By Dennis Crouch
The Supreme Court’s decisions in Alice Corp v. CLS Bank and Mayo v. Prometheus serve as dramatic turning points in the conventional wisdom of subject matter eligibility. Inventions that were previously thought to be patent eligible are no longer; and we continue to re-calibrate toward this new normal. The USPTO has found some amount of understandable difficulty in implementing the two step Alice/Mayo eligibility test. In a chicken-and-egg problem, the test has major gaps in its structure, but the USPTO lacks substantive rulemaking authority to fill those gaps.
The USPTO’s Office of Patent Examination Policy (under Mr. Drew Hirshfeld) has released a new set of Eligibility Examination Guidelines intended to supplement those released in 2014 with the intent of both educating examiners on best practices and also informing applicants of the agency’s approach. I spoke with Hirshfeld who reiterated that these guidelines are incremental and that the USPTO continues to welcome input from the patent law community.
The July 2015 update builds upon Federal Circuit eligibility decisions made during interim and also responds to user comments. The guidelines major thrust, however, appears to be its attempt to offer a counterweight against those announcing that “nothing is patentable.” In the words of the notice, the idea is to provide “pathways to eligibility.” To be clear, the update does not cancel the prior guidance but only serves as a supplement.
Identifying Abstract Ideas and Laws of Nature: “Don’t Get Creative.” Although we know that “abstract ideas” are not patent eligible, the courts have chosen not to provide any crisp definition or description of that set of concepts. As I mentioned earlier, the USPTO also lacks authority to further define that question of law. Rather than guessing at the vast gray areas, the agency is instructing examiners to only find an abstract idea when the concept in question parallels one found to be abstract in a court decision.
“These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent . . . a claimed concept [should] not [be] identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea.”
Here, it also appears that the “court decisions” to be followed are primarily those of the Federal Circuit or Supreme Court rather than district courts.
The examples provided in the most recent guidelines include a further focus on business methods and human-mind-activities. , graphical user interface (GUI), and software areas. (This update does not include the most recent decisions such as Versata, Intellectual Ventures, Webb, Internet Patents, Sequenom, and OIP Tech.) The on its guidelines page, the PTO continues to maintain a list of the court decisions.
One way to think about an abstract idea is a concept defined at a high level of abstraction and likely in functional form – here, the PTO does not take that approach but rather continues to define “abstract” as something akin to a category of subject matter that is excluded from eligibility.
The PTO’s Streamlined Analysis: The guidelines continue to promote its “streamlined analysis” for eligibility – essentially a shortcut for examiners when an abstract idea or law of nature is clearly only tangential to the thrust of the claim and therefore that eligibility is self-evident.
Requirement of “Evidence” for Eligibility Rejections: The most controversial aspect of the guidelines will likely turn out to be the PTO’s decision that evidence is not needed as a prerequisite to an eligibility rejection. “For subject matter eligibility, the examiner’s burden is met by clearly articulating the reason(s) why the claimed invention is not eligible.” The PTO’s reasoning makes sense – eligibility has been repeatedly seen as a pure question of law adjudged without reliance upon any ‘evidence’ beyond that intrinsic to the patent documents themselves. “[C]ourts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings.”
To be clear, the PTO is requiring a “clear articulation” of an examiner’s reasons for rejection, but nothing more is required. Here, of course, the devil will be in the details of what is sufficient to constitute such clarity. To help settle that debate, the PTO has provided a further set of examples and reasoning seen sufficient. Interestingly, however, a “clear articulation” does not necessarily include determining the type of exception (abstract idea, law of nature, product of nature) that is being highlighted – “examiners are not required to distinguish between exceptions which can prove to be difficult.” This approach makes some sense in that the “law of nature” vs “abstract idea” distinction is likely merely philosophical. The one major difference is that both the Supreme Court and the USPTO appear to treat “products of nature” somewhat different. For products of nature only, the PTO includes a “markedly different characteristics” (MDC) shortcut to eligibility.
For further consideration of sufficient evidence, the PTO has also provides a set of worksheets (esp. Worksheets 5-8) that give explanations that satisfy the clear articulation burden. Although not “law,” these worksheets and examples are designed to carry weight with examiners and I would expect applicants to cite them directly in office action responses.
