Examining Eligibility: USPTO Guidelines on Products of Nature, Laws of Nature, and Natural Phenomena

by Dennis Crouch

One difficulty with the US patent system is that the same rules of patentability are sometimes determined by a judge, other times by a jury, and, of course, most often by a patent examiner. A judge is typically an experienced lawyer and political heavyweight who receives substantial input from leading advocates on both sides of any argument. However, judges most typically have not technical expertise in the particular invention or its market. On the other hand, a patent examiner is typically a subject matter expert but comes with little or no legal training and who participates in an ex parte inquiry.  At yet another extreme, a jury also receives the benefit of input from both sides, but typically has no technical or legal training.

One difficult role that the USPTO takes-on is translating court decisions on patentability into administrable tasks for its examiner corps.  That task is perhaps most difficult in the realm of subject matter eligibility.

In a new set of training materials, the USPTO has attempted to provide some concrete guidance to its examiners on determining whether claims improperly encompass laws of nature, natural principles, natural phenomena, or products of nature. The updated guidance is necessary based upon the Supreme Court’s decisions in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012).  The USPTO is awaiting outcome of the CLS Bank decision before providing parallel insight on examining claims for abstract ideas.

Although these guidelines do not have force of law, they are important because of their de facto power for the several hundred thousand pending patent applications.

The basic test, according to the USPTO is “whether a claim reflects a significant difference from what exists in nature” (patent eligible) or instead “whether a claim is effectively drawn to something that is naturally occurring” (not patent eligible).  Of course, the rub is the dividing line between these mutually exclusive categories.

The PTO provides the following flowchart:

pic-113

 

More later.

124 thoughts on “Examining Eligibility: USPTO Guidelines on Products of Nature, Laws of Nature, and Natural Phenomena

  1. OT, but oh so reminds me of the Malcolm method (yes, irony abundant as Malcolm is the equivalent of Fox News in the patent blogosphere):

    link to upworthy.com

    The duplicity of Malcolm and his cursade [sic] while himself refusing to engage in intellectual honesty in his posts would be hilarious, if not for the fact that he apparently really believes that what he does is ‘ok.’

  2. Dear USPTO,

    Yes, Examiners are required to make subjective decisions involving weighing of factors, for example, when evaluating the Wands factors regarding enablement. BUT, isn’t there a significant difference in evaluating the scope of enablement, the boundaries of which are necessarily vague and open to reasonable argument, and the black & white issue of whether an invention is eligible for patent protection or not?

    Seriously concerned,
    AR

    1. Dear AR,

      When you are consumed with an agenda, driven by “policy” disconnected from law or fact, and you believe that intellectual honesty is simply not required, it is ‘easy’ to be confused – and try to confuse – black as white.

      Machines are no longer machines.
      Manufactures are simply ignored (still not one single anti-software patent person has addressed the fact that software is a man made manufacture and machine component).
      “Transitory” is of longer duration than “non-transitory.”
      History is obfuscated, or worse yet, sanitized or attempted to be rewritten.

      And the branch of the government that is supposed to ensure that the Constitution is preserved is the branch trampling all over it to maintain its dead letter implicit writing control.

      So much for the 1952 Act removing the common law ability of the Court to set the definition of ‘invention’ and its myriad abstractions.
      So much for wide open front gate.
      So much for ‘common sense.’
      So much for black & white.

  3. I have a simple question: Is “penicillin” or “streptomycin” patent eligible under the new guidelines? Aren’t they naturally occurring?

    1. Sho, I think you have identified the sore point. If structural identity is the key, and “isolation” is irrelevant, then purification should also be irrelevant if what is claimed is structurally the same as in nature.

      This ruling by the Supreme Court is, I believe, fundamentally wrong and Parke-Davis and the other cases that looked instead at “characteristics” were right.

      But, if the word of the King is the law, then the King has spoken.

      1. The concept of inherency will come into play with any discussion of actual structure and related “characteristics.’

        Ned, – you are still missing the ‘effectively’ angle.

      2. Ned, thank you for your comments. After Myriad, I was worried that something like the new guidelines would somehow come out. It did in a very bad way without public commenting etc., and it is a major setback in the history of the US patent law. Where is harmonization in the patent world? Can we complain about the patent systems of developing countries?

        1. Where is harmonization in the patent world?

          A major ASSumption being that ‘harmonization is necessarily a good thing…

          Harmonization is NOT a good thing when you have to go backwards from having the best system in the world.

          Harmonization is NOT a good thing when you realize that patent law is by its nature territorial and individual nations remain their own sovereign nations.

          Harmonization is NOT a good thing when you realize that the forces pulling the strings are the Large Corporations who really do not like patents to begin with, and who owe NO allegiance to any one country, and who will ALWAYS switch their assets to the lowest cost factor configuration regardless of any impact to any single country.

          Harmonization is NOT a good thing akin to the “Troll” hysteria and Witch Hunt in order to make the equivalent of ‘efficient breach’ more palatable and easier to accomplish.

          Open your eyes people. That big wooden horse is not such a great gift after all.

    1. Hal Wegner has another email post on this growing debacle: apparently (I have not checked it out personally), the procedure being followed for these rules is not copacetic with the OMB.

        1. LOL – careful reading (and my continued posts on the same) and the clues are starting to pile up as to the ‘implicit’ game that the Supreme Court has been playing with its addiction to the finger in the nose of wax 101 power to write patent law.

          1952: The year that Congress stripped the Court of any authority to set the word ‘invention’ (or any of its myriad derivatives) by common law ruling practice.

          Even the highest Court cannot wield power it no longer has in any sense of Constitutional validity – for any sense of ‘policy,’ or for any ends it may wish to justify. Even the Supreme Court is not above the Constitution and must recognize that it simply does not have the right to cling to dead letters of its own implicit writings if the duly authorized branch of the government (hint: and that is NOT the executive branch) has taken that power from the Court.

