Expanding Post-Grant Business Method Reviews: S. 866

By Dennis Crouch

Senator Chuck Schumer has proposed a short bill entitled the “Patent Quality Improvement Act of 2013.” S. 866. The purpose of the bill is to expand the scope of the transitional covered business method review. First, the S. 866 would eliminate the sunset provision of the bill making it permanent rather than transitional in nature. Second, the bill would expand the scope of covered business methods by eliminating the “financial product or service” limitation. This expansion should be seen as the next step toward expanding post-grant review to cover all patents throughout their lifespan.

Background: The American Invents Act created several new mechanisms for challenging patents through the Patent Trial and Appeal Board (PTAB). One of the most powerful of these is the new post-grant review (PGR) proceeding that allows patent challenges on any validity ground, including issues arising from 35 U.S.C. §§ 101, 102, 103 or 112.. However PGR is only available for first-to-file patents (i.e., patents relating to applications filed since March 16, 2013) and a PGR request must be filed within nine-months of the patent issuance. In addition to PGR, the AIA provides a special provision to allow expanded challenges of certain business method patents covered by the statutory definition. As with PGR, the covered business method review allows challenges for any validity ground. Although covered business method reviews are not limited by the timing requirement the statute does provide a set of important limitations.

Under the AIA:

  • Covered business methods are limited to those used in delivering “a financial product or service” and not be for a “technological invention.” The PTO rules provide that a “technological invention” is one that “recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.”
  • The Petitioner must either have been sued by the patentee or have Article III declaratory judgment standing in order to file the petition.
  • The transitional provisions are set to sunset after eight years.

The Patent Quality Improvement Act would expand the scope of Covered Business Methods in two manners: (1) by eliminating the sunset provision and (2) by eliminating limitation that covered business methods be directed toward a “financial product or service.” The new definition would read as follows:

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 an enterprise, product, or service, except that the term does not include patents for technological inventions.

If bill passes, the PTO would then have the opportunity to provide its definitions for the terms used here. At its broadest, the provision would make-available business-method reviews for new any patent that includes at least one claim that itself does not include a “technological invention.” If that is the purpose, we should wholly rewrite the provision to make it clear and straightforward: “IN GENERAL – For purposes of this section, the term ‘covered business method patent’ means a patent that includes a claim that is not directed to a technical invention.”

The Current USPTO Fees for filing a covered business method review is $30,000. However, since these claims are all associated with actual disputes that fee does not likely represent the most significant barrier to filing. In the nine-months since CBM reviews became available, petitions have filed a total of 25 reviews against a total of 18 patents.

86 thoughts on “Expanding Post-Grant Business Method Reviews: S. 866

  1. Ned,

    I do not know what you are refering to with a “vacation” of the appeallate opinion in Tafas. I refer to many things, including most of the conversations we have had that run for awhile until those conversations threaten your third party interest and are tanked by you (does the three steps to software patent eligibility ring a bell? how about the third party interest posting discussion?)

    Dishonesty does not only come in affirmatively stated items. It comes in purposefully misstating facts, law and what other people say. It is the largest quality problem when it comes to blogging on this thread, and we both know the number one perpetrator (hint, not you, but this person will just [shrug] and stand by as the amount of spin results in purposeful distortion beyond any ethical restraint). But you on the other hand, have no room to throw the honesty stone.

    C’est la vie.

  2. I don’t know exactly what Schumer wants to do, but I think his efforts might be better spent carefully carving out subject matter that he believes should not be patented.

    The AIA carved out tax strategies — deeming them to be as prior art. Perhaps we could do the same by defining abstract subject matter to be prior art. We then would have to define abstract subject matter:

    Abstract subject matter means subject matter that is not physical?

  3. staff, Jefferson did not participate in the constitutional convention and was of the view that one should not be able to patent abstract ideas.

  4. MM: “……the number of patents being granted is at an all-time high (and apparently having little or no effect on the employment rate)…..”

    That’s because the number of business method patents being granted are at an all time low. (If any are even being granted right now) And business method patents are of the type most needed by new entrepreneurs to get VC funding to go into business and create those new jobs that will boost the employment rate.

