Next Step: Substantive Harmonization of Patent Eligibility?

Broad subject matter eligibility had a strong run from 1980-2014. Although eligibility in the U.S. was broad, Europe was somewhat more narrow on various fronts.  With Alice Corp v. CLS Bank and Mayo v. Prometheus, that framework is now historic. Although some amount of shaking-out is still ongoing, in many ways European subject matter eligibility is now broader than U.S. eligibility.

Now that those of us favoring broad eligibility have been taken-down several pegs, we may now have ripe timing for substantive harmonization on eligibility grounds both with Europe and through the Trans-Pacific-Partnership (TPP).

141 thoughts on “Next Step: Substantive Harmonization of Patent Eligibility?

  1. 10

    MaxDrei says “Obviousness at the EPO. Only inventiveness in relation to a technical problem counts towards patentability. ”
    This is the old “Kertheorie” (core theory) mistake, that violates the “whole contents” rule – which appears intuitively wrong.
    The solution to this paradox is that an invention is not the sum of a number of claims, but relates to a single inventive thought (unity of invention, which is a statutory rule). Incidentally, this rule makes sense too, since it is often infeasible to identify whether the inventive step resides in the (presumed) non-technical subject-matter part.

    The solution is not to consider technical *things* (like machines) or technical *disciplines* (engineering) but technical knowledge = a teaching any PHOSITA can carry out successfully (which is confirmed indirectly by § 112). Carrying out business methods profitably usually requires more than just PHOSITA craftsmenship.

    1. 10.1

      They say that the greatest 1ies always have a kernel of truth.

      So too with the academic Bakels (Ha! – I knew it). Below at 8.1.1.3 Reiner talks about “the technical character test.” He recognizes the essential split between 101 and 102/103 (conveniently leaving out WHY the US Congress crafted 103, by the way – hint, see link to patentlyo.com – and yes, understanding this foundational point is CRITICAL to any discussion of 101 for US jurisprudence – at least if you are going to be inte11ectually honest about the conversation).

      So I put to dear Reinier: Define “technical in a non-circular manner.

      Here’s a quick “Google-search’ result:

      tech·ni·cal
      ˈteknək(ə)l/
      adjective

      1.
      of or relating to a particular subject, art, or craft, or its techniques.
      “technical terms”

      2.
      of, involving, or concerned with applied and industrial sciences.
      “an important technical achievement”
      synonyms: practical, scientific, technological, high-tech
      “an important technical achievement”

      As one can see, definition one is wide open. Definition two appears to be tighter (stemming from both applied and industrial), but here is the rub: “industrial is a like-circular (and wide open) word, and business methods employ practical and scientific methods in their development (See Deming et al). This “reliance on scientific method as a means to eliminate business methods from the reach of patent protection is exactly the same issue that both Malcolm and MaxDrei stumbled into – and promptly ran away when I pointed this out.

      I will then remind our erstwhile academic that here in the States, we do NOT have a technical character test as our 101 jurisprudence. We have a Useful Arts test. Our sovereign has explicitly chosen differently than yours. Please, please, please respect our sovereign choice.

      Reinier also recognizes the “whole contents” rule (a failing of Ned and his PON canard, which did not survive the changes in law as written by Congress in 1952 – Ned, anytime you want to explain the Jepson-claim-form-option, please man up).

      But our Academic is not satisfied with any sense of leaving well enough alone and insists on reverting back to his anti-patent roots. Unless of course, my dear Reinier, you have dis@bused yourself of your early writings… I have not seen you admit the mistakes of those early positions, and since you insist on using your real name, all the attendant baggage (notably your anti-patent stance) comes with it.

      So he ends with an anti-business method statement that is false on its face. And in truth, it is a mere reflection of his own personal (anti-patent) Belieb system.

      Double Fail: non-US Sovereign recognition, and non-recognition of the scientific method imbued in business methods. These are points that have been previously presented to our good academic friend and this Merry Go Round of his is just more of the same – and nothing new – from Reinier.

      1. 10.1.1

        It is not so complicated. T3chnical knowledge is knowledge that can br applied by any PHOSITA. It is no coincidence even applies to musicians: every professional classical piano player MUST be able to play Mozarts concerto KV 488 *technically*. Being a great artist like Lang Lang is the non-technical aspect.
        Patenting pure science even it is in tje “hard sciences” shpuld not be allowed since this is knowledge useless to a plain PHOSITA.

        1. 10.1.1.1

          Absolutely and unequivocally wrong Reinier, as the patent law concepts do NOT apply to those things that are out of scope to begin with. Hence, the canard if non-Useful Art examples.

          See the quote by Wolfgang Pauli.

          1. 10.1.1.1.1

            Think twice and use your imagination to understand the analogy.
            Rules are better understood if they can be related to systematic reasons. Useful arts is a misnomer. Many products of art involve “useful arts”
            Patentable subject-matter/technology/non-abstract ideas all relate to ONE thing: “tricks’ that can be carried out by *any* “person having ordinsry skill in the art”.

            1. 10.1.1.1.1.1

              It’s a term of legal art – not an analogy.

              You are a bit flippant on terms of which you should know better.

      2. 10.1.2

        Forgot to say that the ruke in the US is that abstract ideas. natural phenomena and laws of nature are excluded, based on very old case law. The last two exceptions have a more specific meaning, but the first one really implies that if a court does not want something to be patentable, is must declare it to be an “abstract idea”.
        Similarly, in particular in German literature, “non-technical” in the sense of law is considered *synonymous* with non-patentable.
        I admit, it could not be more circular!

        1. 10.1.2.1

          Well, Reinier, you and I agree on “abstract.” It substitutes ad hoc reasoning for law.

          Thus we only learn what abstract means when a court has decided a particular case.

          The Supreme Court had an opportunity in Bilski to restore the test they developed in Cochrane v. Deener — the MOT. They were advised not to do so by the likes of IBM who were concerned that software inventions would not pass the test. So, the court punted and gave us “abstract.”

          I have a rule of thumb test — a machine must be new or improved qua machine. Ditto manufacture, composition.

          A process must be one that makes or uses a machine, manufacture or a composition. The process must produce physically new result.

          Abstract has recently been extended to claiming a result.

          1. 10.1.2.1.1

            “Qua”…?

            And your version of “process” suffers the pre-1952 Justice Sorry (Story) “process as a sub-category” illness.

            Get better soon (as clearly what you want IS the MOT and all nine Justices in Bilski – even Stevens and the remaining Three – held: MOT not required.

            Funny how your version misses that which does not align with your “chase.”

          2. 10.1.2.1.2

            Cochrane v. Deener is misleading. It actually only says that “transformation to a diffetent state or thing” is a *sufficient* condition. Rationale: such a “transformation” adds value. And that us what counts, in view of the purpose of patents.

            1. 10.1.2.1.2.1

              The MOT: Sufficient, but not exclusive. That is the holding, it seems of, Bilski.

              So, if one does not have an overarching test, one creates a nonce word, Abstract, and then decides cases as they come, with no clear rule.

