defined claim.”
_________
Okay this is nonsense.
Software is a technological process.
Computers are machines.
Both inventions types by themselves are patentable subject matter.
So a combination of software and machines ( e.g. system) is patentable subject matter.
CASE CLOSED
How anyone could say otherwise and keep a straight face is beyond me.
What is this BPAI decision based on, metaphysics? The Occult? The Supreme Court put the legal definition for a machine out there over a hundred years ago to “include every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.
Can anyone out there describe a software system that does not meet that definition?
If the BPAI is going to make up some new precedential definition of what constitutes a machine it better be based on modern advances in science and technology and not some abstract, non testable words to be used for the sole purpose of KOing another information processing invention.
Indeed, if this were my invention I would instruct my attorneys to take it all the way to the SCOTUS!
“This one equates software with patents according to a NPE with 30,000 patents.”
Not sure where you want to go with this link, NWPA.
“The attitude of the big guys has been that unless you sue me or threaten to sue me, get lost,” he said in the interview. “I know, I was one of those guys.”
Thus the demonization of “trolls” can be seen for what it is – demonization is a tool of those already with power striking out against what the patent system offers to ANY inventor. The advancement and promotion is NOT a friend of the big bad meanies when that advancement is owned by someone else (and protected by an exclusive right).
It’s telling that a perfectly legitimate business model is so sinisterly attacked, and that attack is swallowed hook line and sinker without thought. What “crime” are NPE’s guilty of? They paid for the patent protfolios they hold (and since Malcolm refues to read – “trolls” are not out for bogus patents – they want solid, well written patents). Somewhere in those transactions the inventor was rewarded.
The fact that NPE’s cannot be counter-sued because they do not produce only means that the big bad meanies have lost their nuclear-bomb patent weapon. This is NOT a bad thing. In fact, this should be applauded by those who despise facile patents because it is the very people demonizing “trolls” that are also most active in obtaining dumptrucks of facile patents – not the little guys.
“Personally, he says he advocates not only the public disclosure of patents but also license agreements, but he will not give up the competitive edge of secrecy unilaterally.” – sounds like a smart business man to me.
“Posted by: IANAE | Feb 18, 2010 at 09:00 AM:Actually, number (8) was more or less correct.”
Number 8? LOL. Of all the straw, fluff and unsubstantiated Conjecture to hang your hat on you chose the one reason that was an out right falsehood. And even the original poster, West Coast Guy was forced to back away from.
“AI: Again, says who?”
Posted by: Orly Taitz | Feb 18, 2010 at 07:53 AM :”The Constitution, and WE THE PEOPLE”
Cut and paste the exact text from the Constitution that says what you wrote up thread, along with the section so I can verify it word for word.
::WARNING TO ALL::
Malcolm is lacing up his track shoes and preparing some nice juicy illogical fallacies for a distraction.
Malcolm while dressed up as Orly Taitz wrote:
” The rest of your reasons, with the exception of the one about Nihilism and the part about me kicking you keister, are as your mom Noise is fond of saying, straw.”
None of those reasons are mine. They belong to you and others that do not want to recognize the Constitutional Rights of Inventors. So you just admitted your arguments and those of your peers are Straw.
And you are doing exactly what Noise busted you for doing so long ago. Setting up Straw man arguments and then accusing others of doing what you just did.
Proving that no matter how you dress up a Mooney it’s still a Mooney.
NWPA, bustin out the quality article within a couple hours of its release. Nice.
The rest of your reasons, with the exception of the one about Nihilism and the part about me kicking you keister, are as your mom Noise is fond of saying, straw.
Actually, number (8) was more or less correct.
“AI: Again, says who?”
The Constitution, and WE THE PEOPLE
link to dealbook.blogs.nytimes.com
This one equates software with patents according to a NPE with 30,000 patents.
Posted by: Orly Taitz | Feb 17, 2010 at 08:00 PM “Because Congress is not required to exercise its power to enact legislation that creates Statutory rights for Inventors, those Statutory rights can’t be Constitutional Rights.”
AI: Says who?
