Amending 101?

Patent

Some have been considering a statutory overruling of Mayo and Alice Corp. What would this amendment do?:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Patent eligibility extends to the full extent permitted by the Constitution.
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220 thoughts on “Amending 101?”

  1. 36

    Let’s consider what was “carved out” lest we not be influenced by ignorance of the facts:

    PA, 1870, RS 4886:

    “That any person who has invented or discovered any new and useful art,
    machine, manufacture, or composition of matter, or any new
    and useful improvement thereof, not known or used by others
    in this country, and not patented, or described in any printed
    publication in this or any foreign country, before his invention
    or discovery thereof, and not in public use or on sale for
    marc than two years prior to his application, unless the same
    is proved to have been abandoned    , may, upon payment of the
    duty required by law, and other due proceedings had, obtaiu
    a patent therefor.”

    2. 36.2

      Congress explicitly rejected the notion of ‘invention’ and went instead with the notion of obviousness.

      That rejection entailed ‘inventive gist,’ ‘inventive novelty’ and the dozen or so synonyms that are reflected in today’s discussion of 101 (as implicitly re-introduced, not by the legislature, but by the Court.

      Anyone who has studied the history of 101 would – and should – know this.

      1. 36.2.1

        Federico commented that 103 was about “novelty” — i.e. when the prior art did not disclose the invention identically. From its plain language, that is exactly what 103 purports to be about.

        What you are trying to do, anon, is warp 103 into something that inconsistent with its plain language and with Frederico’s comments. You are blatantly trying to erase 101 from the law.

        1. 36.2.1.1

          You say plain language but put novelty in quotes.

          That does not wash.

          We both know that Congress directly talked of why they created 103 and I have often posted the Cornell Law link with explicit words.

          Your accusation that I am trying to erase 101 is baseless and without merit. You are the one trying to rewrite history. That no one seems willing to exercise any accountability concerning your blatant errors of law is quite reflected in what transpires here. But no matter that – history is as I have shown and no amount of spin or deception or ‘creative’ mangling of words from statutory categories to ‘statutory’ can erase what simply is.

  2. 35

    Whatever it would do is uncertain, which defeats the purpose of the amendment. The Supreme Court would likely just say that “useful arts” only encompass anything that would be patent eligible under the Mayo framework anyway.

    Make it easy: “Patent eligibility under Section 101 does not require an inventive concept.” Cases overruled.

    1. 35.1

      Bill, are we at cross purposes here. Is the goal to make the recent cases the law, but in simpler terms, or to simply overturn them, promote nominalism, and to allow the patenting of business methods and their ilk, provided a machine is involved in the process?

      Striking 101 and simply referencing the Useful Arts actually would change nothing, IMHO, and in the opinion of others. The exceptions would still predominate.

      But your view that in a new section 101 that patents patents would not require conception essentially would read out of patent law the requirement for invention and inventors, both of which seems to be in the Constitution.

  3. 34

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    (a) Inventions and discoveries directed towards changing the legal status or relationship of one or more individuals’ life, liberty or property are not patent eligible subject matter.

    For example, methods of creating contracts are not patent eligible, and methods of purchasing goods or services are not patent eligible. However, methods of monitoring a business would be patent eligible.

    1. 34.1

      Just an idea, does the specification of machines, manufacturers and compositions as patentable subject matter qualify as an exclusion of subject matter that is not related to machines, manufacturers or compositions?

      1. 34.1.1

        Yes, but I included processes. Processes provide an adequate way to patent just about anything. I think this amendment could be used to preempt the “abstract idea” concept, and focus more on the “organizing human activity” that Sotomayor mentioned in the concurring opinion of Alice.

        The law as it stands for natural phenomena and laws of nature doesn’t seem as contentious of an issue at the moment.

        1. 34.1.1.1

          Just, but prior to ’52, it was Art, not processes, in 101. The change to from Art to process was not intended to change the law. In 1790 Art was added to follow the English practice of recognizing inventions in ways of making a manufacture, which included a new or improved machine or composition.

          It did not include math, economic principles, E=MC*2, methods of playing card games, training cats, of wasting time, of improving contracts or auditing businesses, of improving magic by diverting attention, or of arguing on blogs by deliberately missing the point.

          From Curtis, Section 9, page 7 of his Treatise:

          Ҥ 9. 1. AN ART. What is meant by the statute when it describes
          the subject of a patent as “any new and useful art;” or
          ” any new and useful improvement on any art,” it is not difficult
          to understand, if we bear in mind the general purpose of the patent
          laws, and the other classes of subjects which they embrace.
          We have just seen that, in order to make a new process or method
          of working or of producing an effcct or result in matter a subject
          of a patent in England, a somewhat liberal construction of the
          term” manufacture” became necessary, by which an improvement
          in the art or process of making or doing a thing was made
          constructively to be represented by the term which ordinarily
          would mean only the thing itself, when made or done. It was
          doubtless to avoid the necessity for this kind of construction that
          the framers of our legislation selected a term which, proprio vigore,
          would embrace those inventions where the particular machinery
          or apparatus, or the particular substances employed, would not
          constitute the discovery, so much as a newly invented mode or
          process of applying them, in respect to the order, or position, or
          relations, in which they are used. Thus, for example, in the art
          of dyeing, or tanning, it is obvious that an old article of manufacture
          may be produced by the use of old materials, but produced
          by the application of those materials in new relation~. In such
          cases it might not be practicable to claim the article itself, when
          made, as a new manufacture, for it might, as an article of commerce
          or consumption, differ in no appreciable way from the same
          kind of article produced by the old and well-known method. At
          the same time the new method of producing the article might be
          a great improvement, introducing greater cheapness, rapidity, or
          simplicity in the process itself. Again, other cases may be supposed,
          where the manufacture itself, as produced by a new process,
          would be better than the same manufacture produced by the
          old process, as in the different modes of making iron from the
          native ore; and yet the really new discovery, in such cases, could
          not well be described as a new” manufacture” or a new” composition
          of matter,” without a figurative use of those terms which
          it is desirable to avoid. This difficulty is avoided by the use of
          the term ” art,” which was intended to embrace those inventions
          where the. particular apparatus or materials employed may not be
          the essence of the discovery, but where that essence consists in
          tions, so as to constitute a new mode of attaining an old result;
          or a mode of attaining a new result, in a particular department of
          industry, which result may not of itself be any new machine,
          manufacture, or composition of matter; or finally, an entirely
          new process of making or doing something which has not been
          made or done before, by any process.”

          1. 34.1.1.1.1

            “This difficulty is avoided by the use of
            the term ” art,” which was intended to embrace those inventions
            where the. particular apparatus or materials employed may not be
            the essence of the discovery, but where that essence consists in
            tions, so as to constitute a new mode of attaining an old result;
            or a mode of attaining a new result”

            Art embraces those inventions where the essence consists…so as to constitue a new mode of attaining an old result, like a new way of achieving intermediate settlement, or a mode of attaining a new result, such as obtaining E from the input of m and the multiplication thereof by the square of C.

            1. 34.1.1.1.1.1

              Nice try, Les.

              I think you missed the gist of the discussion. Art was added to avoid the difficulty in the English limitation to manufactures, where the invention was not a new or improved machine, manufacture or composition per se, but in the way of making them.

              1. 34.1.1.1.1.1.1

                Don’t impermissibly distill the the discussion down to a gist you want to find Ned.

                It is clear that “the term ” art,” which was intended to embrace those inventions
                where the….essence of the discovery…consists in
                tions, so as to constitute a new mode of attaining an old result …or a mode of attaining a new result”

                I don’t know what “tions” are…maybe its olde English or Gallic for something…. but I think the reason for the addition of “acts” is clear and it is not so limited as you want it to be.

          2. 34.1.1.1.2

            Let’s try that quote again, and thank you Les,

            “This difficulty is avoided by the use of the term ” art,” which was intended to embrace those inventions where the particular apparatus or materials employed may not be the essence of the discovery, but where that essence consists in using apparatus or materials in new processes, methods, or relations, so as to constitute a new mode of attaining an old result;
            or a mode of attaining a new result, in a particular department of
            industry, which result may not of itself be any new machine,
            manufacture, or composition of matter; or finally, an entirely
            new process of making or doing something which has not been
            made or done before, by any process.”

            1. 34.1.1.1.2.1

              I don’t see any support for your position in this extended quote do you?

              What I see is additional support for MY position: ” or finally, an entirely new process of making or doing something or which has not been made or done before, by any process.”

              1. 34.1.1.1.2.1.1

                Les: ”

                What I see is additional support for MY position”

                You are absolutely right Les, the term “Process” includes doing something which has not been done before, by “any” process.

                Ned has defeated himself in this debate.

          3. 34.1.1.1.3

            “Just, but prior to ’52, it was Art, not processes, in 101. The change to from Art to process was not intended to change the law.”

            You are correct Ned, in that congress in keeping with the constitutional mandate to promote the “progress” of science and useful Arts changed Art to process to reflect the fact the world was now in the atomic age.

            The splitting of the atom was no longer just an abstract idea/theory but a physical reality with measurable results. Atoms were and are things that compose all processes. What new inventions and technologies this new age would usher in could not be known but the inevitable on rush could not be blocked by freezing the useful arts to 1790. To do so ( as you wish) would not only be impracticable it would also be unconstitutional.

  4. 33

    In a nutshell, it would grant the Court carte blanche to rewrite Section 101 any way it wants. The Court might even devise a definition of the IP Clause that is more limiting than its current Section 101 jurisprudence. It’s an absolute punt of the issue from Congress to the Court and is a terrible idea. If Congress wants to overrule Mayo and Alice Corp., this wouldn’t accomplish it. More likely, it would convert decisions based on statutory interpretations into Constitutional limitations on the power of Congress to legislate patent scope.

