A Patent on the Internet

Guest Post by Professor Marketa Trimble (UNLV). 

Imagine that someone had a patent on the internet and only those who had a license from the patent holder could, for example, do business on the internet. This internet patent would not need to concern the internet protocol, the domain name system, or any other technical features of the network; the patent could, in fact, cover something else – a technology that everyone, or almost everyone, who wants to do business on the internet needs, a technology that is not, however, a technical standard. There might be one such patent application – the patent application discussed below – that could be approaching this scenario.

We must accept, however reluctantly, that activities on the internet will not be governed by a single internet-specific legal regime or by the legal regime of a single country. Although countries might agree on an internet-specific regime for the technical features of the internet, and might even adopt some uniform laws, countries want to maintain some of their country-specific national laws. People and nations around the world are different, and they will always have diverse views on a variety of matters – for example, online gambling. Online gambling might be completely acceptable in some countries, completely unacceptable in others, or somewhere in between; likewise, countries have different understandings of privacy and requirements for the protection of personal data. Therefore, countries now have and likely always will have different national laws on online gambling and different national laws on privacy and personal data protection. Compliance with multiple countries’ laws regarding the internet is nonnegotiable, certainly for those private parties who wish to conduct their activities on the internet transnationally and legally. Nevertheless, in practice and for some matters, the number of countries whose laws are likely to be raised against an actor on the internet may be limited, as I discussed recently.

For some time the major excuse for noncompliance with the laws of multiple countries on the internet was the ubiquitousness of the network. The network’s technical characteristics seemed to make it impossible for actors to both limit their activity on the internet territorially, and also to identify with a sufficient degree of reliability the location of parties and events on the internet, such as customers and their place of consumption. However, as geolocation and geoblocking tools developed, location identification and territorial limitation of access became feasible. Of course the increase in the use of geolocation tools generated more interest in the evasion of geolocation, and increased evasion has prompted even further improvements of the tools. The argument that we cannot limit or target our activity territorially because we don’t know where our content is accessed or consumed no longer seems valid. (Also – at least in some countries – courts and agencies have permitted internet actors to employ low-tech solutions as sufficient territorial barriers, for example, disclaimers and specific language versions.)

The multiplicity of applicable laws that originate in different countries and apply to activities on the internet is more troubling in some areas of law than in others. One area of law that permeates most internet activity is data privacy and personal data protection. Any internet actor who has customers and users (and therefore probably has user and traffic analytics) will likely encounter national data protection laws, which vary country-by-country (even in the EU countries, which have harmonized their personal data protection laws, national implementing regulations may impose country-specific obligations). Therefore, compliance with the varying national data protection laws will become one of the essential components of conducting business and other activities transnationally. If someone could patent a method for complying simultaneously with multiple countries’ data privacy laws on the internet and claim the method broadly enough to cover all possible methods of achieving compliance with the national privacy laws, that patent owner might just as well own a patent on the internet, or at least on a very large percentage of internet activity.

A U.S. patent application that seeks a patent on simultaneous compliance with multiple countries’ data privacy laws on the internet through broad method claims is application No. 14/266,525, which concerns “Systems and Methods of Automated Compliance with Data Privacy Laws,” meaning “laws of varying jurisdictions” (the title and the “Abstract”). The invention is designed to facilitate an automatic method of complying with the data privacy laws of various jurisdictions, which are, as the “Introduction” notes, “complicated, diverse, and jurisdiction specific.” The method envisions that once “person-related data” are requested from a data provider, a “filter is the [sic] automatically applied to the person-related data to restrict transfer of person-related data [that] does [sic] not meet the data privacy regulations applicable to the jurisdiction” (the “Introduction”); the filter also checks for any consents by the data subject if the particular regulations require them. The method also foresees, for example, the possibility of “identif[ying] different origins of the person-related data sources” in terms of their geographical location (“Trust Object and Trust Data”).

The patent application still must be prosecuted, and the – undeniably useful – invention will be subject to scrutiny as to its compliance with the requirements of statutory subject matter, novelty, and non-obviousness. A patent on the application may not issue at all, or the language of the application may be amended and the claims narrowed. Whatever the future might bring for the claimed invention, this patent application serves as a useful prompt for thinking about the components that have been or are becoming essential to conducting business and other activities on the internet.