              Actually, the courts are using the MOT sub silentio.

  2. 8

    Both US and European patent law suffer from the problem of partially abstract/technical applications. Should they also be treated “as a whole” or should “insignificant post-solution activity” be ignored? That is not as obvious as it may seem since only relevant elements may be claimed. German patent law the “Kerntheorie” (core theory) is effectively the same. The famous German Dispositionsprogramm decision in 1976 is very sikilar to the US Flook decision exactly two years later. Nowadays formally the “Kerntheory” is no longer accepted – so it must be applied in disguise (the infamous “not intellectually honest” approach in order not to get counter-intuitive results).
    In my PhD thesis I explain an approach that unites the EU techology requirement with the US abstract idea exclusion. Abstractness and technology both are pretty abstract concepts but it helps to consider the economic purpose of patents.

    1. 8.1

      My PhD thesis is called “The Technology Criterion in Patent Law A controversial but indispensable requirement”, ISBN
      9789058508621

      1. 8.1.1

        I imagine that your PhD would be well worth reading, Reinier. But tell me, does it say anything about there being a “technology requirement” when it comes to thinking about patentable non-obviousness?

        You see, for me, there is more than one kind of non-obviousness.

        There is, for example, the non-obviousness of endings to crime thrillers.

        There is the non-obviousness of ideas underlying amusing and effective TV advertising films.

        And then there is the sort of non-obviousness that lies behind innovative solutions to objective problems in technology.

        The EPO holds that only the last one carries any weight, when it comes to justifying a 20 year patent monopoly.

        But Reinier, how about in the courts of England and the USA?

        And if those courts do confine their consideration of non-obviousness to technological non-obviousness, how do they in practice achieve that confinement?

        1. 8.1.1.1

          Let’s keep in mind that Europe has a great innovation engine—except for the portion of the engine they excluded from patent eligibility.

          Coincidence? I don’t think so. No patents for software = no software industry. But, don’t worry. We are all becoming a Google world.

          1. 8.1.1.1.1

            Two thoughts….

            1) The misdirection Kool-AId…

            Much like your “no coincidence” – it amazes me (not) how willfully blind people are to the natural (and good) evolution of the so-called “Tr011” effect was in response to the Big Corp Patent Nuclear Armageddon strategy.

            When even having a single patent on a game-changing disruptive innovation was met by Big Corp with a Bully tactic, and the so-called “Troll” avenue threatened the stockpile-oblivion capability, the propaganda machine was cranked to 11 and the mess you see now is the result.

            The battles continue.

            2) For “funsies”

            link to vox.com

            data describing and the MathS of Lamda Calculus, oh my…

        2. 8.1.1.2

          Frankly the technical character should be assessed absolutely separately from non-obvousness, just like the abstract ideas exveption in the US should be assessed sepatately from nonobviousness. In my PhD I extensively discuss the problems arising from mixing the two tests. Ignoring “insignificant post-solution activity” intuitively seems logical, just like the German core theory (Kerntheorie) but then the “whole contents” rule is violated. The solution IMNSHO is to consider the technical character of the related knowledge rather than the products (or disciplines) involved.
          For example, software patents are not bad *because* they relate to algorithms, but *if* they merely claim a problem instead of a solution. See Mark Lemleys articles on “functional claiming”.
          Incidentally, those practices show that patents are a means to provide exclusivity rather than a means to compensate the efforts of the inventor.

          1. 8.1.1.2.1

            I think the problem arises when claims have mixed subject matter in them – some clearly patentable subject matter, some not so.

            If one can pass in eligibility test merely by including in a claim some patentable subject matter, and then look simply determine whether the claim is patentable based upon whether it is obvious or inventive over the prior art, then one is allowing patents on ineligible subject matter. This is what Judge Rich did in State Street Bank and he did it knowingly.

            The Supreme Court saw through Judge Rich’s tricks and utterly condemned State Street Bank. It is a wonder that the Supreme Court ever gave Judge Rich any respect whatsoever given his obvious agendas. But he was a powerful judge in that he was backed nearly 100% by the patent bar, who had a very large amount of influence on Capitol Hill.

            Thus when we have a claim that includes in it subject matter that is not eligible, the Supreme Court now asked the question whether that subject matter is applied in a manner as to transform the claim into a patentable application. This is an overall good test. But the Supreme Court is not the first to think of it. It was a standard test in America prior to Judge Rich – see, e.g., Hotel Security

            I think Breyer came up with the idea that he put forth in Mayo by reading Hotel Security when he joined the dissent in Bilski.

            1. 8.1.1.2.1.1

              The apparent need to ignore the “whole contents” rule in order to arrive at an intuitively satisfactory result is a “proof by contradiction” that something is wrong. The description in multiple claims is misleading. A single patent application should refer to a single inventive thought, a single trick. A PHOSITA should be able to apply the trick, always. Woth genuine business methods that is doubtful.

              I am aware that this approach is quite different from current practice, but IMHO it is the only way to solve the above paradox.

              Which also exists in EU patent law. Von Hellfeld has written a very funny article about the problems arising from ignoring the apparenly non-patentable subject-matter in a patent application. The result is an incomplete that cannot work. Sorry, the article is in German (GRUR 2008)

              1. 8.1.1.2.1.1.1

                For those who read German GRUR Int. 2008, 1007 ff.
                Autor: von Hellfeld, Axel
                Titel: Ist nur Technik Stand der Technik? – Zum neuen Neuheitsbegriff im Europäischen Patentamt und dessen Anwendung auf rechnergestützte Erfindungen

              2. 8.1.1.2.1.1.2

                Reinier, the problem you guys in Europe have is no Supreme Court deciding European patent cases. Until you do have such a court, all you really have are the opinions of bureaucrats and academics. These carry no weight in the US.

                1. This is disappointing for me as an academic. IMHO I thoughts are compelling, but I acknowledge that it does matter who says it.
                  In the new unified European litigation system, there is no place for the European Court of Justice. The official argument may be that patent law is too complicated for these non-specialized. The US Supreme Court shows that common sense is more important than detailed knowledge of rules. Still the German Federal Supreme Court has a special 10th “Senat” for patent cases. They are critical to the EPO board of appeal decisions (the people on these boards aren’t independent judges!). In the end, they all se captive to the same faulty logic of Flook and Dispositionsprogramm, both from 22 June, theone from 1976 and the other from 1978.
                  The fundamenal “hygiene” question is whether the “patentable subject matter” problem should be so complicated. I am prepared to assume that the courts are honest – but they may suffer from lack of criticism since patent law is what non-lawyers think of law in general: every word means something else than in common parlance, and complicated logic allows to prove that black is white and reversely.

                2. Reinier, the arguments against allowing courts of general jurisdiction to decide patent cases are truly honest, are they? The members of the patent agency/patent bar want to be an island to themselves, particularly if the big companies can control the bar, and thereby the European patent system.

                  The same thing is true in the US where the US patent bar rants against the Supreme Court when that court overrules the captive Federal Circuit.

