USPTO Seeks Further Public Input on Patent Subject Matter Eligibility

From the USPTO: The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that as part of its effort to solicit input from the public regarding the legal contours of patent subject matter eligibility, it will be holding two roundtables, one in November and one in December.

“In recent years, the jurisprudence on the very basic issue of what is patent eligible subject matter has been evolving requiring adjustments by innovators, businesses, lower courts and administrative agencies such as the USPTO,” said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Michelle K. Lee. “Our goal is to minimize any uncertainty in the patent system by ensuring  we not only continue to apply the statute and case law in this area as faithfully as possible, but also understand the impact of the jurisprudence on innovation by assessing what, if any, changes might be helpful to further support innovation.”

In a notice published today in the Federal Register, the USPTO announced that it will begin a nationwide conversation on patent eligible subject matter through two roundtable discussions. The first roundtable will be held November 14, 2016, at the USPTO headquarters in Alexandria, Virginia. This roundtable will focus on the USPTO’s continuing efforts to seek input from across the country and across industries on how the USPTO can improve the agency’s subject matter eligibility guidance and training examples. To facilitate a broader legal discussion on the contours of patentable subject matter, the USPTO will host a second roundtable on December 5, 2016, at Stanford University in Stanford, California. Through the power of USPTO’s nationwide footprint, each of our regional offices will also participate in both roundtables, enabling individuals and industries from around the country to share their perspectives at a location closest to them, in addition to written submissions.

Together, these roundtables will help facilitate discussion on patent subject matter eligibility in view of several decisions in recent years by the courts. If you wish to attend or participate in a roundtable, please see the Federal Register notice to learn more. You may also visit the USPTO’s Events Page.

Stay current with the USPTO by subscribing to receive e-mail updates. Visit our Subscription Center at www.uspto.gov/subscribe.

139 thoughts on “USPTO Seeks Further Public Input on Patent Subject Matter Eligibility

  1. Commonly patents are seen as a reward for an effort, for making valuable knowledge available. Economists refer to the “positive extrenalities” of inventions. This perception prohibits a sound delimitation of patentable subject-matter.
    Patents must be seen as the exception to the rule of freedom of competition and the associated freedom of ideas that is the core of western society.
    Patents strem from the “privileges” granted by souvereigns long ago. As early as 1624, the Englush government acknowledged an excessive proliferation of these privileges.
    This perception is actually reflected in the present statute, that allows only subject-matter to be patented that can be described in such a way that any PHOSITA can carry it out (Section 112). This provision does not replace 101, but subject-matter that can not be described in the required way can not be patentable in the first place. This approach is known in literature.
    The logic is that only for this kind of subject-matter legal protection is needed as a restriction to the fundamental freedom of competition, in order to prevent destructuive competition.

  2. including machines made new by new configurations of known components including software or programming based new configurations

    Are you guys going to start claiming these “configurations” the way grown-ups have been claiming new compositions and articles since forever?

    Of course you’re not.

    1. Grown ups…?

      Do grown ups constantly pretend that one optional form of claim drafting is somehow more than just an option?

      1. …maybe certain sAmeone “grown-ups” will “respond” with a “that’s nice” or “so deep,” and not answer the direct and simple to understand, on point question here…

        And then turn around and use the dissembling trick right away again…

  3. I hope I will be forgiven for saying that much Section 101 comment up to now has been dire, and suggests that many practitioners remember little that they learned at law school.

    In early 2014 the USPTO published eligibility guidelines which gave rise to a storm of comment. A seminar was held at the USPTO and broadcast online, at the conclusion of which Drew Hirshfeld asked for detained comments on the guidelines and specially emphasized the need for additional examples which might be useful in preparing training materials.

    The comments that I filed can be downloaded from

    link to uspto.gov

    In addition to twelve pages of comment suggesting an alternative approach I created six detailed examples analysed in accordance with the principles set out in the guidance but showing how allowable subject matter could be identified in a range of life sciences inventions including a purified medicament which was a natural product, a DNA sequence which was a plasmid isolated from a bacterium, Louis Pasteur’s purified yeast which was noted by the Supreme Court in Chakrabarty, gunpowder as a combination of natural products, an expanded claim set based on the fact pattern in Funk Brothers v Kalo. In each case the example was referred to the corresponding issued US patent or judicial decision.

    Of the more than 60 other comments filed, only ONE included the additional examples requested by Drew Hirshfeld, and only a minority contained detailed and useful analysis.

    I have repeatedly urged that in trying to improve 101 analysis, we should not simply shoot off our prejudices, but should carefully and systematically study the relevant decisions, identify the rules of law relied on and then look for the ways in which eligible subject matter can be identified and we can improve our patent drafting. What Michelle Lee needs is not just a set of ego-trips but helpful and thoughtful analysis and proposals which point towards a better and more practical way forward.

    The omens are not good, but we should try to meet the challenge.

    1. Paul,

      Your efforts are noteworthy – but see post 1.

      This simply is not the job of the executive (nor the judicial) branch.

        1. It is if that attempt ot find prevents the Legislature from doing what they need to do (as well as “validates” a wayward judiciary).

          1. The legislature will act about the time that the first flock of flying penguins passes Congress. For those who have not seen it, the BBC/Terry Jones April 1 film is a must:

            link to youtube.com.

            Finding an agreed position and passing it into law is a difficult proposition – it has been suggested at AIPLA meetings for about 4 years now. Until then there is no alternative but to make the most of the statute we have and pick our way through the judicial opinions.

            1. Paul,

              Regardless of how inept the legislature may be, our sovereign has set up the power to write the statutory law to be contained only within a single branch.

              Your “Ends” may be laudable – but the “Means” very much matters.

              1. Until then there is no alternative but to make the most of the statute we have and pick our way through the judicial opinions.

                Oh, there’s certainly another alternative, Paul.

                But Dennis doesn’t want me to talk about it in frank terms.