  5. 32

    Without getting into language, we should consider separating into different buckets the different kinds of issues presented in these 101 cases.

    1. Scope issues — not enough application. The MOT is what is really required for an application. Spell it out. Rubber-Tip Pencil is an example – the idea of attaching the rubber-tip to the pencil was claimed but at too high a level of abstraction to be patentable. Diehr is an example of an application.

    2. Not in the useful arts. Economic principles, music, methods of playing games, training cats, etc.. If the novel subject matter is one of these, clearly this rises to a constitutional issue and legislation is not going to provide a fix.

    3. Old but not previously known, i.e., not new even if discovered by the applicant. Examples are minerals, compositions of matter in nature, and laws of nature. A new use of the old compositions or a practical application of the law of nature is what is required for patentable subject matter.

    Have I forgotten something?

    1. 32.1

      Ned, can’t we deem your item 1 subject matter unpatentable under section 112?

      And your item 2 subject matter fails under section 102 as inherently anticipated.

      No need to invoke section 101 for either of those instances.

        1. 32.1.1.1

          Help, regarding 3, you could go to “inherency.” But in truth, the legal basis for Myriad was 101, not prior art. National DNA is not new even if not known.

          I agree with Myriad.

    2. 32.2

      Help, needless to say I totally agree that the scope issue is a 112 issue and has always been a 112 issue. The court in Morse specifically cited the then statutory analog to section 112 as the basis for its holding.

  6. 31

    Information processing methods implemented by a machine are eligible for patentability under 101.

    Nothing that slips through 101 cannot be dealt with under 103. I challenge anyone to come up with just ONE example.

    1. 31.1

      1. A rock and roll song performed with a plurality of instruments including drums and guitars and sung lyrics where the lyrics express one or more of angst, alienation, depression, and melancholy and where the chord played on guitar are predominantly characterized by diminished sevenths

      There’s a claim that would have pre-empted half the pop musical creativity of the USA in the 1990s if some Seattle promoter had anticipated State Street Bank and filed it in 1989. And it has no §102 or 103 problems, certainly no such problems in PTO databases.

      Without §101, how do you propose to deal with it?

          1. 31.1.1.1.1

            The claim does not require a specific key. It has a lot of 112 issues. What is “predominantly”? What is “rock-and-roll”? It also has a lot of subjective stuff, like angst. How does the examiner establish that lyrics express angst? Would an augmented sixth chord count as equivalent?

            1. 31.1.1.1.2.1

              Nice. That is pretty grungy for a 1970s power ballad. There’s a lot of accidentals stepping on the chromatic harmony making some nice rare chords.

              When §101 is repealed, I want you appointed to run this art unit.

              1. 31.1.1.1.2.1.1

                Deal, but be careful what you wish for:

                I’ll tip my hat to the new constitution
                Take a bow for the new revolution
                Smile and grin at the change all around me
                Pick up my guitar and play
                Just like yesterday
                Then I’ll get on my knees and pray
                We don’t get fooled again
                Don’t get fooled again
                No, no!

                YAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAH!

                Meet the new boss
                Same as the old boss

        1. 31.1.2.1

          OK:

          2. A computer system actuating a speaker to play the song by reading the sounds from an information storage device

          1. 31.1.2.1.1

            That claim doesn’t read on your own hypothetical. You really are out of your element here.

              1. 31.1.2.1.2.1.1

                OK Les. I think I get what you are trying to say.

                OK. Yes I think it is statutory. So, your concern is that someone is adding the type of music to a kind of stereo?

                But, that is not a problem. Here’s why. The type of music would not add anything to patentability because it is a non-functional relationship to the stereo.

                Consider if you could get a patent to a stereo let’s say because its amplifier passed 102, 103, and 112. Then you add wherein the stereo plays the type of music you have above. You have just narrowed the claim not broadened it.

                Do you understand that Les? If you add something non-statutory you just end up narrowing a claim. This is a truth that the anti movement puts a lot of work into blowing smoke around.

                1. …

                  And note if the other aspects of the stereo didn’t pass 102, 103, 112, then the type of music would not help you.

                2. …

                  Look at this way Les. If you came up with a new bicycle that was patentable and they add where it is red, should that be a problem?

                  I think no. It merely narrows your invention.

                3. …

                  Night

                  I think your argument is with Owen, not I. You and I are usually on the same page and I think we are once again.

                4. …

                  ooops — take it back.

                  You seem to have slipped over to the software does not make a new machine camp.

                  There I disagree.

                5. …

                  It’s an old stereo. The music genre is new. The combination is narrower than the stereo alone. The combination no longer fails under §102 or §103 because there is no old practice of this new genre of music on this old stereo.

                  Thus, the genre of music becomes patentable.

                  You suggest that we should ignore genre of music as a novel addition, which is exactly what J. Thomas told us in Alice. We should take the abstract non-statutory portion of the claim out and see if the remaining element is new and then we should consider whether the abstract part preempts use of the concept.

                  But the distinction that music genre is abstract and non-functional depends on the Constitution and §101. It is not in §102 and §103 as you — far upthread — suggested.

                  My point here is a narrow one. There are abstract concepts, principles, artistic movements, forms of expression, mathematical concepts, laws of nature, and such that need to be kept out of the system on §101 grounds because §102 and §103 are insufficient to exclude them.

                6. …

                  I agree with Owen here, though I’d go a step further and point out we’re talkign about two different categories of exclusion.

                  Application of an abstract idea, law of nature, or natural principle may be patentable, even though they are excluded standing alone.

                  But contributions in the fine arts, sports, and the like, are in a different class, a class that’s even further outside the patent system. If that’s the point of novelty over the prior art, I have no problem saying the entire invention is excluded.

                7. …

                  DB –

                  Those are arbitrary categorizations.

                  Our position is old machine plus new configuration to do a new task makes a new machine. A box that does nothing or a box that does spread sheets, when loaded instead with information that changes it into a machine that helps one create text documents, is a new machine.

                  Likewise, a box that previously played old songs, when loaded with information that configures it to play a new song, is a new song player.

                8. …

                  The arbitrary becomes non-arbitrary after a court says so.

                  “While a scientific truth, or the mathematical ex-pression of it, is not a patentable invention, a novel and useful structure created with the aid of knowl-edge of scientific truth may be.” Diamond v Diehr, 450 U.S. 175, 188 (1981).

                  On the other hand, music was the example of totally-excluded subject matter that Judge Archer discussed in his dissent in Alappat.

                9. …

                  David, may I suggest that we all stop talking about “exclusions.”

                  Music is not categorically excluded by some exception. Music is not statutory, being neither a machine, manufacture, or composition of matter. It is that simple.

                  Just like an economic principle is nonstatutory, it being neither a machine, manufacture, or composition of matter.

                  DNA, however, is a composition of matter and there must be some reason to exclude it if “newness” is not enough.

                  See the distinction?

                12. …

                  Ned –

                  Why does something have to have a specific gravity to be manufactured? I don’t see that as a requirement in the definition of a manufacture. Do you?

                  You didn’t answer my question by the way.

                13. …

                  Yes. A “manufacture” must be an “article.”

                  Les, you’re arguing silly points just to argue. Come back to earth. Be productive and constructive.

                14. …

                  Les sorry. It was with Owen. I haven’t slipped over to the dark side.

                  Owen, old stereo + new music = 103. It is simple. The music has no functional relationship with the operation of the stereo. So, every variation of the music is obvious in view of the operation of the stereo. 103. There are no new functions for example.

                  Really Owen do you think your brain is the same as a stereo? And do you think that the different information processing methods you use are like music?

                15. …

                  David –

                  An article is a thing. Look it up . Signals and sounds and music are things, and, at least when made my humans are articles of manufacture.

    2. 31.2

      Night, Information processing methods implemented by a machine are eligible for patentability under 101.

      Mr. Don Quixote, can you tell me why you say a machine is required?

      Also, consider Wyeth v. Stone, “I claim the use of any machine to cut blocks of ice.”

      If the identification of a machine is enough, what is wrong with such a claim?

      But of course, you and I would agree in principle, that the problem is not a 101 problem, but a 112 problem.

      1. 31.2.1

        >>not a 101 problem, but a 112 problem.

        Well I exactly agree with that Ned. The problem: enablement for one. Of course, 102 and 103 would be the other problem. But, you know, one should not completely dismiss the claim. I think there are scenarios where the claim would be valid.

        What do you think of the claim Ned?

        1. 31.2.1.1

          The Wyeth claim could be patentable as machine if the structure of the machine were claimed. I don’t think cutting ice in blocks was new even then. So, probably not a patentable process.

      2. 31.2.2

        There is no problem with the ice machine claim as long as a preferred embodiment of such a machine was disclosed and no such machine was ever known or used by others.

      3. 31.2.3

        Several subthreads here are going way off into silly territory. Let’s stick with the § 101 analysis of proposed claims. Nobody here is billing hours, so we’re not spending time to get the whole claim correct with respect to every requirement. We’re trying to talk about § 101. That’s a big enough topic. So let’s stick to it.

  7. 30

    The proposed amendment is scary.

    Scotus’s incoherent ramblings about what 101 says now are bad enough and can be fixed with a carefully considered amendment to 101, perhaps one of the postings here, or whatever we can build a consensus around that is its own definition of patentable subject matter. Then it will be another couple of decades before Scotus fouls that language so badly that another fix is needed.

