Hey, it’s my blog.
I just spent some time reading the PTO 101 guidelines and the arguments made about them earlier this month at the PTO.
Sixty years ago, Judge Rich wrote: “The drafters of the present statute did their best to take out of the law the undefinable concept of ‘invention.’ Whether lawyers will now take advantage of the terminology . . . and stop talking nonsense is up to them.” Principles of Patentability, 28 Geo. Wash. L. Rev. at 407.
This from Chief Judge Rader’s opinion in CLS Bank:
Defining one of those expansive categories, Section 100(b) confirms the statute’s intended breadth. At first examination, the Act’s definition of “process” to include a new use of a known machine seems superfluous. After all, if “any” process may be patented under Section 101, Section 100(b) seems wholly unnecessary. An examina- tion of the context for adding Section 100(b) informs the analysis of Section 101. Specifically, the 1952 amend- ments added Section 100(b) to ensure that doubts about the scope of a “process” under the pre-1952 version of the patent statute would not be read into the new Act. P.J. Federico,2 Commentary on the New Patent Act, reprinted in 75 J. Pat. & Trademark Off. Soc’y 161, 177 (1993) (Federico’s Commentary) (“Remarks have appeared in a few decisions and elsewhere that new uses are not pa- tentable. . . . [I]f such remarks are interpreted to mean that a new use or application of an old machine, manufac- ture or composition cannot result in anything patentable then such statements are not and have never been an accurate statement of the law.”); Hearing Before Subcomm. No. 3 of the Comm. on the Judiciary, at 37 (1951) (1951 Hearings) (Federico testifying that the “definition of ‘process’ has been added . . . to clarify the present law as to certain types of methods as to which some doubts have been expressed . . . .”). The 1952 Act shows that the “primary significance” of adding Section 100(b) was to make clear that a method was not “vulnerable to attack, on the ground of not being within the field of patentable subject matter, merely because it may recite steps con- ventional from a procedural standpoint and the novelty resides in the recitation of a particular substance, which is old as such, used in the process.” Federico’s Commen- tary at 177; see S. Rep. No. 82-1979, at 17 (“The . . . defini- tion clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions of patentability are satisfied.”).
In addition, in testimony requested by the Committee, P.J. Federico, a chief patent examiner at the United States Patent & Trademark Office (Patent Office), ex- plained that under the proposed amendment a machine or manufacture may include “anything that is under the sun that is made by man.” 1951 Hearings at 37; see S. Rep. No. 82-1979, at 5 (stating the same principle: so long as the conditions of patentability are met, anything made by man is patentable). The Supreme Court summarized the intent and meaning of these changes when it quoted and approved this famous statement. See Diehr, 450 U.S. at 182.
Indeed, to achieve these ends, the 1952 Act did not merely rely on the breadth of Section 101 and the expand- ed definition of “process” in Section 100(b), but also added the words “or discovered” to the definition of “invention” in Section 100(a). By definition, Congress made it irrelevant whether a new process, machine, and so on was “discovered” rather than “invented.” Both inventions and discoveries are eligible for patenting. This addition confirmed the principle articulated again in Section 103 that an invention “shall not be negated by the manner in which [it] . . . was made.” 35 U.S.C. § 103. The language of the Act shows that the authors of the 1952 Act wanted that principle incorporated into the eligibility section of the Act as well as the patentability sections.
One final point confirming the breadth of Section 101 is the 1952 Act’s deliberate decision to place the substan- tive requirement for “invention” in Section 103. Before 1952, the courts had used phrases including “creative work,” “inventive faculty,” and “flash of creative genius” which compared the existing invention to some subjective notion of sufficient “inventiveness” as the test for patent- ability—by definition a hindsight analysis. See Giles S. Rich, Principles of Patentability, 28 Geo. Wash. L. Rev. 393, 404 (1960). These standardless terms and tests created wildly disparate approaches to determine suffi- ciency for “invention.” Id. at 403–04. Judge Rich ob- served that with “invention” as the test, “judges did whatever they felt like doing according to whatever it was that gave the judge his feelings—out of the evidence coupled with his past mental conditioning—and then selected those precedents which supported his conclu- sions.” Sirilla, 32 J. Marshall L. Rev. at 501 (internal quotation marks omitted).
