IPO Steps Up: Proposes Statute to Overturn Mayo and Alice

by Dennis Crouch

The Intellectual Property Owners Association (IPO) is run primarily by a group of 50 top intellectual property counsel (usually patent-focused) from many of the largest global innovative companies – all deeply involved in the patent system as patent holders and many as accused-infringers as well.  Patent attorneys from various law firms serve in a support role for the organization.  The IPO created a special 101 legislative task force headed by IBM’s Marian Underweiser with Vice-Support from Bob Sachs (Fenwick & the BilskiBlog) whose proposal has now been released and fully adopted by the IPO Board.

IPO’s proposed a particular statutory amendment that would limit the eligibility question to whether “the claimed invention as a whole, as understood by [PHOSITA], exists in nature independently of and prior to any human activity, or exists solely in the human mind.”  The proposal would seemingly flip the outcomes Alice, Mayo, and Bilski, although it is unclear to me how the statute treats a situation where a covered embodiment could exist solely in the human mind, but the invention as a whole also contemplates out-of-mind activities.  The proposal specifically states that eligibility “is not impacted by . . . the claimed invention’s inventive concept.”  Rather, the focus is solely on whether the claim-as-a-whole (1) “already exists in nature independently of and prior to any human activity” or (2) “exists solely in the human mind.”   The proposed amendment further spells out that the entitlement to a patent is subject “only” to the limitations found in the Patent Statute.

 

IPO Proposed Amendment:

 

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 tothereof, may obtain a patent for a claimed invention thereof therefor, subject only to the exceptions, conditions, and requirements set forth in this Titleof 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.

There are many important paths of discussion stemming from this proposal.  One is that proposal’s focus would remove subject matter eligibility from the courts policy-toolkit and instead make the doctrine fully a creature of statute.  Although not required for its proposed change, the Board also proposed eliminating the word “new” from the requirements of Section 101 — further elimination of the requirement that the individual claiming to be the inventor actually invented.  The proposal includes several further subtle (and not-so-subtle) changes including “entitlement” to a patent of your claimed invention; express separation of 101 analysis from “the requirements or conditions of sections 102, 103, and 112;” statement that eligibility is not impacted by “the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.”  It is also unclear what becomes of the utility doctrine.

More to come on this.

 

About Dennis Crouch

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

289 thoughts on “IPO Steps Up: Proposes Statute to Overturn Mayo and Alice

  1. Dennis, why is my reply from yesterday afternoon at 16.1.2.2 still “awaiting moderation”? No big deal, just wondering why some comments get stuck in your spam filter.

    Reply
    1. They never get through moderation. Except maybe if you email D to get it released.

      Usually it’s easier to copy/paste it and post it again without whatever trip word you accidentally used.

      Reply
      1. Why are there trip words, when ad hominem attacks are common? It seems a bit ludicrous.

        Reply
        1. I’ve personally provided direct suggestions several times now for the blight that plagues this site.

          Yet those chasing windmills will refuse to stop chasing them.

          The lack of inte11ectual honesty will remain until (unless) that is directly dealt with.

          Reply
        2. Why are there trip words

          To keep unclever @-h0les from posting comments.

          The one “trip word” that I always forget is b o r i n g. The difficulty is that the word shows up in longer words.

          Reply
        3. I think originally it just came with the software to prevent spam etc. iirc. But I can’t remember. He does seem to have the ability to add words to the list though or else the software does it from time to time.

          I never liked it myself.

          Reply
  2. Hey Dennis, David Boundy says that you could always patent new data.

    Is that true?

    I mean, he’s an intellectual titan and a s00per d00per serious person so he must know what he’s talking about. I guess I’m kinda surprised that this fact about the eligibility of “new data” or “new information” wasn’t put front and center before the Supreme Court in Prometheus v. Mayo.

    Also, nobody ever told me about this time-honored “I claim new information, wherein said new information comprises” style of claim drafting when I took the patent bar. Maybe I should ask PLI for my money back.

    Anyway, I was kinda hoping you could address but I know that politically it’s a really thorny issue. After all, the American public is really pressing hard for laws that put more and more useful published information in private hands where we all have to pay for it (or live in fear of being hauled into Federal Court) if we want to store it on our computers or communicate it to people. You know how it is …

    Reply
    1. “Style of claim drafting”…

      From the guy that repeatedly wants to make one optional form of claim into somehow being a de facto legal requirement….

      Stultifying.

      Reply
      1. “I claim new information, wherein said new information comprises”

        Is this an eligible claim in the US? Was it ever? If so, when?

        How many such claims were obtained and successfully enforced (they would appear to be among the easiest types to obtain so there should be tons of them)?

        If not, why not? If there were reasons for denying such claims, do those reasons disappear when a scrivener who is trying to avoid the law tosses any old useful non-mental step into the claim?

        Just some simple questions that would seem somewhat germane to the viability of this absurd proposal.

        Reply
        1. The blight runs rampant, and my opinion of that blight is c3ns0red.

          Yay “ecosystem.”

          Reply
    2. MM, I’d appreciate not being misquoted. It’s a form of dishonesty. Any fool can misquote someone and start a disagreement with the misquotation. And only fools do it more than once.

      Reply
      1. David Boundy: “New data” has not been barred since time immemorial

        Me: David Boundy says that you could always patent new data.

        Seems like a pretty accurate summation of your assertion, David. Maybe the first quote was from the “other” David Boundy?

        Here’s my advice to you, David, if you want to be taken seriously: address the issues and stop trying to kick up dust. We’re not all so easily f0oled. Some of us have been paying attention to this farce for a long, long, long time and we’ve seen every obfuscatory strategy in the book.

        The fact that neither you nor Underweiser nor Sachs (and you’re not alone) appear capable of articulating the facts that were before the court in Prometheus v. Mayo pretty much says it all.

        Rewriting the patent statute so that “new” data (aka “information” aka “a signal with meaning abstracted over it”) can be protected in prior art contexts is just not going to fly. But that is transparently exactly what is being attempted here. If that’s not the case, then it’s beyond bizarre that more effort hasn’t been taken to demonstrate that such a thing could never happen under the revision.

        But of course it is the case.

        Here’s the deal and I’ve been saying this for years: if the s 0 fti e w 0f tie crowd wants to protect their junk with some kind of patent, then start from scratch and come up with a workable politically tenable model. Stop corroding the system with backhanded attempts to bring the worst junk back in.

        We’ve been watching these backhanded efforts. They’re silly. We’ve been watching for a long time. And there is no way we’re going to let them happen. Educating the public about these issues isn’t difficult, after all. It takes way more legal “skill” to successfully paper over the issues and try to hide them. And you don’t have that kind of skill, David. Nor does Underweiser or Sachs. Nobody does.

        [shrugs]

        Reply
        1. If you don’t know yet, Dave, Malcolm is celebrating his eleven year anniversary this month of the type of posting that unsettles you.

          (Yes, that’s a documented fact, courtesy of the last blog thread devoted towards having a “nice ecosystem.”

          Reply
          1. “anon” is right.

            I have been here a long time.

            Since that time the Supreme Court has unanimously affirmed a very fundamental proposition that “anon” and his cohorts have never stopped denying and never stopped trying to obfuscate over: you can not accurately and reasonable assess the eligibility of a claimed “innovation” unless you understand the relationship of the claim elements to the prior art.

            This is an irrebuttable logical proposition. You can use different words to describe “eligibility” (e.g., “permissible inventive step”) and you can tweak the test at the margins but there’s no way around this proposition unless you want to kick all eligibility considerations to the curb. The reason this is the case is because any other scenario turns eligibility into a trivial scrivener’s pursuit.

            Pretty much everybody understands this. But certain people refuse to talk about it. And we all know why.

            Reply
            1. Oh, I forgot to mention: the Supreme Court has affirmed this simple proposition unanimously, at least twice.

              Reply
              1. LOL – again, you are celebrating “Ends” while it is the Means that is being directly criticized in the immediate sub-thread.

                No wonder you cannot stop your blight – you are just too full (or f001) of yourself.

                Reply
            2. Why is it that scriveners who are patent attorneys are so despised, but the attorneys who write unreadable EULA’s and M&A contracts and mortgage bonds are treated like heroes?

              Reply
              1. the attorneys who write unreadable EULA’s and M&A contracts and mortgage bonds are treated like heroes?

                They’re not treated like heroes by me, nor by anyone else that I have ever met.

                Reply
    3. MM, methinks that an ounce of education by those involved in this effort would prevent a pound of cure.

      Reply
      1. Ned, we can all be 100% certain that dozens, if not scores, of personal, face-to-face (or at least one-on-on)e efforts have been made to educate these people regarding the basics.

        They aren’t interested. This is just another mindless attempt to turn the clock back to State Street and ignite another phase of ins@ne exponential growth into the system. They don’t care what happens after that because by the time the cwaziness becomes unbearable (again) they’ll have pocketed a few million more easy bucks from their “store/display new information” and “correlate this” patents.

        Reply
  3. Oh, good grief.

    All this hand waving, dust kicking, consternation, and arguing is unnecessary.

    Just excise the 101 cancer completely … and our dying American innovation / jobs patient is cured.

    Reply
    1. Just excise the 101 cancer completely … and our dying American innovation / jobs patient is cured.

      Sure. And let’s get rid of 103, too. Even more jobs and innovation! Patents for everyone who can write a sentence describing something “new” about someone else or their property.

      Then let’s hand out law degrees to everyone, also. We all sit and home and litigate every day and the winnings are determined by robots according to the rules (aka “data structures!”) written by yesterday’s winners.

      Very very deep stuff. Not comic book. More like graphic novel.

      Reply
    2. Indepedent Inventor, “excise the 101 cancer….”

      You are either a deep thinker or a KoolAid drinker.

      1o1 in its current form has been with us substantially since 1793. Written by Thomas Jefferson himself, it is the foundational statute of the strongest and best patent system in the world.

      Jefferson was trying to do was to capture the English idea of “manufacture,” an adding the know extensions added by the courts of England. Thus we have machines and then compositions as well as manufacture. But compositions had to be new.

      Arts were ways of making manufactures as opposed to the manufactures themselves.

      Nothing at all remarkable here. Fundamentally correct because the statute as stood the test of time.

      We do not repeal and replace things as venerable as 101, just as we do not repeal and replace the Declaration of Independence or the Constitution and the Bill of Rights. The only people who talk like that wear black ninja outfits and carry the red and black banner.

      Or people like IBM’s patent counsel and those in his enthrall.

      Beware of radicals. These same folk brought us the AIA and IPRs.

      Reply
      1. 35 USC 100(b).

        Ned, you are knowingly and purposefully misrepresenting controlling law in your effort to negate what happened -by Congress – in 1952 and your retrograde effort to turn process into a mere sub-statutory category and hand-maiden of the hard goods categories.

        Desist from such in ethical treatment of the law – you would surely be sanctioned if you tried that B$ line in court.

        Reply
  4. DC I would like to see someone add the printed matter restriction into the provision in a way that still allows for software patents.

    This is about as nakedly political as Dennis ever gets so it seems worth pressing just a tiny bit to see how deeply he’s thought through this stuff. 😉

    Dennis, could you take a few minutes and explain to everyone

    (1) what subject matter does the so-called “printed matter restriction” actually “restrict” out of the patent system?

    (2) with respect to (1), what is the legal basis for the “restriction”? What’s the underlying principle (assuming that there is one)?

    (3) what is your definition of “a software patent”? are you suggesting that all such patents that protect any “software” should be automatically eligible because “software”? If not, then can you distinguish between those that are automatically eligible and those that aren’t?

    (4) Should “software” that applies a pre-determined (i.e., described in the spec) but non-obvious legal argument to a set of input facts be eligible for patenting? And why (or why not)?

    These are incredibly basic and fundamental questions. Either you address them seriously or you can’t really be taken seriously.

    Reply
    1. These are incredibly basic and fundamental questions. Either you address them seriously or you can’t really be taken seriously.

      The Accuse Others is stultifying…

      Reply
      1. Nobody really cares about your stultification, “anon.”

        If you’re suggesting that Dennis should not have to explain his understanding of the legal terms he employed when he wrote “I would like to see someone add the printed matter restriction into the provision in a way that still allows for software patents”, that is also is not surprising. But it would be unfortunate, I think, for Dennis to start adopting your bad habits.

        But I woudn’t blame Dennis for doing so. It’s really easy to come out and say, e.g., “Writing instructions for carrying out logic in response to input data should totally be a patentable process because it makes my friends happy!” It’s a tad lot harder to defend that statement using the law and reason. That’s why we have ba l0ney like “the essence of electronic structure” pr 0pping up the farce.

        Reply
        1. Yet more Accuse Others, even as I have referenced the very easy to understand Set Theory explication (from which you ran from, again and again and again and…

          Reply
    2. Great discussion in this very complex issue. These are rambling thoughts:

      The constitutional framework requires invention/discovery and may also include some amount of subject-matter exclusions wrapped up in the constitutional invention/discovery framework. The Constitution also empowers Congress to create the system and in that situation the Supreme Court may give some leeway in interpreting what is needed. I can’t see any way that the Supreme Court would say “issuing patents on software is unconstitutional.” As an aside, I see the “discovery” element of the constitution as written in the age-of-discovery. Discovery then is different from discovery today because it requires steps of claiming possession that inherently change the underlying natural world.