    But of course you and the rest of the anti patent crowd care nothing about small businesses, entrepreneurs and inventors creating jobs.

    You only care about pushing your anti patent pro socialist agenda.

  5. Computer encryption

    Again, if someone wants to keep their mind-blowing “technology” that makes a computer “capable” of “suggesting” which animated non-copyrighted video I should select for my kid to watch in the backseat of my self-driving car, they should go right ahead and do that. Nobody will ever figure out what magical awesomeness allows a computer to perform such a task, especially if the solution is “computer encrypted”.

  6. You just pointed out that I win no matter what, and then called it self-defeating…

    The damage from those numerous (far too numerous to count, even with a computer) Calvinball face sp1kes is showing.

    Sit down. Take another breather.

  7. most every secret nowadays heavily relies on encryption – computer encryption. Computer encryption which is (gasp) software.

    At first, I wondered whether you realize just how little sense that makes. It’s right up there with AI’s insistence that a claim covering any product you can sell is a business method claim.

    But then I realized it’s actually very clever. If we rid ourselves of the patent system (something every right-thinking strawman wants with all his heart), people will be forced to keep secrets. For which they will heavily rely on computer encryption. Which means they’ll have to develop computer software whether or not it’s patentable.

    I love your self-defeating ways.

  8. Your vacuousness, I am sure you realize (but in typical fashion, are being obtuse) that most every secret nowadays heavily relies on encryption – computer encryption. Computer encryption which is (gasp) software.

    I love your self-defeating ways.

  9. In software, we can expect everything to become a secret.

    A typical patent claiming a computer-implemented method of, say, “labeling” an email so you know it is from a “virtual friend”, does not contain any “secrets”. The claim simply describes what the computer is capable of doing and there is nothing about how that functionality is accomplished that is worth keeping “secret” from anyone.

    Somebody wants to keep a method of “scoring” job candidates a “secret”? Go right ahead. Or how about a computer-implemented method of shutting down Johnny’s credit card when he comes within 100 miles of Fort Lauderdale? Without the patent disclosure, nobody could ever being to guess how that could possibly be done!

  10. If we weaken the patent system we force inventors underground like Stradivarius and in turn weaken our economy and job creation. Worse yet, we destroy the American dream -the ability to prosper from our ingenuity for the benefit of our children and communities. Who knows who the next Alexander Graham Bell will be. It could be your son or daughter. It could be you. To kill or weaken the patent system is to kill their futures.

    Hyperbole much?

    Nobody is seriously considering “killing the patent system.” Likewise, nobody is proposing that the patent system should be “weakened.” What is being proposed is changes in the law which would make it easier to eliminate weak/invalid patents from the system and make it more difficult to assert or obtain those patents.

    As noted before, it is very strange indeed to hear these cries of doom from the patent t–b-gger crowd when the number of patents being granted is at an all-time high (and apparently having little or no effect on the employment rate). But that’s always the case with the patent t–b-ggers: they just want more patents, all the time. “Better examination” is the answer to everything. But to the t–b-ggers “better examination” does not mean hiring more examiners and training them to find better art and make better arguments with the existing art, but simply requiring the existing examination corp to work harder and (preferably) making it easier to obtain patents with broad scope by reversing KSR and the recent decisions on subject matter eligiblity.

  11. You don’t have to repeat yourself.

    (sigh), if only that were true – witness INANE’s post at 11:47 AM.

  12. the point that had the method been captured by the use of the patent system, we likely would have been much further advanced today with that knowledge.

    Sigh. Another arrow self-defeating through the red Calvinball of LB said.

    Surely the point is that this is not the kind of method that has ever, or will ever, be effectively captured by any patent system.

    Some things are worth more as a secret than any amount they could earn with a time-limited exclusive right. Those will never be patented, no matter how strong the system. They will never be valid arguments for maintaining or changing the patent system in any way.

    The point is that the method was lost and humanity was the poorer for that loss.

    Alas, all we have are awesome violins, not slightly-more-awesome violins. Except for the Strads we still have and some people still play. As NWPA astutely pointed out, if it’s even possible that one person might claim to be able to tell the difference, the patent system has failed us all.

