Patenting Software in the US as compared with Europe

Guest post by Shubha Ghosh and Erika Ellyne

This post compares and contrasts the United States approach to patentable subject after last term’s Alice v CLS decision, with that in the European Union. The bottom line is that the EU may be now more favorable to software claims than the US.

In its 2014 Alice decision, the US Supreme Court makes clear that a two step test applies to determination of when an invention is patentable subject matter. First, the reviewer of the patent, whether patent examiner or judge, must determine if the patent covers an excluded area from patenting, such as an abstract idea or law of nature. If the patent covers an excluded area, the reviewer moves on to the second stage: whether there is an inventive concept that is an application of the abstract idea or law of nature. This two part test is a capstone to the Court’s prior decisions in Bilski v. Kappos (2010)(business method patents) and Prometheus v. Mayo (2012)(medical diagnostic and treatment patents).

By contrast, software is more easily patentable in Europe despite the existence of an express provision on the excludability of software. Article 52 of the EPC famously recites a list of ‘non-inventions’ that are excluded ‘as such’. The reading of this last condition has lead to a de minimis application of the provision. ‘Technical character’ is synonymous with invention in the EPO Board of Appeals’ (BoA) case law; any demonstration and degree of ‘technical character’ passes the patent eligibility threshold. The role of the technical feature is irrelevant; to the point that the mere use of technical means, such as a computer, renders a patent claim eligible (even the inclusion of the term ‘email ‘has ‘transformed’ a previously ineligible claim into an eligible one).

The European approach has been to adopt a formalistic rather than substantive approach; making patent eligibility a derisively low threshold. The US, on the other hand, has actively rejected this type of formalistic approach; neither adding the words ‘apply it’ to excluded subject matter nor the recitation of a computer can render the ineligible eligible. In Europe, the patent eligibility standard has become a question of drafting, a practice abhorred by patent Courts on both side of the Atlantic. In the end the standard is of little to no effect, looking at the context of its application no mixed claims (which recite a non invention along with other man made subject matter- where most questions arise) are ever rejected.

A technical application test can potentially help overcome the gaps/superficiality left open by the technical character test. The US approach suffers from its own ambiguities; the first branch of the US test, the determination of what is an ‘abstract idea’/subject matter is vague and in need of clarification/objectification. The European notion of ‘technical’, which is used in opposition to abstract in European case law as well, despite its numerous short comings could serve as a road map to a more developed test for abstraction. That is a subject for another day.

There are those that would counter that this is a determination for inventive step, that there is confusion here between eligibility and obviousness. It is true that in Europe, much of what is caught out under the US eligibly standards is further culled in the inventive step stage. However, in the inventive step assessment, much of inventive step is not about obviousness at all, but identification of the ‘invention’: the technical solution. The ‘problem solution’ approach usually proceeds first by the identification of the invention, the technical solution, to then derive the problem thereof. In this identification of the ‘technical solution’ a very controversial point is what extent ‘non technical features’, i.e. subject matter found under 52.2, can contribute to the technical effect/solution. At this stage, there is in fact a re-formulation of the invention; the main point of the tasks is a question of defining the invention not of ‘obviousness’ per se. The non-obvious determination is actually more a methodology than a veritable measure of ‘obviousness’ as such.

Shubha Ghosh is the Vilas Research Fellow & George Young Bascom Professor of Business Law at the University of Wisconsin School of Law where he is also the Associate Director of the Initiatives for Studies in Transformational Entrepreneurship (INSITE). Erika Ellyne is a law graduate and doctoral candidate at the Vrije Universiteit Brussel (Free University Brussels)

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

95 thoughts on “Patenting Software in the US as compared with Europe

  1. “the EU may be now more favorable to software claims than the US.”

    That may be one interpretation of the examination policies, but the practice is very clearly still more favorable to software claims in the US.

    European courts look unfavorably on frivolous and abusive litigation and have several means to make extortion through legal expenses less onerous to victims and less profitable to trolls. Loser pays rules, less expense in discovery, quicker disposal of obviously invalid claims, and lower legal fees all make it harder to extract a settlement by threat of draining money through litigation.

    Trolls and others who haven’t invented anything can always choose a venue in the USA that will guarantee the most grueling and expensive ordeal for victims without escape through summary judgement or much fear of fee shifting regardless of the weakness of their case. Certain jurisdictions are known to creatively deal with claim construction and jury instructions to help fraudulent plaintiffs along.

    And the CAFC persists in being dominated by wild extremists in favor of the most ludicrous patentee arguments. You take your chances in a random panel, but none of those panels are going to order a district judge to impose sanctions or fee shifting.

    Since the vast overwhelming majority of software claims are frivolous, invalid, not related to any actual invention, and abusive the most important factor in using such a patent is the ease of abusing the court system. That is very much easier in the USA.

    1. Repeated without comment:

      Certain jurisdictions are known to… help fraudulent plaintiffs along.”

      “the vast overwhelming majority of software claims are frivolous, invalid, not related to any actual invention, and abusive

  2. I should just like to say, dear authors, that I take exception to your statement that:

    “In Europe, the patent eligibility standard has become a question of drafting, a practice abhorred by patent Courts on both side of the Atlantic.”

    First, by “Europe” you exclude the UK. But the last time I checked, it is part of Europe. The English patents judges think that the way the EPO decides eligibility is “intellectually dishonest” but that is another matter entirely.

    Second, Art 52 EPC expressly names certain types of subject matter as ineligible. Is it then a matter of the scrivener’s art, to refrain from claiming such matter, as such? I would say not.

    Third, in the polyglot Europe and 38 Member Country EPO nobody has any time for lawyerly game-playing with the nuances of the English language. Whether your claim gets through to issue depends exclusively on its substantive content, not the tricks you play with words.

    And remember, there is no court sitting atop the EPO, but only its (polyglot) Boards of Appeal. They too are interested only in the substance.

    So please, stop telling us what a travesty patent law is at the EPO. Instead, just get used to the idea that it gives out patents for non-obvious technical solutions to objective technical problems, but not for anything else. You can work out for yourselves what “technical” means, just by taking the time to read Art 52 EPC. After that, if you still need to know, just ask a European Patent Attorney who specialises in software and business method inventions. I don’t.

    1. The subject-matter listed in Art. 52(2) is only excluded “as such”, see Art. 52(3). Furthemore, the heading of Art 52(2) EPC notes that the list is non-exhaustive. So it is little more than a list of examples. The tru bounday is between “as such” and not äs such”. the EPO has equated this boundary to technical/non-technical, but that is questionable. It could be just as well the boundary between abstract and concrete.

      During the EPC negotiations in the early 1970s, in the draft-EPC texts the exclusion of software was not “as such”. The German delegations was afraid for “a contrario” reasoning that the othe exclusions are limited by as such, so the exclusion of sw without “as such” would be extensive. For that reason. the software exclusion was also qualified as “as such”. But no one really knows what “as such” means here. The only certainty is that it is a limited exclusio: not all and not none.