      But, what is a software invention? There are many many types. There are some new algorithms and data structures. Some new processes are very data specific such as “if the buyer is in zipcode 65333 charge 5.4% sales tax.” There are also the actual folks drafting workable software code – a process that sometimes involves inventing; etc. Many of these ‘ideas’ won’t rise to the level of patentable invention because they will be obvious based upon the prior art. One nice thing about 101 is that it has been working as a instant easy and cheap veto button. I am concerned (as many are) that this instant-out is being accomplished without evidence and without much of any real structure.

      Stepping back, I view software development and innovation as both economically and socially beneficial activities that can be encouraged though the use of intellectual property. Of course, currently software developers get a bit of patent, a bit of copyright, a bit of trade secrecy, etc., but none of them are solid forms of protection that work across the board. This is one reason why I favor an USIPO (US Intellectual Property Office) that sweeps-in copyright law into the agency’s domain.

      Of course, having effective intellectual property rights does not necessarily mean patent rights. However, a major limitation of the copyright regime is that it covers only the actual code written and not the algorithm or the invention abstracted at any level. Patent rights are helpful in that regard and allow for inventors to invent and coders to code. The general policy questions are the same for all areas of IP (1) whether the system is actually encouraging invention (or just rent seeking); and (2) whether the creation of rights overly gums-up the system (anti-commons problem). These empirical questions are difficult to pin-down and depend upon the current marketplace.

      In the back ground of all of this is the large number of low quality patent that have issued and continue to issue. That problem makes everyone look for a quick and easy solution – such as the 101 shortcut.

      The fixation requirement in copyright is meaningful and important (although its boundary is questionable). For patents, I also think it is meaningful to at least require physicality in the invention in some manner even if only to avoid the philosophical and evidentiary debates. That said, I don’t think software should become patentable simply because it is written down. Rather, the question is might be framed as whether its claimed impact on a computer is a new and useful invention.

      Reply
      1. I missed the part where you discuss the printed matter doctrine, which is kind of key to understanding your earlier assertion which I quoted. And the rest is higher level conceptual stuff upon which everyone mostly agrees (but rather well-written).

        This gets a bit closer to the heart of the matter:

        a major limitation of the copyright regime is that it covers only the actual code written and not the algorithm or the invention abstracted at any level.

        Note that for a specific existing operating system (i.e., the specific system which defines what its instructions look like) it’s the “actual code” which “actually works.” This seems like a reasonable limitation.

        Patent rights are helpful in that regard and allow for inventors to invent and coders to code.

        The problem with software patents arises because “the inventors” don’t allow the coders to code without fear of liability. That’s because the so-called “layers of abstraction” are infinitesimally thin when we’re describing logic that describes instructions for carrying out …. logic. And nobody at the PTO — or on planet Earth, as far as I know — has come up with a coherent workable system for articulating when an elementary logical step in a logical process in a particular inherently logical context (e.g., existing logic executing machines) is “non obvious.”

        That’s why it’s incredibly easy to talk about a sane working patent system for protecting “new” logic in the abstract but incredibly difficult (if not impossible) to discuss a practical sensible logic-protecting system in a way that satisfies people who insist that they are entitled to incredibly broad patent rights without providing even one working embodiment of their alleged “invention.”

        Just getting to a (frankly untenable) compromise point where “maybe limiting logic patents to new logic that improves the data processing ability of computers generally, and requiring some evidence of that improvement in the spec” is on the table has been a ridiculously difficult task. And as we can see, a large subset of the maximalists are deeply opposed to even that scenario and would rather implode the entire system than give one inch or even discuss it.

        So the farce continues. And it will continue right up until the point when POOF it’s over. And you know what will happen to progress in logic then? Nothing.

        Reply
        1. You got it, MM. Do it on a computer types generally are not inventing software and have never developed code to implement their systems.

          State Street Bank was a fricken disaster to everyone but the patent attorneys who cleaned up.

          Reply
      2. Interesting to see your thoughts Dennis, but you seem to be holding some mutually exclusive notions. You close with ” claimed impact on a computer” as a test for new and useful invention, yet clearly software is designed to run on computers and new, useful, non-obvious, and fully described software inventions can simply run, as designed, on a computer, without regard to any “impact” to the computer.

        When you ask “what is a software invention” ? There are several levels, but at the basic level, it is a set of instructions, and instructions are information. That’s why the focus on “software” is misplaced. To me, the species causing the trouble are “information inventions”, which are not limited to software. Your notion of a physicality requirement can’t be reasonably tied to information inventions without doing backflips.

        I have yet to encounter a reasoned argument against my contention that the focus on form of the utility of an information invention is the key to cutting the Gordian Knot. Human use of information v. machine use goes directly to the physicality factor, but also fairness in adjudication, protection of human freedoms of expression/association/culture, and sheer practicality in examination and litigation.

        Software is written at every scale, by every kind of person, in every kind of situation, for every purpose. Imagine having to search the world’s literature before obtaining a copyright. It could never be done reliably, just as searching the world’s software will never be feasible, and merely searching patents could only cover the tiny fraction of the world’s software that was patented. Non-human use of software must be done in conjunction with other goals and other elements, which radically shrinks and bounds the universe to be searched. Where information or information processing methods carry no meaning or “content” intelligible to human beings, physicality is inherent. Copyright is how we protect information with meaning to people, and for good reason.

        Reply
        1. Software is defined to be a machine conponent.

          Show me someone who thinks that software is not a machine component and I will show you someone who does not understand what software is.

          Reply
          1. Show one single authority for that proposition. A case, or a dictionary, or anything but your own fevered imagination.

            Meanwhile, copyright protection for software seems to be the form that is actually working, just looking at blockbuster cases.

            Your child-like insistence that expression can be cleanly separated from utility notwithstanding.

            Reply
            1. Your lack of understanding what the copyright cases mean only adds to the confirmation that this law thing is just not your baillywick.

              Reply
            2. “Show one single authority for that proposition.”

              Anon defined it that way lol. His purpose is totally not self-serving either!

              Reply
              1. Les,

                That’s a poor example because those whose Windmill Chase requires them to be ig norant will only confuse themselves (and attempt to confuse others) by jumping to the non-Useful Arts aspect (music as one of the Fine Arts).

                However, the patent doctrine of inherency can be pointed out as something to rely upon in that example (and in any example for which software – as a component – has not been added to a machine and the machine changed by being configured to run that software.

                But getting the usual suspects to actually have a dialogue in grounded patent doctrines just won’t happen.

                That’s the “ecosystem” for you.

                Reply
                1. “and the machine changed by being configured to run that software.”

                  Everytime anon types a word into the comment box on PO and presses “post” he thinks he made a whole new compooter.

                2. You haven’t paid attention (at all) to the Simple Set Theory explication and the required “functionally related” aspect, 6, otherwise your rather meaningless retort would not have been posted.

                  Get up to speed, son.

                3. Its a machine. Its a perfect example.

                  Ya know how I know its a perfect example? The people I was talking to didn’t answer.

                  The music is insignificant post solution activity. The fingers could just as easily be for activating/deactivating different aspects of an assembly line.

          2. Software is instructions, including instructions that aren’t executable.

            Maybe you mean a “process” as in a process allocated executable code, memory, and maybe some other resources?

            Patent lawyers created the concept of a passive process that only exists in the patent world, e.g., “instructions stored on a memory that upon execution by a computer processor are configured to enable the computer processor to perform the steps of” – or some form thereof

            Reply
            1. Most definitely do not mean a process.

              A process may be software in execution, but make no mistake, software is nothing more – and nothing less – than a machine component.

              Reply
                1. Careful with those terms of art – some will purposefully misuse them and take them NOT as understood by a Person Having Ordinary Skill In The Art – as is REQUIRED in any inte11ectually honest dialogue.

                2. terms of art

                  LOLOLOLOLOLOLOLOLOLOLOLOLOLOL

                  Person Having Ordinary Skill In The Art

                  Right, the same people who recognizes that software is instructions that control what logic an instructable computer is going to carry out.

                  Why do we instruct instructable computers to carry out logical data processing tasks for us?

                  Because, depending on the specifics, it’s faster and/or cheaper and/or more accurate than instructing a person to do it. That’s been true for a long, long, long, long, long time.

                  Eventually even the PTO will figure that out. Maybe David Boundy will force them to figure it out. HAHAHAHAHAHAHAHA. As if.

      3. Dennis, we should not confuse software inventions that advance the computer arts with inventions that do not but that only claim “do it on a computer.”

        The cases are all going in this direction now. We need do nothing to fix anything now as the direction is the correct direction.

        Reply
      4. “But, what is a software invention? There are many many types. There are some new algorithms and data structures.”

        Sounds an awful lot like tipitytapping into Notepad/Word/other text editor to me. I’m just not sure I can ever be on board with calling such a thing “an invention”. It defies the very foundations of what an invention is. I understand why people want it to be. I understand the similarities between the two things. I understand why there may be sound policy for an entitlement program like the patent entitlement program in the software tipitytapping space. But I will never, in this life, see the two as the same thing. Or as one being a genus for the other. One is authorship, the other is inventorship. Never the two shall meet.

        Reply
      5. “In the back ground of all of this is the large number of low quality patent that have issued and continue to issue. That problem makes everyone look for a quick and easy solution – such as the 101 shortcut.

        The fixation requirement in copyright is meaningful and important (although its boundary is questionable). For patents, I also think it is meaningful to at least require physicality in the invention in some manner even if only to avoid the philosophical and evidentiary debates. That said, I don’t think software should become patentable simply because it is written down. Rather, the question is might be framed as whether its claimed impact on a computer is a new and useful invention.”

        What you appear to be saying is that the patentee should not be granted a patent if they have failed to provide in the patentee’s application “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”

        In other words, you are saying that a patentee should not obtain a patent if they fail to comply with 35 USC 112(a).

        I agree.

        The Supreme Court in Bilski and Alice never explain why 35 USC 102, 35 USC 103 and 35 USC 112 are not sufficient to handle each and every “patent eligibility problem” with the claims identified by the Supreme Court in these cases.

        If you want higher quality patents that include better disclosures of the invention, then it seems to me the discussion should be focused on 35 USC 112, which on it face actually addresses what is (or is not) disclosed in a proper patent application, rather than 35 USC 101 that does not do so on its face.

        Reply
        1. If you want higher quality patents that include better disclosures of the invention, then it seems to me the discussion should be focused on 35 USC 112, which on it face actually addresses what is (or is not) disclosed in a proper patent application, rather than 35 USC 101 that does not do so on its face.

          Yes, yes, and a thousand times “yes.” This is exactly correct.

          Reply
  5. I would expect any constitutional challenges to expansion of subject matter eligibility to fall flat in the same way that they did in the copyright cases of Eldred and Golan v. Holder. The court might first ask whether the legislative change fits within the ““traditional contours of patent law.” Here, the proposal still seemingly requires an “invention or discovery” and also has limits to the eligibility doctrine that, although different and narrower from what the court recently decided, still follow the traditional contours.

    Reply
    1. Dennis, I disagree. The discovery of some that is not new is not an invention and never has been. This is a fundamental change.

      Products of nature discovered are not inventions.
      Laws of nature discovered are not inventions.
      Piracy of inventions of others, not publicly known, are not inventions.

      The issue is not so much as whether this or that policy advances the useful arts, but whether one can grant patents to people who do not invent anything. Invention requires the inventor to create something new: a new manufacture, composition, Art or process or machine (or an improvement thereof.)

      As well, the proposal clearly is intended to reinstate State Street Bank.

      Invention is a requirement of the Constitution. Eliminating the requirement for newness independent of whether something is publicly known or not is blatantly unconstitutional.

      Reply
      1. Invention is a requirement of the Constitution. Eliminating the requirement for newness independent of whether something is publicly known or not is blatantly unconstitutional.

        Hm, I quibble with this.

        First, although the constitution speaks only of “inventors” (not “discoverers”), the thing that the “inventors” are allowed to patent are their “discoveries.” Therefore, it is not nearly so clear as you contend that patents for pre-existing materials newly discovered go beyond the constitutional power conveyed by the IP clause.

        Second, even if the IP clause does not reach to letters patent for discoveries of pre-existing natural materials, a law saying “only Mr. X may sell item K” is very much a regulation of commerce. Therefore, Congress’ commerce clause powers reach to the issuing of letters patent for things that are only “discovered,” not “invented.”

        Reply
        1. “Only Mr. X may sell item K”, without further justification, is a Bill of Attainder and a definitive Constitutional problem.

          Reply
          1. You are, of course, correct. If they really phrased it just like I proposed, that would be an illegal bill of attainder. I hope it was clear enough, however, that what I was getting at is that if one took the exact patent law we have presently, and expanded it to cover also products of nature and software for use on a general purpose computer, that the resulting scheme could be supported as a regulation of interstate commerce (just like the Lanham ACt), even if it could (hypothetically) not be supported under the IP clause.

