by Dennis Crouch
The Patent Act opens the door to patenting of “any new and useful process, machine, manufacture, or composition of matter.” In recent years, the patenting of processes in particular (or at least process claims) has risen sharply. The chart below shows the percentage of patents with at least one independent method or process claim, grouped by issue year.* Over the past 30 years, the percentage of method patents has risen from around 30% of patents to almost 60% today.
* For this data, I parsed each independent claim of each issued patent for the past 30 years and tallied the number of patents that included the word “method” or “process” within the claim (excluding processor, etc.).
Some of these claimed method are new uses of known products as well as new processes for manufacturing a known product. It may be difficult to even draft an apparatus claim in those cases (other than product-by-process) when the invention does not involve the creation of any new device or system. These new-use claims are expressly authorized by Section 100(b) of the Patent Act that defines a process as including “a new use of a known process, machine, manufacture, composition of matter, or material.” (cf Alice Corp.).
On the other hand, the majority of method claims are tied to some form of new apparatus/software. In that situation, it is legally appropriate and often good strategy to protect the apparatus as well as methods performed by the apparatus, methods of using the apparatus, and/or methods of manufacturing the apparatus.
By adding the method steps, a patentee is able to include fewer structural limitations and still obtain protection. It is perhaps that potential of altered scope – more than anything else – that gives method claims their power.
Of course, most patents still also include non-method claims too. The chart below splits these into three categories and displays.
Dennis,
One of my clients insisted on a method claim covering the method for manufacturing the apparatus that was the subject of the patent. So every apparatus patent also had a method patent associated with it. I was told that it was very useful in litigation.
This is a strange roundabout sort of statement:
Dennis: the majority of method claims are tied to some form of new apparatus/software. … By adding the method steps, a patentee is able to include fewer structural limitations and still obtain protection.
That makes sense in the case where an unmodified known device is being used to carry out a process that one skilled in the art would not expect the device to be capable of carrying out.
But it makes no sense whatsoever in the case where necessary modifications to an old device are unrecited and replaced by the recitation of process steps to be carried out by the modified device.
That latter situation isn’t an illustration of the “power” of such claims. It’s an illustration of one of the most broken aspects of our broken patent system. Playing the “configured to” game, however, is the life and blood of the lowest form of “innovator” because one need not have any skill in the relevant art to dive in and begin the process of shaking down litigation targets. All you need to be able to do is imagine a computer-implemented service that some company might provide and you’re on the path to glory (measured in dollars, of course).
The doctrine is straightforward: The basic idea is that performance of the method may include innovative elements apart from the apparatus itself. At one extreme, a method may be innovative enough to rise to a patentable invention even though none of the machines or other elements used by the method are themselves innovative. At the other extreme, a method may be patent eligible entirely because it is a use or creation of a new apparatus even when the steps of the method offer no innovative concepts beyond the new apparatus. In the middle are situations where the method includes innovative performance elements and also introduces innovative elements of the underlying apparatus – when judging the invention as a whole, we look to some sort of summation of these process and apparatus innovations (Keeping in mind that the sum of the parts may be greater than the whole).
From this setup, it is easy to see how the introduction of innovative process elements in a method claim would reduce the need to claim innovative apparatus elements within the method claim.
Focusing on your particular concerns – I agree that we have an enablement/WD problem if information needed to perform the method is not disclosed and also have an indefiniteness problem if necessary points of delineation are not recited by the claim.
Dennis, I agree with this. The problem arises of course when the novelty is in the one element and there is no new relationship with the other elements. When this occurs, there is a strong potential for claiming a result if the claim element itself is not limited to the novel apparatus or process disclosed.
Please do not insert your “Point of Novelty” canard into the law.
Thanks, Dennis. It looks to me like you’ve just re-stated what I wrote but (again) with less specificity.
