Hindsight in 101 Jurisprudence: an early morning half-baked thought or an insight?

Dennis is on vacation and said I could post so I’m running with it!

The analysis everyone suggests is right under 101 (recall I don’t think it’s an invalidity defense; not sure what impact, if any, it has on patentability) goes something like this:

Is the claim “directed to” some natural law/natural thing/abstract idea?

If so, there must be more than ‘conventional’ application of it.

Applying that to a lot of medical method claims (Ariosa v. Sequenom is discussed by others below), the problem is that, before the discovery of the natural thing/idea/law, no one knew that you could apply anything to do whatever the claim says.  Nothing was “conventional” with respect to the newly discovered thing/law/idea.

By asking what’s conventional, we are importing hindsight.

Thoughts, or am I not yet awake and Dennis should come back and get this ship righted?

One last thought for those of you who think “invention” has meaning beyond 103.  I think the legislative history is beyond clear, as is the statute, but here’s a committee report:

“The major changes or innovations in the title consist of incorporating a requirement for invention in § 103 and the judicial doctrine of contributory infringement in § 271.”

 

72 thoughts on “Hindsight in 101 Jurisprudence: an early morning half-baked thought or an insight?

  1. David: Is the claim “directed to” some natural law/natural thing/abstract idea? If so, there must be more than ‘conventional’ application of it. Applying that to a lot of medical method claims…. the problem is that, before the discovery of the natural thing/idea/law, no one knew that you could apply anything to do whatever the claim says.

    You are falling of the tracks right from the beginning, David. The fact that a particular “discovery” is “new” is not “the problem” with the common-sense analysis of method claims that present eligibility concerns. I’m not sure if your comment above is simply a typo or mis-statement of your views or whether you are deliberately trying to create confusion about the issues. But your comment is plainly wrong. Again: the “new-ness” of the “discovery” is not “the problem” with the eligibility analysis.

    Nothing was “conventional” with respect to the newly discovered thing/law/idea.

    Right. And nobody I know disagrees with this. It’s pretty much axiomatic that new discoveries aren’t conventional (at least not when we use the plain meanings of the terms discovery and conventional).

    Now, I know from prior attempts to discuss this subject with you that you have great difficulty understanding (or caring?) about the policy concerns driving 101 jurisprudence. I’ll remind you again: these issues are never going away. You can address them by statute or the courts are going to address them but rest assured that this country will never put up with a tiny, tiny group of well-heeled elites using patents to protect information, in any context, especially in the context of medical treatment. You can bank on that.

    Like nearly every attorney or judge, if you want to understand “the problem” (and I assume that you do want to understand), it’s often helpful to start with very simple hypotheticals. Here’s one that may sound familiar to you. Imagine that you discover that the rate of growth of one’s pinkie fingernail is correlated with an increased likelihood that one will die of leukemia. You aren’t satisfied with your Nobel prize (who cares about such things? prizes are for c0mmunists!). You want to “own” this “discovery’ because you made it and (you believe) it’s “your right” to “own” it and you believe the patent system was designed to protect your right.

    Presumably, David, you understand that you can’t claim the discovery itself, i.e., you can’t claim “A super awesome correlation, wherein the rate of growth of one’s pinkie fingernail is correlated with an increased likelihood that one will die of leukemia”. Less clear to me is whether you believe that the statute permits you claim to “A mental process, wherein said mental process comprises thinking about a correlation, wherein said correlation is the correlation between the rate of fingernail growth and leukemia.” But it’s completely clear to nearly everybody else including the Supreme Court that, regardless of what you believe, you can’t patent that “process” in the United States (even though it may be useful and non-obvious).

    So what do you propose to do, David? Put a step of “observing the growth of one’s fingernail” in front of the step of thinking about the correlation? Well, again, we all know that can’t work because basic logic (highlighted by the Supreme Court in Prometheus) quickly leads everyone to the conclusion that such a claim still protects the ineligible correlation. We all observe the growth of our fingernails.