            In other words, all of this talk of various patents being “unconstitutional” is over hasty. At most, the proposed revisions would be unsupportable by the IP clause, not “unconstitutional” full stop.

            Reply
            1. Greg there are several ways (at least) in which an overly-restrictive patent law can be a Constitutional infirmity. A patent law which purports to restrict new and useful arguments would run against freedom of speech. A patent law that would restrict the ability of people to associate as they wished (perhaps “methods” of gathering or sharing ideas) would be an obvious problem.

              And in my opinion, a patent law that provides trade monopolies for mere observations or ideas rather than inventions amounts to an uncompensated taking from putative infringers. A patent law that grants patents as political spoils would be a due-process or equality of the laws problem etc. etc.

              Reply
              1. [T]here are several ways… in which an overly-restrictive patent law can be a Constitutional infirmity. A patent law which purports to restrict new and useful arguments would run against freedom of speech.

                Sure. I can happily go this far with you. The First Amendment imposes limitations on how much the Congress can allow to be patented. I do not see that this observation is really implicated in the point I am arguing, however.

                [A] patent law that provides trade monopolies for mere observations or ideas rather than inventions amounts to an uncompensated taking from putative infringers.

                How so? If you mean that the Congress cannot pass a patent act without a novelty/obviousness requirement, lest that be a taking, I can agree. If we are imagining merely a change to §101, but not §§ 102 or 103, however, then I do not follow. These observations or ideas* are, ex hypothesi, new to the art. How can there be a “taking,” from someone who never had the thing in the first place until the inventor gave it to her?

                * Just because I consent to use your terminology to discuss your proposed hypothetical, please do not imagine that I concede the validity of this framing. I am very skeptical that a meaningful distinction can be drawn between “observations” and “ideas” on the one hand and real “inventions” on the other. If an “observation” or “idea” satisfies all the other statutory requirements (useful, novel, and nonobvious), I am going to be hard pressed to concede that it is anything other than an “invention.”

                Reply
                1. Idea: We can get valuable minerals from asteroids

                  Observation: asteroid X has valuable minerals

                  Claim 1: A means of spaceflight is configured to fly to asteroid X, where a means to mine minerals is deployed, and a means to load said minerals to said means of spaceflight where said minerals are returned to Earth.

                  It would be unconstitutional to prevent anyone from flying to asteroid X based on that claim, even if the fact that asteroid X had the minerals was useful, not obvious and new information.

                2. It would be unconstitutional to prevent anyone from flying to asteroid X based on that claim, even if the fact that asteroid X had the minerals was useful, not obvious and new information.

                  Of course it would be unconstitutional to prevent someone from merely flying there. Merely to fly there does not practice the claimed invention, so there would be no legally supportable basis to stop them from merely flying there. I am unconvinced, however, that it would be at all unconstitutional to enforce the claim against them if they returned to the U.S. bearing minerals from asteroid X after practicing all steps of the claimed method.

                3. It occurs to me that I should confirm that asteroid X is located within a range that we are able to go there and come back with existing technology? If not, then I suppose that the claim is not enabled, and would thus fail for that reason.

                4. If it were enabled by existing technology, the inventor did not have the invention in hand. If it were not enabled by conventional technology, but at some point within the patent term became enabled, the taking would be unconstitutional.

                  Also, in my hypo I meant someone flying there, getting the minerals, and bringing them back.

                  The “method” disclosed is a wish, it is not a disclosure that anyone could use to accomplish the goal nor would they need the disclosure in order to accomplish it, once they knew that asteroid x had the minerals.

                  Can you patent “there is gold in them thar hills”?

                5. Can you patent “there is gold in them thar hills”?

                  Yes, provided (1) that there really is gold there and (2) you disclose and claim with sufficient specificity.

        2. Well, Greg, and we have had this discussion before, is an invention? It is not a discovery, because even though one can discover a principal, that is not an invention until it is reduced to a practical application that advances the useful arts.

          With regard to products of nature, it would be odd for the founders to allow the patenting of subject matter in the public domain on the rubic that someone discovered it because the whole point of limiting patents to inventions was to prevent the patenting of subject matter in the public domain.

          The inventor had to create a manufacture, make something new.

          Reply
          1. Let’s say you discover a chemical in a plant has a certain function in a human. You did not “manufacture” the chemical, you discovered the chemical has a function in a human. (Such a function was never known before.) It’s a discovery, simply that. Can you patent the chemical for application to the human to cause the function in the human?

            Reply
            1. Absolutely.

              A method for treating a disease in an individual in need thereof comprising administering a therapeutically effective amount of a “chemical.”

              One has “discovered” the property of the chemical’s effect in humans and have reduced such a discovery to the practical application of treating a disease (or some other useful, novel, and non-obvious application).

              Reply
            2. PatentBob, since the claim is limited to the use of the chemical to do something useful in a human, the claim is not on the chemical, but on the use.

              Reply
          2. Well, Greg, and we have had this discussion before…

            I dare say we have. With notably rare exceptions, no differences of opinion ever get settled around here. We just rehash the same points over and over again.

            The thing is, I enjoy treading the same ground over and again with you. You are good company, even across the vast distance of internet space. If I had a cup in my hand, I would tip it to you right now.

            Meanwhile, of course, wherever we agree I think you are a genius, and wherever we disagree you could not be more wrong… 😉

            Reply
            1. Greg, same here — but if I disagree with you, I think about what you said before I react because you just might be right.

              Reply
              1. Biggest laugh of the day:

                , I think about what you said before I react because you just might be right

                Since Ned inadvertently coined the phrase “6 is a genius’ (when 6 was off the wall, but happened to agree with Ned) – there is clear evidence to the opposite of what you state here, Ned.

                Reply
      2. Ned —

        Are you reading carefully?

        Of your “products of nature” and “laws of nature” hypos, neither “exist in nature independently of and prior to any human activity.” Thus both are expressly ineligible under IPO’s § 101(b). Likewise, both are not new under § 102.

        Your “Piracy of inventions of others” fails under “Whoever invents or discovers” of time-immemorial § 101(a).

        With the three exceptions (c) (d) and (e) I note in my long posts 7 and 7.1 below, the IPO language seems just about exactly right to put the law of subject matter back where Diehr and Alappat put it, before Bilski broke it. The goal is that the law of “utility,” “novelty,” and all the rest stay put exactly where they are. Even without the changes I recommend, I still don’t see changes that would create the collateral damage you suggest.

        Finally, did you notice that there’s no suggestion to repeal § 102, but rather, there’s a reinforcement of it, “subject to the exceptions, conditions, and requirements set forth in this Title?” Why are you asking “Eliminating the requirement for newness”? Give a specific fact pattern that’s barred under time-immemorial § 101 with “new” but not barred by the combination of IPO’s § 101(a) with AIA § 102.

        Why is State Street wrong? I agree, I would not want that claim to be eligible under a “broadest reasonable interpretation,” but in the post-issue context it arose, it seems right to me. Can you explain why this bothers you?

        Can you please look carefully at the language, and either explain your view in light of specific language, or else… Well, there are others here that don’t command much attention.

        Reply
        1. Give a specific fact pattern that’s barred under time-immemorial § 101 with “new” but not barred by the combination of IPO’s § 101(a) with AIA § 102.

          LOL

          Like patenting instructions written on a medium?

          LOLOLOLOLOLOLOLOLOLOL

          Patenting a process of drinking a coke and then performing a useful logical exercise in your brain? (new logic exercises being barred since time immemorial).

          Patenting an old data storage and retrieval machine, wherein said machine comprises some new data (“new data” being barred since time immemorial).

          Those fact patterns are well known to everyone David. I outlined them for the zillionth time in comment 18. How convenient that you’d forget them. And how unsurprising.

          The revision is a j0ke. The IPO is a j0ke. The people who wrote these revisions are self-dealers who couldn’t argue their way out of a paper bag.

          Reply
          1. MM, when I mentioned “there are others here that don’t command much attention” I had you in mind. I almost never read anything written by those whose history displays no observable sentient thought. But even a stopped clock is right twice a day. This is apparently that time.

            Patenting a process of drinking a coke and then performing a useful logical exercise in your brain? (new logic exercises being barred since time immemorial).

            I guess you’re correct here. This would be eligible. But would it pass all other statutory considerations? Every one of these “two unrelated things glued together” claims I’ve ever seen fails on § 102 anticipation — both halves are old, and with no interconnection, the claim fails with Coke in Cincinatti and “useful thought” in Cleveland.

            Patenting an old data storage and retrieval machine, wherein said machine comprises some new data (“new data” being barred since time immemorial).

            At least in the “real” cases of a genuine claim to a genuine computer-implemented invention, that was eligible in the pre-Bilksi machine or transformation days, is often ineligible in the dark days of Mayo/Alice, and that’s exactly the kind of situation that the IPO proposal is designed to fix.

            “New data” has not been barred since time immemorial, MM. The claim taken as a whole was eligible (pre-Bilski) as a “machine … or improvement thereof.” I think you know better.

            Reply
            1. Patenting a process of drinking a coke and then performing a useful logical exercise in your brain? (new logic exercises being barred since time immemorial).</b.

              I guess you’re correct here. This would be eligible.

              Don’t concede too much too soon. What is the utility of this claimed method? I would not concede that this is eligible, because it lacks utility.

              Reply
              1. Bother. I failed to close my bold. I suppose you can see how I meant to format it. I hope that is clear enough.

                Reply
                1. Exactly my point. As I said —

                  This would be eligible. But would it pass all other statutory considerations?

                  So far I have not seen a counterexample — everything that is currently (erroneously) being caught in the Mayo/Alice erroneous interpretation of § 101 would still get caught in other statutory nets, if the IPO amendment to § 101 (fixed as I propose in notes 7 and 7.1 below) is adopted.

                2. Fair enough, but you talk about §102. My point is that we do not need even to get to §102 (although I agree it would fail there as well). The drink-coke-and-think-thoughts claims should fail under §101 as lacking substantial utility.

                3. everything that is currently (erroneously) being caught in the Mayo/Alice erroneous interpretation of § 101 would still get caught in other statutory nets

                  Of course, Prometheus’ claims were also painfully obvious but they sailed right through the PTO.

                  But whatever! David says it’s not a problem and he’s a very very serious person.

                4. The Ends and the Means, Malcolm…

                  (You are regressing to your “whatever” mode as long as the Ends are achieved as you feel they should be / that’s not law.)

                1. Thinking thoughts is not “useful” in the §101 sense of the word.

                  By useful invention, is meant an invention which may be applied to a beneficial use in society, in contradistinction to an invention in-jurious to the morals, health, or good order of society, or frivolous and insignificant.

                  Bedford v. Hunt, 3 F. 37 (C.C.D. Mass.) (Story, J.) (cited with approval in Brenner v. Manson, 383 U.S. 519, 533 n.20 (1966))

                2. I really don’t see why a mental process couldn’t be useful to society. But setting that aside, do you think claims to mental steps (exclusively) are per se ineligible?

                3. Yes, I think that claims to purely mental operations are ineligible because they are not “useful.” The statute requires utility, so a claim lacking utility is not patentable.

                4. Look at Brenner v Manson, 383 U.S. 519 (1966). I am as certain as a person can be that if the Court were presented with the question, the Court would conclude that thought (standing alone) fails “utility.”

                5. DB thought (standing alone) fails “utility.”

                  Okay, some “rogue” “judicial activist” Justices came up with that and therefore we just have to accept it, which is totally different from the 9-0 decisions addressing very similar issues that David Boundy doesn’t like.

                  Two questions:

                  (1) why not overturn Brennan by rewriting the statute? Is there some problem with doing that directly and expressly versus the underhanded way that Underweiser and Sachs are going about it?

                  (2) if the claim recites a useful non-mental old data gathering step, then Brennan doesn’t apply. But if the only other step in that claim is new mental step, then — under this “revised” statute — the patent is protecting the “non-useful” “innovation” in that old context. That’s the Mayo issue.

                  Something is very wrong with your analysis, David. Let me know if I have to spell it for you a hundred different times. Again.

                6. Once, Malcolm, in a completely and inte11ectually honest manner would suffice.

                  But in all of your eleven years, such just happens so very rarely (and never on particular topics), as to be a nullity.

                  Perhaps this next 11 years might be different….

                  (I won’t be holding my breath)

                7. Greg, “Yes, I think that claims to purely mental operations are ineligible because they are not “useful.” The statute requires utility, so a claim lacking utility is not patentable.”

                  Could it also be that such claims are not claims to Arts or processes as those terms were understood in 1790?

                  It was well understood in 1790 that we were effectively copying the English system. Even though the Statute of Monopolies had limited patents to new manufactures, the English courts had interpreted the statute to allow patents on new Arts which were effectively ways of making manufactures.

                  A mental step process is not a way of making anything.

                8. Once again Ned – the “arts or processes” is controlled under the 1952 Act.

                  Specifically, 35 USC 100(b) – to which, you knowingly refuse to give proper credit to understanding of this law passed by Congress.

              2. Greg: The drink-coke-and-think-thoughts claims should fail under §101 as lacking substantial utility.

                Two obvious points here:

                (1) So already we see the issues allegedly being “addressed” by the revisionists are just being shunted into another part of the statute where the case law is slim, vague, and incoherent. Great work, guys! Nobody could have seen that coming.