        3. 8.1.1.3

          The technical character test is part of the “patentable subject-matter” test so it
          should be assessed independent of novelty and non-obvious. Something that is technical remain technical forever.
          US courts have warned repeatedly not to mix the 101 test with the 102 and 103 test.
          In the EPC it is confusing that the “state of the art” in the novelty and nonobviousness provisions is called “Stand der Technik” and “état de la technique” in the equally authentic German and French text. IMHO “the state of the art” wording states more precisely what it really is: 102 and 103 relate to *relative* aspects whereas 101 is absolute (likewise 54 and 56 vs. 52 EPC)

          1. 8.1.1.3.1

            Again, Reinier, there is the question of the technical character “of what” when the claim contains mixed subject matter.

            Example: music. Not technical. Add the CD. Technical. Is the old CD and new music patentable subject matter? Any child could tell you the answer to that.

            We should not even begin to ask whether the music is an obvious advance over old music.

            102 asks whether the claimed subject matter is new — not whether it is eligible. Ditto 103. The question of eligibility is at 101.

            What needs to happen there is to identify the ineligible subject matter and simply declare that invention has to be in the eligible subject matter.

            That was the test of Hotel Security — that Rich ignored in State Street Bank. That currently is the test under Alice.

            1. 8.1.1.3.1.1

              The canard of non-Useful Arts – Ned fails immediately with his inte11ectually dishonest attempt at an example.

              Tell me Ned: electrons, protons and neutrons: eligible? Any child could tell you the answer to that.

              The claim as a whole doctrine includes the non-mere-aggregation premise. That is all you need to take care of your concern. The invention is in the claim as a whole. That is why Congress (not Rich) created 103. This is a plain historical fact, and requires inte11ectual honesty from you and not your windmill chasing, monologuing, internet style shout-down Belieb system advocacy.

            2. 8.1.1.3.1.2

              The MPEP asks the question what the alleged inventor REALLY invented. It spunds a bit desparate.
              But if I tell a friend I conceived the “brilliant” idea to put new misic on a CD, he will order another beer and change the subject – if he is a genuine friend.
              The usual system of patent law seems to require us to think like computers, but fortunately we are human beings that can do more tham computers!

              1. 8.1.1.3.1.2.1

                Some of us can engage in genuine logic and inte11ectual honesty while others seemed mired in canards of non-Useful Arts examples and half-truths spurred on by anti-patent (read that anti-business method and anti-software patent) Belieb systems.

                While computers do not engage in mere Beliebs (aka magic), law does not invite the magic and Belieb driven mantras.

    2. 8.2

      Good point Reineier. When we talk harmonization, with what entity are we harmonizing – an administrative agency called the EPO, or decisions of the highest courts in various states, like in Germany or in England? As far as I know, at this date, Europe has nothing like a European Supreme Court that hears appeals from infringement cases from the various national courts.

      If instead we harmonize with an administrative agency, well that is completely un-American in nature. It is if an administrative agency in the United States were the final arbiter of what was patentable. This places the persons in charge of issuing the patents also being the judge of what is patentable. Isn’t that cute?

      Whatever it is, it is completely un-American in nature. Yet we are trending that way even today when we have made the patent office not only the the entity that issues patents but also the entity that revokes them – and with the PTO and the U. S. government both arguing that their determination of jurisdiction for postgrant reviews is completely unreviewable by the courts. Anything we can do to stop this trend had best be done now before it gets completely out of control.

      1. 8.2.1

        The EPO indeed is a strange animal since it violates the age-old division of powers.
        But you may know that patent case adjudication is being changed fundamentally. And the (non-independent) EPO Boards of Appeal never had the final say.
        In the continental European legal tradition, courts are not supposed to “make” law. This is particularly sensitive in Germany with is troubled past – and Germany by far is the dominant European patent country. Still no lawyer can avoid interpretation

        Basically the governments of the EPO member states should establish the rules. The 1973 EPC was replaced in 2007 – but few changes in the “patentable subject-matter” test. Except that the words “in all fields of technology” were copied from the TRIPS agreement. IMHO those words do not say that *only* technology can be patented, but that no field of technology should be excepted. In TRIPS, that was definitely the meaning of those words – the WTO drafters in particular wanted to inlude pharmaceutics mandatorily.

  3. 7

    At the EPO, if it doesn’t exhibit “technical character” it ain’t eligible.

    In the USA, if it is an “abstract idea” it ain’t eligible.

    Can there be concepts that exhibit “technical character” which are nevertheless “abstract”?

    How about an information processoir operating under a new and clever image enhancement algorithm?

    How about an algorithm that optimises the route of a parcel delivery vehicle to a slew of city addresses?

    1. 7.1

      Max, assume your parcel delivery algorithm can be reduced to an equation of the form F = M * A. I think the question can be framed as whether we can patent the mathematics per se, F = M * A, the use of an some machine to assist in making the calculation, or a system of routing parcels using the information.

      The only thing in the above list that I would think could possibly even get close to being patentable subject matter in the United States is the last item on the list, the system. But from the nature of your question, I am not so sure that the Europeans would not include each and every item on the list as patentable subject matter. What is the answer here from the European point of view?

      I find it amazing, truly, that anyone in the United States still misunderstands the big picture in that adding nominal “stuff” to an otherwise ineligible subject matter claim is not sufficient to transform the claimed subject matter into something patentable. Thus if F = M * A is not patentable subject matter, calling for its calculation by computer is not enough to transform the claimed subject matter into something patentable which are law requires to be a useful application.

      1. 7.1.1

        Ned,

        It entirely matters if you are doing the “merely aggregate” adding of nominal elements or if your added elements integrate with each other.

        As I have pointed out to you and Malcolm for several years now.

      2. 7.1.2

        Encryption is a mathematical concept. Because it’s mathematical, does that mean one cannot patent a device that uses a new and useful encryption scheme?

        Modulation is a mathematical concept. Because it’s mathematical, does that mean one cannot patent a device that uses a new and useful modulation scheme?

        GPS is (at its core) a mathematical concept. Because it’s mathematical, does that mean one cannot patent a device that uses a new and useful GPS scheme?

        I understand that there are broad claims in patents owned by patent tro lls. I understand that Alice was a backlash against that. But there has to be some medium ground between throwing out anything that’s new and useful merely because it’s mathematical and protecting against patent tr olls.

        1. 7.1.2.1

          PatentBob,

          Wake up.

          You have drunk the “Tr011” kool-aid and are willing to sacrifice the law as written for some patent peace for our time.

          That lack of critical thinking is like throwing a scrap to the wolf at the back door.

          1. 7.1.2.2.1

            I think that he is attempting to point out the difference between “mathematical” and “math.” This is sometimes referenced as the difference between math and applied math.

            Your past mistaken views as software = math may come into play here.

            Of course, all inte11extually honest people already know that software does not equal math. Everyone knows that you cannot obtain a copyright on math itself. I have stepped the Slashdot/Techdirt crowd through that logic previously.

      3. 7.1.3

        a system of routing parcels using the information.

        Ned, would the system claim be patent eligible if the system claim was an obvious implementation of using the information?