    So maybe you want to propose adding a step of “writing down measurements of the growth of the fingernail.” The problem, again, is that you are still protecting the correlation. Why is that the case? Because people have measured fingernail growth in the past. You can’t legally prevent people from doing that and you can’t legally prevent those people who measure fingernail growth from thinking about the correlation. This is just elementary logic. You can’t get away from it, David. Do you understand that, David? It’s important to know that you understand this, David, because if you can’t get this far there really is no point in continuing further in discussions about subject matter eligibilty with you or anyone else who can’t make it this far without losing their shirt.

    The question then becomes: are there any old, conventional fingernail-measuring steps (aka “data gathering steps”) that can be added to this ineligible “correlation” (or “diagnosis”) to rescue it from ineligibility? I believe the answer is “no”.

    Is this a problem with our patent system? I don’t think so. I also don’t think there’s anything radical or controversial about this and, quite frankly, I know I’m in the majority. I talk to regular people all the time about this issue. That leaves those who disagree with me with two options: use “whatever means necessary” to buy or force your will on the public (e.g., bribe a congressperson); or change public opinion (e.g., by comparing your critics to rapists or killers — like some of your like-minded commenters do).

    1. Wow, y’all get personal.

      You think “writing down the measurement” protects measuring? We just don’t see the same thing, I guess, when it comes to words, or we have a different understanding of the all elements rule.

      My point remains that it would be grand if the Court did what it should do, which is analyze the statutory text, and (if true) explain why it is interpreting as it is, despite its breadth.

      Diehr is the only case where it ever really mentioned much about the language…

  2. David Is something in nature not a composition of matter or material?

    A fine question, David. A related question is: what is “in nature” and what isn’t?

    Too bad you weren’t around here sharing your “half-baked” insights in the long run-up to Myriad. I spent a great deal of time highlighting the strange scenarios that are likely to arise when man-made compositions of matter that are similar to compositions “found in nature” are deemed to be ineligible because of that similarity. Method and composition claims (structurally claimed compositions, anyway) are fundamentally different (surprise!) and need to be treated differently.

    1. Everything came from stars, ergo everything is in nature. Nothing can defy laws of nature. Everything implicates an abstract idea. Ergo nothing is patentable.

      1. Everything came from stars, ergo everything is in nature. Nothing can defy laws of nature. Everything implicates an abstract idea. Ergo nothing is patentable.

        You seriously believe this, David? Or are you just acting like a dxpshxt because Dennis left you with the keys?

        1. Um, sarcasm anyone?

          By the way, did you know that facetious is the only word in the English language with all the vowels in the right order? And you can sometimes add y.

          Chill!

    2. You spent a great deal of time spewing bogus rhetoric and refusing to answer simple questions prior to the Myriad decision.

      You spent a great deal of time spewing bogus rhetoric and proclaiming puzzlement after the Myriad decision.

      No real surprise.

      Care to define “treated differently?” Is that definition right next to the definition of “abstract,” or “technological” (the non-circular one)? Are those items right next to the constitutional grant of authority to the judicial branch for writing patent law? Will you actually answer any questions put to you? Or will you run away like you did THROUGHOUT the Myriad discussions?

      Yeah, thought so.

  3. David, your citation to 100(a) does not say what you think it says. Section 101 clearly means to limit patents to applied technologies, not discoveries. This has ALWAYS been the law, before they wrote it down in statute. For example, this quote from Morton v. New York Eye and Ear Infirmary, 17 Fed. Cas. 879 (C.C.S.D.N.Y. 1862)

    “In its naked ordinary sense, a discovery is not patentable. A discovery of a new principle, force, or law operating, or which can be made to operate, on matter, will not entitle the discoverer to a patent. It is only where the explorer has gone beyond the mere domain of discovery, and has laid hold of the new principle, force, or law, and connected it with some particular medium or mechanical contrivance by which, or through which, it acts on the material world, that he can secure the exclusive control of it under the patent laws. He then controls his discovery through the means by which he has brought it into practical action, or their equivalent, and only through them. It is then an invention, although it embraces a discovery. Sever the force or principle discovered from the means or mechanism through which he has brought it into the domain of invention, and it immediately falls out of that domain and eludes his grasp. It is then a naked discovery, and not an invention.”

    Additionally. the four terms “machines, articles of manufacture, compositions, and processes” should be read together. See P.J. Federico, the main author of the 1952 Patent Act: “[t]he four terms used . . . are often referred to as the four statutory categories of subject matter,” “[m]y own view is to regard them collectively as somewhat overlapping expressions . . . .” As such, they assume that each denotes a type of applied technology. Moy’s Walker on Patents, Sec. 5.4. This is entirely consistent with other countries, who expressly limit patents to applied technology.