          The real question remains: will a child tell the King that he is naked? Will the King listen to any such child? Or will the power-addicted King continue to parade around in his ‘finest raiment’ flapping in the breeze?

  4. Let’s discuss factor “a.”

    “a) Claim is a product claim reciting something that initially appears to be a natural product, but after analysis is determined to be non-naturally occurring and markedly different in structure from naturally occurring products.”

    Now, if I understand Myriad correctly, the claim held to be ineligible claimed the same sequence as found in nature. The isolated DNA molecule has end bonds that are structurally different in the isolated molecule. This was the focus of Lourie in the Federal Circuit. But the Myriad court discounted the end bonds because the court held that it was the sequence that was claimed, not the molecule with its differing end bonds.

    cDNA, however was found eligible because its sequence was different from the claimed sequence.

    The whole case depended upon structure and whether it was identical or not identical. There was no hint in the case that the test was a matter of degree. Nor this the case depend upon whether the properties of what was claimed were different, let alone “markedly different.”

    The “markedly different” historically has not referred to structure, but to properties. The implication in this test is that the structure can be the same, but there is something added that changes the properties. However, Myriad did not depend, I believe, on the properties or characteristics of the claimed sequence being substantially different in cDNA. The entire case was about structure of what was claimed — the sequence.

    The term “markedly different structure” appears to be a conflation. It conflates properties and characteristics with structure. But I would submit that Myriad did not seek to alter the “markedly different characteristics” test. According to Myriad, if what is claimed is structurally identical to what is found in nature, it is ineligible. If it is different, it is eligible. There is no “markedly” involved in this.

    Now the real problem, a “markedly different properties” test could still find isolated DNA eligible. Isolated DNA does seem to have markedly different properties from non isolated DNA. But it still was held ineligible.

    This throws into question any claim that distinguishes based on properties if what is claimed is structurally identical to what occurs in nature.

    Recall that the claimed that Hand reviewed in the famous Parke-Davis case was allowed only because the patent office was convinced that the claimed compound was structurally different.

    Myriad thus poses a problem to any claim that is allowed based on isolation, or purity or the like. These may have markedly different characteristic in terms of their properties, but that still begs the question of whether what is claimed is structurally identical with what occurs in nature.

    Again, I find no support at all in Myriad for a “degree” test regarding structure. It either is he same or it is different. Markedly is not a word that should be used in this context.

    1. Ned, you can have any claim to a molecule you want as long as you include the limitation, “wherein the molecule is attached to an elephant.”

      That is the equivalent of your ROM argument.

      1. Night, I asked you earlier and I do not believe you replied, do you support patenting business methods?

        Also, regarding claims to the combination of molecules and elephants, do you possibly see any problem under 112(b).

        Finally, I have never seen you reply to my assertion that one simply has to limit claims to an physical application to pass muster. You seem to think that a claim can be wholly abstract and still be eligible. Thus, in your view, there would be nothing wrong with the Bilski claims or any other claim to balancing risk.

        Night, you accuse me of being out there, beyond the fringe. After all, MM and I agree on so much.

        But let me just say this, Night. The reason patent law is in trouble today is that people who think as you do are everywhere in the patent bar, and on the Federal Circuit.

        1. Ned,

          I asked you earlier and you did not reply:

          How do you get around the fact that the Court and Congress (both pre and post Bilski support business methods?

          As to any limit on physical application, remember Mot, Bilski and Prometheus. Just a clue, Ned, just a clue.

          1. Support business methods? Are you joking? The opposite is and was the case.

            CLS Bank lays out a good case why patents on fundamental economic practices are fundamentally harmful to society.

            Another amici points out that business methods were not considered to be within the useful Arts.

            I have noted that the both the English civil war and the American and Indian revolutions were sparked by trade monopolies based on patents.

            This issue will NOT go away. Never. Patents on business methods are fundamentally harmful to society. Period.

            1. Sorry Ned – again you are wrong.

              Congress explicitly allows for business method patents. That is precisely why Stevens lost his majority position as Stevens would have had to explicitly rewrite the words of Congress in Bilski. Thus, the majority Court in Bilski explicitly supports business method patents. Post-Bilski, in the AIA, Congress explicitly acted to preserve that state in law even while providing a mechanism that allows challenge to a subset of business method patents.

              Congress before Bilski
              The Court in Bilski
              Congress after Bilski

              You lose.

            2. anon, I do not doubt that Rich never learned a thing from history. His legacy proves that. But history has spoken loudly on the topic of patents on trade. They spark wars and revolutions and only the fool would ignore this teaching.

              You may think you have the high ground on this issue because of State Street Bank, your favorite case, written by that great “historian … not” Rich who would allow patents on anything not expressly forbidden by statute. But just let me refer you to the universal condemnation of your favorite case by all 9 justices in Bilski.

              The Supreme Court will never allow for patenting business methods. It is just that they are struggling to find the right way of saying this.

            3. Ned – stop – full stop. Once again you seek to put words into my mouth that I have never used and I simply do not need: “because of State Street Bank, your favorite case

              You need to deal with the real law – the law passed by Congress in 1952.

              You need to deal with the fact, as shown on this blog that business method patents were granted by the USPTO throughout the life of this country.

              These are plain, simple historical facts. You need to recognize them.

            4. Malcolm boffs with “So what?

              So….

              Given how I have already shown that the legislative branch is OK with business method patents, and that the judicial branch is OK with business method patents and now add that the executive branch is OK with business method patents, the notion that business method patents are “fundamentally harmful to society” does not have any tables to pound on with the three branches of the government.

              But hey, thanks for asking.

        2. >But let me just say this, Night. The reason patent law is in trouble >today is that people who think as you do are everywhere in the patent >bar, and on the Federal Circuit.

          Uh….you mean people that want to apply the law. The problem is people like you that are trying to come up with nuclear solutions like requiring a ROM.

          > you think … be wholly abstract and still be eligible.

          No. I think real information processing inventions are real inventions. I guess you work on the computer today was wholly abstract.

