The following guest post comes from USPTO Commissioner for Patents Peggy Focarino and is a re-publication of what Commissioner Focarino published on the USPTO Director’s Blog.
Today I would like to address our ongoing implementation of the June 19, 2014, unanimous Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (Alice Corp.). In the decision, the court held claims to a computerized scheme for mitigating settlement risk patent-ineligible because they are drawn to an abstract idea. I want to share with you the steps we’re taking to implement the decision.
First, on June 25th, we issued preliminary examination instructions to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice Corp.
Second, the USPTO has applications that were indicated as allowable prior to Alice Corp., but that have not yet issued as patents. Given our duty to issue patents in compliance with existing case law, we have taken steps to avoid granting patents on those applications containing patent ineligible claims in view of Alice Corp. To this end, our primary examiners and supervisory patent examiners (SPEs) promptly reviewed the small group of such applications that were most likely to be affected by the Alice Corp. ruling.
We withdrew notice of allowances for some of these applications due to the presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions. After withdrawal, the applications were returned to the originally assigned examiner for further prosecution. Over the past several days, our examiners have proactively notified those applicants whose applications were withdrawn. (Applicants who had already paid the issue fee for applications withdrawn from allowance may request a refund, a credit to a deposit account, or reapplication of the fee if the applications return to allowed status.)
This limited action was closely-tailored and taken specifically in reaction to the Alice Corp. decision. We do not anticipate further review of any applications indicated as allowable under this process, as examiners are currently following the Alice Corp. preliminary instructions during examination (i.e., prior to allowance).
Third, as we continue to study Alice Corp. in the context of existing and developing precedent, public feedback will assist us in formulating further guidance for our examiners. On June 30th, a Federal Register Notice was published to solicit written comments from the public on the preliminary examination instructions. The period for submitting those comments ended July 31, 2014. We appreciate the comments we have received to date. All input will be carefully considered as we work to develop further examination guidance, which we anticipate issuing this coming fall.
We look forward to working with our stakeholders in refining our examination guidance, and will continue to seek feedback as we implement changes as the laws evolve.
Ned said:
“anon, if one cannot “ignore” ineligible subject matter in conducting a 102/103 analysis, then one can effectively patent anything at all simply by adding in something, anything, eligible to the claim albeit that it is completely old.
Take math.
That is not eligible.
Add a pencil and paper to perform the math and suddenly the subject matter is “novel” in a 102/103 sense even though the only thing new is the math?”
But this is what the EPO does, and it works just fine, despite the cat-calls from the UK that it is “intellectually dishonest”. At the EPO, if you claim
“1. A computer.” or “2. A computer running a business method” or 3. A computer-implemented business method.” or “4. A disc carrying a business method program.”
it’s eligible because computers and discs have technical character and the patent system is co-terminous with technology.
It works at the EPO because the EPO is civil law not English common law, and because the EPO’s “Problem and Solution Approach” to the analysis of novelty and obviousness makes an early breakfast of any non-technological stuff in the claim .
I still think Randall Rader (often in Munich) found the EPO way rigorous, intellectually satisfying, and persuasive but got burned out by the greater pragmatism of many others, who realised how costly it would be, in the USA, to place the filtering burden on 102 and 103.
“take math”
Already noted: math and applied math = two very different things in the patent context.
Patent eligible and patentable = NOT a matter of “pragmatism of filtering burden.
Our Congress acted with a reason for creating and separating these two notions in 1952.
It is our law.
Still.
The Supreme Court does not have the authority to rewrite that law.
101? That’s the one that ties the pre-filtering for eligibility of subject matter to a matter of panning for the gold of subject matter that is BOTH “new” AND in the “useful” arts. I think SCOTUS is at last communicating to us effectively what, in the context of the Constitution, 35 USC 101 actually requires.
As to patentable novelty, 102, that’s another issue altogether. We agree about that.
“ is at last communicating to us effectively”
(guffaw)
3, the new 4, is still not 5.
(these comments directed to Ned – not MaxDrei) – that was not apparent in the comments
“It works at the EPO because the EPO is civil law not English common law”
Of course, the lesson to be learned here is that there is no patent common law as that term is meant in legal systems where it comes to writing the law for what is patent eligible.