    1. Okay, well, I’m not so sure I’d ever interpret a statute in light of a district court case. Let me do what the Court did in its 285 decision: look at the ordinary meaning.

      So “discovery” means something that’s been discovered. Discovered means:
      dis·cov·er [dih-skuhv-er] Show IPA
      verb (used with object)
      1.
      to see, get knowledge of, learn of, find, or find out; gain sight or knowledge of (something previously unseen or unknown): to discover America; to discover electricity. Synonyms: detect, espy, descry, discern, ascertain, unearth, ferret out, notice.
      2.
      to notice or realize: I discovered I didn’t have my credit card with me when I went to pay my bill.
      3.
      Archaic. to make known; reveal; disclose.

      So… according to Octane, we don’t look at legislative history, blah blah blah.

      Now, if you want to get to the issue of interpreting 101 to avoid unconstitutionality, that’s a very very different beast. I wish they’d approach this issue this way but, alas, they’re just making it up as they go.

      1. Now, if you want to get to the issue of interpreting 101 to avoid unconstitutionality, that’s a very very different beast

        Naturally, and as is quite clear, NONE of the (other) regular pundits want to go anywhere near that discussion.

        Gee, I wonder why?

    2. Section 101 clearly means to limit patents to applied technologies

      Clearly?

      Define “technologies.” Do not use a circular definition.

  4. Hi David –

    I wonder if the In re Ochiai case, from a 103 context, might be analogous:
    “Applying this statutory test to the art of record, we conclude that Ochiai’s process invention as claimed is not prima facie obvious.   The process invention Ochiai recites in claim 6 specifically requires use of none other than its new, nonobvious acid as one of the starting materials.   One having no knowledge of this acid could hardly find it obvious to make any cephem using this acid as an acylating agent, much less the particular cephem recited in claim 6.”

    1. Thanks — that is brilliant, Goldplated. What wasn’t known can’t be obvious, to state the obvious. It’s not “would have known once you saw the invention.”

  5. I’ll pull the plain text and definitions in 101 together so you can see the really big problem with all this jurisprudence.

    Key definitions from 100:

    (a) The term “invention” means invention or discovery.
    (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    Text of 101:

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    Put together in ordinary meaning:

    Whoever invents or discoveries any new [see 102] and useful process — which includes a new use or method using a known process, machine, manufacture, composition of matter, or material — may obtain a patent therefor, subject to the conditions and requirements of this title.

    So, even a process using a “known” material is patentable, so long as it meets 102/03. But a process using an unknown material is not unless it involves “more” than 102/03?

    1. I think the SCOTUS has a view of invention from Hollywood. They have probably seen the movies about the great inventors inventing the telephone or the light bulb and image that while sitting at a fire one person makes a giant leap in innovation. They want a giant step only to be patentable. In other words, they have no idea how real innovation occurs outside of the movies.

      Let’s not forget Judge Posner’s description of his roommate staying up all night to work on a project. To paraphrase, those geeks don’t need incentive. They naturally just tinker and invent. What does a couple of pizzas cost anyway? They usually live with their parents in the basement too. (Presumably all that equipment it takes to invent magically appears from somewhere.)

      1. . (Presumably all that equipment it takes to invent magically appears from somewhere.)

        Of course, just wave your magic wand over ‘oldbox’ and it will appear.

    2. Whoever invents or discoveries any new [see 102]

      Ah here’s your problem. New in the 101 context is not the new of the 102 context. Whereas the 102 context means “not disclosed to the public” the 101 context means “not preexisting” in the always-been-there sense that natural plants preexist or laws of nature preexist.

      The long strand DNA “cut” from the whole DNA strand in Myriad had always been in our bodies, therefore they existed in nature and thus preexisted. The shortened DNA had to be created by snipping out pieces of the long strand DNA, and thus that sequence had never existed before, and was therefore “new.” Further, because Myriad was the first to do the snipping, it was also novel. Myriad might also have been the first to cut out the long strand DNA, making it novel, but not new.

