According to at least one hearsay report, members of Congress are working toward a new patent reform bill on subject matter eligibility – likely partially following the models prepared by the IPO and pushed by Dave Kappos (among others). There is some chance that it will be introduced this month.
I previously discussed the IPO Proposal:
Anon, removing “new” from the statute is the most egregious error of the proposal. “New” is different from “not previously known to others.” Thus a machine of a different size is not really a new machine. Why?
You think I asked that question just to seem funny? It is not funny. Back in the day, the USPTO time and again issued patents, known as form factor patents, in the disk drive industry where the only thing new in the claim was the size of disk, the number of tracks, the footprint of the casing, and the like. These were not inventions. The inventions were the methods and means disclosed to achieve these results.
This is not all about prior art. And that is why the IPO and AIPLA proposals must be opposed by any ethical person.
“removing “new” from the statute is the most egregious error of the proposal. ”
A strawman Ned, as the removal is merely a removal from 101 (to avoid the types of errors we see YOU engage in all the time).
New (novelty) remains FULLY covered under the law.
This has zero to do with any such “form factor patents.”
Zero.
Obviously, anon, there is a difference between something being new and something being unknown to public.
The New World was not really new, now was it?
How is your non-sequitur of a reply at all relevant?
“However, in this case I can tell you commercial software products have zero reliance on patents for incentives.”
Gotta love a good absolute statement with zero evidence behind it to substantiate the claim.
There is plenty of evidence. Talk to anyone in commercial software development and they will tell you. Just because I didn’t provide a pin cite doesn’t mean the evidence is difficult to find.
On top of the that, my post detailed the driving factors in the industry and how they have no dependence on patent protection. Again, I’m not providing pin cites. If you disagree, find your own industry insider to dispute it.
This isn’t a court of law. If you want definitive proof, you’re in the wrong place. I’m just showing you the door. It’s up to you to walk through it.
Sure, that is a perfectly fair response. Thanks for your thoughts, which I found most interesting and useful.
Greg,
Sorry to take you to task (yet again), but you appear incongruent in your leanings.
To the notion from KnowBuddy of “This isn’t a court of law. If you want definitive proof, you’re in the wrong place. I’m just showing you the door. It’s up to you to walk through it.” you reply:
“that is a perfectly fair response”
And yet, more often than not, to my own “leading you to the door,” you demand evidence.
Combine that with your eagerness to jump on the contra positive fallacy, and I have to say that you are displaying an innate bias.
Perhaps you are not aware of that innate bias.
Perhaps you are.
Either way, you should be aware of it now.
Just dropped in my email to spoil my appetite:
The AIPLA who, without consulting its members, brought us 20years from filing term, the publication of applications, the AIA and IPRs, now wishes us to trust the again. They announce they are supporting an amendment to 101 along the lines of the IPO.
The AIPLA does not consult its members when picking its board or its executives. The AIPLA does not consult its members when it bypasses its patent law committee that are made up of members to create handpicked special committees to consider legislation. They do not put their legislative agenda to comment or member approval. And yet, in filings with the court and congress, they declare themselves representatives of most patent attorneys in the US because most are members because they need patent-related CLE.
What a load ….
6 said:
“Nobody in the real world “invents” because x class of claims are allowed. They just don’t bro. It’s unrealistic. For that matter, the number of people who end up disclosing solely because x class of claims are allowed is miniscule, at best, and frankly I think we’ll be just fine without that tiny miniscule to non-existent group.”
Dude, ever heard of medicine? How many herbal remedies have been FDA approved? None. Know why? Ya can’t patent ECHINACEA. So no one invests the money needed to do the trials.
… and no one would have invested the money needed to find Lipitor or Crestor without the protection of patents.
Your assertion here is just silly.
I’m sorry les, I was talking about the disputed classes of claims. Not the rather traditional classes of claims. Which yes, drugs are one such counter example. And obviously there are many others as well in the traditional arts.
Maybe you can call it traditionalISM
Well, if you understand the economic incentives with regard to drugs, why would think the same pressures don’t apply in other areas, including software?
I am open to the idea that patents are necessary to the software industry, but I cannot quite buy the argument “if it is true for drugs, why would it not be true for software.” The drug industry and the software industry are very different (there is no FDA regulatory process that a software manufacturer must satisfy before one is allowed to sell one’s software in the U.S., to name just one relevant difference).
The mere fact that patents are a necessary part of the business model in one industry does not really tell one much one way or the other about their relevance in another industry.
