AIPLA On Board with Statutory Reform of 101

The AIPLA has now offered its legislative proposal for rewriting 35 U.S.C. § 101 that is quite close to that offered by the IPO:

Inventions Patentable

(a) Eligible Subject Matter.—Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or any useful improvement thereof, may obtainshall be entitled to a patent therefor, subject only to the conditions and requirements ofset forth in this title.

(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

(c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

AIPLA statement. The AIPLA proposal is strikingly similar to that of the IPO’s (although not acknowledged by the AIPLA statement).

[DOCX File of Table: Comparing101ProposalsComparing101

Dennis Crouch

About Dennis Crouch

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

396 thoughts on “AIPLA On Board with Statutory Reform of 101

  1. In order to be taken seriously, both the AIPLA and IPO proposals also need something along the lines of the following:

    (d) a claimed invention shall not be eligible if it abridges any rights under the First Amendment of the Constitution.
    (e) a claimed invention shall not be eligible if the claimed invention as a whole is an attempt to protect any one or more of the following: (i) physical actions by humans; (ii) strategies on how to play a game or contest; (iii) artistic and literary works; (iv) legal relationships; (v) principles of social sciences; (vi) schemes of solving mathematical and/or physical problems.

    Obviously, the exclusions in (e) could use some discussion, but you get the idea. I also do not think such a bill would get passed by Congress without adding “(vii) methods of doing business” although personally I would prefer to leave it out.

    This would avoid all of the laughs on floor regarding the original IPO proposal when an opponent of the bill testifies about how the proposed amendment would allow for patents on “golf swings” etc. This also avoid the problems I point out below regarding “infringement by thought.”

    Am I selling out? No. Better to save some patents than have the Federal Circuit continue to chew them up. I’m not going to lose any sleep over Joe Golfer not being able to patent his new and improved golf swing.

    This is the only realistic way to move forward. I hope the AIPLA and IPO are paying attention.

    1. What’s a scheme for solving a mathematical problem? Let’s say you use a new encryption scheme where both sides need to have the scheme in order to communicate. Is this a “scheme for solving a mathematical problem” if you direct the claims to a device that uses the encryption scheme to communicate with another device?

      1. Bob, that’s a valid point (I did say these need further discussion). My intent was to exclude pure mathematical calculations. For example, computing e/(c^2) to get m. There should be some exclusion of physical/mathematical formulas so academic use of equations would not be affected. But I agree, the language in (vi) needs to be wordsmithed. I’ll think about it a little more and come up with an improved version.

        1. pl,

          There are two additional points that you should consider.

          1) Please note that there are fundamental differences between math, applied math and Math(s).

          You seem to not recognize that applied math has ALWAYS been a staple of patent eligibility.

          2) Further, the so-called “academic use” ALREADY is deemed non-infringing (along the experimental use exception).

    2. You may not be “selling out,” but your views are clearly outside of what is eligible per Congress today.

      By the way, “schemes of solving mathematical and/or physical problems.” rules out ALL engineering.

      Or do you think otherwise?

      Also, by the way, you have not provided a cogent position on any claim – taken as a whole and that exists MORE THAN just “totally in the mind” that would also “abridges any rights under the First Amendment.” Your example did not cut it, as you included positive actions that clearly were not “totally in the mind.”

      1. “anon” you have not provided a cogent position on any claim – taken as a whole and that exists MORE THAN just “totally in the mind” that would also “abridges any rights under the First Amendment.”

        Because everybody know that your First Amendment rights vanish as soon as you do something that’s not “totally in the mind”. Sure, you have a First Amendment right to think and speak freely. But you don’t have a First Amendment right to think and speak freely while you’re legally drinking a cup of coffee.

        Deep deep stuff here.

        1. Ah yes, the poker tell of “deep stuff” combined with the lack of Malcolm actually making a point because he is not addressing the necessary claim as a whole aspect of the actual law.

          Still trying to move the goal post of claims NOT totally in the mind and base your “position” on only parts of a claim, are you Malcolm?

          Deep you say? Just like you clutching the shovel and remarking how someone else is digging, the stench of your number one meme of Accuse Others is heavy in the air with your poker tell.

          But you already knew that, eh?

    3. …and my reply to you below never made it out of the controlled narrative land…

      Let’s see if I can salvage it…

      Your comment is awaiting moderation.
      May 19, 2017 at 5:37 pm

      Your assumptions beg too much, pl.

      They do not bring clarity.

      Further, there is NO actual “just thinking” because you also include an actual action along with that “just thinking,” thereby negating the very point that you are trying to arrive at.

      By the way, per your example, the action may very well be infringement of one (or the other or possibly both) patents with ZERO thinking.

      That too shows your hypothetical is too flawed to be of any use.

      (programming on a computer is not thinking by a human).

      Absolutely correct – but look again at what Malcolm is actually saying.

      1. Anon, I thought my post in 22.2.1.1 clarified the issue (it got stuck in the spam filter for a while so you may not have seen it). But let me try to explain again.

        Look at the two claims in my 22.2 post (reproduced below):

        1. A method comprising: a) rolling a die by an operator; b) if the operator sees that the result of the die roll = 3, then the operator pulls a lever to activate a [particular mechanical process].

        2. A method comprising: a) rolling a die by an operator; b) if the operator sees that the result of the die roll divided by 3 = 1, then the operator pulls a lever to activate a [particular mechanical process].

        The mechanical process in both claims is exactly the same (and can be a prior art process, pretend it is opening a trap door). If you observed two people and were told one person was performing claim 1 and the other person was performing claim 2, would you be able to discern who was who? Of course not!

        Or look at it this way. Patent #1 has only claim 1 above. Patent #2 has only claim 2 above. Operator owns patent #1. Operator performs the method in patent #1 on a daily basis. One day, he thinks differently and performs the method from patent #2. It has the SAME physical result, but the difference in him thinking is what now causes him to infringe patent #2.

        Are my example claims above extreme? Admittedly, yes they are. But the fact that I can even draft such claims (which would be statutory under the proposals) shows that the original proposed 101 is unworkable. Under the current framework, if the process is a prior art process then the above claims would be considered “abstract ideas.” Congress isn’t going to pass anything like the IPO proposal once this flaw is brought to their attention.

        Anon, I’m not wrong about the “infringement by thought” example. But I’m not sure I understand your aversion to my proposed amendment (d) above. Since patent law is inferior to the constitution, technically section (d) shouldn’t be necessary. But the entire amended 101 should ideally be entirely encapsulated so as to avoid any further “judicial activism.”

        1. pl,

          I saw and answered your hypothetical – it is fundamentally flawed for the reasons that I have already given, and simply does not – and cannot – address the point that you think that it does.

          1. “anon”, you truly are a disgrace to the legal profession.

            I wish I could say “one of a kind” but, sadly, it’s not the case.

            1. Your feelings are noted.

              You really should get into a profession in which you can believe in the work product produced. Align yourself with doing something that does not produce those feelings that you habitually project onto others.

        2. patent leather: Under the current framework, if the process is a prior art process then the above claims would be considered “abstract ideas.” Congress isn’t going to pass anything like the IPO proposal once this flaw is brought to their attention.

          Undoubtedly true. And everyone knows this because (1) true and (2) written all over the Internets now.

          Kinda odd that the cl 0wns who proposed this dreck can’t be bothered to step up and defend it themselves. Then again, that’s pretty much how they roll. If you can’t defend the indefensible, just stick your head in the sand and scream about how China or whatever other distraction is listed next on the script.

          1. It’s a weird day when MM and I agree on something regarding 101. But at least Malcolm can see the flaw in the IPO, AIPLA proposals.

            Of course, Malcolm loves the proposals as they are because he knows they have very little chance of being passed. I, on the other hand, am hoping the folks at IPO, AIPLA will revisit these issues and come up with a revised proposal that can be taken seriously. Which leaves me wondering, if these proposals are the best IPO, AIPLA can come up with, what is all of our dues money going to??

      2. “anon” there is NO actual “just thinking” because you also include an actual action along with that “just thinking,” thereby negating the very point that you are trying to arrive at.

        Ah yes: let’s all pretend we’re five years old and can’t solve a very simple logic problem.

        Remember, folks: “anon” likes to pretend he’s the smartest guy in the room. Yet somehow he can’t figure this one out even though the issues been explained to him 5,000 times and pretty much everybody else gets it.

        But it couldn’t be that he’s just a dis h0n est h@ck tr0llin’ everybody. Nope. Not “anon”! He’s a very very serious person.

      3. “anon” controlled narrative land…

        Oh, looks like our little snowflake is struggling again. The oppression is merciless.

    4. patent leather, question:

      If 112 were adequate to prevent the issuance of patents on math or on business method or patents that claim results, i.e., principles in the abstract, why is it that that so many of the patents that have issued in the last 20 years are directed to math, business method or that claim results?

      1. Ned, I”m not following your question. Is 112 supposed to be used to prevent issuance of patents on math, business methods, etc.?

        1. The argument was and still is made by many that Benson through Alice were all unnecessary because the patents at issue would all be invalidated under 102/103/112 anyway. But demonstrably, they were not so invalidated; and they were issued without the PTO in compliance with Federal Circuit law.

          Something had to be done — and the relief valve are the so-called exceptions. We would never have gotten to this place had the Federal Circuit and the PTO developed doctrines under the traditional statutes to deal with claims to mathematics, claims that business methods, claims to abstract ideas. Rather, by simply approving any claim that recited a computer without even looking into the issue is whether the invention was directed to the computer and computer system, or to something else, the PTO and the Federal Circuit simply abandoned its responsibility to the nation as a whole to do their jobs properly. The printing press is not improved by the content of what is printed. Even though this proposition seems totally obvious, it seemed lost on the C.C.P.A. and the Federal Circuit.

          The problem is not the Supreme Court as many suggest. The problem is the Federal Circuit in the PTO.

          Now the PTO for years fought the C.C.P.A. and the Federal Circuit on patentable subject matter only to give up in the mid-90s and to begin issuing patents on anything that recited a computer. That is why I include the PTO as a source of the problem. I do note that in the mid-2000’s, the PTO did change his views and begin to advocate the MOT as a solution. They have also begin the recognize Halliburton and its policies.

          Regardless, attempting to cripple the recent Supreme Court jurisprudence in this area, which is the major objective of both the IPO and AIPLA initiatives, without making corresponding reforms in 102/103/112 adequate to deal with business methods, mathematics and other abstract ideas, has to be resisted by any prudent person.

          What appears to be happening is that the patent bar is being led by IBM into proposing a fundamental mistake. We will live to regret the day any such proposal is passed, just as we are now regretting reexaminations and all forms of postgrant reviews – both of which were advanced initially by IBM.

          What is good for IBM is not necessarily good for the USA.

          1. Ned,

            Something had to be done?

            Who made that (policy) decision?

            Then tell me which branch of the government actually has authority to create any such (policy) “safety valves.”

            Hint: it is not the judicial branch.

          2. The problem is not the Supreme Court as many suggest. The problem is the Federal Circuit in the PTO.

            Yup.

          3. Ned the Ed is at it again. Giving us a false narrative. Benson was done to prevent software patents. It has been pretty much admitted it was judicial activism. Benson was done when hardware was the money maker and IBM wanted Benson.

            The software industry has grown-up with patents. It is ten times the size it was when State Street was decided. Patents have made the software industry what it is —the best in the world by far.

            Just think if you add up all the software awards in federal court they make up less than one year of profit to Google.

            Please stop with the false narrative Ed the Ned.

          4. Ned, your initial question only mentioned “112” (but not 102/103) so I did not fully comprehend your original question.

            I don’t see State Street as the big problem that you do. State Street merely adopted the USPTO’s position as the “business method exception” had been written out of the MPEP at that point in time. If anything, the issue of “bad patents” was created by the USPTO and not training examiners to apply 103 properly.

            I’ve been around a long time and I’ve seen tons of cease and desist letters on obvious patents. I’ve been able to make them all go away by digging up art and threatening an IPR (no troll wants to risk losing his patents). Now of course the Alice case makes it even easier for trolls to go away (threatening an Alice 12(b)(6) motion on any software patent makes any troll run for the hills). I think the “problem” of “bad patents” has been vastly overstated. I still say the best way to attack the Alice patents would have been 102/103 (in which they clearly would have been held invalid).

            Judge Rich in State Street realized that by drawing a distinction between the invention therein would open “Pandoras box.” Unfortunately, Alice now has opened Pandora’s box and now we face the opposite type of problem. Why should claims like those in Recognicorp be axed as “abstract ideas”? Destroying property owned by parties who have done no wrong is really an extreme measure. What if the U.S. gov’t took your house away saying it was improperly built on Native American land?

            As indicated by my other posts on this thread, I do realize there has to be some limit on statutory subject matter. I’m not going to think highly of patents on movie plots or golf swings. I think Judge Rich had it right with the “useful, concrete, tangible result” approach. His opinion could have been written better with more clarity and with more references to Flook, Diehr, and Benson to avoid its ultimate fate. The “useful, concrete, tangible result” approach just needed to be further developed at the Federal Circuit, for example to more clearly define what “concrete” meant and it could have done the dirty work to weed out the “bad” patents without the Alice mess that we have now.

            In any case, as my posts herein state, I think the IPO, AIPLA proposals have virtually no chance of being passed unless they are modified to exclude certain categories of claims.

            1. Thanks for the reply, patent leather.

              Let me give you quote Curtis then ask you a question.

              “Langdon v. DeGroot, 1 Paine’s C. C. R. 203. The learned judge said: ” The invention is for folding the thread and floss cotton in a manner a little different
              from the ordinary mode, in which form the cotton will sell quicker and higher by twenty-five per cent than the same cotton put up in the common way. The cotton thus folded is imported from the factory of Holt, in England. The article itself undergoes no change; and the whole of the improvement- for it is a patent for an improvement-consists in putting up skeins of it, perhaps of the same size in which they are imported, decorated with a label and wrapper; thus rendering their appearance somewhat more attractive, and inducing the unwary, not only to give it a preference to other cotton of the same fabric, quality, and texture, but to pay an extravagant premium for it. When stripped of these appendages, which must be done before it is used, the cotton is no better in anyone respect than that of Holt’s retailed in the way put up by him. All this came out on the plaintiff’s own testimony.

              “Now, that much a contrivance – for with what propriety can it be termed a useful art, within the meaning of the Constitution? – may be beneficial to a patentee, if he can exclude from the market all other retailers of the very same article, will not be denied; and if to protect the’ interest of a patentee, however frivolous, useless, or deceptive his invention may be, were the sole object of the law, it must be admitted that the plaintiff has made out a satisfactory title to his patent.

              “But if the utility of an invention is also to be tested by the advantages which the ‘Public arc to derive from it, it is not perceived how this part of his title is in any way whatever established. Is the cotton manufactured by himself, which is put up in this way? The very label declares it to be that of another man. Is anything done to alter its texture or to render it more portable, or more convenient for use? Nothing of this kind is pretended. Does the consumer get it for less than in its imported condition? The only ground on which the expectation of a recovery is built is, that he pays an enormous additional price, for which he
              literally receives no consideration.

              “It is said that many.ornamental things are bought of no intrinsic value, to gratify the whim, taste, or extravagance of a purchaser, and that for man)’ of these articles patents are obtained. This may be so; but in such cases there is no deception, no false appearances; and the article is bought to be used with all its decorations and ornaments, which may have been the principal inducements to the purchase, and which will last as long as the article il8elf. In this the sight or pride of the party is gratified. But here it is tbe cotton alone which it is intended to buy, and the little label and wrapper appended to it, and which constitute the whole of the improvement, however showy, are stripped off and thrown away before it can be used. And when that is done, which may be at the very moment of its purchase, the cotton is no better, whatever the buyer at the time may think, than when it first left the factory.

              ” ‘When Congress shall pass a law, if they have a right so to do, to encourage discoveries, by which an article, without any amelioration of it, may be put off for a great deal more than it is worth and is actually selling for, it will be time enough for courts to extend their protection to such inventions, among which this may be very fairly classed.”

              Curtis (67ed) at 32.

            2. Do you think that the essential holding of the Langdon case, quoted by Curtis, is that purported inventions that actually do not improve a product (or process) are not within 101 and perhaps not even within the Constitution?

              Is not that the essential holding of Alice?

              1. Is not that the essential holding of Alice?

                Absolutely not.

                In Alice, there was no question of the utility improvement, as both sides stipulated to as much.

                How deep into the weeds are you going to go, Ned?

              2. Ned, it’s hard for me to seriously read a case from 200 years ago, although such old patent cases are indeed very interesting. I also don’t know what the statutes looked like back then or what the claims said in this patent (if it even had claims) so it is difficult to interpret this without the context. But yes, it seems the judge is skeptical the “invention” therein is in a “useful art.” However, I don’t read this as holding that such a valid patent would be unconstitutional since the last paragraph proposes that Congress can authorize such patents if they want to. But to answer the first question you posed: yes, it seems the judge in Langdon did not find a patent that did not improve a product to be in a “useful art.”

                Moving to Alice, I’m not seeing the same issue. In Langdon it appears that ornamentality was questionable as a “useful art.” If this patent application were filed today (presumably one to an ornamental label) it would be void for 101 (or under 103 based on the printed matter doctrine). Alice was a set of concrete steps/actions which manipulated data to achieve results. There was no such manipulation in Langdon. I would say that Alice did indeed improve the prior art (this point seemed lost on the Supreme Court justices as I don’t really think they understood the invention). The Alice invention was being used by CLS Bank so clearly it was an improvement over the prior methods of processing such transactions.

                I see what you are getting at. However, in my opinion the holding of Alice was quite different than Langdon. If the holding of Alice was the same as in Langdon (which seems to be what you are implying) then this would mean that all claims that have no art rejections against should then be statutory. But we all know this is not how the current system is working (at the USPTO and the courts). In any case, thanks for the case cite.

                1. However, I don’t read this as holding that such a valid patent would be unconstitutional since the last paragraph proposes that Congress can authorize such patents if they want to.

                  This has L O N G been pointed out to Ned (in the Pennock case, for example.

                2. Actually patent leather, the patent statutes were substantially the same in 1793 as as they were in 1952. 101 read the same, and there were exclusions for known and used, and for prior invention.

                  The issue before the court essentially was whether dressing that made the old and an improved product sell for higher price was patentable subject matter. The court did not think it was for the reason stated primarily because it did not improved product. The dressing itself is not appear to be a useful improvement to the product.

