Eligibility: Explaining the IPO Legislative Proposal

by Dennis Crouch

Following Bilski, Prof. Rob Merges and I published a paper titled “Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making” arguing, inter alia, that eligibility decisions are largely out of the normal bailiwick of PTO examiners.  As imagined by the Supreme Court, the eligibility doctrine really became too philosophical and policy based to be administrable.  Alice and Mayo were subsequently released and did not help the situation.  Under Dir. Lee, the USPTO did figure out a way to administer the test — by not following the test set-out by the Supreme Court.  Rather than looking for abstract ideas and laws of nature as imagined by the Supreme Court, examiners are guided to look specifically only for concepts that the courts have already identified as problematic.  Of course, as the number of court cases finding ineligible subject matter rises, the PTO’s approach has necessarily expanded as well.

The administration concern is one factor behind the IPO’s newly proposed legislative change to 35 U.S.C. 101.   For the IPO, though, the larger issue though is “revers[ing] the recent Supreme Court rulings and restore the scope of subject matter eligibility to that intended by Congress in the passage of the Patent Act of 1952.”

IPO Steps Up: Proposes Statute to Overturn Mayo and Alice

In a newly published whitepaper, the IPO explains its proposed legislative amendment. [PDF20170207_ipo-101-tf-proposed-amendments-and-report]

Following an explanation rejected by the Supreme Court in its eligibility doctrine, IPO explains that the traditional subject matter exceptions including abstract ideas and laws of nature were part of the pre-1952 “invention” requirement.  That requirement was eliminated in the 1952 Act in a way that, according to the IPO, should have opened the door to broad subject matter jurisprudence.  As the organization sees it, the Supreme Court began to go off track in the 1970s – a path revived in recent years.

With this avenue of legal argument rejected by the courts, the IPO sees itself forced to appeal to Congress for a more direct statement of broad subject matter eligibility.

The IPO’s proposed amendment is as follows:

101 Inventions patentable.

101(a) ELIGIBLE SUBJECT MATTER: Whoever invents or discovers, and claims as an invention, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereto, shall be entitled to thereof, may obtain a patent for a claimed invention thereof therefor, subject only to the exceptions, conditions, and requirements set forth in this Title of this title.

101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

101(c) SOLE ELIGIBILITY STANDARD: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

In describing the 101(a) amendment, the IPO explains that, in the amended structure “utility [is] the sole basis of eligibility.”  The requirement that the entitlement to a patent is “subject only to the exceptions and conditions set forth in this Title” is, according to the IPO, intended “to foreclose the development of any future ‘judicial exceptions” to section 101.” and to recognize that the “only exceptions to the entitlement to a patent … are those defined in the statute.”  The IPO statement does not consider the impact of other already-existing non-statutory exceptions such as double-patenting, but presumably those will disappear unless a sufficient statutory hook is found.

Proposed 102(b) includes a very narrow exception to eligibility.  I would suggest that there is almost nothing on earth that provably “exists in nature independently of and prior to any human activity” leaving the only actual exception that the invention “exists solely in the human mind.”  On this second exception, IPO writes:

This ineligibility criterion … makes eligible any claim limitation that requires some external involvement with the physical world or any representation thereof (e.g., data in a computer).
. . . [However] ideas that do not have physical or tangible aspects . . . are not patentable.

The IPO does not indicate whether the exception would be triggered if a single embodiment of the invention could conceivably exist solely in a human mind.  I expect that it would.

According to the IPO, 101(c) is designed to ensure that eligibility is not determined based upon the novelty, obviousness, or definiteness of a patent claim.  I would suggest that the language does not quite achieve the purpose suggested.  A more effective revision might state instead that “eligibility of a claimed invention. . . shall be determined without regard to its novelty, obviousness, or definiteness, or lack thereof.”

I compliment the IPO on taking this major step and beginning a conversation on legislative fixes to the eligibility doctrine.

I agree with the IPO members that the current situation is quite problematic both because the lines are so unclear and because they are ruling-out many inventions that should qualify in my conception.  That said, I believe that the provision likely goes too far.  I would suggest that the proposal take at least two further steps: (1) include a third exception to eligibility derived from the printed matter doctrine; and (2) include a new 102(d) that expressly defines the scope of the utility doctrine so that it becomes clear what work will be going on there.  It should be clear from the statute that ordinary works of authorship, for instance, are not patent eligible.

About Dennis Crouch

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

265 thoughts on “Eligibility: Explaining the IPO Legislative Proposal

  1. Flashback to 6+ years ago in the run-up to the Supremes decision in Prometheus. This is the entertaining comment thread shortly after Kevin Noonan admitted that he favors the patenting of (i.e., the granting of private exclusive rights to) medically relevant information because otherwise (he claims) people won’t ever disclose it (never mind that people disclose medically relevant information all the time and have done so since forever). And then he spins round and round and round as the basic issues are presented to him over and over again in the simplest terms, refusing to address them squarely.

    link to patentdocs.org

    Nothing. Has. Changed.

    The maximalists have no interest in discussing the issues, regardless of how disturbing they are to other patent attorneys or the public generally. They just want their patents, and they want their money, and they want it now. Nothing and nobody else matters to them. Never has, never will.

  2. MM, the only member of the USSC with any passion for patent law (and its problems) is Breyer. He ain’t getting any younger. Virtually all of the other justices tend to vote big business and whatever position the SG may take in non-media sensation cases.

    My first preference is for information and logic to be fully excised, but I don’t think that is politically possible because too many people simply cannot separate computers from computing and discovery from invention.

    As to your critique of my proposed compromise: In addition, any credible distinction between “info for human consumption” and “info for machine consumption” dissolves in the modern world where we use computers (which are machines) as proxies for our own information consumption. Why should it make a difference if the information generated by some application of logic to data ends up outputted directly to me or outputted to my robot? The logic is identical. Why should it be eligible in the former case but not the latter? Makes no sense

    It makes sense when you consider the kinds of acts that would lead to infringement and the elimination of many “do it on a computer” claims and business method claims. Additionally, the focus and purposeful confusion/dust kicking about “improving computers” would be much more difficult because the focus would more directed to the utility/purposes of the machine consuming the information, which can never be abstract because you need a human mind to host an abstraction. The value of some given quanta of information is the same for every machine that uses it, while it’s different for every human being.

    It would be easier to identify a PHOSITA rather than the surreal parade of computer experts who know nothing about stock trading or arranging retail products or any of the million other “do it on a computer” claims. It would be somewhat easier to examine, again because the focus would be on the genre of the machine consuming the data rather than vast swaths of human activity.

    As to the fact that we lack the feeblest bit of infrastructure or a legal framework in place that coherently distinguishes between, e.g., “obvious” and “non-obvious” math and logic in view of the prior art, the politics are ugly and getting uglier.

    When allegedly serious people propose that common sense must not be part of a legal analysis, we have gone over the mountain and far, far out to sea. At least machines will have some patent footprint larger than the endless variations of never patented (or published) human activity.

    The CAFC and USSC are going to need SOME doctrine. Absolute purity ain’t gonna get it done. The age is not a rational one, as you can see on the Tee Vee. A working political compromise means people have to give ground- I would rather not, but sometimes you must.

    1. Maybe instead – try understanding law, the history of the law, and the facts surrounding that history of the law…

      Jumping to a “let’s just compromise” when such compromise is not warranted is a bit Chamberlain like… (the epitome of BAD politics)

      1. You can’t even be right about Chamberlain. Every serious historian understands that Munich was a popular disaster but a strategic necessity in order for Britain to rearm before the inevitable conflict with Hitler.

        I suggest you keep sticking to what you don’t know rather than venturing even farther afield.

        And PS, your history of law is a history of politics. They can’t be separated.

        1. Every serious historian understands that Munich was a popular disaster but a strategic necessity in order for Britain to rearm before the inevitable conflict with Hitler.

          That is simply untrue – there was more than merely “Britain rearming” as you quite miss the historical context and what the name Chamberlain and appeasement actually mean – in the historical sense.

          You do tend to glom onto weird views that merely reflect how you think the world should be, ever clenching tight your eyes to how the world actually is.

          1. The irony of Mr. “All Your Politicians Is The Same So Leave Emper0r Tangerine Alone!” complaining about the “appeasement” of cwazy authoritarian types is noted.

  3. The IPO has just published its revisions to 103:

    A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Common sense shall not be used or references in any part of the analysis of the claim. Under no circumstances will any element in the claim be deemed to be non-limiting for any reason. Individual claim elements, whether or not disclosed by the prior art, shall never be discussed or analyzed separately from the other claim elements. The term ‘monopoly’ must never appear in the analysis, also.

    These guys are really sharp! Best. Patent. System. Ever.

    1. MM, it appears that the IPO has been taken over by radical reactionaries. It is unbelievable what they are proposing.

      I have a flavor of what went on in ’52 when the Bar, lead by the very unhappy and pissed off G. S. Rich, went on a rampage, using the opportunity of code consolidation offered by Congress to overturned as many of the Supreme Court cases as they could, cases that had restrained growing abuses by patent attorneys and by patent owners in so, so many areas.

      We know what happened later when this firebrand reactionary made it to the court. He set about transforming the whole patent system.

      History seems to repeating itself.

      You might not agree here, Malcolm, but you are now a conservative.

      1. History seems to repeating itself.

        From someone truly bent on trying to negate the history (of the Act of 1952), your statement Ned, is rather duplicitous.

    2. MM, it appears that the IPO has been taken over by radical reactionaries. It is unbelievable what they are proposing.

  4. Dennis writes, For the IPO, though, the larger issue though is “revers[ing] the recent Supreme Court rulings and restore the scope of subject matter eligibility to that intended by Congress in the passage of the Patent Act of 1952.”

    “Who controls the past controls the future. Who controls the present controls the past.” — O’Brien in 1984

    1. Thankfully the IPO controls less and less with each passing minute.

      And now it’s quickly becoming the laughing stock of the IP community.

  5. David @ 16.1.1.1.1.2.1, by way of background, I am a principal/founder of a software firm that has provided complex business software for over 20 years, to thousands of customers. In addition, I am the compliance officer of a rather less sizable/illustrious (!) firm than Cantor, so I can somewhat appreciate the depth of understanding of the financial services industry that the GC for a firm like Cantor must possess. Also, to be sure, I’m not a lawyer and your skills in written advocacy likely dwarf mine, but I’ll give this a shot.

    To credit Cantor’s resurgence after the filthy attack to the patents rather than the brand strains believability past the breaking point. It surely is believable that your CEO put great faith and stock on those patents: a patent in hand is a formidable weapon of economic power. Steve Jobs famously took comfort in his patent’s power to intimidate (and perhaps even empower him in a totemistic way).

    In its way, your observations of yours get toward the core of this problem. It’s a political problem. Politics is how we allocate resources and privileges and obligations, and as such, politics is infused with humanity’s drives and perceptions and shibboleths. Our Judiciary is the means we use to enforce some degree of fairness and predictability to tame these wild forces. A great deal of discussion on Subject Matter Eligibility comes down to ideological, or even religious belief in the role of patents.

    For example, lots and lots of things require engineering talent to develop, capital to implement and deploy, and gave (us) a competitive advantage. The same can be said of building a new cruise ship or copper mine- but those things may be entirely conventional activity not worthy of patenting. What is worthy of patenting most often turns on concepts of obviousness- which is why this portion of dicta from KSR is, to me, is some of the most powerful language on Subject Matter Eligibility that the court has produced:

    “We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. See U. S. Const., Art. I, §8, cl. 8. These premises led to the bar on patents claiming obvious subject matter established in Hotchkiss and codified in §103. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose”.

    When you write that These “compute a result and display it on a screen to improve accuracy of a stock trader” inventions are really important in making the American financial system work. Nobody wins when a broker goofs and trades a couple hundred million dollars of the wrong stock. Why is that patent any less deserving of patent protection than any other computer-implemented invention? , my answer is because there is no real invention there, and there is no fair way of valuing the utility of the putative invention.

    The knowledge of the trading techniques existed in the minds of Cantor’s skilled traders, and the technology to computerize that knowledge existed in the minds of the designers of the computer equipment and the operating/display systems of the underlying software. Appling known techniques with known equipment, even when well-executed and somewhat clever is exactly what “ordinary innovation” means. My company does it every day.

    Beyond the lack of invention, the human use of that information is entirely variable. Some users of that trading software will find zero value, or even negative value, in the way it operates. Some will love it, and credit the software with much of their trading success. Some will buy a trading platform software on the basis of that one feature, others would pay to have the feature disabled. Like books, movies, and the fine arts in general, when software is a human experience, there is literally no accounting for taste. For a just patent system, there must be some basis of fair, repeatable accounting.

    That’s why I draw this firm line at human consumption of information, which also manages to be the most exacting definition of “abstraction” available. We can’t get away from abstraction, and I don’t even know if the Supreme Court would allow it no matter what monkeying is done to Section 101.

    Let me address also your rather glib answer to my question about MPEG patents. You wrote that If it’s claimed as “nothing but information” then its ineligible, but if, as most MPEG patents do, the invention is claimed as a process that massages information in a nontransitory memory of a computer, then it’s a “process” or “improvement of a machine.” In that case, it would be erroneous to characterize it as “nothing but information.”

    The machine is improved not a whit. It’s the same machine the designers built, and it does exactly what they built it to do. Changing signals within the unchanging physical structure of the memory subsystem is a silly dodge to lend some notion of physicality that has nothing to do with what is actually happening with MPEG compression.

    Yes it is a process. I believe it’s an eligible process because the information result of running the process is consumed by the machine to render a video. Just as the content of that video is not subject matter for patenting, anything else that is displayed by that machine for human use should not be either. But the process is comprised entirely of information, to be processed by a machine designed exactly to process it.

    Furthermore, I don’t see an MPEG standard as ordinary innovation. People have to work it out, and many other people have to agree to use it and apply it to their code, and even though there is no flash of genius or unexpected result, it’s not obvious in the sense that anyone would ever spontaneously design a complete compression algorithm exactly the same way as anyone else. , When large numbers of people agree to adhere to a useful standard, that’s not an ordinary accomplishment.

    Copyright and Trade Secret are the appropriate forms of IP protection for information consumed by human beings, and patents are the appropriate form for information consumed by machines. Nothing I have seen in the past decade or any other argument presented has even slightly convinced me otherwise. So please, go ahead and tell me why it can’t work.

    1. MS: patents are the appropriate form for information consumed by machines. Nothing I have seen in the past decade or any other argument presented has even slightly convinced me otherwise. So please, go ahead and tell me why it can’t work.

      One easy answer is that it won’t “work” for the same reason that the system doesn’t “work” now: there isn’t even the feeblest bit of infrastructure or a legal framework in place that coherently distinguishes between, e.g., “obvious” and “non-obvious” math and logic in view of the prior art. In addition, these are structureless things. That’s why the courts and the PTO have resorted to absurd legal fictions about the sufficiency of fake “algorithmic structure” in order to have some kind of foundation on top of which to build the existing (and collapsing) house of cards.

