101 Statutory Changes

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:

Eligibility: Explaining the IPO Legislative Proposal

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

136 thoughts on “101 Statutory Changes

  1. 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.

    1. 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.

      1. 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?

        1. How is your non-sequitur of a reply at all relevant?

  2. “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.

    1. 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.

      1. Sure, that is a perfectly fair response. Thanks for your thoughts, which I found most interesting and useful.

        1. 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.

  3. 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 ….

  4. 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.

    1. 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.

      1. Maybe you can call it traditionalISM

      2. 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?

        1. 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.

          1. 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.

            1. “Software is information”

              Is? As in “exactly the same?”

              Why then two different words?

              😉

        2. “Necessary” is a contra positive fallacy trap.

          Why even bother “going there?”

          1. Fine. Please replace “necessary” in 12.1.2.1 with “salutary.” It does not really alter the force of my point any.

            1. 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.

              1. See KnowBuddy’s #11 immediately below.

                1. Yes, and people were treating illness without patents to. We are talking about promoting….encouraging more of it…

              2. Les,

                One reason being a good idea is simply not the same as having that same reason BE a requirement.

                Pay attention please.

            2. 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….

              1. 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.

  5. 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.

    1. 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.

      1. 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.

        1. 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

      2. 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,

    2. 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.

      1. 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.

      2. Anon, I think you missed my point. Patentability does not follow need. The need for patents follows the ease of copying.

        1. 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.

    3. 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.

      1. Greg – it is not incorrect.

        You are falling (badly) for the contra positive fallacy.

        1. 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.

          1. 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.

            1. 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.

            2. “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?

      2. 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.

  6. Who are the Republicans who are planning to sponsor this p.o.s. legislation?

    1. Better duck. The pendulum is swinging.

  7. 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.

    1. Whoops, this was supposed to be a response to Martin’s #2 below.

      1. 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.

        1. 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.

          1. 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.

          2. 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.

        2. 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. :)

          1. 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.

  8. A bit of regulatory capture, perhaps?

    1. Perhaps.

      Perhaps to offset the existing regulatory capture…?

      😉

  9. 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.

    1. Distant, thanks for this. Well said.

    2. DP – you are not even close here.

      At all.

    3. Great post!

    4. 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.

      1. 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.

        1. 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.

    5. 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.

    6. 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.

      1. 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?

      2. 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.

      3. 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?

        1. 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.

        2. 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.

        3. accepting that eligibility can depend on when

          Nope – off into the weeds right there.

      4. 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.

        1. I am reminded that protons, neutrons and electrons are some of the oldest things around…

          😉

    7. “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.”

      People don’t claim that. The Supreme Court does. Read Bilski again. Bilski was abstract because you could read about hedging in a text book….

      1. To save you some digging, the text from Bilski v. Kappos to which I refer:

        ” In light of these precedents, it is clear that petitioners’ application is not a patentable “process.” Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” 545 F. 3d, at 1013 (Rader, J., dissenting); see, e.g., D. Chorafas, Introduction to Derivative Financial Instruments 75–94 (2008); C. Stickney, R. Weil, K. Schipper, & J. Francis, Financial Accounting: An Introduction to Concepts, Methods, and Uses 581–582 (13th ed. 2010); S. Ross, R. Westerfield, & B. Jordan, Fundamentals of Corporate Finance 743–744 (8th ed. 2008). The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

        If I may distill this paragraph down to a gist: Hedging is old, therefore fundamental, therefore it is an abstract idea.

        The 101 decisions since have been fairly consistent in espousing similar reasoning. In Alice it was escrow that was old and therefore abstract.

        The fault dear Distant is in the courts, not is ourselves.