                  Regarding Alice, the case itself is not that important. The point of Alice is that simply adding routine and generic computer equipment, and conventional methods, to subject matter that is otherwise unpatentable subject matter is not “enough.” In Alice, the unpatentable subject matter was the financial method. In Langdon, it was a trade dress. In Alice the unimproved but otherwise patentable subject matter were computers and routine computer methods. In Langdon, it was the cotton.

                  Regarding the Alice facts themselves, everything the claim that was new, was unpatentable subject matter. Trying to say that the claim should be patentable simply because the the business method disclosed was new is somewhat akin to missing the point.

              3. Ned, I see your point and it is food for thought. However, I would say there is a clear distinction between the two situations. Old cotton + label = something not useful. But, new accounting method + computer = something useful. The computer “activates” the accounting method and springs it to life in a manner that doesn’t happen between the cotton and label. Another distinction I see is that “trade dress” is not eligible subject matter (and never was). Generic computers are eligible subject matter (although an oddity is if you filed an application on a generic computer you would get a 102 but if you filed a non-obvious business method with a generic computer you would get a 101).

                In any case, in my opinion, the invention in Langdon should be invalid under 102/103 not 101.

                The Langdon holding would be in tension with cases that held step II of Alice is satisfied with generic computers, such as Bascom. But after 200 years, I’d say it isn’t a problem.

                1. …it has the proper utility…

                  You see his point (for now), but your Windmill siren will rise again and obscure that view.

    5. I think you are basically right that any proposal to amend 101 has to take into account some of the reasons that allowed the tightening of 101. And, it would have to make it clear what the statute did to each of the cases you mention.

      Similarly, any hope to change IPRs has to take into account that the federal courts don’t want the work.

    6. Sorry PL – Those additions would make the proposal far less serious.

      Methods and processes are patentable subject matter. They all cover physical actions by humans. Making a new medicine, for example, requires, mixing, stirring, likely heating or cooling, all of which are actions of humans. Most methods have decisions points and those can be gamed out and therefore characterized as playing a game…etc, etc..

      1. I really don’t think chemical reactions could reasonably be considered as “playing a game.”

        1. I am curious if Schrödinger’s cat would agree with that (or maybe Schrödinger, since the cat herself may not want to be playing that game).

          😉

          1. Assume one can find an advertisement today offering kittens from a direct descendent of Schrödinger’s cat, what would that imply about the state of the cat in the box?

            1. Why assume?

              What if the kittens were to be harvested from frozen cells of said cat taken prior to the cat being placed in the box? What if a pair of photons were caused to be emitted from the opening of the box (AND no observation was made), and the said adoption were to occur with the stipulation that one of the two intertwined photons (somehow having been captured – but not observed itself – in a closed fiber optic loop) would be evaluated only after said adoption…?

              My, the level of games seems endless – quite opposite the point at 29.6.1….

            2. That it got out of the box…or had company.

        2. Not the reactions themselves, those aren’t decisions. But, how long to stir, how big a flame, to what temperature….picking those can be a game…. like Russian Roulette.

  2. Statutory reform…

    Won’t change a thing if the Supreme Court is still in the loop.

    There is a viable answer to that…

  3. I wonder what would happen if Malcolm could not use ad hominem….

  4. Another one of the great contradictions of the patent maximalist “worldview”: someone we’re all supposed to accept that, no matter what the context, handing out private rights to sue people for doing this or thinking that is inevitably going to result in positive results because it forces non-owners to adjust and “innovate.” Progress!

    But when the maximalists are deprived of some “right”, their response isn’t to adjust and innovate but simply to throw a big tantrum and threaten everybody with the end of civilization. Go figure. And remember: these are the people who invariably already have a lot of money. But boo hoo they’ll have to sell some of that “investment property.” So sad.

    1. You really do need to get into a profession in which you can believe in the work product produced.

    2. I think the Docx file provided above is a clear example of adaptation and innovation and the discussion herewith represents percolation associated with further adaptation and innovation.

    3. You are a hack, a shill for infringers, and a paid slattern. What you say means less than absolute zero.

      God, what a wasted life.

      Get to church and try for absolution.

      1. With the current editorial controls, the perception being created is that the desired narrative carries with it the perception that the Monologueists are “winning.”

        Ironic then that even rebuttals concerning First Amendment comments fall victim to the (arbitrary?) editorial controls of what gets through and what does not….

      2. Get to church

        “A method for praying, wherein said method comprises a computer and an electronic display, wherein said display includes at least one field or button for user input …etc etc”

        In s00per d00per shiny patent land, church comes to you. Don’t forget to bring your lawyer.

        1. Not sure what point you are trying to make (other than showing just how much cognitive dissonance affects you by your so called being in this profession).

  5. More evidence of the “born yesterday” mentality:

    “anon”: Pay or invent around. People too easily forget that this type of ultimatum is a benefit of the system

    A benefit for whom? Computer programmers? Poor people trying to learn how to bowl, or pitch, or swing a baseball bat? Grad students trying to discuss the implications of their experiments? Doctors trying to advise patients about the results of public domain medical tests?

    Nobody is “forgetting” the theory of the patent system, “anon”. Nice try, though!

    We’re also not “forgetting” how people like you think. That’s because you keep reminding everyone. Hint: try not to let the truth about your extremist beliefs leak out so much. Not everyone has consumed as much patent k00l-aid as you. Hardly anyone has.

    1. You act like my beliefs are a bad thing – when they are truly and merely reflective of having the clients interests in mind (as well as being ground in solid innovation theory).

      Your disdain though comes from a very different “philosophical” place, and it is a wonder how you can serve clients at all with such animosity towards the patent system.

      1. my beliefs … merely reflective of having the clients interests in mind

        You just gotta love it when the truth leaks out.

        Yes, we all know this about “your clients’ interests”. That’s been clear from the beginning. Your clients. Your wallet. Nothing else matters. Why should it? That cabin on the lake isn’t going to buy itself, after all.

        1. Potential double post…

          Nice strawman about “my wallet,” and the other part is something that you should be aware of (if you really are an attorney, given that I know of no attorney oath that does not include the particular duty to clients that you seem to want to portray as “leaky”)….

          You keep on posting as if you think that you are being clever.

          You are not clever.

          1. Nice strawman about “my wallet,”

            Oh, so you work pro bono for these clients of yours that you brought up for some reason? Because their patents on “new” web page layouts are so important? I’m very impressed by your compassion for the most deserving. It all makes so much sense now.

            1. Your insinuation that because I charge for my services that my actions somehow must be tainted is in direct conflict with the rules of ethics for attorneys.

              NO ONE has ever postulated that patent attorneys need to work for free, or else their work must be suspect.

              Such a view is untenable.

              So, yes, your comment about “my wallet” is AT BEST a strawman.

              Perhaps more correctly, this is just another sign that you are seriously in the wrong profession, and that the cognitive dissonance that wracks your psyche has already done irreversible damage.

              1. I’m not ‘insinuating’ anything. I’m just highlighting your admission that your bizarre and horrifically unconvincing “arguments” in defense of this worthless proposed revision to 101 are being made because they “reflect your clients interests.”

                I’m highlighting that fact because it explains pretty much everything about the maximalist crowd that is otherwise inexplicable. And it always has. It’s all about you and your tiny tiny tiny class of well-heeled entitled cohorts. Nothing else matters. And that’s why you have so little to offer other than your foot-stamping and relentless insistence on turning the clock back to the glory days of State Street when the firm chair’s wife and her attorney boyfriend could sit around at happy hour and “get rich off the Internet” by scribbling some g@rbage on a napkin and filing it at the PTO. Those days are over. Good riddance. They aren’t coming back.

                And once the remaining vestiges of the silliest idea ever (patenting logic and information) are expunged from the system) the patent system can begin healing itself and progress in the useful arts can proceed without the endless farcical nonsense gumming everything up.

                1. Your feelings are noted.

                  I do wonder though if you actually share these feelings with your clients as you attempt to procure for them the very things that cause you such consternation.
                  I also wonder if you share with them your disdain for serving their needs that our ethical code actually compels you to do (and quite apart from your attempted personification of this ethical requirement of ALL attorneys as some type of flaw of me personally).

                  You seem to want to highlight some odd takeaway of what really is a virtue – and a requirement – of our profession. Of course, this does call into question whether you really do have any clients at all. Perhaps though, your clients do not engage you in obtaining patent rights at all. Perhaps your clients engage you for something else, entirely. Something like merely spreading propaganda.

              2. Now now anon, don’t get so upset. MM is obviously concerned about money’s corrupting influence, which is well known everywhere it goes. It is okay to decry money’s corruption in one’s gubmit, and in gubmit agents like officers of courts/lawlyers.

                1. MM is obviously concerned about money’s corrupting influence, which is well known everywhere it goes.

                  His “answer” is not in accord with the laws, the ethics guiding those involved with the laws, nor anything else for that matter outside of his own precious feelings/politico-philosophical views.

                  While it is certainly “OK” to decry actual corruption, it is also certainly NOT “OK” to besmirch anyone operating in that system that does draw a paycheck.

                  You should understand that difference and where in that difference Malcolm actually is.

                2. Pardon Post (re)Peat…

                  MM is obviously concerned about money’s corrupting influence, which is well known everywhere it goes.

                  His “answer” is not in accord with the laws, the ethics guiding those involved with the laws, nor anything else for that matter outside of his own precious feelings/politico-philosophical views.

                  While it is certainly “OK” to decry actual corruption, it is also certainly NOT “OK” to besmirch anyone operating in that system that does draw a paycheck.

                  You should understand that difference and where in that difference Malcolm actually is.

                3. “His “answer” is not in accord with the laws, the ethics guiding those involved with the laws, nor anything else for that matter outside of his own precious feelings/politico-philosophical views.”

                  That’s ok though. He obviously doesn’t think “ethics” have kept up with the times and does not sufficiently prevent new school what he sees as corruption.

                  “While it is certainly “OK” to decry actual corruption, it is also certainly NOT “OK” to besmirch anyone operating in that system that does draw a paycheck.”

                  Sure it is. #Merica If you don’t want to be offended or whatever go to Britain or become and Aussie.

                4. That’s a bit pedantic of you 6.

                  I am not saying that Malcolm is somehow “forbidden” to have and express any (wayward) “feelings” and opinion – you seem to think that my issue is with his mere expression.

                  I assure you that it is not.

                  I am merely drawing the factual distinction between what the definition of corruption covers and what it does not cover.

                  If you want to play the game of “Malcolm defines corruption differently,” then you also play the game that there is no chance for an inte11ectually honest dialogue because any such chance does not imbibe in the “make up definitions to mean whatever” that goes with your pedanticism.

                  Anyone can have an opinion.

                  Not all opinions are in fact equal.

                  An informed opinion is different than an uninformed opinion, and an opinion that seeks to change (without stating so) the basic definitions of terms in a legal dialogue is even worse than an uninformed opinion.

                  Such is blight.

                5. Idk anon, the definition of corruption is pretty broad. If he feels like you’re being dishonest, which I think he’s said about a thousand times, in your advocacy on this topic then it is “corruption” under the strict definition, though perhaps not the legal definition. Or if he thinks you’re inducing people to wrong, say perhaps congress critters, by improper means, say perhaps advocating for a position that will benefit you and yours, at the potential expense of others.

                  “a : dishonest or illegal behavior especially by powerful people (such as government officials or police officers) ”

                  “c : inducement to wrong by improper or unlawful means (such as bribery)”

                  Seems like a legit use of the word. Even if it is not legally punishable corruption.

                6. the definition of corruption is pretty broad.

                  It is not unlimited though – and definitely NOT so bendable to what Malcolm wants to apply it given the context that what he labels as corrupt is NOT corrupt and is perfectly in line with the standards of ethics for attorneys.

                  You simply do not get to mash that word like a nose of wax – as is being attempted.

                  What he feels does not – and cannot change the meaning of the word and his statement is NOT legitimate in that sense.

                7. You seem to be thinking that all forms of corruption are barred by “muh ethics fer attorneys”. They’re not bro. Just because something doesn’t rise to the level of an ethical breach doesn’t mean it isn’t corrupt, in the ordinary use of that word.

                8. You seem to be thinking that all forms of corruption are barred

                  Not at all.

                  Your “all” does not reflect my actual position here.

                  Just because something doesn’t rise to the level of an ethical breach doesn’t mean it isn’t corrupt, in the ordinary use of that word.

                  That is your problem – you are mixing “ordinary use” and legal use on a legal forum.

                  Further, even by “ordinary use,” Malcolm’s views simply go too far.

                  Earning a living in law is NOT cause to be accused of corruption – even in the “ordinary use” of the word.

                9. “That is your problem – you are mixing “ordinary use” and legal use on a legal forum.”

                  That’s MM you’re talking about. But yes, and that’s perfectly fine. He’s not obliged to use “muh formal legal use” of terms on this blog Mr. social control.

                  “Further, even by “ordinary use,” Malcolm’s views simply go too far.

                  Earning a living in law is NOT cause to be accused of corruption – even in the “ordinary use” of the word.”

                  You do more than “earn a living in lawl” bro, and you know it. He isn’t criticizing you for “earning a living in lawl”. He’s criticizing you for your advocacy on several legal topics, and what he perceives to likely be your day in and day out actions taken.

                  Further, not even everyone in the legal community advocates for laws that would benefit their clients (and themselves). Not by a longshot.

                10. LOL – you are trying (again) to control me through the accusation of me using proper terminology as some form of social control.

                  I wonder if you see the irony there…..

                  And bottom line – proper use of language – even at the non-legal level – remains critical for a proper dialogue. And that’s NOT “my” rule.

          2. Anon does that “particular duty to clients” extend to actually advocating for changes in the lawl, as if you are a lobbyist? Because I think if that’s the case they all lawlyers should be registered as lobbyists for their clients. That way the public could know explicitly that their legal system is being governed/hugely influenced by a bunch of lawlyers on behalf of their clients, and not necessarily on behalf of just “do gooderism lobbying” so to speak.

            1. Indeed. My clients want a million dollars for each blade of grass they grow.

              You ask me why the deserve that? Why, because of the House fallacy, of course. And because the counterargument is really just inherency. So there.

            2. 6,

              You actually have a somewhat decent question here.

              IF a person’s actions – any person’s actions – fall into the designated controls that control actual lobbyist actions, then such things as “registering” which may be required would of course apply, whether or not that person is taking those actions on behalf of a client or not.

              Your question is only merely decent, because as I read between the lines, you appear to want to impugn ALL attorney advocacy that would touch upon the mere act of “advocating for changes in the lawl” as if that single mere act was enough to classify the person doing the act as a lobbyist.

              That would be a plain error on your part. I do grant that I may be over-reading your motives and that the implicit connection was not one that you had meant, in which case, my reply serves not to chastise you, but merely to clarify that the act itself of “advocating for changes in the lawl” just does not mean the person doing so IS a lobbyist, or should be held to the requirements put to lobbyists.

              Does that help?

              1. “you appear to want to impugn ALL attorney advocacy that would touch upon the mere act of “advocating for changes in the lawl” as if that single mere act was enough to classify the person doing the act as a lobbyist.”

                Nah bro, not “all”, and probably not a “single act”. Only that advocacy for changes in the lawl that would personally benefit themselves, or their clients/would be clients (or fams thereof etc.). And only for prolonged advocacy beyond say, them just giving their opinion one time or a few times, or in private among non-decision makers.

                But yes, I am somewhat disturbed by how the legal system as a whole in this country is somewhat just an extension of a bunch of lawlyers.

      2. Do you think MM files a patent application that — somehow, some way, in some manner — involves a computer, and then goes home and whips himself? 😉 Client: “I have a packaging machine that I’ve found can work 40% faster by using computer control and a new algorithm.” MM: “This CANNOT be patented! Only machines that are fully mechanical or use pulleys drawn by horses can be patented!” Based on his sunny disposition, I’d say he’d be a joy to work with.

        1. Pretty sure that MM is a paid blogger. But, if he did do patent applications I’d imagine it is just about like you said.

    2. Quote of the Day: “Until you live in Silicon Valley, you don’t realize how many d-mb rich people there are.”

      link to gizmodo.com

      1. idk I was just hearing from ol Musk about how difficult it is for anyone to face up to the fact that there just isn’t value in your product/service. It’s a mental thing that afflicts nearly everyone, esp when you put a lot of effort into a project already.

        And the people buying the thing, meh, they’re going to buy 200 dollar juicers anyway, if they have plenty of money they may as well get the veggies in a bag certified freshish.

        Maybe if they added some features to the 400 dollar machine then they’d have something worth offering. I would have thought you could make a juice from your living room on demand and have it ready in your kitchen for instance (or just tell your alexa to make it), but they made no mention of that. They’ll probably end up getting it hooked up to alexa soon enough.

    3. Yes, blessed are the Computer programmers, for they shall be granted patents.

      Yes, blessed are the poor people trying to learn how to bowl, or pitch, or swing a baseball bat? For they shall inherit the documented better ways to bowl, pitch and swing.

      Yes, blessed are the Grad students trying to discuss the implications of their experiments, for there is freedom of speech.

      Yes, blessed are the Doctors trying to advise patients about the results of public domain medical tests, for there is freedom of speech and Patents mature into the public domain.

  6. Another day, another comment thread where the defenders of the worst patents ever pretend they were born yesterday and ask questions like “How would anyone realistically enforce this patent”?

    If there’s one thing to be learned from the State Street “experiment” and other more arcane aspects of patent law, it’s that if you create an opening to sue and a modest incentive, IP lawyers will figure out a way to “monetize” it and the b0ttom feederz will rush in like there’s no tomorrow.

    It’s odd that it needs to be mentioned at all but people are still sueing on junk patents.

    1. Your lame “defenders of the worst patents ever strawman needs to be retired.

      Maybe instead of the strawman and the obfuscating ad hominem, you try to engage in the dialogue on the merits?

      Yes, this would be something new for you, and yes, after 11 years, your old habits might be difficult to [shrug] off, 😉 , but please give it a (sustained) try.

      You just might learn something different than that script of yours.

      1. Reminder: among the “worst patents ever” are patents that claim “processes” reciting only the steps of, e.g., (1) using prior art for its intended purpose of obtaining data; and then (2) thinking a “non-obvious” thought about what that data means or communicating that information to a third party.

        A tiny tiny tiny number of patent attorneys actually try to defend claims like these, in spite of the fact that pretty much nobody thinks those kinds of claims belong in the system (they are banned from the system now) and in spite of the fact that the “arguments” in defense of the claims are vapid and self-serving.

        This isn’t ad hominem. This is an observation about the real world. And denying this reality is part of the game that the defenders (like you) are reduced to playing. And we all know why. It’s well-documented, “anon.” It’s been going on for years.

