This is a bit abstract, but I’m wondering how you might describe the actual moment that a patent issues in terms of the creation of a new property right and transfer of that right to the patentee. If we could slow-down time to look at what exactly happens: Is the right first created by the government and then granted to the patentee? Or, is the right simply created already in the hands of the patentee. Assuming the inventor is no longer the right-holder, does anything pass through the inventor’s hands at that moment?
In the “land patent” system, ownership is originally vested in the sovereign and then transferred to the recipient, but it seems to me that the patents on inventions probably work differently. In the end, I expect that this may have some impact on the public-rights cases. -DC
Ron,
In your linked brief, Ron, I especially like this point of yours, as it removes the dicta (read that as attempted scrivining to rewrite the patent laws) of the Supreme Court in trying to diminish the importance of the stick in the bundle of property rights of the Presumption of Validity by Breyer and company:
“The presumption of validity under the clear and-convincing-evidence standard in patent law is not based on any deference to the PTO examination prior to the patent grant. The heightened standard was used even before the Office started examining applications in 1836.
“See Ron D. Katznelson, Brief of Amicus Curiae in Support of Affirmance, Microsoft Corp. v. i4i et al., at 30-32, U.S. Supreme Court (March 18, 2011) (quoting passages from Sen. Rep. Accompanying Senate Bill No. 239, 24th Cong., 1st Sess. (April 28, 1836), as endorsing the heightened standard of proof and the presumption of patent validity), available at link to j.mp .
Rather, the presumption of validity under the clear and-convincing-evidence standard is an immutable adjudicatory standard matched to the large asymmetry in the countervailing risks to the litigants due to factfinder errors in validity determinations.
…
That [symmetry of risk] is not the case for invalidity determinations. When the factfinder erroneously upholds an invalid patent, the defendant risks the unjust loss of damage award only for his own infringement, whereas when the factfinder erroneously finds a valid patent invalid, the patentee risks the unjust loss of damage awards from hundreds or thousands of infringers or licensees, and the unjust enrichment of the public with a “disclosure of the invention that was published upon consummation of the patent bargain**.
The asymmetry arises immediately upon the grant of the exclusive patent right and is irreversible thereafter because the patentee’s loss and the dedication of his invention to the public is irreversible.” (emphasis added)
I starred the old view of disclosure to also point out a “slippery slope” attack on the Quid Pro Quo that has occurred since that decision with the publication prior to grant (and note that many academics push even more for an immediate publication scenario). The slippery slope being that the well respected Quid Pro Quo is in fact violated with these pre-grant publications. What impetus is there remaining for the Office to dutifully examine (promptly and FULLY accurately applying the law, including full application of all legal elements for obviousness, including walking through all of the Graham factors as well as establishing properly the level of a Person Having Ordinary Skill In The Art), when the Office has already obtained the maximum amount of their end of the bargain?
The answer of course, is nothing.
Why bother with the heavy lifting after the horse has left the barn?
Why not then aim for power grabs to make the Office job “easier?” (and make no mistake, this is exactly what the Tafas debacle for the Office of the Claims and Continuations rule changes were all about.
Maybe an academic should look into the slide of “patent quality” (being, the only item that the Office controls in relation to the quality of their product IS examination quality) tied to this change in the treatment of the Quid Pro Quo…
Ron Katznelson is a self-dealing hack and the fact that “anon” — the blog’s resident path0 l0gical l i @ r and a habitual apo l0gist for the worst patents and the worst patentees who ever walked the earth — adores him pretty much tells you all you need to know.
As for this: Maybe an academic should look into the slide of “patent quality”
what could possibly be more hilariously hypocritical coming from the mouth of “anon”?
LOLOLOL Yes, let’s get the “ivory towerists” to work. Because “anon” really cares about “patent quality.” Sure he does.
I look for anything besides empty ad hominem in your post, Malcolm, and there is nothing there.
Maybe you want to try something else.
Anything else.
Yay 11 years!
“anon” has a 5 foot cardboard cutout of Ron Katzenlson that he salutes and prays to every day.
Also: everybody has a “private right” to practice anticipated or obvious unpatentable cr@p. There is no “dedication” of anything to anyone when non-novel obvious cr@p is disclosed.