Here’s the point I made: [it] makes sense [that a patentee is able to include fewer structural limitations and still obtain protection] in the case where an unmodified known device is being used to carry out a process that one skilled in the art would not expect the device to be capable of carrying out.
That’s your “middle” situation (or a substantial part of it). That’s what “looking at the invention as a whole” looks like. It represents “some sort of summation.” I think those sorts of innovations are relatively rare, by the way.
I specifically directed my comment to claiming paradigms in the computer-implemented arts (the arts you had referred to in the quote I reproduced) because, in nearly every instance we see these days, using modified computers to carry out new logical information processing tasks does not fall into the “middle ground”. Certainly not in 2015. Not in 1995 either, for that matter.
Right, although I don’t think that the court does a great job in Bilski, it does attempt to address this in some ways — thinking about what weight we should give to the definition in 100(b) that allows process patents covering new uses of well known items.
…what weight?
You mean, how far do you want to take the legislating from the bench and wipe out 100(b)….?
Right – the Bilki concurring opinion saw the provision as largely meaningless in the way that it defined a process to include a process while the majority determined that the provision did have meaning and prevented the court from establishing a direct rule excluding a particular type of process. At the same time, the majority affirmed that a seeming process that is an abstract idea is not patentable. And, as we all know, the ongoing question is the breadth of the abstract idea test.
Dennis: the Bilki concurring opinion saw the provision as largely meaningless in the way that it defined a process to include a process
while the majority determined that the provision did have meaning and prevented the court from establishing a direct rule excluding a particular type of process.
Those two propositions aren’t necessarily mutually exclusive, depending on one’s stake in the answer. For example, if you claimed “A method of making X, comprising using old apparatus to make X” and a court tried to squash your method claim under a theory that “the apparatus recited in your method claim is old, end of analysis!”, you’d hold 100(b) up like it was the Ten Commandments and rightfully so.
At the same time, the provision would remain “largely meaningless” for innovators who are claiming new apparati and innovators who are claiming new process steps.
In any event, the most important thing to remember is that there is no reason to believe that 100(b) — in the context of 101 or any other section of 35 USC — per se renders eligible or patent-worthy a process claim merely because it recites a “new use for an an old machine”.
MM, right on. Any process must produce a new or improved, useful, result. An old machine used to produce an allegedly new or improved result that varies from previous results in otherwise non statutory ways (e.g., the player piano playing a new song), cannot be patentable subject matter. As the Supreme Court has said many times, not every process is per se, i.e., categorically, patentable.
Absolutely not Ned – you do know that there were perfect cures prior to Diehr, right?
You do know that the subject matter eligibility criteria is not in the delta from any such prior art, and that the invention – in the claim as the whole is what must meet 101 (and not any partitioned single element), right?
The merry go round continues…
Ned and Malcolm (although Malcolm has adopted a more subtle tone ** this time are advancing no new argument and STILL have not integrated any of the valid counter point spit on the table a that an inte11ectually honest dialogue would require.
**his obfuscation of a claim totally with objective physical structure once again is made of issue as he attempts to elevate one optional claim format as the de facto only “legal” claim format.
“Focusing on your particular concerns – I agree…”
Wow – talk about bending over backwards.
Those are NOT his concerns.
You blindly ig nore the offensive “broken” and “lowest form” and then insert your own views as some form of “agreement.”
How deep is your head buried in Malcolm’s backside?
And how clueless can you be as to your very evident lack of objectivity?
Nine years and running – do you really wonder why your rep is so tarnished – and continues no matter how much you call for an “honor” system?
These are very real perceptions that you create for yourself. You want change here? Look first in the mirror son.
“y adding the method steps, a patentee is able to include fewer structural limitations and still obtain protection. It is perhaps that potential of altered scope – more than anything else – that gives method claims their power.”
Fewer? Why would a method claim need to include any structural limitations at all?