          I don’t see a 112(b) problem. Just attach the molecule to an elephant and you can have it.

          The problem we are having is that big corp wants to rid our system of patents and there are lots of people that are buying the nonsense you are MM are selling.

          Want to improve patents? Move the PTO and focus on 102, 103, and 112.

          1. And Ned, force people to add a ROM? Tell me Ned couldn’t anyone then get around any claim that included a ROM?!!!

            Just offensive that you push this nonsense.

            1. And, Night, ROM is just an example, not a requirement.

              For example, I think an OS is a good example of software that becomes part of the machine and transforms it.

            2. Ned,

              the point by NWPA (if I may be so bold to say) is that once again you are introducing concepts not found in law. Here (again) the concepts of performance and non-changing ‘fixed in.’

              I have called you out repeatedly for this tactic, asking you to provide a proper legal citation for your extra-statutory tactics.

              And you repeatedly run away.

              Think of tires – perfectly eligible as a machine component in and of themselves. There is no requirement that tires must be permanently and non-changeably affixed to a car to be patent eligible.

              We both know why you refuse to embrace the points I bring to you. It would mean the end of your proselytizing.

            3. Anon, when you say that configured to with software defines a new machine, I am asking you to distinguish between using an old computer and making a new one.

              It is you and the likes of Night that refuse to discuss this distinction, implying that none exists.

            4. Ned I have answered your “ I am asking you to distinguish between using an old computer and making a new one” many many many many times now.

              Pay attention.

              You cannot use something that you have not yet first created. You keep on jumping over and ignoring that initial fact. See Nazomi.

          2. Night, if you see nothing wrong in a claim where two elements have nothing to do with each other, then I think I have just illustrated that there is either something wrong with your understanding of the law or the law has changed into something wrong.

            1. Ned’s point of “where two elements have nothing to do with each other” highlights one of the fallacies in Malcolm’s pet theory of [oldstep]+[newthought].

              There are many others.

              However, Ned, I think that you are using a strawman, as I do not think that anyone is arguing that a random and unconnected grouping of elements (no matter what type of elements are involved, be they [oldsteps], [newsteps], [oldthoughts], [newthoughts] or WHATEVER) is actually the point of NWPA’s argument.

              You are arguing something that no one is arguing.

          3. Night, the point you made about the computer is the real problem with Bilski opinion. It did not make clear why the claims there were abstract.

            However, if limiting the execution of abstract subject matter to a machine is enough to make anything eligible subject matter, then we can patent music so long as it was performed by a machine. Thus, I write a score to a new commercial. I can get a copyright and a patent!

            1. Ned,

              Once again I have to point out to you that there was no computer in Bilski’s claims.

              We have been on this merry-go-round before.

            2. And for the LOVE OF GOD, please do not go down the canard path of using an example outside of the Useful Arts, as that example fails for other reasons unconnected to the immediate discussion.

              This too has been explained to you and is NOT an intellectually honest argument to make – so please, simply do not attempt to make such a bogus argument.

            3. Oh boy, the music canard. Ned, you are shameless.

              Just offensive and intellectual dishonest to keep pushing this nonsense.

              People skilled in the art of ee and cs can see what you are saying is complete nonsense. I work with Ph.D’s that invent real hardware and software for real consumer products. I have written patent application for consumer product that many people on this board have likely used.

              What you are saying is garbage–filth really. Hardware and software is equivalent. The inventors know that. The challenge is to write the application so it can’t be easily designed around.

              The real product world has nothing to do with your nonsense.

              The real problem with Bilski is that they invoked a judicial exception instead of applying the 1952 Patent Act. Something is hundreds of years old and yet they can’t find any art? Yeah, right.

            4. Regarding music not being within the useful arts, it is you who are raising the issue of useful arts in distinguishing one kind of programmed computer with another kind of programmed computer.

              Once you go down the street, the issue was on the table. One can then inquire whether the thing done by a programmed machine is within the useful arts.

            5. anon, of course there was no computer. That is THE point.

              …your point is to try to argue from a past case that is not on point to the current discussion….?

              You have a very odd sense of arguing law, Ned.

        3. Ned, a physical application????

          Go back and watch what physicist think of information—the most important rule is conservation of information!!!!!!!!!!!!!!!

          It is a physical process to transform information. These are NOT business methods but methods of transforming information.

          Takes space, time, and energy. How could that not be physical? Again, you want to go back to about the year 1400 in your framing of these issues.

          You Ned are the one that is outrageous on this blog with your continued ROM nonsense. Anyone skilled in the art of information processing can see that ROM argument is outrageous and would only be bought by the ignorant or ill intent.

          1. Night, it seems your constant reference to ROM means that you do not intend to discuss what I say, but your reconstruction of what I say.

            Secondly, I don’t doubt that information processing is physical in an abstract sense. Thus the issue comes down to whether the programmed computer must do more than simply compute a number, must it also do something with that number?

            1. Ned,

              Let me remind you again that you are conflating the utility requirement aspect of 101 with the statutory category aspect of 101.

              Please stop your conflations.

    2. Ned: Myriad did not depend, I believe, on the properties or characteristics of the claimed sequence being substantially different in cDNA. The entire case was about structure of what was claimed — the sequence.

      I agree, Ned.

      An isolated (but eligible) polymer with sequence B can be virtually indistinguishable from the standpoint of its properties relative to an isolated (but ineligible) polymer with the “natural” sequence A. For example, it can encode the identical protein. And it can behave virtually identically when exposed to any number of treatments (e.g., freezing, precipitation, light absorbance, denaturing). But according to the Myriad “logic” (to the extent there is an internally consistent logic) it’s apparently the sequence (i.e., the chemical structure) of the polymer that matters for eligibility.

      1. LOL – take no comfort whatsoever from Malcolm ‘agreeing’ with you Ned – He still cannot get the decision right – even with the benefit of perfect hindsight and my expert handholding.