      1. New in the 101 context is not the new of the 102 context. Whereas the 102 context means “not disclosed to the public” the 101 context means “not preexisting” in the always-been-there sense that natural plants preexist or laws of nature preexist.

        Citation please (and please note that you are falling into the same Ned Heller fallacy that the universe is constant. Hint: it is not).

      2. snipping out pieces of the long strand DNA, and thus that sequence had never existed before, and was therefore “new.”

        Um, you might want to read that case again….

        I think there is a 2D version out now…

  6. I think it’s worse than that, and that’s my point: once you conclude the claim is “directed to” a natural thing (let’s say free floating fetal DNA as in Ariosa), you immediately import hindsight into the analysis and ask if, once you know about the natural discovery, only conventional steps are needed. That turns everything upside down: I learn that a plant in the jungle cures cancer. I claim a method of grinding it up, using conventional methods, and injecting it, using conventional methods. No patent. (No, I can’t claim the product; method and product claims have to be different and it’s when you have a method directed to an intangible idea/law, or a product claim directed to a tangible thing, that 101 concerns, if they exist, arise.)

    You know, back in 1946 Congress set up a commission because of the mess the courts had made of the word “invention” in what is now 101. It resulted in 103 being the test for “invention.” And, here we are.

    1. You know, back in 1946 Congress set up a commission because of the mess the courts had made of the word “invention” in what is now 101. It resulted in 103 being the test for “invention.” And, here we are.

      And for someone unknown reason, the notion that those who do not learn from history are bound to repeat it only earns scorn and derision from certain regular posters… (either that or the purposeful choice to ignore that reality)

      Never mind the facts as I have so generously bestowed in multiple conversations, there remains those that refuse to understand the history and refuse to give credence to what Congress did.

    2. I think this is exactly right. I think the SCOTUS is going back to the flash of genius standard. The problem we have is that every SCOTUS justice is ignorant of science and innovation and a majority of the judges on the Fed. Cir. is ignorant of science. This shames our country. As far as I can see, the new judges on the Fed. Cir. have no interest in learning patent law, but upholding their pledge to burn the system down.

      1. Can’t wait to see the latest dirt bag Obama is going to appoint. Will it be from the DOJ or Harvard? Likely a political science major that never made it in their realm and is happy to trade a pledge to burn the system down for his appointment as prince in the Federal Circuit.

        Stomach turning. Your posts of 101 should shock any rational decent person.

    3. (sigh) – the moderation filter word list still needs modification

      You know, back in 1946 Congress set up a commission because of the mess the courts had made of the word “invention” in what is now 101. It resulted in 103 being the test for “invention.” And, here we are.

      And for someone unknown reason, the notion that those who do not learn from history are bound to repeat it only earns scorn and derision from certain regular posters… (either that or the purposeful choice to ignore that reality)

      Never mind the facts as I have so [graciously] bestowed in multiple conversations, there remains those that refuse to understand the history and refuse to give credence to what Congress did.

      1. Never mind the facts as I have so [graciously] bestowed in multiple conversations,

        Was that before or after you and NWPA compared people who disagreed with you as “rapists and killers”?

        I’ve often wondered why this little yapping s0ci0 path is kept around here. Care to inform us, David, now that the boss is away?

        1. You people like you MM that refuse to have a civil debate and deny modern science and philosophy? Is that the type of person you are?

        2. So, MM, you call anon a “this little yapping s0ci0 path,” and yet you are highly offended at being compared to religious fundamentalist that reject modern science and philosophy?

          Seriously? You are proving that you are exactly what I said you are like. Just remember history. Those that burn books are just one step away from burning people. You are squarely in the burning book group.

        3. you and NWPA compared people

          Run with the blatant 1ie pumpkin – did I actually compare? What were the explicit words?

          LOL – love the Malcolm FAIL.

    4. This is a poor example Dennis.

      “I learn that a plant in the jungle cures cancer. I claim a method of grinding it up, using conventional methods, and injecting it, using conventional methods. No patent.”

      How particularly awesome an effect is doesn’t change the fact that you (in this example) didn’t make the effect. Let’s try the same legal argument on a more accurate scale:

      I learn that a plant in the jungle smells nice. I claim a method of cutting the stem, using conventional methods, and carrying it with me, using conventional methods. No patent.