        1. 7.1.3.1

          Genghis, good question.

          Obviousness has nothing to do with whether the post-solution activity is insubstantial. It is whether that subject matter is transformed in a functional way to make something new or improved — a new or improved machine, manufacture, composition or otherwise patentable process.

          Not exactly the MOT, but close. See, Diehr as a very good example.

          1. 7.1.3.1.1

            I have a problem with Diehr because it just looks too damn obvious to me. But I understand that Diehr stands for “physical transformation” (the machine was “physically transformed” in Diehr because of the addition of obvious elements such as temperature sensors and what not) as the key for patent eligibility.

            But for some reason I get the feeling that the recent Fed. Cir. decisions are moving in the direction of “obvious implementation of abstract idea => patent ineligible.” Maybe I’m wrong…

            1. 7.1.3.1.1.1

              Genghis, think printed matter doctrine. When does printed matter become something one can consider in novelty/obviousness? When it has some new or improved functionality, different in kind rather than degree, with respect to the underlying subject matter that is otherwise eligible.

              What does this different-in-kind functionality do? It transforms the underlying eligible subject matter into a new state, different in kind from that before.

              Obviousness? That is in the statute by the act of Judge Rich who patently did not understand Hotchkiss v. Greenwood. His rendition of the holding of that case in his recently re-published work on the ’52 act is so wrong as to be laughable. But it does explain the how and why of his crafting of the ’52 Act to enshrine a subjective test (the opinion of one of ordinary skill, whoever that is) in the place of an objective test that first looked to whether there was a functional improvement different in kind as opposed to degree, and second looked to the so-called secondary considerations. My God, but time after time Rich got it back-a$swards, and he was allowed to continue his ham-handedness as powerful Federal Circuit judge who eventually got to write State Street Bank.

              That says it all about Rich.

              Functionality. Different in kind.

              Thus a player piano with a scroll having different music. The functional relationship between the scroll and the player piano is the same.

              In Diehr, the rubber produced was reliably better, a difference in kind, not degree.

              1. 7.1.3.1.1.1.1

                Thanks Ned.

                In Diehr, the rubber produced was reliably better, a difference in kind, not degree.

                But the claim was not to the rubber, it was to the machine. Shouldn’t we look at the curing apparatus and ignore the rubber? If we look at the curing apparatus, then the question I have is this: was adding a few temperature sensors and calculation based on a well known equation enough to “transform” the curing apparatus? Doubtful…

                1. Rubber is cured only once – before and after Diehr.

                  You are correct to look at what is actually claimed.

                  For a bonus, try to get Ned to realize that his beloved PON for Diehr was software. It’s a hoot.

                2. The claim was to a process and the process was improved. The court describe how the computer improved the molding process.

                  Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,”

                  Diehr at 187.

                  A mathematical formula as such is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U. S. 584 (1978). Similarly, insignificant postsolution activity will not transform 192*192 an unpatentable principle into a patentable process. Ibid.[14] To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.

                  Id. at 191-192.

                3. Ned, thanks for the citations from Diehr.

                  I claim a process that compresses data using a new compression algorithm and stores the data in a storage device (e.g., a USB stick). This improves the device (in the 101 sense) by increasing its effective storage capacity.

                  Is the claim patent-eligible under Diehr? It is a claim containing a mathematical formula (the compression algorithm) that implements or applies that formula in a structure or process (the process of compressing & storing data) which, when considered as a whole, is performing a function which the patent laws were designed to protect (the “function” here is that of increasing the effective storage capacity of the storage device which is analogous to the “function” in Diehr of curing rubber more consistently).

                4. Genghis, compression of data so that a device stores more of it, and that is actually claimed, then certainly the compression technique should be claimable as a process.

                  If the compression becomes an integral part of the USB drive, then the USB drive is improved.

                  There seems little doubt that improvements to computer technology are well withing 101.

                5. Thanks Ned re: the storage device claim discussion. I have to confess that based on your explanation Diehr makes sense to me at some level but I’m still not completely comfortable with the “is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing)” language.

                  Suppose the USB drive comes with pre-installed software that enables the USB drive to perform a new function (in the 101 sense) when it is plugged into a USB port. The USB drive has been improved in the 101 sense because the USB drive now does something it didn’t do before. But the only difference between the old USB drive and the new one is the pre-installed software. Still patent eligible?

                6. Let me see if I can predict your answer. If the “pre-installed” software is integrated into the USB drive, i.e., it is not akin to merely copying new software into the USB drive, then it would be patent eligible. It’s a very fine line, but I guess that’s the law…

                7. Genghis, why of course the USB drive is improved when that software executes when storing data.

                  This really is a no-brainer. No one that I know anywhere has seriously argued that mathematics or software that is part of a machine or process and is used to improve that machine or process as described in Diehr is in any way unpatentable under 101. This seems to be a strawman argument raised by some to panic. But the reason they raise the argument is to get everybody on board for their real objective and that is for patenting software that does not improve machines or processes, but which, in fact, is a little better than a business method or the like.

                  Bait and switch. Disingenuous beyond all belief.

                8. Ned,

                  No one you know…?

                  You mean besides Malcolm and his Slashdot Echoes?

                  Talk about being disingenuous, that would be the anti’s and those on curse-ades (like you).

                  Windmill Ho!

                9. …and by the way, raising arguments that explicate the logical inconsistencies of anti-patent Belieb systems is not a move “to panic,” nor is such in any way “disingenuous.”

                  What is “disingenuous” is the monologuing internet style shout down of ignoring the counter points put on the table for discussion because such facts and law are merely “inconvenient” for certain Belieb systems.

                  It’s also called inte11ectual dishonesty.

                10. The Devi1’s Advocate wants to know how much does “the compression of data” weigh?

                  ;-)

                11. Take all of the components of Diehr’s system – except the software – and weigh them.

                  Now add the component that is called software.

                  Weigh the system again.

                  Since we as mature, objective and reasonable people know that “magic” is not involved at this Point of Novelty, what is the logical take-away?
                  (Hint: this is the lesson of the Grand Hall experiment).

                1. And before you whine away, shall I point you (yet again) to my explication that I made for you in simple set theory and asked (neigh, begged) you to join in on with a discussion, but that you refused to discuss any of my points and just ran away…?

                  Or how about David Stein’s absolute destruction of your incorrect citations of cases on the matter?

                  Or even Prof. Crouch calling you out for your improper use of a district court case?

                  The truth of the matter is that you are only interested in your internet style shout down monologuing wind-mill chasing curse-ade.

                  There is no doubt that you will chase your windmill ad infinitum ad nauseum.

                2. Oh, anon, so the print to the book is functionally the same or different depending on the meaning of the words?

                  What is plain and simple, anon, is that you live in the land of Rich, a world of make believe and misunderstanding.

                3. Improper use of what district court case?

                  You do know that Hotel Security is a 2nd Circuit case and is the origin of the printed matter doctrine, a doctrine long recognized everywhere, even at the CCPA and the Federal Circuit. The one “dissent” is Rich, and he was way out there, anon, Way Way Way out there.