                (2) Having a “new” useful understanding in one’s mind can be quintessentially and enormously useful. There’s nothing “amoral or injurious or unhealthful or insignificant” about that. All you’re doing by arguing otherwise is telling a “just-so” story that handwaves a major and obvious problem with this “revision” away.

                Again: it’s not like people haven’t thought about these issues before. We’ve been thinking about them for DECADES. And we all saw what happens when you take your eye off the ball: disaster. And then you guys cry about the inevitable reforms that make the granted junk easier to eliminate and harder to enforce? Wow. That’s rich (if you’ll pardon the numerous levels of punning there).

                Reply
                1. You keep on saying “revision” when getting back to what Congress actually wrote and intended is what is the focal point here.

                  Your Accuse Others meme shines through – with zero effect.

            2. “Every one of these “two unrelated things glued together” claims I’ve ever seen fails on § 102 anticipation ”

              How dare you besmirch the most accessible form of innovation!?

              😉

              Reply
            3. Elaboration to set a quote in its context —

              “new data” that is stored in old data storage and retrieval machine with some functional relationship — that’s been patentable since Diehr until the law was upset by Bilski.

              Reply
              1. Malcolm has for a VERY long time now been quite unethical in his obfuscations concerning that “functional relationship” point.

                He volunteered an admission against his interests in a discussion with David Stein about knowing and understanding the exceptions to the judicial doctrine of printed matter.

                And yet, he ad infinitum and ad nauseum posts contradictions to his own stated admission.

                But that’s how he rolls.
                That’s how he has rolled for 11 years now.

                Reply
              2. Alappat is dead and it ain’t coming back.

                 I propose a compromisethat ISTM is workable and addresses the key concerns of both sides of this issue without giving either total victory. Such is the stuff of successful politics.

                Reply
                1. To the contrary, Mr. Snyder, Alappat very much remains controlling law.

                  Clenching your eyes tighter won’t change that.

                  Your offer for “compromise” is built on a foundation of shifting sands.

                  Such is the stuff of BAD politics.

                2. Sure. Clench your ears and listen to CAFC arguments. I do.

                  Every time some lawyer tries the “it’s a new machine” approach, if they aren’t snickered at directly, they are ignored or simply told it ain’t going to fly.

                  It’s dead. How’s that search for authority that software is a machine component going?

                  In my scheme, you would be half-right, which is 100% better than usual!

                3. “In object-oriented programming and distributed object technology, a component is a reusable program building block that can be combined with other components in the same or other computers in a distributed network to form an application. Examples of a component include: a single button in a graphical user interface, a small interest calculator, an interface to a database manager. Components can be deployed on different servers in a network and communicate with each other for needed services.

                  Sun Microsystems, whose JavaBeans application program interface defines how to create component, defines “a component model” as typically providing these major types of services:” – link to whatis.techtarget.com

                  See also:

                  link to businessdictionary.com

                4. Mr. Snyder,

                  Your scheme is untethered to law, the history of law and ht facts around which that history of law flow.

                  You first need to understand the terrain upon which you want to do battle.

                  You have not done that yet.

                  Start with understanding utility – and what that means.

              3. David, the distinction must be whether the functioning of the computer, its utility, is improved. Clearly improvements to data storage whether mechanical or by software improves the utility of the computer. I do not think that Bilski changed the law here at all.

                Reply
                1. Is it an “improvement” to the computer to give it a new function? For example, if we could go back in time, would it have been an “improvement to the computer” to give it the capability to transcribe dictation into text? Or is that merely “do it on a computer”?

                2. Embrace the (necessary) first step Ned that has repeatedly been put to you:

                  before you can just “use the computer,” you must first change the computer by configuring it to “just use” it.

                  Time (once again), for a little inte11ectual honesty from you.

                3. Well then Ned,

                  Assume we are back in time at a point when computers didn’t have the ability to perform hedging and Mr. Bilski figured our a way to give a computer that ability.

                  If getting a computer to take dictation is an eligible improvement to the computer, why isn’t getting a computer to hedge my commodity purchases?

                4. Utility is not just the narrow “functioning OF the computer” Ned.

                  35 USC 100(b) comes to mind – at the very least.

        2. David, if one can get a patent on a business method, clearly non statutory, by reciting the use of an old machine, then one is not patenting a new machine, but a business method limited to a particular use.

          People who are trying to remove “new” from 101 are trying to elevate form over substance, to reinstate State Street Bank, to overrule Benson and Flook and more.

          There is no need to add a special section on products or laws of nature as “new” already cover that.

          As to “whoever” invents or discovers, if the patent law permit the patenting of subject matter not a law or product of nature, with the only limitation that the subject matter not be publicly known or in use, then are we to deny him or her a patent if this so an so discovered the invention by reading the notebook of his fellows or by observing folk medicine in the jungles. Does not the concept of invention require the creating of something new? If so, why remove new from 101?

          The slight of hand being pulled here is subtle. But the once one knows that IBM favors patenting business methods and is in favor of State Street Bank, it all becomes clear.

          Reply
          1. Ned, you’re arguing like Donald Trump — claiming a result, but providing no underlying reasoning or means.

            Look carefully. Both Benson and Flook had claims with no hardware, both claims were capable of performance entirely in the human mind. Those two claims remain ineligible.

            The definition of the “law of nature” exception is necessary, because the existing statute–with “new” in it–is the problem, leading to Mayo and Myriad.

            I asked why the “Whoever invents” language is insufficient to catch the deriver you discuss. That language has been enough at least since the AIA, and isn’t changed here. You assert a conclusion, but provide no analysis.

            Ned, I can’t carry the conversation forward unilaterally. I won’t be replying further until I see some careful reading and genuine thought.

            Reply
            1. Neither David Boundy or Robert Sachs has any interest in “genuine thought” on this issue and they never have demonstrated any such interest.

              They’re interested in one thing: blowing the patent bubble back up so they grab the cash and shove it in their pockets as fast as possible. Nothing else matters.

              If anything else mattered, we’d see their concern reflected in their thinking about this subject. But it’s never there. You put the issues right under their noses and they simply dissemble. Every. Time.

              And we can all see it. Anybody can see it.

              Reply
                1. .Your feelings (as unconnected to anything else)

                  First of all, there’s tons of lawyers out there who are in perfect agreement with me.

                  Second, there’s way way way more non-lawyers who agree with me, once the simple issues are explained to them.

                  Third, these “feelings” are opinions based on facts. In this case, it’s the easily verified fact that neither Boundy nor Sachs has ever written anything that demonstrates that they understand what Prometheus v. Mayo was actually about. That was true before the case was decided. And it’s true in the wake of the case.

                  Once again: not feelings. Facts.

                  You can ask me how I know this but you know the answer already: I was there the entire time, watching. And I haven’t stopped watching. And I’m not going to.

                2. Your feelings (even as you attempt to obfuscate them with worthless “facts”) are noted.

                  Nice table pounding, though

                  😉

            2. “you’re arguing like Donald Trump — claiming a result, but providing no underlying reasoning or means”

              Is this intentionally ironic?

              I ask because the vast majority of Applicants in the area which Ned disparages do exactly that: claim a result without providing a means.

              Reply
            3. David, I see the problem here and it is this: you disagree with Myriad and with Mayo, when both were decided correctly.

              Myriad held that the patent on isolated DNA, such DNA admittedly a product of nature and not a “new” composition of matter, as claimed, effectively was a patent on the product of nature itself because it was claimed as the result of a well known process. Anyone trying to look at, isolate, the DNA found in nature using conventional technology would be an infringer even if the only reason for doing so would be to be completely innocent, such as completing a human genome catalog.

              Myriad’s claims on structure not known in nature were found eligible.

              This decision is as clear as day and as right as rain.

              In Mayo, the whole process claimed, every step, all of it, was routine and old. The process ended with information, the meaning of the test results, a correlation, that was admittedly a law of nature. Thus, anyone and everyone practicing the prior art was an infringer.

              Had the information be used in some inventive way, or had the process steps been new, the claim would potentially have passed 101.

              These cases are not remarkable at all; but rather are sound. The whole effort to reverse them is, to me, wronged-headed as wrongheaded as can be. The people behind the effort are trying get patents on discoveries of products or laws of nature, when patents are for inventions, something new created by man.

              The debate here is about the fundamentals. What is an invention? Can we constitutionally allow patents on discoveries without any sort of invention whatsoever? And, would allowing the patenting of such discoveries without invention advance the progress of the useful Arts?

              Reply
              1. DNA [was] admittedly a product of nature and not a “new” composition of matter

                Definitely not. This was not admitted, and by the time the case got to the SCotUS, there was no such fact finding in the record. Justice Thomas invented out of whole cloth the proposition that “Myriad’s claims are simply not expressed in terms of chemical composition… .” Anyone who knows anything about nucleotide biochemistry knows that SEQ ID Nos are chemical designations, but unfortunately the SCotUS does not have any members with the sort of background necessary to understand this. At least Justice Scalia’s concurrence was honest enough to admit that.

                Reply
          2. All one needs to do to Ned’s rather bland “by reciting the use of an old machine” is to remind him that Congress has spoken to this point way back in 1952.

            See 35 USC 100(b).

            Of course, Ned has had this point presented to him countless times without his engaging it, and chances are slim that this thread will be any different.

            Reply
          3. “Discovering” by reading notes of someone else is not discovery and filing an patent application based on that reading is something akin to plagiarism.

            Reply
        3. Ned never reads carefully. He has blinders on and believes certain things. If your theories agree with those, he’s OK. If they don’t, he’ll tell you they don’t, but he’ll never actually question his own beliefs.

          Reply
          1. Yeah, PatentBob. And occasionally I have a job to do, little time to read/write posts and to edit them carefully.

            But when I misread something, I usually try to fess up.

            Reply
    2. Dennis: I would expect any constitutional challenges to expansion of subject matter eligibility to fall flat

      My expectations would depend very much on which sections of the Constitution are being relied on and the specific arguments being made.

      For example, the First Amendment is still around, last time I checked. And this revision — if it is intended to supplant current Supreme Court law, including the judicial exceptions — raises some serious First Amendment issues.

      When the revisionists write The proposal specifically states that eligibility “is not impacted by . . . the claimed invention’s inventive concept.” they might as well write that “The proposal specifically authorizes scrivening to protect subject matter that was always deemed ineligible, e.g., information.”

      Reply
      1. raises some serious First Amendment issues.

        The last time you whined on for days on that point, you couldn’t be bothered to clarify yourself.

        Be that as it may, do you have any particulars (this time), or is this yet again simply more of your feelings?

        Reply
        1. The last time you whined on for days on that point, you couldn’t be bothered to clarify yourself.

          Meanwhile, here on planet Earth, I provided numerous examples illustrating exactly what I was talking about.

          Any other fantasies you want to share?

          Reply
          1. Yay – more Accuse Others Of That Which Malcolm Does.

            By the way, thisis planet Earth.

            You might need a tune up for that aluminum helmet of yours.

            Reply
  6. You all likely know that I didn’t agree with the Alice case and am a proponent of strong patent rights for software etc. However, being objective, I don’t think the IPO proposal is workable in its current form. Look at this ridiculous application: 20050244804 which claims a movie plot. Rightfully, these (the “inventor” filed a number of these applications) were all shot down by the USPTO under 101. What if a “projector” or “computer programmed to display…” was added to the claim? Should they then be statutory?

    No. Things like stories are not eligible subject matter and shouldn’t be allowed to be couched as eligible subject matter. It’s tricky business, but the IPO proposal needs to be narrowed to exclude literary works that can be cleverly claimed to meet the IPO proposed amendment.

    Reply
    1. What if a “projector” or “computer programmed to display…” was added to the claim? Should they then be statutory?

      Yes. They should be considered subject-matter eligible under §101. That does not mean that claims where the only novelty inheres in the claimed movie plot should be patentable. Under existing law, printed matter and the like imparts no patentable novelty, so the claim should already be rejected for want of novelty over any other similar movie on a projector or computer screen. It should, however, be able to pass through the “coarse filter” of §101.

      Reply
      1. If, however, the IPO wants to revise its draft to add artistic, literary, musical, and cinematic works to its §101(b) exceptions list, I would have no objection.

        Reply
      2. I agree that relying on the “printed matter” doctrine is one solution, however it can be problematic to weed out these type of claims this way. Under current law, in some cases printed matter can impart eligibility (I don’t recall the cases on point here and don’t have time to dig them up, but most of you should be familiar with them) and in some cases not. Relying on the printed matter doctrine to weed out literary claims may expand this doctrine and swallow up some claims where the intangible elements of the claim are actually important to the general invention.

        Reply
              1. I have given a very easy to understand Set Theory explication of the exceptions to the judicial doctrine of printed matter on both this side and on the Hricik side of the blog.

                I even invited (repeatedly) the most vocal naysayers to “take their best shots” at the explication.

                To date, no actual takers.

                Reply
                1. DanH,

                  I care less about “you win,” and even less about you congtatulating me, and would care more if those self sAme naysayers would engage on the merits of the explication (as opposed to the same old same old retreads such as present in the immediate thread from Malcolm and Ned.