The 1952 Act focused its central purpose on correcting this systemic problem. “One of the great technical weak- nesses of the patent system” prior to 1952 was “the lack of a definitive yardstick as to what is invention.” Victor L. Edwards, Cong. Research Serv., Efforts to Establish a Statutory Standard for Invention, at 2 (1958) (Study on Standard for Invention). As Judge Rich testified at the beginning of this legislative effort in 1948, “the matter of defining invention” was “what we are trying to get away from.” Id. at 4. As Federico put it, “invention” was “an unmeasurable quantity having different meanings for different persons.” Federico’s Commentary at 183 (mak- ing the statements in the context of explaining why Congress added Section 103)…
After deliberate effort, the 1952 Act replaced any need for an “invention” or “inventiveness” measure with an objective test for “obviousness” in Section 103. See Dann v. Johnston, 425 U.S. 219, 225-26 (1976) (explaining that although “an exercise of the inventive faculty” had been used as a judicial test, “it was only in 1952 that Congress, in the interest of uniformity and definiteness, articulated the requirement in a statute, framing it as a requirement of ‘nonobviousness.’” (internal quotation marks and footnote omitted)). The official “Revision Notes” explain that Section 103 became an “explicit statement” of the “holding of patents invalid by the courts[] on the ground of lack of invention.” S. Rep. No. 82-1979, at 18; see Federi- co’s Commentary at 180 (explaining that one of the two major changes made by the 1952 amendments was “incorporating a requirement for invention in section 103.” (internal quotation marks omitted)); Study for Statutory Standard of Invention (extensively reviewing Congres- sional efforts to redefine “invention,” which culminated in adoption of Section 103). Thus, the central thrust of the 1952 Act removed “unmeasurable” inquiries into “inven- tiveness” and instead supplied the nonobviousness requirement of Section 103.
After enactment of the 1952 Act, both of its principal architects recognized the significance of the elimination of a subjective test for “invention.” Judge Rich, a House Committee architect of the 1952 Act and later an es- teemed jurist, applauded the fact that the Patent Act of 1952 makes no “reference to ‘invention’ as a legal re- quirement.” Principles of Patentability, 28 Geo. Wash. L. Rev. at 405 (emphasis omitted). Judge Rich emphasized that using “the past tense in referring to” what “used to be called the requirement of ‘invention’” could not be over- emphasized. Id. (emphasis in original). Federico expressed the same sentiments. See Federico’s Commentary at 182-83 (explaining that while perhaps the word “in- vented” in the prior patent act may have been the source of judicial demand for more than just novelty, Section 103 replaced any requirement for “invention”).
Contemporaneous commentators also recognized that any need for “invention” had been rejected in favor of nonobviousness. See generally, Karl B. Lutz, The New 1952 Patent Statute, 35 J. Pat. Off. Soc’y 155, 157-58 (1953) (explaining that courts had long ago decided that novelty was not enough and had disagreed on how to determine how much more was necessary, but that that issue was now addressed solely by Section 103); Dean O.S. Colclough, A New Patent Act—But the Same Basic Prob- lem, 35 J. Pat. Off. Soc’y 501, 510 (1953) (explaining that the “condition of inventiveness has been expressed in a variety of ways by the courts,” but the “new provision on inventiveness” in Section 103 was intended to replace and codify prior law). And indeed the courts, including this court, implemented the new statute carefully and reli- giously. See Graham v. John Deere Co., 383 U.S. 1, 14 (1966) (“Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts.” (internal quotation marks omitted)); W.L. Gore & Assocs., Inc v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983) (Markey, C.J.) (recognizing the district court improperly relied upon one step of a multi-step process to determine nonobviousness); Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349–50 (Fed. Cir. 1984) (recognizing that Section 103 sets forth the standard, and so “synergism” of a known combination is not required). Thus, any requirement for “inventiveness” beyond sec- tions 102 and 103 is inconsistent with the language and intent of the Patent Act.
With an eye to the statutory language and its back- ground, the Supreme Court recognized Section 101 as “a ‘dynamic provision designed to encompass new and un-foreseen inventions.’” Bilski, 130 S. Ct. at 3227 (quoting J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 135 (2001)). Indeed, the broad interpretation of Section 101 has constitutional underpinnings. “The subject-matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting ‘the Progress of . . . the useful Arts . . . .’” Chakrabarty, 447 U.S. at 315.
In sum, any analysis of subject matter eligibility for patenting must begin by acknowledging that any new and useful process, machine, composition of matter, or manu- facture, or an improvement thereof, is eligible for patent protection. While a claim may not later meet the rigorous conditions for patentability, Section 101 makes these broad categories of claimed subject matter eligible for that consideration.