                So I’ll just give you a hint: it’s where you just puff yourself up, pretend that you’re The Most Important Person Ever, and, and complain 24-7 about the end of technological progress, the end of the “rule of law”, and the loss of some rich people’s “freedom”. I could give you some specific examples of prominent folks elsewhere on the Internets who love this alternative but I’m sure you can find them yourself

                And, no, it doesn’t work that well. But the folks who practice the alternative seem to love it anyway.

                [shrugs]

                1. But Dennis doesn’t want me to talk about it in frank terms.

                  You are misunderstanding what Prof. Crouch wants from you.

                  But please, go ahead with the usual and blame someone else for your errors.

    2. Paul, well said. Going back to Diehr, how it would be decided today? We don’t know, do we? Thinking further, (prompted by Les and his “no clothes” comment at 12.2) I imagined a machine for cutting pieces of very expensive cloth from a roll of said cloth, in huge numbers of pieces of individual size, to meet hundreds of orders for made-to measure suits for men. Of course, the warp and weft of the cloth has to aligned right, relative to the length direction of each cloth piece.

      Suppose my client owns a computer program that instructs the machine in such a way that it uses cloth more efficiently, with less wasted cloth than hitherto.

      How to claim it? Is it eligible? Is it math or is it technical? Is there a Worked Example in the EPO Guidelines for Examination, that might give a clue how the EPO Boards of Appeal would assess it? How about the USPTO?

        1. Yes, and applying computer systems to do this is simply applying computer systems to a system that could be done by hand or “simply implementing a mathematical principle on a physical machine, namely a computer, [i]s not a patentable application of that principle.”

          Diehr under the current Alice rules would also go down in flames.

          1. And yet, the Supreme Court so recently stated that >I>Diehr was a “most on point case” and that the Court was expressly NOT CHANGING anything about “Diehr.

            Clearly, the Supreme Court is wrong – one way or another (or both).

      1. An auto suit system where in the suit layout algorithm has been sustituited by the following new suit layout algorithm… (give algorithm.)

        ‘Suit layout algorithm’ would be a term of art. Mention Diehr to the examiner.

      2. Eligible in my scheme, because its a new, useful, assumed non-obvious method that results in information which is consumed by a non-human actor (the cutting equipment). MM, it can be non-obvious if the method is more than just geometry – perhaps it includes algos specific to the cutting equipment or properties of the cloth etc.

        1. Doesn’t matter to eligibility then, Martin, that the problem to solve is nothing more than math, that the problem to be solved has nothing to do with cloth handling or tailoring, that the only expertise the inventor needed was skill in math?

          1. No Max, that matters to patentability, not eligibility.

            Eligibility should be about the kinds of inventions that may be patented. Patentability should be about whether a specific invention can be patented.

            If the invention only teaches geometry, it has fails to meet the written description requirement that a patent teaches an invention, or it’s in the prior art and so lacks novelty, or the application of the prior art to the problem would be easily within the actions of a PHOSITA.

            1. Martin your comment prompted my 12.3.4 below.

              To be honest, I don’t understand your thinking when “the invention only teaches geometry”. But at least we agree that, if that is all there is, your “invention” is one that is not fit to patent.

              You would strike it under 112 , for want of “written description” but if I were the court I would have already taken it out, under under 101.

        2. So, the very same invention is made ineligible if instead the cutting information is provided to a human worker and the human worker makes the cuts manually?

          So, insignificant post solution activity is the deciding factor?

          1. Les, how is the information “provided”?

            Is it output as a pattern? Computer voice directions suggesting “colder, warmer” as the scissors move?

            Because then you have a blueprint, and we don’t patent blueprints.

            1. Shrug, does it make a difference? The claim would be to a method of cutting, not to a blue print…. but yes, one dependent claim might be to a dimensioned drawing on a display screen, another might be to a printed pattern to be attached to the cloth, another might be to some sort of lazer projection of the pattern on the cloth.

              But your point is my point. You said it was eligible when a machine was doing the cutting and you say it is not eligible when a person does the cutting even though the cutting is insignificant post solution activity.

              IMHO, since your rules would lead to this result, your rules are not appropriate.

              1. To the contrary: a person using information where the information is the inventive result of a method is not trivial post-solution activity. Human use of information is automatically 100% abstract and impossible to fairly value.

                If a non-human can make patentable use of the information, than have at it. Furthermore, in my scheme, the invention has to be construed anyway as a method that results in information.

                The result of the example patent may well be construed to be the physical change in the cut cloth, in which case the eligibility is handled that way.

                Max to your point about which PHOSITA is pertinent: that too must be construed when the result of the method is construed.

                Clearly a procedural step akin to Markman is needed that does not foreclose summary judgement later, but does bound and construe what the invention is when the statutory class of patent is a method. This is where Alice should be applied and the bounds of the allowed invalidity defenses established.

                1. “The result of the example patent may well be construed to be the physical change in the cut cloth, in which case the eligibility is handled that way. ”

                  I’m not sure I followed you there Martin. Did you concede that even under your system, a method that reads on, or literally calls for, a process that provides information to a human that then uses the information to complete a process would be patent eligible?

                  “To the contrary: a person using information where the information is the inventive result of a method is not trivial post-solution activity. Human use of information is automatically 100% abstract and impossible to fairly value. ”

                  Human use of information is abstract? No. Human use of information is very very real. Anyway, even if a human using information were abstract, thats just one part of Max’s claim. It does not contaminate the claim as a whole.

                2. Good question Les.

                  Part of Mr. Snyder’s difficulty comes with the fact that ALL utility has a nexus with the human mind in way, shape, or manner.

                  It is only when something is TOTALLY in the mind that his “version” comes close at all to the reality of the law.

                3. Human use of information is 100% abstract.

                  Utility is not a mental construct. If a gear meshes with another gear and thus transmits power, that is a real change in the world regardless of how anyone around to use the transmitted power feels about it.

                  Furthermore, patented devices can have lots of internal utility that does not create the final utility of the invention. All means plus function elements contribute utility without that utility being a specific component of the result.

                  Use of information by a person as a method step is not a problem in my scheme. What matters is the result of the method at its conclusion.