                4. Hotel Security is NOT the origin Ned.

                  Try to stay out of the non-useful arts canards (like visit the earlier API thread for your own statement of “of course it is functional”) and stop your v@pid games. This is NOT mere “print in a book” so stop the purposeful dissembling.

                5. anon, and your denial that Hotel Security is the origin of the printed matter doctrine is completely false.

                  See. I can do that too.

                6. Except Ned your statement is easily seen to be false on its face and only shows that you just don’t understand (or purposefully want to misunderstand) the topic.

                  The Ned-IMHO version of law just is not the U.S. version – the true version – of law.

                7. Except, anon, I have traced the doctrine all the way back to Hotel Security. I have also cited law review articles that do the same thing. It is, to say the least, conventional wisdom.

                  It is you who live in the world of the make believe.

                8. The case itself references earlier cases Ned.

                  Once again, you make the mistake of Beleibing in your own version of reality.

                  Visit again the post by David Stein I which he utterly destroyed your “case” presentation. You (as typical) rather abruptly left that conversation)

            2. 7.1.3.1.1.3

              ve a problem with Diehr because it just looks too damn obvious to me.

              With all due respect Genghis, you exhibit an alarming level of immaturity with that statement.

              Mind you, I am not calling you immature, but rather, your view of patent law needs some serious seasoning.

              I suggest that you study what Judge Rich had to say regarding the Act of 1952 and why Congress carved out of what is now 101 the section of 103.

              Be aware too of the rather unholy and venomous bias that Ned Heller has for the important historical facts pertaining to this area of law.

              1. 7.1.3.1.1.3.1

                Yeah, Genghis, read what Rich had to say, then read Hotchkiss v. Greenwood. Read the Supreme Court cases that Rich complained about, and then again read Hotchkiss. It is abundantly clear that Rich had no ideas what he was talking about.

                1. Something happened in between Ned.

                  It was called an Act of Congress.

                  You really need to learn to deal with that.

          2. 7.1.3.1.2

            Your “something new or improved” is false.

            Perfect cures were known before Diehr.

            It is a bit more nuanced than your statement.

    2. 7.2

      “Can there be concepts that exhibit “technical character” which are nevertheless “abstract”?”

      Definitely. Anon is right about the fact that the abstract sword can cut into the standard useful arts (though it is on rare occasion).

    3. 7.3

      The fact of the matter is that non-patentable is DEFINED as abstract/nontechnical.
      Actually every idea is abstract (else it is not an idea) but an artificial distinction is made i. order to relate to case law (Funk v. Kaloo etc.)
      Age-old tenets like the exclusion of mental steps and printed matter are easier to understand – but again cause considerable confusion, especiallly in the EPC wording.

  4. 6

    This blog post brings up two points. One, where are we post Alice, and two does this blog take anti-patent positions.

    For one, post Alice the proper way to think about it is that Alice didn’t really restrict the eligibility by any area. What Alice did is cripple the patent system by creating an arbitrary test so that any judge can invalidate pretty much any patent claim back in their chambers absent the Graham analysis–so Graham is really not good law anymore (no one has come to grips with this yet because it highlight the judicial activism nature of Alice). (By the way, that is what they are trying to do with functional claiming too. Phillips is really not good law anymore.)

    For two, the answer is clearly yes. The idea that we should admit defeat and fall back to a position of the Europeans is abhorrent to any real practicing patent attorney. By the way, how is that European software industry doing? Oh nearly non-exist. Any explanations for why the country that has patents for software also has the biggest and most innovative software industry in the world by a factor of 10?

    1. 6.1

      Truth be told, there are NO limits to the “Gist/Abstract” sword created by the Supreme Court.

      Look at the mad scrambling by Malcolm and the Echoes exhorting others to come up with some “plausible” middle ground. It does not take too much critical thinking to see that this is merely a NIMBY move to try to stop the sword from swinging everywhere.

      But the answer is not to fall prey to such a tactic. Why buy into that and seal defeat? Why accept a Chamberlain style patent peace for our time?

      No.

      The answer instead is the scorched earth FULL nuclear response of stomping on the gas pedal and using that “Gist/Abstract” sword to its unending logical limits. That is the only way to show the Court that they cannot get away with re-writing the statutory law in such a slipshod manner.

      Make the Court accountable by embracing the full consequences. That is the Churchill response.

      History beckons us to learn or repeat. The wolf at the back door has returned from the prior time that scraps were left to the animal. The hunger of judicial activism is an insatiable beast. Time for everyone to open their eyes to the bigger picture here.

      1. 6.1.1

        Take a look at the bigger picture anon. This is not just patents where the SCOTUS is doing this sort of thing. The big picture: we are becoming a fascist state. The laws are more and more becoming whatever a judge or prosecutor decides they are. So, it puts the person or company in the position of terror. The prosecutor just calls up and says I don’t like you. You do what we say or we will prosecute you. And they can. And they will win unless you have $10 million stacked away to fight them, and then you may lose anyway.

        Alice is just another example of the law is whatever the person in power says it is. It is fascism.

        1. 6.1.1.1

          link to nytimes.com

          There is another example. A law so broad that almost anyone may be prosecuted by it. The effect is to terrorize the population. It is an attempt to remove all rights from the citizens and put it in the hands of the rulers. And the rulers are put there by the big corps. We are headed right to Naz1 Germany. Only a couple of steps away now. Another big recession and we may be right there.

          1. 6.1.1.1.1

            And certainly, Alice + Google judges (Hughes, Taranto, Renya) = fascist state.

      2. 6.1.2

        Anon, I think you’re right. I think that’s what the panel did in Sequenom. Let’s go out there and attack every patent we can, on every useful invention, just because we can thanks to Mayo, Myriad and Alice. It’s the patent world’s own MMA. And maybe someday those nine people who dress like Darth Vader will see the light.

    2. 6.2

      and two does this blog take anti-patent positions.

      You be the judge as to the good professor’s rather sheepish (and Chamberlain-like)-gee-we-fought-the-good-fight-but-lost-so-now-let’s-settle-somewhere intonation in his statement of “Now that those of us favoring broad eligibility have been taken-down several pegs“….

      With faux-friends like this, who needs enemies? “Just give up guys, let’s find some peace for our times”

      Spit that C R P out and man up. Otherwise you deserve the injustice you so meekly accept, and yet wolf at the back door will be back again tomorrow.

    3. 6.3

      Night, I disagree. I do not think Dennis has a hidden agenda with his blog. He generally tries to stay objective and reports on what has happened or what may happen next. Please point out a few instances where you think his reporting is biased?

    4. 6.4

      Night, While I agree with you that “abstract” is so undefined as to be all but meaningless, but the courts are applying it in two ways that are make a lot of sense.

      First, they are applying abstract to nonstatutory subject matter such as products and laws of nature, and business methods.

      Second, they are applying abstract to subject matter that is effectively a result, an idea, sans any inventive means or methods.

      In both cases the courts are requiring some application of the nonstatutory subject matter or idea that is nontrivial. Simply requiring the use of computer to make calculations is trivial and non inventive.