Preemption: I have mentioned this oddity before – although the eligibility test is designed to prevent a single entity from privatizing/preempting an abstract idea or law of nature, the eligibility test does not actually ask whether the invention as claimed accomplishes the prohibited preemption. Here, the PTO repeats that approach – noting that “the absence of complete preemption does not guarantee that a claim is eligible.”
Training: Examiners have apparently not yet been trained on the new guidance, and so someone immediately relying upon the guidance may need to self-educate the examiner. If I had a pending eligibility rejection that does not fit within the guidelines, I would talk through the situation with the examiner in an interview with the hope of having the rejection withdrawn.
Crikey this comments section is filled with below-the-belt irrelevant banter.
Re the guidelines: I read somewhere on Law360 that Attorney’s are expecting a “wave of rejections” following the guidelines. Whatever that ambiguous statement means.
Which is a silly point of view b/c we were all facing a wave of rejections anyways. More recently I’ve been getting “Alice 101’d” in super structural areas of tech. The Examiner’s are getting bolder with this Alice non-sense applying where it does not belong and is not relevant.
Good article, Crouch. That’s a useful point that the PTO is trying to guide the Examiner’s to only rejecting claims/inventions that are similar to past SCOTUS cases. That’s where should really be focusing (imho). . .
They haven’t been doing that, hopefully they will be more focusing on what “IS” the abstract idea. Examiner’s skip step 1 analysis far far far far too often. And when they don’t, the analysis results sound like: “Oh well, data can serve as an indicators for humans to organize so claim 1 is abstract”….(which leads the patent attorney silent for a few minutes after reading..followed by….”WHATT?????”). (Don’t worry confidentiality-sticklers, that example is off the top of my head and made up. . . but it reflects what I’ve seeing.)
Another good point of the guidelines that I’d like to point out is one of the examples: link to uspto.gov “Transmission of Stock Quote Data”.
In that example, the PTO explains to Examiner’s that claim 1 is invalid, yet claim 2..which covers the same invention is VALID. Thus, I think what they’re trying to convey is that the WORDS of the claims MATTER.
Too often I’ve seen Examiners make up their mind early-on then basically ignore any/all amendments and word changes.
At least for that point (clarification that the words of a claim actually matter): I think these guidelines are good.
It is odd that the Office is only now dealing with “abstract” when that concept has been around since Bilski.
The Office was applying M-o-T back then. The focus on abstract was not enacted until after Alice.
What do you think caused all the sudden interest? My theory is boredom in patent law. “Everything’s else (more or less) settled, let’s turn to 101.”
My “theory” is a bit more pernicious.
Look to your Right.
Look to your Left.
Each, for their own reasons, dislike patents.
“words of the claim matter” – is exactly opposite what the Supreme Court has said, and more importantly, what the Supreme Court has done.
One of the problems then is that NO MATTER how applicants respond to what the Office puts out, NO MATTER how well applicants follow whatever guidelines as they may be, a later Court can just accuse applicants of “mere scrivining” and reject anew, perhaps with another new undefined term, the attempts by applicants to follow either the words of Congress or the words of the executive branch.
Crikey, maybe we really do need to pay attention to what the Supremes are doing.
Hypothetical #1: Claim characterized by the USPTO as patent-eligible, despite being “functional at the point of novelty” (indeed, functional from start to finish).
Hypothetical #2: Claim characterized by the USPTO as patent-eligible, despite being “functional at the point of novelty” (indeed, functional from start to finish).
Hypothetical #5: Claim involving automatically installing BIOS over a network on boot (note: this is basically a precursor to PXE).
Claim characterized by the USPTO as not just patent-eligible, but providing such self-evident utility that a full Alice / 101 analysis is not required or even appropriate.
Well, I suppose that about wraps it up for “functional at the point of novelty” as an automatic dealbreaker.
Careful there Mr. Stein, you are impugning “Point of Novelty.”
Examples #1/2 are not eligible due to utility. The examples clearly state that they aren’t directed to an abstract idea. That’s confusing enough, there’s no reason to lie about what they said.
I suppose that about wraps it up for “functional at the point of novelty” as an automatic dealbreaker.