Some software is quite regulated, like any software used in aircraft that calculates or displays current location. Some should be, like electronic medical records. I don’t see a connection between regulation and patenting except as a barrier to entry thing, and we should think that conditions for patenting would be agnostic about market conditions.
The problem, as always, is not patents on software. It’s patents on information, because software is information, as are many other useful things, like logic and communication.
“Software is information”
Is? As in “exactly the same?”
Why then two different words?
😉
“Necessary” is a contra positive fallacy trap.
Why even bother “going there?”
Fine. Please replace “necessary” in 12.1.2.1 with “salutary.” It does not really alter the force of my point any.
Well, I disagree. Without patents, why buy WAZE? Just write your own app. Therefore, without patents, why invest in WAZE before the app is written?
I can’t think of any business that has an R&D (R or D component?) component that wouldn’t benefit by being able to protect that investment with Patents…. and promoting progress (e.g., R & D) is the raison d’etra.
See KnowBuddy’s #11 immediately below.
Yes, and people were treating illness without patents to. We are talking about promoting….encouraging more of it…
Les,
One reason being a good idea is simply not the same as having that same reason BE a requirement.
Pay attention please.
“It does not really alter the force of my point any.”
Except when it does, you mean?
Like when KnowBuddy employs the fallacy of the contra positive and you jump right in, eh?
Getting sloppy again, Greg….
You might want to read KnowBuddy’s post again, because you are reading into it something that is not there.
I wrote a post arguing both (1) that U.S. law allows for the patenting of software inventions; and (2) that U.S. law should allow for patenting of software inventions. One of the arguments that I adduced for #2 was that patents are necessary to the business models of large, capital intensive software projects (such as Adobe Acrobat or ChemDraw).
This one particular thread of argument is very much predicated on empirical premises, and KnowBuddy called those empirical premises into question. That does not topple my entire conclusion, but it does cut the legs out from under that one strand of argument.
You can toss around the word “contrapositive” all day, it will not change the effect that KnowBuddy’s point makes to that one strand of my argument.
Meanwhile, I do not withdraw the assertion that U.S. law permits for the patenting of software inventions. I simply withdraw one line of reasoning undergirding the conclusion that U.S. law should permit the patenting of software inventions.
Greg: I am a bit more skeptical, however, that we would have Adobe Photoshop, or ChemDraw, or other such fairly capital intensive projects without software patents.
Your general argument about incentivizing innovation is a good and proper inquiry to make. However, in this case I can tell you commercial software products have zero reliance on patents for incentives. Photoshop existed long before anyone thought software patents were possible, and will exist long after they disappear.
Commercial software is driven by market opportunities, first mover advantage, and network effects. The barriers to entry for creating software are so low that there is immense competition. You get to market quickly or you lose out. No less a figure than Bill Gates said that the development of Microsoft and Windows would not be possible if software patents were available at the time (whether that’s a good or bad outcome is left to the reader).
Patents are an afterthought. You mainly get them for defensive purposes, like nuclear weapons and mutually-assured destruction. Investments in software are never conditioned on patents being available. If you don’t build it today, someone in India or China will do it tomorrow at a tenth the cost and capture your market.
Patents only come into play with mature software products protecting their turf from rivals. When everyone in the world already has Microsoft Windows, there’s no growth to be had. It becomes a defensive game. Use patents to keep others from taking your market share. So you patent things like communication protocols. Anyone is free to develop their own protocol. But if they want to interface with Windows machines, they have to speak our particular patented protocol. That’s not competitive behavior. It’s the exact opposite of encouraging innovation.
Now, do VC’s sometimes predicate investment decisions in software companies on their patent portfolios? Absolutely. But that’s not funding innovation. That’s funding rapid business growth so they can capture the market before rivals. The software innovations are created and widely available with or without one company capturing the market for it.
So Greg, while you’re asking the right questions, the answers in this case are that no, patent do almost nothing to encourage innovation in software.
Where patents might drive innovation is software for industrial control systems. Things like the invention in Diamond v Diehr. But those types of inventions are tied to physical results and have never had eligibility problems, even under the current regime or in jurisdictions like EPO that technically don’t allow “software” patents.
I can tell you commercial software products have zero reliance on patents for incentives. Photoshop existed long before anyone thought software patents were possible, and will exist long after they disappear.
Mr. Buddy, that is the most interesting and useful thing I have read on this whole thread. I hope you will not take it the wrong way to say that I am not going to believe this assertion simply on your say so. I would need to see some industry people actually say the same thing with their own names attached to the assertion. Is it possible that you could point me to such non-anonymous assertions, on the web or elsewhere?