Reading a map is allowed.
Writing the map is not allowed.
This is directly tied to our constitution and the allocation of authority therein.
Apparently those uneducated in law continue to confuse the authority granted by Congress in earlier patent law for the judiciary to develop the concept of “invention” with some wholesale free-for-all of common law.
That authority was removed in 1952.
Also those uneducated in law might miss that NOT ALL common law has been removed. Congress still allows common law development along the lines of equity in the enforcement phase of patents. See 35 USC 283 for how that allowance to the courts is worded. No such words exist in 35 USC 101.
Max, I think we already discussed this problem before in that, in Europe, technology can be taken into account in determining “inventive step” because “invention” is what is being determined. In contrast, by the time one gets to the 102/103 filter in the United States, it is assumed that one is analyzing patentable subject matter so the only question left is whether the differences between the claimed subject matter and the prior art are obvious, not whether those differences are directed to an otherwise patentable invention.
This is why those who advocate moving the analysis of patentable subject matter from 101, to 102/103, thoroughly misunderstand the inquiry. Moreover, those who advocate removing novelty from the analysis of patentable subject matter in 101 also thoroughly misunderstand the inquiry.
The Supreme Court likes to do the analysis by first identifying whether the claim is directed to ineligible subject matter. It then determines whether enough new, but eligible subject matter is present such that a meaningful inquiry can be conducted under 102/103 to determine whether that additional, eligible subject matter is patentable. But this inquiry also could be framed as determining what is new in the claim and whether that subject matter is eligible.
However, we cannot adopt the European approach because of the history, background and the wording of §103 that is designed to prevent any inquiry there as to whether the subject matter being claimed is otherwise statutory.
Patent eligible versus Patentable
The obfuscation is as apparent as it is purposeful.
Thanks Ned. You write:
“we cannot adopt the European approach because of the history, background and the wording of §103 that is designed to prevent any inquiry there as to whether the subject matter being claimed is otherwise statutory”
I defer to you on US law. However, I am not yet convinced. The EPC 103 provision (Art 56, EPC) reads:
“An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”
Nothing there about “technical”. Yet the EPO manages to give no patentable weight to non-technical inventive steps (in accountancy, tax saving, book plots etc). For the EPO, the only kind of inventiveness that “counts” is the sort of inventiveness that corresponds to a patentable invention, that is to say, a non-obvious solution to a problem found within the useful arts. That’s no more than commonsense and SCOTUS is not afraid to invoke commonsense when it suits it to do so. What is to stop SCOTUS making just such a pronouncement (except the shame of once again following a path pioneered by a foreign Patent Office). I don’t see it yet.
The shame would be SCOTUS actually listening to you and “following a path” that lies in foreign law and not in US law.
Reading the map is not the same as writing a map.
Max, I would like to point out that the EPC statute still considers “the invention.” It does not consider, as in the US statute, “the differences.”
From 17.1.5.1.2.1.1
“What if neither the “doing something” nor the “thinking” are new taken in isolation, but the combination of the “doing something” and the “thinking” is new?”
is I suppose yet another way of exploring whether it is legitimate to “dissect” a claim when considering its eligibility.
It set me wondering whether it makes any sense, to talk about a “combination” of an old act with a new thought. The old act takes place wholly outside the human brain. The new thought takes place wholly within the human brain. How do you “combine” them? How do you even collocate them (or even bring them into any sort of intercourse, the one with the other)?
Could Anon2 come up with an example of “the combination” so I can think about it some more?
For some reason this is stuck for moderation. Trying again to see if it works:
“This is going beyond the purpose of the initial example. My thoughts are that in general it does not make sense to claim an abstraction as an element i.e. as part of what the invention “comprises” as opposed to context or starting material etc. I merely observe the single category “process” can include both an abstract process and a tangible process.
I agree that in general an abstraction plays no part in anything claimable as tangible. You need not claim a piece of clay “combined” with (a mystic@l) purely abstract Platonic spherical form, to obtain a roughly spherical real piece of clay… you need only claim the real piece of clay in the form (substantially) of a sphere. You need not claim a process which is a combination of one actual process step literally directed (impossible) by an ephemeral abstract intrinsic pattern of repetition… you need only claim actually doing the process steps in the particular manner i.e. with repetition.