    If we amend 101 now to say whatever is patent eligible under the constitution is patent eligible and Scotus repeats the same ramblings, there is no fix.

  8. 29

    The proposed amendment seems like a “kicking-the-can-down-the-road” attempt at a solution. And it would seem to go without saying that patent protection has always been to the extent provided by the constitution. Why not instead create a new type of protection akin to patents for subject matter giving us problems?

    1. 29.1

      *Why not instead create a new type of protection akin to patents for subject matter giving us problems?*

      Good idea. We could create a new kind of protection for business methods where once you attach your name to a service and register it, no one else can use the same name so that your brand identity and service reputation are protected. I’m calling my idea a brand patent. We can rename the PTO the Patent and Brand Patent Office.

      And for software, we could make it illegal — with criminal penalties and everything — to copy anyone’s software. Since functional-only descriptions block innovation and are useful only to scammers, we’ll protect the actual software code itself to promote new software. I call me new idea Copy Patents; the Library of Congress should take charge of them.

      1. 29.1.1

        Ha! well done. I disagree with your position, but that was pretty witty.

        But copyright doesn’t protect software at all, in the way you think it does. Copyright only protects the expression, not the idea behind code. (as an aside, it seems ridiculous to me that Copyright should protect machine code, but that’s another story). Patents, on the other hand, are meant to protect the idea of the invention. Software patents, in particular, are nothing but processes. If a process is patent eligible, then “doing it on a computer” shouldn’t make it ineligible.

        1. 29.1.1.1

          Thanks.

          It’s a funny thing to have copyright for object code. There’s a statute because administrative findings didn’t seem secure enough. But software is a form of creative expression and object code is just a mechanical translation of that expression, and translations have been copyrighted for a couple centuries.

          Pre-empting the ideas behind code is counterproductive to innovation and creativity in software for the usual reasons pertaining to creative expression. Preventing literal copying is essential and effective in protecting the incentives to write new software since the exact details are so important to its value, again like other creative expression. And that, more than legal niceties, is the case against software patents.

          When a process is patent eligible, it needs to be specifically described. Patents are not issued for abstract ideas in general — except in software. Specifically describing a software idea would mean writing code and protecting that specific code. Treating software as abstract so that ideas can be protected outside a specific code implementation and also as a process in the useful arts suitable for patenting is having it both ways.

          No wonder the programmers who are the victims of the patent system are furious that the enemies of software are blocking progress by imposing such a system on them. I’m amazed how many tell me now that they’d repeal 35 USC entirely just to get rid of software patents.

          1. 29.1.1.1.1

            Ah, that’s a good point about translations. However, copyrighting a machine code seems nearly useless to me. Unless you have only one predominant CPU architecture and one predominant type of programming language and only one way of compiling the source code to executable code, you’re going to end up with wildly different executable codes. Throw in the countless compilation options and operating systems, executable environments, versions of libraries, etc., it seems to me that a copyright of an executable code is nearly useless and therefore doesn’t really protect anything. I could compile your source code (and claim i didn’t copy your source code 😛 ) and end up with entirely different executable code just by changing some compiler options (e.g. optimization options.)

            I agree that we need to protect literal copying of source code, but i don’t see how that precludes the fact that software also include ideas. And i do not see how software can be described as an “abstract idea” when it is just like any other eligible process. In fact, any patent-eligible process can be described via software. Suppose you had a process for baking a cookie that’s patent eligible; if you had a computer program to do it, would that program then become patent ineligible? Of course not! Just as doing it on a computer doesn’t make something eligible (thank you SCOTUS!), it shouldn’t make something ineligible if the process was eligible to begin with.

            Software is merely a process written in a type of a language (programming or machine language). Saying that software is patent ineligible subject matter is akin to saying any process described in a foreign language is patent ineligible subject matter. There may in fact be other reasons not to allow patents written in say Spanish, but subject matter eligibility would be the wrong analysis to use. (As an aside, software language is a lot less “abstract” and a lot more “definite” than human languages. So a case can be made that we should only allow software processes. haha.)

            “Specifically describing” a software idea doesn’t necessary include writing source code – i can specifically describe a loop without writing it, and that same idea of a loop can be written in million different equivalent ways (i.e. expressions). That’s why in software development, some programmers / designers us pseudo code or specification documentations or other design documentation like UML; you don’t have to write every object or function, but if you have a good design, you can pretty much fill out rest of the program in, again, million different yet functionally equivalent ways. (I do see a doctrine of equivalence argument developing; so should we allow software to be patented if it’s described in a source code? maybe. haven’t thought about this…).

            Copyright protection of source code is pretty darn thin; if anything, we should get rid of that instead of patent protection, and hear the outcry of million programmers who fashion themselves as artists and use proce55ing (myself included. haha.). The overlap of copyright and patent protection is pretty much zilch.

  9. 28

    The proposed amendment seems like a “kicking-the-can-down-the-road” attempt at a solution. And it would seem to go without saying that patent protection has always been to the extent provided by the constitution.

  10. 27

    The amendment that fixes the problem is to (a) translate the the key quote from Diamond v Diehr — yes, that one, the one that has been omitted from Bilski, Mayo, and Alice — into statutory language, (b) to remove the word “new” which seems to be causing such confusion among the nine purveyors of gobbledygook, and (c) to add a statutory recognition that information is as much a physical property as matter or energy (to deal with DNA, information in a memory, and the misguided decision in In re Nuijten). Here’s the quote from Diehr that fell out of Bilski —

    In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.

    Here’s my proposal, others are free to tune it —

    Whoever, invents or discovers any useful process, machine manufacture, or composition of matter, including a composition formed by an arrangement to encode information, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. The novelty, nonobviousness, and breadth of use of any element or steps in a process, or even of the entire claimed subject matter, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories, and elements or steps are not to be disregarded from analysis on those bases.

    The legislative history should point out that “improvement thereof” is a separate set of categories–the improvement alone is patentable subject matter, without regard to its character, so long as it is an improvement to an underlying invention that is itself within the permissible categories.

    I disagree with abolishing § 101 entirely — the categories exclude things such as inventions in the fine arts, movie scripts, sports, golf strokes, and other inventions that meet the other statutory requirements, but do not fall into the enumerated categories.

    2. 27.2

      I disagree with abolishing § 101 entirely — the categories exclude things such as inventions in the fine arts, movie scripts, sports, golf strokes, and other inventions that meet the other statutory requirements, but do not fall into the enumerated categories.

      When you say movie scripts are you not aware that a movie script is a manufacture so why shouldn’t it be patentable?

      If someone develops a software program that can take a movie script, use predefined digital models and digital locations/sets to create an animated movie does that movie script not become a part of the program when it is run and thereby become patentable?

      The machine has been improved, apparently, by inputting different data (the script) into the computer to achieve a different result.

      1. 27.2.1

        It’s essential to be precise. Patent law is a branch of commercial law, and commercial law must be precise enough to allow the parties to order their affairs in advance. (That’s why we have claims. Oh. Right. Alice. Clarence Thomas. Maybe precision is out the window.)

        The script-to-animation software is (or should be) patentable subject matter.

        The script itself is not.

        1. 27.2.1.1

          the script to animation software could be considered to be an interpreter or compiler, taking the “instructions” or “stage actions” and compiling them into a rendered scene. no different to a compiler acting on source code to produce an executable.

          the script is a series of instructions and the computer, when running those (compiled or interpreted) instructions has been improved because it is creating a movie which is new and non-obvious.

          just like a recipie which is, so i’m told, also patentable.

          i don’t want software patents, but if you (or rather congress) are going to change s101 the change has to work properly without an (judicial) exception here and a doctrine of that there. just saying a movie script, or some other creation, isn’t patentable because you don’t want it to be isn’t enough. the change in s101 has to reflect the change you want and what you have written is not enough.

        2. 27.2.1.2

          David –

          You want to amend 101 to include: a composition formed by an arrangement to encode information.

          That’s what a script is. Isn’t it?

  11. 26

    Having read a number of Supreme Court cases on the limits of patentability, there have been a number of justices that would leave laws of nature and natural phenomena in the public domain as a matter of Constitutionality. Whether it is only those laws and phenomena that are observable by all (if not necessarily quantifiable by all) would not be clear from those contexts.

    So the Constitutional limits on what ‘discoveries’ might be patentable could clarify in ways that put most, if not all, outside the reach of patents.

    1. 26.1

      Erik, I agree.

      Congress did a very good job in defining the scope of the useful arts in 1793 when in “101” it defined patentable subject matter to encompass a new or improved, and useful, Art, machine, manufacture or composition of matter. There is little we can do to improve upon this formulation. Neither is it possible to expand it without running afoul of the Constitution.

      Other statutes require a specification to describe the invention and the manner of making and using it. These statute prevent one from simply describing and claiming a principal an abstract because, as explained in Morse, there is no need for specification with respect to a principal an abstract. Requirements that there be description of how to make and use the invention necessitates an implementation.

      While there is some debate, is apparent that the discovery a phenomena of nature or a product of nature is not patentable not because discoveries are not patentable, but laws and products of nature are both old, even though not previously known or used.

      While some may contend that business methods are statutory, it is hard to tell just how they can possibly be statutory given that business methods (outside of the context of the means for their implementation) have nothing to do with the useful arts as specified by the statute which require inventions to be of or related to machines, manufactures or compositions of matter.

      1. 26.1.1

        Absolutely no offense intended, Ned, but I think you’ve got a few things twisted in this analysis.

        1. “There is little we can do to improve upon [PA 1793]. Neither is it possible to expand it without running afoul of the Constitution.”