55 thoughts on “A Patent on the Internet

  1. Since presumably the key to the alleged [paper?] automation system is the claimed “filters,” a key PTO prosecution issue should be whether there is any 112 enablement for those filters?
    However, I have been told by examiners that that the PTO strongly discourages giving 112 spec non-enablement rejections. This seems unfortunate. If rejections for lack of enablement for claimed functions were made more often, applicants would have to either amend their claims, or point out spec enablements, or admit in the application file that an enablement of that particular function is well know to a POSITA and thus not need a detailed spec enablement. Then there would not have to be so many strange 101 rejections?

    1. I agree that the interplay between 101 and 112 is not used often enough. If the spec doesn’t contain information about how to do something and instead relies on the knowledge of the PHOSITA, that information should be used in the making of a 101 rejection (if appropriate).

      That is, that a PHOSITA knows how to implement a particular function indicates that function does not have those unstated features as a technological improvement.

      I worry though, that this will just cause applicants to put worthless information into specs in order to confuse the examiner (and judges). I have been struggling with how to discourage that sort of obfuscation while at the same time encouraging patent examiners from pointing out lack of detail when making 101 rejections.

      1. I’ll admit that I’m acronym-challenged. POSITA? PHOSITA? I believe “OSITA” is One Skilled In The Art. What’s the P or PH?

    2. But Paul, per that very same Supreme Court, these 101 rejections are NOT an overlay of 102/103/112 issues.

      This is their logic.

    3. However, I have been told by examiners that that the PTO strongly discourages giving 112 spec non-enablement rejections.

      Don’t you know? Providing an idea of what to do with no teaching of how to do qualifies as an invention amongst two-thirds of the CAFC and the entirety of non-legally trained Examiner corps.

      If rejections for lack of enablement for claimed functions were made more often, applicants would have to either amend their claims, or point out spec enablements, or admit in the application file that an enablement of that particular function is well know to a POSITA and thus not need a detailed spec enablement.

      The response is always “once we told you the object to achieve, you had enough teaching to achieve the object.” Applicants never seem to understand that this tailor-makes a 101 rejection, as you cannot contribute only the idea to achieve something to make an invention and almost always makes a 103 rejection (barring a teaching away).

      That being said, it’s clear from the spec that there is no “there” there – there is no teaching as to how to achieve anything at all. There should be a shorthand for tossing these cases immediately.

    4. I get 112 rejections of software all the time. I wish the SPEs of the guys we get them from would discourage them, but evidently they don’t.

  2. It looks like these claims improve the operations of a computer system because the law enforcement that it automates is a law about the operations of a computer system. Does that make it different from Alice where the computer system was used but not improved by the claims?

    1. How does the claims improve the functioning of a computer system?

      To me, the claims read as generic information processing where the applicant is trying to distinguish over the prior art by applying new labels to the data. “trust metadata, person-related data, etc…”

        1. “We hold that… merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

          Alice v Cls, 134 S.Ct. 2347 (2014).

          As always anon, I’d encourage you to expand on the “protons, electrons, neutrons.” I can’t tell what point you’re making, exactly.

          1. That’s because you refuse to think for yourself, my young and ever polite but misguided friend.

            Clearly, blindly quoting from the Alice decision is a fail – given that it is the lack if logic in that decision being denigrated.

            The logic of the “big box of electrons, protons and neutrons” is the same logic that eviscerates all things patent eligible by confusing the building blocks with what is made from the building blocks.

            You also fall prey to the misguided notion that somehow the thought of software is the same as software. Just not so.

            Accepting “Abstract Idea” is the genesis of the fault.

            Somehow, in some still unexplained and undefined way, “idea” is being confused with actual statutory categories and the words of Congress are being magically waived [sic] away.

    2. Does that make it different from Alice where the computer system was used but not improved by the claims?

      I’m going to save you the time and say no.

      It looks like these claims improve the operations of a computer system because the[y process a certain type of information.]

      That’s not what is meant by improving the operations of a computer system. Locating the GPU closer to the CPU is improving the operations of a computer system.

  3. Ineligible garbage of the lowest order.

    What is the name of the “inventor” (trying not to laugh) and the bottom feeder who is prosecuting this piece of junk?