  13. The wrong question (and the wrong focus) is obvious.

    Whether or not we can TODAY make a violin with the same qualities of a Stradivarius misses the point that had the method been captured by the use of the patent system, we likely would have been much further advanced today with that knowledge. We need to engage in the conjecture of how much ADDITIONAL advancement may have been enabled, as well as the (unknowable) nonlinear additional inventions and progress that may have been enabled.

    The point is that the method was lost and humanity was the poorer for that loss. The point is decidely NOT that we have finally made up that lost ground.

  14. The wrong question (and the wrong focus) is obvious.

    Whether or not we can TODAY make a violin with the same qualities of a Stradivarius misses the point that had the method been captured by the use of the patent system, we likely would have been much further advanced today with that knowledge. We need to engage in the conjecture of how much ADDITIONAL advancement may have been enabled, as well as the (unknowable) nonlinear additional inventions and progress that may have been enabled.

    The point is that the method was lost and humanity was the poorer for that loss. The point is decidely NOT that we have finally made up that lost ground.

  15. That sci american article is hilarious because I was just telling Broje on here a few years back that the Strad mystery seemed to be nothing more than an unfunded mat. sci. project. Looks like it actually was funded!

  16. “Too bad they never filed, think of the jobs they could have created by starting a small business.”

    I lulzed.

  17. Your complaint about the Stradivarius is lame. I guess what bothers me so much about people like you LB is that you have the arrogance to think you can judge inventions post the invention.

    How do we know what we lost with the method of making a Stradivarius? We don’t. And, to say that maybe some people can tell the difference is to admit that your entire post is vacuous nonsense.

  18. If we rid ourselves of the patent system, we can expect just about everything to become a trade secret.

    I wasn’t aware that I was advocating that we rid ourselves of the patent system. Thanks for clearing that up.

  19. Those are some pretty lame responses to a very good point: disclosure is an enormous part of the patent system. If we rid ourselves of the patent system, we can expect just about everything to become a trade secret.

    In software, we can expect everything to become a secret. Just because an inventor writes an article for a magazine doesn’t mean that that article isn’t coming from a patent. The companies say go ahead and disclose because we are anyway in the patent application. Without that patent application the calculus is different. The manager says: why should we help the competitors. No article in the magazine.

    It really just blows my mind away that people like Posner who have no experience in this field will stand up and make findings of fact about things they have absolutely no experience with.

  20. You need a better poster child than Stradivarius.

    Third, he would have done well to keep his methods secret even today, because a patent only lasts 20 years but his secret lasted for centuries.

    Patents already existed when Coke was invented, lest we forget. Too bad they never filed, think of the jobs they could have created by starting a small business.

  21. Do you know how to make a Stradivarius violin? Neither does anyone else. Why? There was no protection for creations in his day so he like everyone else protected their creations by keeping them secret. Civilization has lost countless creations and discoveries over the ages for the same reason. Think we should get rid of patents? Think again…or just think.

    You need a better poster child than Stradivarius. First, it’s abundantly clear that if anyone at all can really tell the difference between a Stradivarius and the highest quality violins available today, the number of people who can is extremely small. That suggests that the allure of the Stradivarius is branding as much or more than technology. link to blogs.discovermagazine.com

    Second, even if there are a few people who can tell the difference, it appears that the secret to whatever they’re hearing has also been cracked:
    link to scientificamerican.com

  22. The word on the street is that Schumer has been severely duped or severely bought by some of the worlds biggest invention thieves.

    Just because they call it patent “reform” doesn’t mean it is.

    These are mere dissemblings by huge multinational thieves and their paid puppets -some in Congress, the White House and elsewhere in the federal government. They have already damaged the US patent system so that property rights are teetering on lawlessness. Simply put, their intent is to legalize theft -to twist and weaken the patent system so it can only be used by them and no one else. Then they can steal at will and destroy their small competitors AND WITH THEM THE JOBS THEY WOULD HAVE CREATED. Meanwhile, the huge multinationals ship more and more US jobs overseas.

