Patents Directed to Human Organisms

A major problem with the soon-to-be-enacted patent reform act (H.R. 1249) is that its poor wording inevitably leads to uncertainty about how the law will be interpreted by the courts and by the patent office (USPTO). And, that uncertainty potentially stifles the innovation process. There are a number of examples. One examples involves Section 33 of the Bill titled "Limitation on Issuance of Patents." The amendment adds a limitation that blocks the patenting of human organisms and reads as follows:

Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

The provision was originally proposed by Rep. Dave Weldon (R-FL) who was apparently motivated by his anti-abortion policy position. The apparent argument is that the statute helps preserve the sanctity of life by not allowing humans to be considered (intellectual) property.

Clearly, the statute would block the patenting that claims "a human organism" per se – and that is likely the primary intent of the provision. However, the proposal is poorly drafted because the language does not have clear limits or well defined terms. When is a patent claim "directed to . . . a human organism?"

Patently-O readers have already debated this provision in sua sponte comments.

The phrase "directed to" is not defined by the Patent Act or the USPTO Implementation Rules found at 37 C.F.R. § 1, et seq. However, the phrase often used by patent attorneys to describe the coverage of a particular claim and the statutory category. Even amongst patent attorneys, the usage is not uniform.

In my patent law course yesterday we discussed a common hypothetical claim of a method of treating a human disease. A major focus of the claim is certainly directed toward a human organism. The question for the courts and the USPTO will be whether new law the claim itself directed to a human organism? In all likelihood, the USPTO will not take an aggressive stance at implementing this particular rule – that means that any legal changes will not seen until years from now.

This general issue raises two important points that have also been discussed in the Patently-O comment section. First, although the Senate passage of H.R. 1249 likely signals the end of major congressional patent reform action for the next several years, it is likely that congress will implement a number of "technical amendments" that fix problematic language in the bill. As you may expect, the technical amendments often have major substantive impact. Second, this bill provides additional rulemaking and fee setting authority to the USPTO (and in-fact requires that the USPTO use its newfound power). These sources of future changes to the patent practice continue to require input from the practicing bar.

[Addendum - Sept 10, 2011] A few years ago, I likely would have not seen the same problematic ambiguity with the provision. As long as the claim was not formally claiming a "human organism" then the Federal Circuit would have no problem.   A handful of cases – with Myriad at the center – have begun to shift the legal view of the patenting of inventions that are directly tied to human activity. An important element of Myriad is the Obama Administration's support for the public interest plaintiffs through the Department of Justice. In addition, a growing line of cases have begun to disregard claim formalism as a distinguishing factor.   

99 thoughts on “Patents Directed to Human Organisms

  1. What is this “Wendell statute“?

    I do not see Wendell’s name on the bill, nor do I see any of the “Senate deal limiting the effect of the ban” language in the Congressional Record for this bill that accompanied prior similar language propositions.

  2. link to bio.org

    “BIO applauds the Senate’s passage of The Leahy-Smith America Invents Act as it marks the conclusion of a long and vigorous debate on how to best modernize our nation’s patent system. The improvements made by the bill will benefit all sectors of the national economy by enhancing patent quality and the efficiency, objectivity, predictability and transparency of the U.S. patent system.

    “Small biotechnology companies rely heavily on their patents to attract investment to fund the lengthy and expensive research and development process necessary to bring breakthrough medical therapies and other products to patients and consumers. Strong intellectual property protection is critical for these companies, and they will benefit from the improvements to our nation’s patent system made by this legislation.

    “By modernizing and strengthening America’s patent system, The Leahy-Smith America Invents Act will continue our nation’s global leadership in innovation while driving job growth throughout our economy…

    BIO represents more than 1,100 biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations. BIO members are involved in the research and development of innovative healthcare, agricultural, industrial and environmental biotechnology products.

    I guess these folks didn’t get anon’s memo about the Wendell statute. Or perhaps they did and simply chucked it into the trash.

  3. Wow. All out of banhammers in Missouri? If Mooney’s post above (the reply to Part 4) doesn’t cross the line, do we really want to find out where the line is?

    Incidentally, someone called out Mooney on the last paragraph of vitriol over at the IP canine blog, topic “America Invents…”, post 13. As for the second-to-last paragraph, do we really need MSNBC talking points and leftie marching orders littering an IP blog? It is also not clear what good a filter does when all Mooney has to do is substitute Xs to continue the vulgar and off-topic rantings.

  4. Malcolm crying for honesty and accusing others of sockpuppetry…

    Can you get any more ironic?

    At least he does not disappoint in getting taken to the woodshed in trying to discuss legal concepts.

  5. Ned,

    I personally don’t see this line of reasoning ridiculous at all. The Supreme Court text in Bilski clearly treats Business Method patents as a type or category of Method patents, rather than the more intensive scope of “categorically” that underlies your arguments.

    Perhaps this is why you had difficulty understnading the “Medical Methods” terminology on a previous thread.

    I advise you to try reading Bilski again without a closed mind on this matter.

  6. AI Cybersource is a big problem.

    But, you know, why do people continue to try and deny that a machine that represents information and then changes the information is transforming the information every bit as much as MM’s smelly test tubes.

  7. If you compare the two statements, they are not of the same scope.

    I think that is the point being made – the difference in scope comes from the play on the word “categorically” versus the phrase “as a category.”

    It is Ned that has injected the larger scope with the phrase “categorically,” and only he that has been arguing that word. All others have been speaking to the phrase. The phrase is clearly supported both in the legislation and in the case law.

    This is a non-issue, and the only dust being kicked up is the dust that Ned is creating. One would have to not read the legislative and case law to arrive at Ned’s conclusions. Such strained non-reading and selective reading simply is not reasonable.

  8. Anon, you said “as confimred by the majority opinion in Bilski) that business methods are patenteble subject matter.”

    Now you say, “I never did (and I do not think anyone else ever has) state that BMs are “categorically” patent-eligible per Bilski – in the sense of that word that means without limitation. There are no methods of any category that are categorically patent-eligible.”

    If you compare the two statements, they are not of the same scope.

    Bilski held that BMs are not categorically excluded, yet held a BM ineligible without explanation as to why it was ineligible. They gave no example of any BM that was eligible, none. Nor did they give us a hint of what would make a BM eligible.

    All nine justices endorsed the MOT, but not as an exclusive test. Breyer and Scalia opined that it was all but impossible to fail the MOT and still be patent-eligible.

    I personally think that BMs are, in fact, dead; otherwise the Bilski claims themselves would have been declared patent eligible. The claims were properly claimed, they comprised a series of steps and acts, some physical, and the result had a defined and practical business utility.

    A process is a series of steps or acts that has a practical result within the Useful Arts. If BMs are within the Useful Arts, then why were the claims in Bilski non eligible?

  9. Why yes indeed; including the likes of IBM, Microsoft, Intel, and GE.

    Gee, I guess they wouldn’t like that, now, would they?

    Ooops! Maybe they shouldn’t have pushed for this patent deform after all.

  10. that bubble of August being the greatest month for the anti-patent crowd has burst eh?

    Yes, August ended and it is now September. Congratulations, AI.

    [pats AI on head]

  11. Hey Mooney, that bubble of August being the greatest month for the anti-patent crowd has burst eh?

    Actual Inventors Rule!

    Anti Patent Crowd Drools!