    1. Your “opinion” as repetitious as it is has been duly noted.

      The offer from the Amish not to partake in those innovations you deem not worthy to protect is still open.

      No one is forcing you to use ANY software innovation after all.

  4. Without seeing the claims, i can tell you that its obvious to comply with law and merely automating a manual activity by known means has been held to be obvious as well. (In re venner) If the means for automating compliance involves using known techniques, e.g. xml data tags or a switch statement, than this should be easy to reject.

    1. Some things are impossible to do manually, simply because of the number of operations to be done per unit of time. This applies to many software methods, if not quite all.

  5. I agree with RG that this application should never see the light of day as a patent, for all sorts of reasons.

    But let’s suppose that, as RG cynically suggests will happen, the USPTO issues the patent. Who’s going to get sued for infringement? Most of the world will not infringe because the activities will take place outside the USA, so there’s no infringement there. And it should be easy enough to arrange things so that the go/no-go determination for US-based people is made outside the USA as well, in which case all that will be imported back in the USA is information, namely the result of the go/no-go determination. But under Bayer v Housey, importing information generated outside the USA by practice of a US-patented process doesn’t constitute infringement. And of course, under NTP v RIM, *all* the steps of process claims must be practiced in the USA for there to be infringement.

    That leaves system claims as possibly being infringed. But again, under NTP, if the majority of the system is located outside the USA, there’s no infringement. That should be easy enough to arrange.

    I don’t see this patent application as providing an opportunity to capture the internet. I admit, though, that has already provided an opportunity for a law school professor with little-to-no real world experience to play Chicken Little.

    1. Goose, the O-man has moved to regulate the internet. Assume for the sake of argument that one of the new rules is to require service providers to assure compliance with the data privacy laws of the world. This patent might be quite valuable.

      1. More like an independent executive agency is taking steps to ensure that companies with monopoly or duopoly positions, positions gained by lying and bribing, are not abused to the detriment of consumers.

        1. Correction:

          More like [a dependent] executive agency is taking steps to ensure that companies with monopoly or duopoly positions, positions gained by lying and bribing, are not abused to the detriment of [themselves].”

          Consumers have nothing to do with it, and neither does the concept of independence.

        2. Are you suggesting the requirement that service providers comply with the laws of other countries is violation of free speech — especially if one of those data privacy laws relates to whistle blowers that expose governmental corruption or illegality?

          Think Snowden.

          Think Red China.

    2. That leaves system claims as possibly being infringed. But again, under NTP, if the majority of the system is located outside the USA, there’s no infringement. That should be easy enough to arrange.

      You might want to look at the cases surrounding the current state of “essentially making” here in the US before you think the CAFC won’t find infringement under your system.

  6. The invention is designed to facilitate an automatic method of complying with the data privacy laws of various jurisdictions

    Does there really need to be a discussion as to whether compliance with a law via computer software (when the law is designed to encompass computer software acts) could be patentable? Isn’t this self-evident to people or is there some sort of bubble you can’t break through?

    I will save whichever examiner gets assigned this the trouble – there is nothing non-obvious in the entire disclosure and all possible claims will fail under 103. All claims as currently published (and likely all that you will get) fail under 101 for abstract idea. I’d also start throwing some 112, 1sts on the independents just to force some amendments (Claims 4 and 11 prove Claims 1 and 8 are overbroad, for example, as do other dependents I’m sure) just for fun. Bonus points for practicioners who can explain a general rule why 4 renders 1 invalid, citations and whatnot.

    How come nobody jumped on a “Method for computer-based signups of healthcare for federal compliance” a few years back? You’d have somewhere in the range of 20 million infringers by now.

    The patent application still must be prosecuted

    But really, must it?

    A patent on the application may not issue at all, or the language of the application may be amended and the claims narrowed.

    Oh, don’t worry, I’m sure the office will improperly issue it immediately (as it would take too many references to 103 reject the independents and the personnel aren’t trained for the other rejections), some NPE will pick it up and start suing people, and the FC will fail to find it invalid cause they’re bad at that “law” thing.

    1. Does there “need” to be a discussion, you ask, Random. Good question.

      I would say not, for the reasons you give. But I would add a reason why such a discussion might be useful, namely, that this particular subject matter lends itself to an analysis of what is the proper role of 101, 102, 103 and 112. Helpfully, Dennis has already taken one argument (Useful Y/N) out of the game.