There is no argument that the real things can be represented by abstractions, or that the use of abstractions can lead an inventor to develop a real thing, but the patent drafter ought to describe and direct his claim to the real thing.
I agree that dissecting claims is problematic. I would prefer the test to be whether a claim as a whole is patent eligible not whether this part or that part is.”
If “claim as whole” means that if any part of the claim, however old, is statutory, then the 101 becomes a meaningless farce.
Not at all.
Truly.
Truly not.
If you understood ANYTHING from Frederico, you would understand what Congress was up to in the 1952 Act.
IF – as you would have it – 101 (patent eligible) were not distinct from 102/103 (patentable) then Congress would not have set them up so.
You continue to purposefully conflate patent eligible and patentable. These are two distinct concepts. You have an ethical duty to recognize this.
anon, if one cannot “ignore” ineligible subject matter in conducting a 102/103 analysis, then one can effectively patent anything at all simply by adding in something, anything, eligible to the claim albeit that it is completely old.
Take math.
That is not eligible.
Add a pencil and paper to perform the math and suddenly the subject matter is “novel” in a 102/103 sense even though the only thing new is the math?
Kicking up dust as usual Ned.
You still need to take the claim as a whole, no matter what bits and pieces are connected therein.
Being old?
LOL – seriously? How old are electrons, protons and neutrons?
link to en.wikipedia.org
My reply is stuck, awaiting moderation. Not sure why.
Did you include a gen- word?
Until there is a genuine combination separate consideration of elements is not “dissection”.
That’s not a bad way of putting it.
Place an egg into boiling water, count to 12, remove egg.
Place an egg into boiling water, count to 50, remove egg.
Nice one Ned. A 3 step method, with the middlestep, timing, one that can be effected by thinking. Its not thinking that cooks the egg though. Its the timing.
Doctrine of equivalents also realizes that the “counting” is not necessarily even a “thought” type of thing…
“How do you even collocate them (or even bring them into any sort of intercourse, the one with the other)?”
That’s not a serious question is it?
If it is, then mechanism reply set to “You are a f001”
If it is not, then mechanism reply set to “Don’t try my patience, f001.”
That’s the problem you have with your dissection – it distorts what the claim as a whole is.
Anon2 — it’s refreshing to find yet another commenter making an apparently bona attempt to break things down. I’ve presented lists of abstractions similar to yours many, many times here over the past several years. It’s useful to remind people that not all “abstractions” are difficult to identify as such lest we are subjected to endless commentary along the lines that “the term ‘abstract” is meaningless and every patent is now threatened!”.
Abstractions are disembodied ideas. Thus, all information — facts, non-facts, dreams, fantasies, correlations, history, myth — is abstract and ineligible (of course; you’ll note that “information”, like, “abstractions”, is also not included in 101). It doesn’t matter how useful or suprising or valuable the information is. You can’t protect it with a patent. Thus, if you can identify a situation where an otherwise lawful actor (e.g., someone practicing the prior art) is turned into an infringer of a claim because he/she “determined” or “thought” something that was disclosed for the first time in a patent specification, then that claim is ineligible (please feel very free to be the first person to identify an exception to this fundamental rule).
Note that the term “algorithm” is considered by many to be consonant with the term “process” (at least in this context). Thus, while some “algorithms” are surely ineligible for patenting (e.g., algorithms performed entirely in the mind), others may be eligible (e.g., algorithms which necessarily include novel steps involving transformations of matter).
Note also that the mere assignment of meaning to information/data is also abstract. Claims, therefore, which recite nothing new except for some “new” information (typically received/stored/transmitted by a ge neric computing machine) are also ineligible according to the same logic: they remove ineligible subject matter from the public domain (computers) by making it an infringing act to use a computer to “process” that information.
6, To let you in on a secrit (actually I may have told you already) but I don’t even necessarily think that preemption is “correct” or “right” myself. I simply think it is the lawl that binds this land.