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The Quid Pro Quo is embodied in the patent laws, including the protection afforded and the requirements to obtain patent protection. As a government agency, the impetus for the PTO performing quality patent examinations is its obligation to the public–not the Quid Pro Quo. The USPTO itself doesn’t obtain any benefit from pre-grant publication beyond a larger source of invalidating prior art. I seriously doubt that the public disclosure bargain is a significant motivating factor for any PTO employee.
The terms of the bargain may have changed over the years, but those terms are generally determined by Congress. Pre-grant publication is simply a risk associated with patent applications assuming that trade secret protection was an option. If inventors don’t think that patent protection is worth the cost, they will just stop filing patent applications.
Rather than look at the impetus for the patent office to examine patents, consider the impetus for requiring patent examination in the first place. If the bargain from Congress’ perspective was premised on quality patent examination, poor patent examination might be a cause rather than an effect. Rather than attempt to improve the quality of patent examination, Congress could choose to balance the scales by devaluing patents or increasing the risk of patent applications via pre-grant publication.
If inventors don’t think that patent protection is worth the cost, they will just stop filing patent applications.
But if Ron Katznelson and his s00per do0per important wealthy entitled bros stop filing patent applications then the world will stop turning!
It used to be that every other garage on my block was being used by “little guys” to innovate the most marvelous stuff. Methods of liking your cousin on the Internet using just one button. A computer with diagnostic information stored on it, wherein the diagnostic information related to something that just turned up in the news. Sorting DVD reviews by featured actors, on a plane. And more!
Now it’s just the one garage every four blocks being used as a fermentation tank for this special kind of genius. That’s why the economy is failing! Plus all those scary brown people who don’t go to the same church with the normal people. Just as the IP Puppydogs. They’re very serious people.
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If inventors don’t think that patent protection is worth the cost, they will just stop filing patent applications.
And patent application filings continue to soar.
I guess the facts are just “biased” against the deep deep thinkers at IP Puppydog. Or maybe it’s just an especially needy class of “innovator” that’s being “oppressed” by bad ol’ Michelle and her diabolical plots.
What has “IP Puppydog” got to do with any of this?
You and your 0bsess10n…
NS II,
Sorry but I could not see the point that you were trying to make there.
It appears almost as if you were sayin that there would be more value with weaker patents, which of course would be an outright fallacy.
Could you summarize your point for me?
Thanks.
“anon” : that there would be more value with weaker patents [is] of course … an outright fallacy.
Because “anon” says so!
Bow down everyone.
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I share the question — how would this influence either a case outcome or a policy choice?
Isn’t this close to a contract — it comes into existence at the time that all the prerequisites are satisfied by all parties:
* for a contract, offer, acceptance, consideration, definite terms, etc.
* for a patent, application and grant
* for provisional rights, application, publication, knowledge, issue
Is it meaningful or analytically helpful to speak of some legal “thing” preexisting?
Is it meaningful?
Depends on the context.
Understanding the notion of inchoate rights can be exceptionally meaningful.
From down below at 2.1.1.1.1 – but worth noting here as well in response to David:
As I indicated elsewhere, the Quid Pro Quo should not be viewed in the legal sense of “contract” as that falls too easily into the Efficient Infringers’ propaganda zone.
Yes, the Quid Pro Quo is an essential element of the US patent jurisprudence, but any relation to contract law falls short in that contract law (by and large) can comprise a heavy mix of statutory and common law, whereas patent law, due to its more direct Constitutional allocation of authority falls directly (first and foremost) to being statutory law.
How many times in these boards have we seen the uninformed (purposefully or otherwise) confuse, conflate, and for some, even obfuscate discussions based on not respecting the differences between statutory law and common law?
Except that every inventor has a right to a patent unless….
Even under statutory framework, inventors have an inchoate right to a patent from the date the invention is made, that is reduced to practice, that cannot be denied under statutory law if the inventor complies with the “formalities.”
Of course statutory framework could be changed where the granting authority would have complete discretion. But that is not system we have in the United States.
Ned,
Your first comment is rather odd, as you seem intent on even misrepresenting what an inchoate right means.
Your second comment is accurate – and as I explain in other comments on this thread, it is critical to account for ALL of those sticks in the bundle of property rights and just when some of those sticks may be taken improperly.
Have you grasped the basics in property law yet?
anon, you and I are in agreement. I was responding to Boundy.
