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 anduseful process, machine, manufacture,orcomposition of matter, or anynew anduseful improvement thereto, shall be entitled tothereof, may obtaina patent for a claimed invention thereoftherefor, 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.
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.
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.
Why are there trip words, when ad hominem attacks are common? It seems a bit ludicrous.
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.
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.
Unclever…?
So Malcolm is merely a (self-proclaimed) clever @-hole…?
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.
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 …
“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.
“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.
The blight runs rampant, and my opinion of that blight is c3ns0red.
Yay “ecosystem.”
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.
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]
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.”
“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.
Oh, I forgot to mention: the Supreme Court has affirmed this simple proposition unanimously, at least twice.
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.
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?
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.
MM, methinks that an ounce of education by those involved in this effort would prevent a pound of cure.
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.
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.
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.
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.
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.
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.
“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…
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.
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…
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.
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.
How is your copyright on logic coming along, Malcolm?
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.
Copyright: expression.
Patent: utility.
It is not that difficult.
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.
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.
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.
Your lack of understanding what the copyright cases mean only adds to the confirmation that this law thing is just not your baillywick.
“Show one single authority for that proposition.”
Anon defined it that way lol. His purpose is totally not self-serving either!
And yet, the world turns…
Is the drum of fingers in a music box a component of the music box?
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.
“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.
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.
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.
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
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.
So the binary logic actually stored in the system memory for execution?
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.
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.
Again, for your “logic” – how is your copyright coming along?
That’s what I thought.
Chump.
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.
Heavens, we should be wary of 35 USC 100(b), eh Ned?
“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.
… case in point…
“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.
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.
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.
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.
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.”
“Only Mr. X may sell item K”, without further justification, is a Bill of Attainder and a definitive Constitutional problem.
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.
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.
[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.”
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.
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.
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.
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”?