Patent Office Issues Updated “Interim Guidance” on Patent Subject Matter Eligibility

By Jason Rantanen

This morning, the USPTO issued a substantial update to its December 2014 “Interim Guidance” on patent subject matter eligibility.  The update addresses comments on the 2014 Guidance and includes several new examples of eligible and ineligible claims.  The update is available here: http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0  (The title says 2014 Interim Guidance, but the contents include the 2015 update.)

The new examples are directed to abstract ideas rather than biotechnology based inventions, although the commentary notes that the office is working on additional biotech-based examples.  According to the update,

These examples provide additional eligible claims in various technologies, as well as sample analyses applying the Supreme Court and Federal Circuit’s considerations for determining whether a claim with additional elements amounts to significantly more than the judicialexception itself. The examples, along with the case law precedent identified in the training materials as pertinent to the considerations,3 will assist examiners in evaluating claim elements that can lead to eligibility (i.e., by amounting to significantly more) in a consistent manner across the corps.

While these examples will likely be welcomed by attorneys practicing in this area, a substantial limitation is that the only recent Federal Circuit opinion finding an abstract idea-based claim eligible is DDR Holdings v. Hotels.com.  Thus, while there are several other examples of claims that the PTO would find eligible, those examples are based on either (1) PTO (as opposed to Federal Circuit) precedent; (2) hypothetical situations; or (3) pre-Mayo/Alice decisions (such as Diamond v. Diehr).

A particularly interesting part of the examples are two directed to use of the “streamlined” patent eligible subject matter analysis.  Those examples analyze claims directed to an internal combustion engine and remote storage of BIOS.  For these claims, the examiner would conduct only a “streamlined” analysis that would not become part of a written rejection.

As with the earlier Interim Guidance, the PTO is seeking public feedback on the  update.  From the website:

Any member of the public may submit written comments by electronic mail message over the Internet addressed to 2014_interim_guidance@uspto.gov (link sends e-mail). Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. The comments will be available for public inspection here at this Web page. Because comments will be available for public inspection, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments. Comments will be accepted until October 28, 2015.

52 thoughts on “Patent Office Issues Updated “Interim Guidance” on Patent Subject Matter Eligibility

  1. 8

    The PTO wants to tell its clients that this claim is eligible:

    2. A method of distributing stock quotes over a network to a remote subscriber computer, the method comprising:

    providing a stock viewer application to a subscriber for installation on the remote subscriber computer;

    receiving stock quotes at a transmission server sent from a data source over the Internet, the transmission server comprising a microprocessor and a memory that stores the remote subscriber’s preferences for information format, destination address, specified stock price values, and transmission schedule, wherein the microprocessor filters the received stock quotes by comparing the received stock quotes to the specified stock price values;

    generates a stock quote alert from the filtered stock quotes that contains a stock name, stock price and a universal resource locator (URL), which specifies the location ofthe data source;

    formats the stock quote alert into data blocks according to said information format; and

    transmits the formatted stock quote alert over a wireless communication channel to a wireless device associated with a subscriber based upon the destination address and transmission schedule,

    wherein the alert activates the stock viewer application to cause the stock quote alert to display on the remote subscriber computer and to enable connection via the URL to the data source over the Internet when the wireless device is locally connected to the remote subscriber computer and the remote subscriber computer comes online.

    Here’s the PTO’s laugh-worthy explanation:

    The claimed invention addresses the Internet‐centric challenge of alerting a subscriber with time sensitive information when the subscriber’s computer is offline.

    LOL — because only the Internet is “offline”! Yes, the PTO was born yesterday.

    This is addressed by transmitting the alert over a wireless communication channel to activate the stock viewer application,which causes the alert to display and enables the connection of the remote subscriber computer to the data source over the Internet when the remote subscriber computer comes online. These are meaningful limitations

    Wowee zowee! When the primary data receiving unit is turned off, use an alternate mode of communication that is equally non-inventive. Sooper dooper techno!

    Query: if this “limitation” is so “meaningful”, why is all the garbage about “stock quotes” (otherwise known as “information”) in the claim? We all know the answer to that question. But somehow the PTO can’t figure it out. Oh well, at least the PTO will get those filing fees from gullible, ignorant applicants who follow these “guidelines” (that the applicants wrote themselves probably — LOL!).