        1. anon, please quote me the section of Myriad where the SC held cCNA eligible because it exhibited remarkably different properties or characteristics from either isolated or naturally occurring DNA.

          The bottom line, “markedly different structure” is not a proper test, not at all. It conflates a structural test with a properties or characteristics test. One is exact, not subject to debate or degree. The other is entirely a matter of degree and has little or nothing to do with structure.

    3. Ned, thanks for the thoughtful comment. This does indeed stink. Interestingly, we were already getting rejections along these lines before these guidelines came out. I think it’s going to be awhile before this nonsense gets settled–I guess it will probably never be fixed back to a proper 101 analysis, but at least eventually we might end up with something predictable. We have a bunch of applications that are going to need to hold their breath until then. Good thing we’re a small U.S. company with lots of money to burn on possibly futile patent prosecution–that should help stimulate the economy.

    4. I’m sorry Ned….Are you saying functional claiming is OK if you are claiming a chemical, but not OK if you are claiming a device?

      “The “markedly different” historically has not referred to structure, but to properties. The implication in this test is that the structure can be the same, but there is something added that changes the properties.”

        1. and, when the “something added that changes the properties” is “software”, that’s O. K. too isn’t it….

          Welcome back from the Dark Side Ned.

          Someone Alert the Ewoks!, We’re having a party!

          1. Les, I am not so sure that functional claiming of chemicals is truly proper under controlling SC case law.

            See, e.g., Perkins Glue and United Carbon.

            1. Les, to be clear here, the 101 “test” previously used, and which may no longer be used it seems, looked to whether the claimed composition was markedly different in properties or characteristics from that found in nature. It did not require those distinctions to be claimed, let alone that the composition be claimable only by those differences in properties.

              After Perkins Glue, it became hornbook law that one could not claim a composition by it properties unless, perhaps, there was no other way to describe it and the resulting limitations were definite.

              Then we get Rich and crew with their hatchett, overruling long established precedent that forbad functional claiming in favor of general permission — but with the 112(f) construction clause, and without any limitation at all to whether the claim was a combination claim or not.

              But their authority for doing this is highly suspect, and hopefully the Supreme Court says something dramatic on point – that functional claiming is not possible unless one uses the exact formula prescribed by 112(f) particularly, only with combination claims and only when using “means” or “step” as signals.

            2. Ned, Where do you get off being wrong – and knowing you are wrong in your wild accusations of “Then we get Rich and crew with their hatchett

              The Act of 1952 is where your problems lie. Take it up with Congress.

      1. In further reply, Les, it was the functional nature of the claim that got Myriad in trouble — isolated DNA that codes for X protein. This allowed the SC to construe the claim to be limited to the sequence — and that was found in nature.

        Had Myriad simply claimed the molecule itself, structurally, in its isolated form, that structure would arguably not be found in nature — no 101 problem, but 103 would still be a potential hurdle.

        1. Of course, that structural claim wouldn’t have preempted other tests for the gene and therefore wouldn’t have made billions for Myriad. It was the functional claim that made them the money — illegitimately as it turns out.

  5. Dennis: The basic test, according to the USPTO is “whether a claim reflects a significant difference from what exists in nature” (patent eligible) or instead “whether a claim is effectively drawn to something that is naturally occurring” (not patent eligible). Of course, the rub is the dividing line between these mutually exclusive categories.

    I don’t see the words “effectively drawn to” in the flow chart but I agree with Dennis that this is a relevant consideration.

    Dennis suggests that the terms “significantly different” and “effectively drawn to” are two sides of the same coin (i.e., there are no claims that are “significantly different” from nature but which are not “effectively drawn to” a natural law or composition, and vice versa). For the purpose of a consistent test that is useful in practice, the “significantly different” metric seems to be mostly useless.

    The “effectively drawn to” comes closer to the mark but has problems of its own. For starters, a more practical expression of the test is to ask whether a claim that includes some eligible subject matter or which does not encompass a naturally-occurring composition nevertheless effectively protects ineligible subject matter or a naturally-occuring composition. In other words: would the granting of the claim make it impossible (or commercially impractical?) for otherwise lawful actors to make or use the ineligible subject matter?

    The easiest example immediately illustrates the shortcoming of the PTO’s teaching (at least as it’s described above). That would be a claim in the form [oldstep]+[newthought], i.e., the Prometheus claims. Because there is no way for the ineligible [newthought] to be “integrated” with an eligible [oldstep], all claims in that form are per se ineligible. Note that it doesn’t matter whether the [newthought] is characterized as a “natural principle” or a “fact” or a “non-fact” or any other abstraction. Such claims are per se dead and ineligible because all such claims effectively protect the ineligible [newthought], at least with respect to lawful actors practicing the prior art [oldstep]. Why doesn’t the PTO simply make this crystal clear for its Examiners? There’s no reason they can’t belt the softball out of the park. It’s the simple application of existing law and elementary, bulletproof logic.

    A less straightforward example gets us into Myriad territory and that’s because the reasoning in the Myriad decision was tied very closely to unique properties of the particular technology (DNA molecules and the sequencing thereof). Recall that the claimed compositions at issue in the Myriad case were deemed by the Court to be man-made, i.e., the claims did not cover any “naturally occurring compositions.” But the Court neverthess found that such claims were ineligible based in part on the dubious (and internally contradictory) finding that the “information content” of the man-made molecules was identical to molecules found in nature. The only possible “advantage” (to patentees) of the Court’s odd approach in this regard is that it arguably limits Myriad’s reach to contaminant-free ribonucleic and deoxyribonucleic polymer compositions (I highly doubt that’s a winning argument, however).

    Another possible underlying rationale which was very poorly articulated by the Court in Myriad is that claims to “isolated” (a term that was never construed) but otherwise non-covalently modified compositions present an impermissible obstacle to basic research on the material (e.g., “rocks” or “living organisms”) from which the compositions can be extracted (and note the phrase “can be” as opposed to “necessarily are” — many of Myriad’s most useful — and now ineligible — compositions are those that researchers would generate purely synthetically, from scratch; only certifiably insane people would consider obtaining them from human cells).