      And yet my “invention” is still useful – I get a pleasant smell all day from a previously unknown natural thing. Maybe not as nice as curing cancer, but no less worthy of protection.

      You’re not really seeking protection for a serum that cures cancer, you’re seeking to monopolize nature’s ability to cure cancer. That’s not even nominally something “under the sun made by man.” There is no societal benefit for rewarding the forager as by definition is cannot induce him or others to recreate similar actions, as man is not God. Not to mention you would essentially be killing everyone who could not afford the licensing fees. Nor is there societal benefit in restricting access in exchange for the disclosure, since sales profits are sufficient to induce a sale and the product is reverse engineerable.

      Contrast this with a mixture which is created by man. In that case the selection of parts is likely both nonconventional (101) and nonobvious (103), and would result in a patent. In that case the effect is not a naturally occurring effect, but a synthetic effect based upon the interplay chosen by man. Change the proportion, change the effect, and the invention lies in the combination.

      In other words, for the vast majority of cases, there is no issue here. You happened to select an example where that is not true, but the specific problem also has a specific solution.

      1. It’s not Dennis, but okay.

        Let me try it this way:

        I discover that conventional plastic, for whatever reason, when ground up using conventional methods and injected using conventional methods, cures cancer. It revolutionizes the world and is clearly 102/103 patentable. It meets the plain text of 101, right?

        But, if someone “forages” in the prior art, they can get a patent, but not if they “forage” in the human body for something never discovered? Seems quite backwards and both “take away” something in the “public” (though in the case of natural undiscovered things, that’s obviously a fiction).

        1. haha my bad, too early and too many “D”s.

          This is a better example. Lets assume language that gives the effect of:

          Claim 1: A method of curing cancer.
          Claim 2: A method of curing cancer utilizing quality Y (with the unstated fact that Y kills cancer).
          Claim 2: A method of curing cancer by conventionally grinding up X, and injecting X.

          1 is clearly abstract right? The fact that cancer can be killed is a natural phenomenon. First box checked.

          2 is also abstract, because the relationship between Y and cancer is a natural phenomenon.

          3 is not abstract because X is neither abstract nor in nature. First box not checked.

          So you could clearly get a patent on using your plastic X to cure cancer, but that’s all you could get a patent on, you cannot expand it to the more general concepts of cancer killing. I should point out that DoE might render the scope of claim 3 to be largely coextensive with claim 2 at the end of the day anyway. Note also that claim 3 lacks the scope of enablement and description issues that claim 2 would have (i.e. claims 1 and 2 might be of a practically unobtainable scope anyway) so even if you viewed 101 differently the results might be the same.

          In any case, this follows from Alice: If Alice disclosed and claimed a particular means of achieving the result, their patent would have been valid, albeit possibly less commercially valuable.

          These past 101 cases are not absolutes about whether embodiments can be patented, they’re cases that wrangle in how abstract one get from the particular means. Software is similar yet different from the medical field in that fashion. A claim to an abstract computer result is merely a logical recitation. A claim to an abstract scientific result is merely a natural phenomenon. But particular means of achieving the results have always been and are now allowable. In that sense, these cases are further recitations against functional claiming which, again, has always been the case.

          But, if someone “forages” in the prior art, they can get a patent, but not if they “forage” in the human body for something never discovered?

          I take your point here, but clearly there is a distinction between making something which turns out to have extra uses versus something you never made at all. Again, the problem with your previous example was that the cancer cure existed in an natural, unrefined state. If you had to combine the extract with something to cure the cancer you’d have an eligible method.

          1. I appreciate that. I just scratch my head. When I read your post, we end up with a system that — despite what 100(a) says — allows you to claim new uses for old products, so long as the product was previously discovered and now is in the prior art. How do you square that with 100(a) and 101, quoted above? Is something in nature not a composition of matter or material?

            Btw, I just had a law professor email me and say that because it’s only a “discovery” of something in nature, and not an “invention” it’s not enough to be an invention under 101… I pointed her to 100(a)…

            What I find fascinating is that I can argue all sorts of policies but I can’t make these policies fit the statute. Methinks it’s not the court’s job to make up policies (especially after they gummed it up once already), but Congress’s.