    1. 8.1

      So there’s no confusion about the PTO’s statements, here’s the last few paragraphs with the PTO’s statements in italics:

      ——————–

      Here’s the PTO’s laugh-worthy explanation:

      The claimed invention addresses the Internet‐centric challenge of alerting a subscriber with time sensitive information when the subscriber’s computer is offline.

      LOL — because only the Internet is “offline”! Yes, the PTO was born yesterday.

      This is addressed by transmitting the alert over a wireless communication channel to activate the stock viewer application,which causes the alert to display and enables the connection of the remote subscriber computer to the data source over the Internet when the remote subscriber computer comes online. These are meaningful limitations

      Wowee zowee! When the primary data receiving unit is turned off, use an alternate mode of communication that is equally non-inventive. Sooper dooper techno!

    2. 8.2

      MM, the PTO should require the “invention” be set forth without any of the irrelevant and somewhat distracting material regarding stocks, quotes and the like. Take it all out. There is a severe problem leaving it in as the claim does not particularly point out the invention as required by the statute.

      1. 8.2.1

        Gee Ned, maybe your “version” just isn’t correct. After all, the Jepson claim format is but an optional claim format, right?

  2. 7

    Note the mess conflating 101 with 102, 103, and 112 does. What a tangled web we weave when first the Royal 9 practice to write laws.

    1. 7.1

      The “mess” was not created by the Supreme Court. Nice try, though.

      The mess was created by short-sighted Federal district court and appellate judges, a patent office that encouraged the lowest forms of innovators to gamble at the patent casino, and some loudmouthed entitled patent attorneys who will do and say anything if they think it will increase the size of their own wallets.

      When patentees convinced themselves that they could sue people for thinking “new thoughts” about data (which Prometheus did) and patent attorneys got together with the wives of their bosses at firm parties to figure out how to “get rich off the Internet” that was a great sign that the system had cratered. The Supremes are doing their best to undo the damage created by those short-sighted judges and years of compliance by know-nothings at the patent office.

      1. 7.1.1

        Ok, who are these “loudmouthed entitled patent attorneys who will do and say anything if they think it will increase the size of their own wallets”? And, why are you eternally so negative about these people (whoever they are)?

        So much for “debate” on this forum. Currently (as per post 7.2, 2:25 pm, 7/30), MM’s rage against the patent office, patent law, and attorneys takes up about 80 to 90% of all the words written.

        1. 7.1.1.1

          So much for “debate” on this forum.

          You are perfectly free to write a glowing appraisal of the PTO’s guidelines, PB. I’m not going to make your arguments for you.

          who are these “loudmouthed entitled patent attorneys who will do and say anything if they think it will increase the size of their own wallets”?

          Well, there were those many self-identifying “expert” patent attorneys who somehow couldn’t acknowledge the easy facts and issues in Prometheus v. Mayo even when those facts and issues were repeatedly put right under their noses. Maybe they were just ignorant and not self-interested. Your pick. [shrugs]

          And yes they’re still out there and they still pretend not to “get it.” And it’s pretty clear why that is.

          1. 7.1.1.2.1

            Here, let me help you guys out:

            “The Royal Nine destroyed the patent system.”

            “Google paid for these guidelines.”

            “Nothing is patentable because everything is abstract.”

            “The US is turning into a third world communist country and we might as well all move to China.”

            “Obama ha tes technology.”

            “Unless we hand out more patents protecting diagnostic information millions of children are going to die.”

            Any other “substance” that you guys want to add to this “debate” over the guidelines? Did I forget anything?

            1. 7.1.1.2.1.1

              Maybe some actual to goodness law from your end…

              You know, not your own usual short script Feeling/opinion/policy table poundings drenched in baseless ad hominem….

              On top of that apply a filter of inte11ectual honesty.

              I will enjoy the ensuing quiet !

              1. 7.1.1.2.1.1.1

                Maybe some actual to goodness law from your end…

                Because common sense and reason have nothing to do with patents.