Keep telling your clients that! And be sure to deposit their checks before they educate themselves or find a better patent attorney.
The direct implication here of course Mr. Stein, is that you are either incompetent, a thief, or both.
Coming from the “master” of “high morals” himself as noted by his always “inte11ectually honest” posts, Malcolm, that should be taken in earnest.
Or something.
(Hey, at least he did not directly call you a thief like he did AAA JJ just the other day)
Hey David, please address this easy hypothetical:
Client comes to you with $50,000 to spend and says she has “innovated” some super desirable and useful information that she would like to protect with a patent claim. Her plan (she tells you) is to obtain the patent and then become a millionaire many times over by licensing the patent to people who want to transmit or store her newly “innovated” desirable and useful information, or licensing the patent to people who use the information for any purpose, or by sueing people who use the information for any purpose without a license.
Question 1. What do you tell her?
Next she tells you that she would be fine if the storage, licensing or use of the information was limited to any uses carried out “on the Internet” or via mobile communication through devices such as cell phones, drones, robot cars and a few new trending devices she just read about on the Sleek Shiny Gadgets Blog. You realize quickly that her knowledge of these underlying technologies is roughly that of a middling high school student who’s taken a beginner’s computer science class.
Question 2: What do you tell her?
Thanks in advance.
The never ending nonsense of the paid blogger.
Let’s see with this blog and the other blogs MM posts to that amount to about 300-400 posts a week. At 2 hours that means that he spends about 20 seconds per post.
But, then the real number of posts is probably 2,000 for 4 seconds per post.
But this “gee, you are protecting information” “argument” that no one but Malcolm advances is somehow not a “common form of argument and is an informal fallacy based on giving the impression of refuting an opponent’s argument, while actually refuting an argument which was not advanced by that opponent.“…
/off sardonic bemusement
Indeed, David, you are pointing out, almost in a mocking fashion, why Lemley is so off-the-wall incorrect in his analysis of software being claimed as a programmed computer.
When one is claiming a method, one claim steps. The steps are actions. In terms of machine, they can appear to be functions of the machine but in point of fact they are steps. A program is not really a new machine, but a series of steps that the machine does in executing the program.
Functional at the point of novelty has nothing to do with claiming steps of a method.
Ned,
There was no “almost” mocking fashion – this was full on mocking.
Also (rather importantly), David was not mocking Lemley – he was mocking you.
FURTHER – you double down on the dissembling by once again knowingly making the false statement that software is an action.
It is not – no matter how “easy” or convenient anyone (including the courts) use that type of language, the plain hard-core FACT of the matter is different.
Software is not the execution of software.
Software is not the thought of software.
Software IS a machine component and manufacture in its own right.
Software IS equivalent to hardware and IS equivalent to firmware.
Your purposeful ignorance should come to an end.
anon, David could not have intended to mock me in this fashion because if he did he must be as dumb as an ox.
Then you are what’s left behind by the ox.
You have to try really really hard to be this dense Ned.
anon, I could never accuse you of being able to understand the basics involved in this issue, so I will let this pass.
With all due respect Ned – it is you that shows a lack of appreciation of the issues here.
Understand the basics…?
Please – you can’t get out of your own way as to what software is, confusing software with the execution of software.
Try reading again here what David wrote: he SLAMMED you and your pet “Point of Novelty.” You want to get high and mighty about “understanding” when you cannot even recognize the topic of a post.
You SERIOUSLY suffer from being in love with your own views – everything for you is the “if-it-aligns-with-Ned’s-agenda-it-must-be-Einstein” malady.
Wake the F up, son.
What is so funny about your post is that you do not even know what my “pet” PON theory is and how it differs from that of Lemley.
Lemely is pushing software as a violation of Halliburton, and in this, I think he is wrong for the reasons stated.
What is so funny is that once again you are so wrong.
You are now focusing on what you think your differences with Lemley are, and YOU think that everyone else is also thinking like you are thinking.
WAKE UP son.
No one cares about how you want to compare your “Point of Novelty” canard to what your version of Lemley is.
You are BOTH in the weeds.
You inserted Lemley here when David did not reference Lemley at all.
David’s post was strictly and directly geared to YOUR bizarro fascination with “Point of Novelty.”