                4. You are still confusing yourself Mr. Snyder on what utility within the patent laws cover.

                  As I noted, the distinction is that which is TOTALLY within the mind is off limits. Patent law fully allows some mental steps within a claim – when the claim is taken as a whole.

                  Re read our past discussions on those things outside of the mind (for example, why optical illusions exist – more nerve endings in the eye than can be accommodated on the neural path to the mind).

                  You continue to seek to impose your fantasy on an area of law that you clench tight your eyes to because you merely feel that you want a different system (and your feelings remain heavily biased by your own personal “tragedy”).

                5. anon you are like a radio with no knobs. My ‘tragedy”is nothing of the sort – I’m radicalized on patents by several experiences and large ongoing expenses due to the still broken system. Let’s remind ourselves I am a real person working at a real company, while who knows what you are.

                  As to utility, as usual, you cite no law or case or even a coherent position other than someone is wrong about something.

                  I assert that method patents need to have a construed result to determine eligibility and patentability, unlike the other three statutory categories, where the invention is described in terms of structure.

                  The results of use, beyond bare utility, are not pertinent for new or improved machines, manufactures, and compositions of matter but they must be for a method, because method without intent cannot exist and the invention must be related to that intention.

                  I believe the word abstract literally means to be consumed in a human mind. A ban on abstract ideas means a ban on information used by human minds. It’s very, very straightforward.

                  As to the journey between fantasy and reality: that takes work, and I’m going to work any enterprise that moves the needle, while you work at nothing but these pages so far as anyone knows.

                6. Martin –

                  The process associated with television transmission ends with the displayed video and transduced audio information being useful only in the human mind.

                  Is a claim to that process, for that purpose and which would recite rasterization of video and modulation and demodulation of a carrier to carry both the audio and color video, not recite something “useful” and/or would the claim be to an abstract idea?

      3. OK? No more thoughts? So now let’s add some technology to the pure math (4 colour mapping problem, travelling salesman problem, whatever).

        Your contribution to the art is the discovery (say) that the closest tolerable approach of two laser cut lines in woven woollen cloth depends on i) the angle between the threads and the cut line ii) the number of threads per inch iii) the number of individual fibres in each thread and iv) the average fibre diameter. Otherwise, suit quality is prejudiced. Your program always will allow any two adjacent laser lines as close as this discovered relationship will allow, but never any closer. You get more cut pieces out of a bale of cloth than anybody else can, thanks to your invention.

        Who is the inventor now? The guy who wrote the code or the guy who discovered the relationship?

        And if it is the relationship that is the patentable invention, is it a software invention at all?

        And if there is no such technology, no such relationship, but only math, is there any “contribution” and “promoting of the progress” within the ambit of the “useful arts”?

      4. The claim in Diehr was directed to a method of operating a rubber-molding press for precision molded compounds, and mentioned an interval timer for monitoring the time of press closure, constantly determining temperature and when so indicated opening the press automatically. Although a computer was involved there were many real world human activities. So I think that the outcome would be similar today.

        It is difficult to understand why the USPTO did not rely on 103 rather than 101. I cannot remember whether I was aged 14 or 15 when we covered the Arrhenius equation in our school chemistry course. However, lack of inventive step was not the objection pursued.

        On the cloth example, it is a question whether there is insight into how to cut the cloth more efficiently and whether that insight can be expressed as a sequence of method steps. I am, however, less impressed with an abstract piece of software than a method of cutting cloth.

        1. Mr. Cole, you are being a bit Polly Anna again.

          How many lower court cases do you need to read to see that your version (as careful and as thoughtful as it may be) is just not the version that the courts are using.

          The problem of course is that the Supreme Court simply writ too large.

          I “get” that you want to apply what the Court has written in a more minimalistic manner, but that is just your view, which as it pains me to say, “I told you so,” is just not how the real world is using those Court decisions.

          1. Probably because the profession has not briefed the court properly and given the needed interpretations. These things do not come out of the air – the judges act on the evidence and the arguments of counsel. If the correct case is not made out and the authorities are not explained in the appropriate manner, it is unreasonable to expect the judges (most of whom have not spent their working lives in our specialised field) to make up the deficiency.

            I am not Pollyanna. I advocate careful analysis and hard work. If matters are to improve, that must be as a result of the combined efforts of the prosecution and the litigation specialisms of our profession.

            1. By “Polly Anna,” I do NOT mean that you are not careful, considerate or thoughtful in your deliberations.

              You most certainly are.

              But your thought and care are just not in line with what is really happening.

              You seem unaware of that disconnect.

              (You should probably realize that there are indeed forces desiring the results coming from the less than critical care. This is not an oops of counsel.

              1. …and let me add, the Justices (and judges who are just in the downward path of flow) are – or should be – fully aware of the situation. This is just not a “they aren’t briefed well enough” situation.

    3. I took a very quick look at your comments you submitted to the PTO.

      It is absurd to say that isolating a portion of a DNA molecule does not add functionality. Of course it does. It adds at least the functionality of being able to use that portion of the molecule without the entire molecule interfering with the chemical reactions. It also add the functionality of being able to test for a specific condition with the isolated portion of the DNA.

      1. It entirely depends on what you have isolated.

        A region of bacterial DNA yes, since it is readily insertable into other organisms and can produce products of marketable significance.

        You will find that one of my examples is precisely that.

        But BRCA1 I am very doubtful. Do you mean just one strand? It is too big to amplify, as I understand it. And it can only fall into “manufacture” for which you need new form and new utility. The Supreme Court did not buy into that, and on the particular facts of that case I do not blame them.

  4. MM yaps: Again: if you want to have a “discussion about “what people make” and “what people seek patents on”, then go have it in a first grade classroom where that discussion belongs. This a patent blog, administered by a pretty sharp law professor. I’m an attorney with a Ph.D. and many many years of experience litigating and prosecuting patents. On top of that, there’s a great chance that I was programming computers before you were born. My name has appeared in articles in the best science journals with some of the best computer modelling scientists in the world. You get the picture?