      1. Given the way the EPC has been written and the Boards operate, the likelihood that the approach used at the EPO will change significantly in the absence of a legislative intervention is pretty close to zero, no matter how much people complain and the arguments presented. Maybe the Enlarged Board of Appeal can explain it better:

        “[…] [T]he interpretation of the EPC is primarily the responsibility of the Boards of Appeal. As a rule they have interpretative supremacy with regard to the EPC because their decisions are subject to review only under the narrowly defined conditions of Article 112(1) and 112a(2) EPC. It is only when these apply that the Enlarged Board has the last word. […]

        […] The present position of the case law is thus that […] a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. But no exposition of this position would be complete without the remark that it is also quite clear from the case law of the Boards of Appeal since T 1173/97 that if a claim to program X falls under the exclusion of Articles 52(2) and (3) EPC, a claim which specifies no more than “Program X on a computer-readable storage medium,” or “A method of operating a computer according to program X,” will always still fail to be patentable for lack of an inventive step under Articles 52(1) and 56 EPC. Merely the EPC article applied is different. While the Enlarged Board is aware that this rejection for lack of an inventive step rather than exclusion under Article 52(2) EPC is in some way distasteful to many people, it is the approach which has been consistently developed since T 1173/97 and since no divergences from that development have been identified in the referral we consider it not to be the function of the Enlarged Board in this Opinion to overturn it […]” – G3/08, [7.2.5] and [10.13]

        1. One a European patent is granted, it is up to the courts in the member states to handle infringements – which may involve an assessment of the validity of the patent. (Supreme) counrts in the member states have stated repeatedly that it is allowed to deviate from EPO Board of Appeal decisions, if onlt those deviations are properly motivated.

          In practice, Gemany and the U are leading by far in European patent law. And they foster different perceptions.

          The purpose of the proposed European (EU) directive for “computer-implemented inventions” (2002) was to unify the interpretation of the exclusion of “sofwtare as such” (Art. 52(2c)+(3) EPC). This proposal was rejected by the European Parliament in 2005. So many changes were proposed that the original proponents were against this proposal too, since they were afraid that it would reduce rather than increase software patentability, with all the amendments.

          With the advent of the Unified Europan Patent court, all the roles in the European patent system will change. People are concerned that no appeal will be allowed to the European Court of Justice. Recent history in the US has shown that it is usefull that a Supreme Court can correct decisions by a specialized court, even though Supreme Courts have less “technical” patent expertise.

  3. I think all they were trying to say is that courts don’t like it when substantive standards can be avoided by drafting tricks, i.e., when passing a substantive bar becomes merely a “question of drafting.” But your interpretation is fun, too.

    1. Also remember that the context we are dealing with involves seasoned adjudicators whose job it is to perform legal analysis. It is not a context involving poor little old ladies squinting at fine print of a form contract being confused by “legalese”.

    2. What is a “drafting trick”?

      Consider the following analogy:

      Suppose X has sole power to grant B what B wants (in a particular context). X also has sole power to determine the standard by which X determines whether to grant B what B wants. X then asks B, “What do you want?”

      B expresses what it wants in as great an amount of detail and precision as possible using words in a legal document. B has no power to make X grant or refuse what B has asked for. X has nothing to stop it from determining, taking into account what B has asked for, whether X shall grant it to B or not.

      Why on earth would X complain and say B used a “trick” when B asked for something X has the power simply to refuse or grant based on whatever analysis X chooses (or not) to make? Moreover, if what B has submitted is meaningless, X can say so in X’s refusal as well.

      “Drafting Trick” is a straw man, a fallacy , a fiction.

      Applied to the context we are dealing with, X are seasoned adjudicators whose job it is to perform legal analysis. It is not a context where X are poor little old ladies squinting at fine print of a form contract being confused by “legalese”.

      1. Drafting tricks means that applicants are going by the actual words of Congress as opposed to the implicit Edicts of the Supreme Court (no matter how they leave things undefined).

        1. The problem starts with apodictic rules that have no reason – except that they are the Word of the Legislator and the Courts.
          In this respect, patent law is different from many other fields of law.
          If you know the reaons of a rule, there is less room for “creative” interpretations.

    3. DanH, I think the Supreme Court is tired of the Federal Circuit finding a claim passes 101 simply by reciting magic words.

  4. What are some example of European Board of Appeals decisions that say that the difference between a whether or not an inventive concept is technical feature is just a matter or the wording?

    1. What do you mean by “just a matter of wording”?

      Words refer to, define things. If they are put forth by a patentee to define (allege) an inventive concept, they must be analyzed to determine what that alleged inventive concept is. The purpose is not to identify wording, but to identify the meaning if the words i.e. the meaning they convey, what they refer to, i.e. the alleged invention.

    2. There aren’t any.

      Applicants fail at the EPO when in their specification they fail to reveal any technical problem solved by the invention. If it don’t solve a technical problem, it ain’t an invention.

      Applicants from the USA might do better by running their drafting past a European patent attorney before the end of the Paris year or, even better, even before filing the prio doc at the USPTO. A quick conversation across the Atlantic, before filing, can make the difference between getting to issue and getting a refusal decision. At least at the EPO. It is what you report as the invention, in your disclosure, that is decisive.

      1. “Technical problem” is a misnomer. A problem is only said to be technical if the eventual solution is technical. Inventions typically solve economic problems. That is what makes them valuable.

        See (sorry, in German): Axel von Hellfeld, ‘Ist nur Technik Stand der Technik? – Zum neuen Neuheitsbegriff im Europäischen Patentamt und dessen Anwendung auf rechnergestützte Erfindungen’, 57 GRUR Int 2008, p. 1007-1013(1010).

        1. Thank you for the cite Reinier. I’ll look it up. von Hellfeld is an experienced patent attorney in private practice.

          I don’t doubt that there are many inventions that solve economic problems, going all the way back to the greatest invention of them all, namely double entry book-keeping. Where would we all be without that great invention? Doesn’t make them all patentable inventions though, does it?

          But, meanwhile, I don’t see your Point. Take the Price of Chips, an economic problem. How to make an IC cheaper but better is, you might say, an economic problem. Solution (say): use tantalum instead of niobium. Technical solution to economic problem. Oder?

          1. With “economic problem” I mean: the problem of making money in general.
            Von Hellfeld gives the example of an improved combustion engine. The “problem” to reduce the fuel consumption and to reduce pollution.
            That is an economic problem + an environmental problem.
            A non-technical solution would be to drive less. A technical solution is an improved engine.
            Case law shows that there is a lot of confusion about technical problems/technical solutions.