      I am beginning to believe that people who fail to recognize what is going on are the people who fail to recognize that requiring some inventive application of otherwise nontechnical subject matter is the minimum that we ought to require before we give somebody a patent. If we do not ask for this at a minimum, we can patent anything and everything. Such a patent system would so violate the people’s understanding of what the patent system is really for as to bring the whole system into disrepute, as it was bought into disrepute after State Street Bank, so as to undermine the patent system as a whole. In other words, Night, the people who advocate for too much patentability are the people who are the problem, not the people who want the patent system well grounded in the fundamentals.

      1. 6.4.1

        Ned, it is you that violates the fundamentals to get to your desired ends.

        Tell me again of this O’Malley writing…

    5. 6.5

      How do you explain the USA’s worldwide dominance in motion picture production? How could they do that without patents?

    6. 6.6

      It is not a matter of taking a pro- or anti-patent stance. Rather like in every field of law it is a matter of drawing a sensible line.

      The success of the US software industry is due to “network effects” and smart marketing. Incidentally, SAP is a succesful European software firm. Also, there is a lot of software in devices not named computers. Eg Siemens and Philips are big in computerized medical equipment.

      And dont forget that software patent transaction costs are huge. If you are in the software business and large enough to pose a threat to competitors, you’d better collect a large patent portfolio in order to be prepared for patent wars. Literature refers to “mutually assured destruction” (as you know a concept from the nuclear arms race) as a reason why software firms rarely fight their competitors with patents (“if you can’t beat them, sue them”)

  5. 5

    This is silly. The EPC at Article 52 denies eligibility to inter alia programs for computers, methods of doing business and the presentation of information. these are all man-made contributions to society. It is the height of absurdity to posit that the European eligibility filter is less severe than one which admits as elibible anything under the sun made by man and denies patents only for abstract ideas, natural phenomena, and laws of nature.

    1. 5.1

      Absolutely Max. But I see an agenda in this post, do you not? Somebody is already making a push to edit our own 101 into something that we have not seen before in order to allow the patenting of software sans inventive application, to allow the patenting of discoveries of new products or laws of nature, sans application. In other words, someone already is seeking to transform the American patent system into something un-American and, might I add, unconstitutional.

      1. 5.1.1

        The Royal Nine have already started mashing that wax nose Ned.

        Yet, you refuse to see it.

    2. 5.2

      The subject-matter you refer to is only excluded “as such” by the EPC. In the 1990s there were some US court decisions (like Arrhythmia) clarifying that algorithm-related subject-matter is not excluded *because* it is too abstract but only *if* it is too abstract.
      Incidentally the European technical character requirement has been identified as a “restatement of the problem in more imprecise terminology” by a British court.
      Still it seems obvious that SOME additional test is required if a patent application appears software related.

      A clue is that the statute (35USC113. 87EPC) requires a description *any* “person skilled in the art” can carry out. Of course, those provisions do not *replace* 35USC101 / 57EPC, but the statutory system implies that no ubject-matter can be patented that can not be described in the way required by the statute. For instance mere functional claims.
      The famous German textbook by Kraßer defines an invention as a “Lehre zum technischen Handeln” = a teaching how to act technically. The action aspect is important. Mete facts are not patentable.
      As I explain in my PhD, conceptually it is helpful to distinguish scientists, inventors and PHOSITAs. While those roles may be combined in one person, there is a sharp destinction between the knowledge they handle. Scientist produce knowledge that is only useful for a PHOSITA after preparation by an inventor.
      Additionally, patent protection of pure science may have an overly wide and unclear reach. Finally it may not be effective since the te between invention and application is often well beyond the planning horizon for inventors. Beyer and Straus have published a book in 1982 (sorry, in German – which is a foreign kangyage for me too) about several attempts that all failed to protect scientific research results by patent-like legal means. (“Der Schutz wissenschaftlicher Forschungsergebnisse”). WIPO officicially has the task to cover this field as well, but it failed as well to provide a regulation. Is seems infeasible.

      In my view, business methods are like science rather than true inventions since they cannt be carried out by any PHOSITA.
      The distinction is not that the inventor is necessarily smarter than the PHOSITA – it is that any person rightfully named a PHOSITA can di the job.
      If I ask a contractor to build a house, he is no PHOSITA if he does not manage to accomplish the job. In contrast; a pharmaceutical researcher who does not invent a new pill in 2015 just has bad luck.

  6. 4

    Don’t understand. As to Article 52 of the EPC, the courts of the UK have a restricted view while the Boards of Appeal of the EPO have a much more expansive view, dubbed by the English courts “intellectually dishonest”.

    Where is the harmony with which the USA might harmonize?

    Of course, at the EPO there is an interplay between eligibility and patentability, to the extent that what falls in London at the “101 filter” gets through it in Munich but then, in Munich, gets snagged at Munich’s “103 filter”.

    So it seems to me you can harmonise with the complete EPC patent fitness package, but not with bits of it.

  7. 3

    Tell, me Dennis, why do you favor business method patents? Those are the only category of patentable subject matter that has clearly been outlawed after Rich’s more that outrageous decision in State Street Bank.

      1. 3.1.1

        (and that’s not even raising the issue that the Court lacks authority to re-write patent law, with Congress expressly allowing patent eligibility to business methods – at a category-level discussion (I shudder already at Ned’s obfuscations between “categorically” and “as a category” which have two entirely different meanings)

      2. 3.1.2

        Dennis cannot be serious about support of business method patents. If he actually came out in their favor, he would lose all credibility.

        There was no other decision that so undermined the US patent system as State Street Bank. It, more than any other decision in US patent history, caused more damage than can be comprehended.

        Dred Scot is comparable.

        1. 3.1.2.1

          You realize (unless you are still deluding yourself) that business method patents have been granted throughout the history of the U.S. patent system and that your “protests” have long been seriously misguided due to your curse-adds, dontcha?

          1. 3.1.2.1.1

            “You realize (unless you are still deluding yourself) that business method patents have been granted throughout the history of the U.S. patent system”

            Back when I was a patent examiner in training, which, let us say, was “substantially” pre-State Street, and attending the PTO’s Patent Academy, the question of whether one could get a patent on a business method came up. And was dealt with in about 20 seconds. “Of course you can’t get a patent on a method of doing business!” laughed one of the lecturers, a very well regarded group director. And that was that. The class moved on to the rest of 101 and those things for which one could get a patent. That was how it was for much of the PTO’s history. And then came State Street. We all know the rest.

            1. 3.1.2.1.1.1

              I have to laugh at Egon as clearly he lacks as much judgment as the f001 at the Office.

              And that was that” – except not, given the actual historical records (and actual words of Congress).

          2. 3.1.2.1.2

            State Street wad right insofar that it rejected the idea to consider business methods a separate category. Business is a field of use, and the field if use always was imnaterial fir patent law purposes. Bysiness machines do exist (IBM!) so the (traditional) European technical character requirement dies not help here.