      Also, you answered your own question to some extent when you wrote:

      [T]he technology to computerize [logical processing of stock trading information] existed in the minds of the designers of the computer equipment and the operating/display systems of the underlying software.

      That’s always going to be the case. The machines do what they are told to do by people who sit around and think about stuff to tell the machines what to do. In addition, any credible distinction between “info for human consumption” and “info for machine consumption” dissolves in the modern world where we use computers (which are machines) as proxies for our own information consumption. Why should it make a difference if the information generated by some application of logic to data ends up outputted directly to me or outputted to my robot? The logic is identical. Why should it be eligible in the former case but not the latter? Makes no sense. I don’t expect these arguments (just one of many, by the way) to “convince” you, Martin, but they do need to be addressed by you and (ideally) should be expressly addressed in any statutory language you propose.

      You are absolutely correct about one thing, however: this is all about politics. Specifically, it’s about industrial policy. And that further begs the question why anybody — especially now — should be paying serious attention to the maximalist positions of patent attorneys who are transparently obsessed with protecting information and logic.

      If we want to promote, e.g., better manufacturing jobs and better infrastructure then let’s encourage investment in those areas and away from this “shove an ad in your face” g@r bage that Underweiser and Sachs specialize in. Let’s keep patents focused on tangible and physically transformative innovations, e.g., innovations that are structurally defined and distinguished from the prior art in objective physical terms.

      On the other hand, if the goal is to creat jobs for techn0logically ign 0rant patent agents (e.g., “social engineers”, “banking engineers”) and expand the PTO into a magnificently bloated Federal agency filled with psychologists and accountants dedicated to servicing those patent agents, then, sure, let’s bring back State Street. Maybe the public would like to have some input on that.

    2. You forgot to mention your rather emotionally scarring patent lawsuit experience Mr. Snyder.

      That is no a small oversight, given your extreme bias.

      1. Which experience? I’ve had several. It’s a privilege to lose large sums of money; the education was excellent, although overpriced. Your own weakness is telling when you can’t help but to attack the messenger rather than the message. Someone else in the news quite a bit is fond of that tactic…..

        1. Lol – several?

          I was only aware of the one that sent you over the edge.

          The one in which you thought that since you invented first (but did not bother to share), and that somehow you were “immune” to a later inventor that DID bother to share.

            1. I have read your contributions to the various discussion groups – maybe you should read that and see that what YOU have presented very much makes my views about you quite correct.

              If you are not representing what actually happened on the docket (S?), then that is most definitely a YOU problem.

  6. Greg DeL: I gather that not everyone knows what a “reach through” claim is. This is a claim where you claim anything that achieves a given result, even technologies that have not yet been invented. In other words, you try to “reach through” your claim into the future, to claim technologies that nobody (including you) has yet invented. This sort of claim is usually noncompliant with the written description requirement

    In fact, the sort of claim you describe sails through the PTO by the reams, every week. It’s called functional claiming at the point of novelty and it’s how pretty much every ‘do it on a computer’ claim is written. Are those claims limited to “only” every operating system in existence at the time of filing? I’ve never heard that suggested. Maybe the answer is that writing instructions for instructable-computers isn’t “technology” (oh noes! I touched the third rail again).

    The quoted comment was raised in the context of a discussion about a type of claim that sails right through Underweiser and Sachs’ offensive, absurd and d.o.a. effort to make State Street the law of the land. Specifically, the exemplary claim is:

    “A method of monitoring [insert name of a newly discovered asteroid] with any human-developed technology.”

    Note that the point of novelty is not the “human developed technology.” The point of novelty is this very particularly claimed new asteroid. And presumably one skilled in the art would understand what “human developed technology” is. And the issue doesn’t go away just because we throw the term “computer-controlled telescope” into the claim.

    As I’ve already mentioned, the game played by the maximalists is to pretend that the other statutes will somehow “take care” of claims like this that sail through the revised subject matter eligibility statute. For instance, David Boundy popped up to assert that monitoring asteroids isn’t legally “useful”. How does he know this? He doesn’t say. We’re all supposed to trust him, I guess. And we’re all supposed to trust the self-dealers at the IPO. And that, my friends, is a j0 ke.

    People like myself have spent years identifying and highlighting the major subject matter eligibility issues that are floating out there. The issues don’t go away because you wave your hand and say “utility takes care of that” or “103 takes care of that” or “112 takes care of that.” Those statutes say nothing about the subject matter eligibility issues in the claim. It goes without saying that the hypocrisy of the patent maximalists telling everyone to rely on judicial activism to fix the holes in this revised statute is breathtaking.

    1. And just so everyone has a sense of where the maximalists are coming from, the same guy who is so sure that monitoring asteroids “isn’t useful” under the statute is pumping the awesomeness of patents that monitor … stock prices.

      Yes, these are s00per serious people! They’re all about scientific progress. They’re not wealthy entitled self-dealers trying to funnel more money into their own pockets and the pockets of their rich friends. You can trust them!

  7. DC I compliment the IPO … beginning a conversation on legislative fixes to the eligibility doctrine.

    LOL

    We’ve been having this conversation for years. And somehow the IPO manages to come up with a “revision” that is worse than the current statute.

    A complete waste of everyone’s time.

    1. You (of all people) have been having zero conversation for ANY length of time.

      Monologuing your feelings day in and day out is NOT conversation.

      You just don’t have the chops for any real conversation, as that would entail you to engage in inte11ectual honesty (just not within your “skill” set).

      1. You (of all people) have been having zero conversation for ANY length of time.

        That’s interesting because anyone who’s been paying attention can see that the arguments I’ve been making (and I’m not alone) are increasingly understood and accepted by reasonable people everywhere, and not just patent attorneys.

        If this amazing time-waster of a proposal doesn’t get instantly chucked in the tr@sh where it belongs and if the proponents of it don’t slink back into their smelly offices and lick their wounds for five years, then rest assured you’re going to hear my views repeated loudly and forcefully by many many many many other groups.

        There’s no going back to State Street, ever. Get over it.

        1. There’s no going back to State Street, ever. Get over it.

          My position is not – and never has been – based on the State Street case.

          As such, there is nothing in your comment for me to “get over.”

          On the other hand, my comments are grounded in the actual law – as passed by Congress – it is more than apparent that the one that needs to “get over” something is you.

    2. MM, it was good for Dennis to bring this to our attention for us all to see what the “movers and shakers” are doing. They once again are trying to rig the system to their favor, not trying to fix a grievous error by the Supreme Court where there is a national consensus that the Supreme Court got not only the law wrong, but the policy.

      1. it was good for Dennis to bring this to our attention for us all to see what the “movers and shakers” are doing.

        I agree with that. I just don’t understand why he goes out of his way to suggest that these “movers and shakers” have accomplished anything productive.

        Dennis could start the exact same conversation (or, more likely, a far better one) by just re-posting the existing statute and saying “What would you add to make this more clear?” I seem to recall that he’s done that sort of thing before.

        He did acknowledge some massive gaps in the statute but he did so in such a passive manner that (as is often the case) I couldn’t tell if he was being sarcastic or not.

        1. The two perpetual Windmill Chasers – whining as usual and ig noring history in attempts to reach their desired Ends…

          “Go figure Folks”

  8. I think it’s helpful to point out that any discussions about amending 101 are premature. After all, we just had the AIA passed, and we need to wait and see how that shakes out first.

    Give it 5 years then make the proposals.

    1. Just? AIA started kicking in at least as early as 2013. That’s something like 4 years ago. So, we have had your 5 years since passing already.

          1. 5, 10, 15,

            Wouldn’t matter – the AIA was not about the topic under discussion here – that’s kind of the point that you are missing from post 18.1.

  9. An easy-to-remember basic fact to keep in mind when you think about subject matter eligibility: information is different.

    Information is, of course, ineligible subject matter.

    Any claim that concerns information gathering, storage, processing, or communication is going to present an eligibility question of some sort. It might be an easy question. It might be a hard question. But the question is there.

    Information-related eligibility issues aren’t the only eligibility issues out there. But they’re important ones. And the fact that this proposed revision doesn’t even begin to coherently address these issues is very strong evidence that the people behind the revision have either no clue what they’re talking about, or they’re hoping nobody will notice, or a bit of both. I’m going with the latter.

    1. Except all the laws of physics says that processing information is not different.

      MM: over the 11 or 12 years I’ve seen your posts, I have never seen one iota of evidence that information processing inventions are different than other inventions.

      1. LOL We’re talking about patent laws, not laws of physics.

        I know: s00per nuanced stuff, way above your paygrade.

        I have never seen one iota of evidence that information processing inventions are different than other inventions.

        Not that it matters at all what you’ve “seen” or not (because nobody cares what you think about anything) but the case law is brimming over with evidence and it’s all been discussed here, endlessly, for many many years. The “alternate facts” game works marvelously on the ign0 rami. It doesn’t work here, however, because most of us are a zillion times smarter than you.

        [shrugs]

      2. Night, information processing inventions are not information inventions.

        Information processing is tangible and done with physical equipment.

        Information inventions are comprised of logic or information itself, which is intangible and exist in the plane of thought or abstraction.

        You can argue that configured neurons or logic gates or electrons are physical, but you can also argue that they are quantum states or signals. They are clearly not “things” in the plain and ordinary meaning of the word, and they are not being changed when the signals are changed in any meaningful structural sense.

        The patent system has a problem with information inventions, not information processing inventions.

        1. Taking this out of the “totally in the mind realm,” your statement may then become:

          You can argue that configured logic gates or electrons are physical, but you can also argue that they are quantum states or signals. They are clearly not “things” in the plain and ordinary meaning of the word, and they are not being changed when the signals are changed in any meaningful structural sense.

          This statement could not be more incorrect – from a purely factual manner.

    2. That’s what the categories are for — “process, machine, manufacture, or composition of matter”

      Information is none of these. Thus, information standing alone is not eligible. Never has been.

      But information, claimed as embodied in “process, machine, manufacture, or composition of matter” can well be an “improvement to” one of the base categories — and thereby eligible in that context.

      Does that make it patentable? No. Eligibility is only one step in a journey. All the other requirements are still in effect as well.

      1. That’s what the categories are for — “process, machine, manufacture, or composition of matter” Information is none of these.

        If the information is “made” or “produced” by a human, it’s arguably a “manufacture.” That’s not my position but I wouldn’t be surprised to see the opposite position taken by a patent lawyer who believes that patents on useful information would promote progress in the “information engineering” “arts.”

        information, claimed as embodied in “process, machine, manufacture, or composition of matter” can well be an “improvement to” one of the base categories — and thereby eligible in that context.

        I’m not sure if the Supreme Court would agree. I am 100% certain that pretty much everyone agrees that claims in which the only new element is “new information” are highly highly likely to be ineligble.

        Just a few of the extremely low hanging and real-world examples which immediately leap to mind are:

        “new” book manufactures distinguished only by information in the book;

        “new” computer/display manufactures distinguished from the prior art only by “new” information stored or displayed by the computer/display

        “new” book-making processes distinguished from the prior art only by the “new” information or arrangement of information placed into the book

        “new” processes for displaying or storing information on a computer distinguished from the prior art only by the “new” content/arrangement of the information

        So why beat around the bush? Failing to address this issue head on is a massive catastrophic omission if the gates to eligibility are otherwise being opened wide. The IPO should be ashamed of itself.

        Eligibility is only one step in a journey. All the other requirements are still in effect as well.

        As everyone who’s been paying attention is very much aware, the “other requirements” are pretty much toothless when it comes to “do it on a computer” patents. But maybe you’ll change all that when you force the PTO to start appling the law as rigorously in the logic arts as it does in other art units.

        Just kidding: we all know that you’re never going to do anything remotely like that.

          1. You said something I agreed with.

            More accurately, I said something that pretty much everybody on earth agrees with: information is ineligible for patenting. This is one of the key starting points for any intelligent conversation about subject matter eligibility, and if there’s going to be a new statute about subject matter eligibility, this feature of any sane patent system need to put front and center.

            Now let’s look at who didn’t make this incredibly important point that everybody agrees with. You didn’t make it. Dennis didn’t make it. The IPO didn’t make it. Underweiser and Sachs didn’t make it. I’d be surprised if you can show me where Sachs, e.g., ever said that “information isn’t eligible for patenting.”

            And again: this is arguably the most important issue relating to subject matter eligibility.

            you have to shift position enough to start a new fight.

            This isn’t a “new fight”, David. This is you and Sachs et al. playing the same old shell game that was completely debunked by the Supremes in Prometheus v. Mayo.

            We call see what you’re doing. I’ve seen it all, trust me. And no “revision” that doesn’t expressly address these issues is every going to get off the ground. You either learn to address them head on or you’re going to get the horns every time.

        1. Depends on how its claimed.

          If it’s claimed as “nothing but information” then its ineligible.

          If, as most MPEG patents do, the invention is claimed as a process that massages information in a nontransitory memory of a computer, then it’s a “process” or “improvement of a machine.” In that case, it would be erroneous to characterize it as “nothing but information.”

          1. the invention is claimed as a process that massages information in a nontransitory memory of a computer, then it’s a “process” or “improvement of a machine.”

            Processes aren’t improvements to machines. Processes are processes.

            Data compression is an ancient method of information coding that is performed for the purpose of reducing the energy required to transmit a signal or to reduce the space taken up by stored information. Nothing is being “massaged” when information is re-coded, unless perhaps you are communicating some re-coded information to someone by touching them with your fingers. And, yes, that’s also in the prior art.

            The concept is as old as human society. All that’s new is the math.

            And you have no evidence that patents on data compression algorithms promote better data compression algorithms and you never will because (wait for it) they don’t do that. The PTO is also incapable of examining them.

            1. How is your copyright on math coming along?

              (and please spare everyone the banality of trying to move the goalposts to a book of math).

              That’s what I thought.

              What a schmuck.

            2. Processes aren’t improvements to machines. Processes are processes.

              …and the execution of software is not software.

              Your attempted point is nothing but an obfuscation.

              Try again with the patent concept of inherency.

              We both know that you refuse to go there – and we both know why.

  10. Dennis writes —

    I would suggest that there is almost nothing on earth that provably “exists in nature independently of and prior to any human activity”

    I think Dennis jumped to too much conclusion too quickly. All discoveries of pure science remain ineligible.

    So —

    — the discovery of the BRCA1 gene, as it exists in human tissue, is a “natural phenomenon” and ineligible
    — BRCA1 isolated, so that it can be used as a test reagent, study vehicle, etc., exists only after human intervention, and would be eligbible

    — taxol, as it exists in parts per million in the tissues of pacific yew trees, is a natural phenomenon, and ineligible
    — taxol purified to the degree necessary to use as a chemotherapy drug — eligible (I could go either way on this specific one — maybe taxol is only eligible in a process for administration)

    — a process involving metabolism of 6-thoiguanine — eligible, because there’s never been a single molecule of 6-thioguanine in nature

    — cells in cord blood that crossed the placenta in utero and encode medical information about the baby — ineligible
    — evaluating those cells out of the cord blood to diagnose medical condition in an infant — nature doesn’t do that, so it’s eligible.