    Was all this before or after you became a paid blogger? The only thing we know about you for sure is that for 11 years you have spent 40+ hours per week blogging. You are likely one of the policy setters and blogger.

    I think you have ethical problems stating you are an attorney without qualifying all your remarks regarding 101 with the fact that you are part of P.R. of an organization funded by Google and others.

  5. Ben: The problem with software patents is not some vague relationship to logic. It’s that they claim results rather than meaningfully defined methods. I don’t know how to define that threshold, but I think it starts with removing the CCPA’s near exemption from 112-1st for software.

    Several responses to this:

    1) The relationship between instructions for a computer and logic is not “vague” at all. That’s why we already have a substantial body of solid case law that says you can’t take ineligible data-processing logic and turn it into eligible logic by reciting “do it on a computer.”

    2) The shunting of logic into our patent system is just one of the problems with software patents. It’s hardly the only one! But it’s a major one and it’s the cause of predictable downstream problems.

    3) Functional claiming is also a huge problem. Everybody knows this. But in case you haven’t noticed, the super vociferous s0ftie w0ftie patent defenders who show up here insist on functional claiming as some kind of divine right.

    4) You write “I don’t know how to define that threshold”. And I’m not surprised. You’re trying to define a threshold where a “new” data processing operation (logic) becomes tied to some “new” distinct and objective physical structure. That’s impossible to do unless the claim is limited to a specified machine (and I mean specified, not just some old box capable of receiving instructions).

    1. Of course, the machine that is processing information may be represented by logic. My chair can be represented by static equations.

      The fact is that all inventions can be represented by mathematical models.

      So, —again—you are playing off the ignorance of the stacked Fed. Cir. and people like Obama that are just happy to continue to have the Google money flow into their coffers.

    2. MM 3) Functional ….

      The fact is that Mark Lemley’s paper on functional claiming is unethical. The cites do support what he claims they do. Moreover, he intentionally misrepresents claiming in the past. Additionally, by omission leaves off that technical fields expressly say they use functional statements to represent all known solutions. The fact is that Mark Lemley should be censured–at the very least. And, the fact is that Lemley putting down his rhetoric in a “law journal” with no review is vanity publishing.

      Moreover, scope of enablement is the proper way to think about this.

      The fact is all these problems are being caused by the anti-patent people continuing to put out scientifically and legally inaccurate and false statements which has so obfuscated the issues that no consistently body of law can be created. Moreover, Obama’s selecting Fed. Cir. judges based on Google’s “recommendation” has given us a group of judges that have no basis to understand inventions or science.

      Of course, MM, you know all that and are paid to keep it going.

    3. Claims to machine-based logic have been around since the beginning of the patent system. Your dogmatic singling-out of one of the building blocks of science and industry is bizarre.

      1. Claims to machine-based logic have been around since the beginning of the patent system.

        I’d love to know what you have in mind, specifically.

        one of the building blocks of science and industry

        Thanks for the admission.

        1. LOL – that “admission” is just like saying that protons, neutrons and electrons are building blocks.

          Exactly like that.

          Your grasp of the Big Box put down seems to be purposefully obtuse.

  6. Gomer Pyle: How does the software change the physical functioning of the vehicle’s engine? Hopscotch pattern of reduced fuel provision to varying cylinders or some such? Claim that method, assuming it’s new/inventive.

    This is good advice, folks.

    But it’s not going to make the s0ftie w0ftie crowd happy. After all, if you’ve got a new and non-obvious physically transformative method for fuel injection or combustion, then everybody knows that you should just claim that method straight up.

    Adding an additional “computer controls this” limitation doesn’t “automatically” make that claim ineligible, of course. But it also doesn’t limit the claim in a meaningful way (except to create a possible “out” for an infringer). That’s because everybody knows — and has known for a long, long, long time — that computers can be used to “control” any patent eligible, controllable process that you can imagine.*

    *the PTO, of course, still struggling with this for super mysterious reasons

    1. I’m 100% certain of two things:

      1) The “it’s an improved machine!” crowd will be adequately represented by multiple dozens of “expert” software patent attorneys who never saw a software patent they couldn’t defend

      2) The fact that this blog is relentlessly tr0lled by people who do nothing except whine about how their favorite patents aren’t getting granted (because there’s a shortage! and because there’s no place else to whine about that!) has zero relation to quality of suggestions that the PTO will receive

      Lastly, the PTO isn’t interested in “realistic suggestions” about anything. They just know that it’s time to coddle their favorite stakeholders because the CAFC published a cr@p decision that those stakeholders are going to treat like the Holy Grail.

      Thank you for the comment.

  7. “Our goal is to minimize any uncertainty in the patent system by ensuring we not only continue to apply the statute and case law in this area as faithfully as possible, but also understand the impact of the jurisprudence on innovation by assessing what, if any, changes might be helpful to further support innovation.”

    In addition to the suggestion at 5.0, lobby for the amendment of 35 USC 101 to read:

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, including machines made new by new configurations of known components including software or programming based new configurations, may obtain a patent therefor, subject to the conditions and requirements of this title.

    1. That is belt and suspenders, as in truth, no change to 101 is required.

      101 was written to be forward looking and inclusive – as it so needs to be because innovation itself is not (and cannot be) known a priori.

      Instead of changing the words of Congress, we need for Congress to exercise its Constitutional power of jurisdiction str1pp1ng and remove the non-original jurisdiction of patent appeals from the Supreme Court and in place of the now brow-beaten and corrupted CAFC, institute a new Article III patent court that will fulfill the Congressional mandate of bringing clarity (and yes, read that as bright line rules) to patent law.

      Thus, would the actual holding of Marburg be upheld, and the scrivining of the Supremes would be curtailed.

      1. anon, Congress has already removed all appellate jurisdiction from the Supreme Court. AFAIK, no one has a right to appeal to the Supreme Court.

        1. Congress can do more Ned – you know exactly what I am talking about.

          The jurisdiction stripping power of Congress should be used to prevent the Supremes from taking patent appeals (not JUST any such “right” to an appeal to the High court – we both know that such is not there).