                Right. I’m well aware of your position on the subject. Also well aware of your magnificent losing streak.

                Please keep the “actual” laughs coming, “anon.”

                1. There is nothing at all “common” about your lack of sense and reason and inability to actually have an inte11ectually honest dialogue, Malcolm.

                  Nine years and running.

        2. 7.1.1.3

          MM should be kicked out of this forum as he only knows how to bad-mouth any reasonable discussion about 101. I am starting to think that MM is a group of people, not a real person. He is the only true whiner on this forum.

          1. 7.1.1.3.1

            TJ, MM is one of the best commentators here. That he makes fun of inane and ridiculous comments of people who refuse to “get it” is refreshing to a lot of us.

            Pore it on MM.

            1. 7.1.1.3.1.1

              The only thing “gotten” Ned is one intense case of “6-is-an-Einstein-because-he-agrees-with-me”

              Downright nasty how you “stick up” for easily the most scurrilous poster on this site.

              Windmill Ho.

            2. 7.1.1.3.1.2

              Really? MM is one of the best commentators here? His comments are rude and obnoxious. Here is just a sampling of his put-down comments to other and in the last post, his nonsense about how great he is and saw this coming:

              The mess was created by short-sighted Federal district court and appellate judges, a patent office that encouraged the lowest forms of innovators to gamble at the patent casino, and some loudmouthed entitled patent attorneys who will do and say anything if they think it will increase the size of their own wallets.

              Right. I’m well aware of your position on the subject. Also well aware of your magnificent losing streak.

              Is it a requirement for the PTO’s attorneys to behave like mindless schoolchildren who can only do exactly what they were told? Or is it just a common trait of the attorneys who decide to work there?

              Is that really so difficult for the PTO to acknowledge? Instead they choose to dance around the issue which will inevitably result in applicants being disappointed when they “followed the rules” (because if there are any people on earth who demand that their hands be held more tightly than the PTO’s attorneys, it’s the PTO’s “clients”) and end up with an unenforceable ineligible pile of junk.

              The guidelines are just another bad joke. I suppose the funny part is that they were written in large part by patent applicants who have a demonstrated habit of shooting themselves in the face over and over again.

              That is certainly the elementary school level of understanding that the PTO has adopted.

              Meanwhile there’s plenty of patent attorneys around who have had a decent handle on the subject for quite a long time and saw all these court cases coming years in advance. Perhaps it’d be better to pay attention to those patent attorneys instead of the self-interested whiners who never saw a junk patent they couldn’t embrace.

              1. 7.1.1.3.1.2.1

                TJ, but MM has been complaining about the junk the PTO has been issuing for years. When I first started posting here, I perhaps had a similar reaction to his posts as did you. But I begin to listen to him and slowly I became convinced that he was right.

                He was also right in that by issuing junk patents, the Office was arming a host of ambulance chasers who could conduct what amounts to highway robbery simply because a patent is presumed valid and litigation costs were high.

                Even the Federal Circuit in today’s Smartflash case recognized that it is at least partially to blame for all these junk patents, particularly identifying its decision in State Street Bank.

                MM is on the right side of history here, and has always been there. One can profit enormously by listening to what he has to say.

                1. Ned, my comments about MM have nothing to do with “junk” patents but in how MM is over-the-top rude, insulting, obnoxious in every post, assuming wrongly that anyone who dares to disagree with the “I-know-all” is wrong on every point. He is not civil and a plain bully. On the latest post by Dennis, we even takes pot-shots at Dennis! Dennis must be a gentlemen and scholar because if it were my blog, he would be sent a nice goodbye letter.

                2. TJ, not once, ever, has MM insulted me. MM and I have debated issues again and again, always civilly. Now why is that?

                  He also does not insult serious posters of any stripe who are willing to engage in a serious, well reasoned debate. That is my observation.

                  My recommendation is for you to post something well reasoned, not something in the nature of bomb throwing. Simply telling MM that he is wrong without more is going to mark you in his mind, permanently it seems, as somebody that is not interested in any serious discussion.

                3. Ned you simply have no credibility here.

                  Zero.