Because there is a critical difference between “doing” and “thinking of doing,” and FAR FAR FAR too many either ig norantly or with purposeful deception do not acknowledge that difference.
here is a critical difference between “doing” and “thinking of doing,”
In the context of the patent system, please explain to everyone what you believe the “critical difference” is and why the patent system must respect that “critical difference.”
^^^ another one way street edit job with NO objective criteria evident.
C’est la vie.
Les, you are, of course, correct.
Thanks Ned. Its so nice to see you acknowledge it.
Les Why would a method claim need to include any structural limitations at all?
In cases where a method requires a modified apparatus to carry out one or more steps, the structural modifications to the apparatus need to be described.
Consider the situation where it was predictable that mixing X with Y at temperature Z for ten hours would lead to a useful result but the apparatus for achieving that result had not been described. You build the necessary apparatus and claim it using objective structural terms. Great! Now you also want to claim the process. Guess what? You need to limit that process claim by recitation of your apparatus or your claim is both obvious and not fully enabled.
No you don’t.
The invention is: mixing X with Y at temperature Z for ten hours.
How you mix them and how you get them to temperature doesn’t matter. You can use a spoon, shake them in a container, stirr them, use a mix master or rely on diffusion, just so long as they get mixed. If its Z outside, you can do this outside, If you need to heat them to get them to Z, then do that. If you need to cool them, do that. Just get them to Z. You don’t need to use my machine, though it is nifty and handy dandy.
Les: The invention is: mixing X with Y at temperature Z for ten hours
No, that process is certainly not the “invention”. I expressly set that forth in my hypothetical, i.e., “it was predictable that mixing X with Y at temperature Z for ten hours would lead to a useful result.” Predictable = obvious = non-inventive without more.
Well then the invention is the device and would be claimed as a device.
We are discussing method claims in this thread.
Well then the invention is the device
Not necessarily. In addition to the example in my hypothetical at 6.3, there is the rare case where an old device could unexpectedly be used to carry out the otherwise obvious (and unpatentable) process.
…rare…?
You do realize that your post here Malcolm is self-contradicting, eh?
You seem to want to purposefully dissemble on the differences between describe and claim, conflating and contorting the two in order to reach some desired “ends” – the ends that you are on record of that software – all software – is per se ineligible.
You may f001 Crouch – apparently something rather easy to do given his lack of objectivity, but you really do not f001 anyone else.
Leastwise, anyone capable of thinking and remembering all the games you play.
And just so we’re clear, Les, I’m only trying to answer the question that you asked (“Why would a method claim need to include any structural limitations at all?”) and not any other question. If I misunderstood the question, feel free to clarify. Note that I’m also not suggesting that every process claim requires the recitation of a novel apparatus or structure in objective structural terms. I’m merely explaining why some process claims will run into issues without such recitation. Lastly, I humbly submit that a process claim that recites no physical structure whatsoever (new or old) should fall under 101 and almost surely will fall every time that the challenge under 101 is properly and repeatedly made.
“Note that I’m also not suggesting that every process claim requires the recitation of a novel apparatus or structure in objective structural terms.”
Ah, well, you usually do. So, you will have to excuse any confusion on my part.
” I’m merely explaining why some process claims will run into issues without such recitation.”
uh hu
“Lastly, I humbly submit that a process claim that recites no physical structure whatsoever (new or old) should fall under 101 and almost surely will fall every time that the challenge under 101 is properly and repeatedly made.”
There it is! …. in the space of two sentences.
You’re missing a critical point: there is a big difference between
a) insisting on the recitation of a novel structure or a novel apparatus in every process claim (an insistence that I have expressly disavowed already)
and
b) arguing that a process that fails to recite any physical structure whatsoever is very susceptible to attack under 101 as an ineligible abstraction.
“An insistence that I have expressly disavowed already”
Except for the fact that immediately after said disavowal, you reinsert that view as necessary to your “argument.”
You don’t get to have it AND expressly disavow it at the same time.
I appreciate the difference (the word novel).