Apple and Google settle, agree to change to change patent laws so that they can infringe other people patents with more impunity.
link to finance.yahoo.com
How does a settlement affect the law?
The “also agree together to work on patent reform” does not change the law – any changes still have to be written and voted on by the branch of government so allocated the authority to do so under the constitution.
No press release at Google: link to investor.google.com
No press release from Apple: link to apple.com
David, my first read of the 101 guidelines was along the lines of
“These guys really, really, do not get it.’
I wrote a post on the very first point of the guidelines showing that it was way off the mark, not even getting the holding of Myriad correct.
I think the folks at the PTO simply do not like Myriad and are doing their level best to undermine it or ignore it.
I see David, you are avoiding the requirement in the statute of “newness” and of “utility.” Assuredly, these were not swept away by 103 as well?
Ned
Just as they put “invention” into 103, they put “new” into 102. If you look at what was 101, it had “invention” and “new” and “useful” in it; they pulled out the text of “new” and put it into 102, and did their best to eviscerate “invention” of meaning.
I bet “utility” is a whole story unto itself. Look at the pre-1952 and post-1952 statute…
David, compare the 1790 statute with the 1793. “Discovery” was dropped in favor of “new.” As well, composition of matter was added. (Discovery was restored in 1836.)
Taken together, it is clear that Jefferson did not want to authorize the patenting of old compositions of matter that were not previously known or in public use, i.e., products of nature. But new was not limited to compositions, but to all of the categories.
“Useful” in terms of “art, manufacture, engine, machine, or device” was enacted in 1790. The list was clarified to include compositions in 1793.
Useful + a list tell us what the Framers, particularly, Jefferson, thought “useful Arts” to be.
When speaking of statutory construction, one looks at the meaning of the terms at the time they were first introduced.
102 speaks to prior art. 103 speaks to differences from the prior art.
101 requires, independently, “new” regardless of prior art, and this must include products of nature or laws of nature. This was the understanding long ago. See, fn. 15 of Flook. (It might also include prior invention of others.)
Ned
“When speaking of statutory construction, one looks at the meaning of the terms at the time they were first introduced.”
Unless of course a term has been determined not to be locked in time as to the items covered under that term, right Ned?
When it comes to statutory construction, you tend to be rather poor at it. Here, you engage in a tortured re-adapatation that happens to fit your agenda (the ignoring the fact that new and useful is a singular phrase, and that it is in the constitution and not in the various acts that “Useful Arts” is used – quite different than your artifically parsed and mangling of trying to apply useful to one of the categories in the list. We have “discussed” these errors of yours in the past. Well, “discussed” being as far as my appraising you of the error and you clenching tight your eyes. I will acknowledge that it may appear that some of my comments have taken root – this is the first time that you are attempting to use the parsed “useful” to apply to all of the categories. Of course, you fail at this attempt, as Useful Arts was a known term, but Useful Machines, Useful Manufactures and Useful Compositions are not known or recognized terms (as is Useful Improvements).
No Ned, you have jumbled up the law.
David, Just as they put “invention” into 103, they put “new” into 102.
David, clearly invention was in addition to the statutory framework in 1952. But the definition prior art was not. Let us take a look at the words of the statute in 1793. A previously explained, “new” was added in 1793 when “discovery” was dropped and when composition of matter was added. The point of this of course was to avoid allowing patents on newly discovered compositions of matter even though they were previously unknown – and this applies clearly to products of nature. This interpretation becomes even clearer when one considers the other words of the 1793 statute.
The balance of the pertinent portion of the Section 1 of the 1793 act read as follows:
“That when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application…” (Emphasis added.)
One can see from this that from the very beginning “new” coexisted with and was independent of prior art expressed as “not known or used.” These are independent and distinct requirements that were in the statute from the very beginning and continue until today. The separation of this clause into two distinct parts in 1952, did not in any obvious way effectively repeal “new” from what is now 101.
One can see from your comments that one is trying to create the impression of in the minds of the readers that somehow there was no difference, ever, between “new” and prior art. If that were the case, the word new would never have been added to the statute in 1793. “New” and prior art were distinct requirements then, and are distinct requirements now.
It is not by accident that myriad determined that a product of nature is not a “new” composition of matter. I believe the Supreme Court clearly understands the statute and the statutory structure. I am also very sure that judge Rader does not.
I don’t see that at all, Ned. If you look (what was) 101 before 1952, it defined “new” in terms of prior art — period. They moved “new” into 102 — period. They moved “invention” into 103 — period.