        1. Story continued,

          “No, what is the language, in which the patentee has summed up his claim and invention? The specification states: “It is claimed, as new, to cut ice of a uniform size, by means of an apparatus worked by any other power than human. The invention of this art, as well as the particular method of the application of the principle, are claimed by the subscriber,” (Wyeth.) It is plain then, that here the patentee claims an exclusive title to the art of cutting ice by means of any power, other than human power. Such a claim is utterly unmaintainable in point of law. It is a claim for art or principal in the abstract, and not for any particular method or machinery, by which ice is to be cut. No man can have a right to cut ice by all means or methods, or by any or by all or any sort of apparatus, although he is not the inventor of any or all of such means, methods, or apparatus. A claim broader than the actual invention of the patentee is, for that very reason, upon the principles of the common law, utterly void and the patent is a nullity. (Footnote 1)

          Footnote 1: Moody v. Fiske (2 Mason art, 112); Brunion v. Hawks (4 Barn. & ALD. 541); Hill v. Thompson (8 Taunt. R. 375, 399, 400); Evans v. Eaton (7 Wheat. R. 356); Phillips on patents, chapter 11, section 7, page 268 to 282.

          1. The power source is inconsequential. What difference does it make if its steam power or electric power or water wheel power or windmill powered?

            The invention is at the other end of the machine and is obviously utterly adaptable to any power source by one of even ordinary skill in the art.

            So, why again isn’t the inventor entitled to broad protection independent of the power source?

      2. Les, but if you go back to Story’s cases in the 1840’s, Wyeth v. Stone, etc., that form the basis of the modern doctrine, he clearly was premising his opinions on the common law doctrine that one could not claim more than one had a right to claim, thus, one could claim the means and methods disclosed, but not the principles by which they operate in the abstract.

        “In the next place, as to the objections taken to the specification. The question here necessarily arises, for what is the patent granted? Is it for the combination of the 2 machines described in specification (the cutter in the saw) to cut ice? Or for the 2 machines separately? Or for the 2 machines, as well separately as in combination? Or for any mode whatsoever of cutting ice by means of an apparatus, work by power, not human, in the abstract, what ever it may be? If it be the latter, it is plain, that the patent is void, as it is for an abstract principle, and broader than the invention, which is only cutting ice by one particular mode, or by one particular apparatus are machinery.”

        Wyeth v. Stone, 1 Story 273, 30 F. Cas. 723 (1st Cir. 1840) link to books.google.com

        1. I’m not impress by wrongly decided cases.

          If I invent the time machine, I say I am entitled to broad coverage to machines that allow for travel through time forward at a rate other then the nominal rate and backward at any rate for 17 years, even if I only disclose one embodiment powered by 220 AC, because adaptation to battery power would be obvious to those of ordinary skill and it is not practical to disclose every imaginable embodiment.

          1. I’m not impress by wrongly decided cases.

            Fair enough, of course. You are not obliged to express any sort of awe at the law. Do not be surprised, however, if judges are more impressed by the case itself than by your explanation of why the case was wrongly decided. The law is the law, even when it ought not to be.

            If I invent the time machine, I say I am entitled to broad coverage to machines that allow for travel through time forward at a rate other then the nominal rate

            Morally entitled? Perhaps. Legally entitled? Definitely not. That is not the law of the United States. You can only claim what you describe (§112(a) “[t]he specification shall contain a written description of the invention…”).

            1. So, I include a sentence like this one:

              The illustrated embodiment is powered by 220VAC. Of course other power sources are contemplated and may be substituted including, but not limited to, battery power, lighting power, Mr. Fusion, flux capacitors, 120VAC or any source capable of providing 1.21 Jigawatts for at least 37 microseconds.

              Now I have a patent to my time machine please?

              All I’m required to disclose is the preferred embodiment. Original claims are self supporting.

              Every embodiment encompassed by open ended claims including the work “comprising” are never disclosed.

              1. The illustrated embodiment is powered by 220VAC. Of course other power sources are contemplated and may be substituted including, but not limited to, battery power…

                Now I have a patent to my time machine please?

                You can definitely have a patent to a time machine. You may even keep the claims quite broad as regards the power source. You may not, however, claim “a means for traveling through time forward at a rate other then the nominal rate, wherein the means comprises a power source.”

                The “power source” part of that claim is not the problem. The problem is the lack of structural designation of the mechanism for achieving the time travel effect. If you invent one way of achieving time travel, you can claim that one way. You may not claim all mechanisms for achieving time travel—whether or not they involve your mechansim.

                1. Were I to disclose my time machine, I would have to disclose how it works, i.e., the physics that it takes advantage of. I’ve figured out an embodiment that takes advantage of the physics I identified. Once I have disclosed that, someone else might see another way to do it. Still, I DISCOVERED how the physics can be manipulated and I am entitled to cover my DISCOVERY. If you don’t want to provide me that protection, I’ll just keep it a trade secret. I’ll include a self destruct in each unit to prevent reverse engineering. Have it your way.