  12. The fact that you admit that “The statute is part of a ploy (and admitted as such) by religious fundamentalists to “enshrine” in law their peculiar “beliefs” about the “sanctity” of cells that have the potential to become human beings.” indicates the very wide scope of the language about to become law,

    No it doesn’t indicate the “wide scope of the language” and I’ve already explained that to you. You really are a dissembling goon. Or maybe you have early onset Alzheimers (one can only hope — with any luck you’ll forget how to use a computer or fall down a flight of stairs and your bxllcrxp will disappear forever).

    As I noted already, all it indicates is that the fundies may attempt to use the statute to block patents on certain types of stem cells or they may use the statute to block patents on birth control compositions and methods. That’s not a “wide swath” by any stretch of the imagination. If you like fungelical types are going to try to use this statute to pick a fight with big pharma over methods of treating adult humans than you are simply ignorant. I don’t know what else to say. It’s hard to imagine someone could be so wrong-headed to believe that but you do occasionally present yourself as possessing a primative intellect of the sort that would allow you to go there. You’ve certainly made equally daft statements in this thread and you continue to do so (all the while with your head buried deeply inside your axx so that any and all attempts to slap some sense into you are rendered pointless). Not that you’d ever admit learning anything anyway. Did you ever get around to reading the text of the articles I sent you?

    The mention that Congress may need to “step in and make[] it xdjit proof” is an admission that you are losing this debate.

    I think you are confused as to what the debate is about. I’m happy to admit that a judge can construe a statute in an asinine way on behalf of an asinine plaintiff, particularly if the statute is written in a way which *could* be construed in an asinine way (true of many statutes, including the Wendell statute). My position is that this result is extremely unlikely and even if it were to take place (courtesy of some asinine, masochistic judge ignoring the rules of statutory construction and relishing being overturned with gusto by a higher court that doesn’t enjoy having its time wasted by dxpshxts) the alleged problem will be fixed in two seconds.

    So who really cares about the alleged ambiguity of the term “directed to” statute, other than you and some bloggers with various degrees of pointy-headedness. The answer is nobody.

    The “human organism” language — that’s a bit different, as I’ve been pointing out for some time now.

    you have not shown any legal basis for not construing the broad words of the soon to be law for their plain meaning

    There you go again. You are a dissembling goon. A l-i-a-r, and a rather relentless one at that. It’s also creepy that you keep incorporating various phrases of mine into your own lexicon. I’ve seen that behavior here before. You need to get a life. Spend some time learning how to become an honest human being.

  13. Malcolm,

    That’s not a substantive reply, even if you did get in some _xx_, some accusations, and some handwaiving, a discussion on legal principles might be more effective (and referencing your earlier statements is not effective because those have been refuted).

    I am still hopeful that you act like an attorney here.

  14. NAL: If you had seen Kevin’s comment, you would not have used that link,

    Wrong, NAL, for the reasons I already provided to you.

    Did I mention that you are a dissembling goon?

    And of course, you end with the false premise of something being taken away

    Look, dxxchebag, that is your premise, not mine. My premise is that while the statute could have been written better, there is microscopic danger of a gigantic swath of rights (including prospective rights, dxxchebag) to all claims related (or “directed”) to human beings being “taken away” as a result of that poor drafting. It’s just not going to happen. Who is actually worried about this happening? Not me. Not my clients. Is Dennis worried? Seems to me like he was throwing you a bone. How did it taste?

    “At least, it’s not often used to take away the rights of corporations.” when it has been shown to you that nothing extant is touched, that this pending law is EXPLICITLY a reformulation

    You seem to be suggesting that Wendell’s statute codifies into the Federal law the USPTO policy regarding claims to human organisms that has been in place for years. If so, I agree.

    Tellingly, I notice that you STILL have not commented on the lack of Congressional Record limiting this patent ban language

    I don’t comment on it because it’s not going to a dissembling goon and, yes, it is growing tiresome addressing your endless stream of obfuscations and attempts to play the fxxl.

  15. Ned,

    As noted below, your question is flawed. I never did (and I do not think anyone else ever has) state that BMs are “categorically” patent-eligible per Bilski – in the sense of that word that means without limitation. There are no methods of any category that are categorically patent-eligible.

    I hope this is just an over-reading on your part regarding the actual patent law concerning business methods as a category. It is not fathomable to me that you really think otherwise. If you do, then you will have to explain to me how to read both 35 USC 273 and the Bilski Supreme Court decision, because to my simple reading skills, it is quite evident that business methods as a category are patent eligible. Are you being pedantic for a reason?

    I really do not understand the fuss you are having over this topic.

  16. I saw Kevin’s comment.

    Not likely. If you had seen Kevin’s comment, you would not have used that link, as Kevin’s comment goes against the point that you were trying to make. Saying you saw that comment is admitting that you tried to give a flawed argument. Either you are dishonest or stxpid (or both). Your attempted spin now of saying that Kevin goes a little bananas belies the fact that his response was anything but bananas. It was a calm, collected, and measured response affirming that the language is more extensively limiting than most people believe. In fact, your spin is as off as can be, since Kevin did not go bananas at all. Not like you going bananas yesterday with about a dozen “binge” postings that were empty in the critical legal argument department.

    And once again you perpetrate the false view that all existing pharma patents are soon to be held unlawful. There is no such retroactive provision. Keep up.

    And once again all you offer is handwaiving zero-chance this or that without any legal argument. You claim a future fact without any basis other than your say-so. Your say-so does not garner anything. Such does not get you very far in a legal discussion. Not these days, anyway.

    If indeed you are a lawyer, you should act like one and make legal arguments, not resort back to the failed methods that characterize your pseudonym.

    But thank you for showing there is a crack of realization evident in your latest post. The mention that Congress may need to “step in and make[] it xdjit proof” is an admission that you are losing this debate.

    You then go on a rant about different patentable arts that has no place in the current discussion. Focus on and win the current discussion before you go on your larks. Otherwise, you just look like a kook with a tinfoil hat. That’s just the way it is.

    Your excursion into the “Myriad kerfuffle” is self-serving and contradictory. At the same time that you complain about “ less to do with bad feelings about patents on new methods for curing or treating breast cancer, you state “Perhaps even more importantly, there was an underlying privacy/individual rights issue in Myriad (“Who Owns Your Genes?” headlines, etc) that surely interested the ACLU.” The fact that you admit that “The statute is part of a ploy (and admitted as such) by religious fundamentalists to “enshrine” in law their peculiar “beliefs” about the “sanctity” of cells that have the potential to become human beings.” indicates the very wide scope of the language about to become law, and indicates a very real purpose for the broad interpretation – a legitimate interpretation that scares you enough to bring the vocal binge that we saw yesterday.

    Tellingly, I notice that you STILL have not commented on the lack of Congressional Record limiting this patent ban language in this bill that may have been present with past “Weldon Style” amendment attempts. The lack of this Senate deal is critical. Your lack of commenting on that lack is critical. You simply do not get to assume that the Senate meant to include that deal-of-scope-of-ban limitation, but forgot to include it. By not including it, the Congressional Record cannot impose a limitation to the patent ban scope. This is simple statutory construction basics. Keep up.