    — E=mc2 — ineligible
    — Uranium fission that releases energy at rate E=Mc2 — 4.5 billion years old, natural, ineligible.
    — Fermi’s Chicago Squash Court atomic pile — eligible

    I assume that’s the dividing line that IPO was looking for.

    1. Maybe I’m misreading the statute, but it seems that BRCA1 is a human gene and thus, by definition, never existed “independently of and prior to any human activity.” So, patent eligible. Same with human-stem-cell-blood.

      1. I take your point about the ambiguity in the proposed statutory text. The “and prior to any human activity” could be read to mean that a frog that only evolved in the last 4000 years is eligible subject matter, because that is after some human activity (even if the activity had nothing to do with the frog). Perhaps “and prior to” could just go. Maybe it is redundant over “independently of any human activity” for our purposes.

        As for BRCA1 “by definition” not existing prior to human activity, here you are wrong. Lots of “human” genes (as in, genes found in human cells) pre-exist humans. I do not know whether BRCA1 is one of them, but this is an empirical question. Not something that can be resolved by recourse to “by definition” tautological reasoning.

        1. There is literally nothing about this statute that isn’t laughably wrong.

          Rather than discuss it ad nauseum and pretend that Underweiser and Sachs have achieved anything except embarassing themselves and the patent bar, how about you work on a statute that coherently and expressly closes the door on the junk that pretty much every reasonable person wants out of the patent system?

          Dennis and I have already shown the way …

          1. OK

            Modify Section 100(b) to read: The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. The term “process” excludes any process which results in information consumed by human beings, excepting processes that improve information processing without regard to the particular content or meaning of the newly processed information”.

            1. That’s a huge step in the right direction anyway, relative to this IPO debacle. I don’t agree that this language is adequate, even for what you appear to be wanting to do, but at least it shows some intelligence and thought beyond “let’s completely wreck the patent system again.”

            2. Suppose that a neurophagic protist (Trypans invidius) evolves that is exquisitely sensitive to arsenic. It is exquisitely sensitive because certain proteins in its proteome are high affinity arsinic chelators. Therefore, if a person is infected with this protist, one can administer an otherwise toxic dose of arsenic (e.g. 10 mg/kg) to the patient, and the chelators in the protist will concentrate the arsenic in the protist, thus killing the parasite. The dead parasite will then degrade in the host, releasing the chelated arsenic, which can then be cleared harmlessly (because of the chelator) by the kidneys into the urine.

              In other words, a substance that is ordinarily a deadly poison at 10 mg/kg becomes a life-saving drug, but only if the patient is infected with the protist. Therefore, some benevolent researcher designs an enzyme-linked immunoabsorbent blood assay with 99% sensitivity and 99% specificity to detect the protist. If you test positive, your doctor can administer the arsenic.

              We draft some claims

              1. A method of treating Trypans invidius infection in a patient in need thereof, the method comprising administering arsenic at a dose of 10 mg/kg bodyweight to the patient.

              2. The method of Claim 1, further comprising:
              (1) collecting at least 100 µL of blood from the patient;
              (2) contacting the blood onto a surface impregnated with an antibody having at least one CDR according to SEQ ID NO:1, at least one CDR according to SEQ ID NO:2, at least one CDR according to SEQ ID NO:3, and at least one CDR according to SEQ ID NO:4; and
              (3) observing an indicator on the surface indicative of antigen binding to the antibody.

              I see nothing about your proviso for “process which results in information consumed by human beings” that impacts Claim 1. Presumably Claim 1, therefore, remains eligible (or if it fails, it does not fail for the specific reason of the human-consumed-info rule).

              Claim 2, however, results in the generation of information for human consumption. That is not its end result, but it is a result.

              Can it really be the case that Claim 1 is fine, but Claim 2 is ineligible? In other words, Claim 1 reads on acts that you consider disqualifying, but it does not mention them, so it is fine. Meanwhile, Claim 2 runs afoul of the rule merely because it makes explicit that which is already explicit in Claim 1.

              That seems strange to me. More to the point, it seems undesirable. We should want the inventor to feel motivated to pursue Claim 2 (if only because it is narrower than Claim 1).

              1. Greg, my proposed statutory change (or change in doctrine) must be accompanied by a second change.

                That change is a formal construction step to construe the invention. You can call it an eligibility construction- and that’s what Alice is doing- serving as an unsatisfactory, ad-hoc construction step. Information inventions demand this step because the implicate multiple arts and because the location of the inventive step must be identified in order to proceed with the 102/103/112 inquiries.

                Processes, by the definition of the word, require a result. A process without a goal or intention can’t be said to be a process.

                In your hypo, any reasonable jurist would construe the result not as information, but as a physical change in chelating the protist and then degrading. The fact that one of the steps or more of the steps is information used by humans does not mean the result is information used by humans. The result is non-obvious, new, and fully described in both claim forms.

                On the other hand, improving the accuracy of human stock trader transactions by improvements to a display of stock prices and bids is entirely an information result, and should not be eligible in any sane patent system.

                The location of fetal DNA in maternal plasma is an information result. Using entirely conventional tests with that information to produce more information for use by human beings does not change the fact that the result of the method is information.

                The location of the invention is critical and must be construed prior to patentability analysis, and the proper, fair way to do that is an adversarial process where papers can be filed, a record built, and the technology explored. This means an expansion of Markman which is long overdue.

                1. Martin @ 16.1.1.1.1.2.1

                  improving the accuracy of human stock trader transactions by improvements to a display of stock prices and bids is entirely an information result, and should not be eligible in any sane patent system.

                  I’ll challenge you on that.

                  From 2007 to 2014, I was in-house counsel at Cantor Fitzgerald, the bond trading firm that lost 650 people at the World Trade Center on 9/11. We had a lot of patents on our electronic trading systems, many (not all) of which ended up with information on a screen to allow a trader to make a better decision. (for the record, Bloomberg, the NYSE, NASDAQ, also have lots of similar patents.)

                  They require engineering talent to develop, capital to implement and deploy, and gave us a competitive advantage. (Our CEO’s book written after 9/11 noted that “the patents” were the first thing that came to his mind after seeing the buildings collapse, as a basis to rebuild the company). That company literally burned to the ground, and stayed in business and rebuilt because of its patents.

                  We had a couple of litigation matters, sometimes as plaintiff, sometimes as defendant. Trading Technologies, who won the case at the Federal Circuit last week, sued us on that exact patent. We sold the division before the end of the case so I don’t know how the case came out. But it sure seems like a good invention to me.

                  These “compute a result and display it on a screen to improve accuracy of a stock trader” inventions are really important in making the American financial system work. Nobody wins when a broker goofs and trades a couple hundred million dollars of the wrong stock.

                  Why is that patent any less deserving of patent protection than any other computer-implemented invention?

                  before answering, see my note replying to you at 11.2.5.1.2

                2. “On the other hand, improving the accuracy of human stock trader transactions by improvements to a display of stock prices and bids is entirely an information result, and should not be eligible in any sane patent system. ”

                  Why? What is insane about providing protection for an improved display?

                  Why don’t we want to promote progress in information displays?

                3. They require engineering talent

                  Bah – you are doing it wrong (leastwise according to the single Justice that Mr. Snyder appears to admire).

                  You should be going out to the local coffee bars around any campus and throw out a few pizzas, and your work will be done over the weekend.

                  (the -s a r ca s m- sign is being held up high…)

              1. Is it already covered under section 102 with its “printed matter” exception?

                As you’ve already admitted, the “printed matter exception” is a black box with at least as much vagueness as the oh-so-allegedly-confusing 101 jurisprudence the Supremes have handed out.

                It really takes the cake for you or anone else to be asserting what is or is not readily taken care of by the other statutes. Those other statutes were plainly not doing the job in the first place which is why subject matter eligibility became important.

                We can all see the game you’re playing. Stop it.

                1. You really want to play the Vinnie Barbarino “it’s a black box” game, when I presented to you – and invited your input – the Simple Set Theory explication?

                  That just doesn’t wash, Malcolm.

                  Your game playing is quite evident.

              2. Also, the so-called “printed matter doctrine” is all about subject matter eligibility. It’s just a (very poorly articulated) way of enforcing the judicial exceptions. Please read the Collins articles.

                If the point of this legislation is to statutorily rub out the judicial exceptions and replace it with this statutory language, why should we expect the “printed matter doctrine” to continue to exist? It’s completely at odds with the statute.

                1. The Collins paper on the Semiotic meaning of printed matter (and extended to computer models of reality) is actually ingenious, but too philosophically difficult to apply by everyday district judges and juries.

                  My proposal is a shortcut to a similar result. But of course the triadic nature of symbols is cr*p because you say so. Collins is decimated.

                2. It is not ingenious.

                  It is inappropriate and mishandled in the stretch to law.

                  It is CRP for the attempts to do so.

            3. Thanks Martin, for a useful and thoughtful effort to engage @ 16.1.1.1.1.

              I didn’t understand this at first. Now I do. It doesn’t work, but it captures a useful insight and heads a useful direction.

              See my replies at 11.2.5.1.2 and 16.1.1.1.1.2.1 (awaiting moderator at 7AM Friday) for my explanation for why your specific proposal doesn’t work, but how the IPO proposal translates your insight into something that does work.

        1. Good catch! on these two specific ones.

          You’ve pretty much put your foot in your mouth with every comment you posted on this subject, David. Maybe time to take a break and put down the kool-aid?

    2. David Boundy: — a process involving metabolism of 6-thoiguanine — eligible, because there’s never been a single molecule of 6-thioguanine in nature

      What? This is complete gibberish.

      Also, don’t forget “a process wherein a human somewhere within 10,000,00o miles takes a breath” — eligible because it requires human activity”

      Yes, these are the very deep deep thoughts that David Boundy feels compelled to defend.

      This stuff really isn’t that hard. It’s incredibly easy to write a magnificently silly revision to a statute that does nothing except wastes everybody’s time. But it takes a special kind of self-absorbed person to actually foist it on the world with a straight face. Underweiser and Sachs. The best and the brightest. LOL

    3. Here’s a new one. Just kidding. It’s not new. It’s been discussed endlessly here.

      “A method of monitoring [insert name of a newly discovered asteroid] with any human-developed technology.”

      This would — apparently — be eligible under this incredibly silly “revision” that will never, ever be accepted as law in anything remotely resembling its current form.

      But by all means let’s continue to pretend that Underweiser and Sachs have made a contribution here! Because they’re very serious people. They spent a lot of time on this! LOL

      1. Your asteroid hypothetical is unpatentable for obviousness under section 103, even if its eligible under 101. The same is true for most of your other hypotheticals I see on this page.

        101 is not the tool to weed out obvious inventions. It’s the tool to weed out ineligible subject matter, like works in the fine arts, literary works, basic unapplied science.

        1. Wait a minute. The asteroid is, ex hypothesi, a newly discovered asteroid. How can it be obvious to monitor an asteroid that no one knew about before the applicant divulged its existence?

          1. Observing asteroids by known technologies is known. On the hypothetical, let’s assume that the new asteroid has no remarkable properties relative to old asteroids, and doesn’t require unfamiliar technology — after all, MM proposes using any known technology.

            That’s the difference between anticipation and obviousness.

            A broad claim can be eligible while unpatentable.

            1. To my mind, the “any human developed technology” presents a problematic reach-through claim. If we limited it to a particular set of telescope technologies, however, I still do not see why the claim is obvious.

              In order for the hypo to make sense, we have to imagine that there is value in monitoring this particular asteroid, in order that the claim have utility. Imagine, however, that I discover the asteroid, and I see that it is moving on a path where it could collide into a U.S. occupied moon base. The base has one missile capable of blasting the asteroid, but only one, so they do not want to use it too frivolously. They only want to shoot if the asteroid really will pose a danger. The sane thing, then, is to monitor it. In other words, it is useful to monitor it.

              So I claim, “a method of protecting U.S. base 1045, the method comprising monitoring the asteroid registered with the international space registry as #4598320 by telescopic observation.”

              I do not see why this is not patentable. It is useful, novel, and non-obvious (as noted above, how can it be obvious to monitor an object hitherto unknown?). Nor do I see a reason why we should not want the laws to permit its patentability. I dare say the occupants of that moon base want someone to feel properly incentivized to find this info within a time frame during which it might still be of practical use to them.

              1. You’ve changed the hypothetical, by adding a number of additional facts. Different facts can well reach different results.

                But MM’s original hypothetical — where the only fact on the table is that the asteroid is newly discovered, and any known means of observation, without your additional facts — that’s obvious.

                1. David Boundy, scolding: You’ve changed the hypothetical, by adding a number of additional facts.

                  David Boundy, immediately upthread: On the hypothetical, let’s assume that the new asteroid has no remarkable properties relative to old asteroids

                  C’mon, people.

                2. You’ve changed the hypothetical, by adding a number of additional facts. Different facts can well reach different results.

                  If you say so. It seems to me that there are only two possibilities here: (1) monitoring the asteroid has utility; or (2) monitoring the asteroid does not have utility.

                  Scenario #2 is too dull to be worth discussing, because it clearly fails §101 if it lacks utility. The only way its §101 eligibility becomes a point interesting enough to discuss is if we assume utility. If so, however, then there will have to be—you know—an actual utility. So I made one up.

                  I do not think that any of the particulars I added actually change the analysis relative to any other scenario in which there is a utility. If you think my “moon base” facts change the hypo in a material fashion, I invite you to come up with any other facts that would support a finding of substantial utility, but in which the claim nevertheless ends up being obvious, as you contend.

                  I do not think it can be done. If there is a substantial utility to monitoring the asteroid, then the monitoring of the hitherto unknown asteroid will necessarily be nonobvious.

                3. Greg, replying to your 16.3.1.1.1.1.1.2 —

                  You demonstrate the problem that the IPO proposal §101(c) is trying to cure — mish-mashing the various statutory requirements. Subject matter, utility, novelty, obviousness, and definiteness are distinct. With very limited exceptions, the factors that matter to one are irrelevant to the other.

                  Mish-mashing them together leads to madness. The system works as well as our ability to accurately apply predictable law. Mixing the requirements leads to inaccuracy and unpredictability. That’s the thrust of IPO’s proposed § 101(b) and § 101(c).

                  On the other hand, existence of and careful application of distinct statutory requirements is the solution to the issues raised by MM, 6, and Ned Heller.

                  The utility of watching a given asteroid is entirely irrelevant to whether that watching is eligible subject matter.

                  So you are certainly correct, that utility is an absolute requirement for the “watching new asteroid” claim, just as for any other claim. But that’s unenlightening to the question we’re discussing, subject matter eligibility.