Ned,
We are in partial agreement.
You still have to grasp some fundamentals of property and takings law.
Ned,
I suggest that you read and contemplate Ron’s linked brief, particularly beginning on Page 18 with:
“III. IPR’S CONSTITUTIONAL INFIRMITY IS COMPOUNDED BY IMPROPERLY PRESCRIBING A RELAXED EVIDENTIARY STANDARD FOR INVALIDATING PATENT CLAIMS
The AIA codified 35 U.S.C. § 316(e) which directs the PTO to apply the “preponderance of the evidence” standard in adjudicating the validity of the claims in post grant proceedings even though patents are presumed valid, 35 U.S.C. § 282, and invalidity must be proven by clear and convincing evidence, Microsoft v. i4i, 131 S. Ct. 2238 (2011); Radio Corp. of Am. v. Radio Eng’g Labs., Inc., 293 U.S. 1, 7-8 (1934) (“one otherwise an infringer who assails the validity of a patent fair upon its face bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance”); Coffin v. Ogden, 85 U.S. 120, 124 (1874) (“The burden of proof rests upon [the patent challenger], and every reasonable doubt should be resolved against him.”)
To be sure, it is within the domain of Congress to establish presumptions and rules respecting burden of proof. Nonetheless, the Due Process Clause of the Constitution does not permit the deprivation of liberty or property upon application of a standard of proof too lax to make reasonable assurance of accurate factfinding.”
And then realize exactly when the taking by the government of that stick in the bundle of property rights (the presumption of validity) occurs:
at the initiation decision point
a point that was strictly written by Congress to lack Article III appeals,
a point that is performed by a politically appointed and controlled Executive branch agent, and
a point that involves ZERO recompense for the sticks in the bundle so taken.
Put these points together under traditional takings law, and let me know if you understand the necessary conclusion.
…and let me add one more point:
a point that is completely separate from any additional “court” (PTAB) proceedings dealing with the remaining sticks in the bundle of property rights that a granted patent provides.
I add this last one because you have in the past failed to recognize what a takings law analysis requires, and you want to inappropriately lump the whole bundle of sticks together – you need to realize the separate legal point of the initiation decision and the takings that occurs at that separate legal point.
Congress defines what a “patent right” is.
There is no “taking” of anything when Congress has defined the “patent right” to include revocability in a post-grant proceeding, where the post-grant proceeding uses a lower standard of proof.
Good grief is there anything more p@thetic on the earth than the whining of the wealthy entitled patent maximalists? Get a l i fe.
You missed the part that Congress itself is not free to ig nore the other Constitutional protections of property.
The part – you know – that I have reminded you of every time you try to dive into the weeds like you do here.
oh dear, not another misreading of the constitution. The constitution does not grant any patent rights, but instead it merely allows congress to set up a patent system.
Just, that is not what the grant does either: “set up a patent system.”
Just,
I am speaking to OTHER portions of the Constitution (that protect property rights).
Oh dear, your comment is seriously misplaced.
[T]he Due Process Clause of the Constitution does not permit the deprivation of liberty or property upon application of a standard of proof too lax to make reasonable assurance of accurate factfinding.
I agree with this.
I also think that the due process clause requires an independent trier of fact in order to guarantee lack of bias when ownership or validity of valuable property is at stake. Certainly, the accused infringer has a right to a day in court trial by an independent judge or by jury at his choice not only because tradition in the seventh amendment so, but the due property is at stake – at times a great deal of money.
As Ron points out, the amount in controversy a particular trial represents X. But the value of a patent is normally 10 X or more. If the due process clause requires a trial in an independent court for an infringer, surely the due process clause requires a trial in an independent court for the patent owner before his property is revoked/taken.
Every time I see a film made in China were a local party boss, and a couple of his henchmen, preside over a “fair” trial of a “citizen,” I see instantly the problem with due process.
Hence the classic view of a right to ‘sue out’ a patent. Not so sure about your second paragraph. Pretty sure that the patent and copyright clause abolished the ‘kings grant’ of patent or monopoly to favored subjects. In other words, a US patent is limited to the Lockean view of a property right to your thoughts and unique expressions.
What do you mean by “the classic right to ‘sue out of’ a patent” (in the present context)…?
I have also found that conversations are much better when questions are answered.