    Continuing, it is audacious of you to state that “the words of the statute can be construed, and reasonably so, to be more limiting than most people would actually think” is a pretty weak statement, given that you have not shown any legal basis for not construing the broad words of the soon to be law for their plain meaning. Your prior attempts were flawed and disposed of. No new legal reasoning has been offered. Even a “pretty weak statement” grounded in solid statutory construction principles vastly outweighs the conjecture and handwaiving that you flail about with. The onus is on you to overcome this “pretty weak statement.” So far, you have utterly failed.

    And of course, you end with the false premise of something being taken away “At least, it’s not often used to take away the rights of corporations.” when it has been shown to you that nothing extant is touched, that this pending law is EXPLICITLY a reformulation, and you have not addressed these critical elements.

    Such does not get you very far in a legal discussion. Not these days, anyway.

  17. I’m guessing it was an accident that it got here in the first place, but can you (Ned, AI, “anon”, “simple minds”) try to keep this biz method sirkjirk in the other thread where it belongs?

  18. You do realize that “categorically” does not mean the same thing as “as a category” (which is the actual argument being used).

    That’s about as simple as an answer that is necessary to end this ongoing debate.

    Ned, please stop trying to get this wrong.

  19. Ned,

    You do realize that “categorically” does not mean the same thing as “as a category” (which is the actual argument being used).

    No one is saying that Bilski categorically allows business method claims. Your strawman is on fire.

  20. The Diehr Supremecy Clause is the cabin built on top of the Ned-Proof Bunker.

    Now fortified with Congress not removing the law of 273, Ned must accept the inevitable or continue looking the fool and false gameplayer.

    Scoreboard: add 14 points to the Inventors team, add 11 points to the Inventors team. Everytime Ned plays the defense of l i e s, add another 11 points. The rout is on.

    ! ! ! Bilski 14 ! ! !
    ! ! ! Bilski 11 ! ! !

  21. Two rallying cries from the Bilski decision:

    The Ned-Proof Bunker:

    ! ! ! Bilski 11 ! ! !

    The Diehr Supremecy Clause:

    ! ! ! Bilski 14 ! ! !

    Both by the majority of the United States Supreme Court.
    Both now solid with Congress not overriding them when they had the chance.

    Weep away all you defilers. But do so on the side of the road and out of the way of progress.

  22. Ned is choking.

    ! ! ! Bilski 11 ! ! !

    Ned is choking that this impending law maintains the law of 273 thereby cementing in the bunker of Business Method Patents.

    Ned, rather than libel someone else by accusing them of an inability to read, why don’t you read the law of 273? Then read how the Supreme Court affirms that Business Method Patents are defined as legal. Yes, read this at:

    ! ! ! Bilski 11 ! ! !

    And after reading, then can you put away your false logic of trying to conflate a particular claim with the category? – Bilski did not claim ALL business methods, his claim was to a particular business method and that particualr business method claim was faulty. This type of faultiness can happen in any category of method claim and not just business methods. This was explained to you, but you decided to play your I-dont’t-know-what-you=are-talking-about game and feign ignorance. You were called out on your game playing and you erupted in your usual dishonest tricks of hurt feelings, name calling, accusations and everything else except admitting the plain and simple truth. People see right through that type of game. You must realize by now that you only hurt yourself by doing that type of thing.

  23. anon, may I ask you a simple question:

    If BMs are categorically patent-eligible per Bilski, as you say, then just why did the Supreme Court unanimously hold the claims in Biksi to be not patent-eligible? After all, the claims claimed a classic and well known Business Method?

    Anon: BMs are patent eligible.
    Biksi claims: BMs
    Supreme Court: Bilski claims are not patent eligible.

    Anon, something is wrong with your thinking.

  24. I had to laugh at Malcolm’s quote to the PatentDoc’s site (but missing Kevin’s comment

    I saw Kevin’s comment. As you probably are aware, Kevin Noonan goes a little bit bananas 92.8% of the time any chem/bio patent is invalidated. I’m not surprised that he would wring his hands over the imaginary possibility that all pharma patents with post-Reform Act filing dates are soon to be held unlawful. That’s simply what Noonan does. He can’t help myself.

    But the fact remains, there is zero chance of that happening in the US. Zilcho. Goose egg followed by percent sign. The void. Why waste your breath? Either the statute gets construed correctly or Congress steps in and makes it xdjit proof, with nearly every one of our representatives bending over backwards to complain about judicial activism on the part of the xdjxt who messes it up.

    I can’t say I would be terribly saddened if this was *not* the case and our leaders were compelled to do something to make it easier for generics to invalidate, say, patents on formulations of old (off-patent) but effective/desirable medicines. But even if our leaders were compelled to do something, they wouldn’t do this. As shockingly ignorant as the citizens of the US are, the idea of a company being rewarded for discovering an effective new drug is far more palatable than the idea of a company being rewarded for discovering a “new” way to shovel a bunch of advertisements down your throat or a “new” way to skim money off ancient transactions. That’s just the way it is.

    The impetus for the Myriad kerfuffle (which Dennis links with this statutory construction issue) had less to do with bad feelings about patents on new methods for curing or treating breast cancer, but rather bad feelings for patents that had the potential (depending on the whims of the patentee) to interfere with the ability of institutions (public and private) to discover those new methods and cures. Perhaps even more importantly, there was an underlying privacy/individual rights issue in Myriad (“Who Owns Your Genes?” headlines, etc) that surely interested the ACLU.

    The civil liberties issue with this statute is hardly a secret. The statute is part of a ploy (and admitted as such) by religious fundamentalists to “enshrine” in law their peculiar “beliefs” about the “sanctity” of cells that have the potential to become human beings. Never mind that such cells flow down our country’s txxlets or end up in the wastebasket every day without anyone shedding a tear. The statute will surely be paraded about by the fundamentalists whenever they see fit do so as “proof” of something or the other. And note that the statute does not ban methods of denying women access to medical care. Embryos first, ladies and gentlemen. After all, they are “innocent.”

    the words of the statute can be construed, and reasonably so, to be more limiting than most people would actually think

    That’s a pretty weak statement. I might even be inclined to agree, although the “more limiting” construction that started this conversation is hardly a “reasonable” construction given the usual canons of statutory construction. “Construe in a vacuum, as if you were born yesterday and trying to accomplish as much damage as possible” is not an often-used canon of statutory construction. At least, it’s not often used to take away the rights of corporations. Not these days, anyway.

  25. Well, no one can fault Malcolm for trying to engage and hold his own in an actual legal discussion.

    More than as is typical for him, he actually made an effort at putting forth substantive legal positions, and should be commended for doing so.

    It’s too bad that each and every position was dismantled and he ended up in a “flailing” blitzkrieg of posts replete with _xx_, accusations, political and other philosophical slandering (bordering on the “tinfoil” hat level of people conspiring to control womyn’s “tinkles”), additional conclusory statements and the more traditional such Malcolm postings, all of which, by the way, do not advance the position of the “desired” statutory construction (and last I checked, “dissembling goon” has zero legal effect, even if said nine times in a twenty minute span, and no matter how much fun Malcolm had on that little binge).

    Mind you, I am not saying I agree with the argued statutory construction, but given the congressional record (or rather, the lack of one – including the absence of any special Senate-Weldon patent ban limitation deal), the words of the statute can be construed, and reasonably so, to be more limiting than most people would actually think. I had to laugh at Malcolm’s quote to the PatentDoc’s site (but missing Kevin’s comment affirming the opposite view that Malcolm wanted – and which, with Prof Crouch’s view add a bit of legitimacy that should make even the “would you be comfortable” crowd pause). While Gene Quinn is (obviously) not respected by Malcolm, he is respected by the larger patent community, and what Gene had to say about statutory claim construction (regardless of how Malcolm feels about the man personally) is spot on. I am reminded by the Prof. Duffy point awhile back, that likewise was greeted initially with disbelief, but sparked one of the quickest congressional actions this country has ever seen (for such an administrative matter as authority to appoint judges).