“Because Congress had a choice to act before it acted to exercise its power to promote the progress of Science and Useful Arts, by securing for limited times to Inventors the exclusive Right to their discoveries; those exclusive Rights stated in the Constitution and Secured to Inventors by Constitutional power are not Constitutional rights.”
AI: Again, says who?
“(2) Because Malcom Mooney while dresssed in drag as Orly Taitz and typing on a computer kicked your but!”
I really must have touched a nerve there, eh AI?
Here, I fixed two of them for you (prefacing this with the assumption that “Constitutional rights” are rights guaranteed by the Constitution):
(10) Because Congress is not required to exercise its power to enact legislation that creates Statutory rights for Inventors, those Statutory rights can’t be Constitutional Rights.
(6) Because Congress had a choice to act before it acted to exercise its power to promote the progress of Science and Useful Arts, by securing for limited times to Inventors the exclusive Right to their discoveries; those exclusive Rights stated in the Constitution and Secured to Inventors by Constitutional power are not Constitutional rights.
The rest of your reasons, with the exception of the one about Nihilism and the part about me kicking you keister, are as your mom Noise is fond of saying, straw.
In homage to the not so brave souls of the Skirt and Track Shoe Club, I have complied their top ten list of reasons why the Inventor Rights Stated in the Constitution, are not Constitutional Rights.
THE TOP TEN REASONS
The Inventor Rights stated in the Constitution are not Constitutional Rights. According to Skirt and Track Shoe Club.
(10) Because Congress has exercised its power to enact legislation that created Statutory rights for Inventors, those Statutory rights can’t be Constitutional Rights.
(9) Because the Inventor Rights stated in the Constitution can be taken away with amendment or abolishment those Rights are not Constitutional Rights.
(8) Because the Constitution is silent on Inventor Rights.
(7) Because the word PATENT is not in the Bill of Rights or in the original text of the Constitution there is no Constitutional Right for a Patent.
(6) Because Congress had a choice to act before it acted to exercise its power to promote the progress of Science and Useful Arts, by securing for limited times to Inventors the exclusive Right to their discoveries; those exclusive Rights stated in the Constitution and Secured to Inventors by Constitutional power are not Constitutional.
(5) Because you need to go to Law School. Or if you are 6, “LOL” school.
(4) Because The preamble of the Constitution is just a bunch of fancy words and carries no weight. And Congress = We the People is absurd.
WE THE PEOPLE are the servants to Congress Dam you!
(3) Government can do what it wants and life is meaningless. Death to patents Long live Nihilism!
(2) Because Malcom Mooney while dresssed in drag as Orly Taitz and typing on a computer kicked your but!
And the number one reason the Inventor Rights stated in the Constitution are not Constitutional Rights.
::DRUM ROLL:: . . . .
.
.
.
.
(1) Inalienable (R) ights are not endowed by any Creator but by the (S)hift (K)ey on your (C)omputer!!!
“I am bumping this article and pleading to you all to post more comments. We are now only 88 comments away from reaching 666 commments. If we can do that, and if someone figures out how to pronounce “Cthulhu” correctly, then we can put a proper end to all this foolishness.”
It’s “k’tool-oo”.
Leviathan is coming. Ah Pook is here.
“Too much abstraction?”
STOP FLUFFING.
(whoops wrong thread)
Too much abstraction?
I am bumping this article and pleading to you all to post more comments. We are now only 88 comments away from reaching 666 commments.
Might I humbly suggest that the real problem is that we are not addressing this question at the proper level of abstraction, despite the patient and persistent facilitation of our dear friend Noise? For I hold this truth to be self-evident: that the Consitutionality of the patent (R)ight cannot be ultimately resolved until the essential distinction between (r)ight and (R)ight is acknowledged, once and for all.
I haven’t seen a baboon post in quite a while.
I am bumping this article and pleading to you all to post more comments. We are now only 88 comments away from reaching 666 commments. If we can do that, and if someone figures out how to pronounce “Cthulhu” correctly, then we can put a proper end to all this foolishness.