            1. Well I question your reliance on 100(a) as well. Discovery as we generally use the term (“finding out something new”) has never been a patentable act. Patent law has been used to protect articles moving in commerce, and the court has routinely resisted claims that broaden it to “ends” rather than “means”. This usually manifests as functional claiming which has always generally been tossed out (see Morse through Halliburton). The court needs to reassert Halliburton main holding (the functional one, not the scope) and it would go a long way to making clear that cases like Ariad and Lizardtech are great signposts.

              A lot of claims nowadays are overbroad, and that overbreadth sounds in 112 1st and 112, 2nd but there’s a point where it gets so bad it constitutes a 101 as well. That’s all these cases are saying.

              allows you to claim new uses for old products, so long as the product was previously discovered and now is in the prior art. How do you square that with 100(a) and 101, quoted above? Is something in nature not a composition of matter or material?

              In the former you’re applying actions to a statutory area so unless the actions so dominate the claim (i.e. you have one limitation about a computer and the bulk of the claim deals with claiming einstein’s theory of relativity) there is comparatively little risk of being outside of 101. Conversely, when the base item is a non-statutory plant, you NEED the actions to dominate the claim, lest the scope of claim actually be a scope to the non-statutory plant. When the actions are broad or routine, they fail to dominate.

              1. Well, 100(a) says what it says, and it was put there in 1952 to BROADEN what could be patented, and clearly it can’t mean the same thing as “invention” as that renders a statutory term meaningless…

                I think the statute says that a discovery of a process that uses old materials is patentable as long as it meets the conditions of patentability 102 (new) and 103 (the “invention” requirement as the reviser note says). That’s what it says.

                What does “discovery” mean in 100(a)?

      2. In your example, the best reason a method of identifying a pleasant smell, isolating a source of the pleasant smell, and applying the pleasant smell to a person should be excluded under section 101 is because it is “conventional.” Are you saying that if I try to patent a method for identifying a new species of tree, cutting the tree down using an axe, and shaping the cut tree into a known shape that obviously benefits from the tree’s unique properties, the rejection will be subject matter eligibility and not obviousness?

        1. I’m saying in my example that the act of cutting a rose to take it with you is not an eligible method, just as using a mortar and pestle to grind a plant is not an eligible method.

          With respect to your tree example, if you mean by that “shaping the tree wherein the shaping is based upon the properties of the tree,” that without more is probably not eligible. The way I look at it is this: If there is an invention, the applicant has to add something to the store of human knowledge. That addition has to be novel, enabled, described, create something non-obvious, etc. That example is so old that one cannot even view there being an addition at all, as the earliest people probably knew you couldn’t shape a small tree into a large object and thus made a shaping decision based upon the type as it related to size. When there’s no addition there’s no creation or improvement, so there’s a 101 issue.

          But we’re just jumping hoops here right? I mean you seem to agree its clearly obvious, so there’s no valid patent anyway. The issue comes up when there is a non-obvious result, but that non-obvious result only comes about because of a logical or natural action, which patent law does not view as a protectable act. Software is particularly vulnerable to this because in a lot of software the only addition by the inventor is the addition of intellectual brainstorming.

            1. That is indeed what I meant. The applicant is not really arguing that he invented the method of using a mortar and pestle, he’s arguing that he has a plant that has a quality, with token steps to bring out that quality. It fails 101, it is not eligible.

              1. That’s the scary thing Random Examiner – is that YOU meant that (while STILL completely missing the critical point that the words cover different concepts).

                You keep on running into that circle. Either jump over the circle, or be content within the circle.

      3. Discussing law with Random Examiner is like trying to tell the two-dimensional man that he can leap over the circle and escape his prison.

  7. A) Mere discovery alone is not enough.

    A hypothetical discussion:

    Larry: Eureka ! a fantastic discovery! Maybe I can obtain a patent on my discovery.

    Moe: No.

    Larry: Why?

    Curly: Well, you need to do something with it.

    Larry: OK, What?

    Curly: Something “more.”

    Larry: What if that something “more” is “abstract?”

    Moe: No.

    Larry: What if that something “more” is conventional?

    Moe: No.

    Larry: So you want that something “more” to be not “abstract” and not conventional?

    Curly: Yes.