        The Constitution? The Art. I, Sec 8 is pretty much about promoting the Progress of Science and the useful Arts. You could build a patent system with Lego blocks and not run afoul of that broad requirement of the Constitution.

        2. With respect to your hit on business methods you say they: “have nothing to do with the useful arts as specified by the statute which require inventions to be of or related to machines, manufactures or compositions of matter.”

        Pardon me for pointing it out, but the PA 1793 is no longer in effect. You’ve deleted from your inventory of statutory subject matter the one category that justifies business method patents: “processes.”

        The 1793 PA did not extend protection to processes. IMO, subsequent addition of processes to patentable subject matter was a huge leap forward, notwithstanding your position that PA 1793 could not be improved upon. It was.

        But I agree, those boys did a pretty good job in 1793. The real fuster cluck came in 1952.

        The larger problem the country is having — and not just with respect to shifting patent common law — is that the Fondling Fathers could not see far enough into the future to appreciate that their world had no relevance to the world 250 years hence. They were slave owners who had wooden teeth and rode in buggies. The rate of technological change in their time was roughly nil, and extrapolating from nil gives you nil.

        Had they been able to see the explosion of technological, political and cultural changes in the 19th and 20th centuries, they surely would have written a sunset clause into the Constitution so that it would be re-drafted from the ground up every 100 years or so.

        Their cumbersome system for amending the Constitution was fine from their perspective, but now — 250 years out — the Constitution is more patches than ship . . . and it’s listing badly. What’s the plan for the next 250 years — keep on patching it? Don’t think so. Just think in the year 2300 what “the right to bear arms” will entail. Or “Science and useful Arts.”

        1. 26.1.1.1

          BabbleBoy, “Art” was in the PA 1793. It was construed to mean “process” by the courts. The change in ’52 from Art to process was only intended to bring the act into compliance with court interpretation and

          NOT TO CHANGE THE LAW.

  12. 25

    The one and only way to right all that is wrong with 101 and how it’s been interpreted, misinterpreted, applied and misapplied?

    Abolish it.

    102, 103, and 112 — when properly and completely utilized and relied on — will take care of the undeserving inventions just fine.

    (Until then, keep those continuations coming …)

    1. 25.1

      “102, 103, and 112 — when properly and completely utilized and relied on — will take care of the undeserving inventions just fine.”

      Yep

    2. 25.2

      Abolishing 35 USC 101 is starting to sound better and better to me after the broken Alice test. Unfortunately, the Royal Nine might view the removal of 35 USC 101 as simply a further excuse to keep on creating “exceptions” to patent-eligibility.

    3. 25.3

      “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor”

      Abolishing §101 means abolishing the entitlement to a patent. The entire patent system would cease to exist once existing patents expire. Is that really what you want?

      I, for one, would like to keep our incentive for inventors of new life saving drugs, materials, chemicals, energy sources, and so forth creating new inventions for our society.

      1. 25.3.1

        “Abolishing §101 means abolishing the entitlement to a patent. The entire patent system would cease to exist once existing patents expire. Is that really what you want?”

        Does anyone else feel sad for this guy, or am I the only one?

      2. 25.3.2

        Good point Owen.

        No desire to abolish the right to a patent here … just all the weeds which have engulfed 101.

    4. 25.4

      Abolish it.

      102, 103, and 112 — when properly and completely utilized and relied on

      This is a meaningless and circular “argument” that completely ignores the issues that are being raised in the cases that have presented to the Supreme Court and other issues that have not yet been presented to the Supreme Court but certainly will be.

      Eligibility considerations had already migrated into 102 and 103 with the help of “activist judges” (and that never seemed to bother anyone as long as their claims weren’t being rendered ineligible — go figure).

      1. 25.4.1

        What’s “circular” if anything is intentional conflation of 101, 102, 103, and 112 together, as if Congress didn’t intend for these statutory sections to be separate considerations of patentability.

        1. 25.4.1.1

          Let everyone know when you first started complaining about this oh-so-terrible “conflation”, Bluto.

          I can take a guess. But it’d save time if you just told everyone when you first started complaining about “conflation”. It’s been going on for quite some time, as you know. Before most of today’s patent attorneys were born, in fact.

          Many of the same principles underly the various patent statutes. That’s why you see similar language showing up when court’s discuss the statutes. It’s not a sign that something is “wrong.”

          Perhaps if the oft-worshipped drafters of the 1952 patent act had avoided the use of certain terms in 101 (like “new” and “useful”), they could have forestalled some of this alleged “conflation”. But they didn’t do that.

          My point stands and I’ll keep making it as long as people keep ignoring the facts: as drafted, 102, 103 and 112 are incapable of screening out claims that protect ineligible subject matter.

          If you believe that “everything made by man is eligible”, then just say so. If you believe that “mental processes are eligible for patenting,” just say so. If you believe that information is eligible for patenting, just say so. Then you’re arguments here are logically consistent.

          But if you don’t believe that, then you have to recognize that various analytical tools (reason, logic, and a statute) are necessary to keep the ineligible subject matter out of the system.

  13. 24

    The proposed amendment would replace one uncertainty with another uncertainty. Even the Supreme Court does not know what is “permitted by the Constitution”

  14. 23

    “Paul Michel, the former chief judge of the U.S. Court of Appeals for the Federal Circuit, says the future of the nation’s economy is in jeopardy after the U.S. Supreme Court ruled in June that some software method and system patents are invalid.”
    link to setexasrecord.com

    1. 23.1

      From Former Chief Judge Michel:

      The only “fix” to the problem the Supreme Court has created: to amend Section 101 in light of Alice and related decisions, Michel said.

      “Congress would be justified in asserting its powers to determine (patent) eligibility,” the former judge said.

      Of course, it will take years before federal lawmakers take any action – even if just means adding a sentence to the statute – but it’ll happen eventually, Michel said.

      “Before the end of the decade, Congress will legislate again about the eligibility of inventions,” he said.

      1. 23.1.1

        Predicting that Congress will act on anything new in the next five years (only five sessions remain before 2020) puts weight on the hypothesis that Michel is perhaps not a cognizant of the world around him as he was when he was younger.

        Of course, in 2012 is was already apparent that Michel had forgotten how patents work. “If software is less dependent on patents, fine then. Let software use patents less as they choose,” he said in apparent ignorance of how patent monopolies work. ( link to arstechnica.com )

        And the idea that Congress would amend §101 to expand eligibility rather than to clarify that software and business methods were never eligible is ludicrous.

    2. 23.2

      Michel wrote the majority opinion in Bilski that announced the MOT test. He should have accepted the invitation of Dyk to simply have overturned State Street Bank.

  15. 22

    I believe the amendment proposed by Dennis is perfect and is exactly what is needed. Such an admendment would force the realization that Business methods are the useful arts and therefore are permitted by the constitution. And since software is essentially a process for automating business methods software is also constitutional. Inventors invent and file patents on inventions because they want to start and/or make money off business and industry. Indeed the patent clause giving congress the power to promote the progress of the useful arts is all about promoting business and industry. Unlike literary or performance arts there can be no doubt the useful arts in the constitution are business methods. When the patent clause was written no one was mixing potash for leisure or artistic purposes. It was for business, to make money, to make a profit. And a new, faster, more efficient method for doing it was the subject of the first patent in our country. Can anyone really say that if you were to go back in time with a computer and software programs and show Thomas Jefferson how using such devices would make all the businesses of the day from making horse shoes to plowing fields run faster and cost less, that he would say no we can’t patent these inventions because it’s all software, computers, and helps business make more money? I say oh Thomas Jefferson would immediately patent the devices and processes and proceed to become the wealthiest man in the country!! And let’s face it the only ones against such a scenario could only be pro socialist leaning anti capitalists or more appropriately, anti patent.

  16. 21

    At some point, the posters here, besides a select few who get it, are simply going to have to recognize that all these cases mix the statutory and non statutory into one claim. The cases require invention in the statutory. This means there has to be some analysis as to whether the statutory is new or old. If the statutory is clearly old, the claims may be declared unpatentable under 101. If not clearly old, the 102/103 analysis must be conducted giving the nonstatutory no weight. In both cases there is an exception – and that is where the nonstatory (e.g., printed matter) is integrated with the statutory in a functional way to improve the statutory.

    In truth, we are dealing with a statutory crossover problem, where one statute cannot address everything.

    1. 21.1

      It’s possible for one statute to address everything.

      But the analysis – the logic and the underlying principle – never goes away.

      This appears to bother some people. We could ask why that is but that appears to bother people too.

    2. 21.2

      “If not clearly old, the 102/103 analysis must be conducted giving the nonstatutory no weight.”

      Only problem with that is its unconstitutional. Fortunately the Supreme Court has never held such.

      1. 21.2.1

        101, I’ll bite. Why is it unconstitutional to consider whether the statutory parts of a claim are old where the claim also includes nonstatutory subject matter?

        Does it have something to do with The Second Amendment, or perhaps, the Third?

        We await your legal analysis.

        1. 21.2.1.1

          “Why is it unconstitutional to consider whether the statutory parts of a claim are old where the claim also includes nonstatutory subject matter?”

          This is different from what you originally posted. But I do not think this new proposition of yours even rises to the level of a constitutional analysis since Diehr mandates that in the final conclusion the claims must be considered as a whole. End of debate.

          1. 21.2.1.1.1

            101, and if the courts say that if the novel subject matter is non statutory and the statutory old, that the claim as a whole is unpatentable, is too unconstitutional?