For whatever it may be worth, see:
link to 1201tuesday.com
BPAI Finds Particular Machine
Providing yet another data point for Bilski evaluations, the BPAI today decided Ex Parte Moyer, finding the following claim a) to be tied to a machine; and b) that the machine was “particular.”
1. In a data processing system, a method of forming an immediate value comprising:
receiving a data processing instruction at an input of a processor;
the processor using a first field of the same data processing instruction as a portion of the immediate value;
the processor using a second field of the same data processing instruction to determine a positional location of the portion of the immediate value within the immediate value; and
the processor using a bit value in a third field of the same data processing instruction to determine a remainder of the immediate value.
If it weren’t for that, WE THE PEOPLE would be closing in on 1000 comments by now.
Fixed that for you.
I protest the migration of this discussion to the Obama thread. If it weren’t for that, we’d be closing in on 1000 comments by now.
This has become the people’s thread to discuss whatever issue we want.
In the sense that you indicate above, AI, I agree with you.
Also note the use of the word invention. That is why the SCOTUS in Benson trys to pin information processing to a scientific principle to try to take an information processing method implemented with electronics out of the definition of invention. As if it is a trick to try and steal something. Shameful ignorance.
Posted by: Night Writer Patent Attorney | Feb 05, 2010 at 08:15 AM: They did say “shall.” I was thinking of the difference between the enumerated powers of what congress may do vs. what congress cannot do. The analysis is the same. It is just a power that congress may do and not something that they must do.”
Are WE THE PEOPLE, in a position of vassalage to the United States Congresss? Or is the United States Congress the servants of the American people? I hold the latter belief.
Therefore WE THE PEOPLE have the power to enforce Article 8 of the Constitution by instructing our representatives to enact appropriate legislation for Inventors to be granted patents.
It is in every sense, our Constitutional right.
I predict 666 comments.
AI, you might refer to the Obama thread for another interesting discussion on this topic.
link to patentlyo.com
other sockpuppets of Malcolm (in this case Hans Blix
Again, Dennis can confirm that you are wrong about this, too.
Just ask him, NAL.
People may not mistake you for yet another “rare” sockpuppet of Malcolm’s if you did not answer posts directed to yet other sockpuppets of Malcolm
I don’t live or die by the delusions of people on an internet message board. Believe what you want about me.
IANAE,
People may not mistake you for yet another “rare” sockpuppet of Malcolm’s if you did not answer posts directed to yet other sockpuppets of Malcolm (in this case Hans Blix).
I’m just saying… (not the poster)
Anytime you or your sock puppets want to […] discuss the Constitution in the context of the views of the founding fathers and their philosophical foundations, I would be most glad to oblige you.
Great. Any time you want to discuss the constitution in the context of what the document actually says, look me up.
Hans Blix | Feb 05, 2010 at 09:42 AM:Don’t worry about all these people telling you that your interpretation of the U.S. Constitution is wrong. In fact, keep it up. It really, REALLY lends credence to your other argument that commodities trading schemes are patent-eligible. So, by all means, keep talking. I got your back on this one.
Actually, there are at least two other commenters in this thread that presented cogent arguments for opposing interpretations of the Constitution, that while lacking in historical evidence, at least have some logical consistency.
Your not so thinly veiled sarcasm is a case in point for the typical reaction that anti patent posters display on this blog when backed into a conner with with logic, reason and facts.
Anytime you or your sock puppets want to drop the mooneyisms and discuss the Constitution in the context of the views of the founding fathers and their philosophical foundations, I would be most glad to oblige you.
Actual Inventor:
Don’t worry about all these people telling you that your interpretation of the U.S. Constitution is wrong. In fact, keep it up. It really, REALLY lends credence to your other argument that commodities trading schemes are patent-eligible. So, by all means, keep talking. I got your back on this one.
According to the Constitution he can secure for limited time an exclusive Right to his Writings and Discoveries.
Nope. That’s not anywhere in the constitution. Maybe you’re thinking of 35 USC?
Ned: AI, if I grant the government the power of deciding capital cases (consent of the governed), where to I get the “right” to a trial by jury?