That said, to be sure I’m against abstract ideas, natural phenom, and lawls of nature being patented upon. I simply think that such should have been made explicit in 52, along with a slew of other things, and that congress should keep up with and update the list of things that are not eligible for their entitlement program for the useful arts. Or else they should be more explicit about what is included. And surprise surprise, that’s what we see the beginnings of now!
To be sure, 6, Frederico believed that the separation of section 101 and section 102 into two different statutes was not intended to change the law of section 101 one iota. Frederico commented that “old” compositions, manufactures and machines were not eligible under 101. Certainly, a product of nature is not new – and was so held by the Supreme Court in Myriad.
Furthermore, in cases like Hotel Security (business methods) and In re Russell (printed matter), where the novel part of the claim was directed to nonstatutory subject matter, the claim was considered unpatentable. Some would say that the proper basis for rejecting such claims is 102/103 because the eligible part of the claim is old. However, the courts treated the cases under 101 – nonstatutory – as much as they did under 102.
Finally, the Supreme Court had just decided Funk Brothers, where the Supreme Court held, consistent with Hotel Security, that there must be invention elsewhere in the claim rather than in a law of nature otherwise the claim was essentially to the law of nature itself. This is another way of saying that the novel portion of the claim cannot be ineligible subject matter.
The understanding of the statute and its relationship to nonstatutory subject matter was well understood in 1952. The craziness that patent law became since the 60s is directly related to the CCPA and most particularly related to one particular judge on that court.
“To be sure, 6, Frederico believed that the separation of section 101 and section 102 into two different statutes was not intended to change the law of section 101 one iota.”
This is simply not true Ned.
We’ve been over this before.
Your polemics against Judge Rich add nothing – you continue to ignore that it was Congress that acted in 1952 to restrain a run-away judicial branch and their decisions on “patentable novelty” – you know, the term used in Hotel Security – and to create a stabilizing effect from such errant judicial “creations.”
Just like you continue to purposefully ignore simple set theory in your agenda against printed matter and refuse to see that it was the judiciary that created a doctrine against printed matter (the afore-explained Set B type).
You keep on leaving out this material distinctions Ned – such is very misleading and deceptive.
Congress that acted in 1952 to restrain a run-away judicial branch and their decisions on “patentable novelty”
You have zero evidence that Congress intended to allow people to obtain patents that protect ineligible subject matter (e.g., a novel, non-obvious mental process) merely be appending that ineligible subject matter to an old step.
None.
And that’s issue (one of them) that never goes away, Billy. Why is this so hard for you to understand? You can’t get around the fact that if you allow people pursue claims by engaging in such shenangians, then you are allowing people to protect abstractions and other subject matter that is clearly outside the scope of 101.
This is why the fundamental holding of Prometheus will never, ever be overturned. You can’t have a sane patent system and allow people to play that game with their claims.
You don’t need a law degree or any kind of a technical degree to understand this either, Billy. Indeed, in my experience it’s only patent lawyers who are capable of deluding themselves into believing that there is any other way to deal with the issue. Everyone else with half a brain “gets it” after a minute or two of simple explanation.
Gee, I wonder why.
On the contrary Malcolm, I have provided evidence multiple times from the Congressional record, from the writings of those closest involved (Frederico and Rich) and from such sources as Cornell Law.
As to what this evidence goes to, well, your dissembling and twisted spin and misrepresentations aside – my words stand complete and accurate.
If you want to discuss what I have to say, kindly refrain from misrepresenting what I have to say.
“Gee, I wonder why”
LOL – still no simple response to my yes or no question from the site’s biggest coward.
“You have zero evidence ”
You can tell that to him till the cows come home and his PF will not be any less “true” in his own mind.
It is true regardless of my own mind or not.
See my previous posts regarding this Galileo-aspect.
That’s an interesting take on things there Ned.
It’s neither interesting (being but a rehash of prior posts) nor accurate (as explained in my comments).
That is of course, unless you want to dwell in the echo chamber fantasy land of Ned-IMHO-Law land…
I wonder how many cases from Google (Lee’s former (current?) and future boss) were pulled from allowance.
Can’t you google that?
This is such a totally bitchin’ article Focarino! Thanks!!!!
So tell me, how do you decide whether a claim is “abstract”?
