What do you think of Facebook’s new patent in terms of Section 101? The patent (No. 8,844,058) issued on September 24, 2014 covers a social-networking data privacy method that basically allows users to specify what data a third-party App can share with others and that information is conveyed to the App. Claim 1:
A method comprising:
maintaining privacy settings for a first user of a social networking system, the privacy settings comprising a setting specifying which data about the first user a third party application may share with other users in the social networking system, the third party application maintained by an entity distinct from the social networking system;
receiving from the third party application, in response to use of the third party application by a second user, a request for information about the first user;
determining by a processor whether the setting specifying which data about the first user the third party application may share with other users in the social networking system allows the second user access to the requested information; and
communicating, to the third party application, which data about the first user the third party application may share with other users in the social networking system.
The patent includes two additional independent claims that are parallel, but claim the associated computer system and software (stored on a memory). The software was claimed as a “non-transitory computer readable medium storing one or more programs” in order to avoid a prior iteration of Section 101.
It seems to me that this case will be on the 101 chopping block.
[…] Facebook has been issued a Privacy Patent! Patently-O reports that the patent covers “a social-networking data privacy method that basically allows users to […]
The “determining” operation might well rescue this claim from an adverse Alice ruling. But without resort to the disclosure, there is no way to know whether it places a limitation (e.g., a similarity/distance equation) on the breadth of this general claim language. Is this a trick question, Professor Couch?
In response to eligibility concerns raised by a process claim, Les wrote: “So what? What is being claimed is process.”
I wrote: “Mental processes are processes. Are they eligible for patenting”?
Les responded: “A mental process is not being claimed.”
…which completely misses the point of my question to Les and other commenters in this thread.
You can’t rely on the recitation of “process” in 101 by itself to cut off discussion about whether a particular process is eligible and then refuse to answer an obvious question about where your argument plainly leads. That’s doubly true if one of your primary arguments against the Supreme Court’s decisions is to stretch its analysis to the breaking point to achieve some “absurd” result that no court is every going to reach.
Why are so many of the proponents of functionally claimed computer-implemented information processing patents so cagey?
Just be forthright and upfront with your assumptions and beliefs: can you protect a mental process with a process patent? What about a math calculation carried out mentally with a pencil and paper? Are there “magic words” that render claims immune from eligibility challenges and, if so, what are they?
There’s little point in discussing the eligibility analysis framework of the Supreme Court or any other court if your arguments against the decision are premised on assumptions (e.g., mental processes are eligible for patenting because “its a process”; or information is eligible for patenting because “it’s manufactured”) that are far beyond the fringe of what anybody thinks is reasonable.
At the very least, please make an effort to state the assumptions and, if you think that mental processes or information should be ineligible for patenting, explain exactly (not just by reciting the name of some patent statute) how you propose to keep lawyers from protecting such subject matter with patent claims.
I am fairly new to this field and trying to understand it, but why would a “reduction to practice” test and/or statue change not ultimately be the right direction? If you can not reduce it to practice, what right do you have to protect it. Seems like you would get away from inundating the Office with terrible abstract applications. On software, if you could prove that it does what it does in some version of code (a reduction to practice) then shouldn’t you be entitled to protect that method? I know this may not be feasible but at first glance seems like the right direction…
Like I said, I am new to this whole world so don’t massacre me with comments if this question is stupid.
On software, if you could prove that it does what it does in some version of code (a reduction to practice) then shouldn’t you be entitled to protect that method?
Well, you should be entitled to claim that code which actually works and protect it. It’s not clear why you should be entitled to claim all versions of working code based on your reduction to practice of one version.
The bigger problem with “reduction to practice” as a generalized solution is that functional claiming is not the only problem with many computer-implemented information processing claims.
Eligibility problems can easily arise even where the “innovation” has been “reduced to practice”.
” It’s not clear why you should be entitled to claim all versions of working code based on your reduction to practice of one version.”
Let me try to make it clear.
An invented process can be invented at a higher level than that of a particular implementation. While one is required to disclose the preferred embodiment, the patent laws recognize that it is not always practical to describe EVERY embodiment.