                  (we’ve been through your messed up “enjoy his swagger” routine before)

              1. 7.1.1.3.1.3.1

                You too, cheerleader – but please, go ahead and bottom out any hope you might have for credibility.

  3. 6

    The PTO wants to tell its clients that this claim is eligible:

    2. A method of distributing stock quotes over a network to a remote subscriber computer, the method comprising:

    providing a stock viewer application to a subscriber for installation on the remote subscriber computer;

    receiving stock quotes at a transmission server sent from a data source over the Internet, the transmission server comprising a microprocessor and a memory that stores the remote subscriber’s preferences for information format, destination address, specified stock price values, and transmission schedule, wherein the microprocessor filters the received stock quotes by comparing the received stock quotes to the specified stock price values;

    generates a stock quote alert from the filtered stock quotes that contains a stock name, stock price and a universal resource locator (URL), which specifies the location ofthe data source;

    formats the stock quote alert into data blocks according to said information format; and

    transmits the formatted stock quote alert over a wireless communication channel to a wireless device associated with a subscriber based upon the destination address and transmission schedule,

    wherein the alert activates the stock viewer application to cause the stock quote alert to display on the remote subscriber computer and to enable connection via the URL to the data source over the Internet when the wireless device is locally connected to the remote subscriber computer and the remote subscriber computer comes online.

    Here’s the PTO’s laugh-worthy explanation:

    The claimed invention addresses the Internet‐centric challenge of alerting a subscriber with time sensitive information when the subscriber’s computer is offline.

    LOL — because only the Internet is “offline”! Yes, the PTO was born yesterday.

    This is addressed by transmitting the alert over a wireless communication channel to activate the stock viewer application,which causes the alert to display and enables the connection of the remote subscriber computer to the data source over the Internet when the remote subscriber computer comes online. These are meaningful limitations

    Wowee zowee! When the primary data receiving unit is turned off, use an alternate mode of communication that is equally non-inventive. Sooper dooper techno!

    Query: if this “limitation” is so “meaningful”, why is all the garbage about “stock quotes” (otherwise known as “information”) in the claim? We all know the answer to that question. But somehow the PTO can’t figure it out. Oh well, at least the PTO will get those filing fees from gullible, ignorant applicants who follow these “guidelines” (that the applicants wrote themselves probably — LOL!).

    1. 6.1

      Simple Air Vs Google !

      So MM’s employer would like to have MM post a lot of “LOL” to change people minds.

      MM tactics .. copy paste the claim and insert

      “Sooper dooper”

      “LOL”

      at random places or things he cant understand ..or have a hindsight bias

      to show his intelligence !!

  4. 5

    Is it a requirement for the PTO’s attorneys to behave like mindless schoolchildren who can only do exactly what they were told? Or is it just a common trait of the attorneys who decide to work there?

    the following discussion provides more information about the types of concepts the courts have considered to be abstract ideas, byassociating Supreme Court and Federal Circuit eligibility decisions with judicial descriptors (e.g., “certain methods of organizing human activities”) based on common characteristics. These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor. This discussion is meant to guide examiners and ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea.

    And somehow nowhere in the subsequent discussion does the PTO come out and say, in plain English, the most fundamental truth about any sane patent system: “information is ineligible subject matter and can’t be protected with a patent claim, no matter how useful or obvious that information is, and no matter how limited the field of use for the protected information.”

    Is that really so difficult for the PTO to acknowledge? Instead they choose to dance around the issue which will inevitably result in applicants being disappointed when they “followed the rules” (because if there are any people on earth who demand that their hands be held more tightly than the PTO’s attorneys, it’s the PTO’s “clients”) and end up with an unenforceable ineligible pile of junk.

    The guidelines seem to be saying, “Hey, we have no idea what’s going on. We were born yesterday and live in a vacuum. We are aware that we told you some tricks for protecting ineligible subject matter in the past and those were totally wrong. Rather than try to understand the bigger picture, we’re just going to repeat the holdings of a bunch of court cases for you and suggest some new tricks. Enjoy!”

    The guidelines are just another bad joke. I suppose the funny part is that they were written in large part by patent applicants who have a demonstrated habit of shooting themselves in the face over and over again.