The inventor’s right is an inchoate right, which vests at the moment of patent grant. If the inventor assigns the right, the successor stands in the shoes of the inventor….
******
Inchoate Definition: A legal right or entitlement that is in progress and is neither ripe, vested nor perfected. In reference to a claim in law, or an entitlement, that has not yet vested.
******
Public right ??? The inventor is the one with the perfected “right to exclude”…. the Public has the right to the knowledge set forth in the patent, but not the right to infringe….
Thanks Blindman – you see more than most here…
Well, the Federal Circuit has a blind eye. It chooses not to see controlling precedent.
…or maybe someone recognizes ultra vires attempts at re-writing statutory law (broaching the separation of powers)…
How is that effort of yours to find your State attorney oath coming along, Ned?
This question seems somewhat related to the Federal Circuit’s Filmtec rule that present assignments of future inventions are effective as of when the invention takes place, without needing a further written assignment.
An inventor might have inchoate rights in his invention before the patent is granted, but does an inventor have an inchoate right even before there is an invention?
Good questions.
Pilgrim, there is some case law that suggest that an equitable assignment becomes a legal assignment when the assignee comes into possession. That is why I think an equitable assignment of an invention yet to be made may become a legal assignment if the inventor signs an application prepared by the assignee and that application is filed by the assignee, but not otherwise.
Filmtec will be reversed and by the Supreme Court.
…this seems to mirror your incorrect views on a case already decided by the Supreme Court, Ned (hint: Stanford v. Roche)
Please do yourself a huge favor and visit the archives to review what I have already extensively tried to teach you there.
Once Congress established the legal formalities for obtaining a patent, every inventor in the United States has a legal right to a patent for his invention upon complying with the formalities. The scope of that right varies according to the invention. The formalities may include filing before another inventor of the same invention, and filing before one discloses the invention to the public or commercially exploiting it.
Chief Justice John Marshall called it an inchoate right to a patent.
However from the even bigger picture, absent congressional action, no one has a right to a patent for any invention. He may petition Congress who might grant him a patent (for limited time) at their discretion. But once granted, not even Congress can revoke the patent because it is the property of its owner. Only a court can revoke the patent, either because the inventor did not tell the truth, Congress has previously granted the same patent to another or that there is no invention in fact. These grounds have not changed since the mid-1700s.
As others have said, the idea that the granting authority may revoke a patent is alien to the United States. From the earliest days, patents have been considered the property of their owners and may not be revoked except by a court in accordance with due process of the law.
Ned – I would only add that at least American Bell answers either in whole or in part the questions proposed in the prompt.
The current understanding may have changed since “the earliest days”, but revocation by the granting authority is certainly not alien today.
In any case, is there some reason that Congress cannot grant a patent that is subject to administrative revocation? 35 U.S.C. 261 recites “Subject to the provisions of this title, patents shall have the attributes of personal property.” Is the “subject to” clause unconstitutional with the rest being superfluous?
Yes, the 7th Amendment.
“but revocation by the granting authority is certainly not alien today.”
That completely depends on how the government meets any other Constitutional protections afforded the item being revoked.
“In any case, is there some reason that Congress cannot grant a patent that is subject to administrative revocation?”
They would have to deal directly with the fact that they have also mandated patents to be property (legally).
So many here – including Ned who was “this close” to being in front of the Supreme Court – continue to fail to see the bigger issue of patents as property and the other Constitutional protections that kick in for ALL sticks in the bundle of property rights when it comes to government takings (very much like eminent domain).
Way too many people want to hide the elephant in a mouse hole and only look at the portions of “subject to the provisions of this title” without realizing that any new provisions must still accord with the existing Constitutional protections of the bundle of sticks known as the property of a patent grant.
Even Congress itself – the proper branch of the government authorized to write patent law – is not free to ig nore those other protections.
Am I correct in understanding that you consider “patents shall have the attributes of personal property” to mean the exact same thing as “patents [are] personal property”?
Are you saying that patents are property solely because Congress says so?
Would you suggest otherwise? Especially given that the Constitution allocated the authority to set the law for patents to only one particular branch of the government? Under what authority then, would you say otherwise?
Ned, were not, in both World Wars, U.S. patents owned by German companies confiscated and sold?
Lot’s property is taken by the US government, Paul.