In any event, I will cheefully concede that if you are correct about this (it seems plausible enough, I suppose), everything I said below about ecosystems should be ignored and discounted as uninformed opinionating. Anyone who knows enough to confirm or deny Mr. Buddy’s assertions here should discount or credit my contentions below accordingly.
Coming back to the question as to whether we would have things like Adobe Acrobat, Adobe Photoshop and ChemDraw without commercial development protected by the patent system.
Isn’t it fair to say that a significant experiment has been running in the economy (both in the US and world-wide), where two competing models of innovation have flourished side by side?
If one wants to spy on the camp of those whom many posting regularly here would surely regard as “the Enemy”, then maybe check out the website of the Open Invention Network:
link to openinventionnetwork.com
Many members of the OIN would be classed as “efficient infringers” by posters here. Also there are members who have, let us say, quite a reputation with regard to asserting their patents in areas relating to hardware and interface design (not to mention the fairly recently-awarded patent on out-of-office email that was subsequently dedicated to the public). Obviously businesses have a variety of motives for joining the OIN!
What follows is intended to be correct to the best of my knowledge, as an observer from the sidelines, but I am not in the industry.
So far as I am aware, Microsoft’s Windows operating systems are the only fully closed source operating systems with significant market share. Obviously an ecosystem of commercial software has built up around this platform, and some shareware.
Unlike Windows, I understand that Apple operating systems mix open source with closed source, ensuring in particular that the user interface is implemented in closed source software, whilst lower levels (the Darwin kernel and utilities) are open source.
Next to write a bit about web browsers.
Now of course there are the Chrome and Firefox browsers available on Windows. Presumably many people have found that these adequately functional. After all, isn’t it the case that browser share statistics show that Chrome is more popular than Internet Explorer or Edge?
Next a summary of the story behind Firefox. Microsoft bested Netscape in the 1990s. But before Netscape expired it open sourced its code, and the Mozilla Project was born. However the Netscape rendering engine was considered too buggy and unreliable, and accordingly a new Gecko layout engine was developed, which became the basis for Firefox and Thunderbird. Whilst Firefox developed and innovated, putting in the work to implement W3 standards, Microsoft stopped development on IE for many years.
I should mention here Opera as a more commercial browser that was responsible for significant innovation (e.g., tabbed browsing): according to Wikipedia, Opera now uses the same Blink layout engine as Google Chrome. But my story here is that, in the closed-source commercial ecosystem, Microsoft sat back whilst others innovated and implemented standards.
Next, a summary of the development of other browsers. The KDE project set out to create a desktop environment for Linux. (It can also be installed on BSD operating systems.) It developed a web browser called Konqueror, building a layout engine called KHTML. Then, when Apple developed their Safari browser, they based it on the open source KHTML code. Apple then gave back through the open source WebKit project, whose website is here:
link to webkit.org
As you would see, this is an open source project, but it is also a significant component of Apple products. Subsequently Google forked WebKit to produce their own Blink layout engine, which is now used by Chrome and Opera.
Moving on, would you consider the Android operating system on tablets and smartphones to provide adequate functionality for the general user? Android is an open source software stack. Its website is here:
link to source.android.com
Surely the fact that Android market share outstrips iOS indicates the consumers find the functionality provided to be adequate for their smartphones and tablets? Android runs on a Linux kernel, and looking a list of what runs under the hood, I can spot some innovative open source products like SQLite.
In addition supporting Adobe Acrobat, Linux and BSD systems provide evince and okular for viewing PDF files.
For photo-editing, on Linux and other operating systems there is the GIMP an open source project started in 1995 by two students at UC Berkeley, and developed since. It is what I would use to edit my own photos.
Of course Linux provides a plethora of desktop environments. One, GNOME (version 3) is surely “innovative” by anyone’s standards. I personally don’t have time for it, but there are plenty of nice alternatives: KDE, MATE, Cinnamon, to mention just three.
A download of all the packages available in Fedora 25 Everything occupies 55 gigabytes. That is a lot of free software!
I don’t myself use Microsoft Word, or anything similar to create documents. Indeed I don’t even know how to set about setting page sizes, creating headings, or anything like that. For professional, technical documents, I, in common with others in the field, use sophisticated open source software whose essentials were created, and published, in the 1970s. Attempting to use Microsoft Word simply would not be an option. And, for all professional purposes, the open source cornucopia supplies all needs.