            1. I have acquired a copy of van Hellfeld and will read it tomorrow.

              Meanwhile, two thoughts come to mind. One, Money makes the World go Round. Two, when a solution is technically trivial but too expensive to implement, is it, to a business person an “obvious” solution to the problem? Perhaps not. But then again, is it not “obvious” within the meaning of a patent statute?

              1. I think that it is still non-obvious to a business person too. But would one patent “solutions” that are no genuine solutions because they are too expensive?

                The essence is that patent law is economic law. It protects economic interests. Inventions solve problems, and a true solution saves money.

                Incidentally, a strange phnomenon is that standards (interfaces) are being patented that are non-obvious in a negative way. But even a bad interface design may be valuable due to “network effects”. A fine example is the “base 64” encoding of internet e-mail attachments. It makes them 33% larger!

                1. Reinier sorry. I did not make myself clear. But from your answer I see we differ.

                  I’m talking about a “solution” that is to an engineer “trivial” ie “obvious”. I’m talking about a “solution” to a technical problem that is not “obvious” to a Business Person because its implementation is so expensive that it can never make a profit. It is “obviously” useless.

                  Does that non-obviousness to a Business Person render it patentably “non-obvious” and therefore patentable? I say not.

                  In fact, it is unpatentably “obvious” because it is, as a matter of technology, not business, trivial and therefore obvious.

                  You remind me of anon, with his zany assertion that every method is a business method, even methods of making nuts or bolts, cars or planes, pills or pots of paint.

                  but at least anon constantly emphasizes the correct reference Point, the Person of ordinary skill in the technical field where the Invention is located. What is or is not obvious to a Business Person is totally irrelevant and a complete distraction.

                2. Obviousness relates to the “delta” between the invention and the present state of the art. Of course, the solution must be technically feasible. Whether it is economical is something very different. And it is dependent on external factors.

                  State Street has (rightly) received a lot of criticism, but IMHO the CAFC was right to note that “business methods” are no category. There are even technical business methods (see EPO BoA T 636/88).
                  Business is a “field of use”, and the field of use is immaterial for patent law purposes. One may patent a novel and non-obvious spoon, although eating is not technical.

                  This is not a reason to advocate business method patenting, but a sign that the logic is faulty. And if it is, one day a clever patent agent or attorney will find the hole.

                  One of the reasons for confusion is the “process patent” concept. These patents originally were provided to allow the legal protection of novel processes executed by manufacturers, notably in chemistry. If software is patented as a process ,the process is executed by the user of the software.

                  if you read german, you may be familiar with the objections against patenting “Anweisungen an den menschlichen Geist”, a doctrine known as the mental steps doctrine in the US. The business method exception in EU patent law in Art. 52(2c) is retated to this doctrine.
                  Patent law may not restrict human thinking, “man as a processor” as it was worden ocne by the Board of Appeal of the Dutch Patent Office. In In re Prater II, the CAFC rightly decided that just processes that only can be executed by humans are excluded.

                  Anyway, it is very confusing to restrict sw patenting for the reasson that theoretically a person could perform the same calculations as a machine. The confusion is avoided if it is noted that the patent is limited to products that perform patented algorithms, rather than the algorithms themselves.

                  Eventuall, the way patents are claimed leads to the misconception that patents are things, while actually they are ALWAS thoughts. Acknowledging that eliminates a lot of confusion.

                3. Reinier, in your mind, is there a difference between a categorical exclusion of subject matter that might otherwise be statutory, and a determination that a method of doing business (in the abstract, i.e., divorced from novel means for carrying them out) is not a statutory process?

  5. Art 52(2)(c):

    The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

    (a) discoveries, scientific theories and mathematical methods;
    (b) aesthetic creations;
    (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
    (d) presentations of information.

    So we’re all clear, can one of the EP legal experts tell us the analyis of the following claims:

    1. (i) an old data gathering step followed by (ii) a mental step of applying a non-obvious rule to the data for the purpose of making a useful inference. [these are Prometheus-style claims which EP practitioners seemed confident were unpatentable in the EP, without controversy)

    2. same as (1) except the useful inference (“patient needs more drugs”) is written down on paper using ball point pen technology

    3. same as (2) except the rule is applied to the data by an old programmable computer which displays the resulting inference

    Thanks. I’m curious to see what lines are drawn in the EP and why.

    1. Why is the programmable computer “old” if it’s applying a non-obvious rule? Why isn’t the programmable computer “new” since it’s programmed to do something “new”?

      Even the CAFC says that programming a computer with a new algorithm makes the computer new.

      “The rationale for that decision is equally applicable here: a general purpose computer programmed to carry out a particular algorithm creates a ‘new machine’ because a general purpose computer ‘in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.'”

      Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 86 USPQ2d 1235, 1239 (Fed. Cir. 2008) (internal citations omitted).

      1. PatentBob Even the CAFC says that programming a computer with a new algorithm makes the computer new.

        “Even” the Federal Circuit says that? The Federal Circuit circa 2008 when they were doing their best to pump steroids into this mess? That quote is exactly the sort of simplistic short-sighted self-serving silliness that birthed hundreds of thousands of invalid patents and our broken patent system. Did the Federal Circuit bother to define for everyone exactly what constitutes a “new” algorithm? Is it the letters used in some equation? Is it the abstract labels given to the bits being processed?

        In addition, if the mere “performance of particular functions pursuant to instructions from program software” turns a programmable computer into a “new computer”, surely that isn’t the end of the eligibility analysis. What if those instructions are simply to “display [insert non-obvious but otherwise ineligible] data upon request”? Or “apply non-obvious but otherwise inelgible rule” to data and display the result? You’re telling me those are “new” machines that are eligible for patenting? Because those kinds of claims create instant and huge problems for everybody who uses programmable computers. That’s why we’re having the discussion and that’s why the courts are acting diligently to put a heavy lid on the silliness.

        Lastly and most importantly: I’m not asking for US case cites. I’m asking some EP experts to explain how these claims are analyzed in the EP. What the Federal Circuit said in 2008 is irrelevant to the question I asked.

      2. PatentBob, the holding referenced was based on In re Bernhart that Rich relied on in Benson. Rich was overruled, recall. That overruled Bernhart on the particular point.

        That the CCPA and the Federal continued to say otherwise is a wonder, and it eventually lead to State Street Bank. Anyone can see that the CCPA and the Federal Circuit were in open rebellion against the Supreme Court by continued to rely on cases that the Supreme Court had implicitly overruled. cf. Troy v. SAMSON MANUFACTURING CORPORATION, No. 2013-1565 (Fed. Cir. July 11, 2014).

      1. There is quite a big distinction between Art. 52 & 53 EPC; the former defines what are “patentable inventions”, the second defines “exceptions to patentability”, i.e. inventions that would fit the criteria of Art. 52 but on which patents are not granted for other policy reasons.