Period.
The fact that you then want to get on a high horse and tell others “You don’t know” is hysterical.
A true Quixote figure you make – don’t let reality interfere with that vision of yourself in your own head that you have going on.
Ned: Functional at the point of novelty has nothing to do with claiming steps of a method.
That’s incorrect, Ned. It depends on the details of the step in question.
For example, if it’s a “new” machine that’s carrying out the step, then describing that “new” machine in terms of its “new” functionality is just as much a problem in a method claim as it is in an apparatus claim.
MM, there is of course that universal caveat that one cannot claim the invention as a result, not even a pseudo process like a mathematical algorithm.
As to programmed machine claims, the courts have been construing these to be processes for 101 purposes. The only question that really remains is whether claiming them as apparatus performing a series of machine steps should be formally considered to be an process claim, or something non statutory because it claims a process as an apparatus when no new machine structure is present — a formal overrule of Bernhart would be in order here.
Such claims seem to violate both 101 and 112(b), 101 due to mixing categories, 112(b) because it is not clear who infringes.
Translation of the Malcolm and Ned interchange:
“Life is grand and beautiful in the Echo Chamber, where reality and inconvenient facts and law never intrude.”
/off sardonic bemusement.
Ned:
A few comments to clarify what I think of your theories.
First: You and I are in complete agreement that “actions” should be given due weight, while “results” should not, and about how Lemley’s position is extraordinarily specious. I anticipate that you will concur with much of my recent article about the difficulty in pursuing software patents.
However – and this is a big “however” – I feel that your perception of the line between “actions” and “results” is extremely fluid, and often applied too aggressively, i.e., if the steps are not specified in extremely rigorous detail, they’re “functional” and therefore “results.” This is a different standard that you perceive for physical structural elements, where an applicant can just say “an engine driving an axle,” and everyone knows what that means.
Second: “Point of novelty” is a central theme in your legal theories, and yet, I do not see it appearing in any court definition (including the bizarrely mis-titled post about Internet Patents Corp. v. Active Networks).
I fully agree that both examination and litigation should focus more closely on the elements of the claim that provide novelty and non-obviousness. I stridently do not agree that courts apply any different standard or rules to this “point of novelty.” The claim is to be considered as a whole. Indeed, courts are now taking that “read as a whole” approach to an extreme in Alice analyses, when they dismiss a carefully detailed claim as “basically intermediated settlement” or “basically using rules to model lip-syncing.”
David, the focus should always be on whether the “invention” is claimed as a result. Hard and fast rules need to be avoided as they may or may not be universally applicable.
Software inventions are claimed as a series of steps. If the combination of steps is the invention, then I see no problem if individual steps are claimed as a result. (However, 112(f) may apply to such steps.)
I assume you have read Faulkner v. Gibbs? The court has no problem with the elements of a combination claim being functionally claimed if the combination actually is the invention.
Also, Application of Tarczy-Hornoch, 397 F.2d 856 (C.C.P.A. 1968) held that one can claim process that can be performed by a machine while recognizing that one still could not claim a result.
We will agree to disagree on Internet Patents. There the invention was claimed as a result. That is why the claim failed 101.
Regarding you strident disagreement, have you read Rubber-Tip Pencil, link to scholar.google.com, the case the Supreme Court relied on in Benson, Flook, Diehr, and Alice?
“The “abstract ideas” category embodies “the longstanding rule that `[a]n idea of itself is not patentable.'” Benson, supra, at 67, 93 S.Ct. 253 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874)); ”
Alice at 2355, link to scholar.google.com
Thus Rubber-Tip Pencil is central to the analysis of what an abstract idea is.
Why was the idea that a rubber eraser be attached to the tip of a pencil found to be a violation of 101?
Ned:
I agree with you in theory – but you and I have disagreed enough in the past about specific cases, that I perceive a significant difference in our application of the principle.
For me, the line between “step” vs. “result” is: If you recite this language to a person of ordinary skill in the art, would they be able to apply it, as a specific process, without undue experimentation? “Yes” = “step”; “no” = “result.” This xkcd comic expresses my perception of this distinction quite well.