I suggest that, in future decades and centuries, economists will be able to look back at the early decades of the 21st century, and analyse, compare and contrast the patent-based commercial model with the open source model.
ChemDraw has an interesting history; it was developed by a graduate student, Stewart Rubenstein, doing synthetic organic chemistry with renowned Harvard chemistry professor Dave Evans to aid in writing his dissertation. It was based off of MacDraw.
Patents appear to have played no role in its development, as Rubenstein began the project in 1985, and there were commercial versions in the late 80s. There is currently a patent pending, filed in 2000, which lists Rubenstein as an inventor, but that’s about it.
You can read the Angewandte article on Evans’ website.
link to evans.rc.fas.harvard.edu
Thanks Greg. I don’t have published sources. Just sharing what knowledge I gained from a decade working in the field.
I don’t expect you to take my word on anything. By all means do your own research and satisfy your own mind. I’m just pointing the way and giving you new information to consider.
HTH,
Agree somewhat.
There are kinds of software that do need protection if one is going to make investments and that is the kind that is easily copied. I am thinking now of i4i or Versata, both of who relied on patents.
IMHO, Versata was reamed by the the PTO at the request of is major league infringer-petitioner.
Ned is entranced by the lure of his Windmill Chase to “agree somewhat.”
Please forgive the potential double post due to narrative filtering:
“Need”
Funny that.
Patent law is not built for such “need.”
That is why it is a negative right. The market still gets to decide “need,” quite apart from ANY self-appointed guardian of any field of rye.
Patents simply do not exist solely for any such “need” of protecting nascent innovation.
It is simple legal error to hold so.
Yes, it is true that ONE of the benefits of the patent system – and it is an important benefit at that – is to protect nascent innovation.
But the contra-positive does NOT control, and there is NO requirement that patents are “proper” ONLY IF they serve to protect nascent innovation.
To put forth a premise then that implies that a field of art “does not need” patents means that that field is not meant to be afforded the protection of patents is a stunning fallacy.
So quibbling about whether or not the art field or “commercial software products have zero reliance on patents for incentives” is only dust-kicking obfuscation at best and clouds rather than clarifies patent law.
Let’s keep a proper focus people.
Anon, I think you missed my point. Patentability does not follow need. The need for patents follows the ease of copying.
I did not miss your point Ned, but speak to a more nuanced mistake: the contra positive simply is a fallacy – and YOU need to recognize what others are saying based on the context here.
The fallacy of that contra positive is being pursued.
Thanks, KnowBuddy. That is a very interesting point. It rather decimates much of what I said below, so please consider that particular defense of software patents (i.e., that we should tolerate their downsides as the necessary price to be paid for software innovation) to be withdrawn as incorrect.
Greg – it is not incorrect.
You are falling (badly) for the contra positive fallacy.
Fair enough. Please allow me to rephrase. I really know very little about the software industry. KnowBuddy’s post reads like the work of someone that does know about how the software industry works, but that could be bluster and bluff. Therefore, what I should have said is that if he is correct, then one argument in my post below is unsound. I am in no position to verify the accuracy of his contentions, so I leave it to others to decide whether my point below is sound or unsound.
Patents can and do drive software innovation. That is, a very small minority do. Most amount to arbitrary government facilitation of brigandage, motivated of course by the best intentions.
Something can be both obvious and inventive in software, because invention in software is sometimes indistinguishable from brute force.
A compression standard like MPEG is obvious in the sense that people skilled in the art could do it, but it’s non-obvious in the sense that nobody could ever guess the encoding scheme before it’s worked out, agreed upon, and iterated.
Organized brute force to solve a technical problem should be incentivized and rewarded, or why have a patent system?
On the other hand, when particular human meanings of information give rise to the value of that information, that value should be beyond the reach of the patent system, for a number of important reasons.
Drugs are physical compositions. There are no serious voices who think they should be unpatentable, full stop.
You are deeply lost in your persistence to use lethal terms of art divorced from their known understanding.
Instead of spending your time coming up with words like “brigandage,” you would be immensely better off understanding the terrain.
“Organized brute force.” They got me to thinking. Grant’s use of railways to supply his troops on on a continuous offensive was in a way inventive – just as Lee’s invention of trench warfare in reaction was also inventive.
Oh, by the way, who is buried in Grant’s tomb?
It is on the record that an Adobe Engineer testified against the patentability of software in 1994 in Congressional hearings:
link to gordoni.com
There was a widely reported anti-software-patent memo from Bill Gates to his senior leadership in 1991:
link to nytimes.com
The change in policy by these entities seems to me to be a case of “where you stand depends on where you sit” – i.e., these two companies now have large patent operations, and so they are incentivized to maintain the value of those investments.