        Art. 53 is also much more straightforward in its application, as it does not contain any “as such” or other qualifications of the exceptions: if the subject – matter of the claims, even one single feature, falls under one of the items (a), (b) or (c), no patent can be granted (of course, defining the boundaries of these categories is not always straightforward…).

        That being said, it is true that as long as the “old data gathering step” of hypothetical claim 1 is done by technical means (e.g. a computer), the claim as a whole is considered technical and that it would likely be shot down under Art. 53(c) even before getting to the question of inventive step, i.e. whether the claimed inference solves a technical problem or not.

      2. MaxD, the specific claims at issue in Prometheus in US were drawn to a method for determining a need a for a therapy (the Federal Circuit, in it’s overturned decision, characterized the claims as a “treatment” method in spite of the fact that nobody need ever be treated to infringe claim).

        If they fell because of Art 53, that is fine.

        But my question is broader than that (I mentioned Prometheus only so you’d have an understanding of the form of the claim). Let’s say neither the data nor the rule is related to diagnosing or treating a human. Let’s say it related to determining the amount of H2SO4 you need to add to a solution as part of an industrial process.

        What’s the analysis?

        My impression in the EP is that, at present, form trumps substance in a substantial way (e.g., that’s why methods of treatment are not patentable in the EP but the “use” of an old drug in a medicament for treating people is patentable). That’s how it appears to me, at the level of examination anyway. It may be the case that at the enforcement stage the courts regularly pierce through the formal shenanigans and get to the substance (but I doubt that’s happening).

        I’m mostly interested in the EPO analysis of the claims I presented.

        1. Under the assumption that the old data gathering step isn’t just reading a number from a chart but something involving using standard equipment to make a measurement of some real world parameter that the equipment is usually used to make

          EPO approach:

          Claim 1 not excluded but lacking an inventive step as the mental step will be treated as part of the prior art

          Claim 2 not excluded but lacking an inventive step, writing “known” results on a piece of paper is obvious.

          Claim 3 not excluded but (probably) lacking an inventive step. I say probably here as I suspect some examiners at the EPO would almost certainly mess up and grant this case.

          Under the UK approach:

          Claim 1 excluded as a mental act (the contribution is solely in the mental step as the data gathering step plays no part in the contribution)

          Claim 2 excluded as a mental act and the presentation of information.

          Claim 3 excluded as a computer program and the presentation of information.

          1. Thanks, “anon”.

            Those results seem like the correct results (i.e., those are the results I’d hope to see in a functioning patent system).

            If your analysis is correct, it appears that the combination of formal and substantial analysis in the EPO works (at least some of the time) to eliminate these types of claims.

        2. MM it would be good to hear from Paul Cole because I recall him arguing here in favour of patentability in the Prometheus case and I think there are duly issued Claims in Europe.

          As to “use” Claims, the EPO is an Office set up to grant patents. If you find out that, surprisingly, Aspirin cures baldness, the EPO thinks you should get a patent. In the non-medical field, the ground-breaking case involved a fuel additive, known to inhibit corrosion. It was found, surprisingly, that it reduced friction too. All that was new was the “use” to reduce friction. So that was all they could claim.

          Reverting to your Claim, I see that it contains a “non-obvious rule”. That strikes me as patentable matter, but how to Claim it? Outside of diagnosis and therapy, as in your H2So4 example, the patentable claim is obvious. Claim a method including a step of administering according to the rule. Inside the realm of Art 53 EPC I don’t know how you would fare with a claim to: Formulating X, in unit dosage form, using Rule Y.

          We need an EPO practitioner who handles such subject matter.

  6. From today’s Fed. Cir. decision:

    1. A method for adjusting a center of gravity of
    a golf club head after its manufacture, the golf
    club including a head comprising a hollow shell
    having a plurality of thin walls that collectively
    form a club head, the club head including a face
    for striking a golf ball, a heel portion, a toe portion,
    a back portion and a sole and having an original
    center of gravity prior to addition of any
    weights, the club head further including a plurality
    of user-attachable and detachable, discrete
    weights arranged on the shell at spaced-apart locations,
    the method comprising:
    hitting golf balls with the club with the plurality
    of weights detachable secured to the shell in a
    first arrangement, in which the plurality of
    weights are positioned in at least two locations
    other than the sole, permitting movement of the
    center of gravity of the club head from the location
    of the original center of gravity toward the club
    face, wherein the sole is formed of one or more
    substantially planar surfaces at the bottom of the
    club head facing downwardly; and
    after hitting golf balls with the club, forming a
    second arrangement with the plurality of weights
    detachably secured to the shell, the second arrangement
    moving the golf club head center of
    gravity forward of the original center of gravity in
    the general direction of a first axis extending between
    the face and back portion of the head and in
    the general direction of a second axis

    1. All of this claim is found in the prior art. Therefore, there is nothing in the claim that adds that “something more.” Ineligible under 101!

      Wait, let me try that again. (Haven’t had my coffee yet.)
      Step One: The gist of this claim is figuring out how to configure something in order to improve it. (The claim recites adjusting weights in order to change the center of gravity of the club — but that’s just unimportant detail, not the “gist” of the claim.) Abstract.
      Step Two: Is there “something more” here? Golf is hardly a “useful” art. (As fun as it might be.) So: no.

      Conclusion: ineligible!

      (It just so happens I’m playing golf with Judge Wu later today; can’t wait to see if he agrees with my analysis.)

      1. I don’t see any support for this “gist” analysis in the case law.

        Where do you find this “gist” analysis being applied (outside of comments on patent blogs)?

        1. I previously supplied the Black’s Law Legal Dictionary meaning of “gist.”

          I suggest that you read the definition provided then read the Alice case, then read the cases that have come out after Alice and follow the “Gist/Abstract” swordplay.

          It really is not at all difficult to understand why the term is being used. Unless, of course, you are trying NOT to understand, and then, no amount of help offered to you will make a difference.

        2. See Alice and Mayo which refer to searching for the “inventive concept” in the claimed invention, MM. Why do you not think that refers to other than the “gist” of the invention?

  7. “In Europe, the patent eligibility standard has become a question of drafting, a practice abhorred by patent Courts on both side of the Atlantic.”

    But the “draftsman art,” this so-called “abhorred practice” is commanded by the U.S. patent statutes, namely 35 USC 112 which says that the invention is defined by the claims. Unfortunately, the Royal Nine have ignored that inconvenient “truth” in both Alice and Mayo. Is it any wonder that many U.S. practitioners (me included) have credibility concerns with the patent law jurisprudence articulated by Our Judicial Mount Olympus.

    1. Of course the bitter irony remains that the Justices themselves vigorously practice their own scrivining with implicit and explicit changes to the direct words as chosen by Congress…

      But we are entreated to ‘just accept this’ and move on. We are entreated to ‘find some new compromise.’