              2. Will someone please take the car keys from Les….?

            2. I seem to remember something about ….and equivalents thereof.

              What ever non-human powered source for the ice cutter Wyeth disclosed, all other non-human power sources are equivalents thereof.

    8. @7 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

      Because there is a huge, inescapable, conceptual overlap between “significantly more” and what is obvious or not. How could they presume otherwise?

      Let’s recall the huge marker laid down by the KSR court:

      We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.

      How can that frame of reference vary far from what “significantly more” means in bringing something from a state of non-invention to a state of invention?

      1. from what “significantly more” means

        What does ‘significantly more’ mean?

  10. Which members of Congress?

  11. Who are the Republicans that are going to sponsor this junk?

    1. Breathe into the paper bag slowly.

  12. It seemed like a blatant attempt to overturn Alice and Mayo, and to restore State Street Bank. The folks in Congress need to be told this.

    1. It seemed like a blatant attempt to overturn Alice and Mayo, and to restore State Street Bank.

      It “seems” like an attempt to overturn Alice and Mayo because it is an attempt to overturn Alice and Mayo. That is a feature, not a bug, as far as I am concerned.

      The folks in Congress need to be told this.

      Do not worry. They will be told. Both those of us who favor the revision and those opposed will mention this point. As I said—speaking as a partisan of the IPO revisions—I regard it as a good thing that these revisions reverse Mayo/Alice (and restore State Street Bank, which is just one more case that Judge Rich got right, as far as I can see).

      1. Note that Greg can’t articulate why State Street was good or why Mayo was bad. Probably he is not even aware of the facts in Mayo, or he simply will refuse to discuss them. That’s how the defenders of this junk roll when they’re not trying to patent a “new” button on a display or a “new” medical database.

        Worst. Attorneys. Ever.

        1. Note that Greg can’t articulate why State Street was good…

          State Street was good because it offered a plausible and reproducibly applicable reading of the statutory text. It did not try to add epicycles and penumbrae into that which Congress wrote, in an attempt to reach a pre-ordained result. It just asked “do these claims fit into one of the four statutory categories?” (yes); “are they new?” (yes); and “are they useful?” (yes). That is the right way to do 101 law.

          Note that Greg can’t articulate why… Mayo was bad.

          Mayo is bad for the same reasons that State Street Bank was good—viz, Mayo was not content to ask the three questions above, but was insistent on adding codicils and epicycles and quantum flux flogiston into the otherwise sane and ordinary statutory text.

          In addition, however, Mayo was also bad for the reasons already given in 3.2.1.1 below.

          1. You are not going to get a Christmas card from Malcolm by expressing views like that…

            😉

          2. otherwise sane and ordinary statutory text

            A statutory text that literally reads on a new and useful thought is “sane”?

            Seems more like a catastrophic failure or pure ins@nity to me, and also to pretty much every adult who’s ever spent more than two seconds thinking about the issue. That’s why the so-called judicial exceptions are presumed to be baked in to the statute.

            I know it’s been sooooooo long since the IPO’s proposal was righteously trashed here but are you relying on the so-called “printed matter doctrine” to do all the heavy lifting now? That dishonest game was spotted pretty much instantly by everyone.

            I’ve said it before and I’ll say it again: nothing remotely like the disgusting IPO proposal is going to pass. The blowback that would follow is going to make the blowback on State Street and the trolling which followed State Street feel like a calm summer breeze.

            There are literally an infinite number of ways that 101 could be re-written to address whatever horribles induce the most whining and crying out there. But “somehow” the b0z0s at the IPO managed to spend years and gosh knows how much money to come up with this ridiculous dreck? Give us a break already.

            1. literally reads on a new and useful thought

              LOL – um, where exactly does this thought fit….

              1. where exactly does this thought fit….

                Thoughts are made by human brains, are they not? They are fabricated are they not? Manufactures are fabrications, are they not?

                Thinking is a process, correct?

                It’s always a laugh when “anon” and similarly self-worshipping “experts” pretend to be born yesterday. Of course, when it comes to devising some legal strategery for expanding their precious patent rights, they’ll come up with the most ridiculous high falootin’ g@rbage you ever saw.