Can we start with what is self-evidently “abstract” to everyone (other than a nihilist or a philosophical skeptic)? This is just the single undebatable datapoint from which we would need to interpolate … or stretch… to get to where the SCOTUS went with it…
Please note these are precisely what claims should not look like, as they are directed to abstractions *as such*. Examples I have found for claims to abstractions are claims directed to either
1 mental content as such, or
2 purely descriptive material (reflecting mental content) as such.
Note: none of the following claims any entity in reality or any process occurring in reality (as opposed to in a human mind) and are thus directed 100% to an abstraction
Claim A: The equation:
x = …
Claim B: An algorithm described by steps outlined as:
I, j, k
Claim C: A geometric shape defined by:
n,m,o
Claim D: An idea comprising:
I, ii, iii
Claim E: A thought comprising:
1, 2, 3
Claim F: A mental process comprising:
A,B,C
Claim G: Mental contents comprising:
x,y,z
Are there any other types of claims which qualify the “self-evidently” abstract?
When I say “Examples” I do not mean they are claims that were actually filed… they are simply examples of what improper claims to abstractions would look like.
Claim B: An algorithm described by steps outlined as:
I, j, k
That “example” covers every method ever practiced. Including every method for making any chemical or drug. Yet methods are patentable subject matter.
How do you resolve that?
The claim meant to cover the “recipe” not the actual performance of the steps. I was trying to cover an “abstract algorithm” but of course, using the term “abstract” as part of an illustration of what abstract means.. is invalid circular reasoning.
“An algorithm” as such, I suppose, could be interpreted two ways, actual performing of “steps” or a description/set of directions to be followed when doing the steps. I was trying to literally claim the bare “set of directions” as such, not in use or for use by anyone or anything and certainly not machine readable. This is why I used the term “described by steps”. The language is not clear and hence could be directed to actual performance of a process or something which could be used by a machine.
How about
Claim B “A algorithmic purely descriptive description of steps comprising:”
You cannot avoid the problem: claims themselves are only “purely descriptive” descriptions. Your revised Claim B still cannot be included in your list.
It appears that you are perhaps “reaching” for the abstraction of a novel or other literary work…
Are you actually saying you can claim “a patent claim” as such, as an invention?
If not I do not get what you are trying to say.
i.e.
Claim 1: A claim in a patent comprising: words arranged in such a manner…
As I noted: you are reaching for a literary effect.
Can someone infringe a patent by writing down a flow diagram of a computer program, or by typing and saving source code? The flow diagram and source code are examples of descriptive material… but in another way they also qualify as “algorithms” no?
Perhaps the following is clearer:
Claim B: “A purely descriptive description of an algorithm comprising steps:”
anon:
A word is an abstraction which, in the case of the word “table”, refer to tangible things in reality.
Claims ARE abstractions, but they are not directed to abstractions (not supposed to be). The read on actual things/processes that can infringe.
Your statement “claims themselves are purely descriptive descriptions” is beside the point. Can you explain?
You are trying too hard to say that your claim cannot claim the description of process steps.
I understand… no clarification is needed.
We know a claim directed solely to a disembodied description as such (such as a disembodied description as such of an algorithm) is a claim directed to an abstraction.
To clarify, the distinction is that for a claim to cover a method/chemical/pharmaceutical it is directed to actual actions or entities in reality.
For a method the claim is directed to the actual actions which are to be taken in reality and which would constitute infringement, and a chemical it would be covered by a claim being directed to the entity in reality (molecule), the actual actions performed in reality to create or purify the molecule, or an actual use (activity in reality) of the molecule.
A disembodied unperformed algorithm … in someone’s mind or its mere description, is not patentable, and I believe is also an abstraction.
“Claim B: An algorithm described by steps outlined as:
I, j, k
That “example” covers every method ever practiced. Including every method for making any chemical or drug. Yet methods are patentable subject matter.”
The example is of an abstract idea per the first part of the two-part analysis proposed by SCOTUS in Alice v CLS.
Your concern over the coverage of method patents would be addressed by the second part (i.e., “are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea?“).
The problem saul is that Breyer’s words – out of context – simply are not correct.
“mere” instruction to apply are all what process claims are.
Period.