    Do you know how to make a Stradivarius violin? Neither does anyone else. Why? There was no protection for creations in his day so he like everyone else protected their creations by keeping them secret. Civilization has lost countless creations and discoveries over the ages for the same reason. Think we should get rid of patents? Think again…or just think.

    Most important for many is what the patent system does for the US economy. Our founders: Jefferson, Franklin, Madison and others felt so strongly about the rights of inventors that they included inventors rights to their creations and discoveries in the Constitution. They understood the trade off. Inventors are given a limited monopoly and in turn society gets the benefits of their inventions (telephone, computer, airplane, automobile, lighting, etc) into perpetuity and the jobs the commercialization of those inventions bring. For 200 years the patent system has not only fueled the US economy, but the world’s. If we weaken the patent system we force inventors underground like Stradivarius and in turn weaken our economy and job creation. Worse yet, we destroy the American dream -the ability to prosper from our ingenuity for the benefit of our children and communities. Who knows who the next Alexander Graham Bell will be. It could be your son or daughter. It could be you. To kill or weaken the patent system is to kill their futures.

    For the truth, please see link to truereform.piausa.org
    link to facebook.com
    link to piausa.wordpress.com
    link to hoover.org
    link to cpip.gmu.edu

  23. The thing that really gets me about “judges” like Posner is they make findings of fact with no evidence, no personal experience, and merely proclaim something to be true. It is gut retchingly disgusting.

    I am not going to do it here, but it is easy to write a findings of fact that support his opinions. And, there is simply no evidence for them.

    I remember too, Posner on the Charlie Rose Show. Posner said there was no point in punishing people after the financial crisis. That it was more important to get on with life. So, you can see, that Posner has no life experience in these matters. Anyone that has worked with people in any industry knows that this strategy is going to lead to more corruption. The bad actors going unpunished will lead to the next generation being more corrupt.

    Let’s fact it: Posner is a bad actor. He has gone into some kind of self congratulatory mode where he believes he is just the smartest little boy in the world and understands everything and is willing to act on him being the smartest little boy that knows everything.

    Boy, go back to basics. Figure out what findings of fact you are operating on and look at what evidence you have for the findings of fact you smartest little boy on the block brain has.

  24. Indeed. The big banks were successful in the AIA to kill off the check imaging patents, now they have Schulmer back asking for more.

  25. Note too that Michel actually had the gumption and integrity to step down from the top job of the CAFC, arguably the 10th most prestigious judicial position in order to be an activist, while Posner uses his office as the base of his activism.

  26. EG ” the flawed premise that so-called “business method” patents are used by the so-called “patent trolls” to inhibit small businesses and start-ups trying to develop software. In fact, it’s the multinational hardware and business computer and software Goliaths that feel impinged upon by these so-called “business method” patents. ”

    EG you are absolutely right! Excellent and most on point post. When Ned, MM, and the rest of the anti-patent establishment rage against so called business method patents it is the small entrepreneur and would be start ups that are harmed the most. The anti’s only hurt these inventors and make it difficult for them to create jobs for themselves and their communities.

    It is next to impossible to go into business against Microsoft, Disney, etc. and compete head to head without the ability to protect new and innovative business methods with patents.

    The anti’s want the big businesses to be able to freely steal the ideas from the little guys with impunity. Even though it cost this country potential jobs those small business could ultimately create.

  27. Prelude to (yet another) attempt at the Crybaby veto:

    Because anon is so adept at missing the point that any ongoing conversation with him is impossible.

    Sorry MaxDrei, you have already made clear that neither conversation nor challenge is what you are after.

    As to the directions I provided, they are in fact quite true, albeit not specific enough. The AIA section is as I posted; however, the Office definition is contained in the related Office rules publications (as the Office itself was tasked with creating the definition)

    As to a bot in China that can so easily dispose of you and your soapbox, well,.. sure, that would be easy enough to do – but not so with the panache with which I dispose of you.