      Would anyone accept a 3/5 person compromise?

      Should we really accept “peace for our time” when we all SHOULD know what this type of pacification brings in the future from lessons painfully learned in the past?

      Instead let’s ask those hard questions now. What of the separation of powers? What of the Act of 1952? What of the quotes from Benson, Flook, Diehr, and Bilski that critically wreck the attempted spin all about us?

      1. Would anyone accept a 3/5 person compromise?

        Should we really accept “peace for our time” when we all SHOULD know what this type of pacification brings in the future from lessons painfully learned in the past?

        Boy, that puts things in perspective. Thanks, anon!

      2. Instead let’s ask those hard questions now. What of the separation of powers?

        What about them?

        What of the Act of 1952?

        What about it?

        What of the quotes from Benson, Flook, Diehr, and Bilski

        Which ones are you referring to? Also you seem to have left out a few recent Supreme Court cases. Why?

    2. Is it any wonder that many U.S. practitioners (me included) have credibility concerns with the patent law jurisprudence articulated by Our Judicial Mount Olympus.

      I’d argue, as I have before, that what the Justices are attempting to bring to patent law is a much more rational approach to patent law than I often see bantered about on sites like patently-o. In many ways, the generalists of the SCOTUS are applying the same reasoning and rationale you see applied in many other areas of law and not treating patent law as somehow special or different.

      The whole point of the patent process should be that: you don’t get patent-eligibility merely because you picked magic words. It’s that abhorrent behavior we should punish, not encourage. As lawyers and patent attorneys, we are good at finding loopholes and whatnot, but that doesn’t not make for a good functioning, purposeful patent system.

      I’d argue that what we should reward are claims drawn around the particular, specific, and concrete inventions.

      As I look at the claims that are being thrown into the 101 trashbin are not that. They’re cover wide swaths of possible implementations (often things unknown, unforseeable at the time the application is filed) and rarely are tied to anything remotely looking like a functional/useful technology. These are not claims patent worthy inventions: they’re the patent claiming equivalent of spaghetti tossing. They do not promote the progress or provide guidance about what is and is not infringing. If there’s a draftsman art we should encourage its claiming with specificity.

      I have no problem with claims drawn to foundational or breakthrough inventions. File claims on your breakthrough. But if you want a wide variety of implementations, file claims on them. Demonstrate that you had them at the time of the application.

      I’d even argue that we should loosen/lower barrier to filing additional claims.

      1. Agreed. I’ve yet to see anything that I consider to be a sound software-related patent deemed non-statutory. The lip-syncing case is a little concerning, but we’ll see where that goes on appeal. As a software person, I personally find the idea of “let’s use rules to automate this” right up there with “but we’re doing it on the Interwebz”, or “it’s like before, but we’re using an object-oriented design”, or “we’re automating what the user currently has to do by hand … same thing, but automagically”. It’s another beef I have with non-CS people doing software patents. They don’t have a good intuition for baseline obviousness.

        1. H, what is software in the abstract but instructions? In the computer, they remain instructions. It is the computer that does something new with the programming.

          The problem with a programmed computer in isolation is that programming is not intended to be part of the machine. The WHOLE POINT of the invention of the stored program computer in the 40s was to allow the loading and execution of instructions while not changing the machine in any permanent way.

          However, some programs can be made part of the machine using firmware. It think such defines a new machine.

          So the way I see it, the OLD computer, programmed, may be claimed as process; and, as with all processes, the process must result in a new and useful effect, which Benson observed, is physical. Diehr is a good example of such an application. Alappat is another.

          1. I’m fascinated that some people never tire of the unending metaphysical debate about what is “abstract”. The recent case law tells me that discussion removed from any particular facts of any particular case won’t accomplish much. Nonetheless, and this might be dicta (I’m not sure), hasn’t it been affirmed that a reprogrammable computer, when programmed, is a changed machine. Alapatt?

            1. H, Alappat held that a rasterizer was patentable subject matter. The aside about a programmed computer being a new machine was pure dicta.

              However, you have to understand that proposition that a programmed computer by itself is statutory subject matter is not the law and has not been the law sets Benson, which overruled application of Benson, which premised holding on Bernhard. No one seriously contends, and no one has seriously argued to the Supreme Court except the AIPLA in its brief in Alice, that programming a computer creates a new machine that is statutory without more.

              1. As also previously explained (with the aid of Black’s Law Dictionary) what Ned claims as dicta was a holding, given that such was neccesary for the winner to prevail against one (of several) arguments advanced by the adversary in the case.

                A court decision is a holding if it is neccesary for the winner’s position. The ability of the adversary to advance more than one line of attack, ANY of which – if successful – would enable the adversary to prevail merely means that a case can have multiple holdings. It does not mean that there was one holding and everything else was dicta.

              2. I contend that’s the case. Consider a new and useful encryption scheme. A computer that’s programmed to perform the new and useful encryption scheme is a new computer.

                And this makes sense realistically: if you download an app and install an app on your phone, your phone can now do something it couldn’t do before. The programmed version of the phone, with the new app, is a new machine.

                To say that software does not change the machine into something new is — to me — ludicrous. An app that allows your phone to do something new makes a new machine of the phone. It’s as simple as that.

                1. PatentBob, the position you argue was overruled long ago by the Supreme Court in Benson, and is inconsistent with Alice as well.

                2. To say that software does not change the machine into something new is — to me — ludicrous.

                  When I put a radio in my car, have I created a new car?

                  An affirmative answer to that question seems “ludicrous” to me and a lot of other people. If someone tried to sell you a “new” car and you drove 50 miles to look at it and you discovered it was an old car with a new, non-obvious air freshener hanging from the mirror, would you be annoyed?

                  Almost everyone in the world would be extremely annoyed. You know that’s true.

                  So there’s really nothing “ludicrous” at all about the assertion that a “new machine” is not created when a programmable computer — designed to be programmed to perform new information processing tasks — is in fact programmed in such a way that it can perform some task that it couldn’t do before it was pgorammed.

                  What you really find “ludicrous”, I think, is where this leads. And that’s probably because you believe that patents are necessary for promoting progress in the “art” of information processing. Not everyone agrees with that, of course … not by a longshot.

                3. And that’s probably because you believe that patents are necessary

                  Malcolm, your use of this rhetorical tool has already been noted as not proper.

                  Please put the strawmen away.

                  Thanks.

                4. This line of reasoning is not satisfactory. It ignores the fact that an invention is eventually “a teaching how to act” (a “Lehre zum Handeln” – see the famous textbook by Kraßer (German is a foreign language for me too)).

                  Actually the (former) Board of Appeal of the Dutch Patent office decided in 1985 in its “switching network” decision that a programmed computer indeed becomes a new machine. And they argued that there was no need to assess the technical character of the software, since this machine would be patentable just like any other novel machine.