                1. The difference between entirely in the mind and what the law is regards to has long been recognized – even by those of us you wish to Accuse of that which you do: being born yesterday.

                  Move the goalposts back and stop dissembling.

          3. State Street was good because it offered a plausible and reproducibly applicable reading of the statutory text.

            There’s nothing “implausible” about the test in Prometheus v. Mayo. It’s been reproducibly applied plenty of times already. It’s no more or less difficult to apply than any of the other statutes.

            “I don’t like the result because I think patents on correlations make the world go around” doesn’t mean that a test is “implausible” or difficult to apply. It just means that your favorite subject matter is no longer patentable.

        2. Shrug. You can’t identify one Patent that you think isn’t junk.

    2. Uh, yeah, it IS an attempt to overturn Alice and Mayo, and to restore State Street Bank. So? With IPRs and PGRs in place – proceedings that were unavailable during the heyday of the “patent troll” phenomenon – it’s likely that many junk patents will be invalidated before the PTAB. But on 102, 103 and 112 grounds, as they should be, not because they’re “directed to” “a natural process” or “an abstract idea”.

      1. Dan, IPRs, CBMs, trools and 101 should not be linked. Wrecking the patent system in order to stop junk patents and trolls is not even remotely a good idea. If a patent is junk, courts are today handing out 12(b) dismissals and attorneys fees pronto.

        But restoring State Street Bank will reliably sink the patent system just as it did before.

  13. The IPO proposal has zero chance of being passed.

    Greg: The IPO proposal was not perfect

    LOL It was a joke written by the worst self-dealing patent attorneys in the business. As such, it’s an embarrassment to the profession.

    it was orders of magnitude better than the mess we have now.

    Having difficulty finding clients who aren’t “inventing” “new” logic, Greg? That’s a pity. Try harder.

    1. Adding: other than pulling strings behind the scenes, did the “proponents” of this asinine revision to the statute ever attempt to discuss the statute with any critic of the statute, publicly?

      Because the people are involved are really, really, really incompetent when it comes to engaging in an honest discussion about subject matter eligibility. Just ask around.

    2. Having difficulty finding clients who aren’t “inventing” “new” logic, Greg?

      This has nothing to do with my clients. Software claims account for less than 1% of the work that I have done over the course of my career, and account for 0% of the work I am doing now. It really will not affect my bottom line for weal or woe if these revisions pass or fail. I simply agree with the public policy implicated by the revisions and disagree with the public policy vision implied by Mayo and Alice.

      1. What public policy are you referring to and what is the basis for your disagreement?

        1. Patent law exists to encourage discovery and disclosure. The public policy effect of Mayo is to incentivize secret keeping.

          The rational thing, in hindsight, for the Mayo inventors to have done would have been to set up their own private clinic where they know the safe ranges for thiopurine metabolites, but they tell no one of these safe ranges. As a result, far fewer of the patients in this clinic would die during treatment than occurs in most clinics. Rich patients will willingly pay a premium to be attended by physicians with so much better a track record, and therefore the Mayo inventors will recoup their research capital outlays in catering to an exclusive clientele instead of by charging a royalty on test kits used in every clinic in the nation.

          This is a bad public policy outcome, or at least suboptimal compared to the alternative. The knowledge of what range of thiopurine metabolites is safe in a patient is knowledge that we should want to see disseminated. Mayo makes such dissemination less likely. The IPO revisions restore the likelihood of such dissemination back to the pre-Mayo level. That is a better public policy outcome, relative to the status quo.

          1. The rational thing, in hindsight, for the Mayo inventors to have done would have been to set up their own private clinic where they know the safe ranges for thiopurine metabolites, but they tell no one of these safe ranges.

            Remember: Mayo was using their own set of “better” ranges which was non-identical to the ranges that Prometheus used. I’m not aware of any evidence that Mayo tried to keep its ranges “secret”. I also don’t remember Mayo trying to patent its own method of collecting metabolite data using prior art methods and thinking a new thought about it.