        2. anon, Congress does not have the power to strip the Supreme Court of its inherent power to review the judgments of both US and State courts to the extent they involve interpretations of the constitution and laws of the United States.

          1. Ned.

            Patent appeals are simply not a matter of original jurisdiction for the Supreme Court.

            Your view cannot be correct as it makes a nullity of the Congressional power provided by the Constitution.

            1. Ned,

              Given how all-inclusive you would make the “original jurisdiction” of the Supreme Court to be, what exactly do you think the Constitutional power of jurisdiction str1pp1ng – a power expressly given to the legislature as part of the checks and balances of the three branch system – what do you think that THAT power means?

              1. And you have not answered my direct question as to what it means for Congress to have the Constitutional power of jurisdiction str1pp1ng with your expansive view of what the Supreme Court has power over.

                Clearly, your lack is the much more damaging one.

                Please fill in the gaping void in your argument.

      2. The problem with this is that Congress cannot overrule what it cannot understand. When the SC came out with the rule that one could not use a MPF at the point of novelty, that was clear. So, Congress overruled that with 35 USC 112 para 6. With Alice, since no one knows what is or is not patentable, Congree can’t overrule it. It’s incomprehensible to begin with, so there’s really nothing to overrule.

        The SC (and the CAFC) is (are) doing a disservice to the patent field, not only by having 101 jurisprudence change many times in the last 10+ years (I remember at least four different sets of rules), but also by creating rules that are nonsensical.

        1. PatentBob,

          What you say is just not true.

          Congress can explicitly repudiate the decision itself.

          Better yet (but won’t happen) is that the Court repudiates it itself by recognizing that it stepped over its own bounds, violating the separation of powers by writing statutory law, and then repudiates its own written law as Void for Vagueness.

  8. A common position held by some commentators on this blog is that any patent drawn to tasks performed by a “general purpose” computer is ineligible for patenting. This extreme position effectively does away with the second prong of the Alice test. Assuming that my characterization of their position is accurate (which it may be overstated?), do these same commentators believe that there is no worthy innovation left within the sub-fields of: (1) accelerating the delivery of content to end users over a network using a server computer, (2) enabling augmented or virtual reality to be supported on end-user computers, (3) improving engine efficiency or operation in a vehicle using an on-board computer? Do people believe these technologies should not be patentable in view of Alice or some other logic?

    1. These are not hypothetical examples. Say, for example, that a person discovers that engine efficiency can be improved by 1% across all vehicles produced by the manufacturer by a simple software update to the on-board computer performed by the dealership. No new parts are required. Is this worthy of a patent in view of Sect. 101? I think it is, but Alice or some more extreme view of computer/software ineligibility would suggest otherwise.

      1. To answer the question in terms of “how I wish the patent world to be” (which I think is what you’re asking):

        How does the software change the physical functioning of the vehicle’s engine? Hopscotch pattern of reduced fuel provision to varying cylinders or some such? Claim that method, assuming it’s new/inventive.

        I mean, you posed it as “a simple software update to the on-board computer”, but if it does not cause some physical effect in the manner in which the engine functions, there should be no fuel saving, right? So, claim what the method actually does.

        Not eligible: If the claim simply recites the function – that the software controls the computer and directs it to save fuel – which is what a lot of software claims look like to me. (pretend claim: “A method for reducing vehicular fuel consumption, comprising, monitoring, by a monitoring monitor, vehicular engine load events; identifying, by the monitoring monitor, a state of the engine load events amenable to fuel consumption management; and sending, by the monitoring monitor, feedback instructions to dynamically determine appropriate fuel consumption levels, thereby reducing vehicular fuel consumption.”)

    2. None of that stuff you mentioned belongs in our patent system.

      We can have all kinds of nice shiny things without junky patents on “new logic”. It’s true! People will continue to write better software — and tons of it! — without junky software patents.

      Also, you forgot to mention improved bingo management and more lifelike cartoon bird beaks in your list of super awesome stuff that nobody will make if we don’t have junky software patents. Why did you leave that stuff out?

        1. Who appointed you “D1ctator of what is allowed”…?

          LOL

          Nobody. I’m expressing my views.

          Heck, if was the dictator you’d be polishing more than just Gene’s shoes.

      1. Thank you for your honest response. I respectfully disagree with you that objectively, measurable improvements (improving efficiency, speed, power, safety, etc.) to the functioning of machines should be patent ineligible within the U.S. To deny patenting for inventions and discoveries that actually improve the functioning of machines seems to negate the entire point of the patent system in my mind.

        I think that the concept of the software update is the best launching point for this entire eligibility conversation since it (1) essentially admits that the machine is already in existence, (2) that the software update augments the machine only by way of changing its instructions, and (3) has the ability to cause an objective, measurable improvement in the functioning of the machine, whether it be a coffee maker, vehicle, or my smart phone.

        1. I respectfully disagree with you that objectively, measurable improvements (improving efficiency, speed, power, safety, etc.) to the functioning of machines should be patent ineligible within the U.S.

          We’re talking about programs for programmable computers. Try to stay focused! I know it’s really really really difficult for you guys.

          Your broad proposition, by the way, has been dead and buried with a zillion nailes in the coffin for the entire existence of every patent system on earth. Want an easy example that takes two seconds to think about (try this before you type next time): a machine whose safety is improved by placing a warning label on the machine.

          “Causing objective improvements to an existing machine” is never going to be an acceptable test for subject matter eligibility.

          As for “changing the instructions”, I appreciate the admission that software is instructions for an instructable computer. I look forward to seeing you correct “anon” next time he denies this essential fact.

          For the record, “instructions” aren’t eligible subject matter. I know you don’t see them listed in 101 because they aren’t there. But isntructions are hugely important! Society would grind to a halt without instructions and rules. They’re the basic and fundamental building blocks for any society. Communicating them and improving up on them is one of the reasons we have the First Amendment. Thanks, Framers!

          Are you starting to get the picture? Learn to say goodbye to software patents.