        [shrugs]

        1. Your House fallacy is showing.

          Maybe instead you want to try the proper patent doctrine of inherency.

  7. This has been discussed in previous threads, if I remember correctly, but the First Amendment problem with this statute is huge. The easiest way to see it is to consider the scenario where the “innovation” is, say, the discovery of some useful information (e.g., a correlation), and the claim recites a step of communicating that information in a prior art context (e.g., over the Internet).

    Now, the “defenders” of this miserable pile of dreck revision (in quotes because, let’s face it, there’s nothing that can be defended here) want us to believe that some judge made doctrine (aka “activist illegal rulemaking” whenever it isn’t helpful to the same “defenders”) is going to save the statute because (we’ll just have to guess because the “defenders” can never quite bring themselves to do the analysis) judges and the PTO will dissect the claim (yup) and ignore the bit about the information when analyzing under 102/103, thus rendering the claim anticipated or obvious.

    I’ll note again: the fact that the people who spent YEARS coming up with this dreck can’t even bring themselves to discuss this is an embarrassment to the entire profession. But they’ve been embarrassing the profession for a long time.

    1. This has been discussed in previous threads, if I remember correctly,

      You are not remembering correctly.

      There was no discussion.

      You DID put forth some premise of “First Amendment” concerns, but you repeatedly failed to provide any substantiation to your nebulous concerns.

      1. Further,

        As you immediately do here, you want to have some position (whatever that is), and then immediately Accuse Others that they are not defending the opposite of your position.

        It does not work like that.

        You want to make it as if there is some type of concern. The onus is on you – and remains on you – to make your case.

        The fact of the matter is that you have not even bothered to start making any such case.

      2. you repeatedly failed to provide any substantiation to your nebulous concerns

        LOL

        Golly, I wonder who is being honest here?

        LOLOL

    2. Far be it for me to agree with Malcolm regarding 101 issues, but he has a point regarding First Amendment Concerns. Consider the following two claims:

      1. A method comprising: a) rolling a die by an operator; b) if the operator sees that the result of the die roll = 3, then the operator pulls a lever to activate a [particular mechanical process].

      2. A method comprising: a) rolling a die by an operator; b) if the operator sees that the result of the die roll divided by 3 = 1, then the operator pulls a lever to activate a [particular mechanical process].

      What if the operator has rights to claim 2 but not claim 1. He rolls the die, it is a 3. He pull the lever. The owner of claim 1 now sues for infringement. The difference between claim 1 and claim 2 occurs in the operator’s mind.

      The folks at IPO and AIPLA really could have done a better job coming up with something that won’t upset our buddies at the ACLU.

      1. pl,

        What First Amendment concern are you seeing with the claim as a whole?

        I also lose track of what you are trying to say with the “What if the operator has rights to claim 2 but not claim 1.” as that seems like an arbitrary distinction that you are attempting to make divorced from any “Offending” claim or FA concern. Where is the supposed limitation coming from and is it truly a limitation that impacts anything in the First Amendment?

        It is also a distinction that occurs OUTSIDE of the human mind (so I don’t see any FA at all) – Would it make any difference in your claim as a whole if the “seeing” was instead of being processed in the mind of a human, processed by a machine based on computer vision?

        Finally, let me refer you to a term coined by Prof. Crouch (the term was coined, but what the term describes has LONG been standard patent law): the Vast Middle Ground.

        Do you understand how that concept – combined with the proper viewing of a claim as a whole eviscerates the (supposed) FA concerns?

        1. anon,

          To clarify my example, assume operator owns patent 2 (with only claim 2) and someone else owns patent 1 (with only claim 1). He of course can only legally perform the method in patent 2. What if he rolls the die, it comes out to be a 3, but in his mind he doesn’t divide by three but instead uses the method of patent 1 (claim 1) and pulls the lever? By merely thinking differently, he has now infringed patent 1. The claimed invention is not being “performed solely in the human mind” by virtue of the mechanical process so it passes muster under the amended 101.

          The point I am trying to make is by merely thinking differently, someone can infringe (or not infringe) a claim that is statutory under the AIPLA proposal. If the “seeing” was performed by a robot, then yes, that would make a difference and I don’t see a problem with that (programming on a computer is not thinking by a human).

          The real problem here is hypotheticals like the above will make it hard for the IPO, AIPLA proposals to be taken seriously. The proposed 101 amendments could have been further amended by IPO, AIPLA to avoid this effect, but I am guessing nobody at IPO or AIPLA really thought this through carefully.

          I would like nothing more than to see this AIPLA proposal to be enacted. But it will never pass (or even be taken seriously) unless issues like this are addressed in the statute. IPO and AIPLA need to read the comments on this thread and come up with a version 2.0.

        2. “anon” Do you understand how that concept – combined with the proper viewing of a claim as a whole eviscerates the (supposed) FA concerns?

          Nobody understands what you’re talking about, “anon.” Maybe you could actually write the “argument” out in English using declarative sentences. Good luck with that.

          is it truly a limitation that impacts anything in the First Amendment

          Oh, boy, we got a live one, folks. “Freedom of thought… is the matrix, the indispensable condition, of nearly every other form of freedom.” – Cardozo, Palko v. Connecticut (1937)

          But, sure, “anon”, go ahead and argue that patents can be used to create liability for thinking about useful stuff. You won’t be the first one to make the argument! You’re a very serious person, though, so it’ll be extra persuasive. Right? Step up and impress everybody.

          Then we can move on to other examples where the person expresses his thought in words or writing and you can float your “First Amendment doesn’t apply to patents” argument again.

          Once again, folks: the maximalist are “truly” (<-legal term, LOL) the worst. attorneys. ever.

    3. (another re-post. This time my original post completely disappeared).

      Far be it for me to agree with Malcolm regarding 101 issues, but he has a point regarding First Amendment Concerns. Consider the following two claims:

      1. A method comprising: a) rolling a die by an operator; b) if the operator sees that the result of the die roll = 3, then the operator pulls a lever to activate a [particular mechanical process].

      2. A method comprising: a) rolling a die by an operator; b) if the operator sees that the result of the die roll divided by 3 = 1, then the operator pulls a lever to activate a [particular mechanical process].

      What if the operator has rights to claim 2 but not claim 1. He rolls the die, it is a 3. He pull the lever. The owner of claim 1 now sues for infringement. The difference between claim 1 and claim 2 occurs in the operator’s mind.

      The folks at IPO and AIPLA really could have done a better job coming up with something that won’t upset our buddies at the ACLU.

      1. A mental step as part of a claim has always been allowable.

        Being concerned about upsetting the folks over at ACLU on that matter is simply a step too far. You are throwing a nice f@t steak to the wolf at the back door now.

  8. If this change goes through, Congress will probably need to codify obviousness-type double-patenting.

    Otherwise, the “subject only to the conditions and requirements set forth in this title” phrase in the proposed 101(a) could eliminate non-statutory double patenting.

    1. Would it be so bad if OTDP objections became a thing of the past? They may have made sense in a pre-GATT world, but – with the possible exception of issues created by PTEs and PTAs – they are complete nonsense when the term of a patent is capped to a maximum of 20 years from its filing date.

      Such objections also make a nonsense of the wording of post-AIA US 103. I mean, how can an invention be “obvious” to the skilled person over a document of which they would not have been aware (because it was not published at the effective date)?

      The rest of the world copes perfectly well without ODTP, so is it about time that US judges start seriously considering whether they can do so too?

      1. These rejections still serve a purpose for preventing an applicant from obtaining several patents on various obvious variations of one invention and selling the patents to different buyers.

        1. This does not seem to be perceived as a problem outside of the US. I wonder why that is?

      2. The rest of the world copes perfectly well without ODTP…

        What are you talking about? ODTP is not a uniquely U.S. ground for invalidity. I assure you that I have received ODTP rejections in Canada. I have never received such a rejection in the EPO, but I see that certain cases allow for ODTP rejections (T 307/03).

        The really uniquely U.S. aspect of this rejection is that we allow for resolution with a terminal disclaimer. In the rest of the world, if you have an ODTP rejection, you just have to give up on one of the two claims in the rejection.

        Meanwhile, I agree with PiKa that ODTP still serves a purpose vis-à-vis preventing separate ownership of the different claims. Also, with PTA in the U.S., the mere fact of the TRIPS 20-years-from-filing standard does not necessarily prevent an unmerited extension of patent term, and the terminal disclaimer requirement therefore still serves a purpose in preventing unwarranted term extension.

        1. PTA in NO way should be deemed “unmerited” or “unwarranted.”

          That’s blaming the applicant for the Office breaking its promise.

          That’s just bad form.

          1. Fair enough. If you balk at the words “unmerited” or “unwarranted,” I withdraw them. I concede, as you and Confused contend, that these terms are unnecessarily loaded with a note of opprobrium. My only point is that the Constitution only allows for “limited Times” for patent terms. The statutory limit is 20 years from filing. Without terminal disclaimers, it would be possible to extend that term beyond 20 years from filing (see 22.2.2.2.1.1 below). This may not be done.

            Actually, I should qualify that “may not.” Even with our present double patenting law, it is possible to extend term beyond 20 years if the delay is really totally the PTO’s fault. This occurs, for example, where the PTO imposes a restriction requirement, and then brings the parent to an expedient allowance, but delays the divisional (for whatever reason). However, where the delay amounts to “I brought a narrow claim quickly to allowance in the parent, but then filed a continuation to go after a broader claim to the same subject matter, and the PTO delayed that continuation,” there is no good public policy served by allowing that second application to extend the family’s term to 21 years post filing (or whatever the delay amounts to in the continuation).

            1. You do know that ALL awarded PTA is – in fact – “totally” the PTO’s fault, right?

              1. Imagine an application that includes a broad claim that is entirely confined to patentable subject matter. The entire scope of this claim is, ex hypothesi, non-obvious, but the outer limits of the claim reach right up to point where non-obvious subject matter leaves off and obvious subject matter begins. Because this claim is so near the borderline, the examiner refuses to allow it. Under the terms of this hypo, the whole claim is patentable, so if you refuse to back down from the examiner’s rejection of the broad claim and take the rejection to the PTAB, you will win, and get your appeal time back as (c) class PTA.

                Now this same hypothetical application contains a variety of gradually telescoping claims, many of which are so transparently patentable that most examiners would happily allow them.

                Imagine that you file this application, get a rejection on the broad claim, and then back down. You drop the broad claim, and limit yourself to one of the narrower mid-scope claims. The application proceeds quickly to allowance, with neither examiner or applicant delay. You then file a continuation to pursue the broad claim, and take that one to the PTAB.

                Any delay accrued at this point is your fault. It may well be the case that it is also the PTO’s fault, but it is not only the PTO’s fault. You could have pursued the broad claim in the parent and been done with it. Instead, you chose to delay the fight over the broad claim for a later day, in a continuation. Therefore, it is not accurate to say that this delay is “totally” the PTO’s fault.

                1. Any delay accrued at this point is your fault.

                  Absolutely not.

                  An applicant’s choice in different perfectly tactics does NOT change the fact that an Office error is what delays the grant. When “could” includes more than one proper path, the longer path is not – and cannot be – called improper – as you are attempting to do.

                  You are blaming the wrong party here Greg.

                  Still.

                  You may feel differently, but those feelings are unconnected to the actuality of what is proper under the law.

                2. Greg, it is interesting that the PTA structure provides incentive to appeal the broad claim, and file continuations with respect to the narrow but allowed claims.

                  Thus one is penalized for canceling the broad claim and pursuing it in a continuation which is the normal practice.

                3. When “could” includes more than one proper path, the longer path is not – and cannot be – called improper – as you are attempting to do.

                  Go back and re-read what I wrote, and tell me where you find “improper” mentioned? I say nothing about the propriety of the applicant’s choice. All I do is to note that there exists a course of action that will prevent the delay from accruing, and the applicant declines to make that choice. In that sense, the resulting delay is the applicant’s own fault (even if it is also the PTO’s fault). This is not to imply blameworthiness, because delay in the prosecution of a patent is not “evil,” and therefore there is no “blame” to assign.

                  Still and all, the existence of the delay is the direct result of the patentee’s own choice, and sane public policy cannot allow for a situation where the patentee is able to steer the course of prosecution in a way that allows the patentee to rack up more than 20 years of protection after filing. The only way such a state of affairs can be tolerated is in circumstances in which the patentee has absolutely no hand in achieving the more-than-20-years, which is exactly what our law at present achieves.

                4. [O]ne is penalized for canceling the broad claim and pursuing it in a continuation which is the normal practice.

                  I am going to quibble with the word “penalize” there. If one goes to grant on the narrow claim, and takes the broad claim to appeal in a continuation, one still gets one’s full 20 years from filing. One misses out on a possible chance for a windfall, but one does not lose anything that one legitimately expected to obtain when one filed the app and paid the fees.

                5. You may feel differently, but those feelings are unconnected to the actuality of what is proper under the law.

                  This is a cheap shot. I expect better from you.

                  Nothing about the position I am taking depends on “feelings,” so even if I had such “feelings,” it would be beside the point to mention them. The argument being advanced has a logical undergird that is either sound or unsound. Why not address the soundness of that undergird on the merits, instead of taking cheap personal shots?

                  As noted elsewhere, patents are supposed to be for limited terms, and the limited term in this country is 20 years from filing. When an applicant files and pays the fees, the applicant should legitimately expect to get at least seventeen—but no more than twenty—years of enforceable term. To allow a system in which the applicant can take actions (even perfectly legitimate and permissible actions) that skew the system in a way that is likely to extend the patent term beyond 20 years from filing is bad public policy.

                  Do you care to explain why it would be better public policy to leave it in the hands of the applicant to take steps to subvert our legislatively established 20-years-from-filing term? What social good would be promoted in that way?

                6. “Fault” in the legal sense here of PTA is what I used as the sense of improper.

                  YOU check again as to what PTA is generated (hint: ANY and ALL time “at fault” of the applicant is NOT included in PTA).

                  Further, “delay” carries with it an implication that the proper process did not run in its due course. If that proper process of option A is longer than the proper process of option B, there is NO delay.

                  Further still, your own statement here of “The only way such a state of affairs can be tolerated is in circumstances in which the patentee has absolutely no hand in achieving the more-than-20-years, which is exactly what our law at present achieves.” is incongruent – as proper paths ARE not only “tolerated,” they are built into the law.

                  You appear to be doing that “too clever by half thing” again.

                  This is a cheap shot. I expect better from you.

                  More feelings from you – and the shot was well earned.

                  The limited term is NOT strictly 20 years and the various different and equally proper avenues of PTA are fully in accord with the limited terms that you want to reference.

                  Do you care to explain why it would be better public policy to leave it in the hands of the applicant to take steps to subvert our legislatively established 20-years-from-filing term?

                  LOL – “subvert” really? and you want to “quibble” with words that others have chosen?

                  Not nearly as stultifying as Malcolm – but I do hope that you see the irony.

                7. [P]roper paths ARE not only “tolerated,” they are built into the law.

                  The PTA statute section was drafted against the background of ODTPvlaw and terminal disclaimers. The law expects—and quite properly—that if the applicant takes steps to channel prosecution into paths in which PTA will accumulate, that this gaming of the system will be undone when the terminal disclaimer is given to resolve the ODTP. In other words, the intentional accumulation of more than 20 years is definitely not built into the law. The law makes that outcome possible with one hand, and then provides the remedy against such gamesmanship with the other.

                8. Greg,

                  Your statement is plainly not correct given the fact that 20 years is NOT the hard ceiling that you want it to be.

                  And PTA is NOT geared merely to OTDP. It was a bartering in order to move publication to pre-grant.

                  Your position simply is not sound on these matters.

                9. PTA is NOT geared merely to OTDP.

                  Sure. No one is saying that PTA is “geared merely to OTDP,” whatever that might mean.

                  My point is that Congress set down a limited term, as required by the Constitution (twenty years from filing). It then added a set of rules that were supposed to be about making sure that the patentee got the full benefit of that statutory term, so that the USPTO cannot chew through that term (as the Brazilian INPI, for example, does so frequently). Those rules, however, were written against the backdrop of a legal system that includes ODTP, and it is impossible to understand how Congress intended those PTA rules to work without understanding the legal background against which the PTA rules were framed.

                  If it were legally permissible to claim a narrow claim in the parent application, and then a broader variation of the same claim in the continuation without a double-patenting rejection in the continuation over the parent, then it would be routinely possible for the patentee to extend the term of protection by two to three years, given the PTAB backlog.

                  If Congress intended patentees to have twenty three years of exclusivity, it seems strange that Congress would write “twenty.” The only sensible way to understand the PTA rules is that Congress understood ODTP to have a continuing role to play, even after the GATT shift from “17 years from grant” to “20 years from filing.”

                10. and it is impossible to understand how Congress intended those PTA rules to work without understanding the legal background against which the PTA rules were framed.

                  Your own personal “impossible to understand” clearly is something that IS your own personal thing.

                  You are the one that continues to struggle with how the PTA rules actually work. You are the one that continues to cry out against some 20 year hard limit when that self-same Congress provided avenues of PTA that clearly provide MORE than that “hard limit.”

                  then it would be routinely possible for the patentee to extend the term of protection by two to three years, given the PTAB backlog.

                  Yes.

                  So?

                  What you are continuing to fail to grasp is that ALL calculated PTA is deemed to be the fault of the government failing to live up to their end of the bargain for timely prosecution that provided that self same government to publish prior to grant.

                  You seem to want to crab about the government living up to the penalty induced by its own lack of living up to the promise made.

                  If Congress intended patentees to have twenty three years of exclusivity, it seems strange that Congress would write “twenty.”

                  Again – your own error with the hard limit ignores the fact that that same government agreed to give extra term for certain conditions – and not as you may want to imply as a mere standard different term than the 20 year term.

                  It is a bogus argument from you to try to equate a 20 year term and a 23 year term as if the 23 year term happens in a vacuum.

                  It is also very much a YOU problem.

                  Your position remains fundamentally unsound.

        2. Greg, forgive me. I had temporarily slipped my mind that Canada has an even crazier approach to OTDP. So let me rephrase: outside of North America, the rest of the world gets along just fine without OTDP.

          With regard to T0307/03, that relates to just plain old double patenting (with not even the slightest hint of “obviousness type”). I have no problem with that kind of case law. It’s the craziness of a court finding a claim “obvious” over disclosures of an unpublished document that I really struggle with – and really do not see the need for.