            State Streets failure (addressed in Bilski) is that
            it failed to identify proper *general* rules for patent eligibility. And one may wonder whether the “abstract ideas” exception used in Bilki and CLS is really clarifying.

            1. 3.1.2.1.2.1

              Reinier, Ugh!

              Rich was very artful in framing a question regarding business methods such that the answer was foreclosed. You seem to have fallen into his trap.

              The origin of the so-called “exception” was Hotel Security, which had a working definition of what it was to be an Art, developed by the Supreme Court cases and other cases over time. The question resolved in Hotel Security was whether the method before it was statutory – given that definition. The answer was no.

              Judge Rich did not assume a working definition of “process” but asked instead whether there was an exception for business methods. Judge Rich then said this

              Since its inception, the “business method” exception has merely represented the application of some general, but no longer applicable legal principle, perhaps arising out of the “requirement for invention” — which was eliminated by § 103. Since the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.

              .

              Notice how he thereby trashed all the case law prior to ’52 regarding the definition of Art. He really liked overturning the Supreme Court. The man was a pile of ….

              So you say the central failure of State Street Bank was not to develop a test. However viewed another way, the central failure of State Street Bank was not to recognize that there was a test that was well accepted, and under that test business methods were not statutory processes.

              And, more than anything, the chaos of the in patent law from ’52 to now was centered on one figure, one person. The man from the AIPLA and the NY Patent Law Association. A man of the patent bar.

              1. 3.1.2.1.2.1.1

                Your argument that business methods per se are not patentble may be right – still the question remains what a business method really is. And – in devils advocate mode – why the inventor of a business method does not deserve a patent.

        2. 3.1.2.2

          Get a grip, Ned. This is patent law – in no way is any patent case comparable to the Dred Scott decision.

      3. 3.1.3

        Anon, a little bit off-topic here, but on the matter on which you and I both agree, IPRs.

        Under what portion of the Constitution does Congress have the legislative authority to create non-Article III courts to invalidate issued patents? Where does it get its power to do this?

        Congress has the power to grant patents – and to create in the executive the authority to issue patents according to law. But where does it get the authority to revoke them, or to grant to the executive the power to revoke them?

        1. 3.1.3.1

          From an historical perspective, how was the original scire facias put into play? What was the authority there?

          1. 3.1.3.1.1

            Well it had two forms, one a petition to the attorney general that the patent was invalid. The AG then could sue in chancery to have the patent revoked — jury trial on facts.

            The other was a direct suit in chancery if the complaint was that the government had issued a second patent on the same invention.

  8. 2

    The U.S. usually does not take easily to being told to up its game when it comes to harmonizing…

    1. 2.1

      “The US” as I understand your use of the concept may no longer exist except in the hearts and minds of a principled minority, which includes you.

      1. 2.1.1

        Depends on who is writing the opinion, Roberts or Kennedy. Kennedy is a real monster on the Supreme Court is Supreme. Roberts lets the people talk through their legislature.

        Diametrically opposed.

          1. 2.1.1.1.1

            Not so Rita,

            We assume Ned’s point that “Roberts lets the people talk through their legislature” holds the same meaning as saying “Robert’s view is that the Legislature speaks for the People”. Robert’s dissent in Arizona is essentially that that the People are not the Legislature. The majority affirming view held something to the effect that the people have “the power to make laws” (initiative/voting) which they (the majority) identified as “legislative” and thus (our words) an equivalent / “legislature” in context.

            If one is to infer ways of thought that may apply here, consider the actual construing of the term “legislature” with dramatically difference. The majority constructs broadly and functionally, the dissent precisely and by definition. Capitalization matters, but in precedent and reference it is inconsistent, but to some plain meaning is mutable and ancient things get gets murky. The strict statutory view supports the probably corrupt old system, the other view is allegedly higher purposed but foundationally unsound and prone to wind shifting corruption. There are even rights issues (albeit state’s rights) that are maybe shared by both the majority and some of the the dissent, yet are looked at differently as to decide at all.

            Although we know IRL that the bodies of Legislature voice less for us than it ought, that or an opinion on the recent Arizona case is irrelevant.

          2. 2.1.1.1.2

            We are compelled to add this bit of unintentional relevance, quoted from CJ Robert’s dissent in said Arizona case. We will park this in the Grand Garage.

            As a matter of ordinary language and common sense,
            however, a difference in function does not imply a difference
            in meaning. A car, for example, generally serves a
            transportation function. But it can also fulfill a storage
            function. At a tailgate party or a drive-in movie, it may
            play an entertainment function. In the absence of vacancies
            at the roadside motel, it could provide a lodging function.
            To a neighbor with a dead battery, it offers an electricity
            generation function. And yet, a person describing a
            “car” engaged in any of these varied functions would undoubtedly
            be referring to the same thing.

  9. 1

    That’s going to be difficult. For instance, 35 USC 112, paragraph 6 would have to go. The Europeans (and pretty much every other country/PCT entity but the US) treat means plus function claims completely differently. Also, would harmonization include novelty, inventive step (and their “problem and solution” test), lack of unity of invention, 101-type issues (e.g., “technical effect”), etc.?

    By the way, if there’s one think the Europeans are doing well — in my opinion — is that “technical effect” makes much more sense to me than does Alice.

    1. 1.1

      PatentBob, agree on repeal of 112(6). The way the Fed. Cir. has interpreted it so that one cannot avoid it even though by its own terms it is optional demands repeal.

      And, while we are at is, we need to repeal the Federal Circuit whose bad decisions cannot be avoided as well. There is something to be said for the old forum shopping.

      1. 1.1.1

        You continue to show your non-understanding of what Congress did in 1952, Ned.

        You have got to understand what Prof. Crouch meant with his coined term Vast Middle Ground and the fact that Congress did not make it mandatory to have claims in Jepson format.

        1. 1.1.1.1

          anon, you are so over the top with your statements that no one can even begin to have discussions with you. It would take paragraphs just to unravel the mixed up strawmen in your arguments just to begin.

          1. 1.1.1.1.1

            Or not.

            Seeing as I merely show the relentless errors and bias in your views though, I can see why you feign your indignation – having a real dialogue just would not work out too well for your “causes.”

    2. 1.2

      PatentBob, let me make it clear that what we do not need in patent law are strange rules about claim construction. Claims should cover what they appear to cover with reasonable certainty!

    3. 1.3

      Bob look at what has happened since the Euro’s wrote the EPC in 1973. It has served ever since as the benchmark relative to which every other country in the world except the USA writes its patent statute.

      Focus on Japan, ever anxious not to disagree with the USA. So its patent law (a copy of the German law, by the way) compromises with that of the USA, what with grace periods, prior filings of the same inventor, and so on, and so on.

      Same with Korea, China, Australia, and so on.

      And yet, even now, the USA still thinks it has the “gold standard” to which the rest of the world should conform. It expects Europe to abandon the coherence, integrity, simplicity and elegance of its 1973 text, to come half way to the thing that is US patent law.

      A hundred years ago the Far East simply copied German law. The USA adopted English patent law. When Germany and the UK shook hands on a deal in 1973, harmonisation was complete. Except for the USA.