  28. Classic anon. Invited to point to a definition of “technical” in the US statute, he hastens to respond with this gobbledygook:

    “see the AIA sections on subset of business methods that the post grant review is aimed called covered business methods”

    which is not even English, gives no directions to a definition of “technical” and adds nothing to the text from Dennis at the head of the thread.

    anon gives out that he is magnanimously dispensing knowledge to others who know less than he does, in the manner of a weary teacher to his dim pupils. Which actually is quite awesome, because anon is so adept at missing the point that any ongoing conversation with him is impossible.

    I suggested some time ago that the poster called “anon” is a machine rather than a person, perhaps even with somebody in China sitting at the controls. I continue to have my suspicions.

  29. I am pretty sure Ned that MoT never came up once in relation to the AIA section or to the Office “definition” of technical.

  30. but if it passes the MOT, anon, the claims will not have to go through the new post grant proceeding.

    Is this more Ned-IMHO law…?

  31. No agency of the federal government would ever subjectively apply the law to reward its friends and punish its enemies. All agency staff of the unitary executive are equipped to adjudicate multi-million dollar issues and could never parley favors for subsequent private sector employment or be influenced by the fact that they are at will employees of the executive. Nope, they are all more virtuous than Caesar’s wife. And we should rush to expand their jurisdiction.

  32. Q: How do you make a patchwork of man_ure smell like roses?

    A: Good luck with that.

    (Second try. Surprising but it appears “man_ure” is a blocked word?)

  33. And 282(b)(2) says anything listed in Part II.

    Here’s Part II:

    Current through Pub. L. 112-283. (See Public Laws for the current Congress.)

    CHAPTER 10—PATENTABILITY OF INVENTIONS (§§ 100–105)
    CHAPTER 11—APPLICATION FOR PATENT (§§ 111–123)
    CHAPTER 12—EXAMINATION OF APPLICATION (§§ 131–135)
    CHAPTER 13—REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS (§§ 141–146)
    CHAPTER 14—ISSUE OF PATENT (§§ 151–157)
    CHAPTER 15—PLANT PATENTS (§§ 161–164)
    CHAPTER 16—DESIGNS (§§ 171–173)
    CHAPTER 17—SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN COUNTRY (§§ 181–188)
    CHAPTER 18—PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE (§§ 200–212)

    Seems like 101 is covered….??

  34. S. 866 is based on the flawed premise that so-called “business method” patents are used by the so-called “patent trolls” to inhibit small businesses and start-ups trying to develop software. In fact, it’s the multinational hardware and business computer and software Goliaths that feel impinged upon by these so-called “business method” patents.

    Like the multinational hardware and business computer and software Goliaths sued by Lodsys, right?

    link to arstechnica.com

    In April, Lodsys turned to mobile game studios. These lawsuits don’t mention interactive chat, and so Lodsys appears to have gone back to suing over in-app purchasing, rather than the user feedback and chat claims it has made against retailers earlier. In a batch of suits filed April 1 and 2, Lodsys sued Gameloft, BackFlip Studios, Gamevil, Jirbo, MobileAge, Pocket Gems, Sunstorm Interactive, TMSoft, TLA Systems, and The Walt Disney Company. Those targets are mostly, but not exclusively, game developers.

  35. non, but if it passes the MOT, anon, the claims will not have to go through the new post grant proceeding.

    But, given Prometheus, there has to be some limit on the MOT, such that the claim, taken as a whole, must pass the MOT, not just some parts of it.

  36. ‘As to poetry, you know,’ said Humpty Dumpty, stretching out one of his great hands, ‘I can repeat poetry as well as other folk, if it comes to that —’

  37. PTO does not get it. One cannot define “technical” by saying that it is something ‘technical.’

    That was precisely my point, Ned – glad you picked it up.

    Try the MOT, for pities sake. That IS and accepted test in the US.

    Ooops, you went off the rails there.

    1) it’s not a test, but only a clue.
    2) (yes, it appears that I have to hit you over the head with this yet again):

    The Supreme Court has said otherwise:
    Bilksi: MoT NOT necessary
    Prometheus: MoT NOT sufficient.

  38. MD, what is clear is that the PTO does not get it. One cannot define “technical” by saying that it is something “technical.”

    Try the MOT, for pities sake. That IS and accepted test in the US.