          By the way, merely stating the purported purpose of OTDP (of which I am well aware) just doesn’t cut the mustard. You will need to explain why that purpose is so important that it cannot be dispensed with. Outside of North America people cope just fine without, so any argument that OTDP objections are indispensable will really need to focus on a peculiarity of US law that distinguishes it from the ROW (post-GATT).

          It would also help if you didn’t use highly subjective terms such as “unwarranted”. That really won’t aid my understanding.

          1. Confused: Purpose?

            1. Exclusive rights track inventions, not claims, not patents. Dividing the claims to an invention among different patents does not and should not increase damages.

            2. Back in the days of 17 years from issue, double patenting would be a way of (unconstitutionally) extending term.

            1. Back in the days of 17 years from issue, double patenting would be a way of (unconstitutionally) extending term.

              Even now, it still can be a way of unconstitutionally extending term. If the parent grants with no PTO delay, then the applicant gets 20 years from filing—no more, no less. If the applicant files a continuation, and that continuation sees a year of PTO delay, then without a terminal disclaimer that continuation would extend the patents term to 21 years from filing (assuming no applicant delay).

              That is why terminal disclaimers are still necessary—to prevent the patent term from extending past the 20-years-from-filing.

              1. Greg, did you read my point 1?

                That is the major reason why double patenting rejections are necessary.

              2. Except, Greg – you are incorrect again on PTA….

                This is not a difficult concept and I find it rather odd that you struggle so with it.

          2. With regard to T0307/03, that relates to just plain old double patenting (with not even the slightest hint of “obviousness type”).

            Huh? It says in points 5.2 & 5.3 that “the subject-matter of present claim 1 differs in substance from the subject-matter of claim 3 of the parent application as granted only in that the complexing agent is defined, in a broader manner, as a water-soluble alcohol instead of a water-soluble aliphatic alcohol… This Board considers that the double patenting objection can be raised where subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward.”

            This is definitely not talking about a situation that would be statutory subject matter in the U.S. The appellant in T 307/03 got a claim granted that said “water soluble aliphatic alcohol,” and then they filed a voluntary divisional to pursue the same claim, only with the broader term “water soluble alcohol.”

            That would be an ODTP rejection in the U.S., because there are embodiments that would be covered by the later claim that are not covered by the earlier claim. In re Vogel, 422 F.2d 438, 441 (C.C.P.A. 1970) (“A good test, and probably the only objective test, for ‘same invention,’ is whether one of the claims could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention”).

            In other words, the EPO board of appeals sustained an double-patenting rejection in a circumstance that would not qualify as statutory double-patenting in the U.S., but which would qualify as ODTP in the U.S.

          3. [M]erely stating the purported purpose of OTDP (of which I am well aware) just doesn’t cut the mustard. You will need to explain why that purpose is so important that it cannot be dispensed with.

            Fair enough. Imagine the following. Mr. X invents an improved drilling fluid for oil wells. Mr. X files one application that claims this invention comprising NaOH among the ingredients, and another application reciting exactly the same ingredients (at the same proportions) except that this one recites “alkali metal salts” instead of “NaOH.” Mr. X assigns the first application to Exxon and the second to BP Amoco.

            The commercially valuable embodiment uses NaOH, but this is covered by both patents. Some small time oil exploration company (OKanCo) practices this invention (unknowingly) in Oklahoma and Kansas, and is sued by both Exxon and BP Amoco. Patent infringement is a strict liability tort, so their ignorance of the patent is no defense, and they rightly owe the patent at least a reasonably royalty in damages. That is only just and fair and as it should be.

            But OKanCo did not avail itself of two inventions. It only availed itself of one invention. Why is it right that OKanCo should pay two royalties to two patentees, when these two patents trace back to one inventor, who only invented one invention (but then claimed it using two different sets of words)? This seems unfair on its face, that OKanCo should be subject to two recoveries, for what is essentially only one infringement. That is the evil that terminal disclaimers are meant to prevent.

          4. [W]hy [is] that purpose is so important that it cannot be dispensed with. Outside of North America people cope just fine without, so any argument that OTDP objections are indispensable will really need to focus on a peculiarity of US law that distinguishes it from the ROW (post-GATT).

            One thing that the U.S. & Canada have in common with each other but not with the rest of the world is that we both have a one year grace period for your own disclosures. That is to say, if I publish on 1 May 2015, that publication is art against me in Europe for all of my filings made 2 May 2015 or later. In the U.S. & Canada, however, that disclosure is only art against my filings made 2 May 2016 or later.

            In other words, the EP does not need to make an ODTP rejection against my 2 May 2015 filing. It can make a straightforward obviousness rejection. In the U.S. & Canada, however, one cannot make an obviousness rejection against the 2 May 2015 filing, because the 1 May 2015 disclosure is not prior art. The rejection must be ODTP or nothing.

            In other words, you are not getting away with broader claims in EP than you could in US or CA. You are just getting those claims rejected in EP on different grounds than US or CA, because of the different way that the jurisdictions define prior art. The end result is basically the same, and the only question is the mechanism used to achieve that result.

            In other words, I suppose that if you wanted to get rid of ODTP in the U.S., you could make that outcome more likely by lobbying to do away with our one-year grace period. For my part, however, I am content to leave the grace period in place, and simply live with the (thoroughly practical) terminal disclaimer practice that we have evolved in our jurisprudence.

  9. All this hand-wringing to save 101 with untested verbiage. All this needless reinventing the wheel. Someone please tell me, what is wrong with using the EU approach? The invention must be a technical solution to a technical problem. Seems perfectly sensible to me:

    “the invention must be of “technical character” to the extent that it must relate to a technical field (Rule 42(1)(a)), must be concerned with a technical problem (Rule 42(1)(c)), and must have technical features in terms of which the matter for which protection is sought can be defined in the claim (Rule 43(1)) (see F‑IV, 2.1).”
    EPO: Patentability – Further Requirements

    That takes care of all the business method and do-it-on-a-computer nonsense, while still allowing legitimate software inventions that solve technical problems (serving ads based on a user profile is not a “technical problem”).

    Why couldn’t such language be adapted into a practical 101 statute? Serious question. Is the main roadblock just good old American exceptionalism / not invented here syndrome?

    1. Someone please tell me, what is wrong with using the EU approach?

      Where shall I begin?

      Let’s start here: respect the different decisions made by the different Sovereigns.

      Let’s follow that with: the traditional US system (without the mess created by the intrusive nanny Court) generated the BEST innovation system in the world.

      What’s wrong with wanting to be the best?

      Why should we blandly accept your implicit “argument” that business methods are improper or that our Congress-words-without-Court-mockery was not enough to stop “not legitimate software inventions – whatever that means?

      Serious questions.

      1. Why should we blandly accept your implicit “argument” that business methods are improper or that our Congress-words-without-Court-mockery was not enough to stop “not legitimate software inventions – whatever that means?

        Nobody’s asking you to “blandly accept” anything.

        Everybody else here is well aware of the arguments and evidence in support of keeping biz method patents and patents on logic out of the system.

        But go ahead and keep sticking your head in the sand and pretending like you were born yesterday! You’re a very serious person! When you speak in public, nobody laughs at your silly “arguments” as far as you know.

        LOL

        The best part: there’s video now!

        LOLOLOL

        Too bad we dont’ have smell-o-vision.

        1. What are these “patents on logic”…?

          How is your copyright project coming along for “Logic?”

          Maybe you should simply stop trying so hard to dissemble according to your little script, and instead join the dialogue in an inte11ectually honest manner.

          1. What are these “patents on logic”…?

            Instructions for computers are logic instructions.

            Maybe search the PTO’s database for claims that recite “logic” and the picture will begin to come into focus for you like it has for pretty much everybody else in the world.

            LOL Of course that’s not going to ever happen.

            1. Lol – how does your voluntarily admitted statement against your own position here of knowing and understanding the exceptions to the judicial doctrine of printed matter square up, Malcolm?

              How does the distinction raised with but a simple and direct question regarding another attribute of software square up for you Malcolm? How is your copyright on “logic” coming along?

              Please stop dissembling with the same rancid nonsense that takes a simple eight worded sentence to point out.

              Pull your own head out.

    2. knowbody, EPC also has exclusions like software and business methods.

      This whole effort is directed to getting rid of the “lid” imposed by the judicial exclusions that were developed by the courts in England and the US beginning with cases in 1795. Pop the lid off, and virtually anything goes.

      And that is exactly what the proponents want.

      If passed, it will bring shame to the American patent system, and the American people will be nonplussed at the kind of patents that will issue.

      1. Ned,

        You forgot the caveats of “as such” and “per se.”

        Or do you think that the EPO’s use of those caveats have no effect on patents that you will find in that “Sovereign?”

    3. Except the EU has an endless swamp of case law on what is a technical solution. Their solution is terrible.

      Also, let’s remember that most software is not eligible under the EPO rules and oddly they have almost no software industry.

      1. Also, let’s remember that most software is not eligible under the EPO rules and oddly they have almost no software industry.

        And let’s also remember that the US software industry sprang up when there were no software patents, long before software was considered patent eligible. Bill Gates has said Microsoft would not have developed Windows if there were software patents at the time.

        Also, oddly, notice that India and China have thriving software industries even though patents there aren’t worth the paper they’re printed on.

        Just perhaps patents aren’t a driver of the software industry. But don’t take my word for it. Ask anyone in Silicon Valley.

        1. India and China….?

          You really want to use those as examples?

        2. KnowBuddy: Give me a break.

          1) India and China do not have a thriving software industry compared to the US’s.

          2) The software industry has grown-up with patents. It did not start with patents, but transitioned to patents. And, the industry was in danger of stagnating before patents came and made sure everything stayed out in the open.

          Actually, the history is that the software industry was going to trade secrets (Intel was developing a chip to make it harder to reverse engineer software), but patents saved the software industry.

          I was there and was a software engineer at the time.

          1. You have no idea what you’re talking about.

            1) India’s IT sector (which includes software and related services) was a $148 billion with a b industry, with exports of $100 billion, in 2015. That’s just under 10% of India’s GDP.

            Moreover, India is a premier destination for software contracting. Many good old American companies producing American software actually contract Indian programmers to write significant chunks of their code. Major tech companies like Microsoft, Google, IBM have software R&D centers in India and China.

            So why don’t you see big-name software products from Indian companies? A few reasons, but this is a pretty good break down:
            “The major factor hindering the establishment of a Microsoft or Adobe like venture in India instead of a service based company is –product companies usually require some R&D and investment before revenues materialize, while service companies, which in the Indian scenario are mostly based on the business stratagy of hiring from the relatively large pool of talent present in India and providing their services to overseas clients at a relatively cheaper rate than other service providers of the globe, can become profitable very quickly. For an entrepreneur, the service providing route would be less risky and quicker to earn profits, than building a software product based company. Also from a venture capitalist’s perspective, investing in the more low risk and better rewarding -IT service is more reasonable than investing in a product based idea, making it tougher for the product ‘ideators’ to get started.”
            link to yourstory.com

            Most software is not in packaged products anyway. It’s in back-end servers, custom in-house apps, infrastructure deployments, embedded systems, and other places the average consumer never sees. Commercial packaged software is literally the tip of the iceberg – less than 10% of the software market. To discount Indian software because it’s not in highly visible places is criminally myopic.

            2) Complete revisionist history. The industry was in no danger of anything. A few cranks in small niches were worried about reverse engineering. The broader industry was never concerned. Intel’s efforts died on the vine because it solved a problem no one cared about and many in the industry opposed. The software industry marched on in spite of patents, not because of them.

            The development of linux over the last 20 years, which has captured over 2/3 of the server market and over 80% of the embedded / infrastructure market, has never once relied on a software patent. Google, Facebook, Twitter, Amazon, all built their businesses on linux. Patents only became involved for defensive purposes after nuisance litigation like that from SCO Group, which wasn’t even based on patents but trademark and copyright claims.

            I have no doubt you worked in some small corner where short-sighted, narrow-minded cranks complained about reverse engineering of software. Patents don’t even address the majority of issues with reverse engineering. Patent protection on a tiny subset of novel features does absolutely nothing to protect 99% of software behavior which is based entirely on unpatentable known methods, but where the critical features for interoperability are. To say the software industry was “saved” by patents is pure hyperbole. The software industry shrugged and didn’t care.

            But we can go back and forth like this all day. Provide sources to back up your claims if you can. I haven’t provided exhaustive proof, but I’ve pointed to a few sources in spots. Plenty more are easy to find. Meanwhile I’ve searched high and low for sources supporting your story and found none.

          2. Pure nonsense.

            1) India’s IT sector (which includes software and related services) was a $148 billion with a b industry, with exports of $100 billion, in 2015. That’s just under 10% of India’s GDP.

            Moreover, India is a premier destination for software contracting. Many good old American companies producing American software actually contract Indian programmers to write significant chunks of their code. Major tech companies like Microsoft, Google, IBM have software R&D centers in India and China.

            So why don’t you see big-name software products from Indian companies? A few reasons, but this is a pretty good break down:
            “The major factor hindering the establishment of a Microsoft or Adobe like venture in India instead of a service based company is –product companies usually require some R&D and investment before revenues materialize, while service companies, which in the Indian scenario are mostly based on the business stratagy of hiring from the relatively large pool of talent present in India and providing their services to overseas clients at a relatively cheaper rate than other service providers of the globe, can become profitable very quickly. For an entrepreneur, the service providing route would be less risky and quicker to earn profits, than building a software product based company. Also from a venture capitalist’s perspective, investing in the more low risk and better rewarding -IT service is more reasonable than investing in a product based idea, making it tougher for the product ‘ideators’ to get started.”
            link to yourstory.com

            Most software is not in packaged products anyway. It’s in back-end servers, custom in-house apps, infrastructure deployments, embedded systems, and other places the average consumer never sees. Commercial packaged software is literally the tip of the iceberg – less than 10% of the software market. To discount Indian software because it’s not in highly visible places is criminally myopic.

            2) Complete revisionist history. The industry was in no danger of anything. A few cranks in small niches were worried about reverse engineering. The broader industry was never concerned. Intel’s efforts died on the vine because it solved a problem no one cared about and many in the industry opposed. The software industry marched on in spite of patents, not because of them.

            The development of linux over the last 20 years, which has captured over 2/3 of the server market and over 80% of the embedded / infrastructure market, has never once relied on a software patent. Google, Facebook, Twitter, Amazon, all built their businesses on linux. Patents only became involved for defensive purposes after nuisance litigation like that from SCO Group, which wasn’t even based on patents but trademark and copyright claims.

            I have no doubt you worked in some small corner where short-sighted, narrow-minded cranks complained about reverse engineering of software. Patents don’t even address the majority of issues with reverse engineering. Patent protection on a tiny subset of novel features does absolutely nothing to protect 99% of software behavior which is based entirely on unpatentable known methods, but where the critical features for interoperability are. To say the software industry was “saved” by patents is pure hyperbole. The software industry shrugged and didn’t care.

            But we can go back and forth like this all day. Provide sources to back up your claims if you can. I haven’t provided exhaustive proof, but I’ve pointed to a few sources in spots. Plenty more are easy to find. Meanwhile I’ve searched high and low for sources supporting your story and found none.

            1. The US’s tech sector is ten times the size of India’s. And, India is mainly an outsource location by US companies. You contradict yourself. India has a tech sector because it is an outsource location of the US companies that were nourished by the patent system. You can’t explain India’s failures away. The fact is that it is doing well because the US firms outsourced.

              If anything this shows you that there is something wrong in India. It shows you that the people there have the education and ability, but there is something missing that accounts for them not starting the big software companies–patents.

              >”I have no doubt you worked in some small corner where short-sighted, narrow-minded cranks complained.”
              Just a cutting edge start-up run by people from MIT and me from another top school. And, that was what was going on all over the industry (e.g., Microsoft.) There was a great trade secret time back in the early to mid-1980’s. I am not going to play the game of digging up stories about this. You can find them if you look. Some of the old tech computer rags wrote about it.

              Linux? Linux is nothing but a copy of Unix. Give me a break. Linux even copied (and didn’t give credit) to groupware development. I remember nethack that was built on the same model as Linux but–what–like 5 or 10 years before Linux.

              That is always the great joke. The people that are anti-patent are copiers. They copy others work and then proclaim their brilliance.

              You really didn’t refute anything I said. Your India example proves my point that India is a backwater to the US. That your great software is a just a copy.

    4. Max,

      Perhaps you have not been following the US courts, but our judges have a way of interpreting things like “technical” to mean basically anything that has a desired policy outcome. You seem to get the hang of the trick when you say “serving ads based on a user profile is not a “technical problem””.

      So yes, we’re looking for a more well-defined statutory scheme, with exact codification. I thought Europeans understood a detailed civil code?

    5. The US has a totally different framework for patentability. The EPC builds everything around technical problem and solution, so it is already in place to determine technical character. Gradting such a foreign concept into US law would cause way more disruption than benefits.

      In any case, the proposed language of 101 isn’t really untested. It’s all familiar from case law.

      And you exaggerate how straightforward applying the “technical” requirement is. Questions still regularly arise about what constitutes a technical character, and the EPO ends up falling back on definitions just as arbitrarily construed as “patentable subject matter” is in the US.

    6. What is technical? Is a computer program to make hedging easier technical?

      Lets just work with the devil we know.

      1. What is technical? Is a computer program to make hedging easier technical?

        Is hammering a nail into board “new technology”?

        What if the board is owned by a baby whose identity was first disclosed in the patent? Does that make the hammering “new technology”? Or does that sort of silliness only apply to software?

        1. I forget what your position is on whether we could/should adopt a technical solution/feature requirement to police software patents and call it a day on the subject, having compromised with the maximalists.

          1. My position is that “logic” and “techno-logic” occupy different spheres. Software is logic and isn’t technology and shouldn’t be protectable with patents.

            That said, there are potential compromise positions to be had but they would require the typical software applicant to do a lot more work and also to accept far far narrower claims than they currently get. For instance, a claim to a machine/method involving a processor that applies a particular formula to determine when the machine/method adapts itself to improve the execuation of a physically transformative process could be eligible in some fantasy compromise context. It would require that the claim recite the math (directly or indirectly, analogous to the use of SEQ ID NOs. in biotech claims) it would require that the PTO create a searchable database of mathematical formulas, and it would require applicants to submit their mathematical formulas in a pre-determined format (again, analogous to the SEQ ID requirements) to enable efficient searching. Predictive algorithms that model some aspect of the physical world (i.e., not stock market prices) could also be contemplated, provided they conform with these requirements and provided there is evidence showing actual improvement over the art.