      1. 1.3.1

        We used to have the gold standard.

        Then the Supreme Court got involved…(then, of course, other factions including Big Corp)…

        1. 1.3.1.1

          The Supreme Court had very little to do with all the problems we are having today. Look to the AIPLA and the main villain — and the people who control it.

          1. 1.3.1.1.1

            Ned,

            Attacks from both the left and from the right do NOT excuse the culpability of the Supreme Court for its wax of nose mashings.

            You seem rather incapable of recognizing when the body of government you adore has stepped over the line.

            It’s that “align-with-Ned-must-be-a-genius” disease thing going on.

      2. 1.3.2

        > the EPC (…) has served ever since as the benchmark relative to
        > which every other country in the world except the USA writes its
        > patent statute.

        It’s a myth. Politicians worldwide know that the US patent system has a bad rep, so they say they are going to follow Europe’s approach.

        Are they actually following Europe’s approach? Of course not. No one in Europe knows with much certainty whether or when software is patentable, and the range of opinions has been swaying from one side to the other for twenty years.

        (If any country ever does implement the European approach, Europe should race to that country to see what it is!)

        1. 1.3.2.1

          Whooahhh there Mr O’Riordan. All I meant is that the basic scheme of patentability in the EPC is found everywhere else. Eligibility, novelty, obviousness, clarity, enablement/sufficiency and added matter. Of course the exact point at which software inventions become “a program for a computer, per se” is a work in progress but that alone doesn’t render my thesis false does it? How about resolution of priority between rival filers? Is it done by EPC “whole contents” or by the former UK “prior claiming”. Which jurisdictions don’t do it the EPC way? Can you tell me?

          1. 1.3.2.1.1

            For the topic of this blog post (subject matter eligibility), I think it’s mostly false to say that the EPC is the benchmark relative to which every other country in the world except the USA writes its patent statute. And, to the extent that it is true, it is a red herring. The “as such” words of the EPC can and have been interpreted in different ways, so other countries using the same words doesn’t actually imply harmonisation.

            For other topics such as priority, you’re probably right.

            1. 1.3.2.1.1.1

              Thanks for that. You assert that it is:

              “…false to say that the EPC is the benchmark relative to which every other country in the world except the USA writes its patent statute”

              Whereas I say that 1973’s text of Art 52 EPC is still the benchmark.

              It denies eligibility to inter alia programs as such for computers and schemes and rules, as such, for doing business. As far as I can see, State Street Bank was a false step, from which the Supreme Court of the USA is now rowing back towards the EPC benchmark.

              Or do you stand by your assertion that it is all only a “myth”?

              Either you have a limit on eligibility, or you don’t. If you do, defining it with precision takes time. The more marginal cases tried, the more focus to the line.

              1. 1.3.2.1.1.1.1

                Max, Precision is a good word. Could have put that in the ear of Kennedy when he wrote Bilski.

                1. Ned,

                  That was just a “brokered peace” because Stevens lost his majority writing position in that case trying to explicitly overturn the words of Congress – on business methods no less (and it only took me years to break you of your misstatements of that case – or don’t you remember that inconvenient fact? Along with your O’Malley like “Oops” of supplying a reference that worked against you – there the reference was on the dangers of taking dicta as controlling law…

                  What are the chances that you will be honest about our past exchanges…? You do realize (I hope) that these are in the archives here.

                2. Be that (that being Kennedy writing) as it may Ned, you are ducking the discussion points I share yet again.

                  The Ned Merry Go Round continues…

              2. 1.3.2.1.1.1.2

                Your last paragraph touches on the problem.

                Firstly, there have been very few marginal cases tried. A small few in England+Wales, and a small few in Germany, and neither is bound by the other’s decisions. So there’s a line, but no one really know where it is.

                And secondly, that’s just recent local case law and doesn’t apply to the various countries that copied the legislative text in the 80s or 90s. One country might decide that, say, Firefox falls into the EPC text’s exclusion of “software as such”, and another might decide the contrary.

                1. Well Ciaran, indeed it’s true, that the Supreme Court in Germany is not bound by the EPO line on “is the problem the invention solves a technical one” and nor is the Supreme Court of the UK. But are you reading their recent output, where they observe how hard they are all trying to hew to the same “technical” line? And this despite their historical positions as the opposite (central claiming vs peripheral claiming) end markers of how to do patent law. Each thinks that, in Europe, it is pre-eminent and shall “call the shots”. So if Germany and UK have come now to genuflect to the EPO line, what does that tell you about what other Supreme Courts dotted around Europe will decide when it’s their turn?

                  In particular, the UK is saying that even though the EPO filters under 103 what England filters at the 101 eligibility stage, the result is the same in the end. In the end, the word “obvious” is one of those words that is in the statute and the court just has to do the best it can with it. Think of “technical” as another such word, fundamental to patentability. It helps.

                  Now how does that compare with “Abstract? Y/N?” in the USA? What “technical” means gets ever-clearer, with every further borderline case. But “abstract”? I think not.

                2. Well, Max there is a big difference. Abstract can mean both non technical and a mere idea.

                  I suppose the EPO will not issue a claim to a mere idea — a claim to a car that will achieve 60 miles per gallon, or a transporter, a starship having a warp drive, or piece of rubber for the tip of a pencil.

                  Business methods can be as detailed as one can imagine, new, non obvious, inventive as all get out, but still be non technical.

                3. Not to disrupt your gentle discourse Gentlemen, but it is worth inserting here the notion of individual country sovereignty and the simple fact that there is no One World Order for patents. Patents are (still) a matter of individual sovereign law. Let’s remember that distinction even in the face of the evolution of the Fourth Reich. Until that new sovereign emerges then, let’s not mistake ANY notion of “genuflecting” with what is truly sacrosanct.

                  Please continue.

                4. This in reply to Ned’s 1321112 post of today.

                  Correct! The EPO will not issue a claim to a “mere idea” but the objection has to be formulated under one of the Articles of the EPC. Articles 83 (enablement) and 84 (clarity) are usually invoked but Art 54 (novelty) and 56 (obviousness) are handy too, even without invoking Art 52 (eligibility).

                  The EPO is extremely grudging about recognising claims that are functional (what it does) at the point of novelty. They get through, if at all, only when there is no possibility to define the subject matter non-functionally (what it is) at the point of novelty. That has been the case, on occasion, in various biotech cases, where nobody really yet knows what the claimed “it” is.

                  link to epo.org

                5. More to Ned:

                  Obviousness at the EPO. Only inventiveness in relation to a technical problem counts towards patentability. All pleadings that the claimed subject matter solves a real objective problem in a non-obvious way are futile, unless the identified problem is a technical problem. So it is, that much business method innovation fails at the EPO under Art 56 EPC rather than at the eligibility hurdle.

                  But because the Art 56 issue is so easily resolved at the EPO, there is no reticence about allowing the claim to clear all the other hurdles. It is doomed anyway, to crash ignomineously when it attempts the Art 56 hurdle.

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