For example – a claim providing: “upon capturing an image, determine a location of the image” should be regarded as a “step,” not a function. A garden-variety software developer should be able to recite several ways of doing that, like:
* Upon capturing the image on a device with a GPS receiver, query the GPS receiver for coordinates.
* Upon capturing the image on a device with cellular radios, triangulate with nearly towers at known locations.
* Retrieve the exif data from inside the image.
* Upon capturing the image, compare the IP address of the user with an IP geolocation database, and determine, roughly, where the user is located in the world.
* Present a local map to the user, and ask the user to indicate the location on the map where the image was taken.
Because it’s reasonably clear how a software developer might “determine the location of an image,” this claim element is a “step,” covering both these and any other way of determining the location of an image.
Based on our past exchanges, I imagine that you will disagree, characterizing this as a result.
That’s funny – that is exactly what I asserted, in the comments of that thread, as the correct summary of this case.
But there is nothing in that summary about “point of novelty,” and there is nothing in that summary about the language being “functional” vs. “structural.” That’s why I find the title and summary to be objectionably incorrect.
David, when one is claiming something “old” so that everyone knows what it is and how to do it, I really don’t think the courts care one bit how it is claimed just so the claim is somewhat clear and definite.
I don’t think I ever agreed with Dennis’s headline because claiming results is a 101 problem, but functional-at-the point of novelty is a 101 problem only if one is claiming structure by what it does. It does not apply to the steps of a method or process — or when one is claiming software.
Circling back to Internet patents, there was an additional problem with the claims if one construed them, as did the court, to cover the novel mathematics so that one was no longer claiming a result, and that was that they were not limited to a specific machine.
Software is not the execution of software.
You continue to abuse the “ease of description.”
That is just not inte11ectually honest Ned.
Was the very first Viterbi “machine” well known Ned?
How much did it weigh?
How much does it weigh today?
and to push your “logic” even further, what does the machine weigh when you take away all of the “generic” components?
(and shall I remind you yet again of the proper patent doctrine of inherency…?)
Further, your highness, are you aware that most all “firmware” nowadays is NO different than good ‘ol plain software?
Maybe all of your huffing and puffing, behind the curtain button pushing and dial turning needs “a little dog too” to pull aside the curtain.
That is, if such is “allowed” to be put into the comments here…
I already discussed the PTO’s woefully incorrect analysis of claim 1 in Example 23 (see here: link to patentlyo.com).
The claims presented in that Example bring to mind a broader question: why would the PTO choose incredibly obvious, invalid patent claims to explain eligibility issues to anyone, much less to the crowd of folks who insist (wrongly) that obviousness is the answer to everything? At the very least the PTO should point out when they are using an obvious (or non-enabled) claim to avoid that kind of incitement and confusion.
After all, the PTO wouldn’t think of using a claim reciting “1. A display of text stating that boiled pigtails can scald your dog’s feet” to illustrate a point about obviousness or enablement. But somehow a claim to a method of “automatically removing overlap of overlapping virtual objects on a computerized display” slips right on through. Give us a break already.
For a guy who only spends about 2 hours a week posting on this site, you sure do post a lot.
You sure about that two hours?
This post is especially odd coming from Malcolm, seeing as Macolm has in past done exactly what he is complaining about by trying to use non-Useful Arts examples in his own curse-ades.
Macolm has in past done exactly what he is complaining about b
The fact that you think so is yet more evidence of your inability to read English and your inability to understand the simplest propositions expressed in simple terms.
LOL – more glorious Malcolm self FAIL.
Contrast this with a post this very day by Malcolm doing EXACTLY as I describe (just six minutes BEFORE his post here):
link to patentlyo.com
Great “ecosystem” here – the fertilizer from Malcolm is so deep, there is no “earth” to be found.
Client comes to you with $50,000 to spend and says she has “innovated” some super desirable and useful information that she would like to protect with a patent claim. Her plan (she tells you) is to obtain the patent and then become a millionaire many times over by licensing the patent to people who want to transmit or store her newly “innovated” desirable and useful information, or licensing the patent to people who use the information for any purpose, or by sueing people who use the information for any purpose without a license.
Question 1. What do you tell her?