            1. 21.2.1.1.1.1

              “if the courts say that if the novel subject matter is non statutory and the statutory old, that the claim as a whole is unpatentable, is too unconstitutional”

              Ned,

              If the lowers courts so hold we wont have to worry about constitutional arguments because the courts will be in violation of Diehr, and promptly overturned by The Supreme Court of the United States.

              Furthermore, to grant courts the power to surgically dissect claims and ignore elements in their concluding analysis would be in effect to give the courts the power to exclude any patent they felt did not deserve to be patented (e.g. business methods and/or software) irregardless of the law.

              As far as constitutional rights are concerned WE THE PEOPLE, through the Constitution have so empowered and charged our representatives with the mandate to “promote the progress” of science and the useful arts by securing the “right” of Inventors to our discoveries.

              I am well aware Ned of your paid position and agenda to deny Inventors their constitutional right for newly discovered business methods, including most information processing inventions that automate methods and so help business and industry progress.

              Giving you Ned, or any court the power to eviscerate patents by ignoring claimed elements in the concluding analysis of statutory subject matter and patentability of an invention, would be a gross violation of Inventors constitutional rights and usurp the power granted to congress by Inventors to secure those rights.

              1. 21.2.1.1.1.1.1

                101 IE, “paid position?”

                I am placing you on ignore as well as anon. It looks like you cannot be civil. Trying to deal with the likes you in civil discourse is simply not possible.

                1. …

                  “I am placing you on ignore as well as anon.”

                  Of course you are. But even you must see the ridiculous rational of a policy for not including business methods and software as patentable eligible subject matter given the Constitutions congressional mandate to promote the progress of science and the useful arts.

                  The argument can be reduced to The Flintstones Vs the Jetsons. Under your world view Ned, an invention that uses Wooly Mammoths on a conveyer belt with stone pulleys and sticks (The Flint Stones) as a source of power is patent eligible subject matter.

                  However automate that same process with integrated circuits and microprocessors (The Jetsons) and suddenly the invention is no longer within the useful arts and can’t possibly be patent eligible subject matter.

                  It seems under your policy view Ned that one must retard the progress in order to promote progress. Which is of course totally illogical and quite absurd.

                  And personally I would rather live in a world like the Jetsons than one like the Flintstones.

  17. 20

    s. 101 Inventions Patentable
    Whosoever invents or discovers according to ss. 101.5 any patentable subject matter according to ss. 101.7 may obtain a patent therefor subject only to the conditions of this title.

    s101.5 The Act of Invention or Discovery
    The act of invention or discovery shall be understood to mean ….
    …. Full of details with little wiggle room, gather and consolidate from other sections as needed

    s101.7 What Constitutes Patent Eligible Subject Matter

    Any process, machine, manufacture, or composition of matter, and any improvement thereof shall constitute patent eligible subject matter

    … the explicit wording of the claims defines the subject matter and any claim which explicitly reads only on any of a process, machine, manufacture, or composition of matter, and any improvement thereof, is directed to patent eligible subject matter

    … add lots of detail with little wiggle room

    s 102 Conditions for Patentability; novelty
    s 103 Conditions for Patentability; non-obvious subject matter
    … it must be new

    s xxx Conditions for Patentability; Utility/Usefulness
    … it must be useful

  18. 19

    Such an amendment will never ever pass Congress. Anyone who thinks otherwise is delusional. Congress couldn’t even get a fee shifting bill passed. I personally support such an amendment but I can also face reality.

    However, 101 does need to be amended so it is clear what is inside and outside of 101. It is interesting to see all the varying views on this blog and this demonstrates how murky 101 is right now. In 2014, the answer to “can I patent this computer implemented method” is “regarding 103, it depends on which examiner we get” and “regarding 101, it’s anyone’s guess right now.” This is dysfunctional.

    The only hope of getting an amendment to 101 to pass is an amendment that is balanced. I don’t think an amendment would pass Congress that still includes business methods (look at how many Amicus were against Alice vs. those who were for Alice). However, perhaps an amendment that excludes business methods and descriptive features but otherwise permits software that has a concrete and tangible result. At this point I would support such an amendment as I think the situation would be worse without such an amendment.

  19. 18

    What does this amendment do

    Ask the people who are proposing the amendment. But don’t expect a straight answer.

    Asking some of the eligibility expansionists what should and should not be eligible for patenting is like pulling teeth.

    Commenters here and elsewhere have stated that mental processes should be eligible for patenting. Presumably they don’t believe that would be unconstitional.

    1. 18.1

      “Asking some of the eligibility expansionists what should and should not be eligible for patenting is like pulling teeth.”

      It’s actually substantially harder than pulling teeth.

  20. 17

    EG: EGclaims are to be construed “as a whole” for patent-eligibility under 35 USC 101 without dissecting that claim into patent-eligible and patent-eligible components

    It is impossible to screen out claims that protect ineligible subject matter with this restriction in place. That’s why Mayo was a 9-0 decision and that’s why it’ll never, ever be overturned unless it’s replaced with something nearly identical.

    Please et me know if you need me to explain to with simple examples why this is the case. It’s very straightforward.

    1. 17.1

      You can’t respond to a proposed test for eligibility by speaking in terms of what was eligible/ineligible based on a prior test. In that case just disagree with the new test and move on.

      “Your new test is bad because it doesn’t jive with the old test that I prefer and that your new test replaces” is not an argument that the new test won’t work, it’s an argument that you don’t like how the new test will work.

      1. 17.1.1

        Mr. Huh, the problem occurs with the mixture of the statutory and the nonstatutory.

        The cases all require there be invention in the statutory.

        If the statutory is admittedly old — by claiming it in a high level of abstraction, for example, then the claim is unpatentable considered as a whole because the nonstatutory can be given no weigh.

        Truly, this is a crossover mixture of statutory classes 101/102/103.

      2. 17.1.2

        The issue of mixed classes of subject matter does not go away as long as we are using words to describe what is being claimed.

  21. 16

    Any amendment to 101 would be ineffective. As Justice Thomas noted in Alice, the root of these prohibitions is not 101 itself, but rather the patent clause of the constitution, inasmuch as pre-empting the building blocks of innovation serves to stifle, rather than promote, the useful arts.

    1. 16.1

      However, the rationale of preempting building blocks isn’t related to the new post Alice smell test.

    2. 16.2

      Yeah — as in a patent on a computer-implemented strategy for playing Bingo stifles innovation everywhere, ties up building-blocks of human ingenuity, and generally creates a national crisis. Strike it down, quick!

    3. 16.3

      “inasmuch as pre-empting the building blocks of innovation serves to stifle, rather than promote, the useful arts.”

      Says who? That’s Thomas’ conjecture. There is no evidence of that.

      The Wrights competitors said as much about the Wrights patents too. That doesn’t make is to.

      The same could be alleged about all patents. But we know it works quite the other way. There would be no patent medicines without patents.

      1. 16.3.1

        “The Wrights competitors said as much about the Wrights patents too. That doesn’t make…”

        There’s no proposition in aviation more widely agreed than that the Wright patents blocked innovation and progress.

        There’s more disagreement about the objective laws of physics of airfoils than about whether the Wright patents were counterproductive.

        1. 16.3.1.1

          Owen: “There’s no proposition in aviation more widely agreed than that the Wright patents blocked innovation and progress.”

          There is no myth in aviation more broadly propagated than the above proposition – a myth based on distorted and fabricated evidence. Read: “The Myth of the Early Aviation Patent Hold-Up — How a US Government Monopsony Commandeered Pioneer Airplane Patents,” Industrial and Corporate Change, Forthcoming (2014). Available at link to j.mp .

    4. 16.4

      APoTU, I agree. Any amendment to section 101 that would expressly permit the patenting of methods of doing business will be declared unconstitutional by the Supreme Court.

    5. 16.5

      “inasmuch as pre-empting the building blocks of innovation serves to stifle, rather than promote, the useful arts.”

      It might behoove all of us to note that this “statement” is an unproven (and unprovable) forward-looking conjecture.

      It is a policy statement masquerading as a “solid” reason, when no one has ever put this to the test, and thus we simply don’t know what happens in the future.

      The notion that Courts should not make such future policy type decisions is decidedly lost in the shuffle, and is something that deserves to see the light of day.

      1. 16.5.1

        The notion that courts shouldn’t be looking forward when they make decisions is “lost in the shuffle” because pretty much nobody believes it’s true.

        1. 16.5.2.1

          Says who? They are clearly useful to the people trying to patent them, or their competitors. Else why would they bother patenting them?

  22. 15

    Wouldn’t the full extent of the Constitution permit the patenting of discoveries? I am not sure of the original intent of the founders but the plain language of the Constitution seems to permit patenting of discoveries or at least includes the word.

    The relevant portion of the text: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and DISCOVERIES.”

    Would this allow patenting of say e=mc^2? Or what does discoveries mean in this context (isolated DNA, a new material discovered in nature)?

    1. 15.1

      The invention or discovery must be a process, machine, composition of matter, or article of manufacture, or an improvement thereof. e=mc^2 is none of the above. As to isolated DNA or a new material discovered in nature, the answer depends on whether that material, as claimed, was composed or manufactured by man. Because otherwise it wouldn’t be a composition or manufacture now, would it?

      1. 15.1.1

        What about a process of thinking about the discovered correlation? It’s a discovery . And a process.

        What’s the analysis?

        What if the thinking step is preceded by an eligible but old data gathering process? What then?

      2. 15.1.2

        e=mc^2 represents a Discovered process and the process is patentable under the statute and Constitution.

        A process for determining the energy equivalent of a mass of an object, the process comprising:

        determining the mass of the object;

        multiplying the determined mass of the object by the square of the speed of light to arrive at a product, wherein the product is the energy equivalent of the mass of the object.