    It has indeed been an interesting conversation and I hope that Malcolm can calm down and attempt to put forth an actual legal rebuttal to the valid counter arguments raised.

  26. Ned,

    I am sure that you are aware that the “gingerness” of the soon-to-be law in section 18 has absolutely no effect on the existing portions of Title 35 that emphasize (and as confimred by the majority opinion in Bilski) that business methods are patenteble subject matter (specifically, 35 USC 273).

    In fact, those sections will be cemented in place now that Congress has acted after Bilksi and have not removed those sections. It’s about time you acknowledge this.

  27. We all know that “technological” was the patent-eligibility standard used in Musgrave by Rich, leading to In re Benson, and that In re Benson was overturned in Gottschalk v. Benson. Congress in defining a patentable “data processing for business” method or apparatus in Section 18 of the act, used the overruled standard, albeit with the caveat that it was not to be used to define patentable subject matter.

    But, just how are courts going to make a distinction?

    Reference Section 18 of the act:

    (d) Definition-
    (1) IN GENERAL- For purposes of this section, the term ‘covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

    (2) REGULATIONS- To assist in implementing the transitional proceeding authorized by this subsection, the Director shall issue regulations for determining whether a patent is for a technological invention.
    (e) Rule of Construction- Nothing in this section shall be construed as amending or interpreting categories of patent-eligible subject matter set forth under section 101 of title 35, United States Code.”

  28. Eyes this “nxtjob view” as you label it is most decidely not just a fringe view.

    Yes, it is.

    There is a very real growing movement to recognize that people have a fundamental right to health care and that patent rights (such as to pharmaceuticals) must not interfere with such a fundamental right.

    That’s not the nxtjxb view I was referring to. I was referring to the nxtjxb view that the statute will be construed as you seem to think reasonable and upheld by a court that matters (i.e., not some district court with a 100 year old fossil on the bench). That is surely a “fringe” view. Again: the view that the Wendell statute will be construed to ban patents on all pharmaceuticals (but not, apparently, patents on everything that touches a human being, for reasons that the sockpuppets don’t provide) is a “fringe” view. That was not the intent of the statute and such a construction would be unjust and absurd, for all the factual reasons I have provided in this thread and others.

    I can imagine that you are no longer so keen on “WHOOO-HOOOOOO!!!!!!!!!!!-ing anymore.

    Just so it’s perfectly clear: I don’t personally have a problem with banning patents on methods of treating human beings and if a majority of people in our country favored banning patents on pharmaceutical compositions, so be it (I won’t hold my breath). Also, I am one of those people who believe that access to basic health care is a fundamental right of US citizens. So, uh … WHOOOHOOOOOO!!!!!! My views on that subject do not require me to dissemble and support ridiculous constructions of statutes whose meaning is perfectly clear enough. I’m sure that last statement is going to be a difficult one for you to process, sockie. A lot of people who comment here have a hard time separating their “analysis” of the patent law from their pocketbooks.

  29. Dennis: A few years ago, I likely would have not seen the same problematic ambiguity with the provision. As long as the claim was not formally claiming a “human organism” then the Federal Circuit would have no problem.

    Three points: first, yes the term “human organism” can be twisted to mean all kinds of things if one’s mind is willing.

    Second, I don’t believe it’s accurate to suggest that the Federal Circuit “would not have a problem” with claims that were informally drawn to “human organisms.” As I have already noted (several times) and as Wendell himself ackowledges, the PTO has for many years been in the practice of rejecting composition claims to human cells where those claims could be reasonably construed to cover cells in a human body. The policy behind that practice is that you don’t want infringers to be sueing people for being born with or acquiring (naturally or not) cells that happen to comprise, e.g., a claimed novel gene sequence. Remember the significane of the term “isolated”?

    Third, as I noted already, the ambiguity of the phrase “human organism” has been acknowledged, at least in terms of its encompassing embryonic cells or cells that could potentially become a human organism (which, given today’s technology, includes all human cells). It’s not clear how a court will resolve that issue. It is however crystal clear how a court will resolve the issue of whether Wendell’s statute prevents claims to all pharmaceuticals and all other non-drug compositions or method relating to a humans as suggested by certain commenters (and you, Dennis? really?).

    A handful of cases – with Myriad at the center – have begun to shift the legal view of the patenting of inventions that are directly tied to human activity.

    Say what? What does Myriad have to do with “human activity”? And doesn’t the fact that the ACLU was crushed (and will be crushed at the Supreme Court) with respect to their composition claims mean anything? If you are suggesting that the courts are focusing more claims that encompass or are “directed to” mental steps, I agree and I’m all ears, Dennis. Please continue talking about that! The courts certainly will be focusing more and more on that, and for good reason: they can’t avoid not focusing on mental steps without being inconsistent and ludicrous.

    In addition, a growing line of cases have begun to disregard claim formalism as a distinguishing factor.

    Is that really happening? And is it a new phenomenon? Regardless, equating a pharmaceutical composition with a “human organism” seems to be an incredible stretch that would make the analysis in Cybersource seem like the most logical and straightforward analysis in the history of patent law.

    An important element of Myriad is the Obama Administration’s support for the public interest plaintiffs through the Department of Justice

    Again: they lost predictably and miserably on the composition claim and they won predictably and correctly on the method claims. Novel isolated DNA molecules are not human organisms. Never were, never will be. Take it to the bank. If you are suggesting that the Obama administration is going to support a court-directed or legislative initiative to ban patents to methods or compositions for treating humans …. no, I won’t go there. My gosh, Kevin Noonan would shave his head into a mohawk and start stalking Obama within an hour of that happening.

    Sheesh, Obama himself is out there bragging about the patent reform bill and all the jobs it’s going to create. The Reform bill includes a blatant corporate handout to a pharma company so they can continue to assert a patent on a pharmaceutical that treats human organisms. Try to square that fact with the bizarro world interpretation of the Wendell statute being peddled upthread.

  30. the “author of the statute” is not the same as the author of the currently passed legislation, nor the same as the author of the first article you linked to.

    I never claimed otherwise. Wendell is quoted in one of those articles, dxpshxt.

    You really are a dissembling goon. It’s difficult to argue with dissembling goons like you but thankfully I have lots of experience (yes, creationists and intelligent design proponents are good for something ;)

  31. Let’s also be clear that the words of the bill for this matter are not retroactive, speaking only to new patents issuing, and thus your handwaiving of “destroy the patent rights of hundreds, if not thousands, of patentees” is mere blustering hot air.

    Oh look, now sockie is playing cute little games. Because if past patent rights are not affected and only the rights of pharma applicants going forward are affected, all my arguments about this statute are meritless, right? LOL.

    Dissembling goon. <— sockie

  32. Except the errors in logic here on how the funding of the agency works only goes to show that the writers of the article you cite (which was NOT the author of the statute, as you mistakenly claim)

    I never claimed that the author of the statute was the author of the article. Once again: you are a dissembling goon. Maybe you should actually read the article?