Next she tells you that she would be fine if the storage, licensing or use of the information was limited to any uses carried out “on the Internet” or via mobile communication through devices such as cell phones, drones, robot cars and a few new trending devices she just read about on the Sleek Shiny Gadgets Blog. You realize quickly that her knowledge of these underlying technologies is roughly that of a middling high school student who’s taken a beginner’s computer science class.
Question 2: What do you tell her?
These should be really easy questions for patent attorneys to answer in 2015, in spite of the PTO’s tremendous efforts to create nuance where there is none.
You tell her, MM, that but for the unconstitutional actions of a Royal-9 super court, her valuable inventions could have been patented and that she could have become a millionaire.
You then present her with a petition to ban the Supreme Court Royal-9 from patent cases, and to amend 101 to make State Street Bank the law of the land so that inventors like her, and patent attorneys like himself, can get rich quick by inventing new ideas.
What an arse you are Ned.
Of course to you – the Court is above the law and screw any actual checks and balances, no matter what Madison or the Federalist Papers (or even your own offered O’Malley link – oops) had to say, right?
And anyone that dares to not align with your views, well, it is just so convenient to ignore that anyway.
(That’s not a dialogue – that’s the other thing)
If Ned and Malcolm had their way, this would be America’s leading source of echoes.
“and screw any actual checks and balances”
The congress can feel free to overturn their decision statutorily anytime brosef. They appear to be more or less on board from their recent legislations.
Except not, 6 – as I have already captured in a discussion on the matter over on the Ethics side.
You still are a day late and a dollar short…
And even BEYOND that, it simply is NOT OK to merely say “well, let Congress fix it”
You really are a neophyte when it comes to politics and history.
Congress can “try” to fix it. But we’d all like to see them try so the whole act goes down in constitutional flames.
Or not.
If you want “constitutional flames” – there are examples much much closer.
😉
Plain and simple, the Supremes have turned 101 “analysis” into nothing more than a pornography test. . . and I see nothing in this new “dump” as correcting that fundamental problem.
Furthermore, it is exceptionally frustrating to have one “camp” in the gaming-machines art units (i.e. slot machines) operating under two SPEs who have encouraged certain language to be added and allowed cases over 101 based on that language, and another “camp” operating under two other SPEs who are, apparently, dead-set against allowing cases under with the very same language/concepts present in the claims. Compare, for example, 14/313,140 and 13/732,769.
In short, eligibility vel non has become nothing more than the luck of the draw as to which examiner you get; sadly ironic and/or apropos of the gaming arts, I guess.
Siiiiighhhh, now back to my OA response to one of the “won’t-budge” examiners. . . . .
It is not a rule or law but an invitation for any judge to invalidate patent claims for their own private policy reasons.
KenF: it is exceptionally frustrating to have one “camp” in the gaming-machines art units (i.e. slot machines) operating under two SPEs who have encouraged certain language to be added and allowed cases over 101 based on that language, and another “camp” operating under two other SPEs who are, apparently, dead-set against allowing cases under with the very same language/concepts present in the claims. Compare, for example, 14/313,140 and 13/732,769.
Can you provide the specifics of this magic language, KenF?
the Supremes have turned 101 “analysis” into nothing more than a pornography test. . .
So says the disgruntled pornographer.
Methinks you don’t get or understand the reference.
Methinks I’ve seen your critique many times before and addressed it repeatedly.
There really isn’t much similarity between “abstractions aren’t eligible for patenting” and “I know hardcore p 0rn when I see it” … unless of course you end up with the short end of the stick (pun intended).
More importantly, there is a huge difference between regulating what consenting adults can do and see with a test that is (arguably) too stringent, on one hand, and regulating the damage that one adult can inflict on a non-consenting third party with a test that is (arguably) too stringent.
You’re going to get more clarification in due course. And the chances are excellent that you’re not going to like that clarification. Oh yes: and it’s going to come at you from a number of different directions. And in spite of this warning you will likely react as if you didn’t see it coming and it’s all so unfair. If you doubt me, do a bit of research and you’ll find that all this was predicted many years ago and the predictions came true and they are still coming true.
The slot machine arts. “But Examiner the prior art had three cherries and we have three personalized icons!” LOL
The automobile arts. “But Examiner the prior art had four wheels and I have five!”