Who are the Republicans who are planning to sponsor this p.o.s. legislation?
Better duck. The pendulum is swinging.
I hope it happens.
Unlike yourself, I sincerely would like to see the IPO’s proposed revisions enacted. When I consider the objective likelihood of this, however, I have to concede that it seems rather unlikely. This Congress is such a bunch of clowns that they can barely get it together for their real priorities. Patent reform is not one of their priorities, so it will have to wait in the back of the line, after taxes and healthcare and border enforcement. I am thoroughly skeptical that it will ever make it to the floor.
It might have been the single worthwhile thing that this Congress would accomplish, but probably it will not.
Whoops, this was supposed to be a response to Martin’s #2 below.
Greg you have it backwards. When the agenda is filled up with contentious items, people look for areas that are obscure, or that nobody important has a political stake in, or that are inherently non-ideological on partisan battle lines.
They look for something- often anything- to agree on first, so there is always a chance of mischievous legislation from even the most locked-up Congresses.
inherently non-ideological
Making it easy for rich people and attorneys to line their pockets at the expense of everybody else is inherently ideological. And that’s all that this statute will accomplish.
You know, I’ll debate any of the cl0wns responsible for this asinine junk in a moderated setting anytime. They won’t like that, which is why they won’t do it. They won’t like it because the inanity and greedy p i g nature of what they’re doing will be exposed to everyone. They run and hide because they’re scared little entitled puppies.
inherently non-ideological because the Republican talking points machine has nothing to say about patents (but it can turn on a dime) and the Liberal Establishment loves to show its pragmatic bona fides on any reality-based legislation the GOP occasionally may vomit up.
“Making it easy for rich people and attorneys to line their pockets at the expense of everybody else is inherently ideological”
Your classISM is showing.
Please, pleas, please, get into a field with which you can believe in the work product produced. Your cognitive dissonance is reflected in your venom and ad hominem that you seem completely unable to post without.
So you think that they are such a bunch of half-wits that the only thing that they can get through is patent reform? Well, I suppose that might be possible. There’s a happy thought for Friday. 🙂
The half-wittedness is the idea that a tiny group of self-interested patent attorneys who are plainly interested in one thing and one thing only (lining their own pockets) can ram down everyone’s throats a statute as inane and asinine as the one the IPO proposed and not expect severe blowback.
There’s nothing meritorious to “agree on” in the proposed “revision.” At best, it’s an indication that the proposers are rabid m@niacs and negotiating with them will be like negotiating with a terr0rist.
Your feelings are noted.
A bit of regulatory capture, perhaps?
Perhaps.
Perhaps to offset the existing regulatory capture…?
😉
Mayo and Alice. Where did they come from?
SCOTUS was of course merely applying its case law developed in the 19th century. The relevant part of the text of 101 is hardly changed: merely the replacement of ‘art’ by ‘process’, where ‘process’ is defined in section 100:
“(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.”
The words ‘art’, ‘method’ and ‘process’ had been extensively discussed in US patent cases before 1951 (e.g., Cochrane v. Deener and Tilghman v. Proctor and the definition in 100(b) seems consistent with 19th century case law.
And, ‘for those who find legislative history useful’, the following is taken from the Senate report on the 1952 act:
“Section 101 follows the wording of the existing statute as to the subject matter for patents, except that reference to plant patents has been omitted for incorporation in section 301 and the word ‘art’ has replaced by ‘process ‘, which is defined in section 100. The word ‘art’ in the corresponding section of the existing statute has a different meaning than the same word as used in other places in the statute; it has been interpreted by the courts as being practically synonymous with process or method. ‘Process’ has been used as its meaning is more readily grasped than ‘art’ as interpreted, and the definition in section 100(b) makes it clear that ‘process or method’ is meant. The remainder of the definition clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions for patentability are satisfied.”
It seems to me that if Congress were really contemplating a massive change to subject matter eligibility, without any meaningful debate in either House, then those processing the act were hiding elephants in mouseholes in a big way!
Therefore would one not expect that SCOTUS would follow its stated norm of “statutory stare decisis” in deciding the cases and controversies to which they grant certiorari?
So what is in the case law that SCOTUS developed from its interpretation of 19th century patent laws?
“Principles are not patentable”.