For example, the third step in a process might be say, a filtering step. There are many ways to do the filtering. You could use cheese cloth, or a strainer or a colander or filter paper. The filter might be selected on a desire for speed of filtering or speed of clean up. If you dont want to have to clean a strainer or colander, you might choose to use the cheese cloth. If you would rather use something bio-degradable, you might go for the filter paper. It doesn’t matter to the claimed method, so long as the undesired elements are sufficiently removed.
The invention is at a higher level and not dependent on the particular kind of filter used and so, it is sufficient that step 3 of the claims says : filter the stuff so that there is not more than 1 % of undesired crap.
Similarly, where the process processes information or a signal, step 3 can also read: filter it, perhaps with some parameters describing the desired filtering effect or level. One of ordinary skill in the art will understand which of the available filters to apply, Bayesian, Gaussian, general low pass… whatever.
There is no need to burden the patent office or the applicant with a list of every filter imaginable….
And none of those filters are patentable either.
I didn’t say that any of the filters was patenable. Filtering is just the third step in the example inventive/patentlabe process.
Again, Les, there is a big difference between (a) the recitation of a “filter” in process claim that transforms matter, when accompanied by a description of suitable filters in objective structural terms in the specification; and (b) the recitation of a function of “automatically determining information X with an information processing machine” where there is zero new structure disclosed in the specification and an infnite number of coding possibilities.
There is no need to burden the patent office or the applicant with a list of every filter imaginable….
Right. And likewise there is no need to burden the patent office or the public with patents on every imaginable information processing function carried out by old machines whose sole purpose is the processing of information.
The “need” is the need for improved machines, claimed according to their structural differences relative to machines in the prior art.
If you can identify some reasonable middle ground, I think that would be helpful, Les. Trying to defend the worst claims out there (and this Facebook claim is certainly one of them) isn’t going to help your cause (whatever that is).
I’m not defending the claim.
I’m trying to defend the examination process.
Through the looking glass pronouncements for the SCOTUS that method are not methods because they are old which makes them abstract and the other absurd pronouncement turns a collegial, logical, reasonable process into a painful acid trip that serves no one.
101 is about categories. That’s all.
If the claim is too broad or vague, use 102 or 112 and show it.
The claim above is a claim to a process. 101 is passed. Move on to 102.
101 is about categories. That’s all.
Well, you’re wrong about that and the Supreme Court has explained why.
More importantly, eligibility considerations do not disappear when you change the number of the statute used to examine claims. The analysis is the same whether you perform it under a statute called “101” or any other statute.
Do you believe that all non-obvious subject matter of any use to anybody is protectable with a patent claim, Les? Just answer the question. If the answer is “yes” then it’s not the Supreme Court that is your biggest problem. Your biggest problem is that you need to convince an overwhelming majority of the public, including nearly all judges and attorneys who have thought seriously about eligibility questions for any length of time, that they are wrong and you are right.
If I were you I’d start by asserting that information itself is eligible for patenting. Convincing people that mental processes are eligible for patenting is going to be more difficult sell (and don’t forget to file claims to protect your reasoning while you’re at it — it’d be a shame to win the battle and lose the war).
If you can not reduce it to practice, what right do you have to protect it.
The problem is not in reducing it to practice, the problem is in describing what is being done.
If I conceive of a bow I can reduce it to practice. Let’s say I reduce it to practice. Now describe its structure and mode of operation. If you describe it in terms of pulling a string and bending wood to create tension and fitting a notched arrow and using the tension to propel the arrow, okay that’s great. But you could also describe it by simply saying it fires projectiles. “I’ve got a machine in my hand that fires projectiles”
Of course, firing projectiles also reads upon the catapult, the gun, the cannon, and rocket launcher and the missile silo. The problem isn’t that the bow has or hasn’t been reduced to practice, the problem is when applicants are intentionally vague (by leaving out limitations or using functional language) in an effort to capture more than what they have invented.
Describing a bow by saying it fires projectiles is abstract, and that is true whether you have the bow in your hand or not. That’s because the description, while nominally fitting the machine you have in your hand, is not an accurate portrayal of what you have. You have a particular type of machine that fires projectiles. That claim would be valid. A claim to any machine that fires projectiles would not.
If it is the first machine that fires projectiles, the claim would be valid. Whether a claim is too broad or not is judged under 102 and 103. The specification must describe the preferred embodiment, not all embodiments.
If it is the first machine that fires projectiles, the claim would be valid.
What about a claim that first describes “a machine that automatically fires projectiles at moving objects.”
Valid per se because … first? Or valid per se because “automatic”?
What about a claim that first describes “a machine that fires projectiles, wherein the projectiles are protected by a design patent granted on September 24, 2014.”
Valid per se because … first? What’s the analysis?
If it is the first machine that fires projectiles, the claim would be valid.
No it would not.
Whether a claim is too broad or not is judged under 102 and 103.
Not solely. The applicant has failed to enable the full scope of his claim and it fails under 112, 1st. The applicant has failed to describe or possess the scope of his claim and it fails under 112, 1st. The applicant is claiming an abstract idea and it fails under 101.
In the particular example I gave (which I admit would not be the common one) the claim would also fail under 112, 2nd.
If he was the first to invent a machine that fires projectiles, 103 might be the only requirement it passes.
The specification must describe the preferred embodiment, not all embodiments.
There’s more to 112 than best mode.
Les you have this nasty habit of thinking that you can claim whatever non-obvious thing you feel like so long as you put similar words in the spec and a single embodiment is enabled. That is not the law.
If there are in fact 100 completely different ways of achieving an end, one cannot invent the first way and seek to claim all 100. That’s what Morse was about. Moreover, even if one had a substantial number of the ways (say 50) they still couldn’t use the functional scope to reach the other 50.
A claim to a genus requires possession and enablement of a sufficient number of species to fill the scope of the genus. A claim to functionality requires proof of possession and enablement of a sufficient number of structures which perform all of the different ways of achieving the function such that they fill the scope.
….and what is sufficient scope when nothing like it existed before?
As far as we know, there may only be one way to do it. If the claim is broader than the preferred embodiment and the claim is original (filed with the application), then clearly the inventor contemplated the range of embodiment encompassed by the claim and therefore had possession of the range.
This is a classic example of a claim that recites old technology with nothing more than technologically meaningless abstractions (e.g., labels and legal relationships) laid on top of the technology.
Computer programs have “settings” — files that instruct the computer or its program(s) how to respond to data. That’s older than the hills (this method claim was written using several method steps but of course it might as well have just been written as a single step: “maintaining” a setting file, with a description of the functionality conferred by the setting file; that claim would also be invalid, of course).
The method here recites four steps. The first step, (1) “maintaining” a policy (a “setting”) isn’t really a step at all but simply an excuse to list the terms of “the policy” which, of course, is ineligible for patenting on its own terms. You can’t patent a “service policy,” whether it’s an insurance policy or a restaurant policy (“no shoes no service unless you are an entity distinct from entity X!”). It doesn’t matter how complicated “the policy” is if all that is happening is that you (or your Powerful Computer Brain) is consulting “the policy” based on a query and responding based on the policy. The limitation about the legal relationship between the “entity” who “maintains” the “network”, on one hand, and the “third party application” referred to in the policy, on the other hand, is no more meaningful than a limitation requiring that the maintainer of the third party application be “bald” or “born in Toledo.”
The last three steps are just the ancient steps of “receiving a request” from an outside source, “determining” how to respond based on a “policy”, and “communicating” information in response to the outside source. They add nothing.
This is a classic example of a claim that recites old technology…
Ah, so since it’s reciting a technological solution, it’s eligible subject matter under 101, but invalid under 102 or 103? I agree.
so since it’s reciting a technological solution, it’s eligible subject matter under 101, but invalid under 102 or 103
Completely wrong.
Using an old technology for the very purpose for which it was designed is not a “technological solution”, at least not from the perspective of a functioning patent system.
Ball points and paper are also “old technology”, as you’ll surely recognize. Does couching ineligible subject matter — even if that ineligible subject matter is incredibly useful and valuable — in that “old technology” also confer eligibility to the claim?
Of course it doesn’t.
Using an old technology for the very purpose for which it was designed is not a “technological solution”, at least not from the perspective of a functioning patent system.
Using a new technology for the very purpose for which it was designed is certainly a “technological solution”, no? The only difference in the two statements is whether the technology is “new” or “old” – hence, both are eligible subject matter, and the distinction is that one is novel and the other is not.
Ball points and paper are also “old technology”, as you’ll surely recognize.
Absolutely. And as you’ll surely recognize, a ball point pen is a patentable device, no? And if you were the inventor of the ball point pen, then you could surely patent its method of use, no? It’s a technological solution – getting ink from a tube onto paper in a consistent width line without drying, blobbing, or needing constant refilling – so it’s surely eligible subject matter…
… just not anything new. So it passes 101, and fails 102.
Does couching ineligible subject matter — even if that ineligible subject matter is incredibly useful and valuable — in that “old technology” also confer eligibility to the claim?
Does the sole fact that a device is old rather than new suddenly make it non-eligible subject matter?
Does the sole fact that a device is old rather than new suddenly make it non-eligible subject matter?
Yes. If a device is old, then it fails under both 101 (which requires a new and useful innovation) and 102. Either way you get nothing out of the patent system so it’s not clear why you or anyone else would find this the least bit upsetting.
The greater difficulty you are having appears to be with basic logic.
a ball point pen is a patentable device, no?
It was, a long time ago. Not any more. Not unless you improve it and recite new objective structure in your claim that distinguishes your improved ball point pen from the ball point pens in the prior art.
if you were the inventor of the ball point pen, then you could surely patent its method of use, no?
Sure. Nobody is saying you can’t do that. Seems a bit redundant if you have the composition claim but knock yourself out. But don’t forget that you’ll need to recite your ball point pen in your method of use claims and those claims will expire at the same time as your ball point pen patent.
Here’s the issue you seem to be missing or dodging: after your patent on the properly claimed new ball point pen is expired, neither you nor anyone else can claim the use of that “old technology” for, e.g., writing out a non-obvious insurance policy or a non-obvious movie script or a non-obvious mathematical correlation.
Do you understand why that is the case? If you can’t understand that, then there’s not much point in continuing further with the discussion.
I might also ask you whether you believe that information itself is eligible for patenting. How about mental proceses? If you believe the answer to those questions is “yes” then you’re argument is not with these Supreme Court decisions but with pretty much every reasonable person in the country. You’ve got a lot of work to do, if that’s the case, and probably you should be barking up some other tree.
“New” in 101 doesn’t mean what you think it means.
Please tell everyone what “new” means in section 101 and show your evidence.
Also, while you’re doing that, try to recognize that the subject matter eligibility considerations I’m discussing and the accompanying analysis doesn’t disappear even if that term is deleted from that section of the statute.
Lastly, it’d be nice if you were to express your views about whether any subject matter is, in fact, ineligible for protection with a patent claim. Or is it the case that if you use some magic words you can claim pretty much anything? It’s a serious question because, depending on your answer, there really isn’t any point in trying to explain to you the analysis used by the Supreme Court or any other court to tank these invalid claims.
New in 101 is a reiteration that 102 and 103 must also be passed.
You are the one saying that the following claim is invalid under 101 as being directed to nonstatutory subject matter because it is not “new” under 101:
1. A table including: a base and four legs extending therefrom.
Please, answer your own question and show us evidence that “new” in 101 is not simply a reiteration of novel and nonobvious from 102 and 103.
Please also cite three cases, or hell even one case, that supports your theory that my table is out under 101.
Thanks in advance.
You are the one saying that the following claim is invalid under 101 as being directed to nonstatutory subject matter because it is not “new” under 101:
1. A table including: a base and four legs extending therefrom.
Yes I said that. Your table is not new, is it? 101 recites “new”. Maybe you have a different definition of “new”? Seems like it fails both 102 and 101 to me.
You disagree? That’s nice.
It doesn’t change the analysis. It just changes the numbers we use when we discuss how to determine whether a claim protects ineligible subject matter or not.
Please answer the questions I asked you. If you refuse to answer them, I’d be curious to hear your reasons for refusing. Otherwise I can take a good guess.
Maybe you can also think about a claim to “An improved table, wherein said table includes: a base and four legs extending therefrom, wherein said base supports a book, wherein said book comprises [insert extremeley valuable useful non-obvious information here].”
Tell everyone if that claim is eligible or not, and why. Then tell everyone whether you believe that such a claim should be granted. If your answer is “no”, please explain to everyone how such claims are to be rejected without invoking any eligibility considerations.
Thanks in advanced. You’re obviously a very serious and intelligent person so your thoughtful consideration of these issues is greatly appreciated.
Les, New in 101 is a reiteration that 102 and 103 must also be passed.
Compare 1790 to 1793. What changed and why?
1790: “he, she, or they hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used,”
1793: “he or they have invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or
used before the application”
I would like to point out that “new” was added in 1793, as well as “composition of matter,” but not known or use was retained, although limited to before the application.
New seems to be an additional requirement over and above not known or used before the application. What could they have possibly intended?
Seriously, cite the case? Myriad.
Seriously, Evidence?
Federico:
“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. To this extent the decision is affirmed by the statute, although some of the statements made in the decision are not completely defensible. Remarks have appeared in a few decisions and elsewhere that new uses are not patentable. When such remarks are made with reference to a patent for a machine or a manufacture or a composition, which machine, manufacture or composition is in fact old as such, and the argument is made that that the patentee has discovered a new use or application of the old machine, manufacture or composition, there can be little to criticize in such remarks other than possibly a looseness of expression. But if such remarks are interpreted to mean that a new use or application of an old machine, manufacture or composition cannot result in anything patentable then such statements are not and have never been an accurate statement of the law. As stated in the Revision Notes, a process which involves merely the new use of a known machine, manufacture, composition of matter or material may be patented provided the conditions for patentability are satisfied.”
Under your analysis, a ball point pen was not patentable because it uses old technology for what it was intended.
Ink marks, balls roll, ink wells hold ink.
Under your analysis, the Wright Flyer is not patentable because it uses old technology for what it was intended.
lumber provides structural support. Sheets of cloth harness the wind. Rope pulls something or applies tension. pulleys guide rope and allow it to move or be pulled.
Even if computers were designed to compute (in the abstract), that does not mean that every use of a computer is not worthy of a patent. The first program to convert spoken word to text was clearly novel and patentable. So are different, latter developed methods.
Round and round and round you go, Les.
You’re creating a caricature of the actual analysis and using the caricature to reach an absurd result. And then you are using that absurd result to attack the actual analysis when it really only reflects badly on your ability to understand the analysis.
This is your analysis:
“Using an old technology for the very purpose for which it was designed is not a “technological solution”, at least not from the perspective of a functioning patent system.”
I agree that it arrives at absurd results. I didn’t apply a caricature of it. I applied IT.
The context here is information processing, Les.
Information processing “technology” is different from other technologies because, well, it involves information (as opposed to objective physical structure and transformations of matter).
The first program to convert spoken word to text was clearly novel and patentable.
The answer depends on what exactly was claimed, of course.
[shrugs]
Endlessly citing examples of old technology that you find sexy or appealing really isn’t very compelling in this context where we are trying to fix the broken patent system and avoid even bigger problems in the future. Nobody is concerned that a ball point pen was once patented or an airplane was once patented or a light bulb was once patented. The concern is with patents on, e.g., methods of enforcing a policy “on a computer.”
Right. But the logic behind your proposed solution is absurd. All inventions are made with known components used for what they are meant for. There is no reason that using a computer “for what it was mean for” (computing in the abstract) should disqualify ones invention from being patentable just as there is no reason using wood, cloth and rope for what they are meant for (in the abstract) should have disqualified the Wright Flyer as being patentable.
the logic behind your proposed solution is absurd.
No, it’s not.
All inventions are made with known components used for what they are meant for.
That’s not “the logic behind” my analysis. That’s the “logic behind” your analysis, which is absurd because it leads to you results that you know are absurd. My analysis doesn’t lead me to those absurd results because my analysis requires that there be some new objective physical structure in the claimed apparatus/composition that distinguishes it from the prior art.
There is no reason that using a computer “for what it was mean for” (computing in the abstract) should disqualify ones invention from being patentable just as there is no reason using wood, cloth and rope for what they are meant for (in the abstract) should have disqualified the Wright Flyer as being patentable.
Your comparing apples and oranges. More specifically, you’re comparing an old programmable computer created for the purpose of processing information with separated pieces of wood, rope or cloth. That, my friend, is absurd.
A better analogy to illustrate the claims sought by so many computer-implementers is a claim to a “new” airplane, wherein the “new” airplane comprises list of passengers who are not to be admitted on the plane, wherein said list includes Bill Bradski from Pittsburgh, Pennsylvania. Or a “new” airplane, wherein said airplane is “configured” to fly from Boulder to Denver at 10 a.m. on Sunday.
Processes are the first listed category. Processes are described with verbs, not structure. There does not have to be “objective physical structure” in a process claim.
There does not have to be “objective physical structure” in a process claim.
True enough. I was responding to a specific hypothetical proposed by a different commenter. The point being that if your new objective physical structure is recited in your process claim, you are well on your way to avoiding any eligibility concerns. I suppose you might run into a problems with a claim to “A process of identifying [insert new structure described in objective structural terms here].”
If you want to be confident that you’ve removed eligibility concerns from your process claim, then you’d be wise to include a new step or steps that results in a physical transformation of matter that wasn’t previously described or was otherwise “unsolved” in the prior art. Without that, you’re always going to be at risk of protecting an ineligible abtraction with your claim, be it information itself or some generalized information processing functionality that is no less repugnant to the public’s sensibilities (we already know that many patentees could care less about that).
In any event, the mere fact that your claimed process “transforms data” is of very little significance in terms of determining the eligibility of that process. In part, that’s because we all “transform data” all the time, every day, using our brains. And mental processes aren’t eligible. Adding a pencil and paper doesn’t change that. Nor does the addition of a ball point pen or a pocket calculator to those processes.
Perhaps now we should circle back to the issue of how you would like Examiners to evaluate information processing claims for obviousness. Previously, Les, I saw you provide a very interesting obviousness analysis where, in the course of your analysis, you argued that some extremely different structures were “equivalent” in the context of information processing. I thought it was a clever argument and possibly a winning one … but it struck me as the kind of argument that, if the PTO made it, you and other commenters’ heads would be exploding like a helicopter load of popcorn kernels dumped into a volcano.
The first program to convert the spoken word was a table lookup… and not patentable. The signal analysis was also old… and used for signal analysis (I think it was an FFT).
What was new was the interface that generated the numbers used, not the computer.
Fine, then the umteenth method for converting the spoken word to text was patentable. For example:
27. A method of applying knowledge-based rules in a processor-based system to recognize an input speech signal as a word in a natural language, the input speech signal comprising vocalic and non-vocalic intervals, each of the vocalic intervals having a pitch period, the method comprising steps of:
capturing and storing the input speech signal;
segmenting the input speech signal into a series of segments including vocalic intervals and non-vocalic intervals, the vocalic intervals having a frame length computed based on an estimation of the pitch period of the vocalic intervals of the input speech signal;
generating an acoustic feature vector by characterizing the series of segments based upon acoustic events detected within the input speech signal;
retrieving from a store a dictionary having a multiplicity of words, each one of the multiplicity of words described by a phonetic transcription and at least one acoustic event transcription; and
comparing the acoustic feature vector to the acoustic event transcriptions of the multiplicity of words to select a word choice.
link to google.com
Knowledge-based speech recognition system and methods having frame length computed based upon estimated pitch period of vocalic intervals
US 5799276 A
Personally, I don’t think it should be patentable.
Les, “generating an acoustic feature vector by characterizing the series of segments based upon acoustic events detected within the input speech signal;”
It doesn’t say how to do this. The claim may be vulnerable from a over-claiming perspective.
Ah, so since it’s reciting a technological solution, it’s eligible subject matter under 101, but invalid under 102 or 103? I agree.
Haha, reciting a technological solution? Let’s be clear here – facebook’s own facebook mobile app meets every single limitation up there but for the ownership/maintenance by a third party. That code sure doesn’t distinguish as to which legal entity owns the facebook mobile app.
So did facebook create a new technological solution or is facebook describing an old technological solution with a claim to the “new” idea of transferring IP rights? Is transferring IP rights a technological solution?
First time poster, with a comment and a question.
1. It seems that claims like this are doomed. We’ve had a lot of 9-0’s and I don’t think Congress has the will or the inclination to amend 101. While I agree that some of the opinions are ambiguous (What, precisely, is abstract?), the claims being invalidated have been egregious and deserved a quick death. That said, I do think that some software/business might have merit.
2. How can we draw a line or craft a rule that excludes the worst of the worst (Bilski, Alice) while still allowing worthwhile software/business method claims? There was some discussion of this previously but the discussion didn’t progress much.
Understandably, a lot of people invested in these types of patents are upset and focusing their attention on criticizing the SCOTUS. I think that, collectively, our energy would be better placed in identifying a solution that allows some software/business method claims while addressing the concerns of the SCOTUS, and others.
Go, well everyone has been asking for a business method that everyone will agree should be eligible. Post one, any one, and explain why it passes muster.
Go Arthur: 2. How can we draw a line or craft a rule that excludes the worst of the worst (Bilski, Alice) while still allowing worthwhile software/business method claims?
You need to start by identifying what you think a “worthwhile” software or business method claim looks like. What makes that type of claim (the type you are envisioning) “worthwhile”?
Many people (myself included) are of the view that granting information processing claims that, e.g., do not recite new objective physical structure distinguishing the “new” information-processing machine from the prior art are not “worthwhile” because, in part, such claims inevitably take the patent system over like a cancer (absent some radical changes to the patent system or some profoundly stricter rules about such inventions must be claimed and examined).
One additional problem with patents on methods of doing business per se — e.g., accounting methods and marketing methods devoid of technological contributions — is that new methods of doing business per se hardly seem to be the sort of “Useful Art” that patents are necessarily useful for “promoting progress” in. Profits are the incentive for businesses to innovate new business models. That’s why we have capitalism. Businesses that can’t compete on business terms (e.g., because they can’t figure out how to relate to their customers) don’t deserve to be in business. And businesses that can compete should compete, for the public’s benefit.
Fundamentally, I agree with both you and Ned. My post was mostly a reaction to those who only criticize the Supreme Court without offering a way forward.
I just think the discussion suggested would be infinitely more productive than people continuing to insist the Supreme Court is wrong.
I did do a brief search for a reasonable looking business method…and couldn’t find one.
However, check out US 12/932,797. Can’t post the independent claim here, but check it out for a laugh.
US 8,560,464 B2
It does appear to be a joke.
I do believe that’s the first time I’ve seen a 4-column claim 1.
And it was allowed as filed without office action.
MM, but the man (Stanley Benjamin Smith) has 21 patents of the same kind. But I must say, when I first read that claim, I laughed so hard, it took me several minutes to recover. It makes no sense, and spans 4 patent columns.
Then the spec! “Data supply chains?” “Pricing configuration schema?”
S B Smith? What if his name was Benjamin Stanley Smith?
He might be collecting data to show just how broken the patent system and the patent office is. But the PTO is smart. First action allowance.
“I just think the discussion suggested would be infinitely more productive than people continuing to insist the Supreme Court is wrong.”
Spot on. Our peers in other fields routinely deal with SCOTUS decisions they view as disapointing. The most successful approach is invariably to get over it and counsel clients accordingly. Whining, like many among the patent bar seem to be doing, doesn’t work.
2. How can we draw a line or craft a rule that excludes the worst of the worst (Bilski, Alice) while still allowing worthwhile software/business method claims? There was some discussion of this previously but the discussion didn’t progress much.
There actually has always been a rule, and the rule is that functional claiming is not allowed. A claim using functional language is a claim to an end, rather than a claim to a means. A claim to an end is abstract and would allow the patentee to disallow superior competing products no matter how different in structure or mode of operation. Because those products would be disallowed, there is no incentive to research them, and there is no incentive to disclose because you couldn’t practice even if you did disclose. And there is no incentive for the inventor to further disclose any refinements to his invention because he already has the whole field locked up.
A claim is abstract when it is directed to an end, not a means. This is most often accomplished via functional language. A claim is abstract if its novelty and non-obviousness lies in its functional claiming.
Agreed.
One question for those who wish to protect software and information processing machines with patents is whether they can be satisfied with only a tiny subset of particular utilities being eligible (e.g., improved computing speed) along with a requirement that evidence of such improvements is provided in the application as filed, wherein the improvement will need to be substantial and unexpected in order to obtain a patent, and wherein the improvement flows from the recitation of elements in the claim and is not recited merely as a desired result.
That’s something they should begin thinking about it. Some of them already are, I’m sure.
Question, can the Director himself file a PGR?
More or less. See 37 CFR 1.520.
Well, he should in this case.
What Director?
There are grammatical problems, but the intended meaning is clear. The claim is directed to a process. It is not abstract. It is not “directed to” “a fundamental building block”, it is not directed to a product of nature, it is not directed to a law of nature, it is not directed to mental steps, it is not directed to math. There is a machine. There is a transformation: the information given to the third part ap is filtered, limited, made smaller that it might otherwise be or at least unapproved information is transformed into information approved for dissemination.
It addresses a real world problem. How to police information given to third parties without having to get into the nitty gritty of every third party ap that comes down the pike.
I agree that someone will allege it fails 101, but it does not. Whether the Supremes recognize the error of their ways or not is a crap shoot. My money would currently be on No.
But is the claim directed to a technical science or social science? A process of selecting information to make public can be considered a technical process of communication. But is the idea of telling a secret to one friend, or group of friends, and not another friend or group, only an abstract idea.
Maybe I missed something?
101 identifies the categories of inventions that can be patented. Processes are one of the categories. That is the end of the 101 discussion. There is no “technical” requirement. And if there were, who would be the judge as to whether something was “technical”.
In any event, this claim is “technical” in that there is a network, and ap and a processor involved it performing the process.
Maybe the more appropriate question to ask is whether the claim fits under the category of “to promote science and the arts”, and it seems recently that judges are actually deciding that question in the negative.
Clearly Facebook thinks this feature is needed in order to promote the art of aps. Else they wouldn’t have spent the time and treasure to patent it. Anyone blocked by the patent would necessarily think so too.
Alternatively, Facebook believes it can be used in retaliation for a lawsuit over something else…
“Anyone blocked by the patent” Patents written on paper do not block anyone! The judicial process requires the patentee go before a judge to enforce the patent just as Dennis suggests.
Good Luck!
additionally, promoting science and useful arts is the enumerated reason the founders gave congress the power to secure to inventors and authors there exclusive rights.
It is not a requirement of each individual patent.
quite.
But if the “patent” doesn’t promote science or useful arts”, then it should be denied.
You agree that it is not a requirement, then you allege it is grounds for denial.
You bucking for a position on the Supreme Court?
If it violates the purpose for the existence of the law it should be denied.
and all laws that have unintended consequences should be repealed, I suppose.
If one person dies because they couldn’t get out of their burning car because of their seat belt, then the law that requires seat belts is invalid.
Is that it?