AI: From WE THE PEOPLE
Ned: You get it by limiting the power in the very document granting the power. Constitutional rights are limitations on governmental power.
AI: Even using this analysis as a framework it would still be, WE THE PEOPLE limiting the power.
Ned: Private rights are rights secured by law against infringement by the public. Examples include the right to exclude others from my land.
What then are patents?
AI: Using your above definition I have a private right to my ideas. The Constitution is the legal mechanism that limits THE PEOPLES ability to exercise their inalienable rights to the point of anarchy and blood shed.
A patent is the technological process for an Inventor to exercise his or her Constitutional right to Promote the progress of science and the useful arts
They did say “shall.” I was thinking of the difference between the enumerated powers of what congress may do vs. what congress cannot do. The analysis is the same. It is just a power that congress may do and not something that they must do.
You win, AI! Because you’ve repeated your nonsense enough times, it’s now true. You have an inalienable right to a patent. Let me know when you get the ribbon copy.
NWPA: “The framers thought about what you are saying and put down “may” not “must” or “shall” or “will”, but “may” and that little words would end any hope of getting anywhere in court.”
With all due respect, I do believe section 8 of the constitution uses the word “shall”. As in “ The Congress shall have Power”
Posted by: IANAE | Feb 03, 2010 at 09:14 AM: To which I reply, a man doesn’t have any particular right to do whatever he wants with those ideas.
According to the Constitution he can secure for limited time an exclusive Right to his Writings and Discoveries.
Posted by: CEO | Feb 03, 2010 at 08:05 AM: AI, regarding your statement that men have an inalienable right to their ideas, consider this simple hypo:
You have an idea today, and file for a patent. Tomorrow, I have the same idea, and do not file for a patent. Yet, when your patent issues, it gives you the right to exclude me from using my own idea.
There is a logical problem with arguing that men have an inherent right to exclude others from their inherent rights. Now, I’m not saying that it would be a bad thing for all men to have the inalienable right to their own ideas. I’m just pointing out that when you argue for such, you are advocating against the patent system.
______
The flaw in your argument is that every inalienable constitutional right, including that of a patent, has it’s limitations. For example, we have the right to free speech yet we can’t shout FIRE!! in a crowed movie theather.
It’s the price we pay for living in an organized society. Without the Constitution we would have anarchy with everyone exercising their rights to the extreme.
WE THE PEOPLE, have agreed to retain our right to dream and imagine any and all ideas. No one can take that away. However we agreed to give up the right to act on our ideas for a limited time, to the man or woman inventor that dares to act first and actually promote (advance ) the progress of science and the useful Arts.
It’s a fair quid pro quo for living in America, the greatest country and system of freedom in the history of the world.
“””””””A new use of an old test, to treat zoophilia in your example, cannot be patented by only reclaiming the old subject matter despite the new utility. It has to claim as well something new: the treatment.”””””””
You are refusing to accord the “making a political persuasion prediction” step any patentable weight?
To which I reply, a man has a inalienable right to his ideas!
To which I reply, a man doesn’t have any particular right to do whatever he wants with those ideas.
An idea isn’t the same thing as a patent.
CEO,
You add an interesting wrinkle to the pure “rights” discussion.
…now let’s add in the concept of “Promote” (that is, without the asterisk that some would add) that coincides with the Patent language in the Constitution.
Stir liberally (pun intended).
AI, regarding your statement that men have an inalienable right to their ideas, consider this simple hypo:
You have an idea today, and file for a patent. Tomorrow, I have the same idea, and do not file for a patent. Yet, when your patent issues, it gives you the right to exclude me from using my own idea.
There is a logical problem with arguing that men have an inherent right to exclude others from their inherent rights. Now, I’m not saying that it would be a bad thing for all men to have the inalienable right to their own ideas. I’m just pointing out that when you argue for such, you are advocating against the patent system.
Just another example of how utterly out of touch with the middle class the governemnt is. After stealing trilions of our dollars and giving it to bankers (who never need to work again), they must have no respect for us. They figure they can do anything they want.
That is what burns me about the examiners on this board. You–work for us!!!!