            Just off the top of my head …

            1. But how would you propose write that into lawl? Is there any grand overall compromise position, analogous to the technical req in the ROW perhaps, for you?

              1. how would you propose write that into lawl?

                With words. Lots of them.

                Is there any grand overall compromise position

                No. There’s nothing “grand” about the EU’s “technical” requirement. As others have noted, as it’s applied presently in the EU, it’s not very different from what we have in the US. The rest of the system in the EU, of course, is quite different from the system we have here.

                Note that I think it’s possible (and reasonable, and necessary) to define “technical” to eliminate logic as an “inventive step”, especially logic as applied to data processing.

                1. What’s “going too huge”? Too many words? Or just simply indicating that patents which protect “new” logic and “new” information, regardless of the prior art context to which the claims are limited, are ineligible? Which is “too huge”?

                  Because everybody knows we could get rid of software patents tomorrow and nothing would happen — literally nothing — except there’d be more office space for patent attorneys and examiners with advanced degrees in the grown-up arts. That’s it. Otherwise everybody is immediately more free to focus the patenting energy on innovations that are actually aided by patents as opposed to creating a silly playground for tr0lls, patent litigators and attorney “innovators” with degrees in business admin or accounting.

              2. 6, I think it has to be the uses/meanings of the information being processed. If that information is made useful/valuable by human consumption, it should not be protectable via patent.

                If a machine is the only permissible consumer, then the usual standards of patentability can be applied more reliably.

                Nonetheless, if eligibility is not used as the inquiry stage for the presence of invention, the Markman procedure should be formally expanded to construe the invention itself; where the novelty is, who is most appropriate PHOSITA, and the characterization of the claim as in the possession of the inventor, or merely an aspiration.

        2. “Is hammering a nail into board “new technology”?”

          Well, no… Not since at least 34 AD if some good books are to be accepted as prior art. But at some point, it was, sure.

          Why do you ask?

          “What if the board is owned by a baby whose identity was first disclosed in the patent? Does that make the hammering “new technology”? Or does that sort of silliness only apply to software?”

          Huh? You seem to be attempting to draw an analogy… but I don’t see it. What about software is like board ownership?

          1. Well, no… Not since at least 34 AD if some good books are to be accepted as prior art. But at some point, it was, sure.

            Why do you ask?

            A futile attempt to get your brain jump started. Here’s the follow up again:

            “What if the board is owned by a baby whose identity was first disclosed in the patent? Does that make the hammering “new technology”?

            Just answer the question. Yes or no. Are you afraid that I’ve laid a “trap” for you? LOL You should be. Funny part is that you shouldn’t be afraid because you already stepped in it.

  10. I think that more clarity could be achieved by saying a method is not patentable unless it is a prosses of making a physical object, and that one cannot infringe printed matter whether in writing or on a computer as printed matter is the domain of copy infringement. Whether an invention involves a law of nature does not negate the patentability of the invention as long as the invention satisfies the other requirements for patentability.

    Reserve patents are for buying and selling physical objects and leave the rest to copyright and tradesecret law.

    1. Jimbo599,

      Congress has already explicitly addressed your view of “process,” rejecting it in the definitions for the Act of 1952.

      Heck, even the wayward Supreme Court held 9-0 that MoT (which subsumes your suggestion) was NOT a legal requirement and was merely a clue.

      1. Congress has already explicitly addressed your view of “process,” rejecting it in the definitions for the Act of 1952.

        Right. Jim is not saying that the current statute defines process as he is proposing in 19. He is saying that the statute should be revised to define process as he is proposing.

        You are not addressing Jim’s point. You are talking past it. Just because the Congress considered and rejected an idea 60 years ago is not actually an argument against Congress reconsidering the notion now. Similarly, the fact that the SCotUS did not find Jim’s proposed definition of “process” in the existing statute is not an argument against Congress adding such a definition in any revisions to be taken up.

        1. Ok Greg, I did “talk past it” because IN FACT the idea was dismissed by Congress.

          So let me try again and not “talk past it.”

          Jimbo599,

          A famous man once said that things should be as simple as possible, but not simpler.

          This applies to your comment in the sense that you appear to seek “clarity” at the expense of what the larger laws are even there for. Your aim, then, for “clarity” is a mis-aim for the purpose of the law under discussion.

          There is a reason why the section 101 of patent law is written in a wide-open welcoming gate, with two rather low (comparatively) hurdles. Innovation, by its very nature is something that cannot be known a priori. The law must be open because we want innovation and since we want innovation, it follows that we want conditions under which innovation flourishes.

          Contrast that view with the large failures of socialist planning.

          Second, you seem to not grasp the basics of the printed matter doctrine and confuse what patent law protects (utility) and what copyright law protects (expression). Plainly (and factually) put, software is a “writing” that has more than one aspect and it is the different aspects that garner different protections (and properly so) under the different forms of IP law that have been put in place for the aforementioned different types of protection.

          To want to “stretch” copyright to protect something it never was meant to protect just in order to NOT respect the fact that “writing” IS also a form of manufacture of computer components, is to purposefully get BOTH systems wrong and then try to make the two wrongs into a right. Needless, and lacking clarity.

          Greg, I trust that your comment of “the fact that the SCotUS did not find Jim’s proposed definition of “process” in the existing statute is not an argument against Congress adding such a definition in any revisions to be taken up.” is suitably answered by WHY Congress changed the law in 1952.

          It is rather obtuse to merely state “well Congress could always change the law again” as such a comment applies to any and every thing, and ignores all of the points that could possibly be germane to the topic. I do hope that you were not “going there.”

    2. Whether an invention involves a law of nature does not negate the patentability of the invention as long as the invention satisfies the other requirements for patentability.

      This is already the law. There is no “involves a law nature therefore ineligible” test. You need to compare the claim to the prior art before reaching a conclusion about the eligibility of the claim. You need to do that in order to ensure that subject matter isn’t being pre-empted. In the case of a “law of nature” this will pretty much invariably require the recitation in the claim of a novel non-obvious structure or a novel non-obvious physical transformation of matter. That’s a pretty low bar for most adults in the room.

      1. This is exactly the type of dissembling that the Bar associations are trying to eliminate:

        You need to compare the claim to the prior art before reaching a conclusion about the eligibility

        No
        You
        Don’t

        By saying that you MUST do this, you are conflating eligibility and patentability.

        There is ZERO (legally cogent – for Les) reason why a claim HAS TO be compared to prior art before reaching a conclusion on eligibility (as differentiated from patentability).

        Zero. Something does not become ineligible merely because it may lack novelty but or it may be obvious.

        Congress separated the prior single paragraph in the Act of 1952 for a reason. Your view sticks your head in some nether region and tries to pretend that 1952 never happened.

    3. I think that more clarity could be achieved by saying a method is not patentable unless it is a prosses of making a physical object…

      I agree that this would be a clear rule. I am not convinced that it would be a good rule.

      Imagine I discover some compound present in the bark of a yew tree that has powerful anticancer properties. Because it is a naturally occurring compound, I cannot claim the compound per se, but I can claim a method of treating cancer by administering the compound. Notice, that claim covers a process that does not result in the manufacture of a physical product.

      In other words, if we adopt your proposed rule, we eviscerate any incentive to bring drugs to market that use naturally occurring compounds as active ingredients. That is not a good public policy choice.

      1. The process needs to be one that results in a new transformation of matter, or one that achieves a transformation of a matter via a previously unknown pathway. That’s how you get the medical treatments in. Or you could use even more express language to get them in.

        Nothing new here, fyi. Been discussed before a thousand times …

        1. Except for the fact that one of the holdings of Bilski (9-0 at that), was that MoT is NOT a legal requirement.

          And yes, this simple counter fact has been out to you a thousand times as well.

      2. I can claim a method of treating cancer by administering the compound. Notice, that claim covers a process that does not result in the manufacture of a physical product

        Yes, but the process has a physical result – the effect on the Cancer, which is a change in a composition of matter. The change is being “manufactured” by the compound.

        1. Method is not a manufacture, Mr. Snyder.

          Yet again, please do not take liberties with legal terms of art – it only diminishes your attempted inputs.

        2. And processes implemented in software have physical effects too. The change the light output of a display device or the placement of ink or toner on a print medium. They change or verify the level of charge in capacitors and the strength of magnetic fields.

        3. Fair enough. If this is all that we mean by “manufacture of a physical product,” I take no objection. I have to say, however, that very few people in ordinary parlance would consider “killing a tumor” as an example of “manufacturing a physical product.” If we are to stretch “manufacturing” to reach that far, we probably want to make it super clear in the statutory text.

          1. self replicating nano bots that search & destroy tumor cells would probably be a mechanical, manufacturing process.

            Les @ 20.3.2.2

            And processes implemented in software have physical effects too.

            The changing light patterns on the monitor are physical effects, but they are not where the utility is being derived. Killing cancer cells is the direct utility of the new use of a known compound.

            Basic.

            1. “The changing light patterns on the monitor are physical effects, but they are not where the utility is being derived.”

              Of course they are.

              “Killing cancer cells is the direct utility of the new use of a known compound. ”

              No, extending life is the utility. Killing cancer cells is merely a means to an end (or means to a delayed end).

  11. This is a step forward over what the IPO suggested. Still needs a bit of brushing up, though. Before any human activity implies before homo sapiens evolved, which I don’t think is what they meant.

  12. I am all for amending 101 to soften the blow of Alice, but this proposal (like the IPO proposal) has very little chance of passing in its current form. For example, this proposal would allow a patent on a new type of golf swing. Or how about a new chess opening that a player has developed? How about a new football play? Should these types of things really be patentable subject matter?

    This also has the problem that I pointed out in the IPO proposal thread, that someone could cleverly claim an artistic work as a machine, such as “a computer configured to retrieve data from an electronic storage device, decode the data into a movie and then display the movie on an LCD connected to the computer, the movie having a plot comprising [movie plot].” As Greg correctly pointed out in that thread, the “printed matter” doctrine could be used to exclude this type of claim, but relying on yet another judicially created doctrine like printed matter is problematic in itself (and who knows how the judges will expand upon it)? A revised 101 should ideally be self-encapsulated.

    Maybe Dennis can run a contest to draft an amended 101 that can weed out the “this is silly” patents while still allowing for software claims like those in RecogniCorp in which it seems the Alice doctrine is being taken too far. Only such a reasonable proposal would stand a chance of being passed. All of us who support software eligibility need to be REALISTIC AND REASONABLE, not shoot for the moon.

    1. pl,

      It appears that you want reason on one side of the equation and think that such will carry over to the other side.

      As the Supreme Court has shown us, such expectations are themselves unreasonable.

      Further – and more importantly – such also bolsters and inpliedly affirms that the Supreme Court should be playing a “nanny role,” when their authority simply does not include such.

      It’s like you think throwing a “reasonable” steak to the wolf at the back door is what it will take to make the wolf go away….

      1. anon, if it were up to me, I would pass that amended 101 and let 102/103 do all the work. But, given the choice of no amendment to 101, or a more tempered amendment, I would choose the latter. I personally think the IPO and AIPLA amendments have virtually little chance of passing, especially considering the current composition of Congress. I can hear the chuckles on the floor when an opponent of the bill testifies about how this amendment would now allow for patents on “golf swings.” Would you really just rather maintain the current status quo?

        1. Is that merely a small steak that you want to throw to the wolf at the back door?

          No thanks.

    2. “. For example, this proposal would allow a patent on a new type of golf swing. Or how about a new chess opening that a player has developed? How about a new football play? Should these types of things really be patentable subject matter?”

      If it makes clear that other more worthy inventions are patent eligible, why not?

    3. Patent Leather, since it is obvious that the proponents are trying to overturn all the 101 cases since Rubber-Tip Pencil, retaining only Chakrabarty and Diehr, the effort of the proponents should be seen for what they are.

      The Government in Mayo argued that 102/103/112 could do the work of the “exceptions.” Clearly the Supreme Court was not impressed because the evidence before them suggested that the Federal Circuit and the USPTO had combined to flood the patent system with business method patents, patents on laws of nature, and the like that showed in spades just what adopting such would endorse.

      The harm to the patent system by allowing hundreds of thousands of business method patents, patents on abstract principles, patents on results, patents on anything at all that only require some recital of a computer, or a computer media is easy to see for any company who has been victimize by such.

      If there is short term harm, it is to the patent attorney profession that made money off patenting junk.

    4. As Justice Story wisely observed, “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) (Story, J.)

      We do not need the law to save us from patents on golf swings or chess moves. The market will take care of such nonsense without any help from the law.

      If someone wants to waste his own time and money pursuing such a waste-of-time patent, let him. Such a patent will serve no real purpose, but neither will it do much of any real harm.

      1. With all due respect to the “great” Justice Story, that pithy silliness from 1817 is pretty much completely irrelevant to what we’re dealing with now.

        Greg: We do not need the law to save us from patents on golf swings or chess moves. The market will take care of such nonsense

        Like “the market” took care of bingo management methods? Oh wait: “the market” didn’t take care of that nonsense. The Supreme Court took care of that.

        If someone wants to waste his own time and money pursuing such a waste-of-time patent, let him. Such a patent will serve no real purpose

        That’s a nice completely circular and self-fulfilling argument. Well done, Greg!

        Here’s a news flash, Greg: not everybody wants to pay for patent insurance. Pretty much nobody wants patent litigation to be “a fact of life” for doing business. But we were literally told here by maximalists like yourself that we should accept that because it’s what The Most Important People Ever said we should accept.

        The problem is that people like me have been watching people like you for years. We now how you work.

        This will fail and it’s going to fail miserably. The reputations of the people behind this are already in the dirt which is part of the reason why they plainly could care less about anything else except fattening their wallets. Ask around. You know who to ask, you don’t you?

      2. We do not need the law to save us from patents on golf swings or chess moves. The market will take care of such nonsense without any help from the law.

        How exactly? The purpose of patent rights is to distort the market by granting a limited monopoly. If a new golf swing or a new chess move improves the chance of victory, what exactly can the market do about it?

        1. Basically, there are only two possibilities here:

          (1) The golf swing really is useful and people really do want to use it. In that case, why is it so horrible that we reward the inventor with a patent?

          (2) The golf swing—while technically sufficient to satisfy the “useful, novel, and nonobvious” requirements that our law sets for patentability—is frivolous and unimportant. In that case, the existence of a patent is irrelevant. The practical effect of a patent on an invention that no one wants to practice is nil.

          Either way, there is no “problem” here, as such.

          1. Greg: why is it so horrible that we reward the inventor with a patent [on a new golf swing

            Because the issue isn’t “a patent” on “a golf swing” or “a patent” on “a method of thinking a new thought about old data”. The issue is tens of thousands of those patents.

            Ask a golfer what he/she thinks, Greg. Better yet, ask a horse-shoe thrower or a bowler. You do have friends in the ordinary world, don’t you? Gosh, I hope so.

        2. If the golf swing improves odds of victory, then the inventor or patent owner and her licensees will win more golf games, thus be rewarded by market forces. If not, not. That’s what the market can do about it.

        3. what exactly can the market do about it?

          The exact same answer as would apply to ANY patent:

          Pay or invent around.

          People too easily forget that this type of ultimatum is a benefit of the system. Innovation OFTEN flourishes when faced with obstacles (there is a reason for the maxim of “Necessity is the mother of invention”). We (the royal we) have frown too soft with liberal left tendencies and a lack of appreciation for true winning, and the motivation that comes from the svck of losing.

        4. Recognizing that patent rights vest in their creator (even for only a limited time) is not a “distortion” of a proper free market, but would quality as a proper part of it and a part of what makes it possible. that said, patents surely may be classified as a distortion of a mixed and managed part State part Private economy such as that currently in place.

          As for a golf swing and a chess move indeed, if a person used it to win a multimillion dollar prize or tournament, I see no way of getting around some claim for a piece of that enrichment by the patentee, but it may be fractional.

          The first question is does a property right vest in the creator of such a thing as a golf swing, or a chess move? This is a question of principle separate from the question of enforcement. Your right to your property is not determined by anyone else’s desire to it, whether it is your house, your wallet, or your rights in an invention, and whether he is a thug, a pauper, or CEO, or a bureaucrat.

          Next is the question of enforcement and damages… query, if a patentee went after an average Joe using the swing on the golf course or the chess move at home, would the amount be based on a fraction of the green fees, on a fraction of the cost of the chess board? Would one calculate the amount based on the total number of possible golf swings or chess moves and their relative “value” in the pleasure of playing the game represented by the cost of playing? Now if the patentee went after a chess teacher or a golf instructor, would he claim a fraction of the amount charged to the student… also based on a relative value of the teaching of the particular move within the course ? This is all assuming that there is actual evidence of infringement, say a video or facebook live stream of the patented move actually being used. Finally, if the patentee went after the professional golf player… or chess player… would he be able to extract a large portion or only a fractional portion of the winnings in a game which utilized (at some point) the particular golf swing or chess move?

          Is there an overriding principle that professionals who utilize the patented “moves” as part of their business (sometimes multimillion dollar ones) and who happen to “play games” for a living, should be exempt? Why should an industrialist using a patented method of creating concrete should pay but a multimillion dollar golf professional using a patented golf swing should not pay?

          The only valid grounds would have to based on why, on principle, property rights vest (or do not vest) in the creator at the time of creating a new chess move or a golf swing. Is it really new and unobvious? Is it useful? Does it enable or create value?

      3. Query, what is the utility of the golf swing or chess move? If the only thing useful about it is “hey, some people enjoy it,” I am not sure that this is enough to satisfy the Brenner v. Manson, 383 U.S. 519, 533 (1966) test (“a ‘useful’ invention is one which may be applied to a beneficial use in society,” internal quotation omitted).

        1. If the only thing useful about it is “hey, some people enjoy it,” I am not sure that this is enough to satisfy the Brenner v. Manson, 383 U.S. 519, 533

          You’re not sure? But you are sure that this ridiculous statutes is the best way forward because, hey, patents are good and promotin’ stuff.

          Hilarious.

        2. Beneficial to whom in that society and for what? By what standard?

          The “test” is rather vacuous.

          Free markets reveal what is of value and to whom, just look at what commands an exchange of productivity i.e. what creates a demand. Judges trying to pin down floating abstractions will not succeed in defining “beneficial use” in society, they will only succeed in revealing their own arbitrary wishes and arbitrary prescriptions for “society”.