I am not seeing your point.
Are you saying that you know that the patents were taken with some type of due process violation?
Paul, I think you may be right. Can you point to any cases where this issue was discussed a legal point of view? I can see some justification for the United States confiscating the assets of another country with whom we are at war, but it really does not make sense me to confiscate the assets of individual citizens of that country with whom we at war without compensation. That is not civilized – it seems to violate fundamental principles of human rights.
Recall that our relationships with Cuba were fundamentally disrupted when Castro seized the assets of private American citizens without just compensation. Whatever dispute Castro may have had with the United States for whatever reason did not justify outright theft of private assets.
Anyhow, it just seems wrong to me that the United States would participate in punishing private citizens of a country just for the sake of revenge.
I was trying to recall whether the United States confiscated the properties of Southerners who fought in the war against the union after the Civil War. We could have, but I do not think we did. How would we ever expect to get along with Southerners if we treated them in such shameless fashion.
I think one of the things we learned from of both World Wars is that when we treat the conquered nation with barbarity, they will never forget. That is why after World War II we went out of our way to the civil with both Germany and Japan, and to assist them as best we could to recover.
Ned – check out the confiscations on either the war on terror or the war on drugs.
One way to look at is that the grant of a letters patent creates an exclusionary right that has property attributes as opposed to creating a new property right.
It is also important to consider the converse. In other words, what happens when the claims of a patent are cancelled or expire? Is the government taking rights away from the assignee and then destroying them, or is it simply extinguishing rights in the hands of the assignee?
The converse…?
Part of the Quid Pro Quo (and seems like a rather well understood and non-arguable item…)
The Quid Pro Quo, which I agree is not arguable, deals with why a right to exclude is granted–not the nature of the right to exclude.
By converse, allow me to rephrase the original question. How might you describe the actual moment that a patent is invalidated in terms of the destruction of a property right and transfer of that right from the assignee? If we could slow-down time to look at what exactly happens: Is the right first seized from the assignee by the government and then destroyed? Or, is the right simply destroyed already in the hands of the assignee?
Presumably, patent rights leave the world the same way they come in. If not, why?
To your last question, one might equally ask why you would presume such. After all, the beginning and the end have nothing in common (metaphysically).
Does your rejection of my presumption prevent you from answering my questions?
In any case, I do not believe that creation/destruction are necessarily symmetric. However, I believe that there is always a relationship. For example, take the creation and destruction of an automobile. When does a collection of parts become an automobile? When does an automobile cease to be an automobile? One could look at operability, presence of certain components, configuration of certain components, the owner’s intentions to fix or scrap. Whatever lines are drawn, the relationship between the two defines what it means to be an automobile.
Regarding patent rights, understanding the end may help inform the beginning. Is an invalid patent not property or is it just worthless property (assuming that past damages are not an issue)?
The end and the beginning are disassociated.
Sorry, but you are just not likely to get what you want to get there.
As to: “Does your rejection of my presumption prevent you from answering my questions?”
While I did not directly answer ALL of your questions, NS II, I did answer the last one (with a question). I did this to expose the assumption inherent in all of your questions.
You first have to grasp that before any other answers that are supplied to you will be understandable BY you.
Now then, to your first question of: “ How might you describe the actual moment that a patent is invalidated in terms of the destruction of a property right and transfer of that right from the assignee?”
When you are talking about a patent right being invalidated, you can approach this in two ways:
1) The existing and actual property that is the right is nullified at the time of invalidation. This can be viewed as a taking of property – and is why court procedures and such must might Due Process and other Constitutional protections that guard against the government performing an illicit takings.
2) The grant of the right which supplies the property was itself invalid, and the property never actually existed. Therefore, the invalidation merely restores the status quo ante.
The problem of 2) of course, is that Congress has already directly addressed that line of thought in the presumption of validity and the notion that – at first blush – credit for actually examining an application and thereby granting the property rights of a granted patent MUST be recognized. This is established in the presumption of validity stick in the bundle of property rights that inures at the time of grant.
Of course, when you have other such things as Fraud on the Office, your 2) may be in play. But this should not be conflated with how most invalidations occur – and in truth, is the source of the most angst on this subject.
Either of these approaches does not need to consider any such “transfer” that you have in your question. Your question is simply ill-formed for the actual mechanism that you are asking about.