I agree with Les – your Claim B needs to be removed from your list
(btw, appreciate the effort to provide a substantive catalog).
Also what should be self-evident (but likely not), is that these claims of yours are not addressing a mixture of claim elements, which I think will draw sharper debate.
I also like your acknowledgement (lost on Ned) of purely descriptive – as opposed to functionally related – material.
Even simple set theory explanations will do no good for those who refuse to listen to reason.
Is it possible or coherent to speak of something literally being a combination of the abstract and the real (tangible).
Can you claim:
I) An x comprising:
an equation; and
an elongate iron member.
What could x possibly be? It would have to be part abstract because it literally comprises an equation (not an expression of it, not an embodiment or manifestation of it but the equation as such) while at the same time being part real, having as one its parts matter. For clarity Math Textbooks do not comprise equations, they comprise paper and ink which represent equations, equations as such being in the abstract.
The only combination of the abstract with the real would be a method claim including steps which are performed in the external reality and in the mind.
A process comprising:
doing something in the real world; and
thinking.
Are there any other literal combinations of the abstract and the real?
Note that a method step which takes an abstract something and does something real with it is not itself abstract it is performance of some real method step.
“A process comprising:
doing something in the real world; and
thinking.”
You have stumbled on the banal Malcolm pet theory. The extent that this says anything at all can be replaced with the larger notion that you cannot have claim elements that are merely disjointed conglomerations, for example:
A manufacture comprising:
a blue bicycle,
a fish bowl, and
a copy of the lyrics to the Battle Hymn of the Republic.
And yes, Malcolm’s pet theory is just as silly.
What theory is that?
PS: I was not trying to make any point regarding “disjoint conglomerations”. My point was that in contrast with a material/apparatus element (where conceptually it is impossible to combine an element which is a bare abstraction and an element which is actual under a single conceptual entity) a claim having process steps can comprise elements of the two categories. I am not implying that the two categories of process cannot combine/cooperate for a unitary result. Obviously they could if the real world process step relied on something done in the thinking step.
Billy: The extent that this says anything at all can be replaced with the larger notion that you cannot have claim elements that are merely disjointed conglomerations, for example:
A manufacture comprising:
a blue bicycle,
a fish bowl, and
a copy of the lyrics to the Battle Hymn of the Republic.
Is that claim ineligible subject matter under 101, Billy? It looks like it might lack utility but it doesn’t look like ineligible subject matter to me. What’s your argument for the lack of subject matter eligibility?
On the other hand, “A process comprising: doing something in the real world; and thinking.” is an ineligible claim as long as the “doing something” is old. It doesn’t matter how new-fangled, useful or non-obvious the thinking is. And that’s not a “theory.” It’s the law, following directly from Prometheus. You’ll never be able to find a court to enforce such a claim in the United States.
MM
What if neither the “doing something” nor the “thinking” are new taken in isolation, but the combination of the “doing something” and the “thinking” is new?
(Of course some combinations of such things which are not new and/or are obvious)
What if neither the “doing something” nor the “thinking” are new taken in isolation, but the combination of the “doing something” and the “thinking” is new?
Then you have a claim to a method of performing an old step followed by an ineligible mental step (which happens to be old when viewed in isolation according to your hypo). That claim is still ineligible, for the same reasons I already provided.
That would imply that the newness of the individual elements, at least in this particular instance, is more important than the newness of the whole.
Is that not a little bit counterintuitive?
Malcolm does not ascribe to the whole “claim as a whole” thing.
Place an egg into boiling water, count to 12, remove egg.
Place an egg into boiling water, count to 50, remove egg.
Humm…..
correction:
(Of course *there are* some combinations of such things which are not new and/or are obvious)
…and once again Malcolm leads into his pet theory (but STILL has not indicated an answer to my simple yes/no question as to his willingness to provide a cogent, direct, and intellectually honest answers to my oft-posted critique of his pet theory, the critique that shows his pet theory is misapplied and reduces to nothing more than a banality.
101 rejections include category or utility or both. Pay attention to what the Court has done here: category has been met, but the Court disregards that aspect.
Even Ned has understood this – why can’t you?
(of course, it could be that you DO understand it, but are still advocating in a deceptive manner, as is your want)