See what I did there?
Your configuration is nothing more than electrons, protons and neutrons, and you did not invent them, nor did you invent the method by which they are attached, and since you are merely trying to have a patent on such ineligible materials, no patent for you.
Did you see what the logic of others leads to?
Shame on me for not heeding perfesser MM’s repeatedly addressing my critique. How dare I?!
I haven’t seen such insecurity-driven self-importance since law school and the days at a firm with summer associates. . . . sheesh!
Be aware KenF, that Malcolm considers merely repeating himself as a “real” form of “addressing” counterpoints put on the table of discussion.
He really does think that clenching tight his eyes, sticking his fingers into his ears and chanting as loudly as he can “nanananana” is a form of dialogue.
Take your pick of [go figure] or [shrug]…
I haven’t seen such insecurity-driven self-importance since law school and the days at a firm with summer associates.
Where do you empty wastebackets now?
It actually may be worse than that, insofar as obscenity arises from community and national standards while abstractness lies almost entirely with the fact finder. Even at the margins, the former remains vaguely ascertainable.
Those in the affected arts will remain in this mess until an appellate court sets forth an objective test for what constitutes an “abstract idea.” A perfect formulation is not required. The idea of preemption seemed like a start but has since fallen by the wayside.
Regretably the question is bypassed why abstract ideas are excluded, apart from the fact that the courts have said so. They identified some types of ideas as “abstract” so they are no patentable subject-matter.
What is the relation to the constitutional purpose “To promote the progress of science and useful arts”? Some critics (like Machlup, and more recently Meurer) have argued that virtually not any patent fulfills this purpose, but I guess the truth is in the middle (as always). Still economists AFAIK are not prepared to answer the question “which rules make the patent system most effective?”
As a laywer, I made an attempt in my PhD thesis: Reinier B. Bakels, ‘The Technology Criterion in Patent Law A controversial but indispensable requirement Oisterwijk: Wolf Legal Publishers 2012, ISBN 9789058508621.
Unlike most (all?) econmists, I do not start from the idea that patents allow “internalization of externalities”, if only because that would be an argument to allow some “abstract ideas” to be patentable as well. My approach is to juxtapose the fundamental freedom of competition with the exclusivity of patents. That leads to reasons why certain ideas indeed are too abstract to be patentable.
The title of my thesis refers to the (European) technology requirement. But actually the very same arguments apply to the exclusion of abstract ideas under US law, including the tendency to circular reasoning: only technical subject-matter is patentable since courts have defined patentable subject-matter as “technical” in a legal sense (= abstract ideas in a legal sense are those ideas that were identified as non-patentable). My approach is to look for some logical limitation, and then to see whether it relates in some way to the colloquial meaning of words like “abstract” and “technical”. There is actucally a striking similarity between the two. In my thesis, I compare patent law from various European jurisdictions with US law.
My dear economics academic, there is an important point to remember as you dabble in law,…
Not just law, but U.S. law
Not just U.S. law, but the intersection of constitutionally provided authority to write statutory law of a particular kind and the constraints imposed by that very same constitution on matters that the Court may address:
Speaking about separation of powers – and other constraints that the Royal Nine face:
In other words, it is high time to take a critical look at the Court’s own scrivining and subjective conjectural basis of “may” cause some future harm to innovation and realize that the Court too is not allowed to provide such advisory opinions in its Wax Nose re-writing of statutory law.
Maybe Judge O’Malley can publish a follow-on piece….
Centuries ago, the French (the inventors of the separation of powers) proclaimed that the courts should be “la bouche de la loi” (“the mouth of the law”). but soon they fund out that this was not a workable principle, and that laws always need some form of interpretation.
In the 19th century German law philosophers like Von Savigny developed a theory of interpretation methods. Since this is philosophy, not law, it may apply to US law as well.
Patent law, US patent law included, relies very much on “grammatical” (or “linguistic”) interpretation: it is sometimes like a word game.
Another interpretation method is “teleological” interpretation, from the Greek “telos” = purpose. Courts may resort to the purpose the legislator had in mind. For US patent law, the purpose is given in the Constitution.