    Larry: So the something “more” itself needs to be able to be an invention on its own?

    Curly: Yes.

    Larry: So why bother with the discovery at all, as what I need beyond the discovery is something that I can get a patent for on its own?

    Shemp: Good question.

    1. Hah, why not go a step farther and ask: After all, if the monetary benefit is the direct result of the application, why not just file an application without inventing anything? Where’s the motivation to invent if the application is what results in the money?

      Your problem is that use of the word “discovery” is not the constitutional use of the word discovery, nor is it a 101 statutory standard. Consequently your phrase “something more itself needs to be an invention on its own” is misleading because there was never an initial invention and thus there is no “on its own.”

      You attempt to make it sound like there is invention A and invention B, and why pursue A when B is the only thing protected. The actual case is that there is nothing more than a partial completion of a single invention. The motivation for making the scientific discovery is the same motivation for completing an invention before one was has prepared an application: You are taking another step toward achieving a property right.

      Research in and of itself was never a patent law goal. There is no societal benefit to restricting scientific/philosophical discovery. If you can’t understand why the founders didn’t want to either sanctify or monopolize scientific and philosophical thoughts you may want to retake your history courses or just google marketplace of ideas.

      Einstein posited time dilation in his views on relativity, but that wasn’t “proven” (as well as you can prove in science) until we sent an atomic clock aboard a spaceship. Who “invented” that abstract idea, was it Einstein or NASA? At what point and via what standard does the federal government of the united states, rather than other thinkers, certify that time dilation is a true and correct thing? (Keeping in mind there is a political debate in some unfortunate corners of our country about whether evolution is an actual thing or not, just another reason you cannot meld state action and science sometimes.) And what do we do, give Einstein singular say over any useful invention that uses the time dilation that he didn’t create? (Which, btw, is the same issue with Morse and most other functional claiming)

      I love this “lack of textual support” viewpoint that keeps cropping up here. You don’t need more than five minutes of thinking to show the court’s exceptions (and in your example it’s not even eligible to begin with) are not only intended but necessary.

        1. LOL – Bingo.

          But then again, Random Examiner is the same guy that likes to whine that examiners have it tough because they have to face lawyers that (gasp) know the law.

          No really, he does.

          1. I don’t whine at all. I simply point out that you won’t get quality patents when you hire non-lawyers to fight lawyers. That’s the same reason you need a license to practice law in general, but go ahead and make fun of it.

            The examiners get paid either way. If you want to pay for junk then you get junk. The government is always happy to take your money.

            1. I don’t whine at all.

              Yes. You do.

              I simply point out that you won’t get quality patents when you hire non-lawyers to fight lawyers.

              Move the goalposts back – this is the very first time you are providing this message.

              If you want to pay for junk then you get junk.

              LOL – you completely WHIFF here – do your Fn job, and stop whining about the other side. No one “pays for junk.” We pay for examination.

              You must be confused (no doubt sitting too long at Malcolm’s bedside) as to thinking that a rubber stamp Approve Approve Approve mechanism is what is wanted.

              Wake up son.

        2. Odd, I thought you knew this author:

          link to patentlyo.com

          Three-months-ago you seemed to get it.

          Look lets assume that “discovery” in the constitutional sense meant any previously unknown fact. If ever Congress had the power to restrict that (as indeed, 101, 103, 112 are Congressional barriers to a patent, not Constitutional ones) it certainly lost that power after the first amendment. But I think you know that Congress never had the power to begin with, because discovery was never meant in that manner.

          1. RG, if the supreme court would actually apply constitutional avoidance doctrines to 101 (which is what you’re suggesting — interpret the statute to avoid unconstitutional interpretations) — we might have more to go on. But they’re just making this stuff up in an ad hoc basis, which means the law develops depending on the random occurrence of appeals, not thoughtfulness.

            1. Well I agree with you there – as I said earlier in the week the Court should just come out and say its necessary to do so to preserve the constitutionality. They seem to cling to a “this couldn’t be what was intended” mindset because historically that has always been the way it has been done and there is no stated intent to depart from that, and that is problematic. But only on a procedural level.

              The federal government is not the arbiter of ideas and expressions, nor would it be able to engage in viewpoint discrimination, nor impede in dissemination. You can tell by the other powers granted to the federal government that the patent clause is related to regulation on commerce, not thought.