    What the public (including applicants, lower courts and the USPTO) are struggling with now is determining what differences, other than relative purity, are insufficient to remove a claimed composition from the “effectively protecting ineligible subject matter” tarpit. We can be sure of at least two such broad classes of sufficient differences. (1) The Supreme Court has indicated that differences which change the information content of a coding biomolecule (DNA or RNA) relative to the naturally-occuring biomolecule will suffice. The specific example given by the Court is a cDNA molecule (although even the Court recognized that the term “cDNA” is structurally meaningless for the purpose of the test — the actual structure of the claimed biopolymer and its relationship to the entire universe of all existing biopolymers is what matters). (2) Claimed molecules that differ from naturally occuring molecules both in their relative purity and by covalent modification, where that modifying moeity is separately patentable on its own terms. These classes are eligible.

    So what’s left? Mainly (1) that gigantic class of biomolecules that differ from natural molecules by their relative purity and by modification according to conventional means (e.g., otherwise ineligible DNA molecules comprising conventional modifications such as old fluorescent moieties or radioactive groups); (2) non-coding man-made biomolecules (e.g., proteins) that are truncated relative to those which occur in nature; (3) the class of compositions comprising mixtures of otherwise ineligible biomolecules.

    One final and extremely important point is that the “effectively drawn to” analysis also strongly implicates methods whose patentability rests solely on the recitation of ineligible compositions for their well-known conventional use. For instance, the Myriad decision is ultimately pointless if applicants can nevertheless claim ownership of all practical uses of the ineligible compositions, which seems to be exactly what Myriad is attempting to do in the wake of the Supreme Court’s decision.

    1. “For starters, a more practical expression of the test is to ask whether a claim that includes some eligible subject matter or which does not encompass a naturally-occurring composition nevertheless effectively protects ineligible subject matter or a naturally-occuring composition.”

      That’s just another way of saying the same thing for people who have trouble understanding what “directed to” means. Like anon, and his buddy that wrote a silly paper on the AIA “directed to” language about claims to humans.

    2. LOL – that is some seriously tortured QQ and spin there Malcolm.

      Your selective remembering of what the word ‘effectively’ means aside, your banal attempts to keep alive your pet theory [oldsteps]+[newthoughts] still won’t shore up the numerous leaking points and inability to encompass important facts such as that claims may have elements of mental steps (to differentiate between your strawman claims comprised totally of mental steps), or that claims may be comprised solely of all [oldsteps], or of the notion that your view implicitly relies on non-integration of the [oldsteps] and [newthoughts] or any other of a myriad of factors repeatedly supplied to you and your Friends of the Court.

      1. Here comes the blogtroll!

        strawman claims comprised totally of mental steps

        No such “strawman” exists in my comment. Are you on drugs?

        inability to encompass important facts such as that claims may have elements of mental steps

        Nothing about what I wrote contradicts this trivial, banal point. I forgot to mention that the sky is blue, as well. So what?

        your view implicitly relies on non-integration of the [oldsteps] and [newthoughts]

        I expressly state that it’s impossible to “integrate” a new thought with an old step to create an eligible claim. If you believe I’m wrong, then please explain why and provide an example. Otherwise you’re just behaving like a pathetic t 0 0 l, as usual.

  6. Often patent applications relate to practical applications of natural phenomena or laws of nature. Then it is tempting to require the application part to be novel and non-obvious. If I am correct, the “point of novelty” approach was abandoned in US patent law long ago – but stil there are objections against “insignificant post-solution activity”.

    In the UK “Genentech” case (1990) the court explains that it is not always logical to require the application part to be novel. Then a “whole contents approach” (as required by the statute!) still provides an intuitively correct result.

    In my perception, one should always keep in mind that § 112 requires a description that can be “carried out” – which is more than merely “applied”. An invention is basically a “trick”, a “teaching” (“Lehre zum Handeln” in German- a teaching how to act). Tricks can be carried out. Knowledge of laws of nature or natural phenomena may be applied but not carried out. You cannot perform a boiling point.

    Remember that patent systems originate from privilege systems, i.e. rights to do something, not a right on particular knowledge.

    1. In my perception, one should always keep in mind that § 112 requires a description that can be “carried out” – which is more than merely “applied”

      Pedantic redefining of what is not there, of an attempted distinguishment of no difference..

      Remember that patent systems originate from privilege systems

      And remember as well that when the rest of the privileges went bye-bye – these remained.

      And finally, let us all remember that the difference between Reinier’s world and ours is that the Useful Arts are different than and broader than the technical arts.

      Once again, Reinier is more crafty than the typical blogger here: he does like to use kernels of truth, so there are sprinkles of truth in what he posts – just pay attention to the subtle “I think therefor that…”.

      1. Hi my friend, good to hear from you again!

        Re “what is not there”: the words “carried out” are in § 112. Is it “pedantic” to cite the statute??

        Re “privilege systems”: you missed my point: in past centuries, souvereigns granted “monopolies” to conduct a certain business. The main difference with patent systems is that privileges were granted at the discretion of souvereigns while patents are granted on the basis of objective statutory rules. The essence for me is that there are reasons to assume that patents are not a reward for inventors (and investors).

        You are outright wrong in concluding that I believe that the “useful arts” are limited to the “technological arts”. In any case, I have not said that in my post. You are now confusing me with someone else. According to the TRIPS Agreement, the word “useful” in § 101 is synonymous with “capable of industrial application”. The latter words refer to provisions like Art. 57 EPC, and there is case law saying that this provision is unrelated to the (European) technology requirement.

        Re “kernels of truth”: this is a very complicated an confusing field of law. Case law is unclear – otherwise we would not be discussing here in the first place. My approach is to look carefully whether words in the statute perhaps provide relevant clues. And of course, incorrect reasoning often centers around words like “therefore”. That word suggests that a conclusion follows from the premises, and – of course – the suggestion may be false.