    Without any such additional items, the full force and effect of the plain statutory language will be the law

    Utterly beside the point. We’re discussing what the effect of the law is, not whether it is the law or not. Once again, you are a dissembling goon.

    You do realize that you are coming off like a dissembling goon, don’t you? You are flailing miserably.

  33. This is an argument that assumes the result.

    It’s not an “argument”, it’s a principle of statutory interpretation that you begged me to provide (because you are a dissembling goon who refuses to try to understand readily comprehensible statements of those with whom you disagree) and then thanked me for providing (because you’re a patronizing dxck on top of being a dissembling goon).

    Your own first article reference points to the types of people that would find the broad and plain meaning not at all absurd nor manifestly unjust

    You mean people like Wendell, the author of the statute, who admits that the statute was intended to keep people from claiming human beings and not intended to keep people from claiming pharmaceuticals? Those people? The very people who would admit in one second that they had and have no intention of blocking all compositions and methods drawn to treating humans? Again, call Wendell up. He probably owns stock in one or more pharma companies. Ask him if “justice” would be served by construing the phrase “directed to” as you suggest.

    Once again, your failure to acknowledge these basic facts and promote instead ludicrous, incomprehensible arguments that are worthless on their face illustrates why you are a dissembling goon.

    Keep it up, sockie. This is fun.

  34. The language itself “directed to” has an unambiguous … meaning.

    This is absolutely untrue and illustrates precisely why you are a dissembling goon.

  35. Show me where in the congressional record there is a statement that would suggest that the Wendell amendment is intended to destroy the patent rights of hundreds, if not thousands, of patentees whose compositions and/or methods affect one or more aspects of a “human organism”.

    Another goal post movement – Let’s be clear Malcolm – I do not need the Congressional Record. Pay attention now – I only need the law itself. The law EXPRESSLY states that this is a re-formulation of the patent law.

    You have the plain text. You can understand what that plain text plainly says. You can see that there is no special Senate agreement (as was mentioned in any merely similarly worded prior Congressional Record). If you want something other than the plain words to carry the force of law, it is up to you to supply some such facts in this Congresional Record.

    Let’s also be clear that the words of the bill for this matter are not retroactive, speaking only to new patents issuing, and thus your handwaiving of “destroy the patent rights of hundreds, if not thousands, of patentees” is mere blustering hot air.

    So far, all you have done is waive those hands of yours (and bluster)(and move some goal posts)(and get really upset)(and close your eyes really tight).

    ALSO – see the [Addendum - Sept 10, 2011] put up by Prof. Crouch, which indicates that this “nxtjob view” as you label it is most decidely not just a fringe view. There is a very real growing movement to recognize that people have a fundamental right to health care and that patent rights (such as to pharmaceuticals) must not interfere with such a fundamental right. I can imagine that you are no longer so keen on “WHOOO-HOOOOOO!!!!!!!!!!!-ing anymore.

    Times, they are a’changing.

  36. [Fetus worshippers] want to make birth control illegal or unavailable anyway. It’s part of their overall agenda to control what people do with their tinkles, especially women and most especially unmarried women. If you don’t recognize this fact, you’re either from another planet or you’ve been living in a cave for your entire life.

    Repeated here so it’s clear that I was talking about you. I know you don’t need more information on this topic so I’m not going to provide it to you. It’s 2011. Anyone who disagrees with the italicized proposition is ignorant or a liar
    (the latter, of course, being a 100% accurate description of nearly all fetus worshippers when confronted with their agenda in a public setting where their views are subject to scrutiny). And oh how they hxte it when someone points that fact out!

  37. Part 4 fn filter thank you for not mailing this in and simply handwaiving your position.

    Please go eff yourself. My “position” regarding the construction of this statute and the legal reasons underlying it (and the positions of others who have commented in agreement with my position) have been crystal clear from the beginning to anyone and everyone who isn’t trying to be a dense, trolling prxck.

    You’re free to disagree for any ludicrous reason that you want to but stop being a complete xxxhole and stop pretending that this statute represents a serious threat to every pharmaceutical patent or application. It doesn’t. Period. The moment some dxpshxt tries to make it work that way, they’ll be shut down, either by the court or Congress, for the exact reasons that I and others have been providing to you.

    Thanks in advance for not understanding anything I’ve written. Please return to the comfortable lap of your master where your endless idxocy will be most appreciated.

  38. The current legislation DOES clearly state that the legislation is not a mere codification of existing principles and case law

    Show me where in the congressional record there is a statement that would suggest that the Wendell amendment is intended to destroy the patent rights of hundreds, if not thousands, of patentees whose compositions and/or methods affect one or more aspects of a “human organism”.

    Just show me the statement. In the absence of such a statement, you’ve got nothing. All the evidence and the correct application of the doctrines of statutory construction supports the reasonable interpretation suggested by myself and many others.

    the ones that you have supplied are not up to the challenge.

    Other than wingnut xxxholes like Limpballs, the propagandists on Faux News, and our regular txxbxxger commenters here, I don’t think I’ve ever seen a more blatant example of projection.

    Just for the record, let me add that Gene Quinn is a big fat dxckhxxd crybaby. His blog sxcks and so does everyone who links to his blog. I don’t see any reason to read it, ever. Dude is the biggest self-interested shill on the planet, literally and figuratively.

  39. [link to IPWatchdog NOT ALLOWED]

    That’s funny. Also reasonable. But mostly funny.

    Your clear statement rule is as inapplicable here as it was above.

    It’s perfectly applicable and if you don’t believe me, then you’re an idxxt.

  40. to ensure that voters are able to hold the appropriate legislators responsible for the modification

    Voters are able to hold the appropriate legislators responsible. If you open your eyes and read the bill, the names are right there.

  41. Malcolm,

    Your clear statement rule is as inapplicable here as it was above. You need to find a new pet phrase.

  42. Regarding your “Clear statement rule,” you state “When a statute may be interpreted to abridge long-held rights of individuals or states, or make a large policy change, courts will not interpret the statute to make the change unless the legislature clearly stated it. This rule is based on the assumption that the legislature would not make major changes in a vague or unclear way, and to ensure that voters are able to hold the appropriate legislators responsible for the modification.

    Nice, another goal post move that is quite easily defeated. The current legislation DOES clearly state that the legislation is not a mere codification of existing principles and case law. VERY EXPLICITLY, this legislation announces that this is a major re-formulation of law. For this type of legislative change, your argument DOES NOT apply! Further, once again you assume a “the language is vague or unclear” which again is assuming a conclusion you have not established – the language does have a well understood meaning. Now the actual language used may not be what you had thought it to mean (or even what the drafters thought it to mean, for which point we do not know since THIS Congressional Record is blank). But the simple guidelines for statutory construction are CRYSTAL CLEAR.

    Let me introduce some comments from Gene Quinn on this topic:

    More problematic, however, are those sections of the America Invents Act that are clear on their face but which were likely not intended as written… The law is extraordinarily clear when it comes to the use of Legislative History. Legislative History can only be consulted when the terms of a law are ambiguous. If the terms of the law are clear based on the plain meaning of the words used then courts are not supposed to turn to the Legislative History. You turn to Legislative History only to clear up ambiguities. This rule makes all the sense in the world when you realize that Legislative History includes statements by Members of Congress who may or may not actually be saying things that are accurate, or may be making grandiose statements about what the entire Congress intended. Even under the best of circumstances Legislative History is uncertain and easily manipulated, which is why when the law is clear it is off limits.