                  In my perception, a legal interpretation endeavour should focus on interests rather than the “ontology” of software. Since a concrete software implementation is protected by copyright, the patent only covers the underlying idea. And as a rule, ideas should be free. That allows competition. “Protection” sounds logical, but in a market economy protection must be avoided. Abusing protection is even illegal.

                1. Dennis, it does, it seems. There was the recent panel decision not to follow the Supreme Court on laches, but to continue to follow its own en banc case until expressly overruled either by an en banc Federal Circuit or by the Supreme Court.

                  However, compare Troy v. SAMSON MANUFACTURING CORPORATION, No. 2013-1565 (Fed. Cir. July 11, 2014) where the Federal Circuit began to recognize that it had to adjust course when its prior decision are inconsistent with intervening precedent.

                2. It should be noted (and was – PRIOR to the Alice decision being rendered by the Supreme Court) that because of the stipulations by both parties, the Alappat case was not at issue before the Supreme Court and ANYTHING that they have to say (which was nothing) and ANYTHING that can be spun from their decision (which can be anything) has no force of law.

                  One item that Ned continues to misrepresent is that somehow the Court is holding firm and honoring the statutory categories.

                  They are not.

                  This is particularly odd, given Ned’s penchant for accusing others of “nominalism.” I have asked Ned not to use his peculiar ‘shortcut’ of using the term “statutory” when he means “statutory category,” and the only reason why I can think of that he does not do so is that if he is constantly posting about “statutory category” that he realizes that some will see that he himself is playing the role of “nominalist.”

                  The problem of course is that this is another of those “cannot be a little pregnant” situations. Either you respect the “nominal” categories – as written by Congress, or the words of Congress are ignored (and possibly ignored completely).

                  Ignoring the words of Congress SHOULD strike a chord of discordance, especially given the statutory nature of patent law and the direct allocation of which branch has the SOLE authority of writing that law – per our constitution.

                  Now this discordance has been noted – both on the blog here as well as the MAJORITY in Bilski (as well as a friendly reminder that was ignored during oral arguments in Alice) – in the direct point of whether business methods (as a category) have been held OUT as patent eligible subject matter.

                  No matter the plain fact that 3, the new 4, is still not 5, we STILL see arguments that business methods are not a part of the Useful Arts. There simply is no rational reason for maintaining this belief, and those refusing to integrate this into the proper understanding of US law must be doing so for irrational reasons – for philosophical reasons. I do doubt that any restrained and proper conversation will change the mindset of those who refuse to change their mindset.

          2. This kind of traditional patenty law reasoning hides the fact that patents eventually protect knowledge that is valuable because it can be carried out.

    3. But the “draftsman art,” this so-called “abhorred practice” is commanded by the U.S. patent statutes,

      The reference to the “draftsman’s art” is a reference to the use of lawyerly language and excessive verbiage to obscure the fact that the claim is actually protecting ineligible subject matter.

      That practice is absolutely not “commanded” by the US patent statute. In fact, it would be far easier to argue that the exact opposite is true.

      This aspect of the Supreme Court’s 101 jurisprudence is a “done deal”, by the way. When you criticize the Court for diminishing your right to obfuscate what you are claiming, you are only proving the Court’s point.

      1. “This aspect of the Supreme Court’s 101 jurisprudence is a “done deal”, by the way. When you criticize the Court for diminishing your right to obfuscate what you are claiming, you are only proving the Court’s point.”

        In no way am I “obfuscating what is being claimed,” merely following what 35 USC 112 commands, whether you (or the Royal Nine) agree or not. Also, the only point I’m providing is that the Royal Nine’s rulings require them to ignore inconvenient “truth” of what the patent statutes expressly say, nothing more, nothing less. Whether you agree with me (or likely not) is irrelevant as far as I’m concerned. Your choice to “pound salt” if you choose.

        1. In no way am I “obfuscating what is being claimed,” merely following what 35 USC 112 commands

          I never said otherwise.

          You obfuscate in your claims when you try to hide the fact that you are protecting ineligible subject matter by, e.g., loading your claims with either old (but eligible) subject matter; or using jargon to disguise ineligible subject matter and create the illusion that you are describing “structure” when no such structure exists (e.g., “data structures” and similar terminologies that really just refer to ineligible “data”.

          I don’t know how often you obfuscate when you are drafting claims. Maybe you never do but golly you sure are touchy about people suggesting that maybe it’s not a great idea.

          Here’s what I know for sure: obfuscating what you are actually trying to protect because what you are actually trying to protect is ineligble or otherwise invalid is something that hacks do, either to persuade a client to part with his or her money for your personal benefit, or to enable a client a who is also a hack.

          You don’t want to be a hack? Don’t obfuscate.

          1. “I never said otherwise.”

            Come on MM, you did so say I was “obfuscating what is being claimed.” Please cease and desist from using such disingenuous sophistry.

            Also, to use the words from the movie Lawrence of Arabia, suggesting I’m a “hack” “is not an argument,” and doesn’t advance the discussion here. You don’t have to agree with me, and probably don’t. But when you attack me personally like you’ve done here, as far as I’m concerned, the discussion, if there ever was one, is over between you and me.

    4. “In Europe, the patent eligibility standard has become a question of drafting, a practice abhorred by patent Courts on both side of the Atlantic.”

      I seriously doubt the veracity of this statement as it seriously brings Courts on both sides of the Atlantic into disrepute.

      The legal analysis of any document, be it a statute, a contract, or a regulation, requires an identification of what is being said, i.e. what is meant by the language used, otherwise there is no substance to analyse. So essential and fundamental cannons of the formation of legal documents and their purpose emphasise clarity, accuracy, precision, certainty, etc. A contract which is vague, or uncertain, is likely useless, just as any statute or regulation which is sufficiently vague is invalid in view of principles of fundamental justice.

      What then would a Court’s problem be with any analysis of the meaning/intent/effect of a legal document which “requires” a resort to a question of what is written and what it means?

      The quoted statement is essentially a charge that the Court would prefer ambiguity, uncertainty, imprecision in the drafting, in the definition of the scope of the monopoly sought… The finding of a patent/claim as valid or invalid aside, the implication is that the Court does not even want to know (in detail) what is being requested. Why? So that they need not consider exactly what has been sought?… so they can get away with a “sort of” analysis instead of having to actually do a detailed analysis?

      This is what it would mean to charge that Courts abhor the analysis of legal documents as such. So poor a view of the Courts on both sides of the Atlantic, borders on impugning the Judicial intellectual honesty of the Western world…

  8. In this realm, US patent law suffiers from problems very similar to European patent law.

    US patent law excludes “abstract ideas”, but is an idea ever non-abstract? The only reason to use this argument is that for ages “abstract ideas” are supposed to be a judical exclusion under § 101.