      4. That’s an interesting quote, thanks. The biggest problem I have is one of perception. Congress is very unlikely to pass a new 101 which would allow for such claims. Let’s not forget, the Alice decision was actually one of the more popular Supreme Court decisions (to the general public). At this point, If that is all AIPLA and IPO are going to propose, I give them less than a 5% chance of actually being passed (especially considering the Republican majority). I would like to see a “middle-ground” proposal, which would actually have a reasonable chance of passing.

        1. Yes, yes, there were actual parades downtown celebrating the Alice decision. I remember one sign in particular: YES! Don’t Promote Progress in Diagnostic Testing… We’d Rather Not Know. As I recall, the Organized Students Terrified of Real Information Characterizing Heath was out in force.

        2. That’s some serious Kool Aid with thinking that “Alice” was popular with the general public.

          Effective propaganda just is not the same as actual “general public” support, let alone popularity.

          1. anon, I tried to find a link to an article I was referring to but I can’t find it now (it was almost three years ago). I did read an article that many in the industry celebrated the Alice case because they could worry less about being sued by those “evil” patent trolls. Of course, most people don’t understand patents and that celebration was misguided. But I’m not spreading propaganda, the celebration was there.

            1. The “celebration” was propaganda like most nearly ALL the “tr011” stories.

              Your “reading it somewhere” does not impress me much.

              1. understood, Anon. We should all try to back up our anecdotal claims with a link of some sort.

        3. Fair enough. I definitely agree that it is better to get half a loaf than none at all. If it seems (for stupid and indefensible reasons) that it is harder to sell the reform to Congress without the changes you suggest, then I agree that it is better to make such changes.

          On the other hand, I gather from Martin below that good lobbying can move this through even without such changes. On the assumption that IPO and AIPLA have the requisite lobbying chops, maybe thsi is not as much of a problem as you are expecting. Perhaps we should wait and see whether this version draws fire before preemptively surrendering scope.

          1. Greg,

            Please You too are throwing “just a small steak” to the wolf at the back door….?

            1. Do I have a gun near to hand, or only the small steak?

              I would rather shoot the wolf than distract him with the steak, but if the steak is all I have, I think it prudent to misdirect him with the steak, to buy myself more time to look for a better, long term solution.

              1. maybe you should check out the meaning of the phrase…. “just to distract” is not in the equation, and using that small steak guarantees that whatever “distraction” you may achieve will in the long run be detrimental.

                Of course, you knew that right?

                1. using that small steak guarantees that whatever “distraction” you may achieve will in the long run be detrimental.

                  Of course, you knew that right?

                  Er, no. I still do not know that. That assertion is nonsense.

        4. pl, while I do admire the inclusion of “practical,” what Congress should do should not be constrained by what Congress is likely to do.

          Whether you mean to or not, that introduces an implicit acceptance when umbrage and voicing a desire to hold Congress accountable to their responsibilities is more in order.

          After all (in case people have forgotten), this IS a blog concerned with patent law and we should be aiming for accountability rather than “what the government can get away with”

      5. You keep using that quote. But it doesn’t apply here. You’re conflating two things: subject matter eligibility and market success.

        The quote is about market success. It says: if we grant a patent but the invention isn’t successful, what harm does it do? Fair enough, if we’re talking about inventions no one wants (although today’s trash may turn into tomorrow’s gem).

        That is not what the subject matter eligibility is about. If we allow patents on e.g. golf swings, some of those patents will be useful. Some of those swings will be improvements. There will be market demand for them. We’re in a very different situation than what Story is talking about.

        No one objects to patents on golf swings because they will be frivolous. They object because such patents will have large effects on the market. The story quote is a non-sequitir. Please stop raising it as the answer to subject matter questions.

        1. The conflation is not by Greg, and the quote applies fully as much as anything else that Justice Story has ever written about the patent system.

        2. You’re conflating two things: subject matter eligibility and market success.

          I am not conflating them. I understand the difference between subject matter eligibility and market success. My point is that subject matter eligibility does not really need to weed out the frivolous.

          A great deal of the §101 debate amounts to: “if we do not read §101 in a more limited fashion, then we will end up having patents on [fill in the blank with putative horrible claim].”

          In some instances, it seems to me that this argument is misguided because it imagines that every part of patent law has to be done at the §101 stage, and it ignores that the [putative horrible] claim would be excluded under §§ 102/103/112. Sometimes, however, the [putative horrible] claim really would survive §§ 102/103/112, and the point that I am trying to make is that the appropriate response to most (all) of these parades of [putative horrible] claims is “so what?”

          So what if the claim on a new golf swing is allowed to issue? So what if the claim on a new chess move is allowed to issue? Assuming that these golf swings, chess moves, etc satisfy the requirements of useful, novel, and nonobvious, why should we care?

          I gather that the unstated answer lurking in the back of the [putative horrible] hypothetical is “surely, our patent system cannot stoop so low as to allow a claim on [putative horrible]?” There is a suppressed premise in this argument that—even though the statutes never say as much—there is also supposed to be some sort of merit-as-judged-by-sophisticated-individuals requirement for patentability. Because that requirement cannot be found expressly anywhere else, and because we have a long (and sad) tradition of reading all sort of requirements into §101 that do not actually appear in the §101 text, this line of argument ends up treating §101 as the gatekeeper for this offense-against-good-taste bar to patentability.

          Consider me unconvinced. The patent system is not really supposed to be limited to inventions that every Nobel prize winner can agree are genuinely brilliant. It is supposed to be agnostic about the social merits of the invention. The patent system asks “useful, novel, & nonobvious?” and if the answer is “yes, yes, & yes” then the invention is patentable. From there on out, it is for the market to say whether the invention is actually meritorious.

          1. A great deal of the §101 debate amounts to: “if we do not read §101 in a more limited fashion, then we will end up having patents on [fill in the blank with putative horrible claim].”

            Gosh, I wonder why.

          2. Greg, it’s a fair point to say that 101 should not do all the filtering, that 102/103/112 and others must shoulder the burden. Fair enough, I agree with that. But that is absolutely not what Justice Story is saying.

            Greg:
            So what if the claim on a new golf swing is allowed to issue? So what if the claim on a new chess move is allowed to issue? Assuming that these golf swings, chess moves, etc satisfy the requirements of useful, novel, and nonobvious, why should we care?

            We care because it throws a major wrench in the stream of commerce. Patents are intended for technical inventions. It’s the incentive, the quid pro quo for encouraging disclosure of innovation and technical progress. In fields where that is absent, where’s the quid pro quo? You’re giving an exclusive right in exchange for nothing.

            When you start allowing them on any human activity with no limits, it becomes a land grab. Suddenly people start patenting golf swings and such that were never eligible before (yes, NEW golf swings. I’m not ignoring prior art). Entire classes of commerce and types of activity that never had to even think about patents before are now suddenly potential infringers. And for what? Where’s the benefit? Are these fields that developed rapidly on their own without patents for decades or centuries suddenly going to see an explosion of progress? All it does is sow confusion and liability where none existed before.

            Your stance seems to be that 101 should do none of the work. That anything at all should be eligible subject matter, and the market will sort it out. No it won’t – the market will actually make things worse. Do you not understand that inventions can be both economically valuable and societally useless? The market will not “sort it out”, because there’s plenty of money to be made from rent-seeking behavior that adds nothing of value to society.

            Your refusal to grasp this point seems intentional. I don’t know if you’re playing devil’s advocate or seriously saying “Sure, patent everything. What could possibly go wrong?”. Hopefully the former.

            1. When you start allowing them on any human activity with no limits, it becomes a land grab. Suddenly people start patenting golf swings and such that were never eligible before (yes, NEW golf swings. I’m not ignoring prior art).

              Do you notice that you contradict yourself in the space of only two sentences there? If the swing is genuinely new, then it cannot be a “grab” to claim it. You cannot “grab” from others something that you have invented anew.

              Once again, there are only two possibilities here:

              (1) The new golf technique really is valuable to people, in which case I am not clear on why it is ex hypothesi so horrible to reward the inventor with a patent.

              (2) The new golf technique—while technically useful, novel, and nonobvious as those terms are defined in the statutes and cases—is of no great interest to the golfing public. In that case, we might well feel that the inventor is not morally entitled to the patent, but it harms no one to grant the patent, because it only stands as an obstacle to carrying out an activity that no one actually wants to enact.

              Patents are intended for technical inventions.

              I broadly agree with this, but I think that the devil is in the details of a statement like this. What do you mean by “technical.” To my mind, an invention is “technical” if it fits into one of the four statutory categories (machine, manufacture, method, or composition of matter). Obviously some aspects of (e.g) golf fit into those categories, and some aspects of golf do not. Golf clubs and balls are manufactures. Golf swings can be defined (and claimed) as methods. Those are both “technical” inventions, to my mind.

              Golf terms (birdie, eagle, etc) do not fit into the four categories, and so there can be no patent on that aspect of the game. Similarly, the rules of the game do not fit into one of the four categories, and thus cannot be patented as such.

              Your stance seems to be that 101 should do none of the work.

              Not at all. Did you notice how I chanted “useful, novel, and nonobvious” in my post 14.4.5.2? Where do you suppose “useful” comes into it.

              I see three requirements in §101: (1) four categories; (2) useful; and (3) new. We can quibble over whether #3 is redundant over §102, but at a minimum there are two requirements that §101 is very definitely imposing in my schema of patent law.

              1. Greg If the swing is genuinely new, then it cannot be a “grab” to claim it. You cannot “grab” from others something that you have invented anew.

                Good grief. The point of the “land grab” analogy is that at time zero the land is freely roamable by everybody but once you start giving away rights then that free range turns into a liability for everyone except The Chosen Ones who can afford to play the patent game.

                Right now I don’t have to worry about, e.g., communicating a correlation to anybody because there’s no valid claims to prevent me from doing so. But once you start handing out patents on communicating certain kinds of useful non-obvious information then everybody has to worry about infringement. So everybody has lost something pretty darn fundamental, if you ask me in that scenario. It was “grabbed” away. You’re suggesting we should all accept that because … we need more progress in correlations and this is a fair exchange? The rich people get more rights and more excuses to make everyone else’s lives more miserable? I find that absurd and so will pretty much everybody who takes a minute to think about what you’re suggesting.

            2. Actually there is NO technical requirement so the statement of “patents are intended for technical inventions” is false on its face.

        3. You keep using that quote.

          Indeed I do. The recent series of threads on the IPO proposal seems to induce a mass tendency—even among otherwise clever people—to make the same fallacious argument to which the Story quote is a worthy rejoinder. I will cease citing the quote once the “what about patents on new ways of picking your nose?” argument ceases to be advanced.

        4. No one objects to patents on golf swings because they will be frivolous. They object because such patents will have large effects on the market.

          Do they really? Patents on drugs have large effects on markets, and one does not read a lot of “if you draft §101 like that, people will be able to patent new drugs” arguments. That leads me to believe that effects on markets is not really what people find offensive about patents on golf swings. No, it seems that the putatively objectionable aspect of the hypothetical golf swing patent is its frivolousness, not its market effects.

          Incidentally, golf swings strike me as just about the least plausible subject matter imaginable about which to raise the concern that they could have “large effects on the market.” What market? And how is anyone possibly going to assert this patent? I cannot imagine a claim that would be harder to assert, or for which detecting infringement would be more challenging. The person who applies for such a claim is a fool, not a would-be market wrecker.

          1. it seems that the putatively objectionable aspect of the hypothetical golf swing patent is its frivolousness, not its market effects.

            Well, you’re wrong.

            “Frivolity” is an issue but it’s certainly not the only issue or even the biggest issue.

            1. Frivolity” is an issue

              Why?

              And even as you “say” “but it’s certainly not the only issue or even the biggest issue.” your own ad hominem laden posts focus like at least 90% on that very thing.

          2. Greg: Incidentally, golf swings strike me as just about the least plausible subject matter imaginable about which to raise the concern that they could have “large effects on the market.” What market? And how is anyone possibly going to assert this patent? I cannot imagine a claim that would be harder to assert, or for which detecting infringement would be more challenging.

            That just shows your lack of imagination. Golf is a $40-70 billion dollar a year market, depending on what you count. link to statista.com

            Policing infringement is rather easy. The PGA tour, the USGA tour, the Champions Tour (was Senior Tour), and other lesser groups hold public tournaments all the time. The total prize purse from the Masters alone was $11 million. Many of these tournaments are broadcast or at least filmed. It would be quite lucrative to watch tournaments for professional golfers infringing your patented swing.

            Is it feasible to catch the average weekend golfer? No, of course not. But you don’t have to. Plenty of money to be made elsewhere.

            1. Policing infringement is rather easy. The PGA tour, the USGA tour, the Champions Tour (was Senior Tour), and other lesser groups hold public tournaments all the time. The total prize purse from the Masters alone was $11 million. Many of these tournaments are broadcast or at least filmed. It would be quite lucrative to watch tournaments for professional golfers infringing your patented swing.

              Very good. I take your point and stand corrected on this point. I do not watch golf, so I was thinking of enforcement against the hobbyist player, not the televised professional. I am sure that you are correct that it would be worth someone’s time to watch professional golfers to monitor for infringement. Somehow, however, I just am not that worried about Tiger Woods having to cough up for infringement, if he really is infringing a valid claim.

              1. Likewise, all of that same coverage would likely make validity MORE certain.

                The attempt to NOT have “the public decide” as captured in the Story quote and Greg’s position here merely evidences a lack of appreciation of what the patent right is.

                The patent right is not an award or money or even “market share,” as it remains up to the market – at the market’s discretion – to use the teachings of the patent or not.

                Critically, the patent is and remains a negative right.

        5. The quote is relevant because your examples will not likely have a large effect on the market. How would anyone realistically enforce such patents? What is the value of suing some dude that plays a few times a year because you think he holds his hips in just the way that you claim?

    5. patent leather: As Greg correctly pointed out in that thread, the “printed matter” doctrine could be used to exclude this type of claim

      The so-called “printed matter doctrine” is a judge created subject matter eligibility test that is even more vague than the existing test.

      What makes you think the doctrine would survive this statute? What does “sole exception” mean to the patent attorneys who wrote this? Or is it simply the case that it’s the sole subject matter exception under 101? i.e., judges should feel free to create subject matter exceptions under the other statutes? Seriously?

      C’mon. Try harder.

      Maybe Dennis can run a contest to draft an amended 101 that can weed out the “this is silly” patents while still allowing for software claims like those in RecogniCorp

      What does “like those in RecogniCorp” mean?

      The fact of the matter is that drawing distinctions between patent-worthy and non-patent-worthy examples of logic is not going to be easy. It is easy, however, to understand why it’s not going to be easy. Consider how you might answer the question “how do words work to communicate meaning” as a starting point. Also, regardless of where you draw the line, the same people who howl and whine today about how difficult it is are going to howl even louder. That’s because it’s invariably going to get more difficult. Assuming there’s such a thing as a “software patent” in the future, it’s definitely going to require more description and more data (i.e., evidence that it works as advertised) to get one, and showing non-obviousness is going to require a showing that there’s unpredictability in the underlying context that is made less unpredictable by virtue of math that’s recited in the claim, right up front. Take it to the bank.

      1. Assuming there’s such a thing as a “software patent” in the future, it’s definitely going to require more description and more data (i.e., evidence that it works as advertised) to get one…

        That would be a wonderful outcome, as far as I am concerned. A claim that is functional at the point of novelty is an invalid claim. “Configured to execute [functional recitation]” is a claim that should fail. I merely object to the idea that it fails on §101 grounds. The real reason it should fail is because it claims a scope beyond that of which the applicant can demonstrate possession.

        1. I would somewhat agree with you on that Greg, though I will make exception for 101 as it is currently applied by the courts and PTO as it is the lawl right as of now (and has been since Benson and before tbh). Though it could perhaps be changed somewhat such that the only reason would still be the lack of possession that you’re talking about.

      2. MM, Look at the claims in Recognicorp. Look at the European standard for eligibility. These claims would likely pass muster in Europe as satisfying the technical threshold. Do you see the European patent system blowing up? What about the Japanese patent system? They are very permissive regarding software patents.

        You talk of this impending doomsday for “logic patents” (which in itself is a vague moniker because where do you draw the line between pure logic and logic applied to real world applications). It hasn’t happened in Europe or Japan.

        1. where do you draw the line between pure logic and logic applied to real world applications

          At the point where the applied logic results in a new non-obvious physical transformation of matter.

        2. where do you draw the line between pure logic and logic applied

          Reminds me of another anti-software line that “software is just math.”

          Of course, the anti-software Folks get all miffed when “just math” is clarified between (actual “just”) math, applied math (otherwise known as engineering) and the philosophy** of Math(S).

          **that which hews more to the meta-physics – see Tegmark, for example

    6. Modify 100(b) to read: a process which results in information consumed by human beings may not be patented, excepting processes improving information processing without regard to the particular content or meaning of the processed information.

  13. I am all for amending 101 to soften the blow of Alice, but this proposal (like the IPO proposal) has very little chance of passing in its current form. For example, this proposal would allow a patent on a new type of golf swing. Or how about a new chess opening that a player has developed? How about a new football play? Should these types of things really be patentable subject matter?

    This also has the problem that I pointed out in the IPO proposal thread, that someone could cleverly claim an artistic work as a machine, such as “a computer configured to retrieve data from an electronic storage device, decode the data into a movie and then display the movie on an LCD connected to the computer, the movie having a plot comprising [movie plot].” As Greg correctly pointed out in that thread, the “printed matter” doctrine could be used to exclude this type of claim, but relying on yet another judicially created doctrine like printed matter is problematic in itself (and who knows how the judges will expand upon it)? A revised 101 should ideally be self-encapsulated.

    Maybe Dennis can run a contest to draft an amended 101 that can weed out the “this is stupid” patents while still allowing for software claims like those in RecogniCorp in which it seems the Alice doctrine is being taken too far. Only such a reasonable proposal would stand a chance of being passed. All of us who support software eligibility need to be REALISTIC AND REASONABLE, not shoot for the moon.

    1. I apologize about this duplicate post. My original post had the word “S toop id” in it which got caught in the spam filter. (usually my posts that get caught in there never come out). So I changed that word to “silly” and it went through.

  14. I would add this to the AIPLA proposal:

    The definitions in this section apply to any unexpired patent or patent application notwithstanding its filing date.

  15. If we allow ‘do it on a computer again’, I have a question:

    Every day the Federal Register publishes 100 or so new government regulations.
    One example today is ‘Changes to the Inspection Coverage in Official Establishments That Slaughter Fish of the Order Siluriformes ( link to gpo.gov ). The new inspection coverage schedule is once per plant shift.