            1. Hey, if you want to discuss the issue, then discuss the issue.

              Discuss it directly. The serious controversy isn’t about the eligibility of “machines” or “processes.” There’s no reason that you can’t prohibit patents that protect software (directly or indirectly) and still have a vibrant healthy patent system and plenty of progress promotion. There’s also no real controversy (except in few tiny corners of the blogosphere) over the fact that some software patents should absolutely not be eligible for reasons that are so obvious they’re not worth discussing (unless you want to also discuss patenting “new books” based on the “new information” stored in them).

              The first real controversy is whether any new software should be protectable — directly or indirectly — with patents, period. Many people believe that the best answer is “no.” I belong to that camp and I’ve justified my views here for years by presenting a combiation of legal and policy arguments very similar to those presented by Judge Mayer in his recent concurrence.

              The second set of issues is, if you are absolutely unwilling to abide what seems to me to be an obvious ending to this story — i.e., no software protection in our patent system — then the question is exactly what do you want to protect and what rules do you want enacted to ensure that protection is provided fairly. You absolutely can’t ignore escape the fact that information and logic are different from what our patent system was designed to protect. If you want some kind of patent protection for logic, there has to systemic changes, from the ground up, in how these types of claims are presented for examination, and how they are enforced. Without that, we are left with judges and a PTO trying to lasso a rampaging elephant without ever seeming to acknowledge that their using a five inch long piece of dental floss. What we end up then — and what we have ended up with — is a mile-high disaster of junk. Sadly, the mountain of junk takes the focus off the bigger issue which is how did this disaster occur and how to put an end to it.

              Then you have to fold in the fact that there is this group of patent attorneys out there who are very deeply and personally invested (financially) in keeping the gravy flowing, regardless of the consequences to the credibility and functioning of the system as a whole.

              These are the issues. If you want to attack strawmen about “machines” and “processes”, then go ahead. That’s ultimately a l0sing game for you (not speaking of “you” personally, but “you” as in “person who wants some software patent protection”). Either you’ve noticed this already (assuming you’re capable of noticing anything — again, not “you” personally) or you simply don’t care because all you want is to borrow time.

              1. MM – none of the examples that I provided are “strawmen” as you note. These are actual examples of both real-world innovations and things people seek patents on. It seems like we should be discussing this very issue considering that virtually all machines that are controlled by on-board programmable electronics fall within the purview of this Sect. 101 debate. At the end of the day, my view is that improving the functioning of a machine in an objective, measurable way is deserving of a patent in view of Sect. 101 subject matter eligibility. Nowhere in my posts do advocate for the ability to claim software or instructions in their naked form. However, there should be some mode by which these actual improvements to the functioning of the machine can be protected by patent, particularly where the result is an objective improvement (not better deal making). I think this is where we primarily differ. You do not believe that even objective, measurable improvements to the functioning of machines should be patentable if the machine is controlled by programmable logic. With regards to strawmen, you were the one that brought up the bingo machine. I was discussing real-world issues that actually exist, such as improving engine efficiency by updating the logic implemented on-board the vehicle.

              2. According to Malcolm, machines and processes are “straw men.”

                Never mind that they are statutory categories “Folks,” Malcolm has decreed them to be “straw men.”

                Just wow.

          1. Programs for programmable computers…

            There’s that Big Box of protons, neutrons and electrons “logic” again…

            Tell me again about this part of 101 that says something like “or any improvement thereof”…

            Then revisit the inherency doctrine and see if you can find all those improvements by way of the manufacture known as software “already in there” in your [Old Box].

            Then realize that since you never seem to want to address theses counter points, they wait for you every time you try to dissemble as if they did not exist.

          2. “For the record, “instructions” aren’t eligible subject matter. I know you don’t see them listed in 101 because they aren’t there.”

            Maybe not. But MACHINES that incorporate and operate based on instructions ARE listed there. If a 1% engine efficiency can be achieved by a butterfly valve plate shape change, that is patent-able.

            Likewise, the same physical effect achieved by a change in fuel injector control in an engine that does not have a corroborator wherein the change is provided by a reconfiguration of software is also patent-able. In fact, disclosed and claimed properly, they both might be covered by the same claim.

            1. Manufactures are there as well.

              Ask Malcolm about his past admission against interests as to knowing and understanding the exceptions to the judicial doctrine of printed matter (which as he knows to be controlling law, dictates that software IS a manufacture, as that legal term is understood. Then ask him if the ethics of advocacy permit him to advocate in a purposefully misleading manner.)

              Opinion is one thing.

              Wanting to change the law is one thing.

              Dissembling as to what IS the law is quite another.

            2. MACHINES that incorporate and operate based on instructions ARE listed there

              LOL

              So, too, are book MANUFACTURES that incorporate NEW USEFUL information.

              Any time you want to have a gr0wn up discussion about software patents, Les, just let everyone know. Of course, if you and “anon” just want to sit in the bathtub with your rubber ducks and cr@zy foam and play born yesterday, you’re welcome to do that, too.

          3. Gottshalk v. Benson, 409 U.S. 63, 71 (1972) “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold…. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose.”

      2. You do realize that “processors” (or things like them, such as programmable logic devices, VLSI circuits, embedded logic/circuits, real-time processors, DSPs, etc.) run anything with electricity, correct? You can’t get to work (assuming you actually do “work”) without them. You won’t have heat or cooling without them. You couldn’t — gasp! — get on websites like this one without them. When they implant that pacemaker in you, it’s a processor. When you prick your finger to take blood to determine your blood sugar, it’s a processor that allows you to do that. You couldn’t listen to music, watch TV/DVDs/YouTube/Blurays, call anyone, know the time, in short do pretty much anything without some type of processor. That life-saving device that will slow your train down when it’s going to fast? A processor. And that processor operates based on a sequence of instructions probably called an — OH, Horror of Horrors! — “algorithm”, which at some level is simply math.

        Now, if the Supremes want to get rid of software patents, they should just say so. Don’t couch it in language no one understands.