              2. Greg: To my mind, the “any human developed technology” presents a problematic reach-through claim.

                What’s that supposed to mean?

                I agree that the claim is problematic. But in the cwazy world of Underweiser & Sachs it’s unquestionably non-obvious and eligible. It sails right through.

                In the world we actually live in, the claim is plainly ineligible because it has the effect of taking a product of nature out of the public domain for 20 years.

                And that ineligibility is a great result. It’s the result that everybody except for a tiny tiny handful of rich patent attorneys wants.

                And this by the way is hilarious:

                I dare say the occupants of that moon base want someone to feel properly incentivized to find this info within a time frame during which it might still be of practical use to them.

                Seriously? I guess by the same token I want some patent troll to be “properly incentivized” to file a patent on protecting my house from being broken into by his brother. C’mon people. Try harder.

              3. I gather that not everyone knows what a “reach through” claim is. This is a claim where you claim anything that achieves a given result, even technologies that have not yet been invented. In other words, you try to “reach through” your claim into the future, to claim technologies that nobody (including you) has yet invented. This sort of claim is usually noncompliant with the written description requirement (think of Morse‘s “galvanic current to transmit messages at a distance” claim).

          2. How can it be obvious to monitor an asteroid that no one knew about before the applicant divulged its existence?

            It’s not obvious and David Boundy is just pulling stuff out of his behind because his shallow views on 101 are getting hammered here.

        2. David how do you find exclusions for fine arts, literary works, and basic unapplied (?) science in the statute?

          Where do you find support for “Fetal DNA can be found in maternal plasma” as patentable subject matter? A process of steps to look at maternal plasma with conventional technology?

          That’s like saying “an Asteroid can be found behind the moon”. Can you patent that?

          Greg, if one says There is Gold in Them Thar Hills, you can’t patent it because someone else may own those hills. Its new, non-obvious, and useful information….

          1. [I]f one says There is Gold in Them Thar Hills, you can’t patent it because someone else may own those hills.

            The asserted conclusion does not appear to me to follow from the premise. Intellectual property law is all about telling people what they may or may not do with their property. You may own that printing press, but you cannot use it to print Horton Hears a Who because Dr. Seuss owns the copyright. You may own that stack of sheet metal and bolts, but you may not assemble it into a cotton gin, because Eli Whitney owns the patent on that particular arrangement of part.

            So too, you may own them thar hills, but you cannot extract the gold (for 20 years from filing) because someone else owns the patent on gold-mining in that precise range of GPS coordinates.

          2. Fine arts, literary works are excluded because not in the categories “process, machine, manufacture, or composition of matter, or any useful improvement thereto”

            “unapplied science” is excluded under the “law of nature” judicial exception.

            On the fetal DNA, read my post 16 more closely. I do not believe that “fetal DNA in maternal plasma” is eligible. Pure “natural phenomena” are in an exception. I don’t know why you’d think I think otherwise — are you reading carefully?

            However, a process that measures fetal DNA in maternal plasma to do something useful with that measurement might well be.

    4. David, there is a difference between a law of nature that has abstract utility and a law of nature that has specific utility. The law of nature discovered in Mayo is of the kind that had specific utility.

      Perhaps we ought to consider allowing the patenting of laws of nature that have specific utility provided that the claims otherwise fall within the four classes.

      1. Perhaps we ought to consider allowing the patenting of laws of nature that have specific utility provided that the claims otherwise fall within the four classes.

        The specificity of the protected abstraction (whether you call it a “law of nature” or a “correlation” or a “fact”) is irrelevant. What matters for the patent system (the “problem”, if you will) is that the abstraction is being protected by a patent claim.

        Note that a novel non-obvious structure — claimed as such in objective structural terms distinguishing it from the prior art — is inherently not an abstraction. That’s why properly claimed manufactures and compositions rarely raise eligibility issues and it’s also why, in many of those cases, 102/103/112 actually can do most of the lifting.

        Process claims, on the other hand, present a whole gamut of unique eligibility issues. We’ve discussed all of them here many times.

        Again, the failure of these “revisionists” to acknowledge this basic stuff should be deeply offensive to everyone.

        1. MM, I agree that the Mayo claims ended in an abstraction. What I was thinking about is allowing such claims that went on and required the doctor to actually administer the increased or decreased dosage.

          Similarly, in Funk Bros., the packaged bacteria would be patentable because novelty of the mutually inhibiting nature of the bacteria could not be ignored because such as a law of nature.

          1. Mayo was decided on the “natural laws or natural phenomena” prong, not the “abstract idea” prong. Not helpful to talk about something other than the case as decided.

            The claim recited “administering” a drug, 6-thiguanine (a synthetic compound that never existed in nature), and “determining the level” metabolites. All necessarily man-made.

            IPO is trying to address the case as decided. Invalid on other grounds? That’s not relevant today.

            1. David, true. But both Mayo and Funk Bros. required an “inventive” application. There is a good argument that simply requiring the doctors to do what the correlation specifies is not inventive if the correlation cannot be used for novelty purposes. That is why I suggested what I did. Effectively, a modification of the sort would overrule Funk Brothers.

            2. David Boundy: Mayo was decided on the “natural laws or natural phenomena” prong, not the “abstract idea” prong.

              In fact it was “a correlation” that was at issue and, last time I checked, the term “correlation” appears in the case more often than “natural law”.

              Correlations are, of course, abstractions. So are “laws”, natural or otherwise.

              The claim recited “administering” a drug, 6-thiguanine (a synthetic compound that never existed in nature), and “determining the level” metabolites. All necessarily man-made.

              Those steps were old in the art. The claim also recited one last step: thinking about the “meaning” of the gathered data. That’s an abstraction.

              But David Boundy apparently lacks the intel lectual h0nesty which would allow these basic irrefutable facts about the case to pass from his double-talking l ips.

              IPO is trying to address the case as decided. Invalid on other grounds? That’s not relevant today.

              LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

              Try to believe it, folks.

    5. “discoveries of pure science remain ineligible”

      Discoveries are patentable (“whoever invents or discovers”).

      There is nothing to discover but laws of nature and natural phenomena.

      So, how can discoveries be patentable if discoveries of natural laws and phenomena are not eligible? Of course they are eligible.

      1. Be careful not to misquote by underquoting —

        Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof

        Natural laws, standing alone —
        — are not “useful” until applied
        — are not in the categories.

        That’s why you won’t find any patents on laws of basic science, only technological applications.

        1. 1. A method for determining the energy equivalent of a object, the method comprising:
          determining the mass of the object;
          multiplying the determined mass by the square of the speed of light, thereby determining the energy equivalent of the object.

          A discovered so called “law of nature” embodied in a useful process.

          We don’t find any patents on laws of basic science because of the nonsense we let the courts and the Office get away with.

          1. Les, I can see it all now: Einstein patents the method and sues every professor who does the calculation, receiving damages and enjoining further professorial work. My how that would advance science.

            1. Yeah, Einstein gets a small portion of each research grant in that area for 17 years. Ya can’t rely on the Nobel Committee to get to you before you die so…. AND, seeing that, the next generation of physicists is incentivized to work an extra hour every night to figure out the Unified Field Theory so they can collect a royalty on that and as a result, I get that jet back I was promised, anti-gavity engines and Warp Drive.

              So yeah, it DOES advance science.

              If it works for medicine, why wouldn’t it work for Physics?

                1. How can they be in widespread use while unknown?

                  Draft a claim to a process, manufacture, composition of matter or machine for discussion purposes.

          1. Ned, they are newly known to humanity. if new does not mean newly known to humanity, then we dare not issue a patent to anything; because, given the vast size and age of the multi-verse, surely everything that can exist does or has existed somewhere at sometime in the multi-verse.

            Leave the Dark side Ned. Resistance is Futile.

                1. Les, it has to be new. But you are right that the Supreme Court commented favorably on the Goodyear invention of vulcanized India rubber where the good Mr. Goodyear accidentally dropped a piece of rubber on a frying pan and saw what happened.

  11. Just as a reminder to everyone, some wise and thoughtful people who aren’t clearly self-dealing have spent a lot of time thinking carefully about these issues. And they wrote stuff about it!

    Here’s two essential articles:

    The Knowledge/Embodiment Dichotomy (Collins, 2014)
    link to papers.ssrn.com

    Prometheus Laboratories, Mental Steps, and Printed Matter (Collins, 2012)
    link to papers.ssrn.com

    I don’t agree with every conclusion in either article but the reasoning and understanding evinced therein is light years beyond the snicker-bar-in-the-swimming-pool silliness brought to us by the IPO.

  12. I would essentially enact Hotel Security – if a claim includes both eligible and ineligible subject matter, invention must be in the eligible.

    1. This is absolutely one of the basic principles.

      You can not have a working subject matter eligibility test that does not take the prior art into account. Somehow, somewhere, there has to be a recognition of the relationship of the claim to the prior art or else the test becomes a trivial scrivener’s pursuit.

      You can approach the problem from different angles using different words (e.g., “ignoring” abstract or ineligible or non-structural claim elements when performing 102/103) but it’s the same issue.

      Truly bizarre that some people can’t just accept this. But we know what their game is. That’s really unfortunate for them but, even worse, it’s a waste of everyone else’s time.

  13. I would like to remind Dennis and other readers that the people who wrote this “revision” aren’t interested in “fixing” anything. All they want to do is reverse Mayo, Alice and Bilski and take us back to State Street. They are also shallow thinkers. And they are self-dealers. What matters is lining their pocketbooks and nothing else. As patent attorneys, we should all be deeply embarassed by this incredibly feeble “effort”.

    DC: the provision likely goes too far.

    It’s absurd on its face for all the reasons I’ve previously explained. Why beat around the bush here? According to this “revision”, a process of thinking about a non-obvious correlation after you eat an ice cream cone is eligible. It’s that bad. These dim-witted apologetics we’ve heard about how the printed matter doctrine and utility are going to do all the heavy lifting are offensive (or should be) to anybody who’s been paying attention.

    I would suggest that the proposal take at least two further steps: (1) include a third exception to eligibility derived from the printed matter doctrine;
    and (2) include a new 102(d) that expressly defines the scope of the utility doctrine so that it becomes clear what work will be going on there.

    LOL Those “further steps” are just about the whole ball of wax, aren’t they, Dennis? You think Sachs and Underweiser is going to get to work on this? LOLOLOLOLOLOLOLOLOLOL Dream on. Have you ever actually tried to talk with either of these people about subject matter eligibility, Dennis? Did you get anywhere?

    It should be clear from the statute that ordinary works of authorship, for instance, are not patent eligible.

    Ya think? It should also be clear that you can’t patent a method of using an old data gathering step to gather data followed by a step of thinking and/or communicating and/or storing a non-obvious idea about the data.

    It should be clear from the statute that methods of layering abstract meanings over data or prior art objects are ineligible.

    It should clear from the statute that the creation of quasi-legal or legal relationships between people or things is ineligible.

    It should be clear from the statute that information isn’t eligible for patenting, regardless of whether it is displayed, stored or otherwised communicated using prior art technology. Labeling data with some abstract descriptor of content is not “technology” and a claim whose novelty depends on such a distinction is ineligible.

    It should be clear from the statute that new functionality is ineligible for patenting. You can claim a new machine by distinguishing it structurally, in objective structural terms, from prior art machines. But you can’t just recite, e.g., the new species of logic that it’s carrying out according to your instructions.

    It should be clear from the statute that applying math to data to generate numbers, including prices is ineligible.

    It should be clear from the statute that logic is ineligible for patenting.

    But again, the revisionists have no interest in any of this. If they had their way, you could re-patent your computer every time you updated your database with some non-obvious information.

    1. MM, I absolutely agree – particularly about the point of restoring the universally disapproved State Street Bank case. It elevates nominalism and places it on a high pedestal for all of us to adore.

      The effort by IBM and others is transparent. They are the business of developing new business methods that are implemented with software, discovering new human DNA uses in claiming the DNA, discovering laws of nature and claiming in conjunction with conventional and necessary processes. They all want to protect their business. What they are doing here is understandably selfish. They have a right to be selfish, but they should be honest about what they are about.

      The courts in contrast are more concerned about the bigger picture and whether allowing patents on things like business methods advanced the useful arts. Clearly Supreme Court in Bilski was not so convinced.

  14. Question for Dennis or others:

    Why are the following components of the proposed 101 language necessary in view of 112, 102, 103?

    “exists in nature independently of and prior to any human activity, or exists solely in the human mind.”

    If the subject matter exists in nature or anywhere prior to filing of the application, then patenting can be precluded under 102, or this prior activity can be used in 103 analysis. Also, here it is likely that the inventors did not invent the subject matter being claimed.

    If the subject matter exists solely in the human mind, then wouldn’t it be indefinite under 112? Also, it is likely that the invention will not be patentable in view of 102 or 103. E.g., doing something everyone already does in their mind, but do it on a general-purpose computer – cite to the prior commonplace practice of the mental process, cite to the general-purpose computer, and reject properly under 103.

    1. If the subject matter exists in nature or anywhere prior to filing of the application, then patenting can be precluded under 102, or this prior activity can be used in 103 analysis. Also, here it is likely that the inventors did not invent the subject matter being claimed.

      No way. Section 102 gives five ways that something can be in the public domain (i.e., not novel): “patented,” “described in a printed publication,” “in public use,” “on sale,” or “otherwise available to the public.”

      Consider a compound produced in the ordinary course of metabolism of a hitherto undiscovered species of Chilean fish. Is the compound “patented”? No. Is it “described in a printed publication”? No. Is it “on sale”? No.

      What about “in public use,” or “otherwise available to the public”? The statute never defines “public,” so the word takes its common-law sense. The opposite of “public” use is “secret” use. Metallizing Engineering Co. v. Kenyon Bearing & AP Co., 153 F.2d 516, 518 (2d. Cir. 1946) (L. Hand, J.). This Chilean fishes internal metabolism is about as “secret” as it gets, given that no human being even knows of the fish’s existence in my hypo. Therefore, the fish’s metabolites cannot be “in public use” or “available to the public.”

      In other words, the occult natural compound in this hypo is quite novel under §102. Because it is not part of the state of the art under §102, it is not citable under §103.

    2. If the subject matter exists solely in the human mind, then wouldn’t it be indefinite under 112?

      What’s the argument, o super serious one?

      Also, it is likely that the invention will not be patentable in view of 102 or 103.

      Really? Why?

      Please try a little harder. I suspect the revisionists who wrote this cr@p probably made it only as far as you did, which is appalling.

    3. You (and the IPO) are overlooking that discoveries are patent eligible and that there is nothing to “discover” but things that exist in nature.

    4. The word you’re missing is “if and only if

      You understand correctly that “exists in nature independently of and prior to any human activity” would be barred by 102. You know that, I know that, everyone in the patent system knows that. There are only nine people that don’t. But their word is Supreme.