            That said, a hospital that keeps an important correlation “secret” while hundreds of thousands of patients at other hospitals suffer and die is probably going to run into some difficulties. This is the 21st century, after all, not the 12th. The last time I checked, hospitals exist to help sick people, not to enrich “investors” via IP monetization. So, maybe keeping a medically important correlation “secret” is “rational” if we ignore the humanity part of the mission (and why not? it’s just a hospital and patients are just “consumers”) but probably “vile” is a better descriptor of the activity than “rational.”

            Rich patients will willingly pay a premium to be attended by physicians with so much better a track record

            Rich people will always pay more for better treatment if they can afford it. This is has absolutely nothing to do with the patent law issue.

            This is a bad public policy outcome, or at least suboptimal compared to the alternative.

            Your fantasy outcome is not “suboptimal” compared to the very real prospect of people being threatened with litigation because they must have been thinking about “the meaning” of some data they collected (“you admitted that you read the paper! you were at the conference! etc”). This is what Prometheus v. Mayo was about.

            The knowledge of what range of thiopurine metabolites is safe in a patient is knowledge that we should want to see disseminated

            Almost all scientifically generated information is publically disclosed without the information being protected by a patent. I also agree that we want to see that information disseminated. The idea that info dissemination is improved by handing out patents (?!?) on, e.g., methods of thinking about some “new meaning” of data or methods of accessing “new” data with a computer is so ridiculous on its face that it’s hardly worth addressing. And the ONLY reason that the issue is coming up is because of the b0tt0mless greed of a tiny tiny tiny class of incredibly wealthy people who want to own everything that isn’t nailed down.

            1. “That said, a hospital that keeps an important correlation “secret” while hundreds of thousands of patients at other hospitals suffer and die is probably going to run into some difficulties. ”

              But the correlation is a natural phenomenon, in the public domain since the dawn of man, just ask Ned.

              Why would it be the hospital’s responsibly to broadcast it?

              Too bad we don’t have a patent system that wants to promote progress in the useful arts, such as treating and curing disease, by securing for inventors, for a limited time, exclusive rights to their DISCOVERIES.

      2. Software claims account for less than 1% of the work that I have done

        And undoubtedly they also account for zero % of the progress in the (LOL) art of instructing computers how to apply logic to data.

        1. Quite possibly. It is of little moment to me. As Justice Story wisely observed

          All that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society… But if the invention steers wide of these objections, whether it be more or less useful is a circumstance very material to the interests of the patentee, but of no importance to the public. If it be not so extensively useful, it will silently sink into contempt and disregard.

          Lowell v. Lewis, 1 Mason. 182 (C.C.D. Mass. 1817)

          1. “If it be not so extensively useful, it will silently sink into contempt and disregard.”

            Well, unless it’s drafted “lolproperly” and encompasses some abstract idea etc.

            1. You are not grasping utility there 6.

            2. Sure. There are all sorts of reasons why a claim can and should fail that go beyond whether or not its utility is sufficiently important. I was responding, however, specifically to MM’s assertion that most software patents do little to advance the art. I do not think that this is a relevant consideration for judges or examiners to consider.

              There exists a category of inventions that (1) satisfy the statutory requirements for patentability but (2) are dumb or uninteresting. We really do not need the law to save us from that category of inventions. The market will take care of them without any help from the law.

          2. How many applications were applied for in 1817?

          3. My “invention” on a tiny class of entertaining poems isn’t injurious to society.

            But a zillion other such patents might present a wee problem.

            Probably Justice Story didn’t think this through very deeply. Gee, I wonder why not.

            1. poems…

              And you wonder Malcolm why you are considered the biggest blight of the site?

              1. If you have a counter-argument to make, then make it. I just destroyed Story’s rationale and it took two seconds.

                Here it is again: the issue isn’t what injury to society results from a *single* patent. The issue is what happens when the gate is opened to a *kind* of “innovation” that is incredibly easy to make, incredibly difficult to evaluate/examine, and results in the patent system being overrun by “attorney inventors”, bankers, data collectors and gamers to the detriment of innovative scientists and engineers. And it’s not even a hard question to answer because we already did the experiment. It was a disaster for everybody except (surprise!) the whining patent attorneys and the grifting b0ttom feeders who had plenty of money to begin with. Everybody else loses.