        2. 15.1.2.2

          e=mc^2 represents a relationship, it isn’t a process.

          quite often there is discussion about what the framers of the law meant when the law was drafted and enacted. some say they intended to catch all things created by man whether it was a future technology which would have been indistinguishable from magic, such as a computer, or something that was just kinda neat like a paperclip.

          a “process” such as you describe, often referred to as a mathematical calculation, or just calculation. i doubt they intended that type of process to be included within the realm of patentable or patent eligible inventions as maths is something that they knew about and if they wanted it to be included then why did they not include it as a part of s100 or s101 in plain language?

          anyway, even if this “process” is eligible, it would not be patentable. the process is a calculation, for which there is prior art – it is simply multiplying several numbers together.

          the only thing that is special about your process are the particular numbers.

          thus your argument is nonsense.

          1. 15.1.2.2.1

            No. The claim is not to multiplying two numbers. The claim is to multiplying mass by the square of the speed of light to get the energy associated with the mass. There was no prior art for that.

            1. 15.1.2.2.1.1

              In 1906, there was 14 billion years of anticipatory prior art.

              Knowledge of a fact is relevant to obviousness, but in most cases, an oblivious use anticipates. (One of the cute places where obviousness is different than anticipation.)

                1. …

                  Les,

                  David’s word has an “L”

                  But I will point out that the map is not the land and that Einstein’s map is not completely accurate, and thus there is no oblivious use and anticipation.

                2. …

                  anon

                  David used words both with and without L. Additionally, David said there was 14 billion years of prior art.

                  His assertion is that someone in the previous 14 billion years multiplied too numbers together that happened to have the same numerical values as used in a calculation of E (during the Manhattan project I guess) and appears to imply that such a multiplication renders E =mCC obvious.

                  My response was: to indicate that that was nonsense through the use of a rhetorical question.

                  But I am myopic and a bit dyslexic. So, you go on pointing out letters I might have missed.

                4. …

                  I meant that nature has been using E=mc2 for 14 billion years. That’s an anticipation.

                  Thank you for pointing out that “oblivious” is not the best word here. How about this — “An unrecognized use anticipates. Recognition and knowledge are a requirement for prior art in an obviousness inquiry, but not anticipation.” Clearer?

                  Thus, the “laws of nature” exception to § 101 is unnecessary, since anticipation takes care of it.

                  I don’t want to discuss prior art in this thread, this thread is about § 101, I don’t want to encourage any more of the irrelevant off-into-the-blue that’s taken over. Let’s get back on topic.

                5. …

                  David –

                  In all other cases, prior art is defined by what was know or used by others. Why in the case of a “law of nature” is knowledge or use by others disregarded? You know “mother nature” is not real, right?

                6. …

                  Read the statute. There are many prongs (under both old § 102(b) and new§ 102(a(1)) that do not require “by another,” including “public use.”

                  I plan to not engage with further comments that don’t evince some intent to be taken seriously.

                7. …

                  I’m pretty sure public use refers to by another or by the inventor. I’m also pretty sure E=mCC was not used by anyone, including mother nature, prior to A.E.

                  The Sun may have converted mass to energy prior to A.E., but it did not run the equation in order to do so.

                11. …

                  Les, I agree that public use means used by people at the very least so that the knowledge of the subject matter is implicitly known to the public.

              2. 15.1.2.2.1.1.2

                …or, is it your contention that the phrase “otherwise available to the public” in 102(a)(1) should be read so broadly as to mean, since the inventor figured it out, any one could figure it out and in that sense, the invention, and for that matter all inventions, are “available to the public” and nothing is patentable?

                1. …

                  No. I mean exactly what I wrote.

                  Read the statute. There are many prongs (under both old § 102(b) and new§ 102(a)(1) that do not require “by another,” including “public use.”

                  “I’m pretty sure” doesn’t cut it. If you’re a lawyer, then do what lawyers do. Look it up.

                2. …

                  Well if “available to the public” doesn’t mean: somewhere undiscovered in the ether, then “available to the public” means known to the public and undiscovered aspects of nature are NOT prior art.

                3. …

                  I contend that available to the public means googlable and that googlable means googling would produce a non-null relevant result. Additionally, I contend that “otherwise available to the public” connotes a non-secret, in the open, with public knowledge meaning to “public use” and the other “prongs” preceding “otherwise” in 102(a)(1).

                4. …

                  David, “public” includes the inventor.

                  But public use does not include nature because public implicitly requires knowledge of the invention by someone.

                  Laws of nature, in contrast may be discovered. They are not rendered part of the prior art because they have always been true.

                  But the fact that they have always existed does bear on whether they are new within the meaning of 101. Cf., Flook, fn. 15 and the holding of Myriad.

                5. …

                  Les, “I contend that available to the public means googlable and that googlable means googling would produce a non-null relevant result.”

                  It would be lovely if the courts came out this way so that some obscure paper in some obscure library in some obscure land in some opaque language does not invalidate a patent without some showing that the inventor himself was aware of the obscure reference.

                  However, we know the Federal Circuit seldom has its thinking cap on when it comes to these kind of decisions.

                6. …

                  Ned – I’m ok with that level of obscurity. Amend my definition to refer to NSA level Googlability. If its written, it is known.

            2. 15.1.2.2.1.2

              no. funnily enough, you can’t actually multiply an actual mass by the speed of light.

              you have this rather strange concept that numbers representing mass and the speed of light are actually the things thst they represent.

              you are multiplying numbers. that is the process.

              what you are doing is multiplying numbers which represent mass and the speed of light.

    2. 15.2

      No, because “discovery” in the Constitution is like “discovery” in litigation that is, what you discover to the public, what you make available to the public for the first time, by allowing the PTO to publish an enabling disclosure.

      You know: the Quid pro Quo, exclusive rights in return for an enabling disclosure. OK?

      1. 15.2.1

        I forgot to say:

        Authors goes with writings, goes with copyright

        Inventors goes with discoveries goes with patents

      2. 15.2.2

        That’s a stretch Max. In litigation you discover for yourself not to the public and not to someone else. YOU discover what the other party did or was doing.

        1. 15.2.2.1

          The way I see it, the other side finds out (discovers) what you’ve got thanks to the discovery process. The essence of the discovery process is that your own lawyers “discover” (think “uncover”) to the other side what you’ve got. It is NOT that members of the other side’s legal team come in and start rifling through your drawers, is it?

          So I don’t see the “stretch” that you do Les. Not yet anyway.

    3. 15.3

      100(b) defines “invention” to include “discoveries,” which is one of the pathetic oversights of this “doctrine” under 101. Congress deliberately made that clear, oh, 60 years ago…

      1. 15.3.1

        David, however, a product of nature is not a “new” composition regardless that it was previously unknown, but discovered.

        1. 15.3.1.1

          It is new in the sense that it was not previously known. Your “logic” could be applied to any invention. Flight is merely the embodiment of “laws of nature”. It was always there to be pulled from the ether.

          This is similar to the understanding that in 25 USC 102 “known by others” means publicly known.

          Things are patentable unless they were known by others (publicly known). A newly DISCOVERED product of nature was not known by others (publicly known) and is therefore patentable.

          Discoveries are patentable. There is nothing to discover but products and laws of nature.

          1. 15.3.1.1.1

            1. “New” was added to the statute in 1793. So was “composition.” Known and used were retained. The 1793 statute read:

            “…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…”

            Why was “new” added if not known or used before covered the entire ground as you contend?

            2. Federico stated of 101, “The definition does not modify in any way the statement in section 101 that a new machine, a new manufacture, or a new composition of matter, can be patented; if a machine is not new, if a manufacture or composition of matter is not new, it still cannot be patented. The decision of the Court of Customs and Patent Appeals in In re Thuau, 135 F.2d 344, has not been overruled by the statute. The holding of this decision is simply that an old material cannot be patented as a composition of matter, because it is an old material, and the fact that the inventor or discoverer may have discovered a new use for the old material does not make the material patentable. ”

            3. The Myriad court answered the following question in the negative: “We must … determine whether Myriad’s patents claim any “new and useful … composition of matter,” § 101, or instead claim naturally occurring phenomena.”

            Regarding Flight, the principles involved may be laws of nature, but an application of the principles embodied in a new machine would certainly be patentable.

            “t is admitted, 175*175 that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.

            In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. Whether the machinery used be novel, or consist of a new combination of parts known, the right of the inventor is secured against all who use the same mechanical power, or one that shall be substantially the same.” Le Roy v. Tatham, 55 U.S. 156, 175, 14 L. Ed. 367 (1852).

            Les, my balance sheet is full of authority. Let’s see something from you other than your personal opinion.

            1. 15.3.1.1.1.1

              “Regarding Flight, the principles involved may be laws of nature, but an application of the principles embodied in a new machine would certainly be patentable. ”

              But Alice says “apply it” is merely the scriveners art, doesn’t it? We now see through that. Everything can be reduced to an abstract idea and nothing is now patentable. Including the abstract idea in a machine that “applies it” is not sufficient “without something more”. You are still attempting to patent an abstract idea. The “more: the Wright bros brought was just old wood, cloth and rope and the abstract idea of warping wings, which birds had been doing since day 6, I believe. So, the something more is not sufficient.

              1. 15.3.1.1.1.1.1

                Les, the courts are looking for a “transformation.”

                Words of Alice, Diehr, Funk Bros., Le Roy v. Tatham, Morse, Benson, Flook, Mayo, Alice and the beat goes on.