    1. 5.1

      Bad joke, indeed to the extent the PTO exhibits no fundamental understanding of the issues involved. They act as if they were clueless and afraid of moving even an inch beyond examples the courts have already decided. This exhibits an intent to continue to issue patents that violate the fundamentals involved and which are obviously invalid.

      The PTO is still committed to serving their so-called clients, the applicants, and not the public or the public interest. We need a new advisory committee composed not of patent applicants, but of representatives of industry, big and small, of universities and startups, of pharma and integrated circuits. Only then will the culture in the PTO change so that they begin to serve the public interest.

  5. 4

    The problem is that by default of a fundamental understanding WHY certain subject-matter is excluded, it is very much a word game. Abstract ideas are excluded. What is an “abstract idea”? An idea that is no patentable subject matter. It is completely circular.

    Why are certain undeniably valuable ideas excluded from patentability? Abstractness is a legal argument, no policy argument. At least one factor is that a patent is a “property rule” – subject to the problems identified in the famous article Guido Calabresi & A. Douglas Melamed, ‘Property Rules, Liability Rules, and Inalienability: one view of the cathedralgratis op link to digitalcommons.law.yale.edu‘, 85 Harv. L. Rev. 1972, p. 1089-1128.

    1. 4.1

      Abstract ideas are excluded. What is an “abstract idea”? An idea that is no patentable subject matter. It is completely circular.

      That is certainly the elementary school level of understanding that the PTO has adopted.

      Meanwhile there’s plenty of patent attorneys around who have had a decent handle on the subject for quite a long time and saw all these court cases coming years in advance. Perhaps it’d be better to pay attention to those patent attorneys instead of the self-interested whiners who never saw a junk patent they couldn’t embrace.

      1. 4.1.1

        Actually it is very similar to the European “technology” requirement (coming from a German tradition). Ifs something is patentable, it is technical in the legal sense. Not reversely.

        A British court trying to understand EPO case law said that the technology requirement is “a restatement of the problem in more imprecise terminology”. Perhaps the US abstractness-criterion is more “honest”in that it does not even pretend to be clear, but otherwise it is amazingly similar.

    2. 4.2

      Why are certain undeniably valuable ideas excluded from patentability?

      In fact, Reiner, all ideas are excluded from patentability. Ideas are abastractions and you can’t protect them with patents. You can protect new tangible things, however, and processes that transform those things in objective material fashion — provided that you describe them properly.

      Abstractness is a legal argument, no policy argument.

      To the extent Federal statutes are going to be construed whenever reasonably possible to be consistent with the intent of Congress, you can’t escape the policy considerations so easily.

      Or maybe you want to make the “principled” argument that I have a Constitutional right to own a well-regulated nuclear bomb and keep it pointed at your city. Because “arms” is a legal argument and not a “policy” argument. Right?

      1. 4.2.1

        I guess you hit the nail on the head that all ideas are abstract. Still US case law distinuishes abstract ideas, so the (about) only possibility to reject a patent application is to say that it relates to an “abstract idea”.

        The relation to “tangible things” is questionable. It goes back to the 19th century Cochrane v. Deener case, the that actually said that “transformation” is a sufficient condition, not a necessary condition. It seems that the essence is a process adding value – which is the proper economic abstraction I guess.

        Should the end product have mass? Of course not.

        1. 4.2.1.1

          Reinier, I assume you have read Rubber-Tip Pencil. Ideas are not patentable. Application of ideas are.

          Reading the cases sometimes helps one understanding the reasoning of the courts.

          1. 4.2.1.1.1

            Frankly, I don’t find the (very old) rubber tip pencil case very convincing. It is not just an idea, a pencil with a rubber tip is a mechanical device, an invention of a pencil manufacturer who solved the problem that occasionally there is a need to remove what just has been written or drawn, and integrating this device into a pencil prevents that it gets lost. You may argue that it is non-non-obvious, but I wonder why this invention should be treated differently from other novel mechanical devices. Don’t they all eventually boil down to an idea?