So, to sum up AI:
In law in the U.S.A.: the right isn’t there.
As a species do we have or should we have such a right? Maybe the answer is yes and the U.S.A. is abusing its citizens, but to fix the problem you would have to amend our set of rules the Constitution.
Sorry that isn’t the answer you want, but that is the answer.
You could amend the constitution to switch “may” to “shall.”
>>To which I reply, a man has a inalienable >>right to his ideas! His ideas are his hopes, >>dreams, indeed his very life. And yes, it’s a >?>God given right to protect his life, his >>livelihood the source of his very existence.
You could probably create a cause of action based on this, but it would have to be pinned to a constitutional right. However, since the constitution explicitly makes the right a patent, a “may”, then I think you would lose. The framers thought about what you are saying and put down “may” not “must” or “shall” or “will”, but “may” and that little words would end any hope of getting anywhere in court.
So, you may be right, that there is a human right to a patent, but not in the U.S.A.
AI: Of course, We the People, ratified the constitution. It is just a set a rules to follow.
Ask yourself what rights do you have as a person? If it isn’t in the Constitution and (not in your state constitution), then you may have rights that flow from common law, but otherwise you do not have any other rights.
At least in law. But, come on now, AI, a patent is a form of property created in and for society.
Believe me, I understand that you think that it is your right to your invention and that therefore you have a right to a patent to protect your invention. But, in law, you have to ask where does that right come from? What would be the basis for example in a law suit against the government in that you don’t have a patent? What would be the cause of action?
You could find a cause of action (I have one in mind), but it would come from the constitution.
NWPA: the Constitution doesn’t create a right to a patent. It empowers the congress to pass laws to grant patents to promote progress. That’s it.
The Constitution does not do anything or empower anyone. WE THE PEOPLE empower the Constitution. In order to reach your conclusion one would have to hold the view that the Constitution was it’s own entity holding power over the common man or at the very least created by a God or King and brought down from the Holy Mountain in a Moses like fashion to rule us all. When in truth the Constitution was created and given its right to exist by WE THE PEOPLE!
Posted by: CEO | Feb 02, 2010 at 07:50 AM: “For a person who loves America so much, why are you so intent on digging a hole to China?”
Dear CEO;
Yes, I believe in America. America has made me my fortune. I have invented, started companies and created jobs. And if God willing I will create more wealth and more jobs because I truly love this country.
The Declaration of Independence is the foundation of my philosophy. And like Abraham Lincoln, I too share the belief that the Declaration is a statement of principles through which the United States Constitution is interpreted. When one adopts this view the constitution becomes a living, breathing document, that is given life by WE THE PEOPLE!
Some may say, patents are merely intellectual property and like all property the Government can take it, and tax it therefore you do not truly have a constitutional right to it.
To which I reply, a man has a inalienable right to his ideas! His ideas are his hopes, dreams, indeed his very life. And yes, it’s a God given right to protect his life, his livelihood the source of his very existence.
The famous phrase, Life, Liberty, and the Pursuit of Happiness is not just the inspiration for the Constitution and the moral bedrock on which it’s based, it’s the reason for the existence of America herself.
In the words of the great poet, “The ideal is more important than the real. For it is by the real that we exist it is by the ideal that we live!”
OK, Ned, I’ll stop beating the infringement issue into the ground. If I understand you correctly, the only way someone could obtain a method patent for a test based upon an association between the presence/absence of a marker and an endpoint is if 1) the methodology employed to determine the presence/absence of the marker was novel and nonobvious, or 2) the claim included a subsequent step (after the determination of the presence/absence of the marker step, that is) to ameliorate or remedy the effects of the endpoint, which step was itself novel and nonobvious. Sound about right? If so, then yes, I think we agree. But I don’t think you’re going to be invited to the next holiday party of Prometheus Laboratories or Myriad Genetics.
6, on the doctor issue, the problem could be solved by providing a licensing entity such as we have in the music industry. Doctors, for a few denarii, could buy a license for all procedures. He could also receive some income if he were a patentee of an new procedure licensed through the entity.