    EU patent law allows only technology tot be patented. But is sofwtare ever non-technical? This argument is nog very convincing either. The statutory exclusion of software under art. 52(2c) EPC is based on (the European equivalent of the) “mental steps doctrine”.

    Both US and EU patent law struggle with allegedly partially abstract/technical subject-matter. Despite the fact that the statute requires a “whole contents approach”, and that courts have warned not to mix the “subject-matter” assessment (35USC101, 52EPC) with the novelty/inventive step assessments, there is a strong tendency still to do so, supposedly in order to reach intuitively satisfactory results.

    Various tricks are applied to do so while paying lip service to the “whole contents” requirement. Flook adopted in 1978 the “insignificant post-solution” concept, which resembles the German Dispositionsprogramm decision made exactly 2 years earlier (also on June 22!) like two peas in a pod. As explaned in Diehr, Flook considered the supposedly non-patentable elements as part of the state of the art, and by that fiction a whole contents approach (theoretically) leads to the same result as a focus on the novel part during the assessment of patent eligibility (under 101). Certainly unknowlingly, the essence Flook approach was identified a “not intellectually honest” by a British court in 2006 (Aerotle v. Macrossan).

    As I have explained in my PhD thesis (ISBN 978-5850-862-1), these problems can only (and elegantly) be overcome if the attribute “technical” is not applied to the product (“machine”) nor to the discipline (“engineering”), but to the pertinent knowledge: technical knowledge is knowledge any PHOSITA can carry out – as opposed to mere ideas, purely scientific information and the like that can not be carried out at all (since it is a fact rather than an action), or an action that requires a scientist that perhaps can use it in a useful manner. Genuine business methods are addressed by the same scheme: a businessman resembles more an inventor than a PHOSITA. he must be creative and even brilliant businessmen are not always successful.

    Incidentally, the basis to limit EU patents to technology is weak. In its initial (1973) version, no reference was made to “technology”, since the technology requirement was not common in the contracted states – except in Germany (where it was established in 1933 (dark ages!) in Multiplikationstabelle)

    In EPC 2000, the words “in all fields of technology” were inserted in Art. 52(1) EPC. The preparatory materials explain that is clause serves two purposes: 1) to bring the EPC in line with TRIPS, and 2) to codify that only technology is patentable. BUT: the purpose of this clause in Art. 27(1) as to say that no field of technology could be excluded – and in 1995 that specifically meant: pharamceuticals, that were not yet protected in many WTO member states. Anyway, the meaning of the word “all” in English is “none excluded”, but in the EPC it was give the (second) purpose of saying that only technology would be patentable. But the Vienna Convention on the Law of Treaties only allows recourse to the preparatory materials if regular means of interpretation “(a) leaves the meaning ambiguous or obscure; or
    (b) leads to a result which is manifestly absurd or unreasonable.” (Art. 32 VCLT). The interpretation of “all” in the sense of “none excluded” does not fall in either category.

    1. Reinier,

      Various tricks are applied to do so while paying lip service to the “whole contents” requirement. Flook adopted in 1978 the “insignificant post-solution” concept, which resembles the German Dispositionsprogramm decision made exactly 2 years earlier (also on June 22!) like two peas in a pod. As explaned in Diehr, Flook considered the supposedly non-patentable elements as part of the state of the art, and by that fiction a whole contents approach (theoretically) leads to the same result as a focus on the novel part during the assessment of patent eligibility (under 101). Certainly unknowlingly, the essence Flook approach was identified a “not intellectually honest” by a British court in 2006 (Aerotle v. Macrossan).

      Actually Reinier, if the nonstatutory subject matter is deemed old, it is to be given no weight in the patentability analysis. Now where have we seen this before? Yes that’s right – Funk Brothers. Where else? Yes, Hotel Security.

      It was well-established law in United States that when you have a claim that mixes statutory and nonstatutory subject matter that the statutory subject matter is to be given no weight in the patentability analysis. If this is intellectually dishonest, then what is intellectually honest?

      Regardless, the analysis of Hotel Security, Funk Brothers, and Flook, have become the law since Prometheus and Alice.

      The confusion involves Bilski, that introduced the word “abstract” for the concept of nonstatutory. Stevens had wanted to restore Hotel Security in his concurring opinion in Bilski. But for some godforsaken reason, the majority decided to go a different what route and basically adopt Rader’s views, which politely, were not well intended or if well intended, where not well thought out.

      1. Of course, if the nonstatutory is integrated with the statutory so as to modify it, to improve it, per Diehr, the claim as a whole is patentable.

        1. Ned”Of course, if the nonstatutory is integrated with the statutory so as to modify it, to improve it, per Diehr, the claim as a whole is patentable.”

          Actually Ned, there was never any such holding in Diehr. You do not give weight to and draw legal conclusions on individual elements. Whether claims are statutory or not is only applied to the integrated claims as a whole. That’s what Diehr stood for.

          1. 1. Math was held to be nonstatutory in Benson according to Flook. See, e.g., fn. 14,

            A mathematical formula does not suddenly become patentable subject matter simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use. A mathematical formula in the abstract is nonstatutory subject matter regardless of whether the patent is intended to cover all uses of the formula or only limited uses. Similarly, a mathematical formula does not become patentable subject matter merely by including in the claim for the formula token postsolution activity such as the type claimed in Flook.

            The difference between Flook and Diehr is that a “statutory” process was improved:

            Fn. 15:

            Respondents’ claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured—a result heretofore unknown in the art. See n. 5, supra. The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under § 101.

            Now, why was the process statutory and why was it that the application of the nonstatutory math transformative? Here is the holding:

            [W]hen a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.

            The word eligible here was used interchangeably with statutory.

            1. Ned, I am not sure what point you are trying to prove but one thing is certain, you have not proven that Diehr stood for anything less than considering the Integrated claims as a whole.

              PERIOD

              I know you have many different dissection theories and mental steps test propositions but none are supported by Diehr.

  9. Let’s not overlook novelty. Suppose you claim a beverage dispenser whose only novelty is the clever new joke (or instructions how to use the dispenser) printed on its cylindrical surface. It might be a novel article of manufacture but at the EPO it has no patentable novelty.

    Stripped of context, words lose their meaning. You have to take words like “new” and non-obvious” with their contextual baggage. We are not talking social arts, business arts, financial arts, storytelling arts or performing arts but only the useful arts or as the EPC has it at Art 52(1) “all fields of Technology”.

    A very great deal of new and clever stuff therefore, has zero patentability.

    1. It is an old paradox: the patentability of subject-matter differing from the state of the art only in its information contents.

      Traditionally this was known as the “printed matter doctrine”. Unfortunately, it only reached the EPC (Art. 52(2d)) in the very confusing wording “presentations of information”, which caused a lot of confusin case law.