    [link to IPWatchdog NOT ALLOWED]

    So Malcolm, thank you for not mailing this in and simply handwaiving your position. We have now established that you will need new arguments to support your position, as the ones that you have supplied are not up to the challenge.

    It appears that the nxtjobs on the right are not the only ones that: “And it doesn’t really matter what the statute says or what anybody else thinks. They don’t care and they never will.” Nxtjobs on the left are equally capable of the same actions.

  43. Regarding your “Deference to Administrative Interpretations (US Chevron deference),” you state “If a statute administered by an agency is ambiguous with respect to the specific issue, the courts will defer to the agency’s reasonable interpretation of the statute. This rule of deference was formulated in the US by the United States Supreme Court in Chevron v. Natural Resources Defense Council, 467 U.S. 837 (1984).

    Nice, another goal post to be moved back. The language itself “directed to” has an unambiguous albeit rather broad meaning. Administrative Interpretation does not come into play in such cases (see the PTA adjustment case for an example). Further, even if somehow you think there is ambiguity, there are substantive rights at work and the Office does not have Chevron deference in rulemaking on substantive rights (see Tafas). Your argument of Chevron does not apply.

    Regarding your “Avoiding Absurdity,” you stated “The legislature did not intend an absurd or manifestly unjust result.

    This is an argument that assumes the result. To some (and you even give a group), the result is neither absurd nor manifestly unjust. Your own first article reference points to the types of people that would find the broad and plain meaning not at all absurd nor manifestly unjust. This argument thus fails. Further, this argument – if you accept it, would also fully protect those who hav ecome to depend on Beauregard claims – do you really want to take that stand?

  44. Also, the article you reference is full of holes, for example:

    language in HR 1249, the America Invents Act, a bill pending in the House of Representatives, will codify an important p_ro-life policy rider included in the federal appropriations bills since 2004.

    Except that is not in the Congressional Record and is only mere conjecture. As will be noted, this legislation is not mere codification.

    Making this policy permanent is an important p_ro-life action that will ensure that the Weldon amendment does not have to be considered and reapproved every year, one Congressional p_ro-life source informed LifeNews.com today. However, inclusion of the Weldon amendment is even more essential for p_ro-life advocates because H.R. 1249 removes USPTO funding out of the annual appropriations process (fee diversion). Therefore, if the Weldon amendment is not codified in H.R. 1249, the amendment would no longer apply to the USPTO. As a result, the fee diversion component in H.R. 1249 would nullify the Weldon amendment.

    Except the errors in logic here on how the funding of the agency works only goes to show that the writers of the article you cite (which was NOT the author of the statute, as you mistakenly claim) do not understand what the situation actually is.

    Even regarding the earlier Weldon amendment efforts outside of the current legislation record,: “Also at that time, Weldon said biotech firms have been fighting his measure “tooth and nail.” However, he said p_ro-life lawmakers reached an agreement with members of the Senate to make it clear that the patent ban wouldn’t apply to other kinds of research.

    Critically, it is important to note that the statement says AT THAT TIME – AND currently there is no such other senate agreement about the patent ban in this legislation and Congressional Record. Without any such additional items, the full force and effect of the plain statutory language WILL BE THE LAW, and this is obviously beyond any (previous and now nonexisting) senate agreement to limit the patent ban.

  45. Malcolm Mooney said

    the first link has already been exposed as, well, let’s be generous and say “errant”
    Really? I must have missed that. Did the author of the statute lie when he made his statements about what the statute was and was not intended to cover?

    Nice, now move the goal posts back, as the “author of the statute” is not the same as the author of the currently passed legislation, nor the same as the author of the first article you linked to. Further, there may be similarity of words between the earlier Weldon amendment and the current legislation, but there is no Congressional Record on this currently passed legislation.

  46. It’s not a “pointless point”.

    Clear statement rule

    When a statute may be interpreted to abridge long-held rights of individuals or states, or make a large policy change, courts will not interpret the statute to make the change unless the legislature clearly stated it. This rule is based on the assumption that the legislature would not make major changes in a vague or unclear way, and to ensure that voters are able to hold the appropriate legislators responsible for the modification.

    You and the rest of the Wendell amendment trolls really need to pull your heads out of your xxxholes.

  47. “A major focus of the claim is certainly directed toward a human organism. The question for the courts and the USPTO will be whether new law the claim itself directed to a human organism?”

    I agree the language is somewhat vague, but it does state

    “no patent may issue on a claim directed to…a human organism”

    instead of

    “no patent may issue on a claim with a focus or to a method, process or composition directed to…a human organism”.

  48. Malcolm,

    At first glance, the ACLU arguments in the “Who Owns You” gene patenting case seemed absurd and astounding – and yet they were enough to be heard in a Federal court.

    The point is that the conclusory comments on this board do not address the actual possible statutory construction. The position put forth for “directed to” as broad but not ambiguouos is a solid one. Arguments like “no sane person,” “that can’t happen,” and “would you be comfortable,” are not addressing the actual possible construction. They are weak arguments because there is no doubt that someone will be insane enough, they can happen, and someone will be comfortable enough to make them because the arguments – based on statutory construction are indeed plausible. Arguments relying on Congressional Record are a little better as far as legal standing, but the point is that this Congressional Record is empty, and the quotes from outside commentators do not avail, nor do the Congressional Records from previous Congresses.

    Your distraction into other political groups is also not availing, as who might attempt an attack does not address how they might attack.

    This could be an intersting conversation, but you must actually engage the conversation instead of being dismissive.

  49. nuke everyone else or nuke your only patent application…

    Yeah, I shudder at having to make that decision.

    Those aren’t the only two options, of course. Try to keep up, Hardwanking.

  50. cognoscenti will recognize that the 13th Amendment, which prohibits an ownership interest in a human being, should be sufficient to prevent patenting of human beings on Constitutional grounds and that the amendment to H.R. 1249 (as well as the Weldon Amendment to appropriations bills past and present) are not necessary.

    You’re correct. “Cognoscenti” may recognize that, but that hardly suffices for American fundies. Look at Florida. “Cognoscenti” will recognize that laws criminalizing cohabitation that are never enforced and most of the population finds revolting should be removed from the books. But that doesn’t stop txxbxggxr nutcases (including the Governor Scott) from fighting to keep them on the books in Florida because they have “symbolic value.” They certainly do have “symbolic value” now: they symbolize how deranged the Republican party has become in this country.

  51. the first link has already been exposed as, well, let’s be generous and say “errant”

    Really? I must have missed that. Did the author of the statute lie when he made his statements about what the statute was and was not intended to cover?

    Deference to Administrative Interpretations (US Chevron deference)

    If a statute administered by an agency is ambiguous with respect to the specific issue, the courts will defer to the agency’s reasonable interpretation of the statute. This rule of deference was formulated in the US by the United States Supreme Court in Chevron v. Natural Resources Defense Council, 467 U.S. 837 (1984).

    Avoiding Absurdity

    The legislature did not intend an absurd or manifestly unjust result.

    Clear statement rule

    When a statute may be interpreted to abridge long-held rights of individuals or states, or make a large policy change, courts will not interpret the statute to make the change unless the legislature clearly stated it. This rule is based on the assumption that the legislature would not make major changes in a vague or unclear way, and to ensure that voters are able to hold the appropriate legislators responsible for the modification.