If I take it your way, I’d say that someone, prior to AIA even, who files a patent the day after he uses it in public loses the right to patent, since it’s not “new.” But you read “prior art” out of “new” in 101, give it meaning on its own, and then say being “new” in terms of 101 is a condition of patentability and a defense to infringement.
It just doesn’t say that. I personally could care less — except that we’re dealing with separation of powers — but it just doesn’t say that.
David, may I quote from Curtis, Section 32. He explains the inquiry quite well. One can see in the following that the so-called exception (law of nature, product of nature) are not exceptions at all, but are the statutory requirement of newness.
“It may be doubted, whether all the different forms of stating or investigating the question of sufficiency of invention are anything more than different modes of conducting the inquiry, whether the particular subject of a patent possesses the statute requisites of novelty and utility, both of which qualities must be found uniting in it. Thus it may, in a particular investigation, be necessary to consider, not whether an invention, in point of fact, was the result of much thought, design, or ingenuity, but whether it may have been so. It may not be necessary that there should be positive or direct evidence of the expenditure of more or less thought, design, or ingenuity, or of a greater or less degree of exercise of what is sometimes called the inventive faculty. Still, it may be important to see, that the possibility of there having been an exercise of that mental process which is called invention is not excluded by the character of the supposed product of the act or process of invention; because the possibility that the thing made, or the result produced, was arrived at by study and experiment, and not by mere accident, although not an ultimate test of the right to a patent, is one test by which we can determine whether there is a substantial novelty in the alleged invention, as compared with what existed before.
While the law does not look to the mental process by which the invention has been reached, but to the character of the result itself, it may still require that the result should be such as not to exclude the possibility of some skill or ingenuity having been exercised. It requires this, because it requires that the subject-matter of a patent shall be something that has not substantially existed before, and is useful in contradistinction to being frivolous. Now, while a thing that is both new and useful may have been produced by accident, and not by design, yet it may also have been the fruit of study and design. If, however, the character of the alleged invention be such that no design or study could possibly have been exercised in its production, then its character tends strongly to show that it does not differ substantially from what had been produced before; or that it is frivolous and immaterial. While, therefore, the law does not regard the process by which an invention has been produced as a decisive test of its patentable qualities, it is often necessary to see whether the character of the invention excludes the possibility of thought, design, ingenuity, or
labor having been exercised in its production, or exercised to any
considerable extent.”
Thus, a composition of matter, not previously known, but simply discovered, is not new. That is the exact holding of Myriad, and it is supported not only in the statute, but in the original understanding of the statute as exhibited by Curtis.
Right, I’m not fighting about that you can’t patent something that is discovered but was publicly available. Finding Hriciktite, a new mineral, doesn’t mean you can get a product claim to Hriciktite, as I wrote a long long time ago here.
But that’s in my view simply applying 102. I don’t even need to look at 101 and read something into it that’s not there. I don’t need to ignore the headings of 102 and 103, and the language of 282.
But it’s also not what matters. Read the summary judgment grant in the Ariosa v. Sequenom case, and see what is happening… method claims that are new/nonobvious are out the window on 101 because they use a natural product. It’s madness.
Ned,
Please incorporate the errors that I have pointed out in your use of the Curtis reference. Your reliance on a secondary source can be (and in certain regards is) a clear error of law.
Further, please note that in apparent parallel to Prof. Hricik and his Hriciktite mineral, you have so far to date avoided the hypothetical that I put to you regarding Putinsite.
I would also add (in contradiction to your previous assertions), that Malcolm has also NOT addressed the hypothetical that I presented.
Tell me, are you still stuck on Nazomi? Do you still (in error) think that that case is somehow strictly only a hardware case?
Do you understand how vexing it is when it is apparent that you are refusing to incorporate key valid points put to you? How unprofessional it is of you to continue to ignore these points as if they were not on the table?
On the main thread, you “gave me a bone” – do you realize exactly what it was that you really did “give me?” Or do you realize that I have been correct all along?
David, I think we just made some progress.
A product of nature is not “new” even if previously unknown. This is consistent with the statute as it existed in 1793, and was and still is the understanding of the statute today by the Supreme Court.
Law of nature is similarly not “new’ though previously not known.
One can pass 102 novelty, and still not pass “new” if the subject matter being claimed was clearly in the public domain despite not being technically known or in public use.
One has to apply the hand of man is some degree to move away from what is in the public domain, just as was said by Curtis. The degree one must move is another thing.
Now we see the problem created by the architects of the ’52 in crafting 103 — it is strictly limited by its terms to prior art. That artificial limitation to prior art did not exist in the statutes until 1952.