        1. The better question, PatentBob – under what authority would the Supreme Court “just get rid of” software patents?

          You yourself lead to the logical conclusion that software is equivalent to hardware and equivalent to firmware (for the dust kickers, this is equivalent and not “exactly the same as” and is applied in the patent sense).

          The answer of course is that the Court has no such authority.

        2. There’s a mighty huge universe of difference between an eligible and valid “patent claim that provides an entitlement”, on one hand, and all of the physical objects and physically transformative methods that might fall within the scope of that claim.

          There’s no patent claim, for example, capable of driving me to work.*

          If you can’t keep the distinctions straight, it’s best to simply stay out of the discussion.

          *note that some ineligible patent claims, e.g., a claim to “a set of instructions”, do both of the things I referred to in my first paragraph, i.e., they both protect the instructions and they recite the instructions. This is one of the reasons such claims are ineligible (and uncontroversially so).

          1. MM – I’m not saying that the clam says “instructions, comprising:” – I’m merely discussing the software update because it’s a good example that we are all familiar with and highlights how software can change the functioning of a machine in an objective, measurable way. I don’t think anyone here is advocating for eligibility of “instructions, comprising:”

            1. I don’t think anyone here is advocating for eligibility of “instructions, comprising:”

              Software is instructions.

              You can’t claim a “new functionality” or “an improved result”. You can’t claim signals. You can’t claim information.

              If you want to protect new software, you want to protect new instructions or you want to protect new logic.

              I don’t think anyone here is advocating for eligibility of “instructions, comprising:”

              Nobody’s advocating for the eligibility of Beauregard claims anymore? That’s wonderful news.

                1. Beauregard claims don’t say: “instructions comprising”. That’s misconstruing the issue.

                  Oh, I’m “misconstruing the issue”? Really?

                  The “issue” is that instructions are ineligible subject matter. The “issue” is that software is instructions (which you have admitted). The “issue” is that for bizarre nonsensical reasons that have never passed the laugh test, you can scriven around this reasonable prohibition by reciting the “encoding” of those instructions on a “computer readable medium,” even when the actual instructions that the computer reads are never set forth in the claim.

                  There is no “misconstruing”, iit. This is just a prime example of the plague of absurdity that your team has brought to the patent system.

                  I understand why you don’t want to talk about it. We all do.

              1. Software is instructions.

                What happened to your admission concerning knowing and understanding the controlling law that the exceptions to the judicial doctrine of printed matter?

                You seem (once again) to want to make statements without taking that into account.

                Why the (again, and purposefully misleading) omission?

    3. “any patent drawn to tasks performed by a “general purpose” computer is ineligible for patenting.”

      I do not think this is representative of those skeptical of software patents. At least not on a per capita basis, it might be accurate on a per post basis.

      In my opinion, patents in all the fields you mention should be eligible depending on how they are claimed.

      1. In my opinion, patents in all the fields you mention should be eligible depending on how they are claimed.

        Oh, so you’ve thought about this a lot?

        Tell everyone exactly how logic needs to be claimed in order to be considered eligible subject matter. Logic isn’t a statutory category, of course (for great reasons) but, just for argument’s sake, let’s say we make a s00per special exception to that reaosonable prohibition because ….”computer!”

        So tell how this otherwise ineligible logic “needs to be claimed”. And when does the PTO start categorizing logic? Has it been building a readily searchable and organized database compiling all the examples of logic throughout history?

        1. Has anyone ever told you its impolite to enjoy your Real(Straw)Doll in public?

          The problem with software patents is not some vague relationship to logic. It’s that they claim results rather than meaningfully defined methods. I don’t know how to define that threshold, but I think it starts with removing the CCPA’s near exemption from 112-1st for software.

          1. Ben: The problem with software patents is not some vague relationship to logic. It’s that they claim results rather than meaningfully defined methods. I don’t know how to define that threshold, but I think it starts with removing the CCPA’s near exemption from 112-1st for software.

            Several responses to this:

            1) The relationship between instructions for a computer and logic is not “vague” at all. That’s why we already have a substantial body of solid case law that says you can’t take ineligible data-processing logic and turn it into eligible logic by reciting “do it on a computer.”

            2) The shunting of logic into our patent system is just one of the problems with software patents. It’s hardly the only one! But it’s a major one and it’s the cause of predictable downstream problems.

            3) Functional claiming is also a huge problem. Everybody knows this. But in case you haven’t noticed, the super vociferous s0ftie w0ftie patent defenders who show up here insist on functional claiming as some kind of divine right.

            4) You write “I don’t know how to define that threshold”. And I’m not surprised. You’re trying to define a threshold where a “new” data processing operation (logic) becomes tied to some “new” distinct and objective physical structure. That’s impossible to do unless the claim is limited to a specified machine (and I mean specified, not just some old box capable of receiving instructions).

  9. “.“Our goal is to minimize any uncertainty in the patent system by ensuring we not only continue to apply the statute and case law in this area as faithfully as possible, but also understand the impact of the jurisprudence on innovation by assessing what, if any, changes might be helpful to further support innovation.””

    Lobby for the following amendments:

    §100. Definitions

    When used in this title unless the context otherwise indicates—

    (a) The term “invention” means invention or discovery.

    (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material including process, arts or methods that might be carried out by machines including computing machines .

    (c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.

    (d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.

    (e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.

    1. Modify 100(b) to read: a process which results in information consumed by human beings may not be patented. Processes intended to improve information processing without regard to the content or meaning of the processed information are exempt from this requirement.

    2. Lobby for the following amendments:

      That’s the funny part about you and “anon” and the rest of the dinosaurs lurking around here: you don’t seem to realize that the asteroid already hit the earth and the mammals have eaten your precious eggs.

      When Congress does get around to re-writing the patent statute, you’re going to like it even less than the oh-so-“unconstitutional” case law that you never stop whining about.

      I mean, that’s the safest bet ever. Congress could re-write the patent statute to codify Alice and “anon” and you and your c0horts would complain that the statute was “unconstitutional.”

      It’s all you guys ever do because all you care about is More Patents, All the Time, Easier to Enforce. This isn’t news to anybody, by the way.