        It would be interesting if you aregue why – perhaps – my conclusions are false, rather than merely criticising my style of arguing.

        In any case, I am not prepared to add “weasel words” like “perhaps” and “IMHO”. The style of a BLOG is informal: we are exchanging thoughts (hopefully). Still I reserve the right to be convinced myself ;) Like most patent lawyers, I have a background both in law and a “hard science” (physics in my case). The stereotype lawyer builds his argument from case law citations: the more footnotes, the better! The typical physicist or mathematician builds is argument on logic, perhaps without any footnote. If case law is not conclusive, logical arguing just from the rules may be helpful, at least it is not “forbidden”, IMHO.

        1. Ah, a healthy exchange with my friend, the anti-patentist:

          Re “what is not there”: the words “carried out” are in § 112. Is it “pedantic” to cite the statute??

          It is pedantic to miscite the statute. You have a habit of redefining words – that you cite some words that may be in a statute and then play your pedantic games is no surprise.

          Re “privilege systems”: you missed my point: in past centuries, souvereigns granted “monopolies” to conduct a certain business.” …The essence for me is that there are reasons to assume that patents are not a reward for inventors (and investors).”(emphasis added)

          And you missed my point that at least here in the states the items not so quarantined included business methods. You do realize the difference in the fact that the business methods under discussion (the patent eligible ones) must still pass the other sections of law to be granted (102/103/112) – thus defusing the attempted misdirection of trying to portray business methods as the type of things that history sought to deny, right? Your attempt at spin and rewriting history is thus a FAIL. Also – and critically – your desire to not recognize the reward aspect and the balance in the Quid Pro Quo is flat out rejected as wrong. It may be your opinion that no such balance need be recognized, and to the extent that anyone can have an opinion, you can have that wrong opinion if you want to – but the minute you attempt to inject this wrong opinion into the non-opinion legal sphere, you must suffer the error of your ways.

          You are outright wrong in concluding that I believe that the “useful arts” are limited to the “technological arts”. In any case, I have not said that in my post… According to the TRIPS…

          I am aware of the larger body of your writings my friend, and as I correctly posted previously, that larger body does in fact come into play with the posts here. You do believe that all patents should be abolished, yes? As to TRIPS, I am sure that you are aware that foreign treaties such as that one are not self-enacting in the US and that such treaties do not override our own laws on their own, yes? To attempt to then take cover under anything in TRIPS is a mistake when we are discussing the driver of the Constitution and the fact that Useful Arts is larger than technical arts and includes business methods. If you agree with my position on this topic, you should simply say so more directly rather than dancing around.

          Re “kernels of truth”: this is a very complicated an confusing field of law. Case law is unclear – otherwise we would not be discussing here in the first place. My approach is to look carefully whether words in the statute perhaps provide relevant clues. And of course, incorrect reasoning often centers around words like “therefore”. That word suggests that a conclusion follows from the premises, and – of course – the suggestion may be false.

          Once again I will refute your tactic of “Case law is unclear so I can say whatever I want.” You struck out with that ploy last time we exchanged comments. Nothing has changed in that regard since then. As to my style of pointing out that you have jumped into the weeds with your kernel of truth as a basis for your “saying whatever,” – sorry – but I am (again) correct and you are wrong. You may not like the fact that I am correct in pointing out that you are in the weeds, but standing in the weeds is what you are doing, nonetheless. As to arguing why? I have done so as well. Pay attention.

          In any case, I am not prepared to add “weasel words” like “perhaps” and “IMHO”. The style of a BLOG is informal… logical arguing just from the rules may be helpful, at least it is not “forbidden”, IMHO.

          Another kernel from you on blog style: the blog is informal. On that we agree. I too, often, point out to those that would mire the conversation with ‘the right tree in the wrong forest” approach.

          However, that is not the point of my comments to you. You still have the right to be “convinced yourself” – no one is saying otherwise. At the same time, I have the right to tell you that you are standing in the weeds with how you are applying ‘your logic.’ You apply ‘your logic’ with a bias in the belief that all patents are bad. That you apply this logic with far more care and grace than the blundering Malcolm does not change the fact that your aim infects what you say and how you say it.

          In a certain way, we share the approach of looking carefully at the words chosen. We both look for relevant clues. And knowing your background, clues as to the chiseling away of patent rights under US law are more visible than you might like to think. As I posted at 5.1.2, there is a difference between a mere posting of foreign concepts for comparative purposes and the misleading statement of foreign concepts as if those concepts are controlling in any way. I have highlighted in the past how others have used the mere statements of foreign concepts in such a misleading way (posts by Ned and MaxDrei).

          There is nothing “forbidden” from any “logical arguing just from the rules” – what is forbidden is to purposefully conflate which rules are in effect for a proper logical arguing from. You are not begrudging me the right to point this out, are you? You are not begrudging me the right to make clear (and to keep clear) that which may be desired to be obfuscated, are you?

        2. …and a slightly minor note of misdirection from my anti-patent friend:

          “carry out” is only in the best mode phrase – the other word used in the main phrase is ‘use.’

          For someone so bent on carefully looking at the use of words, your use of words falls more than a bit short.

    2. Reiner, “patent systems originate from privilege systems.”

      Privilege? If so, one could believe that the sovereign could grant patents on any subject matter to anybody for any length of time. Also, because a patent was a privilege, it could be revoked at the will of the sovereign.

      But we have a Constitution in the United States that both grants the power to Congress to create patents to protect inventors, and limits that power to protect inventions within the useful Arts. Is this a privilege system? Can the sovereign grant patents on trade to anybody for any period of time, and can they withdraw patents at will?

      Furthermore, even if patents were limited in terms of their subject matter and in terms of their novelty, could Congress authorized the granting of patents to anybody regardless that they were not inventors?