      Suppose that prior to the date of these claims, there had been no suggestion to automate compliance with different national data privacy laws. Suppose that in consequence it is going to be difficult to prove that the conception of this abstract idea was “obvious”. Is it any wonder that, in the USA, claims to subject matter such as this are found unpatentable/invalid using other tools, notably 101?

      At the EPO, however, and given expert drafting and expert prosecution, I have no doubt that the subject matter in view here would jump every hurdle except obviousness, and would surely fall at the obviousness hurdle. That’s because at the EPO, the only sort of non-obviousness that “counts” towards patentability is technological non-obviousness.

        1. That old old chestnut, yet again.

          No definition needed. GATT -TRIPS presents “technology” without any definition. We all know what it is. It is one of those Basic Terms that needs no definition. To provide one is to offer a hostage to fortune and therefore irresponsible. I’m thinking of that USPTO chief who decreed about a hundred years ago that everything had been invented, or the IBM boss who thought that five computers was all that the world needed. We live and learn. If you want to get a feel for what “technical” means, read the 1000+ Decisions that come each year out of the EPO. If you want to get a feel for what “obvious” means, read cases that thoroughly work through the Graham factors. But you won’t find in any of them a definition of “obviuous” will you?

          Before we can begin to do patent law must we first provide a non-circular definition of “conception””phenomenon” “idea” “natural” “law” “invention””field” “obvious”, “useful” or “embodiment”. Surely not.

          I think I know what “technical” means. But in the context of patent claims, themselves conceptual abstractions of real machines or processes, I have no idea. I think it unfortunate that SCOTUS chose “abstract” rather than “technical” as the touchstone of eligibility.

          1. That old old chestnut…

            Definitions not needed…

            Yes, that old old chestnut remains there still.

            Funny how that works.

            Funnier still that you don’t seem able to recognize why not defining the term presents a very real issue.

            1. A “very real issue” is it, anon? Aha! If I understand your thinking, (and that’s a very big if) this is of course not just any old very real issue but also a special one, namely one “in a very real sense”.

              The issue being? Yours to know, for others to work out for themselves, eh?

          2. I think it unfortunate that SCOTUS chose “abstract” rather than “technical” as the touchstone of eligibility.

            I think it unfortunate that you yet do not realize that in the US, our constitution allocated authority to write patent law NOT to the judiciary, but to the legislature.

            Last I checked, it was up to Congress to write patent law (and yes, that includes the statutory section of 35 USC 101).

            In order to see this, you really will have to open your eyes.

      1. Could you outline the Examiner’s argument for us? Would it go something like: the claims are novel, but lack inventive step because all you’re doing is applying computers to a process that could be performed by a human? Or is it something different?

        In my opinion, here in the US, these claims are going to prove hard to get over the Alice rules. However, after reviewing the “Examples: Abstract Ideas” document put out by the PTO, it’s incredibly difficult for me to determine why some claims are OK but others are not. For instance, the claims in DDR holdings (decided after Alice) seem to be invalid under Alice to me, but the CAFC thought otherwise. Also, the Research Corp. Technologies v. Microsoft claims (decided before Alice) also seem to me to be invalid under Alice, but were held to be valid. To me, the claims in Research Corp. seem like math, although they do concern pixel data. The claims (at least claim 1, for instance) do not state that the pixel data is shown on a display, so theoretically, the claims cover only the mathematics (at least in my opinion). So, there’s a very fine line between what’s patentable under Alice and what’s not, and I’m having a hard time deciphering what that line is.

        1. In my opinion, here in the US, these claims are going to prove hard to get over the Alice rules.

          It ought to be, as the very same logic of the Alice case applies.

          However, after reviewing the “Examples: Abstract Ideas” document put out by the PTO, it’s incredibly difficult for me to determine why some claims are OK but others are not.

          Yes, it is isn’t it? I wonder what entity muddied those waters.

          For instance, the claims in DDR holdings (decided after Alice) seem to be invalid under Alice to me, but the CAFC thought otherwise.

          In computers, this is called garbage in, garbage out. If you wonder why 101 will continue to be an issue, it’s because the CAFC isn’t really interested in following the Supreme Court (or aren’t competent enough to) and they send confusing signals to non-lawyers.