      The IPO proposal addresses the error in Mayo via the words “only if” 6-thioguanine does not exist in nature. Measuring its levels does not occur in nature. The “only if” part makes clear that the Mayo facts are out of the “law of nature” exception.

      For “exists solely in the human mind” why would it be indefinite? Look at Flook’s claim, or Benson’s claim 13, both perfectly definite. Benson’s claims were both most likely novel. But Flook’s claim, and Benson’s 13 both capable of existing solely in the human mind. And (at least to my way of thinking) both should be ineligible.

      1. David Boundy: The IPO proposal addresses the error in Mayo

        Can you use your incredible lawyer skills to articulate this alleged error, David? Go ahead and surprise everybody.

        When you discuss this “error”, please keep in mind that (1) measuring thioguanine levels was admittedly old in the art and (2) Prometheus admitted that their claim was infringed merely by looking at data which was obtained by the old method and thinking an allegedly new thought about the meaning of the data.

        So go ahead and tell everybody what the Supreme Court’s “error” was.

        Otherwise it sounds like you’re just another whining crybaby hacking away.

        Tell everyone what the “error” is.

        Also what do you think is the point of spending years on a revision that has zero chance of going anywhere? What’s that all about? Because it has zero chance. It will literally take me less than an hour to collect 1000 signatures from scientists vehemently rejecting this absurd “revision.” Those would be the same scientists who understand what Mayo was about and totally support the decision.

        Grow up already.

        1. It may well be that Prometheus’ claim is obvious.

          However, that’s irrelevant to whether the claim fails as a “law of nature.” That’s how the case was decided, and that’s all that IPO addresses.

          6-thioguanine is a manmade compound, unstable and rapidly decaying at room temperature. Not a single molecule of the stuff has ever existed in “nature.” That’s the fact pattern that IPO is trying to address.

          1. But Malcolm want YOU to grow up David, and he will keep on slinging his p00p1e around until you recant anything and everything that does not match Malcolm’s feelings.

            1. he will keep asking you to accurately describe the facts in the case and the reasoning

              Fixed.

              If you can’t bring yourself to discuss Prometheus like an adult, then you deserve the scorn heaped upon you. This discussion predates Prometheus. David knows. Sachs knows it.

              They lost and they lost bigtime for very predictable reasons. And they’ve done nothing but whine and cry since then, like the little rich entitled babies that they are. It’s p a th e ti c. But this is true of a certain class of patent attorneys who care about their bottom line and nothing else.

              This proposed IPO “revision” is a non-starter. It’s a j0 ke. And it was written by people who have demonstrated that they have zero NADA zilch0 interest in discussing the issues like adults. All they want to do is kick up dust so they can turn the clock back to State Street and start raking in the easy $ again. That’s all they care about.

              1. If you can’t bring yourself to discuss Prometheus like an adult, then you deserve the scorn heaped upon you.

                Look in the mirror when you say that…

                You who LEAST resembles an adult discussing anything

          2. Where’s the “error” in the case, David?

            Stop kicking up dust and answer the question.

            Prometheus wanted to claim an old data gathering step followed by a step of thinking a “new thought” about what the old meant. The “new thought” related to an abstraction that the Supreme Court referred to repeatedly as “a correlation” but it could also have been “a law of nature.”

            The claim was ineligible. Where’s the “error”, David Boundy?

            You said there was an “error.” Tell everyone what the “error” is, David Boundy.

            that’s all that IPO addresses.

            The IPO doesn’t “address” anything because the IPO doesn’t have a clue or the IPO is dissembling. The same applies to you, David.

            Please grow up and stop playing games. We’re not as ign 0rant as you and Sachs wish we were. We’re onto you and we’ve been onto you for a long, long time.

          3. David Boundy: It may well be that Prometheus’ claim is obvious.

            Of course it’s obvious, if not anticipated. It takes two seconds to figure out why that’s the case. Read the claim, David. Even you can do it.

            But that didn’t stop hypocrites like “expert” Ph.D. Kevin Noonan or the PTO from arguing that “103 will take care of this stuff.’ That argument was made — try to believe it — after the PTO granted the claim! Regardless, the fact is that 103 does not and can not fix the problem of using the patent system to protect non-obvious information even if the PTO did develop some modest competence at applying 103 to “non-obvious facts” or “non-obvious logic” (which it will never do).

    5. I invented that, in addition to what Greg says I would add that the problem patenting products of nature generally arises when the patent applicant himself tells everyone that he had discovered a utility for a previously unknown product of nature, and then claims the product of nature. If the only consideration were novelty, then the applicant would get the patent because the product of nature itself was unknown prior to the applicant’s discovery. But once it is held that a product of nature itself cannot be patented because it is in the public domain, albeit unknown, simply finding a useful application for the product of nature does not justify claiming a product of nature itself.

    6. I think the responses here to my questions are great because they showcase the wide range of opinions on the issues, as well as highlighting issues with the drafting of 102 under the AIA. I do think that mental processes are precluded by 112 (poorly articulated by me above) for many reasons – how about enablement?

      1. I do think that mental processes are precluded by 112 (poorly articulated by me above) for many reasons – how about enablement?

        Well, most of your mental capacity appears to be non-enabled so you may have a point. Instead of digging further with the silliness, how about you try to answer your own questions? Tell us why thinking about a non-obvious fact disclosed in a publication is “not enabled”. I’m real curious about that analysis.

        the responses here to my questions are great

        LOL Actually, David’s response wasn’t “great” at all and the issues have been discussed in great detail and at a much higher level here (and elsewhere) for years, without your input. That’s why Underweiser and Sachs and the IPO come off looking like disengenuous cl 0wns.

        poorly articulated

        Instead of patting yourself on the back, maybe you can try to actually articulate some of your deep thoughts. Try really really really hard. You can start with answering the questions I asked you upthread.

        1. Wow MM – I thought we were talking about patent law on this blog. Those are some pretty offensive comments. Once again I ask that you refrain from personal attacks. If you want to get continue with these personal attacks then at least reveal your identity. Otherwise, stay on topic.

          1. I thought we were talking about patent law

            I am talking about patent law. I’ve commented quite a bit and I’ve taken the time to articulate my positions carefully. I’ve been thinking and writing and reading about this subject pretty much constantly for about a decade now.

            If you want to be taken seriously, then write out your 102/103/112 arguments rather than simply stating or suggesting that “they work”. The fact is that in many practical instances those sections will not “take care of” the problematic claims we are discussing.

            A helpful hint: since I’ve been earnestly debating this subject for as long as anybody on earth, I’m not likely to rely on hypotheticals that are easily swatted away.

            These issues are real. You can’t sweep them under the rug with some blanket proposition that “the other statutes” will take care of everything. It just doesn’t work that way. The experiment was attempted and the result was a disaster.

            1. Relying on your feelings is really not the answer either, Malcolm.

              Also, don’t confuse the length of time that you have been “arguing” with ANY notion of quality of arguments.

              That would be an egregious error for you.

  15. Prof Crouch, all three of your modifications speak directly to the problem(s) of information inventions.

    (1) include a third exception to eligibility derived from the printed matter doctrine There is no statutory basis for the printed matter doctrine, and in light of technological changes since the doctrine was developed, it’s really an “informational doctrine” focused on the form of utility of the information in question. If the information has a structural or utility value rather than a pure content value, its gets a pass. How would you phrase your proposed exception?

    (2) include a new 102(d) that expressly defines the scope of the utility doctrine How would you phrase this?

    It should be clear from the statute that ordinary works of authorship, for instance, are not patent eligible. Software is “written” and widely agreed as works of authorship. Do you wish to exclude software per se? I can see software as a machine component, but only when the processed results of instructions are consumed by a machine. How do you handle “do it on a computer” claims where there is little or no inventive contribution involved because both the act being computerized and the computing technology are old?

    If you say Section 103, how do you determine which field of art is the proper one for PHOSITA? The act being computerized, or the computer technology?

    1. >> If the information has a structural or utility value rather than a pure content value, its gets a pass.
      >>I can see software as a machine component, but only when the processed results of instructions are consumed by a machine.

      There is a certain part of me that enjoys reading the witch hunters ideas for coming up with new witch tests. They generate these abstractions in their head and then say, well, it is OK as long as it is not this abstraction in my head. Now let me tell you the test to tell if it is the abstraction in my head.

      Just right out of the witch trials of medieval times.

    2. (1) Agree, “printed matter” exception to § 101 needs to be handled more delicately. (Martin, you’re correct, it’s non-statutory, jsut the same as “abstract idea” “law of nature” etc.) It’s unhelpful to defocus to an “informational doctrine,” rather than strictly “printed matter” — see doscussion in In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994).

      (2) No change to “utility” is intended, so the IPO proposal (wisely, in my view) leaves the language alone. It ain’t broke (so far as I know), so don’t fix it. (And if there is a problem, the people that would have to be on a “utility” task force are different than the people that were on the “subject matter” task force.)

      (3) That’s what the categories (“process, machine, manufacture, or composition of matter, or any useful improvement thereto”) are for–exclude innovations in the fine arts and so on.

      The way you “handle” your “no inventive contribution” situation is § 103. Very rarely is the “field” inquiry relevant to outcome, and when it is, the hypothetical POSITA has ordinary skill in both fields.

      1. Boundy: “printed matter” exception to § 101 needs to be handled more delicately.

        So what happened? Did Underweiser and Sachs just overlook this wee problem? LOL

        it’s non-statutory, jsut the same as “abstract idea” “law of nature” etc.)

        As I and many others have been saying for years. We’ve also noticed that the printed matter doctrine appears to be the kind of “judicial activism” that the maximalists have a fondness for. Any guesses as to why, David?

        No change to “utility” is intended, so the IPO proposal (wisely, in my view) leaves the language alone. It ain’t broke

        But it will break pretty much instantly when the weight of 500,000 junky claims is put on it. The reasons “utility” doesn’t appear broken to you is because, thanks to the increased focus on subject matter eligibility, there’s very little coherent case law on the topic.

        the categories (“process, machine, manufacture, or composition of matter, or any useful improvement thereto”) are for–exclude innovations in the fine arts

        What? Those categories don’t exclude “innovations in the fine arts”.

      2. [T]he categories (“process, machine, manufacture, or composition of matter, or any useful improvement thereto”) are… [to] exclude innovations in the fine arts…

        How so? A painting or a sculpture is a manufacture. A piano sonata is a process. It is not clear to me that the categories are any sort of obstacle to patenting advances in the fine arts.

        1. “Not clear to me” is not the definition of the law — it’s whether the legal boundary is clear to someone wearing a black robe. And that’s been around a long time. Off the top of my head, the only case I can think of is Judge Archer’s dissent in Alappat.

          1. DB: “Not clear to me” is not the definition of the law — it’s whether the legal boundary is clear to someone wearing a black robe.

            But isn’t this “what the judge says it is” business exactly what Underweiser and Sachs are railing against?

            The fact of the matter is that deciding when a claim is in the “fine” arts versus the “useful arts” is another subject matter eligibility decision. And, again, it is essential for that analysis that you understand the relationship of the claim to the prior art.

            1. MM @ 11.2.4.1.1 —

              No. The IPO proposal accepts the Constitutional allocation of authority to the judiciary to say what the law is. However, judges are not perfect, capable of erring. And when that happens, there are two ways to correct it — a judicial overruling, or a statute.

              You state that resolving “fine arts” vs “useful arts” requires comparison against the prior art. To me, that seems correct — evaluating the “fine” vs. “useful” arts against the categories requires that comparison.

              But the “law of nature,” “natural phenomena,” and “abstract idea” exceptions to the categories are different. For the exceptions, it’s purely a matter of claim construction, with no comparison against the prior art. At least that was true before Bilski. That’s the segregation of different statutory requirements that IPO is trying to restore.

              1. No. The IPO proposal accepts the Constitutional allocation of authority to the judiciary to say what the law is. However,

                David, you are running into the situation in which those with a particular anti-software (and anti-business method) agenda are TOO invested in their desired ends to unclench their eyes and see that the scoreboard is broken.

                They do not want to talk about that topic, and would rather say that the scoreboard is infallible.

                They would rather disdain and scorn their sworn roles as attorneys and place the Court above the Constitution because in this instance, the Ends they seek align with such a Court.

                The last thing that you will achieve is their inte11ectually honest appraisal of what the IPO is attempting to do with a return to what Congress actually did in 1952.

          2. [T]he definition of the law… [i]s whether the legal boundary is clear to someone wearing a black robe.

            Fine, but that is my point. Can you cite some black-robes who use the 101 categories to exclude fine arts? I cannot. When I go looking in the case law, I see paintings and books and suchlike excluded under 102 by invoking the printed matter doctrine. The only example I find of using the 101 categories to reach this result is Judge Archer’s Alappat dissent.

            When the only authority you can cite for a proposition is a dissent, you rather have to question whether that which you are asserting is really the law.

              1. Boundy: For the exceptions, it’s purely a matter of claim construction, with no comparison against the prior art.

                It’s absolutely false and nonsensical for the same reasons that it would make no sense to forbid such a comparison when it comes to determining if a claim impermissibly protects some species within the “fine arts”.

                At least that was true before Bilski.

                No. That’s wrong. That’s false. That’s made-up self serving ba l0ney. Please educate yourself.

                First, the so-called “printed matter doctrine” is a subject matter eligibility test and the doctrine absolutely takes the prior art into account. Second, you’re ignoring cases like In Re Grams (“[E]ach invention must be evaluated as claimed: yet semantogenic considerations preclude a determination based solely on words appearing in the claims.”) and In re Sarker (” If the [allegedly novel] steps of gathering and substituting values were alone sufficient, every mathematical equation, formula, or algorithm having any practical use would be per se subject to patenting as a “process” under § 101.”).

                The IPO proposal accepts the Constitutional allocation of authority to the judiciary to say what the law is. However, judges are not perfect, capable of erring.

                Seems to me the “imperfect” people here are you, Underweiser, Sachs, “anon” and NWPA. You guys have been wrong about all the important subject matter eligibility questions since pretty much forever. The “erring” is all yours, David. Why on earth should we listen to you about this subject? I cant recall you or Sachs or Noonan ever saying anything intelligent about it. All you guys have done for years is whine and whine and whine that your favorite patents aren’t getting granted in large enough numbers and therefore the world is going to stop turning. Meanwhile the grown up arts continue to progress and there’s been zilcho impact on any industry except for the patent tr0 lling “industry” and the junk patent prosecution “industry.”

                1. No. That’s wrong. That’s false. That’s made-up self serving ba l0ney. Please educate yourself.

                  More of the favorite meme of Malcolm: Accuse Others Of That Which Malcolm Does.

      3. David,

        In Re Lowry is just a restatement of the dead Alappat, or the Piano Roll Blues. “Lowry’s claims dictate how application programs manage information. Thus, Lowry’s claims define functional characteristics of the memory.In other words, new information in physically identical memory changes the function of the memory- i.e. new memory, just like new software changes a physically identical computer into a new machine. Or Not.