      And if the answer to this question is no, cannot it be said that if there are two seeking to obtain a patent on the same invention, that the Constitution authorizes an inquiry as to whether the rival is in fact an inventor?

  7. How do we undo the “judicial execptions”?

    Must 101 be amended and written to enumerate all of them and then say, these are not exceptions and are in fact eligible?

    Is there no other way?

    1. Art. 52 EPC provides the answer: this is a failed attempt to list exceptions explicitly. In 1973, the EPC drafters listed the typical exceptions in any patent law system, including things like the “mental steps doctrine” and the “printed matter doctrine” known in US patent law as well. And US courts rightly noted that these doctrines are confusing, to say the least.

      But the worst thing is that all the exceptions listed in art. 52(2) EPC apply only to the listed subject-matter “as such” according to subsection 3. These words caused a confusion that lasts until today.

      Actually it boils down to a similar conclusion as CAFC decisions like Alappat and Arrhythmia in the 1990s: algorithms (as a typical example) are not excluded because they are abstract, but only if they are abstract.

      1. Reiner,

        Stop – the EP is not our law. Just because your reading glasses work for you does not mean that they will work for us.

            1. Les made a suggestion, and then it may be helpful to look at examples from elsewhere – which of course are not US law! I argue that the EPC approach is not succesful, which perhaps shows that a “Negativkatalog” (as the Germans call it concisely) is not a good idea.

            2. Clear example of blowing smoke by my anti-patent friend:

              The EPC approach may not be successful for EP law.
              “Negativkatalog” may not be successful for EP law.

              You still must recognize the difference between EP and US law before you seek to apply any conversion of lessons learned.

              As Ned and I point out, your view of US law is faulty.

              Sure a lesson learned may be helpful – but care (extreme care in your artful dodger case) must be taken to see what else may be hidden in a presentation of a (wooden) gift horse.

              The history of Troy comes to mind.

      2. That being said, a careful comparison of the two different legal regimes may provide some insight – but one must be careful to not conflate (e.g. as Ned is often eager to do).

      3. “Algorithms are not excluded because they are abstract, but only if they are abstract.”

        Yup. If something is abstract it cannot be patented. You have captured the tautology perfectly. Now the only thing left to do in any particular case is trivial, requiring zero legal reasoning: simply declare that something is abstract – or not – and you’re done. Order your clerk to publish a sentence announcing your conclusion and go have a beer in the glow of the psychic reward of having earned your judicial paycheck.

        We have a much simpler system over here than in Europe.

        1. Incidentally, I was referring to US case law (Alappat and Arrhythmia). I think that State Street was right in concluding that there is no (reason for a) separate “mathematical algorithm exception” since the general patentability requirements will prevent undesired algorithm patents. Yes, I am aware that State Street is not valid law anymore,but that is because the court made (in hindsight) the mistake to adopt the (extermely wide) criterion of a “useful, concrete and tangible result” as the general criterion (in addition to the statutory requirements).

          Yes, tautologies are a risk. In German law, there is a tendency to define patentable subject-matter as “technical”, obviating any argument whether patents should only be granted for subject-matter in the technological arts. If business methods are patentable in the US, Germans may conclude that they therefore are considered technical in the US!

          1. Yes, tautologies are a risk.

            LOL – a self-referencing statement that shows the point of Tourbillion. Did you mean to buttress his view like that?

    2. Les, it is already there: Section 282 and its legislative history. 282 does not list 101 as grounds for invalidity. Because Frederico intended patentability and validity to be the same, 282 also excludes 101 from patentability.

    3. Sure there is, congress could amend 101 to recite something different, far more inclusive than what is there now. Or they could barely rewrite it from what it is now and indicate in their record that they no longer wanted the judicial exceptions to apply. Their choice.

  8. From the weighs toward eligible list:

    “f) Claim recites one or more elements/steps in addition to the judicial exception(s) that add a feature that is more than well-understood, purely conventional or routine in the relevant field. ”

    “that is more than well-understood, purely conventional or routine in the relevant field”

    So, if there is an additional element that is extremely well understood (which is more that well understood), that is a factor toward eligibility?

      1. Clearly you don’t prosecute patent applications.

        If you did, you would know that 50% of examiners will interpret f) that way.

          1. If you think its easy to correct an examiner, clearly you don’t prosecute patent applications.

            In any event, f) is not a law. Its a guideline.

            Wouldn’t it be better if the guidelines couldn’t be interpreted in two diametrically opposed ways?

            1. Les,

              It is easy – it is unfortunate that it is also a constant task.

              Do not mistake ease with the fact that the task needs to be oft repeated.

            2. And Les, look at (for prime example) the posts of 6 on this board.

              Clearly his belief system gets in the way of law and fact on a perpetual basis.

              Easy enough to dispatch – but the need to dispatch is nearly ever present.

    1. There is no need to drop 101.

      Simplify the application of it and hew to the words that Congress chose (including the notion of “any”) – yes.

      Simplify the application of it to remove the taint of finger-in-the-wax-nose-of-101 implicit philosophical or “policy” judicial law writing – yes.

      101 is a simple statute. The application of exceptions is extreme and therein lies the fault at the onset. The Court was stripped of its authority to set ‘invention’ by common law judgment in the 1952 Act. ALL problems we see can be fully laid at the doorstep of a branch of the government that is supposed to be the watchdog of the constitution, but is itself not following the constitution and the direct and explicit demarcation of authority as to which branch was given the authority to write patent law.

      The elephant in the room will not go away on its own. Appeals to the ends embraced by pure policy arguments must fail, as to embrace an ends-justify-the-means rationale is not supportable when it comes to government power. Read history. Learn history. Or repeat (painfully) history.

        1. And the same entity that wrote Diehr and Chakrabarty.

          It will come down to the adage: “know your limitations.”

          Will the body that is set in place to guard the Constitution recognize when it is the same body that is set to trample the Constitution?

      1. ALL problems we see can be fully laid at the doorstep of a branch of the government that is supposed to be the watchdog of the constitution

        Who’s “we”?