      Here it helps to ask the question: “what is the trick”? Eventually, patents are a trick. The MPEP urges examiniers to ask themselves: what did the application *really* invent?

      And if someone is stupied enough to patent a CD (a technical object, but not novel) with novel music (not patentable by itself), he may theoretically get a patent, claiming a “whole contents approach”. But obtaining a patent is a cumbersome and expensive procedure, giving rights for 20 years at most from the grant, whilst copyright protects 70 years after the death of the author, and it is free of charge!

      But the actual question is what the “trick” is in this (alleged) invention. None of course.

  10. Talk about a hatchet job. A pity the writers could not have mentioned two fundamental points underpinning EPO thinking, namely:

    Eligibility is an absolute and timeless test, rather than one performed relative to the prior art of the day.

    There are many forms of non-obviousness. Like in every good whodunnit. For patentability though, only one form counts, namely the non-obviousness associated with using technical means to solve a technical problem.

    When SCOTUS tells us what is encompassed by the “useful arts” the EPO might then come up with a definition of “technical”. But for the time being you can divine it well enough from the flow of more than a thousand decisions every year that the EPO Technical Boards of Appeal pumps out. Those relative few who prosecute such cases on the borderline of eligibility know well enough by now.

  11. Professors, take a method of the following structure, and tell us what the technical advance could possible be.

    1. A method, comprising:

    receiving the price of tea in China;

    receiving the price of tea in Chicago; and

    computing on a computer the price of tea in London from the price of tea in China and the price of tea in Chicago according to algorithm X.

    Where algorithm X, as defined in the specification, is a series of mathematical calculations that takes consideration of cost of transportation, taxes and other duties, and possible graft as factor.

      1. Ned patentable inventions must be found in one or other “field of technology”. In your claim, in which field of technology is your algorithm?

        Inventions are things that solve a technical problem using technical means. What is the technological problem that your algorithm X has solved.

        You need convincing answers to both those before you can get anywhere at the EPO.

        Still think the EPO is more liberal?

        1. Max, I was asking the question to make a point, to which you quickly responded and helped me make the point I was trying to make.

          The EPO uses inventive step to limit inventions to technology.

          We place that determination in 101, which complicates our lives enormously when the claim also includes statutory subject matter. What to do?

          I find it amazing that in 1908 a case called Hotel Security said it all. The analysis of that case was also echoed in the Supreme Court case of Funk Brothers. In both cases, the nonstatutory subject matter was to be given no weight, and the invention had to be in the statutory.

          How simple.

          And did you notice, Max, that the most important case in this series of 101 cases, Funk Brothers, is the very case that Dennis did not include in his list of Supreme Court cases that one should consider in trying to figure out where we are in 101? His apparent hostility to that case, and also with Hotel Security, is probably part of his problem in understanding where the Supreme Court is today in 101.

          1. We place that determination in 101, which complicates our lives enormously when the claim also includes statutory subject matter.

            Where’s the “complication”? It’s not very complicated.

            You focus on the claim and you ask whether the claim protects ineligible subject matter. That necessarily involves looking at the prior art to see what is being practiced in the public domain.

            The EPO engages in the identical dissection when it looks at the character of the “inventive step.”

            1. I know, MM, I know.

              The problem all along is primarily caused by claiming the nonstatutory and the statutory together. What to do? The solution has always been to give the nonstatutory no weight for patentability purposes unless it acts to modify and improve the statutory. Why could this solution evade the otherwise intelligent folks at the CCPA and Federal Circuit for so long (albeit, they do recognize the principle in the printed matter doctrine?) For the longest time, the CCPA and Federal Circuit were insistent instead on nominalism so that they could push all decisions on patentability into 102/103/112, where perversely, they continued to insisted that all claim terms be given weight regardless that some were nonstatutory!

              And, how does one explain the PTO’s 1996 decision to remove from the MPEP the reference to Hotel Security? It is almost as if IBM took charge of the PTO in 1995-1996, 1995 being the year that the PTO caved to IBM on Beauregard claims.

    1. Why don’t you narrow the issues? For instance, is the claim going to be interpreted as being limited by the Specification’s description of “algorithm X”, or will “algorithm X”, in the claim, be interpreted as “an algorithm” with any possible features, for instance, “an algorithm that computes a price given two other prices”? Pose the hypo without claim interpretation issues. Also, you don’t say whether “algorithm X” is new or not.

      1. There appear to be no claim interpretation issues. This claim is a pure business method implemented on a computer. Whether the algorithm is new or not is irrelevant because the algorithm relates to non-technical business aspects. Although the use of the computer takes it outside the “as such” exclusion, the claim would be rejected in Europe for lack of inventive step. That is, the only ‘technical’ feature in the claim is the computer, which appears to be conventional.

  12. In Europe, the patent eligibility standard has become a question of drafting, a practice abhorred by patent Courts on both side of the Atlantic. In the end the standard is of little to no effect, looking at the context of its application no mixed claims (which recite a non invention along with other man made subject matter- where most questions arise) are ever rejected.

    I seem to recall that Prometheus-type claims (“determine data using old steps and infer based on data”) claims were rejected in Europe without a great deal of fanfare based on the lack of a technical “inventive step”.

    In Europe, would reciting the use of a technology like a ball point pen suffice to render such a claim eligible? Or does the old public domain “technology” have to be sufficiently trendy (like “a computer”)?

    1. Ball point pen is enough. It has “technical character” unlike the Art 52(2) EPC express exceptions:

      (2)

      The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

      (a)

      discoveries, scientific theories and mathematical methods;

      (b)

      aesthetic creations;

      (c)

      schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

      (d)

      presentations of information.

      It would be ironic indeed if Europe is more liberal on patentability of “programs for computers” given that Art 52(2) EPC expressly forbids them.

    2. A pen has a technical character and therefore is sufficient to give overall technical character to a claim. However, a pen is also known, so if you want to get a patent on a pen you must provide novel and non obvious features to that pen or employ the pen in a novel and non obvious combination.

      1. LBZ I doubt that Malcolm is thinking of inventing improved pens. Rather, I suspect he wants to know whether “and doing it with a ball point pen” is as effective as “do it on a computer” to imbue an otherwise ineligible claim with technical character.

        1. I suspect he wants to know whether “and doing it with a ball point pen” is as effective as “do it on a computer” to imbue an otherwise ineligible claim with technical character.

          That is exactly what I want to know, along with a reasonable explanation for the answer (or the legal explanation if that’s the best you have).

    1. What is meant by the useful arts? What does that expression embrace? I should like to know, but people are strangely reticent. I think it means “technology”. You?

      Just as wise jurisdictions refrain from defining “Invention” so also do they refrain from defining “technology”.

Comments are closed.