What Congress did was foolhardy. As I said, I was asleep at the switch and bear some of the fault.
Hans, the problem we have is that we agree. I assume you think we disagree.
If the practicing the prior art infringes, the claim fails for want of novelty. The vice of some here is that they want to import novelty considerations into section 101, where the issue really is utility.
A new test for X is patentable subject matter, where the knowledge of X is useful. For section 101 analysis, the assumption should be that the test is new. The determination of whether the test is new or old should be taken under section 102.
A new use of an old test, to treat zoophilia in your example, cannot be patented by only reclaiming the old subject matter despite the new utility. It has to claim as well something new: the treatment.
” I don’t know about you, but I don’t want my doctor worried about infringing a patent while he’s doctoring me.”
The same argument can be made for airline pilots, firemen, nuclear reactor operators and so forth.
“Blasphemy. 35 USC specifically states that new and non-obvious uses of known aparatuses, processses, and other categories of patentable subject matter, are themselves patentable.”
For the 1000000000000th time, you don’t understand how that has been interpreted. That’s embarrassing for a prosecutor. You need to go read Chisum.
And hey Ned, why was it a mistake to exclude docs from damages? It seems to me like it was very much the proper thing to do. I don’t know about you, but I don’t want my doctor worried about infringing a patent while he’s doctoring me.
Ned:
I’ve already explained to you that, for purposes of my hypo, the manner of determining IQ is old in the art. The only thing that is “new” is the fact that IQ is correlated with one’s belief in the constitutional right to a patent in the U.S.
So, your answer to the infringement question is yes if the results make the claimed prediction, and no if the results do not make the claimed prediction. Sound right?
Next question: How does a result make a prediction? Isn’t a result just a result? Is making a prediction a mental act or physical act?
Yeah, but the hypo did not actually claim a new use of a known process. It claimed only the known process.
**But all this is nonsense. Without the test being new, the claim unpatentalbe under section 102.
If we change your hypo so that the test was new and the prediction utility was not in the claim, then performing the test for zoophilia predictions would be an infringement because the test, not the prediction, is the subject matter of the claim.**
Blasphemy. 35 USC specifically states that new and non-obvious uses of known aparatuses, processses, and other categories of patentable subject matter, are themselves patentable.
TINLA, yes indeed, what the Mayo claims are trying to do is move “infringement” itself away from the doctors who are already immune from damages.
I recall when “doctor immunity” was being proposed. I regret to say that I took very little interest in the topic, and went along with the majority on whether to support the proposal. That was a mistake. Exempting the doctors was a very bad idea.
Hans, below is your claim and your “infringing” activity. Your claim requires “making a political persuasion prediction” of a specific type. So long as your test results do not make the claimed prediction, there is no infringement. Reporting the test result itself is old and is not an infringement.
“”A method for predicting the political persuasion of a human, comprising determining a human’s IQ, and making a political persuasion prediction based on said determination, wherein if the IQ is less than 75, the prediction is that the human believes that there is a constitutional right to a patent in the U.S., and if the IQ is 75 or more, the prediction is that the human believes there is not a constitutional right to a patent in the U.S.
After your patent is granted, I discover a correlation in humans between IQ and propensity to zoophilia, wherein an IQ of less than 75 indicates a propensity to zoophilia, and an IQ of 75 or more indicates a lack of propensity to zoophilia. I proceed to commercialize a test that predicts propensity to zoophilia in humans, wherein the test consists of measuring IQ in precisely the same manner as described/claimed in your patent.”
But all this is nonsense. Without the test being new, the claim unpatentalbe under section 102.
If we change your hypo so that the test was new and the prediction utility was not in the claim, then performing the test for zoophilia predictions would be an infringement because the test, not the prediction, is the subject matter of the claim.
Sorry, I meant statutorily immune to damages, not infringement.
**One of the main problems with “determine and infer” patents **
One of the main problems with not granting such patents is that there is no incentive to disclose, go through all the red tape and expense to get govt permission to market/use the test for the new purpose, go to market, etc.