                  Wouldn’t that be something?

        1. Good grief.

          The so-called “printed matter doctrine” is nothing but a very poorly developed subject matter eligibility test that is a hundred times more vague than Mayo or Alice.

          If you’re a patent attorney and you can’t acknowledge this fact right up front, then, respectfully, you’re a hack. The idea that the so-called “printed matter doctrine” can (or should) do all the work that 101 is doing today is ridiculous and also alarmingly hypocritical.

          Reply
    2. A movie plot is a work in the fine arts, not a “process, machine, manufacture, composition of matter, or improvement thereof.” You don’t ever get to the abstract idea exception.

      Reply
      1. yeah but what if the claim was “a computer storing on a storage medium [a movie plot] and configured to display it on an integrated LCD”? Wouldn’t that technically be considered a “machine?”

        Reply
          1. And to follow up on Les’ point, should therefore pass the §101 test. Let the claim fail, if at all, on some other ground (novelty, most like). §101 does not exist to exclude movie projectors that only project one (novel) movie.

            Reply
            1. Greg: Let the claim fail, if at all, on some other ground (novelty, most like).

              How would it fail on the grounds if the movie shown by this “integrated machine” is new? What’s the analysis?

              You guys really have to learn to follow up your own deep thoughts. Otherwise it seems like those thoughts aren’t very deep at all and you’re just hacking away and kicking up dust.

              Of course, it’s entirely possible that you guys are just hacking away. It sure seems like that most of the time. And it has seemed that way for many many many years.

              Reply
      2. Boundy A movie plot is a work in the fine arts

        Is that in the patent statute or is that something that some “rogue” judge said?

        My skilled movie plot engineer thinks that good movie plots are incredibly useful. Why do you h@te good movie plots anyway? America is number one in movie plot engineering and that means jobs. You want all the movie plot engineering jobs to move to China?

        Etc etc etc

        Reply
        1. It’s kind of obvious given the well understood meaning of Fine Arts…

          I realize that you are trying to be pedantic, but your attempted point is one massive
          F
          A
          I
          L

          Reply
  7. A collection of public comments provided to the USPTO on Subject Matter Eligibility can be found here:

    link to uspto.gov

    On a general level, most instances of conflicts between the branches are settled by political compromise. It’s been very rare for a Constitutional conflict to be allowed to come to complete impasse.

    I see the judicial exceptions as expressions of judicial equitable discretion (since each exception is concerned with the balance of the contribution of the putative invention to the value of the patent grant), and it’s not entirely clear that either Congress or the Executive can completely nullify judicial discretion under the Constitution, even though it’s accepted that the judicial branch is a creature of Congress.

    I agree with 6 that getting “entitlement” out in plain sight does serve a clarifying purpose.

    And I never like to miss an opportunity to promote the idea that the focus for the eligibility of information inventions should be on the consumer of the information, not the nature of the information.

    Reply
    1. I see the judicial exceptions as a slippery slope of result oriented judicial scrivening and judicial activism. Laws of nature broadened to include algorithms, broadened to include mathematical formual, broadened to include mental steps, broadened to include “abstract ideas,” which now include anything anyone wants. When does it end?

      Reply
  8. “Exists solely in the human mind.”

    This aspect seems far too ambiguous. For example, at what point does a mathematical algorithm go from existing solely in the human mind to being implemented in something to the extent that it exists in that implementation. If I invent a new machine learning algorithm by formally proving it on paper and then I write it in pseudocode and then I write it in implementable code (say in C), at what point does it no longer exist solely in the human mind? Naturally we can’t patent proofs as they lack utility, but at what point does the abstractness of pseudocode result in utility? Moreover, at what point does pseudocode go from existing solely in the human mind to existing in some other form.

    Of course these could be questions of fact, but given the complicated and unpredictable nature of this type of subject matter, this ambiguity would likely result in unpredictable outcomes, which is just the type of situation this amendment seeks to avoid.

    Given all of that, I think the IPO needs to do a little more work on this language.

    Reply
    1. Scott I believe nature offers a clear dividing line between the universe within and the universe without- even a child knows where that line is.

      If we want to patent new, useful, non-obvious information/logic, it must be useful in the universe without, while the universe within must not be reachable by any law or monopoly.

      In other words, if the utility is derived by human use of the information, not eligible. If the utility is derived from non-human use of the information, eligible. If the method is for the processing of information without regard to its meaning or content, it should be eligible on the same basis of non-consumption since consumption by human beings is not required to achieve utility.

      Reply
      1. Your “not reachable” is rather meaningless, given that ALL utility must ultimately be so “reachable.”

        Reply
        1. You keep saying that, but it makes no sense. The utility of a gear is that it turns another gear. The utility of a lever is that it amplifies the force placed onto an object. The utility of a blade is that it cuts.

          The utility of information, OTH, is in the eye of the beholder, if the beholder is human. If the beholder is not human, the utility can fairly be said to have the same value for all users of the information.

          The utility of a stock quote takes place inside a human mind. The utility of a weather forecast takes place inside of a human mind.

          When the utility of your stock quote invention feeds a stock picking ‘bot or the weather forecasting invention tells your self driving algo to slow down, it’s a material difference.

          When you are a pedant with a box of protons to shill, not so much.

          Reply
          1. That “turned other gear” is meaningless as well, unless (and until) at some point in the chain, the utility is something appreciated in the mind as being useful.

            You are mixing up the subjectivity that you want to glom onto with a separate notion of where (eventually) ALL “utility” meets its maker and decided.

            You simply do not appreciate the patent law terrain and the notion of utility.

            Reply
  9. Potential Impact on utility doctrine:
    (1) Defining 101 to focus solely on Section 101 suggests that utility doctrine does not exist, or is part of the eligibility doctrine – how would that work?
    (2) Move to claim-by-claim focus seemingly would impact utility doctrine — each claim would need to be useful.
    (3) Unclear whether shift to entitlement language shifts burden of presentation – will the patentee need to show eligibility / utility prior to patenting?

    Reply
    1. Defining 101 to focus solely on Section 101 suggests that utility doctrine does not exist…

      I am still not following you here. The proposed revisions still say “useful.” Why does that suggest to you that utility might no longer be a requirement, when the statute still includes exactly the same language that presently grounds the utility requirement?

      Move to claim-by-claim focus seemingly would impact utility doctrine — each claim would need to be useful.

      This comment really throws me for a loop. Is it your understanding that not every claim needs to be useful at present? It is definitely my understanding that each claim needs to claim a useful invention, and that if one claim in an application does claim something useful, and another does not, that the one that does not is rejectable. I have certainly received utility rejections before on fewer than all claims in an application.

      Reply
    2. Perhaps should add a specific provision on utility:

      101(d) or perhaps 112(g) “The specification shall include a credible explanation of a specific and substantial utility of the claimed invention”

      Reply
  10. Proposed 101(b) would seem to run counter to the goal of the IPO. My interpretation of 101(b) is that it requires process claims to recite hardware. Process claims are not second class claims and should not have to incorporate elements from another statutory class.

    I don’t understand the need to exclude mental processing. However, if there must be one, then simply add a statute that asserts that no matter what the wording of a claim, a patent can never be asserted against someone who performs a method solely in their mind.

    Reply
    1. I’m not on the IPO committee, in case anyone is wondering.

      Not every “process” is patent-eligiblle subject matter — purely mental processes, processes set out in a musical score, and the like. So yes, 101(b) would require hardware. It seems to me to be a really good compromise, in that it excludes what should be excluded, and allows eligibility where eligibility should be allowed. I think Bilski’s claim should be ineligible. I think Alice’s should be eligible (at least in an “ordinary meaning” setting), because the “records” implicate hardware.

      A sui generis carveout for infringement just doesn’t work, it creates too many problems elsewhere. I had that discussion in another committee.

      Reply
      1. No, that’s the problem. “Records” does not implicate hardware. When you remember things, you record them. Recording reads on purely mental processes. All the language we have that we use to describe computer processes reads on mental steps.

        Both Bilski and Alice should be eligible.

        Novel and Obvious are of course, other questions.

        Reply
        1. “When you remember things, you record them.”

          You’re obviously not a neuroscientist. That is an absurd and wholly unsupported assertion, and a great example of the very silly reification of the “brain as computer” metaphor.

          Reply
          1. No, I am not a neuroscientist.

            Kindly explain how I am able to recall information if I have not previously recorded that information?

            Reply
        2. That’s the difference between “broadest reasonable interpretation” and Phillips/Markman “ordinary meaning” construction. I think Alice had a lousy attorney, and had this been raised pre-issue while the application was still subject to “broadest reasonable interpretation,” I’d agree with your analysis.

          But after the patent issues, as Judge Linn noted in his panel opinion (685 F.3d 1341), the claim is at the very least (for summary judgment stage before full construction) amenable to a construction in which the “shadow records” require hardware.

          And I think that’s exactly how it should come out — “broadest reasonable interpretation” vs “ordinary meaning” should be outcome determinative for some claims.

          Reply
          1. The “require hardware” did not save the (certain) Alice claims (stipulated by both parties to have passed the machine statutory category – and to Prof. Crouch’s concern, certainly had the proper type of utility) from being “magically” made into being “Abstract.”

            The problem really is NOT with the statute.

            The problem really is with an addiction to a select group of people sticking their fingers into the wax nose of patent law.

            What IS needed is to remove patent appeals (NOT a matter of original jurisdiction of the Supreme Court), and place them solely into a new (because the existing one is too brow-beaten) Article III court – thereby preserving Marburg‘s judicial review aspect (which does NOT require judicial review by the Supreme Court, but only judicial review by an Article III court).

            Reply
            1. anon, it seems like you’re really confused about who said what.

              Under Alice, hardware is “beside the point.” That’s the problem IPO is trying to correct.

              The IPO proposal says “If the claim requires hardware, outside the human mind, then the claim is eligible.” That fixes Alice.

              The problem is with the Supreme Court’s interpretation of the statute — and thus, in any functional view of how the law works, the problem is with the statute.

              Stripping the Supreme Court of jurisdiction would require convincing the Supreme Court that Congress has Constitutional authority to strip. Good luck with that.

              Reply
              1. Stripping the Supreme Court of jurisdiction would require convincing the Supreme Court that Congress has Constitutional authority to strip. Good luck with that.

                So you believe that the SCotUS would not tolerate the idea of a Supreme Court that lacks jurisdiction to review certain other courts? I guess I do not know why you believe that. Certainly, whatever other failings one might attribute to the Court, they seem to me to be fairly conscientious about deciding whether they really have jurisdiction to resolve certain disputes. If you told them “you have no jurisdiction on this point,” I am hard pressed to imagine them saying “oh yes we do.”

                Also, Article III explicitly says (section 2) that “the Supreme Court shall have appellate jurisdiction… with such exceptions, and under such regulations as the Congress shall make.” In other words, the Constitution explicitly contemplates Congress making exceptions from the SCotUS’s appellate review. Once again, it seems strange to imagine them saying “this means that Congress cannot make exceptions to our appellate jurisdiction.”

                Finally, Congress has, in the past, excluded matters from SCotUS review, and the SCotUS went along willingly. The CAFC’s predecessor court, the Court of Customs Appeals, went several years between its founding and when its enacting statutes were amended to permit SCotUS review. Ex Parte Bakelite Corp., 279 U.S. 438 (1929). Why would the Court take a different tact now?

                Reply
                1. “If you told them ‘you have no jurisdiction on this point,’ I am hard pressed to imagine them saying ‘oh yes we do.'”

                  In case it was not clear, what I really should have written is “If Congress told them ‘you have no jurisdiction on this point,’ I am hard pressed to imagine them saying ‘oh yes we do.'”

                2. To illustrate this point, consider diversity jurisdiction. The constitution does not require $75 000 in controversy. That number is purely an invention of Congress. Nevertheless, good luck getting the SCotUS to agree to hear your diversity suit with only $1 000 in controversy.

                  In other words, in the cases where Congress has already articulated limits on SCotUS jurisdiction, the Court is fairly scrupulous about honoring them. Why would we expect different about this limit on their jurisdiction?

                3. You see, drafting the Declaration of Independence is as nothing compared to adding “new” to the 101 predecessor statute…

              2. Under Alice, hardware is “beside the point.” That’s the problem

                Why is that a problem?

                For years courts have recognized that “The fact that a book is a manufacture is beside the point.”

                Few people lost their minds over that.

                Btw, have you noticed a decline in new software since the Alice decision? Is your bingo game management less robust?

                Reply
          2. Well, the PTO uses BRI. So, my interpretation is the one we have to worry about. The Office would say shadow accounts can be recorded in the human mind.

            Reply
            1. You’re half right. Your interpretation “is the one we have to worry about” while an application is pending. (Les, are you a PTO employee — is taht what you mean by “we?”)

              It is not the one “we have to worry about” post-issue, in the context where Alice arose.

              Alice’s claims should not have issued. But post-issue, I think they’re eligible under a Phillips/Markman claim construction.

              Reply
      2. David, simply saying “do it on a machine’ elevates form over substance.