  39. Thanks L.B.Z.,

    As to “As for the US law definition of technical, could you point out in which part of the statute the term technical is defined?,” see the AIA sections on subset of business methods that the post grant review is aimed called covered business methods.

  40. Art. 52(2) EPC does not contain the words “per se” or “as such”. It says, “The following, in particular, shall not be regarded as inventions [...]“. The infamous wording “as such” appears in Art. 52(3), which defines the effect of paragraph 2 in respect to the possibility of granting a patent.

    The idea behind this formulation was probably to indicate that the presence of subject-matter under 52(2) had to be treated differently from what is properly an exception to patentability as stated in Art. 53 EPC, which states “European patents shall NOT be granted in respect of [...]” (my emphasis). So, while the mere presence of subject-matter under Art. 53 prevents a patent to being granted, having non-technical features might not necessarily kill your claim, depending on what else is there.

    As for the US law definition of technical, could you point out in which part of the statute the term technical is defined? I don’t remember the term “technical” appearing in 35 USC 100-105, and for sure it does not appear in 101… In any case, my opinion is that a definition is good if it allows you to work with it in a reasonably predictable manner. The EPC solution may not be ideal, but it has generated an approach that works reasonably well; this is not to say that there are no borderline or controversial cases, but generally these are solved by refining the framework (as it is the case in many other areas of law) which remains in its basic tenets unchanged.

  41. Dennis, you keep saying that post-grant review includes section 101, when I think it actually refers to section 282 and not to section 101. Even as judge Rader has now recognized in the CLS v. Alice case, section 282 does not literally embrace section 101. Even he now recognizes that a section 101 validity challenge is essentially nonstatutory. But the grounds for challenging validity in the post-grant review are limited by statute to the grounds set forth in section 282. Section 101 is not among these.

    Here is the language from the statute:
    “§321(b) Scope- A petitioner in a post-grant review may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).”

  42. To answer my own question, I found this

    link to uspto.gov

    The stats here only cover 21 – not 25 – and are through April 2013.

    So…

    We have this massively pushed for new system and it has been used for about two dozen submissions.

    How many applications are there in the varies backlog piles?

    Anyone else see some serious disconnect here?

    Maybe one of the academics might write a paper on this…

  43. Careful, E.G., next thing you know, you will be accused of having English as a second language, or being tainted by your association with Gene Quinn.

  44. L.B.Z.,

    I would also point out that your (properly amended) view and what MaxDrei (mis)jumped at – “question itself is not understood” – are two very different things.

    I would be interested in your view of U.S. law which does try to define technical – not by what it is not – but by using a circular definition.

  45. Another nonsensical bill, on par with the Becerra bills that have tried to bar the patenting of genetic material. S. 866 is based on the flawed premise that so-called “business method” patents are used by the so-called “patent trolls” to inhibit small businesses and start-ups trying to develop software. In fact, it’s the multinational hardware and business computer and software Goliaths that feel impinged upon by these so-called “business method” patents. Like similar bills we’ve seen from the anti-patent establishment, S. 866 has all the large paw prints of the so-called Coalition for Patent Fairness.

  46. My compliments LBZ. Nice way to explain it. Just read Art 52(1)EPC and then, when you’ve done that, read Art 52(2) and construe it in the context of Art 52(1), to find out how “technical” has come to assume such pivotal importance at the EPO.

    As Rader CJ just (my paraphrase) has urged us all, just now, in another case: Read the Statute, stüpid.

  47. You have a list of categories of what is not an invention listed in Art 52(2), like “methods for doing business” and “presentation of information”. If a claim contains features directed to such subject – matter, then it’s considered not technical, since patents are issued for inventions in “all fields of technology” under Art. 52(1).

    The list of Art. 52(2) is not exhaustive in principle, but I am not aware of any argument against the technical character of a feature succeeding if the feature did not fall in one of the statutory categories.

  48. Meaningless question JS. There isn’t one. That’s the point.

    You see MaxDrei, that’s just plain silly.