But I don’t see why there can’t be a bunch of different independent claims, one for each possible response, such as treat, diagnose, inform, etc. Maybe do a markush and get them all in one claim. i mean, sure, Doctors are statutorily immune to infringement, but that doesn’t stop the patentee from suing a doctor and impleding the maker of the competing lab product as a contributory infringer, and then collecting all of the damages from them. Does it?
**Not sure how the anti-caveman bias got into the picture, nor how broje was forgotten…**
People prolly think I wrote the 500th comment, to have escaped scrutiny.
Hans,
Now you have me worried.
Is zoophilia contagious?
And if caught, what test determines if the infected personage will have more affinity towards cats rather than dogs or vise versa?
Ned, I understand your feelings about the validity of the claims at issue in Prometheus v. Mayo, but right now I am not interested in your opinion about that. I have asked you to assume that your patent is valid and enforceable. So, once again, does my test infringe your patent?
Hans, I think I illustrated that the problem with the Mayo type claims is lack of novelty.
If the test were new in any way, one could claim it without the administering step. But if it were not, the only way to claim it and define something new would be to include the administering step.
OK, Ned. Assume that your patent is valid and enforceable. Does my test infringe your patent?
One of the main problems with “determine and infer” patents is that a single fact can indicate lots of different facts. Bad breath can be a sign of poor dental hygiene, or it can be a sign of gastroesophogeal reflux disease, or it can be a sign of a sinus infection.
AI, if the founding fathers shared your position, they would have stated “The Congress shall secure for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” You wish they had said this; however they did not. For a person who loves America so much, why are you so intent on digging a hole to China?
AI: the Constitution doesn’t create a right to a patent. It empowers the congress to pass laws to grant patents to promote progress. That’s it.
Congress doesn’t have to, but they “may”. You have a right to elect members of congress and try to get them to pass laws to grant patents. You have a right to express your opinions about patents, but there is not right to a patent.
PMS
Pedantic Meddlesome Semantics
It does seem appropriate that this thread has attracted a new strain of discussion wherein the debate can swirl around and around because the definitions of the debaters simply do not match up.
Not to say that either side is wrong, but that neither side will want to see what’s in the bowl and will use the handle as the first step in their discussion.
We even have the “rare” pseudonym self-handshaking between Hans and Free. That in itself is enough to fill the bowl.
AI, if I grant the government the power of deciding capital cases (consent of the governed), where to I get the “right” to a trial by jury?
You get it by limiting the power in the very document granting the power.
Constitutional rights are limitations on governmental power.
Private rights are rights secured by law against infringement by the public. Examples include the right to exclude others from my land.
What then are patents?
Hans, the information must have some utility. In both your examples, the information has no utility.
Second, assuming there was utility in the information, if there is no new algorithm or method, the claim is old. It reads on the prior art. It is unpatentable.
This, however, is not a section 101 problem. If the test were new, as in Arrhythmia, Section 101 would not be offended if the claim did not actually require the use of the information.
One can instantly see the real problem in Mayo.
Posted by: Night Writer Patent Attorney | Feb 01, 2010 at 03:16 PM
“Do you think there is a right to a patent implied by the Constitution? ”
The right is explicit.
“Article 1 section 8: “The Congress shall have Power 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.”
Now what, if anything about this section of the constitution would cause you to believe, Inventors do not have a constitutional right to a patent?
I would sincerely like to understand the foundation of an opposing view
( assuming you have such a view) from a rational commenter.
Posted by: Ned Heller | Feb 01, 2010 at 04:51 PM: The people generally have no right to force the government to do anything unless that power is granted them by act of congress.
Ned, on this philosophical point we disagree.
We The people can vote, peacefully assemble and protest. I would vote to remove any Senator, Congressman or Congress woman that would support any bill to eliminate my right to a patent.
I would vote with my dollars!
I would vote with my voice!
I would vote with my ballot!
Yes, I share the philosophy of our founding fathers and deeply believe in the principles of the Declaration of Independence.
“We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness. That to secure these rights, Governments are instituted among Men, deriving their just powers from the consent of the governed..”
That’s a pretty awesome hypo, Hans.