        Reply
        1. Ned,

          Doing otherwise ALSO places “form over substance” and has the judicial branch rewriting the direct words of Congress (making an exception that swallows the rule).

          As pointed out to you, the judicial muckery makes the statutory category itself disappear!

          Reply
        2. I disagree. If doing it on a machine is new and non-obvious it is different than doing it in your head. And the claims are not infringed by doing it in your head.

          Reply
          1. Consider the Pythagorean theorem. Is it obvious to calculate that algorithm on a computer?

            Another way of putting this, and this is the way the Supreme Court puts it, simply requiring the ineligible subject matter or the old subject matter to be conducted on a well-known machine for the purpose is not invention.

            Reply
            1. Ned, please read carefully.

              If doing it on a machine is new and non-obvious it is different than doing it in your head.

              Computing the Pythagorean theorem is not. Remember that computers were originally developed for ballistics computations, of which the Pythagorean theorem is a part.

              Beyond the error in not reading the question before answering, isn’t the whole point of the IPO proposal to get the Supreme Court focused back on the claims, and subject matter properties of the claims, and quit mish-mashing the different statutory requirements? Treating the current Supreme Court law as if it were correct is kind of a non sequitur, isn’t it?

              Reply
              1. Treating the current Supreme Court law as if it were correct is kind of a non sequitur, isn’t it?

                If only…

                From your lips to God’s own ears!

                Reply
              2. David, I understood the question and gave an example of problem we had in the status quo ante Bilski/Alice: simple recital of a computer in a claim was enough not only to pass 101, but to get a patent allowed. 102/103 never asks the proper questions. If the ineligible subject matter is new, the claims were allowed.

                For a century or more prior to State Street Bank, it was recognized that claims could have both eligible and ineligible subject matter. The rule developed that the novelty, the invention, had to be in the eligible. While the Federal Circuit still recognizes a very limited printed matter exception, it trashed the Business Method exception in State Street Bank. And, to say the least, it never developed any sense of why the printed matter doctrine existed in the first place. That is why Bilski/Alice were so necessary, so important.

                The proposal of IBM/IPO seeks to undo the work of the Supreme Court that itself undid the work of State Street Bank that was fundamentally flawed. We have to recognize this simple fact and call a halt.

                If we instead focused on “Abstract,” which even Stevens and three other justices found indefinite, then I might support the effort.

                Reply
                1. Your “Point of Novelty” theory Ned is pure bunk.

                  You are running from the plain meaning of the Act of 1952 yet again.

          2. Bingo – but that distinction somehow is lost on those whose Windmill Chase demands that such an easy distinction not be understood.

            There is a word that goes along with that thought:

            Anthropomorphication.

            Reply
  11. There is enough flexibility here for the SCOTUS to create trouble.

    Reply
  12. No requirement for the named inventor to be the actual inventor should be disturbing to both employed and independent inventors, since both 102f and g are already removed by the AIA.

    Reply
    1. Paul –

      The proposal says who ever inventors or discovers. Why do you think there is not a requirement for the named inventor to be the actual inventor?

      Reply
      1. That was my question too. The statute says “whoever invents,” so why does Prof. Crouch think that this revision undoes the requirement for inventorship?

        The revision also says “useful,” so why does Prof. Crouch wonder what the revision would do to the utility requirement?

        Care to unpack the basis for your questions, professor?

        Reply
    2. Paul, absolutely. Withdraw “new” and one can now patent the invention one “discovered” from someone else, such as by stealing his or her lab notebook. The definition of who an inventor is is bound up in 101.

      Reply
      1. This seems a stretch to me. §102(a)(1) presently reads “[a] person shall be entitled to a patent unless the claimed invention was… available to the public before the effective filing date of the claimed invention.” If Mr. A invents and discloses to Mr. B (who did not invent), but Mr. B then files an application, then the appropriate response is that by disclosing to Mr. B, Mr. A made the invention “available to the public” (i.e. Mr. B.) before Mr. B’s filing date. Therefore, Mr. B’s application lacks novelty. In other words, there is still no getting around the requirement for the correct inventorship.

        Reply
        1. Ned is looking for “any port in a storm” in order to attempt to save his “version” of 101.

          Reply
  13. Would this not allow patenting of mathematial formulas?

    Reply
    1. No. A pure mathematical formula “exists solely in the human mind.” (A pure mathematical formula might well fail the “utility” requirement, under Brenner v. Manson.)

      Reply
        1. No, that E = mCC is not patentable because you can do it in your head. It is likely not patentable to do it on a machine, because it is obvious to do calculations on a machine.

          But if doing it on a machine is not obvious (inventor found a non-obvious algorithm, for example) then it should be patentable.

          Reply
    2. Mathematical formula seems to be OK for patenting so long as it is written down or stored on computer (not just in a human mind).

      Reply
      1. Claim 1: A formula equating energy with the square of the speed of light.

        Not patentable.

        Claim 2: A method comprising:

        Reply
    3. This, Paul, is a subversive attempt to overturn the overturn of State Street Bank.

      Reply
  14. This piece of g@rbarge is a big F U to Thomas Jefferson.

    Reply
    1. A little bit of factual background and analysis of the proposed text would make your comment much more persuasive, and assist in correcting any defect you perceive.

      Reply
      1. Ned’s heavy reliance on “new” as somehow being more than what the (controlling) Act of 1952 said it was, takes a decimating “hit” with the IPO’d expungement.

        Of course, for those that understand the actual law, the expungement is a bit of overki11, but it puts a literal dagger into Ned’s version of 101.

        It’s not an F U to Jefferson.
        It’s an F U to Ned’s zombie of Jefferson.

        Reply
      2. David, in adding “composition” to “101” in 1793, Jefferson added “new.” Of course, machines, engines, manufactures or Arts had to be created by man, and thus “new” was unnecessary in the 1790 Act. But in adding composition, Jefferson added “new” as well. (Not know or used was retained.) Thus, a patentable composition had to be both new and not known or used. The clear implication of the combined requirements that the composition both be new and not previously known or used was that the inventor had to create the composition in addition to the composition not being previously known or used.

        A fundamental requirement to make a patentable invention, under the 1793 statute, and under the constitution, was that the inventor had to create something new. The Supreme Court has repeatedly stated this requirement in its opinions. Thus one cannot simply find something in nature and claim it as his property. Nor, might I add, can one purport to be an inventor if he discovers the invention of another whether by accident or by piracy. The invention must be new to the inventor. He must create the invention.

        This being said, I have long complained as many others have complained about the misuse of the term “abstract” by the Supreme Court – who were only following Judge Rader, who in turn followed then solicitor Chen now judge Chen. The real problem in Bilski with the claims before it there were that they were directed to business methods – subject matter the patent law has long considered to be ineligible because business methods were neither a machine, manufacture or composition of matter, nor an Art or process for making or using one of these to produce an improved physical result. Prior to that, the Supreme Court had consistently use abstract in the sense that used in O’Reilly v. Morse. The problem with claiming an invention at the level of the idea even if an invention was disclosed was that the claims were too broad and/or indefinite and therefore retarded the progress in the useful arts. This is a problem under 112, not under 101.

        I have no problem with a narrow proposal directed to correcting Bilski but only if it simply declared business methods ineligible subject matter while declaring “abstract” to be a problem under 112 – particularly 112(b), and not under 101.

        Then there is the bit about removing the requirement for usefulness. This is so absurd as to be beyond the pale. One could not even argue this proposition to the most simpleminded of grandmothers and get her to agree that inventing something that had no use would advance the useful arts. Simply patenting variations on chemical structures without their having any utility has got to as bad as it gets for the progress in the useful arts for all the reasons stated in Brenner v. Manson.

        Reply
        1. Ned —

          The IPO proposal does not remove “useful.” I’m puzzled by your question.

          Is “new” covered by section 102? I think the rationale for removing “new” from 101 is to remove concern for “new” and “inventive concept” from the Alice/Mayo., and if 102 does the job of “new” and it’s causing mischief in 101, then remove it.

          What’s missing?

          Reply
          1. David, sorry about “useful.”

            On new, it essentially is a requirement for creation. It truly is independent of whether someone else knew or did not know of the invention.

            For a very long time it has been understood that products and phenomena of nature are not “new” even though they are not publicly known. Flook quoted an old thesis from Robinson on this. There are others of equal vintage.

            Likewise, discovering the invention of another is not creating an invention even if the subject matter was not publicly known to another soul.

            The most fundamental requirement in 101 is “newness.” It is not the same thing at all newness in the 102 sense: whether something was publicly known or not.

            As proof of this, just look at the 1793 statute where new was introduced. Not known and used by others is still there, in the same sentence. Congress did not consider then that the two concepts covered the same ground.

            Reply
            1. Your “version” does damage to the changes of 1952, Ned – as has been so very often pointed out to you.

              Reply
            2. OK, now we’ve established that you didn’t read carefully re “useful.”

              Now let’s look at “new.” I’ve asked you several times to explain what “new” in s 101 should catch as ineligible that isn’t caught by the other statutory requirements (mostly, but not only, “novel” of 102). You’ve ducked that question several times. I don’t know what you’re thinking until you articulate it.

              Please engage with the intellectual rigor I know you’re capable of.

              Reply
              1. I know you asked Ned, but on this point he and I largely agree, so I will make bold to answer.

                Ned & I think that the right way to understand the so-called “judicial exceptions” is as—not exceptions—but rather as the product of careful reading of the statutory text. Natural products are not eligible matter because they are old to the universe, even if novel to human ken, and therefore not “new,” even if they are “novel.”

                In other words, we read the choice of “new” in 101 and “novel” in 102 as deliberate. To satisfy 101 something must be new (to the universe, not merely new to human ken), while to satisfy 102 the claimed something must be novel to human knowledge.

                The advantage of this view is that it grounds the “exceptions” in the statute. The downside is that the Court never gives this theory as the reason for their “exceptions” jurisprudence.

                Reply
                1. Greg,

                  Maybe you and Ned should “agree” to remember the 1952 Act (and the explanation for using the word “new” in the actual 35 USC 101)…

                2. I like that reading Greg. I see the exceptions as grounded in equity, because they are concerned with the putative contribution of the putative inventor in balance with the value of the patent grant. If its not new to the universe, the inventor did less, and if its not novel to humankind, the inventor did even less than that.

                3. Mr. Snyder,

                  Your angle of grounded in equity falls flat on its face.

                  Reminder: this is statutory law directly authorized by the Constitution to a single branch of the government to write.

                  There is a very real difference between common law and statutory law.

                  Open your eyes son.

              2. David, Greg’s got it. Also this from Flook’s note 15:

                The underlying notion is that a scientific principle, such as that expressed in respondent’s algorithm, reveals a relationship that has always existed.
                “An example of such a discovery [of a scientific principle] was Newton’s formulation of the law of universal gravitation, relating the force of attraction between two bodies, F, to their masses, m and m′, and the square of the distance, d, between their centers, according to the equation F=mm′/d[2]. But this relationship always existed—even before Newton announced his celebrated law. Such `mere’ recognition of a theretofore existing phenomenon or relationship carries with it no rights to exclude others from its enjoyment. . . . Patentable subject matter must be new (novel); not merely heretofore unknown. There is a very compelling reason for this rule. The reason is founded upon the proposition that in granting patent rights, the public must not be deprived of any rights that it theretofore freely enjoyed.” P. Rosenberg, Patent Law Fundamentals, § 4, p. 13 (1975).

                Cases like Myriad expressly stated that what they were deciding is whether the human DNA was a “new” composition. It was agreed that the particular gene in that case was previously “unknown.”

                Thus, all of the exceptions are grounded in “new.” Removing new is a simple way of removing the exceptions which is why I am so vehement on this issue and further because I believe the so-called exceptions define the difference between invention and discovery, between an abstract idea of some invention, and working, useful embodiment.

                The whole point of patents is to incentivize invention, to foster the creation of actual working embodiments. We cannot grant patents to discoveries of products of nature, to natural phenomena, to principles in the abstract. The reason we cannot has been repeatedly stated so, so many times as that it need not be repeated here again.

                I do not believe that Congress can constitutionally grant patents on ideas, on products of nature, on principles in the abstract. Such are not inventions at all.

                Reply
                1. to foster the creation of actual working embodiments.

                  At one point in time actual models were required.

                  That is no longer the case.

                  Think: constructive reduction to practice.

                  Enjoy.

        2. Business methods, per se, are likely not suitable subject matter. But a machine newly programmed to perform a new, useful and non-obvious method should be. Where Bilski screwed up was to throw the machine out with the method.

          Reply
          1. America cowboy, so long as we require a new or improved machine…, he method must be effective provide a new or improved machine. Otherwise, we simply have, “Do it on the computer,” where the claim is otherwise ineligible.

            Reply
            1. Ned – go ahead and find “a machine” that you can do a claim with, without first changing the machine by configuring it to “just use” the software.

              We’ve been over your duplicity a million times now. You purposefully omit the critical first step in your more than banal “just use” prevarications.

              The patent doctrine of inherency defeats your lame attempts.