          1. What exactly IS the “logic” of the Alice case…?

            That something that both parties stipulated as to being a machine will be confused to be an “abstract” (whatever that undefined item is) idea?

            Because something that can be stipulated for the Court (i.e., explicitly NOT at issue) to be a machine (or manufacture) can somehow also be “an idea”…?

            That logic?

            1. Because something that can be stipulated for the Court (i.e., explicitly NOT at issue) to be a machine (or manufacture) can somehow also be “an idea”…?

              The court didn’t dispute the stipulation that the claim contained a machine. The court stated that the inclusion of a machine was insufficient to make it eligible, which was the issue the case was taken for. But keep going anon, I think you’ve reached third grade reading level, just a few more to go.

                1. You have yet to address how somehow the machine is being confused as an idea.

                  Because that isn’t what is happening. Nobody involved in the case believes the machine is an idea. In fact, that was the entire basis of one of the decisions in the federal circuit.

                  The claim scope encompasses an idea, and a limitation to “any expression of the idea within the statutory categories” or even “limited to a single statutory category” or even “limited to a particular field of a particular statutory category” is insufficient to move one off of the proposition that they’re claiming the end result of the idea rather than a concrete embodiment to apply the idea.

                2. Absolute huuey, gobbledyg00k and self-serving circular doublespeak.

                  The claim is TO a statutory category or it is NOT to a statutory category.

                  “Encompasses an idea”…? Pure B $ – as the idea remains free as it ever was.

                  “Claiming the end result of the idea”…? Nonsense – and a clear lack of understanding of what a claim is and does.

                  Make no mistake – this is tied directly to your well known lack of ability to understand the concept of ladders of abstraction, and to confuse the level of particularity that claims are.

                3. “Encompasses an idea”…? Pure B $ – as the idea remains free as it ever was.

                  Sure, so long as you don’t use it within any machine, hahahaha. Image if someone stated “I discovered the idea that an incline channels direct force into perpendicular force. Now that I have disclosed it I claim all machines that use this wedging principle.” According to your small mind (and I can truly call it a small mind here) that claim can be upheld. You’re completely unhinged (oh, claim a hinge too!) about what patent law is. Scoreboard.

                4. Scoreboard

                  LOL – as if that means anything…

                  It is not my mind that is so small as to not understand the difference between an idea and an application of the idea in a statutory category.

                  The idea yet remains regardless, and forever distinct.

                  That is how it is.

                  No patent in the world, drawn to a statutory category, changes that.

                  You confuse the something more than just the idea with the idea.

                  You remain confused.

          2. One might say that the Supreme Court is uninterested in letting the Federal Circuit do what it was designed to do, and would rather reverse all its precedents for not agreeing with very outdated ones of their own. The Federal Circuit was supposed to ensure uniform patent law across the circuits, but the Supremes see that as part of their own job and won’t let the Federal Circuit do theirs.

      2. Suppose that prior to the date of these claims, there had been no suggestion to automate compliance with different national data privacy laws.

        Irrelevant under KSR. It is undisputed computer programming pre-existed and it is undisputed that the law suggests compliance. A teaching, suggestion or motivation is not necessary for obviousness. I’ll go one further – it would be irrelevant if there was a suggestion prior to the invention that there would be no benefit of automating under ABR.

        Suppose that in consequence it is going to be difficult to prove that the conception of this abstract idea was “obvious”.

        See there’s no proof required – under law it is obvious. I will agree that this is the kind of thinking that causes Examiners to issue bad patents though.

          1. “1. A system comprising protons, neutrons, and electrons configured to automatically comply with data privacy laws” also fails 101 and 103 and further fails 112. Thank you for illustrating the point.

              1. No, it is, you just don’t understand KSR. It is sufficient to say “element X was known to preexist and was known to be used in this standard manner.” The thing that would save the claim under either 101 or 103 – necessary detail as to the configuration – is precisely the thing the Applicant doesn’t want to limit himself to. Applicant isn’t entitled to the scope he thinks is commercially valuable, he’s entitled to the non-obvious thing he invented.

                1. ??? Your post does not support the claim [sic] that you are making.

                  Are you confusing your want of code with enough detail to support a software invention thingie again?

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