            1. 4.2.1.1.1.1

              Reinier, a pencil with a rubber tip is a mechanical device, an invention of a pencil manufacturer who solved the problem that occasionally there is a need to remove what just has been written or drawn, and integrating this device into a pencil prevents that it gets lost.

              Reinier, the point of the case was that the combination of the rubber with the tip of pencil was not actually claimed. What actually was claimed was simply the idea of doing that without any method or means of doing so put forth in the claim. This is also known as claiming a result – the precise problem identified in O’Reilly v. Morse.

              Here is a link to the case see why the Supreme Court believed that the claim was to an idea as opposed to a mechanical invention. link to scholar.google.com

    3. 4.3

      Reinier, why? This is not rocket science.

      1. If the novel subject matter is not a new or improved machine, manufacture or composition, or a process for making such or using such to produce an new or improved physical result, then there is a problem. Price is not a patentable result even when the claim is festooned with generic computers, etc. Any novelty that depends on the “meaning” of something is probably not eligible.

      2. If the novel subject matter is claimed at the level of an idea, sans any method or means for carrying the idea into practical effect, it is abstract.

      1. 4.3.1

        I agree that an invention must enable some action. § 112 requires a description how to carry out the invention (it does not just say “apply”). The action typically a adds value. That is why patents make sense economically.

        Forcussing on a material result is not uncommon, but is at least confusing, and it is wrong in my perception.

        Take a new mechanical device, made out of steel. Here the novelty is the form, the geometry if you like. Isn’t geometry something abstract?
        Is software abstract? It is intangible, but it runs on a machine, a computer. In a famous case, the patent application was directed to a programmed computer, pretending that the software made it a novel machine – and novel machines are patenble (if non-obvious). Looking for a “point of novelty” is not allowed: the rule is a “whole contents approach”. In this example, it might be obvious, but there are cases where it is all but impossible to identify the “point of novelty”. Remember that the “unity of invention” rule requires a single patent application to relate to a single inventive idea, so a dissection is wrong (see Diehr)

        Focussing on the value-adding aspect IMHO clarifies a lot of problems. One thing is that in a free market society, freedom competition is the rule so (patent) protection must be the exception.

        Econmists often consider patents a means to internalize external value, but in practice patents are often used to curtail competition. Software patents are used to claim functions rather than the way to implement them, see Mark Lemleys writings. Business method patents are used to prevent competition. every business likes to prevent competition, but that is not the rule of the game.

          1. 4.3.1.1.1

            The “ways to implement them” need NOT be a “point of novelty” itself – you have merely moved the goalposts while claiming to adhere to the “you can’t use ‘point of novelty’ theme.

            That very same “ways to implement them” is what is to be understood by the Person Having Ordinary Skill In The Art – the very same legal construct that our Court has been super-empowering in decisions such as KSR. As I have pointed out though, this super-empowering front edge that the Court wants to use necessarily has a trailing edge that later innovators can use.

            One example of this is my deconstruction of Malcolm’s canard of “objective physical structure” optional claim format as being the only “legal” claim format. The plain truth of the matter is that the “shortcuts” used in claim terminology merely reflect the “In The Art” portion of understanding. If you indeed “force” an innovator to use the option of “objective physical language” ANY software claim can be written in hundreds of pages of description that defies human understanding of the “objective physical description” of the equivalent of software in the mode of the specific media – paper, optical disk, magnetic disk.

            The inte11ectually honest path is to accept the fact that software is equivalent to hardware and is equivalent to firmware.

            The inte11ectually honest path is to accept the fact that software is NOT the execution of software, not software in action.

            The inte11ectually honest path is to accept the fact that software is not even the thought of software.

            Lemley – whom you want to place on a pedestal – is NOT a person to follow if you want to follow an inte11ectually honest path.

            1. 4.3.1.1.1.1

              Let me further point out that the “kernel of truth/Big Lie” approach that you attempt here has a parallel in the attempted disempowering of the exceptions to the judicial doctrine of printed matter.

              It simply does not matter how the line is drawn on a measuring cup, or how th numbers arrived upon a magic hat band, the critical point is that there exists a functional tie. These are not even software items, but the legal truth applies fully to software. Patent weight does not come from the novelty of the functional tie itself – it may, but such is simply NOT the requirement that is in play with the exceptions to the judicial doctrine of printed matter.