              Reply
    2. Thomas Jefferson wrote a lot of things, and did a lot of things, and if we are to tote up the list of things for which he is remembered, the patent laws will be way down the list. Very few people look at this as a slight to Thomas Jefferson, and none intend it as such. We all still revere him and the work he did for our country. It does him no honor, however, to treat every word he wrote in the patent act as if it were holy writ, never to be altered. The world is not the same as it was in the 18th century, and we are not obliged to set 18th century legislation in stone out of misbegotten sense of piety towards Thomas Jefferson.

      Reply
        1. An act ordering that the Jefferson monument in D.C. be turned into a public urinal would be a big “FU” to Jefferson.

          A movement to desecrate various landmarks on the UVa campus would be a big “FU” to Jefferson.

          An executive order that explicitly distinguishes among different nationalities or religions, so as to dishonor the assertion that “all Men are created equal, [and] that they are endowed by their Creator with certain unalienable Rights…” would be a big “FU” to Jefferson.

          In other words, if the IPO wanted to give the finger to the memory of Pres. Jefferson, they know how to do it. Dropping a single word from §101 does not really give the impression of a deliberate slight to Jefferson. I dare say that we have already revised other statutes in which he had a hand in crafting, without anyone supposing that any sort of slight might be intended.

          Reply
  15. I like this very much, but would tweak the language (while preserving what I belive to be the intent) a little bit.

    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.” It’s essential to use new statutory language (just as the 1952 Act took “invention” out of the vocabulary and replaced it with “obviousness”) in order to abrogate the old case law. (More on this later.)

    (b) This 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 two things I don’t like.

    (c) 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. If that’s what IPO is after, doesn’t it make sense to speak directly to it? Use the term “claim construction.” Use language that implies “ordinary meaning” in district court, and “broadest reasonable interpretation” during ex parte prosecution. POSITA is the concept that, I gather, IPO is trying to get out of the statute, and I think it’s a mistake to adopt an existing legal term that requires the inquiry that we’re trying to get rid of. Invoking POSITA is an open invitation to the Supreme Court to interpret it as bringing back in the flawed Alice/Mayo reasoning.

    (d) Is the “law of nature” language strong enough to embrace “isolating?” Maybe it can probably be defined in legislative history (unlike other terms that have already been construed by the Supreme Court, and therefore can’t be redefined—IPO wisely stays away from terms like “as a whole” that have been defined by the Supremes, and thus can’t be redefined). My concern arises under the canon of statutory construction, after the Supreme Court has construed an old statute, “Congress does not write upon a clean slate. In order to abrogate a common-law principle, the statute must ‘speak directly’ to the question addressed by the common law.” United States v Texas, 507 U.S. 529 (1993). 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.

    The discussion following Comment 3 asks why not simply abrogate “abstract idea” and “law of nature or natural phenomenon” from the statute. The risk is that the Supremes could then Constitutionalize the two doctrines: “Of course, Congress couldn’t possibly have intended to abrogate the exceptions, because they arise (implicitly) under the Constitution. This new statute gives us a new obligation to clarify what we’ve been saying all along. We now hold that the exceptions remain in place, and in fact we are now grounding them in the Constitution.” By leaving the two exceptions in place and defining them, they go back to doing their useful jobs, without encroaching on important patent-worthy inventions.

    Reply
    1. One other crucial thing I don’t like,

      (e) 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? 101(c) correctly states that the goal is to get the other statutes 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.

      Reply
      1. I agree with you that if they are going to add ‘only,’ then they are going to end up accomplishing more than just changing §101. That said, this is not an argument against the word ‘only.’ It is an argument in favor of codifying ODP, prosecution laches, etc. I think that the law would benefit from codifying these disparate grounds of invalidity (particularly ODP, which is drifting rather perceptibly of late).

        Reply
        1. Finding express statutory language for all of those nonstatutory exceptions? This will never get drafted, let alone passed through Congress.

          Reply
          1. Hm, I guess I do not see the workload as that big of a difficulty. I expect that the good folks at IPO could put something together if necessary. In any event, all you would really need to codify would be ODP and prosecution laches. None of the rest of the items mentioned in 7.1 would be necessarily affected by the addition of the phrase ” subject only to the exceptions, conditions, and requirements set forth in this Title,” so one would not need to codify them in response (although codification might still be a good idea).

            Reply
    2. Is the “law of nature” language strong enough to embrace “isolating?”

      I agree that if they mean to re-draft the statute to overturn Myriad, they may need to be more clear. I can read the proposed language in a way that reverses Myriad, but I can also read it in a way that leaves Myriad in place, and given the option, the SCotUS will likely employ the reading that does not upset their precedent.

      It is not 100% clear to me, however, that the IPO want to overturn Myriad. Maybe they see over-turning Myriad as an over-reach, and want merely to overturn Mayo and Alice?

      Reply
      1. If the IPO do want to overturn Myriad, they should add “isolated biomolecule” to the list of “machine, manufacture, composition of matter… .”

        Reply
    3. Boundy: flawed Alice/Mayo reasoning.

      What’s “flawed” about the reasoning in those cases?

      Begin your answer with an accurate description of what was claimed in Prometheus, what was in the prior art, what was new, and what was Prometheus’ theory of infringement.

      Then tell everyone what the “flawed reasoning” was. Note: “Limits the claims my clients can get” doesn’t mean “flawed.” It just means you need to find better clients.

      Reply
  16. Could someone identify precisely and explicitly, and show how the language provides the differentia between:

    1. WHAT is SUBJECT only to “the requirements of this Title”?

    versus

    2. WHAT is “determined without regard as to the requirements … of this Title”?

    The text of the subsection titles is throwing me off.

    Reply
  17. Though I do like them switching the focus over to claims, and also switching the focus onto the fact that the whole program is an entitlement program.

    I think they should replace the section of the title as:

    [101 Inventions patentable].

    101(a) Inventions eligible for an Entitlement: Whoever invents…

    Reply
    1. LOL – your “entitlement” of course, includes the Quid Pro Quo, right 6?

      Reply
    2. The term “entitled” brings the patent system within the “due process” protections of the Constitution. Property is only property when it’s an “entitlement.”

      Reply
      1. …and yet another “wrinkle” to be “straightened out” if patents are not property at all…

        Reply
  18. Man that job editing the statute is horrible. Even if that is their purpose, they’re just being needlessly cavalier with the rest of the statute.

    Reply
    1. they’re just being needlessly cavalier with the rest of the statute.

      As this has nothing whatsoever to do with the rest of the statute, how are they being “needlessly cavalier” about the rest of the statute?

      Reply
      1. I mean the parts of 101 that are being changed that don’t need to be in order to implement the overall policy change they desire.

        As a for instance, just one concern, under their proposal I’m not even sure that “statutory double patenting” would even continue to be a thing.

        Reply
        1. That does not address any such “needlessly cavalier with the rest of the statute”…

          That being as it is, your point is not made.

          Reply
          1. You misunderstood what I was talking about in the first instance re re. I was talking about the statute 101, as in they were striking/amending parts of 101 that didn’t need to be struck or amended to enact their proposed change, in the first comment I made. Not the whole of 35 USC.

            I’m not going to sit here and lay this out for you more clearly mr. OCPD.

            Reply
            1. I did not misunderstand the words that you used, 6.

              Maybe you had meant to say something else.

              As it is, your words – in black and white – don’t fit what you now seem to want to say.

              That’s not my issue – that would be yours.

              Reply
              1. The “rest of the statute” does not – and cannot – mean the rest of the section of 101 being discussed.

                That’s like defining black as white, and your lame ad hominem quite misses, 6.

                Reply
  19. Except 101 was an issue before the current statute anyway. The court didn’t fashion that requirement out of thin air. It’s possible they wouldn’t call the proposed statute unconstitutional, but if they adhered to their precedent they would.

    Reply
    1. The Constitutional question really is the issue here. Thomas hinted at this in Alice. I don’t think any opinions to date have been explicit about the root of pre-emption doctrine being Constitutional in nature, but that may be because the question hasn’t been raised by litigants, and SCOTUS rarely treads those paths when they don’t have to.

      Reply
      1. Apotu,

        What exactly is the “constitutional question” that you are referring to?

        Per chance is it the future, subjective and merely “possibility” of what MAY happen?

        Reply
        1. If you look at the pre-1952 cases, the Court suggests that there’s a constitutional element to what is eligible to be patented, not just a statutory one. That’s part of why the pre-1952 obviousness case-law hasn’t been totally jettisoned; because the Court then also suggested there was a constitutional element to obviousness.

          Reply
          1. Thanks Guest,

            I keep on “hearing” of this, and want to see if someone will produce the particulars.

            As it is, pre-1952, the Court had been invited by the (apporpriately empowered) Legislative branch to set the meaning of the word “invention” through the t001 of common law evolution.

            One indeed must take a critical look at the Act of 1952 that removed that authority from the Court.

            As it is, the mere reference to the notion (without more) of “Constitutional” is not persuasive.

            Reply
            1. As it is, pre-1952, the Court had been invited by the (apporpriately empowered) Legislative branch to set the meaning of the word “invention” through the t001 of common law evolution.

              That is not 100% accurate. The court said that Congress may define what constitutes a protectable invention within the meaning of the patent power, which limits Congress to issuing patents which promote the progress of the useful sciences.

              Graham Section II is a good recap of their constitutional interpretation – Congress cannot remove existent knowledge from the public domain, nor enlarge the patent without regard to the advancement, nor can they issue any patent on things which do not add to the sum of human knowledge. Congress isn’t free to define an “invention” without a Section 102, or a Section 112a, or the judicial exceptions, that’s beyond the scope of their constitutional grant of power.

              One could not overturn Alice via statute and harmonize with Graham’s statement. Alice didn’t limit itself to a particular implementation, nor add to the human store of knowledge. All Alice said was take the business practice that is well known and apply it to a new field, without any teaching as to how to implement it in a new field or any assertion that, absent the disclosures in the patent, one of skill could not have applied the practice to the new field. There simply is nothing that adds to the store of human knowledge – there’s no new teaching on the business practice, there’s no new teaching on the field of application, and there’s no new teaching as to how to implement the practice in the field. It doesn’t add to the store of human knowledge, it simply seeks an exclusionary right because nobody had done something before.

              Reply
              1. One could not overturn Alice via statute and harmonize with Graham’s statement. Alice didn’t… add to the human store of knowledge.

                O.k. I do not really disagree with you, but if the Alice patentee did not add to the store of human knowledge, then that is as much as to say that their claims were obvious. In other words, one cannot reverse the Alice holding (i.e., the asserted claims in US 5,970,479 are invalid), but one could reverse the Alice rule (one does not need to consider “routine” or “conventional” limitations when assessing the eligibility of a claim that is “directed to” an abstract idea) by statute.

                Reply
                1. one could reverse the Alice rule (one does not need to consider “routine” or “conventional” limitations when assessing the eligibility of a claim that is “directed to” an abstract idea) by statute.

                  Why on earth would you want to reverse that rule?

                  So lawyers can scriven around reasonable subject matter restrictions that have been part of every sane patent system since forever?

                2. You guys have gotten off track, and Random, the Graham dicta is some of the most severe self-serving nonsense that simply shows the addiction that the Supreme Court has.

      2. I agree. I really like the proposed statutory language above, but I worry that if it were enacted, it would prompt the SCotUS to come out in the open and declared that all of their judge-made exceptions are matters of constitutional law. They would invalidate the revised §101, bumping us back to the previous version, or else to a totally common-law view of subject matter eligibility.

        I would, therefore, make a small suggestion. It has become commonplace in the last ~10 years for the revisers notes to include some small gloss on where the Congress believes that constitutional support can be found for a given piece of legislation. I would encourage the revisers on this one to reference the commerce clause. The very justices who are most bullish on a constitutional basis for subject matter eligibility exceptions (Breyer, Ginsburg, & Sotomayor, i.e. the three living justices who joined Justice Stevens’ Bilski concurrence) are also three who are most solicitous for a broad understanding of Congress’ commerce clause powers. I expect that they would think very carefully before joining an opinion that said that Congress did not have the power, under the commerce clause, to grant patents on software or diagnostic methods, less that precedent become a stepping stone for other limits on the commerce clause power.

        Reply
        1. There is a better – albeit not small suggestion for keeping the Supreme Court out of patent law…

          😉

          Reply
          1. anon, you reflect the bias of so-so many patent attorney’s against the Supreme Court that has been there since FDR. I was surprised just how pervasive it was in the leadership of the IPO and the AIPLA. Rich shared that bias, obviously.

            The Supreme Court has been among the best patent courts in the world for 200 years. Decision after decision has shaped patent law here and throughout the world. They get it right more often than any other US court, especially you favorite, the Federal Circuit. So, when you and other say what you say, I smell a rat. I smell bias. I smell crony capitalism.

            Reply
            1. Ned,

              You reflect an overly fawning adulation of the Supreme Court that directly flies in the face of your attorney oath.

              Any time you want to share that oath, I would be more than happy to hold your hand and explain exactly what I am talking about,

              Reply
            2. This appears to be a matter of taste, and—as the angelic doctor said—de gustibus non est disputandum. Still and all, it is difficult for me to read “[t]he Supreme Court has been among the best patent courts in the world for 200 years…” and keep a straight face, when I know that we are therein talking about the court that gave us Egbert v. Lippmann, and Brenner v. Manson, and Funk Bros. Seed v. Kalo Innoculants, etc., each a more absurd testament than the last to the utter cluelessness of the Court writing such opinions.