        The whole printed matter doctrine, even though not grounded in statue, can’t just be flitted away as not regarding some important relationship between information and a human mind.

        The printed matter cases “dealt with claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind.” In re Bernhart, 417 F.2d 1395, 1399, 163 USPQ 611, 615 (CCPA 1969). The printed matter cases have no factual relevance where “the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.”

        Since the doctrine already sees the human mind as the key boundary, and finds that processing by machine is something materially different, my proposed test for utility is a simple, logical, workable, compromise that is the natural extension of the doctrine in the Information Age.

        Nor can you flit away the core notion of the required utility in 101 because its not convenient to the patent maximalists to fix the nature of the utility of an invention prior to the 102/103/112 inquires.

        Every human consumer of information derives different utility, while every non-human user can be presumed to draw identical utility.

        That is a natural dividing line that should be the basis for an abstract result determination of method claims with no physical result in the world.

        And where in current procedure is “field” inquiry to be construed? It can’t be in a 103 inquiry because no PHOISTA, no 103.

        Markman should be expanded to construe the invention- which is the biggest problem with Alice; a totally limited, unstructured exploration/construction exercise.

        Tell me, how does “Process” limit fine arts? Technical diagrams? Training videos? No, they are limited only by custom and knowing ’em when they see ’em.

        1. Sorry, I don’t follow your reasoning at all. There are too many thoughts here, jumping between unrelated statutory provisions and principles, and I just don’t follow the chain of reasoning. If you want to try again, I’d be happy to read a rewrite. So far, you seem to be much more engaged intellectually than some of the others here, so I’ll just flag this, and invite you to try again.

          It seems you may have misunderstood something. I have no problem with a number of rules that operate adversely to patent owners, including the printed matter doctrine under § 101, the printed matter claim construction rule for §§ 102/103, utility, the various nonstatutory defenses, and others. I have no desire whatsoever to change them. Over the course of my career, I’ve done as much work for defendants as plaintiffs, and so I think I come at this from a pretty balanced background.

          It might help clarity if you don’t attribute to me anything I didn’t say.

          1. I have no problem with a number of rules that operate adversely to patent owners, including the printed matter doctrine under § 101,

            The so-called “printed matter doctrine” is a subject matter eligibility test and it requires consideration of the relationship of the claim to the prior art. If you “don’t have a problem” with the so-called “printed matter doctrine”, then its very difficult to understand what your “problem” is with Mayo.

              1. ayo is a “law of nature” subject matter case, not a “printed matter” case. The rational connection is not apparent.

                It’s not “apparent” to you, David, because you are in over your head and you don’t know what you’re talking about. Stop drinking Robert Sach’s v0 mit and you might start to see clearly.

                For cripessake even the CAFC understood that the claims at issue in Prometheus recited only old data-gathering steps followed by a mental step of thinking about the meaning of information. This inane focus on “law of nature” is a sideshow that the peddlers of misinformation use to shift focus away from the key holding in the case: some otherwise eligible but old subject matter in a claim will not suffice to per se rescue a claim from ineligibility when the only novel subject matter in a claim is ineligible. And that’s true whether you call that ineligible subject matter a “law of nature” (as the Supremes did) or a “correlation” (as the Supremes did more often) or any other judicial exception (as the Supremes also plainly understood).

                The “rational” connection between the holding in Mayo and the so-called “printed matter doctrine” is that both concern claims that recite ineligible subject matter, i.e., “information”, claimed in some prior art context (e.g., a book manufacture or a display or a doctor looking a patient’s blood). The so-called “doctrine” says “ignore the ineligible subject matter” (in which case if the remaining subject matter is old the claim is toast) and Mayo says “look at the stuff that isn’t ineligible and see if it adds sufficiently more” (and it doesn’t add sufficiently more — like some non-obvious step or structure, the claim is toast). It’s the same analysis, just different words. You parse out the non-physical/non-physically transformative from the physical/transformative and you look where the novelty resides. If it’s in the ether/abstract/”natural law” realm, then you’re in trouble.

                As you’ve already admitted, the courts have added some half-baked “judicial activism” in the case of the so-called “doctrine” (which is judge created in the first place) to create a lifeline for patentees (that’s why the maximalists never complain about the so-called “doctrine” — it’s not the kind of “activism” they like). Specifically, the courts added this “functionally related” business to the “doctrine” to rescue some claims that they think need to be rescued. But as you’ve already admitted, there’s no “there” there. “Functionally related” is meaningless, far more meaningless than “abstract”. And that’s why it’s unbelievable to hear the maximalists defend this cr@p “revision” to 101 by suggesting that the so-called “doctrine” will pick up the slack. It’s absurd.

                1. Correction of my typo : (that’s why the maximalists never complain about the so-called “doctrine” — it is the kind of “activism” they like)

                2. (that’s why the maximalists never complain about the so-called “doctrine” — it is the kind of “activism” they like)

                  Once again, you miss the point of the Simple Set theory explication – which eliminates your whining here….

          2. David,

            There are many moving parts to these discussions. I have no interest in mis-attribution or personal attacks, although messing with anon is good sport because he/she endlessly messes with me and others. I invite you to read two items which should give you some good background on where I am coming from. I am seeking a working, workable compromise that both sides of this debate could live with: MM’s position is that no information or logic should be eligible, IPO’s et al. is that virtually anything should be eligible.

             My comments to the USPTO

            and

             My paper on Information Inventions

            1. MM’s position is that no information or logic should be eligible

              Just to be clear: at least with respect to logic, I am open to the possibility of protecting computer logic with some kind of “patent-like” right. But I haven’t seen any proposal that strikes me as a remotely serious attempt to create a system that would accomplish the goal fairly and reasonably. Granted, I don’t scour the internet looking for such proposals so one might be out there.

              But what has happened in the US (and elsewhere) is that “new logic” was shoehorned without any thought into a patent system that was designed to evaluate, protect and promote completely different kinds of subject matter.

              1. Just to be clear…

                How is your copyright on logic coming along?

                What a schmuck.

                Also try to remember that software has more than one aspect, and the different IP laws protect different aspects.

                copyright: expression
                patent: utility

                It really is simple.

    3. Regarding software and copyright: I generally regard it as an oddity that software is protected by copyright. I don’t consider it a “normal” work of authorship because it is inherently a tool for operating a machine.

      1. I don’t consider [software] a “normal” work of authorship because it is inherently a tool for operating a machine.

        It’s inherently authored instructions for a machine that was built specifically to be instructed by such works of authorship.

        People don’t write “tools”. That’s silly and misleading and it assumes the conclusion you favor. People do write software.

        Whether or not instructions for an instructable computer are “normal” work of authorship is beside the point. The instructions are protected by copyright, expressly, according to statute.

      2. Put another way: the computer is the tool. It’s a tool for processing data according to instructions that are provided to it by people who write instructions.

  16. To start, things I like
    (a) Spelling out that “abstract idea” means “in the human mind,” with no effect in the physical world. This comes from In re Sarkar, 588 F.2d 1330 (CCPA 1978). Spell out that the “law of nature” and “natural phenomenon” exceptions mean “exists in nature independently of and prior to any human activity.” To answer Dennis’ concern, lots/i> of things exist without human intervention—after all, there was lots of stuff in the universe before we started altering the environment. A claim to “BRCA1 SEQ ID 1” is entirely the product of nature. A claim to “isolated BRCA1 SEQ ID 1” requires human intervention.
    (b) It (too tangentially for my taste, but the intent is there—see my concerns (c) and (d) below) forces the inquiry back onto the claims. The Supreme Court’s deprecation of “the draftsman’s art” is nonsense. The dismemberment of claims into individual words, and then saying that dismemberment is “as a whole,” is likewise nonsense. The mischief we see in
    Mayo, Myriad, and Alice is in large part because the Court cuts itself loose from the claims. This skeezy approach to claims is just as big a problem as the mish-mash of “subject matter” with concerns from other statutory sections, and I think IPO’s proposal is entirely correct in recognizing that bringing judicial attention back to claims is just as essential as bringing attention back to subject matter.
    There are a few things I don’t like—but it’s isolated wording choices, easily fixed within the overall structure IPO proposes.
    Most of my concerns arise under a basic principle of statutory construction—when a term means different things to the patent bar and to the Supreme Court, the Supreme Court wins. If there’s a term that we all know the meaning of—take for example, claim “as a whole,” “application of an abstract idea,” or “preemption,” and the like, but the Supreme Court also knows, and knows differently, the Supreme Court wins. For example this from United States v Texas, 507 U.S. 529 (1993):
    Just as longstanding is the principle that “[s]tatutes which invade the common law . . . are to be read with a presumption favoring the retention of long-established and familiar principles, except when a statutory purpose to the contrary is evident.” Isbrandtsen Co. v. Johnson, 343 U.S. 779, 783 (1952); Astoria Federal Savings & Loan Assn. v. Solimino, 501 U. S. 104, 108 (1991). In such cases, Congress does not write upon a clean slate. Astoria at 108. In order to abrogate a common-law principle, the statute must “speak directly” to the question addressed by the common law. Mobil Oil Corp. v. Higginbotham, 436 U.S. 618, 625 (1978); Milwaukee v. Illinois, 451 U. S. 304, 315 (1981).
    See also Exxon Shipping Co. v Baker, 554 U.S. 471, 489 (2008) (“In order to abrogate a common-law principle, the statute must speak directly to the question addressed by the common law.”)
    These terms have been construed in a way the patent bar does not like. That battle is lost. So it’s essential to avoid those terms, and find something different. Much as the 1952 Act did not try to fight the word “invention,” but displaced it with the word “obvious at the time the invention was made.”

    (c) I don’t like the phrase “as a whole.” It’s been construed and applied in Mayo and Alice to mean “disassemble the claim into individual words, pay attention to some words and not others, and ignore the interconnections.” After Mayo and Alice, that’s what the term “as a whole” means. If the term “as a whole” is embedded from common law into statute, then all the Supreme Court’s flawed reasoning comes with it. The term can’t be redefined (reliably) in legislative history. The Supreme Court wins, and their rule is “the statute must speak directly to the question.” If IPO doesn’t want to import the skeezy treatment of claims from Mayo and Alice, then it’s essential to use a phrase other than “as a whole.”

    (d) I don’t like the phrase “as understood by a person having ordinary skill in the art to which the claimed invention pertains.” I gather that IPO is trying to accomplish two things here—(i) push the focus back onto the claims (my point (b)) and (ii) shut down the dismissals at Rule 12 stage before the court learns what the invention is.

    Recommended resolution of (c) and (d). If IPO wants to reform the skeezy treatment of claims, then “speak directly” to that point, and don’t use the Supreme Court’s language. Use the term “claim construction.” Use language that implies “ordinary meaning” in district court, and “broadest reasonable interpretation” during ex parte prosecution. Under the goal that I gather IPO is after, subject matter is evaluated as a matter of claim construction, and any external knowledge is irrelevant. Invoking POSITA is an open invitation to the Supreme Court to bring back in the flawed Mayo/Alice reasoning. Invoking “claim construction” says exactly what we mean, and has no bad collateral side effects.

    (e) Is the “law of nature” language strong enough to embrace “isolating” (the fact pattern in Myriad). My concern arises under the United States v Texas principle discussed above.. The Supreme Court discussed “isolated” in Myriad–does this proposed statutory language address the Supreme Court directly enough? I don’t have the expertise to know, but I’d hate to have this statute enacted, and then when it gets to the Supreme Court, they hold to their precedent because the statute isn’t clear enough.

    (f) I think it’s a mistake to add the word “only” at the end of subsection (a). Surely we’d all agree that a number of nonstatutory grounds for denying a patent are useful and should remain in the statute? Obviousness-type double patenting, inequitable conduct, prosecution laches, disclaimer, and dedication to the public? IPO’s § 101(c) correctly states that the goal is to get the other statutory flies out of the subject matter eligibility soup. The word “only” in § 101(a) goes far beyond, and in my judgment, does much more harm than good.

    (g) The “printed matter” exception. I just yesterday realized this is another exception to subject matter. I think “printed matter” has to be added to the catalog of exceptions of § 101(b).

    1. And I disagree with Dennis. No change to “utility” is intended, so the IPO proposal (wisely, in my view) leaves the language alone. It ain’t broke (so far as I know), so let’s not fix it. (And if there is a problem, the people that would have to be on a “utility” task force are different than the people that were on the “subject matter” task force.)

    2. Well stated Mr. Bounty.

      How might you emphasize that Congress has already delineated exactly who gets to determine what “the invention” is (which of course is the applicant and 35 USC 112)…?

      As for the Court’s interference and “not using the Court’s words,” the suggestions here simply do not go far enough.

      Think 1952.

      Congress stripped the Court’s common law evolution tool for defining “invention,” but that did not stop the Court.

      There is one way that Congress can stop the Court (and I am not sure why you think it excessively difficult): jurisdiction stripping of the non-original jurisdiction of patent appeals from the Supreme Court and placing them in a new (untainted and non-brow beaten) Article III court to preserve the judicial review aspect of Marbury.

      Any other measure invites the same “scrivining” and undoing by the Supremes.

        1. Well David, maybe you want to flesh out that “real world implausibility” a little, as, after all, the Constitutional authority for jurisdiction stripping is no less real than any other constitutional grant of authority.

    3. If the term “as a whole” is embedded from common law into statute, then all the Supreme Court’s flawed reasoning comes with it.

      I had not considered this point before you made it, but this is a very good point. Perhaps instead the text should say “… (a) if and only if every element of the claimed invention exists in nature independently of and prior to any human activity, or exists solely in the human mind”?

      Use language that implies “ordinary meaning” in district court, and “broadest reasonable interpretation” during ex parte prosecution.

      I will probably get rotten fruit thrown at me for saying this, but as long as we are talking about statutory changes, I suggest amending Title 35 to require that “broadest reasonable construction” be the standard in both the PTO and district court. In other words, wherever there is an ambiguity in the text of the claim as it is interpreted in view of the specification, if there is one reading that is broader than the other, then the broader reading wins—regardless of what your hired expert says—unless the broader reading is foreclosed by an estoppel or disclaimer in the file wrapper.

      This would end any reason to fight about whether Philips or BRI applies in a given context. It would also favor the inventor (by giving her the full value of her claim) and the public domain (by making it easier—at least in some very few cases—to invalidate a claim). The only people it would not benefit are lawyers, because it would reduce the opportunities for expensive claim construction arguments, but we should not craft the laws for the maximum benefit of lawyers.

      Is the “law of nature” language strong enough to embrace “isolating” (the fact pattern in Myriad).

      Not really, but I am not sure that this is inadvertence. Maybe the IPO does not want to restore the eligibility of isolated biomolecules. I favor restoring the eligibility of isolate biomolecules, but even I can see that this is very controversial (it will never be hard for the ACLU to spin this as “they are patenting your DNA”). Maybe the IPO figured that it was worth reversing Mayo and Alice, but that to try for Myriad too would be an overreach that could damage the whole effort?