          2. Further, if that was really the intent you would see everyone who publishes a scientific treatise also filing an application on the principles in it. Nor do you see news reporters seeking to apply for protection of disclosure of new and previously non-public facts. I’m not aware of the office granting those, or of anyone really trying. Such a reading is so clearly at odds with the powers of the federal government that it’s crazy.

            1. Go back to my hypo about medical patents. I don’t care about newspapers and silliness. That is the narrow focus. The next case up is Ariosa and it puts all this mess in the forefront.

      1. not only intended but necessary

        You know, I am having trouble finding authority for that in the constitution. My version seems to vest authority in only one branch of the government.

        Is this another of those “d@m, those lawyers know the law” moments for you, Random Examiner?

        1. I’m not sure you’re a lawyer anon. Certainly you’re not a good one.

          Assume “discoveries” had the scope you meant: “Discovery” is the act of finding or learning something for the first time (Merriam Webster). This means a reading of the constitution would grant to Congress the ability to secure to the discoverer exclusive right to their finding for a limited time.

          Such a grant would read on, at the very least, news reporting, philosophical writings, theories of government (business methods if ever I heard one), mathematical truths, scientific research. If ever Congress was granted the right to restrict the dissemination of information in those spheres, the first amendment took it away. This is first year con law stuff, are you sure you’re a lawyer?

          1. I’m not sure you’re a lawyer anon. Certainly you’re not a good one.

            LOL – the ultimate lame-@$$ response.

            You sir are as clueless as you appear. I will take your “view” of my “not being a good lawyer” as a compliment, as you clearly lack the understanding of what a good lawyer is.

            Now, why don’t we hear more whining from you as to how unfair it is that lawyers use law in arguing for their client’s patent rights…

            The fact that YOU are injecting First Amendment into the discussion is surely not a critique of my legal knowledge.

            I bet you cannot even figure out why you are so deep into the weeds, can you?

            But hey, lay out those vap1d accusations anyway. Keep on digging furiously, you are bound to get out of that hole you are in someday.

            /eye roll

          2. …I do have to say, though, that I have never seen someone meltdown so completely so quickly. Not even Malcolm. Not even MaxDrei.

          3. ..and please, when you compose yourself again, please provide that constitutional authority for your “intended and necessary” position.

            Let me know if you need a lawyer’s help – even a not very good one should be able to enlighten you.

            1. I know understanding and law aren’t your strong suits so I’ll use small words.

              There’s two outcomes:
              1) You are wrong about how broad the word “discovery” in the Constitution is or
              2) You are right about how broad the word “discovery” is, and the first amendment, which is a check on Congress, modifies the grant of power in the patent clause.

              It is the court’s function to inform Congress how broad their grant of power is and how it is interpreting statutes. Whether you want to view the abstract idea doctrine as one that reads on the intent of congress in section 101 (“Congress, understanding as it wrote the 1952 law that there was a first amendment and that they were charged with promoting useful arts and sciences, never intended to include abstract ideas within 101″), or as a necessary constitutional requirement (“Congress intended to include abstract ideas, but their grant of power is not sufficient”), the result is the same. In either case, Congress cannot restrict abstract ideas by assigning rights to them to certain people, and punishing anyone else who uses them.

              1. I know understanding and law aren’t your strong suits so I’ll use small words.

                AOOTWMD fails for Malcolm, so I am not sure why you think it will work for you.

                Since you are the one insisting on dragging first amendment into patent law, well, it is pretty obvious that you are the one that does not have strong suits here.

                Thanks for playing 2D man. You really do not have to escape your circle if you do not want to.

          4. Actually, discovery when the US constitution was written more naturally meant simply disclosure as in legal discovery. An author gets protection for his writings and an inventor gets a patent for his discoveries i.e. the writings, drawings and models that he provides to the US Government. The more generic term was needed because an inventor provides more than just “writings”.

            You can ask 100 US lawyers what “discoveries” means in the US constitution, and virtually none of them can give a correct answer.

              1. And that would be the key: does the Constitution limit 101 to something other than its plain text would indicate? That is the issue someone needs to tee up as the Court has NEVER had to deal with the statute’s plain meaning… at least since Diehr.

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