    2. If a law professor assigned a task of reading the Bilski briefs and writing a proposed opinion based on that, the Bilski opinion would have gotten a C and wondered why 1) the opinion basically spent a single page analyzing the core issue of the case; and 2) why the opinion didn’t just use 102 or 103 considering the reasoning seemed to be based on how old the concept of hedging is.

        1. You mean this one: link to papers.ssrn.com

          I had actually never read the Benson case and always wondered why the little summaries of the case said that BCD is unpatentable, when that seems to be a perfectly fine subject matter. That article provides insights. Thanks for pointing it out to me. Guess I should read Benson.

    3. Form a special goon squad. A secret court that invalidates patents and abandons patent applications. They could just report to Congress. Lourie, Posner, and Lemley could be its first members.

      1. Throw in Chien and have the group report to a nameless (who is the Director of the USPTO?) Executive Agency – no need for any other branch of the government… right?

  9. If the factors a-l were claim elements, they would be rejected as indefinite.

    The examples help, and help a lot. One cannot discuss such complex topic out of context it seems. But one could wish.

    Thus: a claim that covers a product of nature or a law of nature is ineligible. A claim to a product structurally different from that in nature is eligible. A claim to an application of a law of nature is eligible.

    Then give the examples.

    The PTO talks about “markedly different.” I think the holding of Myriad was not based on degree or properties, but on structure. Recall, the PTO had long issued patents on isolated DNA because they were deemed markedly different. The PTO trumpets that their approach was affirmed by Myriad.

    What a joke.

    1. “The examples help, and help a lot. One cannot discuss such complex topic out of context it seems.”

      The reason it “seems” that way is because the most notorious judicial exception to 101 is based on tautology and that insidiousness is infecting the other two now. If a claim is defined as “abstract”, then it is abstract. If it is not defined as “abstract”, then it is not abstract.

      So the only way to analyze a claim for abstraction – the only way – is to open scripture and locate the closest Supreme Court parable to the claim. The engulfing “abstract idea” exception to Congressional intent is not so much a legal concept as a pseudo-religious philosophy, which is why your head explodes when you attempt to dignify the issue using classic legal reasoning.

      1. Tour, I agree in principle with your remarks. That is why most of the briefs simply say limiting the claims to a computer should be enough. Other briefs point out that such a rule would overturn Benson and probably Bilski. Still other propose restoration of the MOT as a default rule, a presumption, that still could be rebutted. Still others propose a simple exclusion of subject matter that was not within the useful arts in 1790 – and clearly business methods were not then considered to be within the useful Arts.

        The CLS brief argues that allowing claims on fundamental economic practice has got to be excluded as a matter of law, and they make a great case.

        But no one is happy with the Rader-initiated (Bilski dissent) “these claims are abstract” without any explanation as to why they were abstract.

        1. And once again you are aiming at the wrong target Ned. Rader worked with the tools that he Supreme Court gave him.

          You really have a knack for ignoring the reality about you, don’t you?

          Look at how the other judges that lack some backbone have reacted to the musings of the Supreme Court.

          Open your eyes and place the blame squarely where it need to be placed.

        2. The Supreme Court should do what its supreme hubris impedes: admit that its abstract idea jurisprudence is a colossal blunder and walk it back.

            1. Pope John XXIII expressly declared that he was not infallible.

              The Mt. Olympus allegory, however, is more accurate. You know, false gods infected with extreme hubris, pettiness, and with the exception of Pallas Athena, episodic blundering unwisdom. Spot on, actually.

            2. The infallibility doctrine is somewhat misapplied in EG’s post.

              Infallibility only applies to matters expressed of explicit faith. The intimation that everything done or said must be infallible because “it’s the Pope, dabnit” is a mistake itself.

            3. Yes I know the dogma of infallibility only applies to ex cathedra papal utterances. But it was not necessary to explore the nuances of Catholic theology to observe in response to EG that even popes have the humility to deny they are infallible (John XXIII did not, I believe, except even ex cathedra statements from his confession), whereas SCOTUS judges cherish a blunder provided they originate it.

            4. Well said Tourbillion – my comment though still applies as many will not have the understanding of theology that evidently you and I do.

            5. Tourbillion and anon,

              I stand corrected on my not so appropriate “infallibility” analogy and amen to both of you! Perhaps I should have instead said that the Ivory Leaguers in the Ivory Tower (aka Our Judicial Mount Olympus) need to realize they too have “feet of clay.”

            6. np EG, you did me a favor by showing Tourbillion’s indepth knowledge.

              And I agree with Tourbillion: the Mount Olympus analogy is apt, as the ‘gods’ were often as messed up as your ordinary folk.

    2. I think the holding of Myriad was not based on degree or properties, but on structure.

      Ned,

      You would, of course, be wrong – again.

      It is truly amazing this propensity of yours to ride Merry-go-rounds.

      A claim to a product structurally different from that in nature is eligible” completely misses the Myriad decision as the structure claimed was different – just not different enough, leaving the changed structure to be effectively the same.

      The archives are back up – go back and review all of our discussions. I have already covered all of this in great detail.

      Just as your reliance on MoT is misplaced, so too is your reliance on ‘structure’ per se.

      1. anon, that is not my recollection of the holding. I will, of course, read it again.

        The holding was as I recall that the isolated DNA claimed was the same structure that existed in nature. CDNA was allowed because it was structurally different.

      2. the structure claimed was different – just not different enough, leaving the changed structure to be effectively the same.

        LOL. So the holding is circular, self-serving, irrational garbage after all. Please tell us more, anon.

        “A claim to a product structurally different from that in nature is eligible” completely misses the Myriad decision

        Ned never asserted otherwise. Nice strawman. You do love beating on them, don’t you?

        1. Is this more of your “30,000 plus post-decision mewling QQ and then admit that you still don’t understand the decision but don’t really care” mantra?

          Man, you really svck at this Malcolm.

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