      I think it’s a mistake to add the word “only” at the end of subsection (a). Surely we’d all agree that a number of nonstatutory grounds for denying a patent are useful and should remain in the statute?

      I take your point, but I do not think that you will have made the statute sufficiently clear enough to achieve its desired end without “only.” If we are concerned about ODP and the like (and I agree with you that one should be), then we really just need to revise further to put ODP into the statute (presumably in §103, not §101).

      1. You raised this yesterday. I challenged you on it, you said something like “It doesn’t sound so complex to me.” OK, smarty pants, try drafting language for obviousness-type double patenting.

        ABA’s, AIPLA’s, and IPO’s task forces on subject matter are volunteers. It’s taken over two years, hundreds of lawyer-hours, to get to these 300 words. Still in the future is getting agreement between IPO, ABA, AIPLA, BIO, PhRMA, IEEE to get this to Congress…

        Obviousness-type double patenting ain’t broke, at least not badly enough for it to be remotely plausible to get volunteers to commit the amount of time needed to address something as complex and non-priority, let alone all the others.

        So leave it alone.

        1. Three responses:

          (1) ODP is not as broke as §101, I agree. It is breaking in front of our eyes, however. The exceptions to the “only the claims, not the spec” rule in ODP keep multiplying every year. Grounding ODP in the statute would serve a useful purpose of stopping the drift.

          (2) If one leaves out “only,” then the Court will be in a much better position to say “well, Congress has given us some changes, and we intend to implement them, but we have always felt free to add exceptions to the text in the past, and we will continue to do so as we deem necessary.” The only way (no pun intended) to cut them off from that expedient is to specify that only the considerations in the statute are permissible considerations when analyzing eligibility.

          (3) I take your point about volunteer lawyer hours. Still and all, for the reasons given above, I do not see that the proposed effort that minimizes volunteer hours will work. If the IPO needs someone to pull the oar for the ODP statutory revision, I will cheerfully agree to do it, and I know others who will also help. Let them contact me if they want the help on that point.

          1. Incidentally, as I see it, the only three things that one would need to add to the statute would be ODP, prosecution laches, and improper Markush claiming. The statutory text says “shall be entitled to a patent… subject only to the exceptions… .” ODP, prosecution laches, and improper Markush claims are grounds of rejection, which could affect ones ability to obtain a patent.

            Disclaimer, inequitable conduct, dedication to the public, and suchlike do not affect one’s ability to obtain a patent. These affect one’s ability to enforce a patent against a given act of alleged infringement. Therefore, there is no reason why the proposed amended §101 should be read to affect disclaimer, inequitable conduct, etc. Given, as you have already noted, that Congress does not write on a blank slate, the ordinary canons of statutory construction should not allow this amendment to pose a threat to common-law doctrines that speak to enforceability instead of patentability per se.

          2. Replying to 10.3:

            I do not think that you will have made the statute sufficiently clear enough to achieve its desired end without “only” [in § 101(a)].

            That’s why IPO proposal in § 101(b) uses “if and only if” to specify that this catalog of exceptions is exhaustive. The “only” to be added to § 101(a) was probably intended to be redundant with the “only if” in § 101(b), but its scope extends beyond subject matter.

            1. I have mulled this over, and I think you have the right of it. Better to drop the “only” from §101(a), rely on the “if and only if” of §102(b), and leave the work of codifying ODP for another day (if at all). Thanks for explaining it to me.

        2. David, DP and ODP:

          “Claimed subject matter that is the same or substantially the same as a subject matter claimed in a second application and which is claimed prior to it being claimed in the second application shall constitute prior art to such claims in such second application.”

          If the first filer is a pirate, the rightful inventor should be substituted per a derivation proceeding.

          1. So you would have ODP only work as a bar to the second-in-time claims? That is not how it works right now. At present, if the two sets of claims are co-pending, either may be rejected over the other. Is there a reason you want to change it in this manner?

            1. Greg, in a first-to-invent world typically the first-to-file would get the patent. But there are circumstances where the two applications are not prior art to each other, such as if the same applicant is the applicant in both applications and they have a common priority date. Thus, the first application to claim the subject matter gets the patent, which is a simple rule.

              Employing such a simple rule, all the patent office would have to do is keep track of applications and patents with the same inventors or common assignees or joint R&D projects. Double patenting should be easy to spot, and easy to deal with. The second-to-file claims are simply not patentable. Terminal disclaimers would not be required.

        3. David, “ABA’s, AIPLA’s, and IPO’s task forces on subject matter are volunteers. It’s taken over two years, hundreds of lawyer-hours, to get to these 300 words. Still in the future is getting agreement between IPO, ABA, AIPLA, BIO, PhRMA, IEEE to get this to Congress…”

          I am a member of the AIPLA patent law committee. I am surprised this draft was never given the committee for its consideration. By handpicking the members of the “team,” the AIPLA was guaranteed not to get any “divergent views” from the apparently mainstream view that State Street Bank and Judge Rich were right all along.

          This is the same sort of sH… t that got us the AIA. None of us in the regular committees ever got a chance to comment at all.

          It is truly time for the likes of the AIPLA to stop cutting its rank and file out. That is why its reputation, at least to me and to many others, is in the tank. It seems to be controlled lock stock and barrel by a few big interests while telling the courts that it represent all patent attorneys.

          1. This is IPO’s proposal, not AIPLA’s. I know AIPLA has a task force, but I know no more than that. How they get their volunteers and how their work product will be vetted up the chain I don’t know. Raise the issue there.

    4. David, the central problem with the IPO approach is that it fails to recognize that claims can include both eligible and ineligible subject matter. In such a case the invention must be in the eligible subject matter – it must be new or improved, and this could include being modified functionally by ineligible subject matter such as we find in the printed matter doctrine.

      This is why claims that have new and nonobvious business methods are not suddenly transformed into something eligible simply by asking that the business method be conducted on a computer. The invention is not in the computer, but in the business method.

      Likewise, when claims include a law of nature, the invention has to be in some other aspect of the claim as opposed to law of nature itself. This can be assessed by assuming that the laws of nature itself is public knowledge. In light of this public knowledge, is their invention in the remaining subject matter.

      All Supreme Court cases are consistent with this approach. However, they been dancing all over the map in explaining themselves. I think the central problem we have in the law today is that the approach of Hotel Security to claims having mixtures of eligible and ineligible subject matter was never addressed by the Supreme Court until Bilski, and that only in the Stevens “dissent.”

      From my understanding, the EPO approach is similar if not exactly the same.

      1. [W]hen claims include a law of nature, the invention has to be in some other aspect of the claim as opposed to law of nature itself.

        So no more second medical use claims? Aspirin was originally identified as an analgesic, but its capacity as a blood thinner was a “law of nature,” so to speak (i.e., this property existed naturally before it was appreciated by human minds). So when Bayer discovered that it could serve as a blood thinner, there should have been no patent on that? If so, what is their incentive to plow resources into getting the FDA to approve aspirin’s use as a blood thinner?

        All Supreme Court cases are consistent with this approach.

        No doubt. I gather you think that a mark in favor of this rule. I simply regard it as evidence that the SCotUS really should not mess with patent law. They are like a four year old with a sharp knife every time they touch the subject—sometimes no one gets hurt, but if not, it is only by luck.

        1. Greg the result of the method of using aspirin to thin blood is physically thinner blood. It’s not a doctor KNOWING that the blood is thinner or that it could be thinned by aspirin.

          Total abstractions, like “fetal DNA can be found in maternal plasma” are items of information. There is no change in the world due to that information.

          1. Fine, but that does not appear to be the rule that Ned is advancing. In the case of the Bayer second medical use claim, the only part of the claim that is novel is the law of nature (aspirin prevents clotting). The human has discovered the part of the claim that imparts novelty, but has not created the point of novelty. I gather that Ned is advancing the rule from Funk Bros. or Flook, that newly discovered laws of nature are constructively part of the prior art. My point is that such a rule will have adverse consequences with regard to bringing drugs to market. I expect that the same will be true in other regulated industries (like pesticides or industrial chemicals).

        2. Greg, regarding aspirin as a blood thinner, I presume the claims must have had some limitations on dosage and intervals that were not obvious over the principle itself. Otherwise the claims would have read upon the prior art regardless of the law of nature issue.

          1. No. The way that the law (presently) deals with second medical use claims is that one recites in the preamble “administered to a patient in need thereof…” That way, even if the drug and dose are identical to the drug and dose used in prior art treatments of a related disease, the recitation “in need thereof” distinguishes over prior art incidences where the drug was administered for a totally unrelated purpose.

            In other words, imagine that ketoflaxin is given at 10 mg/kg per day for impetigo. Some number of impetigo patients will also have liver cancer, whether they know it or not. When it is later discovered that ketoflaxin at 10 mg/kg per day is also effective against liver cancer, the inventor of that liver cancer treatment can still get a patent on the second medical use by specifying that the method is “a method of treating liver cancer, the method comprising administering 10 mg/kg per day of ketoflaxin to a patient in need thereof.”

            Even if ketoflaxin is already approved for impetigo, the FDA will require phase III data before they will approve it for liver cancer. If you do away with this sort of second medical use claim, no company is ever going to see it as worthwhile to invest the enormous resources necessary to run phase III trials. Any generic would be able to sweep in right after and piggy back on those phase III data. The generic will not have any capital to recoup from the phase III trials, so they will undersell the company that laid out the capital for the trials.

            That is a great way to ensure that drugs do not get approved for newly discovered uses.

            1. Greg: the recitation “in need thereof” distinguishes over prior art incidences where the drug was administered for a totally unrelated purpose.

              Not as a per se matter. It depends on the specifics of the claim, and the prior art.

              Also, if it turns out that there is a bona fide problem with “drugs not getting approved for newly discovered uses”, that problem is better addressed directly with specific legislation promoting the development of such uses. There’s no need to wreck the patent system by driving a truck through reasonable case law (e.g., 102).

              It would seem to go without saying but if the only difference between method A and method B is what the physician is thinking before he administers the drug, the patent system is probably the worst way to regulate that thought process. Every drug has a variety of different effects that can be described using different terms. Consider aspirin. People prone to heart attacks sometimes get headaches. You see such a person taking aspirin. What is it exactly that this person is thinking that they are “in need thereof”? You want the right to drag them into Federal Court and cross-examine them on that point because “patent”? I foresee a wee bit of pushback in that case.

      2. Ned —

        I don’t think your statement is correct. The intent is that claims of “mixed” scope are ineligible, just as a claim that covers some old stuff and some new stuff is just plain anticipated.

        The intent is that if a claim covers some eligible and some ineligible embodiments (example: Flooks’ claim, which could be eitehr mental or machine), then the claim is ineligible. The intent of the IPO proposal (at least in the context of “abstract idea” cases) is that a single non-mental limitation makes the claim an “application” of any abstract idea.

        Is the drafting perfect? I would prefer something that’s a little more definitive that a claim must have one limitation that is absolutely, positively, necessarily non-mental. But I think the existing language says that too, true?

        If you think the drafting deviates from that intent, would you like to propose something different?

        Bilski is a real muddle on the “abstract idea” test, but it is clear that “business methods” aren’t barred outright. Are you contesting that? (Remember that the word “computer” or any other hardware is entirely absent from Bilski’s claims and specification! I think Bilski should lose!)

        I think I see the disconnect between us. I think that eligibility should be evaluated on the basis of the claim, that the claim and “the invention” are one and the same. If I understand you, you seem to be suggesting that eligibility should be evaluated on the basis of some judicially determined “gist of the invention” underneath the claim, and that that “gist of the invention” can’t be saved by adding nonabstract langauge to claim an “application” of the abstract idea. Is that a fair understanding of your view?

        1. David, it is sometimes hard argue in the abstract. Let us discuss a few examples. A common example is the player piano with improved music. The player piano is old, the music is new. How does one analyze this claim?

          The Hotel Security/printed matter doctrine would say that we have to exclude the ineligible subject matter, music, from the analysis of novelty/nonobviousness. When one does the that, remove the music, the player piano portion of the claim is anticipated.

          Now take the claims in Bilski: risk management method. The method has been held ineligible regardless of the reason why. Now add that the claim is to be conducted on a general-purpose digital computer. When we do, we have something like the claims in Alice. How do we analyze these claims given that risk management methods are ineligible? Simply adding a generic computer should not be enough because the essence of the invention does not change. This analysis proceeds in the same manner as the printed matter doctrine because the ineligible subject matter is not be considered in the 102/103 analysis unless it is demonstrated that the ineligible subject matter somehow is functional with respect to the computer system.

          I do not generally care how one labels the analysis, just so that it is done. This is the Hotel Security/printed matter doctrine approach. As recognized by the printed matter doctrine, the only exception is where the ineligible subject matter, such as mathematics, is applied to modify the machine/process to improve the underlying machine/process. When it does, we have Diehr.

          Thus, one would first analyze the claim to determine whether it contains subject matter that has previously been identified as ineligible. Then, one must determine whether there is invention in other subject matter in the claim that is otherwise directed to eligible subject matter or whether the ineligible subject matter is applied to modify the eligible so as to produce some arguably new or improved machine/process etc.

          Using this approach, the Versata claims would have been held eligible because there was an inventive software process claimed even though the claim included ineligible subject matter such as price.

          Now how we put this analysis into the statute? That is a good question because one would have to understand why the claims in Bilski were held ineligible. I think all we have to do is look to the dissent in Bilski to understand why they were held ineligible. Business methods are not directed to improvements in machines, manufactures or compositions.

          1. Ned,
            Your Windmill against business methods per se fails to address the actual words of Congress.

            You are not arguing law – you are arguing a Ned-IMHO version.

          2. Ned —

            The mish-mash in your reasoning is at the tipping point for my willingness to engage with you further. I can’t specify how you interact with others, but if you interact with me, I expect you to maintain some precision, not misrepresent legal principles that I know you know, and read carefully first. OK?

            Your first error in in misunderstanding the “printed matter” doctrine. It applies only to “arrangements of printed lines or characters, useful and intelligible only to the human mind.” It has no applicability to computer data. Further, computer data is “functionally related to substrate,” so it counts. I know that you know the law well enough to know both of these principles.

            Second, the “printed matter” rule that negates claim language limitation-by-limitation applies only in § 102/§ 103. The § 101 variant of “printed matter” applies only to entire claims. I know that you know the law well enough to know this too. I find it jarring that you violated a principle that I know you know.

            Third, you’re looking at “the essence of the invention.” I’m looking at the claim.

            The reason that the claim is important is that the Alice Court got “the essence of the invention” dead wrong. If you do a formal construction of Alice’s claims, you get a very different view of the case. The Alice claims had nothing whatsoever to do with “intermediated settlement” — the whole point of the invention was to prevent a trade from ever being agreed to reach formation, so the transaction never reached the stage of “escrow” or “settlement.” By cutting loose from the claims, the Court just plain made up the facts.