But, it is your insistence that a process claim must recite physical structure with which I take issue.
That is absurd. Where in the statute are processes given this second class status. You don’t insist that an apparatus claim recite function do you? You are quite content are you not that an article of manufacture claim recites a list or parts and describe their interconnection or attachments without any mention of function are you not?
Why then must a process claim be limited to some hardware?
1. A process for the production of a stable pharmaceutical for oral administration that provides controlled released of a β-adrenergic blocker active component, which comprises
reacting 1 to 20 parts by weight of the β-adrenergic blocker in 100 parts of water with 0.001 to 10 parts of a polysaccharide to obtain a mixture, and
adjusting the pH of the mixture to between pH 2 and 4.5 with a buffer.
Abstract “reacting” and “adjusting”, structure free, claiming a result crapola right?
link to google.com
I suppose one could argue that reagents added from start to finish of the process and their proportions provide a sort of structural limitation on the process. One could assert that the process described is structured well beyond mere steps.
… as one could argue that operands added from start to finish of a process and weighting factors provide a sort of structural limitation on the process and as one could assert that a process for determining a particular piece of information from several inputs is structured well beyond mere steps.
JM: one could argue that reagents added from start to finish of the process and their proportions provide a sort of structural limitation on the process
The phrase “structural limitaions on the process” is a bit clunky. The important point that I was making is that a process that recites physical structures that are acted up on or which perform work on another structure are far more likely to be eligible than claims which fail to do so.
Les: one could assert that a process for determining a particular piece of information from several inputs is structured
Sentences have “structures”. Dreams have “structures”. Novels have “structure.” Arguments have “structure”. You can assert all those things but it’s not really relevant to patent law unless you are trying to drive a truck through the patent system.
Is pretending that one optional claim structure a de facto only “legal” claim structure like “driving a truck through the patent system?” Which “law” exactly are you using for your switcheroo? The “one” that mirrors your on-the-record statement that ALL software is per se ineligible?
Joachim the linguist is doing a “sort of”….?
Would you have preferred “a type of …” or “a genus of …”?
I wanted to make a comment, but I do not deal so much with patents or patent applications related to bucket chemistry or to pharmaceuticals and have not thought as much about the expression of structure in chemistry or pharmaceutical patent claims.
I will probably have to give more attention to patent applications in these areas as the number of linguistically incompetent examiners only seems to increase and the USPTO refuses to address the problem.
Anyway, my sentence was grammatically correct according to prescriptive grammar unlike the following sentences.
I sort of ate too much.
I was sort of sick to my stomach.
I can argue prescriptive, descriptive, synchronic, diachronic, transformational grammar, et alia. I have done a good amount of research in speech processing and computational grammar.
Written descriptions, patent claims, documents from the USPTO (including the MPEP) should all follow a prescriptive grammar defined in a MPEP subsection.
I have often wondered why this prescriptive grammar for “Patentese” does not exist.
It would be interesting to see if there is a correlation in the increase in method claims to the increase in software-related patents where the machine is a general purpose computer?
Another advantage of method claims is that they may be harder to attack on 112 “enablement” grounds than apparatus claims?
Paul, you already know the answer to that question.
“Another advantage of method claims is that they may be harder to attack on 112 “enablement” grounds than apparatus claims?”
This is actually a pretty big one. If I invent the first thing that can do X, I can’t claim “anything that does X” because I haven’t enabled that. But I HAVE enabled simply “doing X with a machine,” if the operator of the machine doesn’t need to know how it works.
Ken: If I invent the first thing that can do X, I can’t claim “anything that does X” because I haven’t enabled that. But I HAVE enabled simply “doing X with a machine,” if the operator of the machine doesn’t need to know how it works.
No, that’s not how it works (at least it hasn’t worked that way since the use of “machines” to carry out tasks has become a well-understood part of the prior art).
You have enabled “doing X with your machine and equivalents of your machine”. You have not enabled “doing X with any machine” just because you’ve described one machine.