        1. “anon”, neither I nor anyone else is unaware of the idealized operation of our system of government.

          You, however, seem incredibly “oblivious” to the practical realities of living on the planet where some human beings write laws and other human beings interpret them according to rules and customs that were, in many instances, decided on the fly by one or the other sets of humans.

          More importantly, like every other person on earth who suffers from your lack of vision in this regard, you’re an unbelievably pompous hypocrite. As has been noted already, you and your c0horts plainly do not care what Congress writes into the patent statutes. We all know what you really care about. It’s transparent to everybody.

  10. The PTO is asking for “feedback from members of the public to improve the USPTO’s existing subject matter eligibility guidance and training examples” and for help understanding “the legal contours of eligible subject matter in the U.S. patent system”.

    Apparently the PTO is at such a loss to make sense of the Supreme Court’s 101 jurisprudence that it’s turning to the general public for help. Seems a bit desperate to me, but who knows.

    1. I think it’s absolutely reasonable for the PTO to be at a loss on how to apply Alice in a real-world setting. The decision provided virtually no guidance in the collective view of most practitioners and examiners.

    2. If the PTO had a clue, after Alice they would have added 2+2 and immediately stopped granting patents on every “do it on a computer” type claim in their system.

      That might have gotten Congress’ attention which — according to a handful of individuals who comment here — is The Ultimate Answer to Everything.

      But both PTO and its software patent luvving “stakeholders” are both deeply invested in keeping the farce chugging along for as long as possible. After all, the more tainted sausage is pumped out, the more tainted sausage there is for everyone at the PTO to “examine”, and re-examine, and re-examine … What’s a typical expiration date for the reams of “do it on a computer” junk the incompetents at the PTO issued this year?

      2035.

      By that time, Dennis grandkids will be “inventing” new rules for card games.

      1. Less an “ultimate answer to everything” and more (and simply so) merely how statutory law works.

        You did go to law school, right?

        1. I “get” that you playing the ad hominem game by keeping inte11ectually honest and trying to attack actual law would be quite noticeable, but the doubling down of your ad hominem and the attempted mis-characterization is only the exact same blight that you have been inflicting on this blog for more than ten and a half years.

          Yay ecosystem.

  11. Rule 36 decision affirming the tanking of Blue Spike’s claims under 101.

    BLUE SPIKE, LLC v. GOOGLE INC.

    Moore, Wallach, Taranto

    1. A method for monitoring and analyzing at least one signal comprising:

    receiving at least one reference signal to be monitored;

    creating an abstract of said at least one reference signal wherein the step of creating an abstract of said at least one reference signal comprises:

    inputting the reference signal to a processor; creating an abstract of the reference signal using perceptual qualities of the reference signal such that the abstract retains a perceptual relationship to the reference signal from which it is derived;

    storing the abstract of said at least one reference signal in a reference database;

    receiving at least one query signal to be analyzed;

    creating an abstract of said at least one query signal wherein the step of creating an abstract of said at least one query signal comprises:

    inputting the at least one query signal to the processor;

    creating an abstract of the at least one query signal using perceptual qualities of the at least one query signal such that the abstract retains a perceptual relationship to the at least one query signal from which it is derived; and

    comparing the abstract of said at least one query signal to the abstract of said at least one reference signal to determine if the abstract of said at least one query signal matches the abstract of said at least one reference signal.

    In other words, compare the “perceptual qualities” of two signals. Perceptual qualities, according to the spec, are those qualities that are “humanly perceptible”. But the wonderful “machine” that performs this method has a “feature selector” that can identify all, or nearly all, of the “perceptual qualities” of the object that differentiate it from a similarly selected object of other signals. And there’s nothing circular or self-enabling about this g@rbage claim! Nope. It’s all superstar science.

    For those keeping score, the CAFC has yet to reverse a 101-tanking post-McRo. Are we up to ten consecutive fails yet? We’re getting close.

    I wonder what the stats look like at the PTO. Oh, it’s so hard to predict.

    1. In other words, compare the “perceptual qualities” of two signals.

      More specifically, it’s creating a fingerprint of a reference signal, creating a fingerprint of an input signal, and comparing the fingerprints. Abstract? No. Anticipated? Most certainly. Reject it under 102, as it should be, rather than a handwaving “I know it when I see it” 101 rejection. I promise you that I can find a half dozen anticipatory references, from lip sync generators to BPM identifiers.

  12. This roundtable will focus on the USPTO’s continuing efforts to seek input from across the country and across industries on how the USPTO can improve the agency’s subject matter eligibility guidance and training examples.

    I thought the CAFC cleared everything up.

    Logic on a computer is eligible, provided that the logic is limited to a particular context, and its not the exact same logic that people used before in the absence of a computer.

    Wait, you mean there’s a chance that holding won’t last more than a few months?

    1. See post 1 below. Note that statutory law is not like a nose of wax, to be shaped by the Executive (or judicial) branch, nor by appealing to a “roadshow.”

      Gee, I do hope that this factual comment is not deemed “offensive” to anyone.

  13. Facilitating discussion is “nice.”

    But this is not with the people that matter (or would provide proper authority for changing or even recognizing a change in law).

    This amounts to window dressing at best, and at its core may even be obfuscation (if this is used to cloud what the plain words of the statutory law mean).

    1. What authority does the public have in making the laws?

      The entire authority anon. Congress works by and thru consent of the public. Your misplaced elitism is dying daily and none too soon.

      1. Not on an ad hoc basis, Mr. Snyder.

        Surely even your rest at the hotel last night provided you enough “thinking power” to grasp that.

        Once you figure that out, you will note the alignment of my past advice with you taking whatever notions that you want to dream up and talking to the correct people (your congressional representatives).

        1. And you should note that my position on this has been entirely consistent with NO “misplaced elitism.”

          Maybe you should pay better attention to what I have actually been telling you…

    2. For once, I agree.

      I suspect its purpose is to be an entertaining distraction that allows Lee to claim to have been working on The Solution when she leaves office in a few months.

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