Is this interpretation method allowed in the US? I don’t know, but I guess that the answer is in asking the opposite: may a court arrive at an opinion that clearly does not meet the (unquestioable) purpose (of the constitution)?
In the famous Flook case, the court explicity considers economic considerations, and it apparently only refrains from applying such considerations because “Difficult questions of policy con-cerning the kinds of programs that may be appropriate for patent protection and the form and duration of such protection can be answered by Congress on the basis of current empirical data not equally available to this tribunal.” (437 U.S. 584, 595, 98 S.Ct. 2522, 2528).
Perhap some conclusion can be drawn without empirical data (and must be drawn as far as the future is concerned!) Some of the points Machlup raised in his seminal work from 1958 (link to mises.org) still are very valid today.
Sorry about the boldface. I made an error.
“and must be drawn as far as the future is concerned”
You are missing a critical limitation of the U.S. court system with a comment like that.
I suggest that you read again my posts, especially the one discussing separation of powers and other limitations that the Court – a balanced branch UNDER the constitution – necessarily has. You might also want to throw in there some of the Madison and Federalist Papers warning about an unbalance judiciary that holds itself ABOVE the law.
Typically in law, it is unavoidable that courts interpret the law, within certain limits of course. If you argue that the Supreme Court in Flook considered (not applied!) an approach that is beyond its power, then that is an entire new argument, and I am ready to admit that I wasn’t aware of such a limit.
Let me mention one more analogy with European law. In Germany they are very sensitive about courts “making” law, since courts lack a democratic legitimation. That is due to the turbulent German history we are all aware of. Still German court are faced with the problem that interpretation is unavoidable. So they say that courts are (only) allowed to further develop law (“Rechtsfortbildung”). In contrast, I always thought that Anglo_Saxon courts can “create” law by means of binding precedents, within certain limits of course. Still I know of interpretations contra legem if the statute works out patently unreasonable in certain situations.
I guess if the legislator is really dissatisfied with an interpretation by courts, it can adopt a new statute explicitly dealing with the particular situation.
Pure C R P Reinier – you need to recognize the difference between common law writing and mere interpretation.
Take a walk sometimes over to the Ethics side of this blog and try to learn this difference from Prof. Hricik (who by the way has written a book on statutory interpretation – the subject you are C R Ping on).
Then pick up the reference that Ned Heller himself supplied by our Judge O’Malley to see what is going on with the philosophical calls for our Court to stick its fingers into the 101 Nose of Wax.
Then realize just how off you are with your ratehr immature notion that U.S. Court can trump sttutory law at any time they feel like it (you might enjoy the fictional movie of The Paper Chase and the comment at the hour and six minute mark).
Then, as suggested previously, read up on Madison and the Federalist Papers about the danger of a judiciary outside of the balance of powers that is the separation of powers and the danger of a view of a Court ABOVE the law.
Finally, you might want to contemplate the fact that ALL of these points have long been clearly made, and that it is ONLY by a purposeful and continued disregard that the very same fallacious arguments continue to be made by the very same people.
Can you please answer my concrete question whether the courts (CCPA/CACF and SCOTUS) have exceeded their competence in your perception? Note that in Flook the court in the end did not apply economic arguments – if for different reasons.
I don’t think this “point has long been clearly made”.
And from a practical perspective, even if the Supreme Court was always completely wrong, their opinions are a given for practitioners. Complaining the becomes like complaining about the weather: it may relieve you, but it does not help at all.
Again: enjoy your weekend!
Can you restate your question on “competence” and what Flook did NOT do? It is not clear what you think you asked (concretely or otherwise).
As to “complaining about the Supreme Court” – more pure C R P from you.
Also covered over on the Ethics side of the blog, at one time I believe, was a story about just how often the Supreme Court has been reversed – in a number of different manners.
So please take your temptation of a Chamberlain peace for our times and kindly stuff it. I am more of the Churchill kind of guy.
And lastly, have a great weekend too!
Reinier, do you ever deal with reality? You know reality? You are abstract and should be invalidated for being so far removed from anything that actually occurs in the real world.
He is a foreign economic academic with a known and pervasive bias who does not comprehend with enough particularity the subject matter upon which he wishes to comment.
Everything he posts must go through that filter.