              This is a critical item that MUST be accepted in any inte11ectually honest dialogue.

              Note that this very item is something that Malcolm volunteered an admission against interests in knowing and understanding (highlighting his continuous duplicity).

              Note that this very item is something that Ned Heller even refuses to acknowledge, let alone understand and incorporate into any discussion.

              It is NOT a discussion these people want. Dialogue is not actually wanted by the Windmill Ho! crowd.

            2. 4.3.1.1.1.2

              I am not categically oppossing software patents!
              Actually software is merely a tool to realize some functionality. Here in Europe where software patentability is more controversial than the US, there are some interesting related court cases. Initially courts (40 years ago) were reluctant to extend the protection of such patents to softare implemenations, but later it was recognized that this approach would allow some hardware patent (e.g. in electronics) to be circumvented without a patent license by a software implementation.

              Some writers who proposed that software patent applications should disclose the source code were faced by the problem that it is not always possible to state whether software is involved. They had to solve this problem, and chose to propose a “reversal of proof” approach: in case of doubt, the applicant who denies that his invention is software-related may be asked to prove that there is a realistically feasible hardware implementation of his invention. (Joachim Weyand & Heiko Haase, ‘Patenting Computer Programs: New Challenges’, 36 IIC 2005, p. 647-663.) In my view, the conclusion must be that “software patent” is not really a category. this is also reflected by complicated language such as “computer implemented invention”. It is wrong since the implemenation details are not part of the invention.

              Do you disagree with Lemley’s observation that many software patents only claim a function without showing the way how to implement that functionality? While the implementation only has to be detailed in a patent application to the level that a PHOSITA (-programmer) can implement the functionality, the net effect is that competition is prohibited while these patents contribute very little to the “art”. No programmer ever reads software patents for inspiration, which is very different e.g. from chemistry. A recall a study by an economist who found that software patents are only read by competitors in order to find out what their competitors are doing, i.e. for competitive “intelligence” (lawful spying).

              1. 4.3.1.1.1.2.1

                Your last paragraph cannot be parsed – maybe if you broke it into several questions (and not attempt to soft-peddle Lemley and his views).

                1. OK, I wll clarify. My question is whether you disagree with Lemley that software patents often only claim functionality (Mark A. Lemley, ‘Software Patents and the Return of Functional Claiming’ Robert W. Kastenmeier Lecture, 2013 Wis. L. Rev. 2013, p. 905-964.)

                  In the last sentence I made a typo: the first letter should be “I” instead of “A”.

                  Didin’t you refer yourself to the “quid pro quo” principle? Patents that are not interesting to read for people in the same field may not help “To promote the progress of science and useful arts”

  6. 3

    In practice, the record may reflect the conclusion of eligibility simply by the absence of an eligibility rejection or may include clarifying remarks, when appropriate.

    Well that is going to be interesting.

  7. 2

    Your note of pre-Alice is not quite correct as both the linked first paragraph and Appendix 3 contain Alice.

    1. 2.1

      I’m not quite sure what you mean–the Supreme Court held that the patent in Alice failed to meet 101, so it’s not an example of a patent-eligible claim. Or am I misunderstanding you?

  8. 1

    They really should change their name to the No-Patent Office if what they predominantly do is tell you what you cannot patent.

    1. 1.1

      Its true that the output is a function of both the input and the processing. But you should never expect garbage in to produce anything but garbage out.

    2. 1.2

      Well, of course we tell you what you can’t patent. A mere patent registration system wouldn’t need thousands of examiners standing guard at the gates.

    3. 1.3

      Last time I checked the PTO still hands out at least one patent to 3 out of 4 applicants.

      Do keep up the hysterical cries about the PTO not handing out patents, though. We can always use the laughs. And be sure to use a different pseudonym next time you post, “Ben”.

      LOL

      1. 1.3.1

        That “3 out of 4” is like right on the historical average…

        Of course, you know that already, because I have told you that already.

        That very same historical average happens to predate the very object of your venom as well….

        What exactly was the point that you were trying to make….?

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