    As Dennis notes upthread (correctly): the USPTO will not take an aggressive stance at implementing this particular rule

    That’s because the USPTO understands what the statute does and does not permit. I’m not sure why Dennis failed to mention that fact. Hopefully he discussed these canons of statutory construction with his students because there is no question that the statute will never be interpreted to apply generally to pharmaceuticals.

    That said, look for the fetus worshippers to go after birth control drugs and method patents based on the statute. As I said, it’s simply what those folks do. And it doesn’t really matter what the statute says or what anybody else thinks. They don’t care and they never will.

  52. hmmm, nuke everyone else or nuke your only patent application

    Yeah, I shudder at having to make that decision.

    [eyeroll]

  53. At any rate, cognoscenti will recognize that the 13th Amendment, which prohibits an ownership interest in a human being, should be sufficient to prevent patenting of human beings on Constitutional grounds and that the amendment to H.R. 1249 (as well as the Weldon Amendment to appropriations bills past and present) are not necessary.

    statutory construction: the words are not surplusage.

    therefore, the words must mean something….

  54. the first link has already been exposed as, well, let’s be generous and say “errant”

    and you should be aware that the prior years legislative record is not helpful for this legislation.

    as for the second link you provide, the good doctor’s exchange of comments says quite a bit:

    Claims “directed to” human organisms?

    Is medicine “directed to” a human organism?

    Aside from any “tracking” or “apparant” link, the “direct” reading of this amendment is far more extensive than you might be inclined to think.

    Posted by: Skeptical | June 16, 2011 at 12:40 PM

    Dear Skeptical:

    No doubt – there is mischief to be made here, which is why the language of the bill needs work. I don’t think legislative history will be sufficient.

    Thanks for the comment.

    Posted by: Kevin E. Noonan | June 16, 2011 at 12:58 PM

    so actually you have provided a link that is consistent with the “chicken little” view.

    might be nice if you did more than handwaive and actually formulated a legal argument (or at least understood the cut and paste links you waive with).

  55. After all, we just had the ACLU try to prevent someone from patenting “who you are”

    Huh?

    this alone should make people realize that this is not idle speculation.

    Sure seems like idle speculation to me.

    Again, I wouldn’t be at all surprised if some fetus worshippers use the statute to go after a patent to a method or drug used for birth control. But they won’t be relying on the “directed to” language. They’ll be relying on the “human organism” language.

    But they want to make birth control illegal or unavailable anyway. It’s part of their overall agenda to control what people do with their tinkles, especially women and most especially unmarried women. If you don’t recognize this fact, you’re either from another planet or you’ve been living in a cave for your entire life.

  56. NIMBY STILL have not seen a cogent legal argument that overrides the plain reading statutory construction advanced by these so-called scare-interpretations.

    Yes you have. Numerous arguments, in fact. What is your “legal argument” that the statute isn’t in fact limited to preventing claims on human beings and parts of human beings? Show me the case law that says that statutes must be interpreted as broadly as possible, regardless of the historical basis for the statute (as set forth in the congressional record, or based on undisputed publicly stated facts about statute).

    For example:

    link to lifenews.com

    Rep. Dave Weldon (R-FL), a pro-life doctor, was behind the original language that pro-life groups supported, saying a patent is a government-conferred property right and human beings shouldn’t be considered “property.”…

    Weldon said …pro-life lawmakers reached an agreement with members of the Senate to make it clear that the patent ban wouldn’t apply to other kinds of research.

    Another write-up inconsistent with the chicken little interpretation is here:

    link to patentdocs.org

    For cripes sake, you can call up Wendell yourself and he’ll gladly disabuse you of your fantasies.

    Dennis writes:

    However, the phrase ["directed to"] is often used by patent attorneys to describe the coverage of a particular claim and the statutory category. Even amongst patent attorneys, the usage is not uniform.

    So what?

  57. The bone of contention was the unsubstantiated claim that the defendent would not dare use a certain legal arguement because of the “Thermonuclear war” that would devastate the defendant’s own patent portfolio.

    Again, there is nothing at all unreasonable about the assumption. Happens all the time. Both patentees and accused infringers definitely worry about their own patents and they also worry about their prospective patents when they make arguments in court.

    I don’t see any evidence to suggest that they defendant did not engage in that practice in Cybersource.

    That argument looks even sillier when you try to move the goalposts

    The goalpost hasn’t moved. What’s silly is watching you dance around them like a fxxl after failing to score a point.

  58. So the intent to pursue B-claims at some point was certainly present

    No one said otherwise and that is not the bone of contention. The bone of contention was the unsubstantiated claim that the defendent would not dare use a certain legal arguement because of the “Thermonuclear war” that would devastate the defendant’s own patent portfolio.

    That argument looks even sillier when you try to move the goalposts.

    One single patent application, my oh my.

  59. unintended? Yes (that’s the point)
    extrapolated scare-interpretations? No (that’s also the point)

    STILL have not seen a cogent legal argument that overrides the plain reading statutory construction advanced by these so-called scare-interpretations. I have only seen conclusions presented as, well, as conclusions. This simple proposition now spans across three threads and no one has offered a statutory construction argument that supplants the plain meaning.

    I will even make it easy by repeating the plain meaning found in the first portion of the “or” statement:

    Directed to” is a phrase that merely means the same as to “refer.”

    Main Entry: refer

    Part of Speech: verb

    Definition: concern, apply

    Synonyms: answer, appertain, be a matter of, be about, be directed to, be relevant, bear upon, belong, connect, correspond with, cover, deal with, encompass, have a bearing on, have reference, have relation, have to do with, hold, include, incorporate, involve, pertain, point, regard, relate, take in, touch.

    And Dennis, the link above regarding the sua sponte discussion is the second discussion. The first was instigated by Anonymous on the thread Guest Post: An Empirical Exploration of First-to-Invent Versus First-to-File and can be found at:

    link to patentlyo.com

  60. Agreed. There have been some clearly unintended and strangly extrapolated scare-interpretations of this completely unnecessary statute suggested by some people.
    Even patents on the new technologies for growing human body replacement parts in a lab from stem cells would be bizare to bar by the bar language “a claim directed to or encompassing a human organism.” The old luddites in Congress will be the first to need them and afford them.

  61. Thanks for the pub number, FYI.

    From the specification:

    [0032]Suitable computer program code may be provided for performing numerous functions such as responding to requests, generating authorization decisions regarding a transaction, executing risk assessment tests on transaction data, and executing real-time and/or batch fraud detection processes. The program also may include program elements such as an operating system, a database management system and “device drivers” that allow the processor to interface with computer peripheral devices (e.g., a video display, a keyboard, a computer mouse, etc.).

    [0033]The term “computer-readable medium” as used herein refers to any medium that provides or participates in providing instructions to the processor of the computing device (or any other processor of a device described herein) for execution. Such a medium may take many forms, including but not limited to, non-volatile media and volatile media. Non-volatile media include, for example, optical, magnetic, or opto-magnetic disks, such as memory. Volatile media include dynamic random access memory (DRAM), which typically constitutes the main memory. Common forms of computer-readable media include, for example, a floppy disk, a flexible disk, hard disk, magnetic tape, any other magnetic medium, a CD-ROM, DVD, any other optical medium, punch cards, paper tape, any other physical medium with patterns of holes, a RAM, a PROM, an EPROM or EEPROM (electronically erasable programmable read-only memory), a FLASH-EEPROM, any other memory chip or cartridge, or any other medium from which a computer can read.