              Reply
              1. Except, Greg, I agree with all of them.

                Egbert stands for the simple proposition that any nonconfidential use by the inventor of his invention prior to his filing a patent application outside of the grace period is a public use. It is an act inconsistent with one’s duty to file a patent application before using the invention in a nonconfidential way. The idea harkens back to Pennock v. Dialogue where it was held that the public use by the inventor of the invention prior to filing a patent application was inconsistent with the patent laws especially given that the Constitution requires protection for only a limited time. Allowing somebody to use the invention in a nonconfidential way for an extended period time and still obtain a patent be inconsistent with this constitutional purpose.

                Brenner basically says that patenting compounds without any known use does not advance the progress of the useful arts because it does not allow people to investigate the utility of potential compounds and allow the first of discover of such a use to obtain the patent on the compound.

                Funk Brothers held that the packaging of bacteria that did not mutually inhibit each other was not novel other than the law of nature itself. Later courts (e.g. Chakrabarty, Myriad) have construed Funk Brothers to require some modification in the bacteria itself to support a patent on things such as bacteria.

                Reply
                1. Your agreement Ned is nothing more than a testament to your alignment problems.

                  It means nothing as to the veracity of the law and the role that the Court is supposed to have in relation to patent law.

                2. And Ned, the offer still stands:

                  Any time you want to share that oath, I would be more than happy to hold your hand and explain exactly what I am talking about

                3. Egbert stands for the simple proposition that any nonconfidential use by the inventor of his invention prior to his filing a patent application outside of the grace period is a public use.

                  In my view, there is a good reason why prior art must be enabling. How did the public come into possession of the corset technology merely by being in the same room as the corset under a lady’s clothing?

                4. Funk Brothers held that the packaging of bacteria that did not mutually inhibit each other was not novel other than the law of nature itself.

                  Indeed, that is what Funk Bros. held, but it was a daft holding, inimical to the ends of patent law. The patentee did not claim individual bacteria. The patentee claimed a mixture of bacteria, the mixture being novel and providing a property not common to prior art bacterial mixtures. You might as well say (in effect, the SCotUS did say) that concrete is a product of nature, because the result of mixing the individual natural compounds in cement is no more than is inherently present in the combination of the natural products.

                  Cement is not a product of nature, and any law that reaches the result where cement should be understood as a natural product is absurd on its face. The same goes for the mixture of bacteria.

                  Justice Frankfurter got that case right. The real problem for the Funk Bros. patentee was that they had invented one mix of bacteria that are not mutually inhibiting, but then they claimed all such mixtures, without displaying the least hint of how to identify any others. This is, indeed, a trespass against patent law, but under the §112 written description prohibitions, not under §101.

                  If the Court had understood what Justice Frankfurter was trying to tell them, most of your present complaints against software patents would have solved themselves. The problem with claims that claim an outcome rather than the means to attain the outcome is a written description problem, not a subject-matter eligibility problem.

                5. Justice Frankfurter got that case right. The real problem for the Funk Bros. patentee was that they had invented one mix of bacteria that are not mutually inhibiting, but then they claimed all such mixtures, without displaying the least hint of how to identify any others. This is, indeed, a trespass against patent law, but under the §112 written description prohibitions, not under §101.

                  Don’t forget: a cr@p claim can — and 0ften will — fail multiple prongs of the patent statute simultaneously. That’s because judges interpret the statutes looking at their intent and some of fundamental principles underlying the system inevitably leak in.

                6. Greg, Egbert is not about prior art good against third parties. It is about the statutory bar of public use. Pennock v. Dialogue.

                  This is the question decided by the court, from the case itself:

                  “We have, therefore, to consider whether the defence that the patented invention had, with the consent of the inventor, been publicly used for more than two years prior to his application for the original letters, is sustained by the testimony in the record.”

                  The issue of whether this public use would have been good against a third party was not raised nor decided.

                7. Greg, this argument to me has a lot of force:

                  “But once nature’s secret of the non-inhibitive quality of certain strains of the species of Rhizobium was discovered, the state of the art made the production of a mixed inoculant a simple step. Even though it may have been the product of skill, it certainly was not the product of invention. There is no way in which we could call it such unless we borrowed invention from the discovery of the natural principle itself. That is to say, there is no invention here unless the discovery that certain strains of the several species of these bacteria are non-inhibitive and may thus be safely mixed is invention. But we cannot so hold without allowing a patent to issue on one of the ancient secrets of nature now disclosed. All that remains, therefore, are advantages of the mixed inoculants themselves. They are not enough.”

                8. And Ned,

                  The offer still stands:

                  Any time you want to share that oath (your State attorney oath), I would be more than happy to hold your hand and explain exactly what I am talking about.

                9. a simple step. Even though it may have been the product of skill, it certainly was not the product of invention

                  That’s why 103 has the last line in it that it does.

                10. Egbert is not about prior art good against third parties. It is about the statutory bar of public use.

                  This seems like a distinction without a difference. I can agree that Egbert reached the right result, but in a Supreme Court case, that is not nearly enough. They need to get there for the right reasons, so that lower courts know how to follow. If something has been used in public, it is part of the state of the art, citable against others.

                11. [O]nce nature’s secret of the non-inhibitive quality of certain strains of the species of Rhizobium was discovered, the state of the art made the production of a mixed inoculant a simple step. Even though it may have been the product of skill, it certainly was not the product of invention. There is no way in which we could call it such unless we borrowed invention from the discovery of the natural principle itself.

                  This is lovely prose craft, but a terrible argument. Everyone agrees that one cannot patent a natural principle, but one can patent an application thereof. Very well. Funk Bros. patented mixtures of bacteria. These are saleable articles, just like bags of concrete (also a mixture of natural substances). One could use these movies mixtures to inoculate rhizomes in your beans, and alfalfa, and other nitrogen-fixing crops. In other words, the claimed invention was about as practical an application of the natural principle of non-inhibition as the be could imagine. The “inventiveness” inhered in the face that, prior to Funk’s disclosure, no one knew that mutual inhibition could be avoided.

                  In other words, this was a useful advance of the art,mom the sort of which we should want to incentivize the disclosure and commercialization. Instead, the SCotUS, in defiance of science and common sense followed unhelpful dicta down a legal rabbit hole to declare the claimed invention to be a product of nature. That is about as wrong as one could go, but fairly typical for a Court that is badly out of its depths every time it takes up a patentability case.

                12. “art,mom the sort…”

                  Confounded autocorrect…

                  As you might guess, this should have said “of the sort…”

                13. Er, still more autocorrect vagaries…

                  One could use these mI robe mixtures to inoculate rhizomes in your beans, and alfalfa, and other nitrogen-fixing crops. In other words, the claimed invention was about as practical an application of the natural principle of non-inhibition as one could imagine. The “inventiveness” inhered in the fact that, prior to Funk’s disclosure, no one knew that mutual inhibition could be avoided.

                14. Er, still more autocorrect vagaries…

                  One could use these microbe mixtures to inoculate rhizomes in your beans, and alfalfa, and other nitrogen-fixing crops. In other words, the claimed invention was about as practical an application of the natural principle of non-inhibition as one could imagine. The “inventiveness” inhered in the fact that, prior to Funk’s disclosure, no one knew that mutual inhibition could be avoided.

                15. Greg, on Funk Bros., would your views on the inventiveness of the packaged bacteria be different if the fact of mutual inhibition were previously published and a discovery of third party?

                16. [O]n Funk Bros., would your views on the inventiveness of the packaged bacteria be different if the fact of mutual inhibition were previously published and a discovery of third party?

                  Just to be clear, by “inventiveness,” we mean “obviousness,” right? I think that the Funk Bros. Court badly muddled subject matter eligibility and whatever-it-was-that-Hotchkiss-required. If we bracket that mix-up, however, and agree to talk about obviousness, then yes, I agree that the invention would have been obvious if the natural principle was already known. That is to say, if the prior art picture had been different than it was, then the outcome of prior-art based rejections should also be different.

                  Or, to put it another way, if my grandmother had wheels, then she would have rolled. But she did not…

                17. But of course Greg, is not that what the Supreme Court said? Once it became known that the bacteria would not mutually inhibit each other, the rest was obvious. If one assumes that the knowledge of a law of nature is not the property of the first discover but is the property of the public, then the law requires that there be invention assuming that this law of nature was publicly known.

                18. You are arguing in circular tautologies, Ned – and not addressing the point that “inventiveness” was NOT chosen by Congress in the Act of 1952.

              2. Greg I agree with you.

                Frankfurter’s concurring opinion in Funk Bros. is the best and most technically informed analysis of a patent-related issue I have ever seen in a Supreme Court opinion. The last paragraph of his concurring opinion is also prescient in forecasting the problems with “criteria” for patentability in the majority’s opinion:

                >>It only confuses the issue, however, to introduce such terms as “the work of nature” and the “laws of nature.”

                For these are vague and malleable terms infected with too much ambiguity and equivocation. Everything that happens may be deemed “the work of nature,” and any patentable composite exemplifies in its properties “the laws of nature.” Arguments drawn from such terms for ascertaining patentability could fairly be employed to challenge almost every patent. On the other hand, the suggestion that, “if there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end” may readily validate Bond’s claim. Nor can it be contended that there was no invention because the composite has no new properties other than its ingredients in isolation. Bond’s mixture does, in fact, have the new property of multi-service applicability. Multi-purpose tools, multi-valent vaccines, vitamin complex composites are examples of complexes whose sole new property is the conjunction of the properties of their components. Surely the Court does not mean unwittingly to pass on the patentability of such products by formulating criteria by which future issues of patentability may be prejudged. In finding Bond’s patent invalid, I have tried to avoid a formulation which, while it would in fact justify bond’s patent, would lay the basis for denying patentability to a large area within existing patent legislation.<<

                Reply
              3. Greg, there is a fundamental difference between prior art and a statutory bar where the acts of the inventor himself are at issue. The Supreme Court did not address prior art in Egbert. The fact that you think it did is part of the problem.

                Reply
                1. I really do not know what you mean here, Ned. I agree that “statutory bar” and “prior art” are not coextensive categories (pre-AIA §102(b) was both, as was §102(d), while §§102(a) & (e) were only prior art, but not statutory bars), but there is overlap. “Public use” is not only a statutory bar, it is also a category of prior art. In holding that Barnes’ use was disqualifying, the Court was also holding that the worn-corset was in the public domain.

                  As it happens, it was in the public domain. As the case notes, by the time Barnes filed, the corset in question was being extensively manufactured by others. That means the right reason to invalidate the claims was because during the time (11 years!) that Barnes was concealing his invention, others had invented the same article. The first to invent gets the patent unless s/he abandons, suppresses, or conceals, which is exactly what Barnes did here.

                  So no patent for him. Fine. But not because of “public use.” That is the wrong category, and by slotting the invalidity into the wrong category, the Court created bad law (as in, the kind that runs contrary to the ends which patent law is supposed to serve).

                2. Greg, the Supreme Court is always held that that the prior art must be enabling. Thus a written description must enable one to make and use. A physical embodiment of the invention must be available to the public to enable one to reproduce it, although with the latter it, seems to be presumed that one can reproduce the physical object by reverse engineering.

                  But the same considerations do not obtain if the inventor himself is exploiting the invention by publicly selling embodiments containing the invention while withholding from the public the secret of its manufacture and thereby maintaining a monopoly. This is the fact situation in Pennock v. Dialogue. It is presumed that the public cannot reproduce the invention based upon information that has. But nevertheless, by exploiting the invention prior to filing a patent application, the inventor is effectively extending the period a monopoly.

                  The equitable bar announced in Pennock has continued in the law although confusion obtains because section 103 referred to the entirety of 102 as prior art when there are distinctions to be made as to acts of the inventor versus prior art made public by a third-party. It is a matter of equity – abandonment of a right to patent by acts inconsistent with the policy of the law.

                  Regarding the 10-year public use of others prior to the filing of the application, this was the same fact situation be found in Pennock where the invention had been used publicly for seven years albeit with the consent of the patent owner. It is clear that the Supreme Court in Egbert did not hold the patent invalid because of the public use of third parties. It was the public use of the inventor himself, albeit in a manner that did not inform the public, which was a bar.

                  The case does not stand for anything more than what it held. It is not a general case on prior art of third parties and should not be so construed. To the extent that others have treated it as such is unfortunate.

                  That is why I fully agree with you that third-party prior art should be enabling. But the acts of the inventor in exploiting invention do not have to be enabling to third parties because the essence of the bar is equity.

      3. “less that precedent…”

        Er, “lest that precedent…”

        Reply
  20. Or: leave 101 as it is and simply say that “no patent claim shall be denied eligibility or declared to be invalid as lacking eligibility on the ground that the claim recites an abstract idea.”

    Reply
  21. The “could exist” hypothetical problem can be fixed (1) during prosecution with specific claim language or (2) during enforcement with clear statutory language that prevents asserting such claims in any Court. Who wants to sue end users anyway?

    Reply

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting