Would you like 10,000 Cloems with that Patent?

Cloem Logo

by Dennis Crouch

Although you might be the first-to-file a patent application covering a particular new innovation, certain market areas are so competitive that you should expect follow-on patents from competitors that take the original idea and push it in other similar-but-different directions.  Those follow-on patents won’t block you from practicing your core invention, but they may well block you from implementing practical and important elements of a market-ready solution.

One potential partial solution to this problem is being offered by a new company out of Canes, France.  The company, known as Cloem, has an interesting business model of creating tens-of-thousands of what they call “cloems” based upon a client’s submitted claim set. A cloem is a computer-generated claim (or statement of an invention) that is created by the various permutations possible as well as by considering alternative definitions for terms as well as “synonyms, hyponyms, hyperonyms, meronyms, holonyms, and antonyms.”  The owner’s idea is that the cloems will be immediately published and then serve as prior art to prevent competitors from claiming rights to the whitespace surrounding the original patent.  Customers might also want to cloam a competitor’s patent application to prevent them expanding that subject matter.

www.cloem.com

Cloem admits that a substantial number of its results are nonsense, but a substantial number are also on-the-money and, with 50,000 cloems per patent, they can afford to waste a few.

Questions remain: (1) whether these smart-but-random computer-generated cloems should count as prior art; (2) when one of the cloems represents a seemingly patentable invention, who is the inventor and is it patentable?  Robert Plotkin wrote a book that considers some of this: The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business

 

Dennis Crouch

About Dennis Crouch

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

133 thoughts on “Would you like 10,000 Cloems with that Patent?

  1. What happens when they get a restriction requirement and 1,000 of their 2,000 claims (or whatever they actually file) are restricted out? They then have to pay a huge fee to file a divisional (you don’t get the money back for filing 2,000 claims even though only 1,000 will be reviewed).

    1. Cloem(R) texts are not necessarily filed. They can be published, this is an option. They absolutely can remain “private”, i.e. unpublished. You are free to build on top and to further file whatever you find interesting. We provide * some * examples of use i.e. patenting tactics. There are many more.

      Regarding creation, Cloem(R) is a system which is everything but random. The creation is NOT random.

      Best regards,

  2. As others wrote, patenting/publishing around is a very common practice.
    It is interesting that now it can ba a commodity offered by a third party.
    An additional thought: what if a Patent Office acquires the services of Cloem to “clear the ground” around any filed application? and reversely, to search and indexing patents (or is this already done somehow)?

  3. One potential use for the Cloem (R) service would be to potentially expand the scope of the First-To-Publish (FTP) grace period under AIA 102(b)(1)(B) and 102(b)(2)(B).

    The Final Rules narrowly interpret the sub(B) FTP grace periods as applicable only if the “subject matter disclosed” as the triggering publication is the “same” as the subject matter of the piece of intervening art. Given this narrow interpretation accorded under the Final Rules, having a publication like this that presents numerous “variations on a theme” of the claimed subject matter would likely increase the chances of the FTP grace period being applicable in seeking to exempt a piece of intervening art.

    The safest course is to Always File First; but if you can’t do that, or if you want to clear out more time and space for possible continuation-in-part filings, allowing publication of the results of this service may prove to be an interesting option for US applicants.

  4. To the extent the Cleom is mirrored/supported by the specification the answer would likely be yes. It may shift a question from 103 to 102.

    Query what happens to the specification as a whole if some Cleoms are incompatible with, logically contradictory with, or exclusions from, other Cleoms and the teachings of the specification. These would likely need to be removed, possibly proofread (AI is not perfect), and likely would cost a great deal of money to deal with.

    It also opens a Pandora’s box of risks regarding claim construction… they almost definitely would need to be read in detail.

  5. Worth repeating since it’s come up several times in the comments: poisoning the well so your competitor can not obtain patent claims on obvious or even non-obvious variants of your innovation is a tried and true practice. Computers have been used for many years as aids in this strategy. Specifically, the practice has been effective in the area of polymeric chemicals such as polynucleotides where the units comprised by the polymers (e.g., the nucleotides A, T, G, C, U) are discrete and limited in number and the polymers are not too terribly long (the computer time and file size for longer and more complicated polymers creates cost/benefit issues — does anyone know the size of the largest sequence file ever submitted to the USPTO, who filed it, and why?).

    Additional concerns (or features, depending on your perspective) may be raised when the computer is used to generate variants (linguistic or otherwise) which may be patentable in their own right because the state of the art is such that the description of the composition (e.g., a polynucleotide) or function (e.g., a computer-implemented information processing function) is “self-enabling”, i.e., the claim is arguably enabled upon its recitation and one skilled in the art could make at least one embodiment and use it based on the recitation of the claim alone (or perhaps with some minimal boilerplate describing the state of the art).

    If that is of concern to you, then be prepared to double your concern because currently the Federal Circuit has interpreted 35 USC 103 to allow applicants to support an argument for the non-obviousness of a particular variant (typically a variant claimed only after a lawsuit target has been identified) by presenting evidence that was obtained years the application has been filed. As of this moment, that evidence can include evidence obtained from any source, including the target of the lawsuit. As far as I know, nobody’s taken this issue up to the Supremes yet. I don’t think they’d approve.

      1. The evidence obtained later needs to apply to the filing date.

        Is that a difficult requirement to meet? “Apply to the filing date”?

        Most applications contain some boilerplate about broadly defined “improved” uses of different embodiments of the invention (“improved” relative to stuff that isn’t the invention). So the applicant provides later-generated (post filing) evidence of improvement over the prior art only when it needs to, e.g., in the litigation-worthy cases where one of these otherwise obvious or substantial utility-lacking compositions actually does function unexpectedly well and someone — not necessarily the applicant (who had no idea at the time of filing which of the obvious multitude of alternative species would actually exhibit the alleged improvement — hence it’s “unexpected” nature) — independently discovers the “unexpected” improvement or is otherwise benefitting from that discovery after the critical date of the application.

        If the counter-argument is that, under the Federal Circuit’s current case law, that something quite specific is needed for later-filed evidence of unexpected results to “apply to the filing date” and be accepted, I’d like to know what you think that specific something is. Would the recitatal of a computer-generated fifteen or fifty or fifteen-hundred “ranges” of improvement that “may be achieved” using this or that specific test (again, this is the circ umstance where none of the specifically claimed species or only a tiny fraction of them were actually tested as of the filing data)? Would that sort of giant all-futures-encompassing collection of faux-detailed predictions in the original specification suffice for the later-obtained “unexpected results” to “apply to the filing date”? If so, why?

        To me it seems like an excessive reward of quid for some very dubious quo. It’s giving patent rights away to people who say “Hey, if you go ahead and explore this ten billion member computer-generated list of obvious variants and you might discover something useful and surprising amongst all the worthless ones, in which case I’ll claim that specific thing, use the evidence I was unaware of to justify my patent rights to that specific thing, and then sue you on it.”

        That just doesn’t seem like a great way to promote the making of those discoveries. It does seem like it would provide encouragement to a certain class of patent-minded desk-bound entrepeneurs to file endless numbers of applications describing reams of “innovations” that they haven’t reduced to practice and then lying in wait for someone else to come up that “unexpected” data that turns an otherwise unpatentable invention into solid gold.

        1. If I patent a basic invention, and then publish publicly 1000 variants any one of which might be useful, I’ve contributed to innovation by disclosing my invention and its variants and my end of the fundamental quid pro quo of the patent system is satisfied. If you want to pick it up and capitalize on it so be it, but pay me for 20 years, no?

          This seems to be the whole point of the patent system.

  6. I hope everyone sees that this is yet another reason that the foundation of prosecution should be TSM. In fact with each year that goes by, more and more is published and available to the PTO.

    1. Are they able to easily access it? Do they access it? Do they apply it? (Or do they simply rely on U.S. patents and published applications?)

      1. “Are they able to easily access it?”

        They know how to google don’t they?
        They just put their fingers together and brows.

    2. I don’t believe that the USPTO’s job is to search out invalidating prior art. Its your job as the applicant to put prior art in front of the USPTO to improve the value of your patent. Its my job as the later challenger to find the prior art you were to lazy to find. And economics takes care of the rest (if your patent is worthless then good for you, you have a lousy patent that wouldn’t stand up in court but won’t be challenged because no one cares; and on the otherhand if its worth something I have an incentive to go find that prior art).

      But the point of Cloem is prevent other people from patenting the improvements to your own patent, by creating a public record of those improvements before someone has a chance to figure out which ones are valuable enough to patent. That way you don’t have to license someone else’s patent to practice your own patent in useful ways.

  7. “(2) when one of the cloems represents a seemingly patentable invention, who is the inventor and is it patentable?”

    The computer AI that generated it.

    1. Something abstract cannot generate something new and non-obvious. We must first ask what the abstract concept is and then remove all elements of the claims but the general purpose computer and then ask whether anything than a generic solution to each element is provided. After performing this highly objective and precise analysis, we must move on to elaborate how the claims would preempt at least one more claim.

      1. Tell that to any actual inventor…

        I believe what people think count as “abstract” and do “generate something new and non-obvous”.

        And if “Something abstract cannot generate something new” then no inventor can.

        Also, there appears to be a corollary in that “Something abstract” is not supposed to be patented either…

  8. Interesting in concept. Difficult to implement in practice. USPTO will probably have a call for Tums and Rolaids. Just publishing a blob of text without context like the specification in a patent application provides is just text manipulation. What’s next claims on Twitter?

    The Cloem team should come out from the shadows and identify themselves. Who are these people? Dennis are you a partner?

      1. But you do know the identity of the poster who signed off as “the Cloem team,” as well as the identity of the contributor of the post to which these comments are amended to, right?

        I think that Arleen is seeking sunlight and your answer has a bit of penumbra to it.

          1. Your answer is unclear.

            Do you not think that Arleen is seeking sunlight?
            That is not credible.

            Do you not think that your answer has a bit of penumbra to it?
            Also, that is not credible – given your history and all.

            Or does the statement refer to a “purposefully blind, I do not know because I have not checked, although I could know if I did check” answer?
            This, while credible, is exactly the point of the comment of the penumbra.

            Not sure why this would have to be spelled out.

  9. Dear Colleagues,

    The thread of existing comments is fascinating. Thanks for your interest.

    Many aspects of Cloem are discussed in the FAQ section (“About” section in the top right menu).

    Some particular aspects:

    – machine and human contributions are deeply intermingled during the creation process. Discriminating between human and machine generated contents is not quite possible a posteriori. Nothing prevents anyone from copying one or more cloems from the database. You can further fix flaws in cloems (the skilled person also can repair a technical teaching to some extent);

    – read about the technology in the corresponding section (About>Technology);

    – search features will be considerably developed in the near future;

    – there are many other aspects to be discussed, including epistemology.

    Given the present interest, we will have the occasion to further communicate.

    PS: we are currently updating the database which is currently very small (only a couple of hundreds of base claims), we soon will scale up to considerable numbers. Please forgive the bugs if any, we launched just last Monday (after considerable R&D effort)

    Best regards,

    The Cloem team

    1. You should write a program for DC judges to invalidate claims under Alice.

      1) remove all technical language from the claim.

      2) Cut and paste claim in “I find the following to be an abstract idea:”

      3) Recite the claim with all the technical elements removed and then say: “Each element can be implemented with a conventional computer.”

      4) Conclusion: “If we were to permit this claim, then all would be preempted.”

      1. : o ) Thanks. We certainly will. One step at a time. We have so many steps beforehand: electronic third party submissions, automated clearances, etc.
        Can’t give you the list here. Any further idea ?

        Best regards,
        The Cloem team.

  10. I do engineeering stuff not organic chemistry but it has always troubled me when chemists tell me they have to include countless pages of individual formulae, a little diagram of each one of the hundreds of thousands of molecules within the ambit of their generic formula (with R1, R2, R3 etc) of Claim 1.

    Whether or not the countless pages are included should make no difference to what the case discloses to the skilled person, say I. Oh but it does make a difference, say the chemists. You see, if it turns out that, surprisingly, the one on page 189 cures a disease, and a competitor files on this, his patentable novelty will turn on whether or not that little diagram is there on page 189.

    So here is an easy and lucrative job for Cloem, no? Malcolm?

    1. A broad genus represented by a chemical formula in the prior art might not be sufficiently specific to anticipate a claim to a species. So the novelty of the claim to the species depends on the breadth of the prior art’s disclosure.

      If one were to produce a collection of random permutations of atoms and bonds by computer, it would likely end up with a large number of impossible chemical structures. This would render the collection useless as prior art, as a practitioner could simply argue that one of ordinary skill would have had little expectation of success to make the compounds described in the collection.

      1. RH – your point about dismissing the set because of flaws in the data is an interesting one. In theory though, as time goes on it will become more reasonable that one could design a computer program for generating large volumes of chemical structures which will be useful. If that is the case, it is possible that such a computer-generated chemical data set might be used against later patent claims. Your underlying question then remains (and certainly applies to what Cloem is doing) – should computer-generated lists be considered prior art?

        1. Whether or not this more useful volume of structures would be prior art is an interesting issue. If the list were published and the compounds in the list were (generally) enabled, I can’t think of a good reason that it wouldn’t be prior art.

          However, even if it were prior art, it would probably only be useful to anticipate claims drawn to the compounds themselves. The big list of compounds would probably have very little to say about how or why the compounds would be used, so it likely wouldn’t be useful prior art for an obviousness rejection against claims drawn to compositions, methods of using the compounds, etc.

          1. Point taken regarding use-based claims – a computer-generated list would likely not serve as prior art to stop later applications of the compounds listed.

            But, as a general proposition, there is more value in a composition claim than in a process claim (granted, many assumptions are built into that statement).

            Focusing only on compositions then, let’s refine the hypothetical. Assume that at some point in the future a computer program can be developed which spits out long lists of compounds having particular properties with a reasonably high degree of success. Assume one of those lists is a list of compounds which would be suitable as an adhesive, and contains compound A. Later, an applicant files an application directed to the composition of an adhesive having the structure of A. In such a case, it would seem that such an application should be rejected under a straight-forward reading of 102.

            My question though – should it be rejected from a policy standpoint? Assume at some point there is an “open source” chemistry movement that works to publish computer-generated structures solely for the purpose of destroying novelty for others. These people have never practiced the inventions – their only goal is to publish for the purpose of destroying novelty.

            These questions hit at the heart of what Cloem is trying to pull off here. It will be interesting to see the reaction (if any) in the courts and congress. I posit that the quantity of such computer-assisted prior art generation will only increase as time goes on. While such prior art may technically qualify as prior art under the statute, something about it makes me uneasy and feels roughly equivalent to what the Supreme Court keeps complaining about with bad patents being allowed simply because of cleaver drafting. In other words, seems like form over substance.

            1. let’s refine the hypothetical. Assume that at some point in the future a computer program can be developed which spits out long lists of compounds having particular properties with a reasonably high degree of success.

              Why limit the hypo to a computer list?

              Digital printing is here today.

            2. If Cloem somehow (rightly) expected that this class of compounds would be useful as adhesives, then it might indeed be useful as prior art against claims to adhesives containing these compounds. If Cloem were able to develop a reputation of correctly predicting the utility of chemical compounds, then I don’t see what one of ordinary skill wouldn’t be able to use their publications as references.

              For me, the really interesting question is how Cloem could possibly foresee the potential uses of compounds. In this case, how would Cloem predict that these compounds would be useful for adhesives (but not for other uses that they would not actually work for, as this would raise issues of enablement/expectation of success) before any prior publications? Quite a few chemists make a living finding new uses for old compounds (or combinations of them), so it seems unlikely to me that Cloem would have the omniscience to forestall an entire field!

              1. I think that would call for a good chemical simulation system.

                It would take a lot of effort, but it should be able to filter a class of applications for proposed chemicals. Alternatively, it could be fed to an automated lab…

                1. Lots of math. Especially for the chemical simulation. Some I have monitored ran for days just to get a few seconds of simulated reality.

                  The automated lab performs physical transformations. The measures of the results can be analyzed by math.

                  It has been called “synthetic evolution”. Another term is “computer invention”, though you won’t like it.

  11. In the mid-1990s I was tasked with an exercise in reviewing and analyzing for my company the last 24 months of the “Research Disclosure” publication. For any unfamiliar, it was a ready way of getting invention disclosures published for prior art purposes for the (then) reasonable price of $80 per page of disclosure. I’ve not followed it, so I have no idea if this publication still exists today.

    Anyway, IBM (and only IBM) had their own, separate section in each monthly publication, which generally was about 50% of each magazine publication. It was evident that many of the disclosures published by IBM were of the “iterations-on-a-theme” type, whereby they were attempting to publish as many as possible of the variations of their actually filed apps as possible. Perhaps (likely) they only did this with respect to those inventions they viewed as very important.

    This (Cloem) to me just seems a logical outgrowth of IBMs publication rationale.

    Noting the good discussion at 10 and 10.1, I’ll add that while an invention to be patentable may necessarily be the creation of a human, I don’t think there’s any similar limitation on the source of prior art.

    So far as I can tell, it simply need be published.

    1. Apologies: after now skimming the commentariat, I see the main point of my comment is largely redundant of themes well covered already by several others.

    2. “… I don’t think there’s any similar limitation on the source of prior art.”

      Yet, by definition / accepted understanding, doesn’t “art” … in the patent context … have to be created by a human?

      Ergo, such non-human, computer-generated claims would in fact not be / qualify as prior art?

      1. “Yet, by definition / accepted understanding, doesn’t “art” … in the patent context … have to be created by a human?”

        Hi Steve. I don’t think so… Let me flail about a bit here.

        What is the basis for our policies around nonpatentability of discoveries (or even independent creation) of naturally existing things?

        Is is because their existence in nature is novelty destroying? The person attempting to patent it can’t get a patent because s/he was not the first inventor. Or is it because these naturally occurring things are already in the public domain, and therefore it’s not proper subject matter for patenting? Either way, the person does not get their patent.

        Wouldn’t either rationale work to qualify computer generated publications as viable prior art?

          1. Of course not, since (in any episode I’ve seen) it is presented as only an idea, i.e. the ordinarily skilled man is not enabled by that fantasy.

            That said, I struggle to place the relevance of your comment in this sub-thread?

            1. The relevance has to do with enablement and the theory here that the wiring is more akin to monkeys pounding on keys as opposed to a coherent (and enabled) writing by the hand of man.

              Another Star Trek item can be brought into the discussion (and is actually closer to reality): the replicator. Of course such a thing does resemble my point often offered for discussion of my big box of electrons, protons and neutrons which would make obvious all items composed of such.

              1. “coherent” is relative.

                Even monkeys pounding on keys will eventually produce a “coherent” writing.

                The only difficulty is filtering out the “incoherent”.

              2. “The relevance has to do with enablement ”

                And yes, I replied directly to that point. My other point was that it appears Ned intended to reply to some different thread (i.e., one in which the question of enablement was under discussion), given that the discussion Ned did reply directly to related to Steve’s question of whether or not prior art must be created by a human to be capable of being counted legally as prior art.

            2. Mellow,

              We know this:

              Consider a known compound having a known use. One cannot re-patent that known compound when one discovers a new use.

              Consider a product of nature. One cannot patent it because one discovers a use, even if the product of nature is not known. The product of nature is deemed “old” even if not known because it physically exists.

              Now consider a compound described in a publication, but having no described way of making it or using it.

              This is the problem presented by here by Cloem. This is the Star Trek problem as well.

              If we allow patents on new compounds without limitation to the disclosed uses, provided we describe how to make it and to use it, why cannot we allow patents on described compounds that are not known to exist physically when an inventor first discovers how to make the compound and to use it?

              I actually think this is the law.

                1. …or companies like Monsanto, who had a patent on a certain crop, had that patent expire, and then extend the life of the effect of the patent by patenting the chemical’s converse action in bioengineered foodstuffs.

                  Do you mean like that?

                2. Thats one.

                  I was thinking of the “reformulated” pills using the same active ingredient but using different fillers… and extending the patent on the active ingredient.

              1. “Now consider a compound described in a publication, but having no described way of making it or using it.”

                Right. You apply the same standard as always – if this description is not enabling to the person skilled in the art, then it’s not enabling.

                1. Mellow,

                  I may be off, but I think that the point here of even bringing up enablement is that the computer program that spits out permutations is ONLY spitting out permutations, and is not ALSO spitting out anything even remotely related to the enabling of those permutations.

                  One without the other, is nothing more than science fiction – regardless of the base used to start the computer program permutations.

                  In the “art” sense, there is no human involvement, thus the end product does not meet the patent sense of the word “art.”

                  No human involvement, no enablement, not prior art.

                2. This is a bit cheeky, but something created without human involvement is known as a product of nature and may also prevent patentability.

                  In the particular case of Cloem, there is a significant amount of human involvement in developing the process of transforming a single claim into a set of 10,000 cloems. And at this point in their process it appears that there is human involvement with each case (making design choices regarding areas of technology and other factors) and so we might have crossed a threshold of ‘human involvement’ if it is required.

                  But, I don’t think that human involvement is required in any way for the creation of prior art other than the art being ‘publicly available.’ But it is only prior art for what it discloses.

                3. anon – you are probably not “off” in many cases and perhaps in entire fields of art, that permutations tossed off by a computer will fail enablement. But in other fields, tossed off iterations on a theme are going to be enabled to the skilled person, once merely identified.

                  As for whether the word “art” itself requires a human, I’d say yes in the classical sense of the word. But 35 USC doesn’t apply any definition to the word “art” itself, and it says that “art” is that which is published.

                4. Mellow, I disagree – as has been pointed out, mere publication is not enough.

                  If it were, science fiction would defeat patents.

                  Do you have a case where such is so?

                5. This is a bit cheeky, but something created without human involvement is known as a product of nature and may also prevent patentability.

                  The only thing cheeky here is the deliberate conflation between 101 and 102 – especially since you were kind enough to print out 102 where prior art is defined.

                  What would be cheeky would be my questioning why a teacher of patent law seems intent on conflating different parts of the statute.

                6. You just keep saying you disagree…. I disagree with you. I think we’re at loggerheads because we’re in very different art areas. I can easily imagine scattershot iterations-on-a-theme based on one chemical being enabling to the skilled person upon first glance at their structure.

                  As for “If it were, science fiction would defeat patents. Do you have a case where such is so?”
                  – I don’t have any concrete cases where science fiction “defeated” a patent. I recall Samsung made arguments in one of the Apple suits that Kubrick’s Space Odyssey was enabling PA as against some of the asserted Apple claims, but didn’t follow it and don’t know the outcome. Then there’s the unverified story that Heinlein’s written description of a waterbed was used against Hall’s first attempt at patent, forcing him to file a CIP and drop that parent case (the CIP did issue). But the abandoned file history is not online (not free) and I’m not going to spend money to see if the story is true or not. (My guess is, most likely internet legend).

                  The movie Borat was used in a rejection of a garment utility patent application, check the file history for US20090216171.

                  I was for a long time a reader of “hard” science fiction, where the authors felt they had to seriously connect dots as to their science. So I don’t have any trouble imagining that there could be sufficient written description to enable use of such matter in, e.g., and obviousness rejection.

                7. Mellow, speaking of hard science fiction, may I recommend the Martian, by Andy Weir. It has been lauded by the Wall Street Journal as the best pure science fiction novel to be written in a long time.

                  As well, the movie version, starring Matt Damon, directed by Ridley Scott, is scheduled for release on November 25, 2015, just three years after first publication.

                  It is an amazing sci-fy novel. Great!

                8. Ned, many thanks for the novel tip.

                  (Can’t imagine how long I’ve waited for an opening permitting venue-appropriate use of that phrase)

            1. (I’ll try again, and apologies to anon if my comment is what triggered the double-delete)

              I agree that a claim drafted in a certain “thing by function” style could be argued to be anticipated by Star Trek. But it should also fail 112/1 (112(a) now) right off as well.

              1. No problem – (but curious as to how you are so intimately aware of that double…)

                My post merely pointed out to Malcolm that a previous conversation has already occurred pointing out to Malcolm that his answer of “Depends on the claim” is not accurate, given the Supreme Court’s recent rulings.

                1. “curious as to how you are so intimately aware of that double”

                  ?

                  Like I said, one of them was mine, one was yours. I posted mine, got the mod-squad triangle warning sign, then a few minutes later it (and yours) was gone.

                  Nothing “intimate” about that.

        1. No.

          This misses on two fronts:
          1) “prior” – timing is not a 101 concern – See Chakrabarty (though just discovered is a phrase that indicates that even after post grant, the “keep outs” apply – also remember that the universe itself is not static)

          And

          2) “art” which is specifically a term reserved for the hand of man. Note that the 101 distinctions are not called “art.” (Note as well the silence greeted the tax strategies comment that I recently put on the table for discussion in the AIA and in particular the fact that Congress could have stated such as ineligible and chose instead not to do so.)

    1. Well, yes. But while the invention may be made in any manner, it must nonetheless (as with the selfie-snapping monkey) be made by a human being.

      Anyway, how is a computer going to sign an inventor’s declaration? Or assign the application to an entity with suitable legal status to actually be issued a patent?

  12. That’s (Cloem) not a new idea. We’ve been doing that for ages. Not 10,000 worth, but that sort of building-a-fence around the claimed invention sort of thing.

  13. (1) whether these smart-but-random computer-generated cloems should count as prior art;

    Yep, because known techniques may be applied from one area to another.

    (2) when one of the cloems represents a seemingly patentable invention, who is the inventor and is it patentable?

    It’s impossible for them to be patentable.

    Those follow-on patents won’t block you from practicing your core invention, but they may well block you from implementing practical and important elements of a market-ready solution.

    Those should never issue either. The word practical should have been a dead giveaway for you.

    I do not see how a variant based solely on linguistic analysis and manipulation can create anything meaningful that is not already available to the skilled person based on the original disclosure and claims.

    Replace “original disclosure” with “industry knowledge” and you have a plurality of the filed software applications.

    Where does an enabling disclosure of anything new come from?

    While never technically expressed in this way, something often forgotten by patent applicants is that the prior art need only be as enabling as the specification under review. If I reject a claim by mapping a limitation to an episode of Star Trek, you better think twice before you proceed on the argument that one of ordinary skill in the art couldn’t have enabled your invention based on the fantasy idea, lest you find out that your specification happens to be just as ethereal as the tv. The fantasy idea may not have been enabled, but it’s possible the sum total of knowledge in the field later enabled it, and if not, it’s possible the applicant didn’t enable it either. You may beat a 103 by admitting to a 112.

    1. I do not see how a variant based solely on linguistic analysis and manipulation can create anything meaningful that is not already available to the skilled person based on the original disclosure and claims.

      As RG notes, this is the modus operandi for a lot of computer-implemented “innovations.” To the extent the “meaning” of the claim is difficult to determine because of the “linguistic manipulation”, the fact of its “ready availability” becomes difficult to discern. The reward for this shining example of the “draughtperson’s art”: a granted patent.

      Notice how it’s nearly impossible to avoid this issue in the present day. People just back into it when discussing something else.

        1. I wrote five sentences in response to something Dennis wrote.

          Which of those sentences are you considering to be my “conclusion” and how does “the opposite conclusion” more “logically follow” from Dennis’ quote than the “conclusion” you are ascribing to me (which I hope is something that I actually wrote).

    2. “Those should never issue either. The word practical should have been a dead giveaway for you.”

      Maybe they shouldn’t issue, but they do in vast numbers every Tuesday. And so do obvious corollaries of your work.

      So what’s the best way to publish these? Maybe you could file a nice provisional application combining parts of your initial specification and all these computer generated claims as additional specification. It’s cheaper than any other publication the PTO is likely to search, gets your document into the PTO files, doesn’t embarrass you by becoming public anywhere your colleagues might read it, and unambiguously establishes precedence.

      Of course, in the software patent examination process a thesaurus is likely to be all a new applicant needs to overcome your thesaurus based prior art, since there is no standardized objective language required by the PTO for such patents.

      1. Maybe they shouldn’t issue, but they do in vast numbers every Tuesday. And so do obvious corollaries of your work.

        The failure of the office to do its job does not rob you of your rights. I wholeheartedly get where you’re coming from though.

        Maybe you could file a nice provisional application…It’s cheaper than any other publication the PTO is likely to search

        Not sure if this is what you meant, but provisionals don’t even come up in our search results.

      1. Because one of ordinary skill in the art would find it obvious to implement practical and important elements of a disclosed invention. Obvious monetizing is obvious.

        1. I think you’re reading too much into D’s post. Here’s what D wrote:

          “Although you might be the first-to-file a patent application covering a particular new innovation, certain market areas are so competitive that you should expect follow-on patents from competitors that take the original idea and push it in other similar-but-different directions. Those follow-on patents won’t block you from practicing your core invention, but they may well block you from implementing practical and important elements of a market-ready solution.”

          If you’re the first to patent an apparatus comprising A, B, C, and D but you find there’s no market for that apparatus, but your competitor finds that there is a market for an apparatus comprising A, B, C, D, and E or an apparatus comprising A, B, C’, and D, and either of those apparatus are non-obvious from your patent, your competitor should be able to patent that.

          Nothing obvious from your patent should issue, but not every implementation of practical and important elements of your invention is obvious. There is a concept known as “design around” and some patent attorneys are actually capable of working with clients to achieve non-obvious design arounds that obtain market success.

    1. In the us, we now have it clearly defined in 35 U.S.C. 102(a).

      (a) Novelty; Prior Art.— A person shall be entitled to a patent unless—
      (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
      (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

      Nothing here about how the knowledge was created, only that it become available to the public by a certain date.

      1. One of the few points on which we can all agree: irrespective of the first-to-file/first-to-invent debate, the new 102 is vastly more readable than the old 102.

        I never could keep the particulars and differences of the old 102(a)/(b)/(e) straight – always had to look them up.

      2. Take chemistry.

        One could take a basic compound described structurally, and using a machine, vary every bond and constituent until possibly one might describe every possible compound, including many that are impossible — Just like a monkey pounding on a keyboard of bonds, and constituents.

        There is something fundamentally flawed in the thought that such nonsense could prevent anyone from receiving a patent on one of these when they discover not only the structure, but how to make it and use it.

        Take copyright.

        Imagine this monkey pounding out letters and punctuation thereby producing every possible combinations of letters words and sentences. Could such a production be used to somehow prevent others from publishing anything?

        It seems there must be some loophole in the law that this firm is exploiting. I just cannot put my finger on it.

        Described in a printed publication must be more that something that approaches nonsense. I must be something that actually places a working knowledge of the invention into the public domain.

        1. Ned – “Imagine this monkey pounding out letters and punctuation thereby producing every possible combinations of letters words and sentences. Could such a production be used to somehow prevent others from publishing anything?

          As implausible as that hypothetical may seem . . .

          TorrentFreak.com

          Be forewarned: I find that Torrent Freak and Patently O are pretty much at opposite extremes with respect to intellectual property philosophies. The more tightly-wound of readers should probably forgo following that link.

  14. Seems to me that this Cloems essentially just define an area, or “penumbra” for a certain type of justice, around a patent that a previous patent claim should render obvious for purposes of patent law.

    Aka, the Cloem is really just a PHOSITA (kind of like a really stupid version of the pre-KSR PHOSITA).

    1. I think that is a good way to look at this. The cloems role is in providing a more thoroughly defined penumbra-of-future-non-patentability so that it will be easier to deny attempts to over-patent that area. In practice, it might allow the examiner to reject a claim on novelty grounds rather than obviousness. As Mark S suggests elsewhere in the commentary, there is some suggestion that cloams built from the same original claim-set should be seen as obvious extensions of the claim set (and obvious relative to one another).

      One practical problem with all of this is the large number of nonsensical cloams created. Its hard to say exactly how some courts may deal with that.

      1. One practical problem with all of this is the large number of nonsensical cloams created. Its hard to say exactly how some courts may deal with that.

        A bunch of dependent claims that recites nonsense (or even one such claim) can really mess up your patent strategy.

        It’s usually a good idea to enlist the help of an intelligent, skilled human to check the computer’s work product.

      2. In practice, it might allow the examiner to reject a claim on novelty grounds rather than obviousness.

        Generating 50,000 near similar copies of something is a great way to get all 50,000 ignored by an examiner.

          1. Given that this is their business model, I can only imagine that they will be in close contact with at least one patent office (EPO, possibly, since they’re French) to ensure that their search services are utilized properly.

          2. The fact that this computer-generated material isn’t realistically usable by a human raises the question of whether we’re stretching the capabilities of the fictional PHOSITA too far. Yes, this might result in an invention being “described in a printed publication,” but is it truly “available to the public”? Note that 102 indicates that publication is an example of availability, not a free-standing category.

        1. Who says the examiner gets all 50,000?

          Can’t the patent holder’s competitor quickly find the right cloem with searching algorithms and file an IPR to invalidate any subsequent patents?

  15. The owner’s idea is that the cloems will be immediately published and then serve as prior art to prevent competitors from claiming rights to the whitespace surrounding the original patent.

    Just a friendly reminder to those who fret about their doctrine of equivalents “rights”, this additional disclosure will also prevent the patentee from arguing that a claim reciting member X of that “whitespace” is infringed under the doctrine of equivalents by disclosed (but not claimed) member Y of that “whitespace.” See Johnson and Johnston Associates 285 F.3d 1046 (Fed Cir. 2002, en banc) (“Having disclosed without claiming the steel substrates, Johnston cannot now invoke the doctrine of equivalents to extend its aluminum limitation to encompass steel. Thus, Johnston cannot assert the doctrine of equivalents to cover the disclosed but unclaimed steel substrate.”) link to digital-law-online.info

    Am I suggesting that people shouldn’t disclose obvious or non-obvious variations of their inventions in their patent applications? Nope. On the contrary: a relatively narrow claim that is literally infringed is always your best bet.

    1. I think that it goes without saying that your “best bet” can easily fall astray and become a virtually worthless picture claim.

      Thus, I would amend your “best bet” to suggest a variety of claim coverage with properly wide to very narrow up and down the ladder of abstraction.

      Of course, this depends on your art field, wherein most mechanical art fields absolutely require one not to aim for a narrow claim and literal infringement.

      1. You seem to have missed or ignored a key part of my statement: “a relatively narrow claim that is literally infringed is always your best bet.”

        1. Did not miss that at all Malcolm.

          If you are depending on an extremely narrow claim in a case of literal infringement, the danger of ease of work-around rises tremendously.

          This is why I would put that over 90% of worthwhile claims have climbed at least one rung, and many more than one rung, up the ladder of abstraction when claims are written.

          1. worthwhile claims

            Most people would find a claim that’s literally infringed by their competitor to be a “worthwhile” claim. Even more “worthwhile” is a claim that’s valid because it’s not too broad. You should be able to make some money with a patent like that, or at least force your competitor to lose money by making them “design around” or use the prior art that you improved upon (and if you’re smart you’ve claimed that design around in a separate, literally infringed and narrow claim).

            Competitor’s can always choose to design around or not practice your claim. Chances are good that if that’s not the case then you’re claim is invalid for one reason or another.

            1. Malcolm,

              With all due respect, you continue to miss with your predilection for taking what is a single option under the law and mistaking that option as the only option under the law.

              Yes, pinpoint picture claims (and by your advice, LOTS of them) can be valuable.

              But you quite miss the plain fact that 90% of all valuable claims DO use the ladders of abstraction and climb a rung or two in order to defeat the painfully easy design-arounds.

              This is fully in accord with the law, and is a much, much, much smarter way than the picture claim method that you seem (too) comfortable with.

              1. you quite miss the plain fact that 90% of all valuable claims DO use the ladders of abstraction and climb a rung or two in order to defeat the painfully easy design-arounds.

                I’ve no idea what makes you think I’m “quite missing” that “plain fact”. If you believe that you’re entitled to a broader claim then ask the PTO to grant that broader claim.

                All I’m saying is that with greater claim breadth, the greater your risk of invalidity. Is that really arguable?

                If your competitor is, in fact, infringing a narrow claim and you want to stop them from doing that, then asserting that narrow claim is your best bet for victory because (again) it is the least likely to be anticipated or deemed obvious or (depending on which narrow claim you choose) deemed non-enabled.

                Such claims are totally “worthwhile.”

                If you have broader claims in addition to that narrow claim, go ahead and assert those broader claims as well (they’ll also be infringed assuming that the narrower claim is infringed, which has been my assumption for the length of this sub-thread). Your best bet for success still lies with the narrower claim.

                1. The reality of the situation is wider than your vision.

                  You assume that the competition will ONLY infringe at the point of your narrow claim. Reality so often paints a different picture = and that is why the reality of more than 90% of claims of any appreciable value apply the ladders of abstraction to provide more than just a picture claim.

                  While is it indeed true that the chance of invalidity increases with increase of breadth, this is a trade-off more than worth the while as it is ALSO true that the scope of protection is broadened.

                  You keep on using “logic” that ignores this aspect, and that is simply not “better.”

                2. The reality of the situation is wider than your vision.

                  No, it’s not. That’s because my “vision” — and my express statements upthread — encompass your point.

                  The reality is that you need to work really hard to avoid the habitual use of personal insults when you choose to express “your vision”.

                  [shrugs]

    2. Case doesn’t apply. The disclosure in that case was in the patent document and was not elected, not generated after the fact. J&J had subject matter in its patent it didn’t act upon, the Cloem applicant cannot act upon the Cloems. There would be no way for the cloem applicant to claim the subject matter, and thus its failure to do so can’t carry any weight.

    3. MM – At least their baseline business is to publicly disclose a large set of similar claims – not file them with the USPTO.

      I don’t think the Johnson and Johnston Associates case controls here because these variants will typically not be included within the application but instead separately published (probably the next date and without review by the inventors).

      1. Ah, I see.

        Somehow (probably from Dennis’ questions) I got the impression that the cloems (the good ones, anyway) were going to be disclosed in the applicant’s patent application.

        So this is just the age-old strategy of poisoning your patent-savvy competitor’s well with a computerized twist.

        I agree that Johnston isn’t on point when all of the unclaimed variants are first disclosed later (and not diclosed in the applicant’s specification).

        There might still be the issue, I suppose, as to whether a computer programmed to parrot linguistic equivalents and variants known to the skilled artisan is evidence of what was foreseeable by the skilled artisan (and which should have been claimed literally). And the applicant’s use of the computer for that purpose might serve as an admission of that foreseeability ….

        1. I don’t think it will be just “linguistic equivalents” – the result would likely be passed through a physics engine to help weed out the nonsense.

          But the better such filtering gets, the fewer people will be involved with “inventing” as people will be too slow to keep up.

            1. Sometimes yes, sometimes no.

              In the case of chemistry it could be an external manipulator that is used to attempt building the actual molecule being claimed, using known procedures for manufacture/testing.

              The “sometimes no” is called simulation. If the proposed “invention” is first transformed into a simulation, and meets some level a success, then (like a inventor waking in the middle of the night with a solution), it gets worked on by either the inventor (or other workers) that then attempt to prove/disprove the invention.

              As attributed to Edison “Invention is 10% inspiration, 90% perspiration.” The computer AI is just supplying the 10%.

              Many years ago, this was discussed in relation to “goal directed AI” algorithms, and story generation programs. If the AI starts creating random associations for goals, but then filters out the ones that can’t be solved from its database, what remains are the useful stories.

              In the case presented here, a filtering process using a simulation of physics provides a base. If it passes the simulation test, then perhaps it is a good “idea” that could be investigated by a research group.

              Another filter is just one that checks if the data matches something already processed and labeled as “old”, and then moves on to the next “concept”.

                1. I was referring to reduction to practice. The results would be practical.

                  Now drafting the patent application is up to the lawyer…

                  So far.

                2. So did I.

                  “Goal directed AI” does just that. Given a goal, it will attempt to work out how to get there.

                  And that means creating intermediate steps, identifying subsidiary goals, and working out how to get those accomplished.

  16. (1) whether these smart-but-random computer-generated cloems should count as prior art;

    To the extent they are published and readable by anyone interested in learning about possible new concepts, they are certainly prior art. What argument would per se disqualify an earlier machine-generated and published concept as prior art against a patent reciting the same concept? Knowledge is knowledge. Promote the progress.

    To some extent the answer is already known. Chem/bio practitioners have been dealing for years with computer-generated disclosures of nucleic acids by the tens of thousands. Nearly every one of those nucleic acids are enabled upon disclosure, just like those “do it on a computer” claims that are presented in functional terms.

    (2) when one of the cloems represents a seemingly patentable invention, who is the inventor

    There is no “who” so there is no inventor upon the “representation.” The inventor is arguably the first person to “conceive” of the “representation” presented by the cloem. This would be analogous to a computerized machine performing an analysis of a ten thousand well sample of test compounds and displaying the best performers. Did the computer “conceive” of the invention? Nope. The person who sees the data coming out of the computer is the “conceiver” (assuming they know what the data means).

    and is it patentable?

    I think it depends on the cloem. I don’t see much of a distinction between a computer generated “cloem” and a computerized machine identifying a best drug candidate from a massive array of “labs on a chip.”

    The important fact for everyone to remember is that these machines exist. The widespread ubiquitous nature of information processing tools has changed the patent system and it’s going to continue to change it in profound ways. We can sit back and let that happen or we can use our brains (and computers) to make some reasonable predictions about what’s in store for the future if no actions are taken.

    1. About “randomness”: Cloem is (very) loosely related to randomness. The choice of vocabulary is a critical aspect, and it is largely based on maths (and equally based on final human choices).

      Best regards,
      The Cloem team.

  17. (1) whether these smart-but-random computer-generated cloems should count as prior art;

    If they are published sufficiently early, then yes. But Cloem should be sure to connect their ge nerated document with the original published patent/application, because there is likely to be an argument about enablement that may cause trouble for anticipation purposes. This argument is mostly solved in an obviousness context, where an examiner could use the original publication as a base reference that presents an enabled base invention, and then use the Cloem document as a secondary reference that is usable for all that it teaches.

  18. “Cloem® creates, then timestamps and optionally publishes variants of your patent claims, called cloems™, which may be prior art (check with your patent attorney).”

    Yes, definitely check with your patent attorney!

    I do not see how a variant based solely on linguistic analysis and manipulation can create anything meaningful that is not already available to the skilled person based on the original disclosure and claims. Where does an enabling disclosure of anything new come from?

    Anyone want to run a book on how long this company lasts?!

    1. Where does an enabling disclosure of anything new come from?

      The same place that enabling disclosures for functionally claimed “new” machines come from: the pre-existing knowledge of the skilled artisan.

      Computers have been used to generate prior art for a long, long time. This is hardly the first time we’ve discussed this here.

Comments are closed.