MM, but note that I qualified it by saying that in this case the operator of the machine doesn’t need to know/care how it works inside. So in that kind of situation, the one who performs the method does essentially the same steps (to achieve X with a machine) and the machine is essentially a “black box” to him – so haven’t I actually enabled “doing X with any machine?”
Wrong.
If the invention is making X by mixing A and B, heating the mixture to above temp C and then sprinkling on D and allowing the result to cool to room temp, then I have invented that independent of any apparatus that might be used to do the mixing, to do the heating, to do the sprinkling and to do the cooling.
Sometimes the novelty can be in designing a machine that can accomplish something nobody has ever been able to make a machine do before (perhaps apart from whether it could be done without a machine…), in which case it’s a truly novel method to simply have a machine do it.
Ken, Huh?
Ken – Agreed.
Ken, per MM, consider Wyeth v. Stone discussed in Morse. That is exactly the kind of claim that was condemned by the Supreme Court — any machine effective to produce the novel result.
Ned, I see that point for devices but wouldn’t it be different for the method of using the device – if in fact the user is “neutral” as to the means (please see above)?
Ken, if we agree that a method comprises a novel combination of steps, then it is irrelevant what particular apparatus is disclosed.
But, a machine configured to achieve result X, where result X is novel, is not a claim to a method, but to a result. The fact that one says instead, a machine configured to do function X, does not change this. Both claims are claiming a result and not a method.
Claiming results effectively is claiming an invention in the abstract and has long been condemned by the Supreme Court.
“Ken, if we agree that a method comprises a novel combination of steps, then it is irrelevant what particular apparatus is disclosed.”
But Ned – what if my “example” apparatus is what first made the method possible, but the steps would not change if someone invented and substituted a different apparatus?
Say perhaps I invent the first time machine. I can’t claim ANY time machine, but can I claim a method of using any time machine – so long as the steps to use it remain the same?
Ken, a claim to a novel apparatus automatically claims all its uses.
A method claim must have two steps that are novel in combination to produce a new or improved result.
I am not sure what you are achieving by claiming a particular use of a novel machine as the claim would be patentable even if the use would be sticken from the claim.
Ned, I think what I get is a method claim that covers getting my result using any other apparatus – as long as the steps to use any such “other apparatus” are the same as the steps to use my initial apparatus.
Basically I can claim my apparatus, which as you rightly not also covers any use thereof, but doesn’t cover other kinds of machines. Conversely, my method of using it covers using any other kind of machine (with equivalent steps of such use), but doesn’t cover other purposes/uses of any machine.
Ken, so long as we agree that the method, not limited to a specific machine, is a novel combination of steps.
Ned ,
As long as you are aware of your own canard of “Point of Novelty” in the 101 sense (since in the 101 sense, it is the claim as a whole that matters), you might just escape from your own usual self-comfusion.
Ken: I can’t claim ANY time machine, but can I claim a method of using any time machine – so long as the steps to use it remain the same?
Hypotheticals with fantastical premises tend to quickly end up in the weeds so I am loathe to engage here. But consider:
1) You invent a machine that allows you travel back and forward through time. You claim your machine in objective structural terms.
2) In the same application, you claim a method of “using a machine” to “travel through time” comprising “instructing said time machine about desired time destination and initiating travel.”
3) Ten days after you file your application, your m0m files an application describing and claiming a completely different and separately patentable “time machine”.
You see what happens if your broad method claim is granted, right? You end up owning “time travel” in spite of having figured out just one way to achieve it (i.e., your specific machine which you claimed in objective structural terms).
But hey: hypothetically, at least, you did describe your innovative apparatus in structural detail. That’s more than can be said for the typical computer-implementer these days. And if we might carry the analogy a bit further, if your proposed reasoning is correct, both you and your m0m are going to be hamstrung in short order by a wave of claims describing a zillion different variations on “when” you can travel with your machine (e.g., “relative’s residence”) and what you do while you’re there (e.g., “modify will”). Fun times.