            Without looking hard at the claims, as they are drafted, outcomes cannot be rational or predictable.

            Zeroing out ineligible subject matter is unworkable. Think about what happens to almost every claim if you carve out anything that is based on “laws of nature.” If you “subtract out” everything that is based on “laws of nature,” essentially nothing is patentable. That’s a nonsense approach.

            So I disagree with your approach, and I am appalled by the way you support your view.

            1. David, Speaking of reading, I said “Hotel Security/printed matter doctrine,” not just the printed matter doctrine. Hotel Security held that a method of doing business was ineligible and that invention had to been in the means. The printed matter doctrine derives directly from this case. The way the Federal Circuit handles the printed matter doctrine, and the way it should have handled business methods cases, is by excluding the ineligible subject matter from the analysis under 102/103 unless it is functional with respect to the underlying subject matter. But when the business method exception finally came to the attention of the Federal Circuit in State Street Bank, the Federal Circuit declined to follow that case.

              What the Supreme Court as done in both Mayo and in Alice, in my humble opinion, is take the Hotel Security/printed matter doctrinal analysis out of 102/103, and place it instead in 101. As a 101 matter, the Supreme Court calls/labels the ineligible subject matter abstract, and then searches for an inventive application. This is just another way of saying that “invention” must be in the means – the otherwise eligible subject matter must be novel and nonobvious.

              Now with respect to Alice itself, I agree that the claims there could have been found eligible if the focus had been on the means. There was more than just generic computer subject matter recited. There were specific timing requirements and I thought, I even predicted, that that would be enough to sustain the claims. But I was wrong.

              For your information, I also think the Federal Circuit got Versata wrong. Although the claims overall were reciting a method of calculating price, the invention was not in any particular algorithm for calculating price, but the computer processing that vastly speeded up the calculation. Under later Federal Circuit cases, this should have been enough to sustain the eligibility of those claims because the improved the utility of the computer system.

              Regardless, I do not care personally where the analysis takes place, so long as it does take place. The approach is correct when a claim includes both eligible and ineligible subject matter in it. By hook or by crook, the Supreme Court finally has adopted the Hotel Security analysis.

              Now, even though you think that this approach is atrocious, it has stood the test of time. It was the approach conducted in the courts, and in the patent office, for approximately hundred years prior to State Street Bank. In that case, the Federal Circuit replaced the Hotel Security analysis with its Alappat analysis, holding that any programmed general-purpose digital computer calculating, for example, improved price, was eligible. The court specifically held that there was no business method exception, specifically “overruling” Hotel Security.

              Needless to say, State Street Bank became very popular among patent attorneys, and very unpopular in the United States. It was specifically overruled by the Federal Circuit in In re Bilski, and was unanimously condemned by the Supreme Court in the same case. And, as I noted above, the Supreme Court has all but formally adopted the analysis of Hotel Security in Mayo and Alice, vindicating that case’s approach when claims have mixed subject matter, some eligible, some ineligible.

              Also, please do not assume in any of our conversations in the future that I do not know what I am talking about. We may have different views on cases, but I thoroughly understand the cases and patent law. Those who know me can attest that this is true.

              Regarding the IPO approach to any amendment to 101, I would consider doing something about “abstract.” But I would not consider doing anything to 101 itself. That language must not be changed in any way. Further, I do not agree, and oppose, any attempt to define in the statute, products of nature, laws of nature, metal steps or anything of that nature. We have seen the chaos of the AIA and in particular its introduction of postgrant reviews. We need to be conservative here. Rash imprudence must be avoided.

              1. Ned, even Prof. Crouch has come out and told you that your attempted application of Hotel Security is not correct.

                David Stein long ago ripped your view to shreds.

                Stop your prevaricating.

    5. David Boundy, (a) Spelling out that “abstract idea” means “in the human mind,” with no effect in the physical world. This comes from In re Sarkar, 588 F.2d 1330 (CCPA 1978).

      I was thinking more along the lines of simply stating that the abstractness of a claim is a matter to be addressed under section 112 in terms of whether the scope of the claim is described and enabled, or whether it simply claims a result and therefore is indefinite under section 112(b).

      Abstractness has nothing to do with patentable subject matter.

      Obviously, the claims in Bilski were not abstract. Why they were unpatentable still has to be addressed in any statutory revision. I simply suggest that the reason they were unpatentable was because they were directed to business methods. We could declare that business methods are generally unpatentable, even though the means (including software) for implementing such methods may be patentable subject matter.

      1. Ned: Abstractness has nothing to do with patentable subject matter.

        It’s not at all clear what you mean by this but, on its face, it would appear to be absolutely false.

      2. Ned —

        Read Bilski again. I think you have a number of incorrect understandings.

        Obviously, the claims in Bilski were not abstract. That’s simply not accurate. The Court said plainly to the contrary: “The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea.” The Court didn’t give any reason that Bilski’s claims were abstract, they just were, “because we said so.”

        You write, the reason they were unpatentable was because they were directed to business methods. The Bilski Corut was 100% clear to the contrary — “The term “method,” which is within § 100(b)’s definition of “process,” at least as a textual matter and before consulting other limitations in the Patent Act and this Court’s precedents, may include at least some methods of doing business.” Likewise, your understanding is just plain not correct.

        Because I happen to know a bit more about the Bilski case than is in the opinion — the word “computer” is not in Bilski’s claim. It’s not even in the specification and drawings!

        And because of that, I think the Court got it right on the result, that Bilski’s claims are “abstract.” But for the wrong reasons. And the IPO proposal would keep them ineligible, because “entirely in the human mind.”

        1. David, I simply disagree that the claims in Bilski were abstract ideas in the sense of abstract ideas from Le Roy v. Tatham or O’Reilly v. Morse.

          However, if the Bilski claims are abstract, why are they abstract? No one knows, and Stevens dissent said so.

          1. Are you making any effort at correctness or to advance the conversation?

            C’mon, this is 2017. Your sentence was “Obviously, the claims in Bilski were not abstract.” The Supreme Court held directly that they were. If you mean something different by the term “abstract” than obtains in 2017, then you’ve got to write clearly.

            O’Reilly v Morse is an enablement case, not a subject matter case. The only use of the word “abstract” is in a question, “If the result of this application be a new and useful art, and if the essence of his invention consists in compelling this hitherto useless element to record letters and words, at any distance and in many places at the same moment, how can it be said that the claim is for a principle or an abstraction?” The Court did not hold that the invention was “abstract,” let alone in a subject matter sense.

            In Le Roy v Tatham, the definition of “abstract philosphical principle” is essentially “entirely in the human mind” — “any law of nature or any property of matter, apart from any mode of turning it to account.” That’s the definition IPO suggests, true?

            I agree emphatically, that one of the big problems in the law today is the absence of a definition, and that the definition implied by Mayo and Alice is nonsense. The IPO proposal solves the problem by adopting the definition from LeRoy v Tatham, “entirely in the human mind,” and ousting any notion relating to prior art.

            1. David, I am not contending that Bilski did not hold of the claims there were abstract. They just did not define any test as to why the claims there were abstract. And we agree, that if the claims were entirely at the level of an idea per Le Roy v. Tatham, or were so broad as to not be enabled/describe, per Morse, then they would be abstract under those cases. But in my opinion, the Bilski claims did not suffer either one of these problems and therefore under those cases the claims were not abstract.

              The Stevens dissent in Bilski pointed out this problem about the majority approach. The majority did not explain itself as to what the problem was with the claims.

              That is why 101 jurisprudence has foundered sense. You and I can agree and that.

              Because we both agree that there is a problem with the lack of definition of abstract, and with Morse specifically holding that the problem of abstractness is a problem under today’s 112, why do not we just say that in an amendment to 100(b) along the lines of the following: “A claim is abstract only if it’s full scope is neither described nor enabled under § 112(b).”

            2. Also, we can deal separately with discoveries of laws of nature having specific utility.

              Perhaps: “The novelty of a law of nature may be considered under 101/103 in a process that applies the law of nature.”

              As I said, this would specifically overrule Funk Brothers. That case is still followed even though you might not agree that it is followed. Its overrule will allow the patenting of applications of laws of nature where the novelty of the law of nature itself is given weight.

      3. Abstractness has nothing to do with patentable subject matter.

        Is that why you fought – for years – to misrepresent Bilski as having a holding directly against business method patents when NO such holding is present in that case?

  17. “The IPO statement does not consider the impact of other already-existing non-statutory exceptions such as double-patenting, but presumably those will disappear unless a sufficient statutory hook is found.”

    Yep. And some others I do believe.

  18. Dennis –

    I think there is a word missing in this sentence from the end of the first paragraph:

    “Of course, as the number of court cases finding ineligible subject matter, the PTO’s approach has necessarily expanded as well.”

    Before the comma, maybe insert “increased”?

  19. Reality: we need to take this to the next level and form a Super PAC to get this IPO proposal through. Reality: the members of Congress that are pushing to limit patent rights are funded by — guess—Google.

    1. Seriously, what do you guys think? If I formed a Super PAC, would you help fund it? There are a couple of targets already that we would go after in Congress. Google is doing this now to weaken or end patents.

      I wish we could form a Super PAC to file an ethics complaint against Lemley and force Stanford to respond to the merits of the complaint.

      1. If the IPO tries to raise funds to promote this amendment, I would chip into that fund. I would not favor a separate Super PAC, because that would just mean that lobbying efforts would be conducted by two separate entities in an uncoordinated fashion. Better to keep all the effort inside the IPO, so that it does not happen that the two separate efforts undercut each other.

    2. We all know the paid blogger is going to blast this blog post with dozens of comments and make sure his comment is at the top.

  20. Crouch: ‘I would suggest that there is almost nothing on earth that provably “exists in nature independently of and prior to any human activity”’

    Can you explain how you arrive at that conclusion?

      1. Yes it does come to mind.

        The claimed stick (aside from the literal meaning of “adapted to”… adapted by whom? and “predetermined” determined by whom?) existed in nature. Merely calling it an animal toy does not of logical necessity dictate any human intervention. Wild animals play.. and wild wolves do play with sticks.

        This is slightly “better” at claiming what exists in nature independently of and prior to any human activity:

        1. An animal toy, comprising: (a) a solid main section having a diameter and a longitudinal length and extending a distance along said longitudinal length; and (b) at least one protrusion at one end thereof said main section and extending a distance therefrom and wherein said at least one protrusion includes a second longitudinal axis that is not in parallel alignment with a first longitudinal axis of said solid main section; and wherein an overall weight to overall volume ratio of said animal toy is less than the density of water.

        This reads on a stick prior to the existence of mankind.

        1. Anon2 – I’m not following your comment. If the stick exists before the filing date for patent, then it’s precluded under 102. What is the issue here?

          1. No issue, it’s just a claim directed toward subject matter that “exists in nature independently of and prior to any human activity”, that’s all.

            The context is Dennis’ assertion that ‘there is almost nothing on earth that provably “exists in nature independently of and prior to any human activity”’

            This is an example of that something, and moreover, a claim directed to it.

  21. As to “It should be clear from the statute that ordinary works of authorship, for instance, are not patent eligible.” – Prof. Crouch needs to clarify his own desired clarification in so far as “authorship” of things that fall squarely into the exceptions to the judicial doctrine of printed matter can very well fall rightfully under the coverage of manufactures of the hand of man (e.g., machine components).

    1. That’s what the categories (“process, machine, manufacture, or composition of matter, or any useful improvement thereto”) are for–exclude innovations in the fine arts and so on.

  22. For all the anti-anon posturing by the self-sAme pundits on this board, take a look at the “logic” that the IPO’s legislative aim is using.

    Then realize that it is the self-sAme “logic” that I have put on the table for discussion for years now.

    The baseless ad hominem attacks of “meds” and “speak English” and the like may continue, but do realize that in your attempts to f00l everyone else, the biggest f001s are you, the ones that have f00led yourselves.

    1. all the anti-anon posturing by the self-sAme pundits on this board, take a look at the “logic” that the IPO’s legislative aim is using.

      Then realize that it is the self-sAme “logic” that I have put on the table for discussion for years now.

      LOL

      We noticed.

      LOLOLOLOLOLOLOLOLOLOLOLOLOLOL

  23. Couch: “(1) include a third exception to eligibility derived from the printed matter doctrine.”
    A worthwhile idea. But isn’t that doctrine more of a novelty doctrine, so courts could work with it anyway? At any rate, developing the printed matter doctrine could help, in more reasonable ways, with claims to doing old things in light of new information, like the Mayo claim.
    Good that IPO came out with its proposal and, now, the underlying report. It starts an important discussion.

    1. There are two entirely different “printed matter” rules, one that operates claim-limitation-by-claim-limitation for § 102/§ 103 purposes, and one that operates on the claim as a whole for § 101 purposes.

      1. So remove § 101 and the “abstract idea” doctrine will enter § 102/§ 103. In Europe this shift happened about 20 years ago.

        1. To the extent that is should be applicable, pete, it is already there.

          You are missing the point here about which branch of our government has been allocated the authority to write patent law, and the current aim to rebuke the broken scoreboard effects of the wrong branch’s attempts at scrivining.

          ( I would also like to point out that you are on the edge of improperly ignoring the different sovereigns have different laws paradigm)

  24. That’s a lot of posting about a legislative proposal that will never, ever be considered by any legislature anywhere. If there’s any discussion, it’s going to be about cutting down on the out of control expansion of patents into math, software, science, the arts, design concepts and other places they don’t belong and aren’t wanted.

      1. How many times Night? If software/hardware/firmware are the same things, then why three different words for them?

        If they are not precisely the same, but similar enough to sound in the doctrine of equivalents, the question remains: what are the differences between them?

        PS, I don’t know how firmware differs from software, even in the vernacular.

        1. You seriously don’t know the difference between software and firmware and yet you have all these opinions about software.

          Please go and educate yourself (and put a shirt on), and then come back and we’ll talk.

          1. firm·ware
            ˈfərmwer/

            noun
            COMPUTING

            permanent software programmed into a read-only memory.

            Tell me Night, what is the difference?

            anon, do you even read the comments before you start typing? I noted the doctrine of equivalents- I’m looking for the vernacular difference. An SSD disc drive is essentially ROM when powered down. “Firmware” is meaningless, even in the vernacular.

        2. How many times Mr. Snyder?

          In the patent law sense, we are not talking “exactly the same as.”

          In the patent law sense, equivalence is all that is required.

          You chide others for what you do yourself / not a good habit, and I can take a pretty good guess which anti-patentist you picked that up from.

    1. cutting down on the out of control expansion of patents into… science… [where] they don’t belong and aren’t wanted.

      Patents do not belong in science? What exactly are they meant to encourage? Advancing the state of the art in necromancy and astrology? Metaphysical studies and the care and feeding of Cornish pixies?

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