    [0034]Various forms of computer readable media may be involved in carrying one or more sequences of one or more instructions to the processor 202 (or any other processor of a device described herein) for execution. For example, the instructions may initially be borne on a magnetic disk of a remote computer 208. The remote computer 208 can load the instructions into its dynamic memory and send the instructions over an Ethernet connection, cable line, or even telephone line using a modem. A communications device 204 local to a computing device (or, e.g., a server) can receive the data on the respective communications line and place the data on a system bus for the processor. The system bus carries the data to main memory, from which the processor retrieves and executes the instructions. The instructions received by main memory may optionally be stored in memory either before or after execution by the processor. In addition, instructions may be received via a communication port as electrical, electromagnetic or optical signals, which are exemplary

    So the intent to pursue B-claims at some point was certainly present. I haven’t checked PAIR to see if they were originally filed and later deleted (to save money on claim fees).

  62. Publication: 20100005013

    Status: Non-Final Rejection 3/16/2011 (Interview Summary 5/5/2011)

    Coming up on 6 month window

    shudder

  63. Even better – it was a mere application.

    One shudders at the lengths these companies will go to to protect such jewels.

  64. Holy cow you just stole my joke. I was just about to say that Judge Posner would probably take this section a too far.

  65. How exactly is avoiding the destruction of your own IP by choosing your defense carefully a “conspiracy theory”?

    Talk to some litigators sometime. Better yet, talk to some litigators in a case with co-defendants and see how it works.

  66. Thermonuclear war and all that. Even the defendant in Cybersource was careful to avoid going “all the way” with respect to Beauregard claims

    Yes, because the defendant in Cyborsource and their massive patent portfolio of ONE application was considered TOO valuable…

    Mooney, please pick up your tinfoil headgear.

  67. I seem to recall that the lubricious coating patent was directed to a human orgasm. Is that patent invalid now?

  68. It seems to me

    Stop. The. Handwaiving.

    Drugs directed to humans are too valuable to lock up in any type of patent scheme. This legislation clearly endorse the view that such drugs should not be eligible for patent protection.

  69. I found it insulting because Dennis didn’t represent my views and I read this blog regularly.

    I might cancel my account if this continues. ;)

  70. Willy,

    Your 1. and 2. are separate statements (and are not independent and dependent claims, with one a more limited subset of the other) and cannot mean the same thing.

    the scope of that subject matter is contained within the legislative history of the Leahy-Smith America Invents Act

    If you have been following the comments, you would realize that the legislative history of the Leahy-Smith America Invents Act is silent on this matter (notwithstanding what various fringe groups – and fringe commentators – may have mentioned).

    Given the empty record, statutory claiim construction avails – and the language itself (“directed to”) is not ambiguous. The language may be broad, but it has a definite meaning (and no, just because some may feel that it cannot mean “that” does not mean that it actually cannot mean “that” – or to use your words “and its seems OK to assume does not mean that it is OK to assume).

    Do not assume you know how it will work. After all, we just had the ACLU try to prevent someone from patenting “who you are” and this alone should make people realize that this is not idle speculation.

  71. Dennis: In all likelihood, the USPTO will not take an aggressive stance at implementing this particular rule

    The PTO already does implement the rule, at least in its most reasonably construed form. I’m not sure how “aggressive” they are about it but I’ve seen the rejection myself (and I do my best to avoid it).

    that means that any legal changes will not seen until years from now.

    It’s hard to imagine an infringer raising the defense that their product is unpatentable under the statute. Thermonuclear war and all that. Even the defendant in Cybersource was careful to avoid going “all the way” with respect to Beauregard claims.

  72. Oh, for heaven’s sake. You’re talking about statutory construction, not claim interpretation, PTO style. Did anybody in your class point out that if a particular interpretation of a statute leads to absurd results then that particular interpretation is probably incorrect?

    If you take “directed to” and define it to mean “focused on” or “related to” you get the absurd result that the provision prohibits the issuance of patents on drugs or on personal grooming devices. It seems to me that we can pretty safely say that Congress did not intend to outlaw these patents. Isn’t it congressional intent that matters, not the broadest unreasonable interpretation?

    If this is the best example of the “major problem” promised by the first line of this article, then I’m not very concerned. With all due respect to your normally very fine publication, Dennis, but this posting is a waste of (cyber)space.

  73. Who cares? All of my claims are “directed to” examiners, and we all know the prevailing opinion round here about whether examiners are human organisms.

  74. The only real issue with this piece of legislation in this particular section, is whether or not patent attorneys are patentable subject matter.

  75. 1. No patent may issue on a claim directed to a human organism

    2. No patent may issue on a claim encompassing a human organism.

    Tomato – tomahto, fruit or vegetable?
    A human organism is what ever Congress says it is.

    Haven’t we learned anything from writing patent claims and the detailed written description to those claims? The scope of those claims are contained in the detailed written description that comes with the patent.

    The Leahy-Smith America Invents Act is not poorly drafted because the language does not have clear limits or well defined terms.

    The subject matter, “human organism” is contained within the statute and the scope of that subject matter is contained within the legislative history of the Leahy-Smith America Invents Act – contained within the Congressional Record. Of course members of Congress discussed “human organism” and that info is in the Congressional Record. The members of Congress certainly didn’t put that info in a court case or a Webster’s dictionary definition or even authorize some non-elected agency (the USPTO) to come up with a scope for “human organism”.

    Now, granted, the Leahy-Smith America Invents Act should have said something like “a claim having a claim scope that encompasses a human organism.”, but written language is not exact and its seems OK to assume some intelligence on the readers part.

    Yea, yea. I do know how it will work. “human organism” is going to go before the courts and their non-elected judges. If conservative judges define it, it will be pro life and if liberal judges define it, it will be pro abortion. They both will ignore what Congress said about the term, just like a patent examiner ignoring the patent written specification when asserting a scope for a claim term (the examiner will jump right to the dictionary).

  76. “A major problem with the soon-to-be-enacted patent reform act (H.R. 1249) is that its poor wording inevitably leads to uncertainty about how the law will be interpreted by the courts and by the patent office (USPTO).”

    That is an understatement. The AIA is fraught with these “language mines,” some of which (per Ron Katznelson) were deliberately inserted by the forces supporting this legislative monstrosity to “blow up” at an appropriate time in litigation. The “poster child” of these “language mines” is what does “publicly disclosed” mean in Section 3 of the AIA?

    Or what about the definition of “effective filing date” being “the actual filing date of the patent or the application for the patent containing a claim to the invention”? Note that the term “claimed invention” is deemed to mean “the subject matter defined by a claim in a patent or an application for a patent.” Does that mean the “effective filing date” is based on when the application is filed or when the “claim” (defining what the “claimed invention” is) shows up during patent prosecution?

    That’s just a sampling of the language drafting “mess” the AIA contains.

  77. I’ll bet that your patent classes are stimulating and enjoyable, Dennis, and that you are respectful of your students. Mizzou is lucky to have you.

  78. Speaking of ill defined terms, what, exactly, is a “non-practicing entity” or a “patent assertion entity?” Is that any patent owner who asserts a patent that they are not practicing or any entity that asserts a patent? That net could pull in some big fish.

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