“Principles” here include ‘abstract ideas’ (including instances such as Stone v. Sprague and O’Reilly v. Morse), ‘abstract intellectual concepts’, ‘laws of nature’ and ‘natural phenomena’. Therefore these ‘judicial exceptions’ are not in themselves patentable.
But a patent-eligible art (or process) can be founded on a principle. (In the English cases, see in particular Boulton and Watt v. Bull and Nielson v. Harford.) As explained in 19th century cases (such as the ones I have been looking at this week) it is explained that an art based on a principle applied that principle in a way or mode, e.g., manipulating materials) to produce an ‘effect’ or ‘result’ (e.g., manufacture of a new composition of matter), and a principle was a new art or an improvement in an existing art if the principle were applied in a new way or produced a new effect, so as to improve on the prior art.
Quoting from Tilghman and Proctor (1880):
“It seems to us that this clear and exact summary of the law affords the key to almost every case that can arise.
“‘Whoever discovers that a certain useful result will be produced in any art by the use of certain means is entitled to a patent for it, provided he specifies the means.'”
But then the Court went on to say:
“But everything turns on the force and meaning of the word ‘means.’ It is very certain that the means need not be a machine, or an apparatus; it may, as the Court says, be a process. A machine is a thing. A process is an act or a mode of acting…”
And so we are back to ‘process’, construed typically in a manner applicable to industrial processes.
===
Moving on to Alice and Mayo. It seems that the US patent community is test-obsessed. The CAFC seem incapable of taking any guidance from SCOTUS without reformulating as a “test”. They meet en banc in order to promulgate “tests”, or abrupt changes to previous “tests”, sometimes even justifying this on the basis that their previous attempt seemed “unworkable”. Why does a Federal appellate court act in a manner that seems so far removed from their role in deciding cases and controversies that come before them. It seems that people in the patent community even talk of a “Mayo/Alice Test”, and maybe pretend or imagine that SCOTUS introduced such a thing!
Take Justice Thomas’s opinion in Alice (e.g., as a PDF), and do a word search for the word “test”. You should discover that that word does not appear even once in the document! You will however find references to Mayo‘s “framework”. So back to Mayo.
In Mayo, you will find references to Prometheus’s diagnostic test, Mayo’s diagnostic test, and the CAFC’s “machine-or-transformation” test. Those are the only tests mentioned in Mayo.
The correlations between metabolite levels and therapeutic effectiveness and toxicity are said to be “natural laws”. (Alternatively they could be considered “natural phenomena”. Would the man in the street imagine that those correlations had been “invented”?) Thus the correlations are principles.
And as SCOTUS and its Justices riding circuit said repeatedly in the 19th century, Principles are not patentable.
So to arrive at an new art or an improvement to an existing art, founded on a principle, one needs … well … “something more”.
What is that “something more”? Well it has to be “significantly more than a patent on the natural law itself”. If you do a text search on the Mayo opinion itself, you will find that the two-word phrase “significantly more” crops up repeatedly. What is “significantly more”? Well it has to be more than the “insignificant post-solution activity” that, according to Diehr is involved in setting the “alarm limit” in Flook. What else can SCOTUS tell you. Well, they can and do list their cases since Funk Brothers and apply the “framework”. But, scream the patent lawyers, we want SCOTUS to give us a test, to tell us exactly what is meant by significantly more. But how do they expect SCOTUS to do this when there had been no “section 101” cases coming before them for a couple of decades? It is no business of a common law court to proclaim tests that have no foundation in their recent case law.
Moving on to Alice. Well, the idea of “escrow”, (or “solvency”) is no less abstract than the idea of “hedging” in Bilski. And as for the “shadow credit record” and the “shadow debit record” are construed as requiring some sort of computer-implementation, there is nothing in the representative claim to restrict the subject matter to any particular “way” of implementing such records. In short the claim is directed on its face to read on all modes of maintaining computer-implemented accounts. Thus this very shadowy possibly computer-implemented account keeping certainly does not do enough to ensure that the claim is “significantly more” than a claim on the abstract idea of “escrow” itself. Thus the holding of Alice is compelled by the holdings of Bilski and Mayo, and surely could have come out no other way.
Of course SCOTUS drove a coach and horses through the “It must be patent eligible because if I drop it on my foot I shall probably end up in hospital” test that certain CAFC judges simply couldn’t bring themselves to relinquish. But, of course, the “end up in hospital” test had no basis in statute. How is the idea of the apparent time-independence of “eligible” subject matter compatible with the explicit reference to “any new and useful improvement thereof”. How can you possibly tell if the subject matter of the claims supplies a “new and useful improvement” if your “test” takes no account whatsoever of the state of the art at the time of the invention?