    My useful invention is a system to enter, store and display the new ‘once per plant shift’ inspection schedule (to track compliance). Presumably all the readers of this blog could draft claims which describe such a system implemented on a computer since I only want to enter, store and display some information.

    The new Federal Rule was published today so there is unlikely to be any prior art or any evidence that a PHOSITA would have thought of this invention for this particular regulation.

    This seems like a general case, that every new regulation could have a matching patent claim to a software system to track compliance to the regulation.

    Do all such claims stand or fall together?

    Is it the case that because the regulation is new, the invention to track compliance with a computer is non-obvious.

    OR

    Is tracking compliance with a regulation using a computer always obvious?

    1. I think you’re catfishing us.

      If there’s a government regulation on it, that means there’s been notice-and-comment, so there is likely prior art. Even without notice-and-comment, the regulation was alsmost certainly driven by a market need, which, as KSR says, proves obviousness.

      TLDR: Yes, 103 properly applied will still fix everything.

  16. (b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

    Dose the bolded portion mean: 1) or can only be performed in the human mind or does it mean 2) or if it is possible to perform it exclusively within the human mind.

    If the intention is 1), then I can live with it, but the wording should be clarified. If the intention is 2) then it isn’t much better than we have now.

    Also, if the intention is 2) does reciting A method performed in by a computer get one out of “it can be done solely in the mind” jail because the claim requires that it is done in a computer…. does reciting a method performed other than within the human mind also get one out of jail? What if you train a monkey to do it? We good?

    1. I think you identified an ambiguity. I understood it to mean “is capable of being performed in the human mind,” rather than “can only be performed in the human mind.”

    2. Taking the statute as a whole it means what it says: a claim that recites only a mental process ineligible. If you recite a paper and pencil or a computer, then it’s eligible. You can’t read that those other limitations out of the claim because the statute forbids it.

      Learn how to read, geniuses.

      It’s truly hilarious that the peanut gallery here is already struggling to rescue this dreck by weakening it. LOL!

      You’ve got a lot more work to do, kids!

      Again: these patent addicts literally had YEARS to come up with something and this is what they came up? Wow. Just … wow.

      “Any addiction has a predictable pattern — the addict keeps chasing the high by upping the ante in an increasingly futile attempt to recreate the desired state.” <— Drumpf's biographer; this definitely applies to the k00l aid drinkers who came up with these statutes

      LOLOL

      1. “. If you recite a paper and pencil or a computer, then it’s eligible. You can’t read that those other limitations out of the claim because the statute forbids it.”

        It is? The courts have already stretched the mental steps exception to do it with pencil and paper, so how do we know what they would do with solely in the mind; the mind is controlling the hand that holds the pencil and the hand holding the paper stationary on the table (hey is that why they call paper stationary?), so how long before some judge stretches this language?

        Never mind the stretch that made the mental steps exception to being with.


        1. Never mind the stretch that made the mental steps exception to being with.

          Les, my invitation to Prof. Crouch or any of his academic friends to provide a clear, cogent, and sound history of the mental steps doctrine, from birth to (rightful) demise to the nascent Zombification (inherently tied to Anthropomorphication) remains on the table.

          And yes, Malcolm, as I have explained previously, I invite this from sources that you might (just might) not dismiss out of hand.

          Heck, I gave you an extremely simple Set Theory explication of another concept, and you have never been able to handle that

        2. Its even worse than that. If an invention can in principal be performed by mental steps (whether or not paper and pencil are used as a memory aid to the mind) it is excluded, even when the human mind would realistically take a very long time – possibly up to the entire age of the universe – to get a result that a computer could do in minutes. (E.g., compare John Napier’s years worth of preparation of the first book of logarithm tables, versus the corresponding capability of even a simple calculator.) Performing the steps “mentally” might lack any real practical utility, while the corresponding computer program would be eminently practical, yet the later would still fail the mental steps doctrine.

          The mental steps exclusion seems to be simply the court’s shorthand way of saying that they don’t like any patenting of computer software, using the rationale that it mimics to some extent certain operations of the human mind. They should just be honest and say so.

          The proposed language of performed “solely” in the human mind, likewise seems to be a shorthand way of allowing such computer programs to be patented with presumably less court interference.

          1. You mean computers make processing information faster?

            Wow.

            How long has this been known?

          2. The mental steps exclusion seems to be simply the court’s shorthand way of saying that they don’t like any patenting of computer software, using the rationale that it mimics to some extent certain operations of the human mind. They should just be honest and say so.

            That’s already happened.

            1. That’s already happened

              Cause “mimics to some extent certain operations of the human mind. ” sure sounds like Anthropomorphication and you have never shared an instance of the courts having this “already happened.”

              So go ahead and share the backup to your feelings on this point.

              A simple and proper legal citation will do.

              Yeah, that’s what I thought.

    3. Good questions. “Process” needs to be better defined than it currently is in 100(b).

      1. A definition such as: a method of making a manufacture or composition of matter, or a method of using a machine; especially a method used in an industrial manufacturing operation

        1. especially? So methods used in family farming or in surgery rooms would be of some sort of second class status? What effect would that second class status have?

      2. “Process” needs to be better defined than it currently is in 100(b).

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

  17. Sole. Exceptions. Funny

  18. I have thought this would be the direction to go, for some time now. In fact, it’s almost inevitable.

    The purpose of section 101 is to set policy as to what categories of things should (and should not) be eligible for protection. But the inventive process, by definition, develops novel technology, and you can’t outlaw something that hasn’t even been conceived!

    The best thing you can do is to make a clear and unambiguous policy statement that certain technologies that /have/ been conceived aren’t worthy of protection. You all know the usual suspects: mental steps, business methods, software–there are others. This is essentially what IPO and AIPLA have done, and probably the only thing to be done.

    The biggest issue with 101 today is that, at bottom, the question of policy is, well, a political one. The flowery language by the Court about “basic building blocks” and all that is nice, but at the end of the day that’s for Congress to decide, not the courts. That said, expect the “sole exception” in 101(b) to grow into a lengthy list, as special interest groups get hold of their congress critters.

    1. Logic, information, abstraction, and natural laws/phenom were conceived of before the country was founded.

      Very weird that people still pretend this is about “new technology”. It’s not about that at all.

      1. Protons, neutrons and electrons were around well before the country was founded.

        And yet, configurations remain patent eligible…

        1. Nice word salad.

          Let’s just remind everyone again: the people most in support of this wretched “revision” are also the worst attorneys out there. They are the people who will literally do and say anything — anything at all — if they think some five year old out there will buy it.

          Life on the b0ttom rung of the food chain is rough, I guess, even if it’s the bottom rung of the patent attorney food chain.

          1. Some attorneys will literally do and say anything if it invalidates their adversary’s patent.

            1. Some attorneys (or even people like Moocow who can’t even convincingly play an attorney on the Internets) can’t recognize the difference between a statement that is directly responsive to comment and a bizarre non-sequitur like 11.1.1. that amounts to tr0lling and nothing more.

              But go ahead and explain to everyone how claims describing novel configurations of new man-made compositions of matter are exactly like mental steps. Go for it! You’re a very serious person, Moocow. You can do it. Step up.

              1. Go ahead and explain how new software that is applied on a “generic computer” that enables stronger data encryption, that creates animation, that produces virtual or augmented reality, etc. etc. can really just be done by mental steps.

                1. I never made that statement so why should I have to explain it?

                  That’s your strawman. Beat on it all you want.

                  That said, most software claims aren’t limited to “at least X number of operations performed in less than X seconds.”

                  Figuring out whether a line representing a mouth should move or doesn’t is not a difficult task, fyi.

                2. So you are conceding that such claims would be eligible.

                  LOL

                  That’s not how it works. Nice try, though.

    2. David, “101” in its current form was introduced in 1793 and was intended to capture the essence of British law on patentable subject matter as it then stood.

      But the cases continued to develop, on both sides of the Atlantic, regarding the proper scope of patentable subject matter. These cases, and there are a number of them, many written by Joseph Story, concluded that patents could not extend to phenomena of nature, principles of nature or principles in the abstract. These cases concluded that patents should be limited to the novel and inventive means and methods disclosed for carrying out the broad principle.

      For more than 150 years, courts have been construing “101” to be consistent with these common law “exceptions.”

      Thus your statement about the intent of 101 is whole cloth, unsupported in history and inconsistent with multitudes of Supreme Court cases to the contrary. I know some of the legislative history is different, but the whole topic of the exceptions was not discussed in reenacting 101. The intent to provide no change in the law should be inferred by no change in the statute.

      We do know however that Judge Rich and many of his fellows on the CCPA and Federal Circuit trying to make it their duty to get rid of the judicial exceptions to the best of their ability. We all know this to be true. The latest attempt here by the IPO and AIPLA is more of the same.

      The real question to me is whether reliance solely on 102/103 and 112 is sufficient to prevent claiming laws of nature and principles in the abstract. The answer to this question seems clear in that the USPTO issued hundreds of thousands of patents that are clearly abstract, or which are directed to laws of nature. The proof is in the pudding so to say.

      1. David, “101” in its current form was introduced in 1793

        You have omitted some serious considerations in your attempt to turn the law as written by Congress in 1952 into something other than what Congress did.

        That is unethical, Ned to so knowingly misrepresent the law in your advocacy pursuits.

        It is YOU that is attempting to create things while cloth with your attempt to NOT take 101 OUT of the context of the Act of 1952.

        Your attempt to impugn Judge Rich is merely another ethical failure of yours.

        Please stop.

  19. So, according to the usual suspects on this blog, all process of data is the same. So what difference does it make what the statute says?

    Seriously. Tell us in detail why it matters what the statute says. Step by step tell us a different outcome and how it would be reached. Bonus points if you can add in when energy is expended in a step.

  20. I’m all for amending 101 in the direction in which AIPLA and IPO are pushing. But what does “can be perfomed solely in the human mind” mean? What if my claim requires doing something that could be done using paper and pencil, but would be difficult for 99.9% of all people to do in their head alone – is the fact that some people CAN do it in their head sufficient to render the claim ineligible? What if it could be done using paper and pencil, but at a rate a billion times slower than is necessary to be commercially viable – would render the claim ineligible? If recite the rate of calculation in the claim, does that save eligibility?

    I fear that that particular exception, as worded in the AIPLA proposal, would still present unfavorably disposed judges with a “nose of wax”, as Anon likes to call it, with which to maintain much of the present situation.

    1. I think if you claimed the method being performed by a computer that it would not be something that could be performed “solely” in the human mind.

      But, it does bring up just the bizarre nature of the 101 discussions that somehow automating things that people can do with their brain is bad. Or that it is somehow easy. So far from reality that it goes into the category of mystical thinking or medieval thinking. Or it brings up the “organize human behavior” nonsense as if mechanical inventions don’t organize human behavior, e.g., the tractor organizes human behavior.

      But, it does go to elements like “determine it is cancer if the level of x is greater than y.”

    2. I think I understand your point, Atari Man,

      When you set out s definition for a word, you have to use…

      …words.

      Turtles all the way down, as you then look at the words used in the definition of the word you wanted to define.

      As long as there be words – you have the potential for the “nose of wax” treatment of those words.

      Of course, I have also provided an avenue to eliminate even that concern as regards the Supreme Court and patent law…

      😉

      1. Anon has proposals!

        Lol.

    3. I suspect this “can be performed solely in the human mind” terminology will end up requiring a test, for example that the claim is tied to a machine or transformation of product, or the claim as a whole has is directed to a tangible result. Back to square one…

      1. I suspect this “can be performed solely in the human mind” terminology will end up requiring a test, for example that the claim is tied to a machine or transformation of product, or the claim as a whole has is directed to a tangible result.

        How does that happen, and why?

  21. The original idea had merit: prevent people from patenting whole concepts they didn’t invent, merely by adding some random computer functionality that does nothing more than implement the basic idea on a computer system. The Supreme Court tried to come up with a rule that allowed the patent office to stop these sorts of silly applications without making the patent office go through an entire 102/103 search.

    However, the patent office refuses to stop there. They saw that as carte blanche to do any sort of 102/103 search, secure with the knowledge that they could knock out virtually any patent by describing the language of the claims in abstract terms and then, shocker!, pointing out that those abstract terms were abstract, so no patent for you!

    So it’s no surprise that the patent lobbyists are going to knock this out. Had the patent office limited their application of these cases to things that were very obviously non-inventions, they’d still have this tool when they needed it. However, they refused to use it only in limited cases, so it will be overruled by statute.

    Good riddance to bad rubbish. We gave you a Bazooka to use against the worst offenders and you turned around and started using it everywhere so now we’re going to take it away. That’s how things work.

    1. Your initial presumption is too much, but you do see what happens when a point of law is provided on something that is just not art-field specific (because in truth Section 101 is just not written to be art field specific).

      The Court as a scrivener itself simply re-wrote the law p00rly.

      Don’t blame anyone else but the the provider of the “Gist/Abstract” sword for what that sword does.

      Then contemplate that the Court is not the designated branch of the government to be writing patent law in the first place.

  22. Owen, I saw your post and endorse it. My feeling exactly.

    1. Owen’s post wholeheartedly endorsed the proposal and Owen said that he had been studying science and technology and realized that his previous beliefs were based on medieval thinking that he had learned from thousands of hours of watching fantasy television programs. Owen said he was surprised to learn that the Earth revolved around the Sun and that witches weren’t real.

      1. Thank you both so much for your support.

  23. If the statute simply said, “Whoever applies for a patent, subject to the requirements of this chapter, shall be entitled to a patent,” would it be constitutional?

    1. If the statute simply said Ned the Ed likes red herrings would it be readable?

  24. Probably unconstitutional under the current view of written description

    1. Can you flesh that out a little, Random?

    2. How can it possibly be unconstitutional on the basis of the written description requirement? The proposed § 101 says “subject… to the… conditions set forth in this Title.” Written description is a condition in this Title. Where can there possibly be a contradiction?

      1. Congress has broad authority to set patent policy subject to the constitutional requirement that it advance the useful arts.

        The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the “useful arts.” It was written against the backdrop of the practices — eventually curtailed by the Statute of Monopolies — of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public.
        Graham v. Deere

        [Congress may not] enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby.

        The statutory scheme is subject (like everything Congress does) to constitutional review. It cannot be set up in a manner that enlarges the patent beyond the advancement/contribution, because Congress has been denied the right to court business favor by monopolizing something. In other words, no matter how much a patent applicant wants a scope greater than what they have invented, and no matter how much congress wants to give them that scope, the scope can’t be granted. (At least not via the patent power)

        Again, the north star is Morse. Morse represents *the thing you cannot do.* That is why the judicial exception was created. You cannot disclose one thing, summarily state using inductive reasoning that other things in a group you choose behave like your one thing, and then claim the group. That has the effect of enlarging the patent beyond the advancement. To use Morse as the example – Morse invented the telegraph, but his claim was to any machine that prints at a distance. Although that is a description of what his machine did, it is not a description of what his advancement is, because we know that other machines print at a distance using distinguishable means from what Morse disclosed.

        The non-judicial exception mechanism for policing overbreadth is found in enablement, written description and particularly claiming. With the particularly claiming requirement neutered under the current view of the law (something which has no basis in law, might I add, as the 1952 act didn’t really change the text yet somehow resulted in an entire 180 on the issue under Rader) the only real checks are enablement and written description. Enablement is always met for some acts (see, e.g. coding software, which is de facto deemed always enabled).

        The manner in which Morse deals with overbroad cases is to place the burden on the patentee to prove the inductive leap is met. The current law is to a) place the burden on the public to prove the inductive leap is not met and b) essentially require counter-invention as proof of (a). Those two requirements are probably sufficient to cause the statutory scheme to be unconstitutional.

        The solution is, of course, for the Supremes to simply speak on written description and essentially turn the written description requirement into the same kind of thing as a judicial exception test by requiring the patentee to foreclose the existence of unposited means.

        In other words, suppose you invent the bow. Under the current law, a claim to the bow is concrete, posited and patentable. A claim to “a machine that fires a projectile” may be posited, but is considered abstract and ineligible and thus unpatentable. But if one removed the judicial exception, the patent scheme could remain constitutional by holding that the claim to “a machine that fires a projectile” is not fully described because the specification fails to disprove other means of firing a projectile exist (e.g. foreclose the possibility that there is a future gun to be invented out there). If one were to remove the judicial exception but not modify the written description requirement, it would allow for *the thing you cannot do* which is invent the bow but receive a valid claim on the gun.

        There is no constitutional manner by which one can receive a valid patent on something that the art would find distinguishable from what was specifically posited and proven. Congress cannot expand the monopoly beyond the advancement. If you can concretely prove the existence of Species A, you can definitely claim A, but your ability to claim a genus of SuperA ends when SuperA embraces what the art would find to be a non-equivalence of A. *There is no constitutional manner in which disclosing Species A supports a claim to non-equivalent Species B, regardless of what the claim language of an issued patent says.* It doesn’t matter whether you call that a 101 issue or a 112 issue or a constitutional issue. It’s the thing you cannot do.

        1. It doesn’t matter whether you call that a 101 issue or a 112 issue or a constitutional issue. It’s the thing you cannot do.

          Sure. I agree with that. I still do no follow where you see the constitutional problem here. The proposed text says “subject… to conditions… set forth in this Title.” The written description requirement is a condition set forth in this title, so the proposed §101 revision is not an end run around the written description requirement. You still have to comply with the written description requirement to get a patent, even if this §101 revision is enacted.

          Therefore, even under this proposed revision, one cannot do the thing that Art. I, §8, cl.8 says that you cannot do. Where is the constitutional problem here?

          The manner in which Morse deals with overbroad cases is to place the burden on the patentee to prove the inductive leap is met. The current law is to a) place the burden on the public to prove the inductive leap is not met and b) essentially require counter-invention as proof of (a).

          Can you point to an example where the law essentially requires counter-invention to prove the leap is not met? That is to say, some actual case where a court has held that one cannot show lack of compliance with the written description requirement without coughing up a second invention that is covered by the claims but not described by the patentee?

          I confess, my understanding of written description law is the law articulated in Morse. I am surprised to see you say that you think that Morse is not treated as the law in written description. I suppose if I found that written description law really is so cavalierly ignored as you propose, I would have an easier time spotting a constitutional problem with the proposed revision, but I just do not know from where your characterization of written description law is coming. That is nothing like my experience of how written description law is applied.

          1. I still do no follow where you see the constitutional problem here. The proposed text says “subject… to conditions… set forth in this Title.” The written description requirement is a condition set forth in this title, so the proposed §101 revision is not an end run around the written description requirement.