This then also negates your follow on questions two and three (and I have already answered your fourth question).
Feel free to ask any additional questions my friend.
In short, you could have just said, there is no transfer. My question was whether or not there was a transfer-just as in the original posting. Anyway…
“The existing and actual property that is the right is nullified at the time of invalidation.” __ I assume you are using the word “actual” to distinguish a patent from some other type of non-actual property. However, the fact that a patent can be nullified as opposed to destroyed distinguishes it from other types of property. Given that nullification does not include a transfer, it must be a taking under some other theory.
I’m not sure what this means: “The grant of the right which supplies the property was itself invalid, and the property never actually existed.” __ Is there some tangible property analogy that can be made here or a way to rephrase this? I don’t understand this concept of “a right which supplies the property”. I understand that a right can be property, but “supplies the property” suggests an independent existence. Do you mean “The grant of the right was itself invalid, and the right never actually existed”?
Moreover, I don’t see how “the invalidation merely restores the status quo ante” distinguishes between your two approaches. Either approach results in restoration of the status quo. The distinction is the path used to get there.
“This is established in the presumption of validity stick in the bundle of property rights that inures at the time of grant.” __ How exactly is the presumption of validity a stick? It is not transferable. It doesn’t impose a duty nor does it confer a right. At best, it modifies other sticks.
I don’t see how the examination process or presumption of validity is relevant to understanding patent rights as property. They certainly affect the value of patent rights, but the nature of property does not generally depend on value.
You attempt a distinction without a difference. Of course patents are different: they are patents.
The presumption of validity very much is transferable. Perhaps you meant not separately transferable, but that too is a distinction without a difference.
…also, I think that you jumped over the premise I put to you in my second response in this sub-thread by your “in short” comment – I did say that my first response in question form was intended for you to reevaluate your own presumptions, and that that was necessary for you to grasp the other answers that I supplied to you.
The general moral right to ownership of one’s own mental labor pre-exists creation of the invention by the inventor. The specific right in the invention by that individual is born at the moment of invention. The “securing” of the right to the individual for the limited time, requires a process to validate and define the right. Once secured the right is protected and enforced.
Unlike land which exists in a bounded bordered geography patrolled and protected by a State, the vast infinitude of the undiscovered and as yet to be invented, is NOT pre-owned by anyone, and hence by no group, no gang, (no mob, Nation, Kingdom, Tyranny or World Order, each of which is only a collection of individuals) who has not preformed the act of invention in respect of that infinitude.
The State does not possess rights, for distribution (or re-distribution) nor do they grant them, they secure, recognize, protect, and enforce individual rights.
The above is a little abstract…
Well stated – thanks!
Unlike land which exists in a bounded bordered geography patrolled and protected by a State
Presumably you are referring to land on Earth and not the surfaces of other objects in the galaxy.
moral right to ownership of one’s own mental labor
What if I’m going insane from ingestion of some toxic plant-derived chemical and in order to save my life the doctors put me into a drug-induced coma. While in the drug-induced coma, my brainwaves are monitored and translated by the doctor’s computer (which the doctor programmed). The translated brainwaves depict the process of navigation through an imagined maze which corresponds to a physical healing event that can be subsequently replicated in others by inducing the identical pattern of brainwaves.
Who possesses the “moral” right to that useful pattern of brain waves?
The doc, that’s not hard. Problem is, it was a naturally occurring healing event. Not patentable. It would be like trying to write a patent on the immune system.
The doc, that’s not hard.
But it wasn’t the doc’s mental labor that created the solution. It was mine.
it was a naturally occurring healing event
Fascinating. Assuming you’re correct, is that true of all mental processes that can be converted into signals which are useful? Or just this one for some reason?
It would be like trying to write a patent on the immune system.
Except the claim doesn’t cover the immune system, nor does it cover any bodily system. It’s a particularly claimed process for inducing a physical change with a signal.
“it was a naturally occurring healing event
Fascinating. Assuming you’re correct, is that true of all mental processes that can be converted into signals which are useful? Or just this one for some reason?”
Love the twist you put on that – from healing event to mental step….
Maybe you should stick with the thrust there: healing process.
Does that make all pharma into a non-eligible group?
You ask a great question because I assumed you were patenting the pattern of brainwaves followed by the word “therapy.”