                1. The issue is what happens when the gate is opened to a *kind* of “innovation” that is incredibly easy to make, incredibly difficult to evaluate/examine, and results in the patent system being overrun by “attorney inventors”, bankers, data collectors and gamers to the detriment of innovative scientists and engineers.

                  A couple of points in response:

                  (1) I agree with you that opening the patent system to the wrong sort of “inventions” carries a real risk to the innovation ecosystem overall.

                  (2) That said, whenever you are talking about ecosystems, you have to be just as conscious of what is not seen as what is seen. That is to say, it is not enough to say “see all these junk claims that arise once we allow X class of claims.” You also have to ask “what innovations would we not have but for the allowance of X class of claims.”

                  I am very willing to believe that we would still have the onboard software in my Sirius XM without software patents. I am willing to believe that we would still have shareware chess games without software patents. 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.

                  Does the cost of ED Tex nuisance suits outweigh the benefits of Adobe Acrobat? Not from where I am sitting.

                  (3) So, it is possible to tighten the statutory standards (or the quality of examination by which those standards are implemented) so as to improve the ratio of good software claims to bad claims? I am optimistic that this is possible, but I am very skeptical that this is possible by fiddling with §101.

                  I know that you think that the Alice test is clear and reproducible, but you are rather alone in this view. You listen to CAFC oral arguments, so I know that you know how hard the judges find it to figure out what it means to be “directed to an abstract idea” or what it is to be “significantly more” than the abstract idea. The PTAB and the examiner corps have every bit as much trouble with these standards.

                  From where I am standing, this would be much easier a problem to solve if it were refashioned as a §112(a) written description question. Under §112(a), you cannot claim something if you did not describe it. So, when someone invents one way of (e.g.) adjusting an insurance claim on the web, and then claims every computer readable medium configured to achieve that outcome, the relevant rejection is §112(a) (“applicant has not described every method by which insurance claims might be adjusted on the web, and therefore Claim 1 exceeds the breadth of what is permissible under §112(a)…” or some such).

                2. You jumped into clearly non-Useful Arts to do your “destroying.”

                  The point? Asked and answered. See Wolfgang Pauli and the expression “not even wrong.”

                  But hey, go ahead and accuse someone else of being “born yesterday” or that someone else’s “argument” is “the. worst. ever.”

                  You seriously need some new memes.

                3. “You also have to ask “what innovations would we not have but for the allowance of X class of claims.””

                  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.

                4. Nobody in the real world “invents” because x class of claims are allowed.

                  I suppose I cannot agree, but it is not a point I care to chase down a rabbit hole. Allow me to rephrase:

                  One must also ask “what sort of private industry R&D projects will be axed if X class of claims are categorically excluded from patentability?”.

                  How many of those inventors will keep working on project X if their boss tells them “put X on ice and start working on Y. We cannot make money on X any more”?

                5. Greg,

                  Malcolm is on record as believing that ALL software should be banned from patent eligibility.

                  All.

                  Ever notice how much dust he kicks up when the conversation turns to patent equivalence?

                  After all, software is merely a patent equivalent to hardware.

                  And special for Mr. Snyder: patent equivalence is just not the same as “exactly equal” and is why even using two different words remains “ok.”

                6. Please pardon any filter-induced duplicating posts:

                  Greg,

                  Malcolm is on record as believing that ALL software should be banned from patent eligibility.

                  All.

                  Ever notice how much dust he kicks up when the conversation turns to patent equivalence?

                  After all, software is merely a patent equivalent to hardware.

                  And special for Mr. Snyder: patent equivalence is just not the same as “exactly equal” and is why even using two different words remains “ok.”

                7. Does the cost of ED Tex nuisance suits outweigh the benefits of Adobe Acrobat?

                  This assumes that we wouldn’t have “Adobe Acrobat” (a trade name for a suite of compuer functionalities) without junky software claims. That’s a horrible assumption.

            2. MM, I would think that in the context of his time that Story had no idea about asserting inventions that were nothing more than abstractions. By 1840, he was of the pioneers of the doctrine that one cannot patent phenomena of nature or principles (including laws of nature) in the abstract. He did so based on the common law doctrine that patents that claimed more than they had a right to claim (i.e., beyond their disclosure) were void.

              1. Really? In what cases did Justice Story address natural phenomena? I confess I have not read those cases, but would be eager to do so.