                While Bilski denied the MOT as being the exclusive test, that is what the court is really looking for, consistently. Transformation.

                Thus a claim that simply suggests to apply the principle is not sufficient. A practical application is. What is a practical application? Well it must be something that transforms the underlying, otherwise patentable machine, manufacture, composition or process into a new state or thing. The nonstatutory must be functional with respect to the statutory so as to produce a new effect or improve the old.

                ALL the Supreme Court cases are consistent in this. Bilski said the MOT was not the exclusive test, the Court has provided nothing else, and now continues to use it in Alice.

            2. 15.3.1.1.1.2

              I assume new was added, if it was, because someone claimed that the lack of “new” meant you could patent things even if they weren’t “new” and that 101 and 102 were somehow in tension. So, eyes were rolled and they added “new” to emphasize that 102 must be considered and to place 101 and 102 clearly in agreement.

  23. 14

    I think we are more likely to see Congress fund a high speed all-underground maglev train connecting Las Vegas and Atlantic City than we are to see them amend 101 in a way that would turn back the clock on Bilski and Alice. A far more likely scenario is that Congress amends 101 to further restrict what may be patented.

    But perhaps in another 30 years, things will be different.

    2. 14.2

      I’d suggest that the most likely amendment is to exclude methods of doing business completely and explicitly. The second most likely is to exclude software explicitly.

      But those should not be done as amendments to §101; they should be amendments to §282 as they will be more effective and useful there.

      It will be a lifetime before the patent bar is taken seriously by Congress in its wish to expand the patent system after the troll fiasco that the CAFC and J Rich’s last overreaching efforts created. Just the opposite, in fact. It’s likely that Congress will pass and a Democratic Party president will sign the most revolutionary change in American judicial procedure in two centuries next year as a presumption toward loser pays arrives in a broad set of cases for the very first time.

      1. 14.2.1

        It’s also worth remembering that the “troll fiasco” didn’t happen while people were looking the other way. It happened in the spotlight, as predicted, while the expansionists — including many of the same people who loathe these Supreme Court decisions — a cheered them on.

  24. 13

    Here is, IMHO, a better amendment

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. As used herein, any means any.

    New and useful are to be judged under, and as called for in, other portions of this title, specifically 35 USC 102 and 35 USC 103.

    Process mean any process or method, including processes including mental steps and mathematical algorithms and processes implemented in or with the aid of computational devices. We wish to promote improvement in mental processes and mathematics as well as other processes. Claims to processes need not recite apparatuses as processes are not a second class category. Indeed, they are listed first.

    New machines include machines comprised of old components and new components. Software and other configuring information or techniques included in, or made available to a machine, is a component of the machine and when accessed by a component of the machine, at least for the purposes of this title, creates a new or at least different machine.

    Any allegation that a claim is directed to an abstract idea rather than a process, machine, manufacture or composition of matter is to be treated as an allegation that the claim is too broad and judged under other parts of this title, specifically 35 USC 102 and 35 USC 103. If there is no prior art that is encompassed by the claim, then the claim is not too broad and is not abstract.

    When in doubt, any means any.

    1. 13.1

      Yes Les, I too wish to promote improvements in mathematics. But I hardly think that the way to do it is to encourage mathematicians to patent their work product. Neither do you Les. Or do you? Seriously?

      1. 13.1.1

        I believe Einstein should have been able to patent a method of calculating the energy equivalent of a mass.

        No one could do that for 10,000 years prior to Einsteins discovery. Having to pay him a royalty to do it for 20 years or so wouldn’t have been the end of the world. And, someone might have beat him to it if there was the incentive of a financial reward.

        So yes, I don’t see a reason to exclude mathematics. I see the present exclusion as bizarre.

  25. 12

    Yes, § 101 should be amended, but in a different way.
    Presently, patent-eligibility limitations are mostly based on the “abstract ideas” exception developed in case law. But this foundation is nog very convincing. Every invention is a kind of idea, and every idea is abstract to some extent (in contrast to its realisation).

    Most patent statututes in the world contain an explicit list of exceptions. For instance Art. 52(2) EPC. Well, this provision is not ideal either, since all its exception only apply to the listed subject-matter “as such”. The EPO Boards of Appeal equate “as such” to “as far as non-technical”, which is explained nowadays by the fact that Art. 52(1) says that subject-matter “in all fields of technology” is patentable. Strangely enough, this phrase is interpreted in the sense that only technology is patentable, while it is copied from Art. 27(1) TRPS where the same words are to be interpreted literally: “all” is nott the same as “only”.

    Still many critical Americans believe that patentability ought to be limited to technology in the US as well. yes, the grass is always greener on the other side of the fence. But the technology criterion is actually not very helpful, since “technology” is hard to define. Is software technical? Some argue that the answer is negative because sofwtare is intangible, others argue that all software is technical, sicne it is written by software engineers. And all variations between exist.

    Actually the exceptions listed in Art. 52(2) EPC are rooted in age-old traditions, like the “mental steps exception”, which is the basis for the business method exception in European patent law. It is based in the German theory of Anweisungen an den menschlichen Geist.

    The mental steps exception was elaborated in “In re Prater II” in 1969. The conclusion was that only “mental steps” are excluded that only can be executed by human beings. This is a smart criterion. A genuine business method can only be carried out by a human.

    1. 12.1

      Reinier I really don’t think you are ever going to find a sharper delineation to the field of what’s fit to patent than what the US Constitution calls “useful arts” and what GATT-TRIPS calls (same thing but in current etymology) “all fields of technology”.

      By now it is clear, that extension beyond that field is desired only by those professionals who fear they will make less money, post-Alice.

      It’s like lamenting that nobody will define “obvious”.

      1. 12.1.1

        Sorry to disagree. Allegrdly there are technical business methods, so a traditional technology test does not help.

        One should acknowledge that patent CANNOT be a reward for any and all brainwork. Patents only serve the purpose of providing exclusivity, as an exception to the freedom of competition, if and when needed.
        Processes that ONLY can be executed by human beings naturally do not need such protection.

  27. 10

    First of all, I would like to know who is attempting to amend section 101 in order to overturn Mayo and Alice.

    1. 10.1

      Section 101: Whoever invents a new or improved, useful, machine, manufacture, composition of matter, or a process, principle, or abstract idea applied in a manner that transforms otherwise eligible subject matter into a new state or thing, may receive a patent therefore subject to…

    2. 10.2

      I’ve already called both of my senators and congressman to pitch clarifying eligibility and partly overruling Alice Corp and Prometheus.

      KSR has greatly increased the obviousness hurdle. It was way too pro-patent before and now more aligned with common sense.

      Same with Nautilus with the standard for indefiniteness.

      And Hilton Davis (doctrine of equiv), MedImmune (standard for DJ actions), Ebay (perm injunctions), etc.

      Alice Corp et al went too far in gutting patent law.

      The Fed Cir, Dist Cts and PTO are applying Alice Corp broadly and impacting patents and patent applications that inventors and companies spent time, resources and energy creating.

      1. 10.2.1

        “Alice Corp et al went too far in gutting patent law.”

        Gutting it? Lol, not a single application of mine has had the slightest problem with Alice since it came down.

      2. 10.2.2

        If you will forgive the irresistible pun, with only “splinter” groups that would support getting patents on anything and everything, and the present hostile Congressional ant-PAE environment, this has no more chance of enactment than a patent on a snowball in Hades. Furthermore not one of the patents actually shot down on 101 so far could be seriously considered a miscarriage of justice, in fact almost all of them should never have issued under 103 to begin with.

        2. 10.2.2.2

          I agree many of the recent invalidated patents should not have or would not have issued under the new 103 standard.

  28. 9

    It would provide a mechanism to fund fundamental research, and finally encourage the progress of Sciences AND Useful Arts.

  29. 8

    One key point here being glossed over: While the Court seeks to place its implicit (and explicit) writing within the statute at 101 (seemingly for authority purposes, and fans of history should note how the Court has delicately referenced the statute in the entire line of post-1952 cases), Prof Crouch himself has posted indicating that these Court law writing exercises are in fact extra-statutory.

    That is a first order of business: the Court needs to come clean with what it is actually doing. And it must treat statutory law properly (the Court simply does not have the authority to redraw the map, no matter how convenient – or perhaps more to the point, how INconvenient it would be to hold the existing Congress-actual-words of 101 unconstitutional.

    That’s kind of the point of the analogy to p0rn and “I know it when I see it.”

    After that is clarified, THEN Congress can act accordingly.

    Or, as has been posted over at PatentDocs, once the actual authority of the Court has been explicitly pinned down,…

    “EG,

    Note that Dr. Noonan and I have discussed this and while we both agree that we must continue to represent our clients, we have not arrived at the same page as to the IMMEDIATE effect – and visceral need for a more permanent solution – related to the inadequate direction provided by a Court that insists on writing (implicitly and/or explicitly) patent law and changing the rules of the game years after applications are submitted and incapable of responding to the changing rules.

    I think the first order of business for the Court is to clarify whether or not its changes are statutory or constitutional in nature.

    If statutory, then Congress can act to solidly clarify.

    If constitutional, then the Court should act appropriately to notify Congress of the explicit constitutional shortcoming so that the appropriate clarity can be obtained.

    EITHER WAY, we have a serious separation of powers issue that should not be ignored. The Court is acting so as to keep its fingers in the pie of setting patent policy instead of providing decisive and helpful (to the party participants, the patent community at large, and to the entire nation) guidance.