In Mayo it was stipulated that the administration of thiopurine drugs to patients suffering from autoimmune diseases was in the prior art. Could Prometheus have sustained a claim that such administration was novel at the time of the claimed “invention”? It follows that any “improvement” to the art must be found in the correlations themselves. And if pondering the results of such correlations merely “indicates a need” to increase or reduce the dosage, how does it change the “way” or “mode” of administering these drugs. (This is of course a point that MM has made here repeatedly.)
Thus the results of Mayo and Alice follow directly from SCOTUS applying the time-honoured principle of stare decisis in view of the precedents established in its corpus of patent law jurisprudence. How could those cases have come out any other way?
And why should people presume that the significantly more required to turn a principle into a patent-eligible art or process has anything whatsoever to do with nonobviousness under section 103. It seems to me that, once the improvement to the prior art has been distinguished from the state of the art, the question of patent-eligibility under section 101 is far more closely related to enablement, written description and best mode under section 112. Thus the overlap between the “101 analysis” and the “102/103 analysis” seems limited to identifying the nature of the claimed invention in terms of the difference between the claimed subject matter and the state of the art. I fail to understand how people can claim that this imports questions of “nonobviousness” into the 101 analysis.
How on earth to patent lawyers seem to manage to read so much into the Mayo and Alice opinions that simply seems to be completely absent from the text?
OK, I will finish there for now.
Distant, thanks for this. Well said.
DP – you are not even close here.
At all.
Great post!
Distant: How on earth to patent lawyers seem to manage to read so much into the Mayo and Alice opinions that simply seems to be completely absent from the text?
That’s easy. They don’t like the result so they mischaracterize the opinions to the point of absurdity, in spite of the fact that the Court goes out of its way to note that you shouldn’t do that.
We’re talking about patent lawyers who claim with a straight face that “nothing is patentable” and “nobody can understand this” when the system continues to run red hot. Why do they make such ridiculous statements? Because they want the system to run white hot. After all, we never reached the point where the ordinary person, or at least every person programming a computer or engaging in some form of logic for a living, needs to think about buying patent infringement insurance. Oh what a paradise that would be! And think about the incredible “progess”! We’ll never want for better bingo management software again.
If you don’t have the $50 to $200K year MINIMUM to get some infringement insurance, not to worry, because you get to miss out on the SIR (another way of saying deductible) and co-insurance (another way of saying they cover 80%) which will add up to another few hundred grand in the event of a case. With all the junk in the system, the whole thing is just another large tax that everyone must pay to be in business. To be accused is to lose, automatically, without regard to the merits. What’s neat about that is that anyone holding a patent for almost anything can make a colorable accusation against almost anyone doing a big software solution. It’s really, really important that it be this way for INNOVATION (tm) to occur.
Martin, and do you know who is responsible for all the junk in the system? Look who was at the patent office in the mid to late 90’s. All of them should be identified, from Commissioner to Director to policy advisors. These are the folks who helped drive the whole patent system into the swamp.
And let me further identify the largest single backer of software patents, the mover and shaker in the room: IBM.
Distant Thus the overlap between the “101 analysis” and the “102/103 analysis” seems limited to identifying the nature of the claimed invention in terms of the difference between the claimed subject matter and the state of the art. I fail to understand how people can claim that this imports questions of “nonobviousness” into the 101 analysis.
The issue of “non-obviousness” is always there, in theory, because you can’t have a working subject matter “test” without understanding what was in the prior art and comparing the claim to that art. Most of the time there isn’t even a debate about the obviousness of, e.g., the computer hardware that is recited in a claim. It’s admitted, and if it’s not admitted in the spec outright it takes two seconds to get the admission or it’s simply a matter of judicial notice (yes, programmable computers are OLD; networks are OLD; wireless data communication is OLD; movable computing devices are OLD; etc).
The question that always needs to be addressed at some stage is whether the physical/structural elements that are recited in the claim are non-obvious in view of the prior art. Otherwise you can’t address the “nature of the claimed invention” relative to the prior art. And if you are prevented from asking that question (which is the IPO’s fantasy) then you can’t do a subject matter eligibility analysis on 99% of the claims that are drafted.
Easy way to understand how this works:
1. A peanut butter sandwich, wherein said sandwich comprises bread and wherein the bread is chocolate flavored, further comprising the text “Don’t forget that 6-TG levels above 0.6 ppm are correlated with cancer” printed on the bread.