              2. What is tells my here is that “claiming more than what was disclosed” has ZERO to do with eligibility and can occur in any and every art field (even the g a s p, traditional one).

  14. I hope it happens.

    The first case will be to the Supreme Court within a few years, by then which another few hundred thousand (worsened) weapons of economic destruction will have issued from the USPTO.

    Then the Supreme Court can speak to the relationship between patent claims and pure information, finally.

    1. Then the Supreme Court can speak to the relationship between patent claims and pure information, finally.
      As if they (or you) have a clue as to the relationship.

  15. Two responses:

    (1) Do you mind linking to this hearsay report?

    (2) Please God, may it be so. The IPO proposal was not perfect, but it was orders of magnitude better than the mess we have now.

    1. “(2) Please God, may it be so. The IPO proposal was not perfect, but it was orders of magnitude better than the mess we have now.”

      This is a joke?

      1. Have you been paying attention, zoobab?

      2. zoobab, State Street Bank demonstrably and almost single-handedly brought the patent system to its knees by allowing all sorts of junk, like business method patents, to issue.

        The IPO is out of its friggen mind. It is being lead by IBM, a company that was behind business method and software patents from the beginning. IBM also brought us the AIA, reexaminations, IPRs and a fundamental restructuring of our patent system to favor IBM.

        Now, IBM is allowed to pursue its own interests. But it always does so in a highly misleading way, phasing the AIA and other patent reform as being essential for small business, even while doing everything in their power to deny small businesses, who need patents and who opposed the AIA, to speak at public hearing before congress, or to have access to the levers of power of lobby organizations such as the IPO.

        I have had it up to here with IBM over my career. Tread carefully, zoobab.

        1. I do have to chuckle at the insistence from the sAme ones repeatedly attempting to use State Street as some type of “b00gyman.”

          The legal position that Greg mentions above in regards to State Street is not some type of “new” legal position, and in fact pre-dates that case and is merely tied to a proper reading of the words of Congress in 101 that would cabin the intrusion of the judicial branch and that branch’s attempt to arrive at its own desired Ends.

          What Greg states (and repeated here for emphasis) is simply NOT a paean to “State Street” or any change in what Congress wrote well before the “State Street” case came along, and truly is agnostic to ANY particular art field or thrust of innovation. By that software or business methods or any other Windmill Chase.

          To put it simply, the exchange between Malcolm and Greg resulting in Greg’s post at 4.1.1.1 could easily remove the specific case (which is but an example – and not the driver or originator of the view of statutory law), and look instead as a way of looking at statutory law – without the intrusion of the judicial branch and that branch seeking to write patent law how that branch would want patent law to be written.

          Malcolm: “Note that Greg can’t articulate why State Street was good…

          Greg: “State Street was good because it offered a plausible and reproducibly applicable reading of the statutory text. It did not try to add epicycles and penumbrae into that which Congress wrote, in an attempt to reach a pre-ordained result. It just asked “do these claims fit into one of the four statutory categories?” (yes); “are they new?” (yes); and “are they useful?” (yes). That is the right way to do 101 law.

          Remove the b00geyman, and take a closer look at what is being said:

          The right way to look at statutory law is to NOT twist that law with the attempts and desire to change the law.

          Interpretation – if at all needed -is not to inject “epicycles and penumbrae.”

          101 was written (by Congress) as a rather low hurdle and wide open gate.

          It was not written (by Congress) to do what the Court has re-drafted it to do.

          As I have repeatedly stated, 101 has but two sections

          1) Greg: “It just asked “do these claims fit into one of the four statutory categories?” (yes);

          and

          2) Greg: ““are they useful?” (yes). That is the right way to do 101 law.

          I would further go one step more than what Greg has done and emphasize that the “new” in 101 is not even a different requirement and only means what Congress – as provided under their Constitutional authority – defines “new” to be, and that has been explicitly broken from a previous single paragraph into separate sections of law by Congress in the Act of 1952. It is only a reference point in 101 and NOT a distinct requirement of 101.

          Thus, I have changed Greg’s quote purposefully by removing the “are they new?” (yes); and” section.

          The “new” is then tied to the actual controlling section through the remaining phrase of 101: “subject to the conditions and requirements of this title.

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