    (it’s also not true for U.S. law, but that wasn’t the question Just Saying asked of you)

  49. I would suggest that you realize that amongst one Malcolm’s many poor blogging habits is the accusation of others of that which he does.

    Leopold, being Malcolm’s little cheerleader, has no credibility here.

  50. Meaningless question JS. There isn’t one. That’s the point. Just as in the European Patent Convention there is (quite deliberately) no definition of “invention”.

    And for the same reason. Any Definition imposed by the Statute (or the Supreme Court) is rapidly rendered obsolete by (three cheers for our clients)unforeseen progress in the useful arts.

    Now you. Define “useful arts”. Or tell me why the sky in Europe is falling because the EPC fails to define “invention”.

    Europe is doing OK thanks. Not sure about the Federal Circuit though.

  51. Great you have captured both you and MaxDrei.

    Very interesting that you choose one that reflects you.

    I was rather hoping for some stronger intellect with a choice like “technical” or “useful arts.” I blame myself for having such absurd expectations of you.

  52. anon, I tentatively suggest that you might with advantage reflect (ideally before you again click on Send) for a moment or two on why it is that the fictional Humpty Dumpty figure attracts so much derision (see Wikipedia) and why Malcolm has dubbed you the Humpty Dumpty of these columns.

  53. MD … answer the question. What is the definition of “technical” as it is employed at the EPO?

  54. Feel free to take a shot at defining any of the words in the discussion…

    I’d be happy to:

    silly –
    a : weak in intellect : foolish
    b : exhibiting or indicative of a lack of common sense or sound judgment

  55. Leopold,

    Feel free to take a shot at defining any of the words in the discussion (rather than merely charging at the red cape of ‘anon said’).

    Hmmm, thought so.

  56. ‘When I use a word,’ Humpty Dumpty said, in rather a scornful tone, ‘it means just what I choose it to mean — neither more nor less.’

    - Through the Looking Glass

  57. You are just as silly with it this time around.

    Nice, except it is anything but silly.

    Your posts, on the other hand…

  58. I remember another occasion when you tried your “Um..no” response on me. You are just as silly with it this time around.

    There is no Binding Precedent at the EPO. But there still is (though sometimes one wonders) in the USA. So, in the USA, if “technical” is the issue that decides the case, we shall find out definitively, from the highest court in the land, what “technical” means.

    Unless SCOTUS finesses out of it, like it has done on “useful arts”.

  59. Be that as it may

    Um,… no – the point is that no answers can come to a question that the question itself is not understood by the person asking the question.

  60. Be that as it may, anon, what would you do if your claim were to be assailed under this provision of US law? Might you not assert that it is not caught by this provision, that is, that its invention is “technical”. Would you have to prove it? Or would the burden of proof be on the Petitioner who is relying on this provision, to prove that the assailed claim is “non-technical”?

    If he can’t prove it, the Petition then fails, doesn’t it?

  61. Every claim owner is going to assert that the claim is directed to an invention that’s “technical”, right?

    LOL – I am still waiting for any Europhile to provide an adequate definition of “technical.”

    Same with the U.S. – one that is not hopelessly circular.

  62. Dennis, you report above that:

    “PTO rules provide that a “technological invention” is one that “recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.”

    This mangles the EPO line and makes no sense. At the EPO, one defines subject matter, in a claim, by reciting technical features. It often happens, that matter is patentable, despite every one of the features recited in the claim being, per se, known and old. in Europe, it is the claim as a whole that falls to be tested for patentability, not any particular feature within the claim. By contrast, is the USPTO aiming to disintegrate the claim, I wonder?

    I should like to read at source what the PTO Rule provides. Can anybody supply a Link please?

    I hope to learn in due course how big the class is, of eligible and patentable inventions that are neither technical nor abstract. How long will I have to wait. Every claim owner is going to assert that the claim is directed to an invention that’s “technical”, right?

  63. From Fish Scales:

    The key is to have better examination of software/business method claims including a better library of prior art, a better classification system of the prior art and better trained examiners in these technologies. This will make it less likely that marginal patents will be issued.

    Let’s start with this, Congress.

  64. Smells of “inspecting quality into” a product.

    How about the novel idea of better examination?

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