So, just how much do we have to add to be not new? The Supreme Court has now been forced to independently develop that law because of the architects of the ’52 Act butchered, in my view, the statutory framework that has stood the test of time. Really good job there, guys.
I’m sorry anon, but I really don’t read most of your posts because they always seem just ask rhetorical questions so that neither I nor anyone else know what you are talking about.
Your most recent post is a good example. You reference “Putinsite.” I don’t really have a clue as to what you are talking about.
I laid out a hypothetical centered around a newly discovered mineral in Australia (or thereabouts) named Putinsite.
A couple of points about the hypothetical:
– the example I laid out had man inventing the crystal and fully claiming the structure of the crystal, prior to its discovery in nature. The discovery of the item in nature – even after the invention of man – places the invention of man into the not eligible category.
– nature and the universe is not static (you seem to want to build on a false foundation that the anything found in the universe must necessarily have always been there).
– the warehouse of nature exclusion is not time-based (See Chakrabarty and Myriad)
That you choose not to read my posts is your loss.
Don’t worry too much – as long as you refuse to address key points laid before you and as long as you continue your own brand of rhetoric, my posts will point these things out to you.
anon, regarding “Putinsite,” I would say that the proof that the subject matter was the work of man before its discovery in nature should be sufficient. However, its discovery in nature should raise a presumption to the contrary that would have to be overcome by such proof.
Ned,
The following statement is simply an untruth and has never been true in a factual sense:
“If, however, the character of the alleged invention be such that no design or study could possibly have been exercised in its production, then its character tends strongly to show that it does not differ substantially from what had been produced before; or that it is frivolous and immaterial.”
Such is the wishful thinking and interposition of a secondary source person, who is simply wrong in their thinking. One counter example would be something (still allowed in patent law) under the product-by-process route. This route allows a thing to be claimed in which the structure of the thing is just not known, nor is the exact principle by which “what works” is known – merely that the thing does – in fact – work. Another counter example is an invention of pure serendipity or happenstance – prior to any reverse engineering and figuring out why the result was achieved (and which design or study could even be contemplated), the item itself can be perfectly suited to be both patent eligible and patentable.
You just are not applying a critical enough thinking to what you are accepting as a ‘gospel truth.’ Curtis is simply not the law.
This is yet another facet of yours in your over-reading what is out there in the blind pursuit of your agenda – another type of “6-is-a-genius-because-he-agrees-with-me” fallacy.
Ned, re: 3.1.2.1.1.6
“I would say that the proof that the subject matter was the work of man before its discovery in nature should be sufficient”
You would be wrong. Again, see Chakrabarty.
There is a clear distinction that you are missing. Just because man can ALSO make something that nature makes, does not mean that the THING made is patent eligible, even if it is only discovered later to be made by nature – even if nature only makes it later (this is the distinction that the universe is not static that you insist on ignoring).
Man’s method of making something that can also be found in nature – though just discovered – may yet be patent eligible and patentable, but the item itself loses its patent eligibility.
Where do you come up with this notion of ‘presumption?” There is no such presumption EVER mentioned anywhere in the patent universe on this topic.
You have made that up whole cloth.
The item is either patent eligible, or it is not. If the item is effectively in the warehouse of nature, it is simply not patent eligible – no presumption can – or does – arise. The simple point is that this eligibility aspect can be determined after a patent grant. The universe, not being static, can in fact come to create the item later in time than man create’s the item. The judicial exception does not care about the timing of the two. That is the difference between this and the notion of prior art. If it were ONLY an aspect of prior art, the exception would not in fact be applicable to 101, and would instead be applicable to 102. There is no logical reason to think that a judicial exception MUST BE located – and only located – in 101.
Ned,
Your love of the Royal Nine leaves you blind.
I “synergism” is not required of a known combination.
I have two problems with that:
1. Known combinations; and
2. Sakraida v. Ag Pro.
Regarding 1, known combinations had nothing at all to do with the problem identified by the Court. Old combinations involving changes to one element is a quite distinct issue from an aggregation of old elements each doing exactly the same thing as they are known to do. That is where there must be some new function when the combination of old elements is formed.
It is remarkable that the criticizers of the Supreme Court like to set up strawmen and knock them down.
The Supreme Court took KSR because the Federal Circuit refused to recognize Sakraida — and that is a fact.
Also, I believe the KSR guidelines are not faithful to KSR.
More or less this has been my position about the 1952 Act forever and a day.
(I like the add-in from Frederico too)
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