If the atextual elements (as recited in the claim) are non-obvious, the claim is eligible. If the atextual elements are obvious, then the claim is ineligible. Why is that the case? Because you can’t protect ineligible subject matter (e.g., information about a correlation) in an otherwise unpatentable context (e.g., in the context of the obvious pb sandwich on choco bread). Put another way, if my pb sandwich on choco bread is in the public domain, you can’t tell me what I’m allowed to write on it. I can write whatever I want on my sandwich, period. You say you have a patent that says otherwise? Gio ahead and assert it against me. You’re going to pay my fees and I’m going to tell the world what an incredible pile of t0xic waste you are, forever.
There is nothing difficult about this analysis, by the way. It’s straight out of Prometheus v. Mayo and Alice and many CAFC cases following those decisions. Nothing confusing about it whatsoever. The only aspect of the analysis that a tiny tiny tiny number of people find troubling is the result. But the vast universe of innovators who are making new compositions and describing them structurally or innovators who are developing new physically transformative processes have no reason at all to be concerned by any of this. And they aren’t. Their patents are being granted and they are being licensed, all the time, and there is no serious movement out there threatening to “take away their patent rights.” In large part, that’s because trolling is difficult when you have to actually do some work to get a patent.
If the test in Mayo was invented 200 years ago would it have been patent eligible then? I don’t think eligibility should depend on when the invention was contemplated or what was occurring in the art at the time of invention.
An abstract ideas and natural phenomena are per se not a machine, manufacture or, a composition of matter. Arguably an abstract idea may be a process, but the doctrine against patenting pure mental processes protects against such inventions. Isn’t taking any abstract idea outside the realm of abstraction by placing it within some tangible physical object or performed on some physical object significantly more than something that is a disembodied abstraction? Abstraction by definition is something intangible. A tangible object is the exact opposite of an abstraction and thus should be readily considered significantly more irrespective to how new that physical object is or how new the steps are that are performed on or via the physical object.
Tell everyone more about how this “doctrine” against “pure” mental acts works? How is it applied in practice to common types of claims like those at issue in Mayo?
Mike,
Eligiblity and patentability are the differing concepts that align with your comments here.
I do not think it surprising to note that those who are anti-patent (and that includes anti-patent for software and business methods) are the ones that tend to (purposefully or otherwise) blur the different meanings.
Here is where I see the problem. In the US, the novelty/obviousness analysis is not based on the differences between the claimed subject matter and inelible subject matter. Therefore, novelty/obviousness analysis will not render “routine” applications of newly discovered natural phenomena/substances or new human/social activities unpatentable (as the Courts believe they should). How do you propose to deal with these “routine” applications without involving the prior Art, and accepting that eligibility can depend on when the invention is filed?
PiKa How do you propose to deal with these “routine” applications without involving the prior Art, and accepting that eligibility can depend on when the invention is filed?
There are three possible responses that are invariably provided by the maximalists. The first is to invoke some judge-made “doctrine” that will take care of the issue you correctly identified. The problem with that answer is that the “doctrine” is simply another judge-created way of performing the exact same analysis that the maximalists are crabbing about it now. In other words, pure hypocricy.
The other form of response is silence, answering a different question or simply repeating the proposition (“103 will take care of it”) as if the issue was never raised and as if repeating the proposition ad nauseum will somehow turn it from a false statement into a true statement.
And the third response is to say “Good! We should be able to patent non-obvious information as long as we recite some non-abstract context for that information, even if that context is in the public domain and allows patentees to sue people for communicating certain information content using prior art technology. That’s a great thing for patent attorneys and people with lots of money! And those the most important people ever. Way more important than Amish people, anyway.”
All of the responses are appallingly weak, for obvious reasons. But that’s all these guys have. And they’ve been doing this for literally YEARS, non-stop.
Pika, one should not get to 103 with a propertly conducted novelty analysis that would exclude subject matter that was otherwise ineligible, such as, printed matter, information, and the meaning of things, unless such is shown to impart new functionality to otherwise eligible subject matter.
“accepting that eligibility can depend on when”
Nope – off into the weeds right there.
Mike, the Government brief in Mayo should be consulted on your points. It has long been the case that once cannot re-patent something old simply by discovering a new property about it.
I have been around long enough to have seen many many attempts at doing this very thing. It happens, time and time again.
The converse of this that if one does discover a new property, one is limited to patenting a new and non obvious use of that property.
Thus Mayo. Everything in the claim was old but the correlation. In other words, the process itself was old. A conventional examination should not have allowed the claims to issue based on anticipation.