    I have seen calls on other blogs to NOT discuss the seriousness of the constitutional question on the Court actions, and find it rather unbelievable that some do not want to question the seriousness of the situation. Have these people not studied US jurisprudence and do they not realize that the pinnacle case on separation of powers dealt with a far more trivial case of a simple appointment of an undelivered commission? (See Marbury v. Madison) While that case dealt with a power struggle between the Judiciary and the Executive, we have here a much more important (and much longer fought) battle between the Judiciary and the Legislature.

    Appellate jurisdiction limitation is one of the powers of the Legislature, and patent review – especially when that review is based on policy – is NOT a matter of original jurisdiction of the Supreme Court.

    There are some very real and very powerful options not yet explored in detail.

    However, these options do require a Congress willing not only to hear and recognize the power struggle for what it is, but to care enough to act in a unified manner above the art-specific divide-and-conquer rhetoric that has flooded the political stage.

    Will that happen? Sadly, I remain…”

    See: link to patentdocs.org

        1. 8.1.1.1

          I think the holding of Alappat is still good in that the claims were directed to an improved statutory machine, namely a rasterizer, for a display. The specification disclosed circuits, namely ALUs, barrel shifters and ROMs. The claims were a means plus function format. They had corresponding structure that was hardware, albeit configured to perform certain mathematical functions. But overall it was claimed as part of a larger machine and as such was not a claim to disembodied mathematics.

          1. 8.1.1.1.1

            Thanks Ned. The claim from Alappat is below:

            Claim 15: A rasterizer for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means comprising:
            (a) means for determining the vertical distance between the endpoints of each of the vectors in the data list;
            (b) means for determining the elevation of a row of pixels that is spanned by the vector;
            (c) means for normalizing the vertical distance and elevation; and
            (d) means for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.

            I wonder to what extent your conclusion that this is OK is derived from the fact that the inventor’s particular solution was largely hardware based rather than software based?

            1. 8.1.1.1.1.1

              To the extent that it doesn’t preempt software but only specific hardware, it isn’t a software patent or an attempt to patent math at all.

              As Alice points out, part of the problem with abstract patents is the broad preemption of the use of a formula or principle instead of a narrow preemption of something the patentee actually invented. A circuit is something the patentee invented; software written without reference to the patent is not something the patentee invented.

              1. 8.1.1.1.1.1.1

                Section 101 says I can get a patent on a process. If my process is ideally implemented using electronic technologies, then there is no rational policy reason to make a distinction between implementing my process regardless of the technology I pick, including:
                a) a breadboard, transistors, and a bunch of wires;
                b) a few ICs and a few EEPROMs;
                c) a CPU, memory, and floppy disk;
                d) an iPhone and an app.

                If my process as implemented and running on hardware is patentable (novel and non-obvious), then it should be patentable regardless of the hardware technology used to implement it. As a trained theoretical computer scientist, the current state of technology interpretation makes me sad. It seems that there is a limit beyond which certain lawyers and judges cease to believe something exists merely because it is too small.

                From a theoretical standpoint, there is zero logical distinction between operations performed by a purpose-built electronic circuit and the same operations carried out by a CPU executing software. Why should the law treat these differently? Why should public patent policy?

                1. …

                  Section 101 says I can get a patent on a process. If my process is ideally implemented using electronic technologies, then there is no rational policy reason to make a distinction between implementing my process regardless of the technology I pick, including:
                  a) a breadboard, transistors, and a bunch of wires;
                  b) a few ICs and a few EEPROMs;
                  c) a CPU, memory, and floppy disk;
                  d) an iPhone and an app./i>

                  You left out “electric pencil and paper.”

                  But I agree, to an extent.

                  Specifically, to the extent all those things are old and in the public domain, there is no rational reason to treat an information processing method differently if its carried out on those old electronic devices which were designed for information processing. All those claims are equally invalid.

                  Now, throw in a new machine described in objective structural terms to distinguish it from the prior art technology and you’ll be just fine.

          2. 8.1.1.1.2

            ALU and barrel shifters are generic sub components of fairly generic processors Ned. Alappat’s claim is directed to the abstract idea of parenting magnetude as brightness (intensity)…you know …like on a black and white weather map or contour map….using a generic processor….or at least old …known logic components.

            2. 8.1.1.1.2.2

              Les, I daresay that you seem to have no familiarity whatsoever with the architecture of graphic processing units that mass pluralities of special-function ALUs.

              1. 8.1.1.1.2.2.1

                Ned –

                You dare to say a lot of things.

                This was one of them:”the specification disclosed circuits, namely ALUs, barrel shifters and ROMs. ”

                These are all generic elements of many processors, graphic or otherwise.

                I’m not sure what my level of expertise in graphics processors in particular has to do with the claim in question and how it would be treated under Alice.

                1. …

                  The, point Les, was that Alappat was claiming specific hardware and not a GP digital computer. There is an important distinction here.

    2. 8.2

      Anon, in an a note above, I asked who is behind this effort to amend section 101. You seem to have answered my questions.

      Patent attorneys.

      Who, of course, are concerned only for the public interest.

    3. 8.3

      I think this is exactly right anon and exactly what I said when Bilski came out.

  31. 6

    Dennis,

    You suggestion is well intentioned, but as ES points outs, it won’t work, and simply invite the Royal Nine to overreach (again) by making the broken Alice standard a constitutional mandate. As I suggested, the Royal Nine (unfortunately) need to be told in explicit language that: (1) claims are to be construed “as a whole” for patent-eligibility under 35 USC 101 without dissecting that claim into patent-eligible and patent-eligible components (the Diehr standard which the Royal Nine blithely and disingenuously disregards); and (2) the claimed invention (not what the Royal Nine believes is the invention is without reference to the claims) is presumptively patent-eligible if it falls within the one of statutory classes and whether or not it is considered a “product of nature,” “software” or a “business method” unless the claimed invention is merely a “law of nature, natural phenomena, or abstract idea.” (using Chief Judge Rader’s “manifestly abstract” concept from Research Corp.) Anything less than an explicit rebuke of the broken Alice/Mayo test will simply invite the Royal Nine to do another “end run” as they ‘ve unfortunately already done with the current 35 USC 101.

    1. 6.1

      It is odd that the SCOTUS seems to get into these modes where they don’t like patents. It isn’t clear why to me.

  32. 5

    I would start out by removing references to “new and useful.” The reference to “new” introduces novelty and obviousness questions

  33. 4

    How about: Whoever invents or discovers any new and useful process, METHOD OF MANAGING INFORMATION, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

  34. 3

    Since the Supreme Court decided what is (and what isn’t) allowed by the Constitution, I’m fairly certain the proposed language wouldn’t make a difference. I’ve always thought that the abstract ideas, mathematical formulas, etc. limitations in section 101 were really a reflection of the tension between the First Amendment and the Progress Clause. Similarly, the physical phenomenon and product of nature doctrines is a tension between natural rights and the clause.

  35. 2

    Not sure that would overrule Alice, et al. Seems like that is an invitation to the Court to say Alice, et al were based upon limits found in the constitution, i.e., based upon the meaning at the time of adoption of the constitution of “useful arts” or something.

    If you want to overrule the cases, a much more explicit and substantive edit is required (although you still risk a constitutional reinterpretation from the courts).

    Given that the trend in Congress is for weaker patent rights right now, good luck with this idea.

    1. 1.1

      Patent eligibility extends to the full extent permitted by the Constitution.

      That’s what SCOTUS seems to think it’s doing.

      Pre-amendment SCOTUS opinion: “The claimed invention is not patent-eligible because it does not fit the definition of any statutory class, and because it is ‘abstract’ and therefore not ‘useful’ (according to definitions of those terms that we will choose in order to include only the kinds of patents that we want to allow).”

      Post-amendment SCOTUS opinion: “The claimed invention is not actually an ‘invention,’ but is simply an ‘abstract concept.’ The claimant is therefore not an ‘inventor,’ which implies an ‘invention,’ but a mere observer of the law of nature. The application therefore fails to satisfy the clause in the Constitution authorizing the issuance of patents for ‘discoveries’ by ‘inventors’ and is not eligible for patent protection (according to definitions of those terms that we will choose in order to include only the kinds of patents that we want to allow).”

      The problem is not section 101. Section 101 is simple and direct – it is intended only as an introduction or pretext to the substantive law that follows in sections 102, 103, 112, etc.

      The problem is that the Court has assumed the mantle of “setter of economic policy,” and “defender of the technology industry,” etc., and has decided to wield section 101 like a club to achieve its intended policy by force of law. This is apparent from the fact that the past 30 years of thrashing-about, of the rise and fall of novel and competing theories and interpretations of the words of section 101, stand in stark contrast with the plain fact that not one word of 35 USC 101 has been amended since it was originally passed in 1952.

      35 USC 101 is not the problem. The problem is that the Supreme Court is allowing its policy agenda to motivate sweeping changes in the interpretation of a statute that has been static for 62 years. Why the Court is choosing to act in this way is a question that, surprisingly, no one seems to be asking it.

      1. 1.1.1

        Oh, that question is being asked alright – it’s just one with some inconvenient answers that seem just to draw labels like ‘strawman’ and a refusal to discuss the separation of powers doctrine.

        The better question is why are not the teachers of law all up in arms over this.

      2. 1.1.2

        David, not one word of 35 USC 101 has been amended since it was originally passed in 1952.

        David, except for the addition of “discovery” and the substitution of process for art, not one word of 101 has been changed since 1793.

        Are you meaning to suggest that the understanding of Congress and the meaning of what Congress intended in 1793 is not to be taken into consideration in interpreting the scope of section 101?

        1. 1.1.2.1

          The words of 103 were carved out of what became 101 in 1952.

          This discussion point continues to be shouted down.

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