“And if we might carry the analogy a bit further, if your proposed reasoning is correct, both you and your m0m are going to be hamstrung in short order by a wave of claims describing a zillion different variations…”
Thanks MM, I think this is a fair point – and perhaps a reasonable balance of interests that would lead to comprises such as cross-licensing, etc.
A claim to a result Ned?
1. A process for the production of a stable pharmaceutical for oral administration that provides controlled released of a β-adrenergic blocker active component, which comprises
reacting 1 to 20 parts by weight of the β-adrenergic blocker in 100 parts of water with 0.001 to 10 parts of a polysaccharide to obtain a mixture, and
adjusting the pH of the mixture to between pH 2 and 4.5 with a buffer.
Les, I see two steps. Prima facie not to a result.
However, I am not told about novelty, so the final conclusion must wait.
Assume for the sake of argument that everything in the claim was old and old in combination but the PH resulting range, and spec disclosed that the adjusting step worked only if one used compound Z in a certain process.
1. I think the claim should be invalid under 112(b) even if the PH levels were not in the prior art.
What say you?
I think he wants to stick to 101 and patent eligibility as opposed to venture into other points of discussion and start talking patentability.
Just a hunch.
As I thought the bolding, which I added at great effort, made clear, I see (through your eyes) two “steps” each directed to a result,
… obtain a mixture and ….get to a PH, those results obtained through abstract “reacting” and “adjusting”.
no different in form from say:
filtering to get a filtered signal and amplifying to get the desired volume level.
“Process” can mean virtually any identifiable acts that human beings are capable of. ISTM that virtually every problem in the patent system could be heavily mitigated if “process” was interpreted to require a physical, mechanical, or nuclear change in matter. Patents are for things, not ideas.
Using a devilishly complex and expensive legal regime to litigate ownership if ideas is a fool’s errand, and all of the predictable results of doing it have come to pass…..
” Patents are for things”
No. Patents are for Processes, machines, manufactures and compositions of matter.
mmmm machines, manufactures and compositions of matter all seem to have something in common, don’t they? Something that “processes” should share.
What could that be?
Its a statute, not a game of “one of these things is not like the others.”
It’s an ambiguous statue whose interpretation fills half this blog, creates strings of controversial Supreme Court and Fed Circuit cases, and is the locus of a very great amount of the patent litigation abuse we have seen. In interpreting ambiguous statues, “this one is not like the other” is often a most useful analytic approach.
Martin, may I say that the Supreme Court’s interpretation in Bilski was dramatically wrong.
Why?
Business methods are not statutory processes and that should have been the holding of the court. (That is what the dissent argued.)
Instead we have the so-called judicial exceptions overriding a statutory command. Now THAT, IMHO is a violation of the separation of powers.
At some point, Bilski must be reconsidered. Until then, I do have a lot of sympathy for those who think the Supreme Court went too far in Bilski.
As much as I dislike per se software and method patents, there is merit in the Bilski’s court’s statement that Section 101’s terms suggest that new technologies may call for new inquiries..
And yet….
In 100(b) process is further defined as an art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. But 100(b) is a near tautology; a process is defined to include a new use of itself. The term “art” can reasonably be meant to encompass only the patentable arts, absent any legislative history suggesting otherwise, and “method” is a mere synonym.
Finding that a “process” requires a physical, nuclear, or chemical change because the other three categories require it is not exactly classic noscitur a sociis- its more like a negative image since one item stands out from the others. The Bilski court likely too blithely dismissed the obvious negative relationship.
I have thought and thought on this subject. I’ve landed on something that may satisfy both sides of this argument- a way to define “process” that avoids patenting ideas but does not preventing patenting certain novel and useful software, biomedical, and other “abstract” solutions.
Maybe the Professor would let me guest post one day about it…