            Right now there are nominally four overbreadth protections: the judicial exceptions, enablement, WD, and particularly pointing out. The amendment eliminates one of them. The remaining three do not cover all overbreadths, and Congress has not been granted the power to issue overbroad patents. Therefore 101 as amended will be unconstitutional because it is the part of the statutory scheme that issues patents (“shall be entitled to”) and does not provide for sufficient overbreadth protections (“subject to conditions set forth in this title”). I’m not suggesting that it is eliminating WD, I’m suggesting that Enablement, WD and particularly pointing out, as currently construed by the federal circuit, are insufficient checks to be a constitutional use of Congress’ patent power.

            That is to say, some actual case where a court has held that one cannot show lack of compliance with the written description requirement without coughing up a second invention that is covered by the claims but not described by the patentee?

            I am surprised to see you say that you think that Morse is not treated as the law in written description. I suppose if I found that written description law really is so cavalierly ignored as you propose, I would have an easier time spotting a constitutional problem

            Excellent, we’re on the same page, we both seem to agree that the logic of Morse is the proper scope of WD. So sure, let me give you some cases as to how the federal circuit departs from Morse. It starts with Ariad, which stated:

            We held that a sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus.

            Under that standard, the manner by which you show that a representative number of species has not been met or “structural features common” is not found is by introducing a species that falls within the genus but lacks the feature, i.e. to counter-invent. I should point out here that this is my (a) complaint (listed above) with WD today – the burden is on the public (both post and pre-issuance) to show that a generic scope is invalid, rather than on the patentee to show he’s entitled to a generic scope.

            Here’s Abbvie:

            If the genus is not large or, even if it is, the specification discloses species representing the genus throughout its scope, the requirement may be met. On the other hand, analogizing the genus to a plot of land, if the disclosed species only abide in a corner of the genus, one has not described the genus sufficiently to show that the inventor invented, or had possession of, the genus. He only described a portion of it. That is the case here.

            That’s precisely what the test is – drawing a boundary, and then disclosing species within the boundary, and the manner in which one overcomes the description is to show “the disclosed species only abide in a corner of the genus” – point to “known” land which isn’t described in the patent specification.

            Here’s how Abbvie describes Eli Lily:

            In Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.Cir.1997), we held that a genus of mammalian insulin DNA was not supported by a description of rat insulin DNA. Without doubt, rats are different from other mammals, including humans. A description of one does not describe or show that one has invented the whole genus of mammals.

            The rat (species) DNA was not enough because you can point to other mammallian (genus) DNA that is not that species, such as a human (non-equivalent species). Abbvie’s defendant achieved the same functional result using a different structure. Ariad did the same. Lizardtech’s defendant also performed seamless DWT but not by Lizardtech’s method. In each case the de facto proof is not shown by looking solely at the specification, but by looking at the specification *and then comparing it to something in the world.*

            Compare that with Morse. In Morse there was no counter-invention to compare to. There was no proof that Morse had failed to recognize structural features common to the act of printing at the distance. Indeed, Morse specifically argued that he disclosed a principle and that the principle applied always, and thus usage of the principle would always achieve the result. Yet the Morse court found invalidity because:

            For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff’s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.

            In Morse the Specification’s failure to prove that the scope could not be achieved by other means (“some future inventor…may discover a mode of writing or printing at a distance…without using any part of the process or combination set forth in the plaintiff’s specification”) was sufficient to doom the claim. You would never have an Abbvie or Lizardtech question in the Supreme Court – if the functional result was met by different means, then the specification obviously failed to prove that some future inventor could not have achieved the function using different means.

            Again to use the bow/gun example – Under the Supreme Court test, the bow patentee could only claim a scope that would encompass the gun *if he could prove the gun could not exist.* Consequently a person who invented the bow and tried to sue a person making a gun (because their claim was to a functionally-defined “machine that fires a projectile”) would be subject to a summary judgment determination of invalidity. This is because under pre-1952 precedent it was clear that you could never expand your scope by describing your invention by functional result – either the defendant is using an equivalent structure (in which case a structural scope would have also found infringement) or the defendant is not and your functional scope was invalidly overbroad. This was reinforced post-52 in the “means plus” cases. Yet today people routinely claim by functional result because they believe that it gives them a valid scope broader than a structural scope.

            And they are correct – instead of applying the intrinsic specification and logic test of the Supreme Court, the Federal Circuit makes it a *fact question* that Abbvie, Ariad and Lizardtech defendants could possibly lose on. That factual burden on the defendant is the relevant difference between the Morse logic of WD and the current Federal Circuit WD test.

            As an Examiner let me tell you – I cannot show by a preponderance that an applicant has failed to show representative species unless I can point to another reference that performs the same function by different means. I should be able to make a WD rejection without even performing a search – I should be able to look at the specification and make an argument that disclosing “example embodiments A/B/C” do not prove possession of the generic functional scope claimed. That’s the Morse standard. But it’s not the FC standard.

            1. Let me ask you a practical question Greg –

              Assume that a patent spec discloses three example embodiments (Species A/B/C) and claims the functional result (Genus F). How does one prove, by either clear and convincing evidence or a preponderance, that A/B/C fail to be representative of F, or fail to possess the breadth of F, or “abide in only a corner” of F, other than to show some fourth Species D which is dissimilar than A/B/C?

              Without evidence of Species D, there is only speculation. Under Morse, that speculation is enough because the burden is on the patentee to prove the possession of the scope. Are you suggesting that under the Federal Circuit caselaw it is? If so, why did they need to take evidence in Ariad/Abbvie/Lizardtech? One could look at the specification and see that there is no language that suggests let alone proves that those means are the only ways of performing the function. Moreover, the allegation that the defendant’s infringing embodiment (which were unquestionably dissimilar structurally in each case) exists would be enough.

              1. You continue to get 112 and 101 both wrong, Random.

              2. Under [the Ariad] standard, the manner by which you show that a representative number of species has not been met or “structural features common” is not found is by introducing a species that falls within the genus but lacks the feature, i.e. to counter-invent. I should point out here that this is my (a) complaint (listed above) with WD today – the burden is on the public (both post and pre-issuance) to show that a generic scope is invalid, rather than on the patentee to show he’s entitled to a generic scope.

                As I said above, this understanding of how WD is supposed to work is totally unlike the rejections that I get in the 1600s. I have never had an examiner express to me that s/he felt that s/he could not reject my claims for lack of written description without coughing up a specific counter-example. The burden has always been put on me to show that I have described a representative number of species (in vain do I point out that representative number of species are not necessary if one instead described structural features common to the genus; in my experience, one must point to the species in the spec and show that they are representative, or else be prepared to narrow one’s claims).

                Assume that a patent spec discloses three example embodiments (Species A/B/C) and claims the functional result (Genus F). How does one prove, by either clear and convincing evidence or a preponderance, that A/B/C fail to be representative of F, or fail to possess the breadth of F, or “abide in only a corner” of F, other than to show some fourth Species D which is dissimilar than A/B/C?

                As Ariad rightly noted (598 F.3d at 1351), “determining whether a patent complies with the written description requirement will necessarily vary depending on the… scope of the claims and on the complexity and predictability of the relevant technology,” (emphasis added). Therefore, I am not sure it is possible to answer your question in the abstract situation of A, B, & C. We need some really concrete example.

                Assume that my spec discloses benzalkonium chloride, cetylpyridinium chloride, and cetrimide, and then I try to claim “antimicrobials” on the basis of these three species. In my experience, the examiner will take exactly the same tact in this application that Justice Taney took in Morse (“how do I know that someone else will not later invent an antimicrobial that works on a totally different principle than these three?”). I have never known an examiner who felt honor bound to mention penicillin before rejecting my “antimicrobial” claim as lacking written description based on the disclosure of just three quaternary ammonium compounds.

                Partly, however, this is because we all know that chemical arts are less predictable, and therefore correspondingly more structural disclosure is required to support the claim to “antimicrobial.”

                If, instead of the above, I had disclosed staple, nail, screw, and glue, and then claimed “fastener,” I do not think that I would get a written description rejections, because I do not think that there would be a written description problem. The world of “fasteners” is simply much more predictable than the world of “antimicrobials,” so the amount of detail required in the written disclosure is correspondingly less.

                1. I have never had an examiner express to me that s/he felt that s/he could not reject my claims for lack of written description without coughing up a specific counter-example.

                  I can’t even make a WD rejection when I *have* a counter example. So long as the words exist in the specification (i.e. it’s not a new matter addition), the rejection is not proper, according to my tc.

                  As Ariad rightly noted (598 F.3d at 1351), “determining whether a patent complies with the written description requirement will necessarily vary depending on the… scope of the claims and on the complexity and predictability of the relevant technology,” (emphasis added). Therefore, I am not sure it is possible to answer your question in the abstract situation of A, B, & C. We need some really concrete example.

                  That’s what Ariad said, but again under Morse that’s improper logic. Again take the “machine that fires a projectile” hypo – Certainly the bow can be invented, and over years the concept of string tension can be tested in every circumstance, via the bow, the catapault, the trebuchet, etc. The structure and usage of string tension can become perfectly predictable. But that does not foreclose the existence of the gun, which is a different means which fits within the scope. How predictable or comfortable one is with *known* examples might inform a question about whether the disclosure describes the breadth *of that corner* of the scope, but it doesn’t inform upon how much of the scope is unexplored.

                  In my experience, the examiner will take exactly the same tact in this application that Justice Taney took in Morse (“how do I know that someone else will not later invent an antimicrobial that works on a totally different principle than these three?”).

                  The examiner has the burden of proof. Raising the question of “how do I know” without evidence is per se insufficient. I hope you wouldn’t let me get away with a 102 rejection because I cite no reference but say “hmm, how do I know this wasn’t anticipated?”

                  I am not in chemistry, but I’ve have the exact same situation in your specification in my specifications, and the same rejection and logic is overturned by the Board.

                  Partly, however, this is because we all know that chemical arts are less predictable, and therefore correspondingly more structural disclosure is required to support the claim to “antimicrobial.”

                  Yes and no. I’ll agree that the chemical arts are less predictable than say computer software, but I’ll disagree that when the invention is in an abstract idea (as we are talking about getting rid of the judicial exception here) that your field is less predictable than mine. Yours at least succumbs to natural laws which may be difficult to determine but are at least unchanging. But when the advancement is an abstract idea you really have no mechanism to measure “predictability” or “scope” at all.

                  The Bill of Rights includes the fourth amendment which governs the ability of the federal government to search its people. Has the text changed since its adoption? No. Has the actual right changed? Greatly. There originally was no supression remedy. The right was originally location-based before Katz. Did the Katz court invent a better concrete means of applying the fourth amendment’s abstract idea because the legal arts were unpredictable? Or because of some technological advance in the law or political theory? Or were they just smarter than previous courts? Of course not, they just had the benefit of seeing how it used to work and they came up with a better method of reaching the 4th amendment’s abstract goal. That’s not an “unpredictability in the art” that the Ariad test would respect, but its a relevant overbreadth issue anyway – there’s no mechanism by which I can say that one of skill in the art couldn’t have come up with the Katz test during the time of the founding fathers.

                  If, instead of the above, I had disclosed staple, nail, screw, and glue, and then claimed “fastener,” I do not think that I would get a written description rejections, because I do not think that there would be a written description problem. The world of “fasteners” is simply much more predictable than the world of “antimicrobials,” so the amount of detail required in the written disclosure is correspondingly less.

                  Ah, here we get into an issue so let’s be specific: I think if you’re not inventing a fastener, and a fastener is not related to the inventive part of the machine, then its perfectly fine to use the phrase “fastener.” But if your invention is a modification that deals with, e.g. a nail, you can’t say “I’ve shown you how to use my new method to strengthen a nail. A nail is a type of fastener. I claim strengthening fasteners” because that assumes the staple, screw and glue (and future fasteners) behave in the same manner that the nail does just because they happen to share one quality in common. Your ability to be vague (and functional claiming is a form of vaguery) is relative to whether the thing you’re being vague about is the inventive piece of the claim. In other words, when you’re willing to admit that you’re using a conventional nail for a conventional purpose (fastening) your ability to be vague or abstract about that nail without causing a problem greatly increases, but when patentability is premised on a novel interaction dealing with the nail, being vague or functional runs the risk of dooming the claim, because thats the very unproven inductive leap which is the thing you cannot do, regardless of whether “fastening” is a predictable art, or you can name a number of fasteners, or whatever.

                  Regardless you’ve never addressed my central point – WD under Morse is a test that can be performed intrinsically. WD under the federal circuit requires all this evidence testimony about “predictability in the art” and whether “sufficient representative species” are disclosed and whatnot. Do you not find that to be a very different test? Your examples differentiate between chemical and mechanical arts, but Morse was a mechanical claim and still found to be wanting on an intrinsic level. What’s the difference between Morse claiming any machine that performed a function versus a claim to a computer whose software is defined by function rather than algorithm? Virtually every claim that issues in software has its novelty defined by functional result, just as Morse’s machine did. Are you really suggesting Morse’s WD is being applied?

                2. Greg, If, instead of the above, I had disclosed staple, nail, screw, and glue, and then claimed “fastener,” I do not think that I would get a written description rejections, because I do not think that there would be a written description problem.

                  Beg to differ. Fastener is functional. One gets under 112(f) the staple, nail, screw, glue and equivalents.

                  The result is different if one claims KNOWN structure.

                3. Beg to differ. Fastener is functional. One gets under 112(f) the staple, nail, screw, glue and equivalents.

                  That is not even close to being correct.

                4. That’s what Ariad said, but again under Morse that’s improper logic.

                  Hm, I disagree, but I could be wrong. Let us pursue the example you have given and see where it leads.

                  [T]ake the “machine that fires a projectile” hypo – Certainly the bow can be invented, and over years the concept of string tension can be tested in every circumstance, via the bow, the catapault, the trebuchet, etc. The structure and usage of string tension can become perfectly predictable. But that does not foreclose the existence of the gun, which is a different means which fits within the scope.

                  I definitely agree with you that inventing the bow-&-arrow does not entitle you to claim “weapon for firing projectiles.” I do wonder, however, if the disagreement between us might simply be a confusion or equivocation. When I said “unpredictable,” perhaps I would have done better to have said “unexplored.” I posit that most judges would (at this date) feel comfortable with “fastener” because the art of fastening has been so thoroughly explored that any improvements on fastening technology are simply going to be variations on a known theme. By contrast, many judges will balk at “antimicrobials” because it is far less clear that this field has been thoroughly explored, and it is therefore intuitively plausible that new antimicrobials will be discovered that are not at all variations on a known theme.

                  In this respect, the rhetorical question “how do I know that someone else will not later invent a fastener that works on a totally different principle than these?” actually has an answer—“come on…” (said with an impatient tone of voice). By contrast, the rhetorical question “how do I know that someone else will not later invent an antimicrobial that works on a totally different principle than these?” has only the answer: “you are right, we do not know that.”

                  In other words, the more thoroughly explored a given art field is, the more comfortable we are in saying that the description given really does cover the whole paper, and not merely a corner. By the same token, the less thoroughly explored a given art field, the less comfortable we are in supposing that the inventor is describing everything, and not merely one corner of the paper.

                  Raising the question of “how do I know” without evidence is per se insufficient.

                  True. What I am getting at, however, is that the evidence is the impression(or lack thereof) of those working in field X that field X is a thoroughly explored field of art.

                  I think if you’re not inventing a fastener, and a fastener is not related to the inventive part of the machine, then its perfectly fine to use the phrase “fastener.”

                  This is a good point, and a worthy distinction. As I said above, I wish that I had not used the word “unpredictable,” because that has started us off down the wrong rabbit hole. Half of what I meant would have been better termed “unexplored” than “unpredictable.” The other half of what I meant is neatly summarized by your explanation here. If what I have invented is a preservative to make antimicrobials shelf-stable at room temperature, and it works equally well with any antimicrobial, then I can more properly get away with saying “a composition comprising a preservative of formula X and an antimicrobial.” If the antimicrobial is, itself, a novel aspect of the claimed invention, however, then I need to get more detailed in my description of the antimicrobial, and the purely functional (and therefore correspondingly vague) word “antimicrobial” is probably not good enough.

                  WD under Morse is a test that can be performed intrinsically. WD under the federal circuit requires all this evidence testimony about “predictability in the art” and whether “sufficient representative species” are disclosed and whatnot. Do you not find that to be a very different test?

                  Hm, no. I do not find them to be very different tests. I find the test in Morse to be exactly the same as the test in Ariad. If they seem different to you, allow me to suggest that this is because they are being applied to two very different claims. Morse‘s claim is just about as baldly pure-functional as one can get. Therefore, its application is very straightforward and un-nuanced. The claim at stake in Ariad was a mix of structure and function, and therefore the application of this same test will be less clear and more nuanced. Those added features (state of the art, representative species disclosed, etc) are implicit in Morse, but not explicitly invoked by Chief Justice Taney because they were not relevant to the holding there.

                5. When I said “unpredictable,” perhaps I would have done better to have said “unexplored.”

                  But the Ariad test isn’t “unexplored”, it differentiates between the predictable and unpredictable arts. Its not your word to change.

                  I posit that most judges would (at this date) feel comfortable with “fastener” because the art of fastening has been so thoroughly explored that any improvements on fastening technology are simply going to be variations on a known theme.

                  You have absolutely no basis, other than arrogance or close-mindedness, by which to say that. I bet everyone in the world of the bow was “comfortable” with “projectile firer” because the art of projectile firing had been so thoroughly explored via the different mentions of string tension that “improvements [] are simply going to be variations on a known theme.”

                  You can’t disprove the existence of something with inductive logic. It can’t be done. That’s the fundamental issue and distinction. Either you can conclusively prove that there are no other fasteners, or you can “assume” (which is the word I would use in place of being “comfortable” with) that no other fasteners can exist. For the Supremes the assumption is improper. For the FC the assumption can or can not be improper, based on a fact question.

                  In this respect, the rhetorical question “how do I know that someone else will not later invent a fastener that works on a totally different principle than these?” actually has an answer—“come on…” (said with an impatient tone of voice). By contrast, the rhetorical question “how do I know that someone else will not later invent an antimicrobial that works on a totally different principle than these?” has only the answer: “you are right, we do not know that.”

                  So in other words, you want to punish the person who actually invents the greater invention –

                  Your view is that with fasteners the world seems to have a concensus that no unique fasteners will come about, so it is okay to use functional language to embrace all fasteners. Thus, when someone DOES invent a new fastener, they are commercially penalized because they have the burden of overcoming overbroad patents in effect. Meanwhile, antimicrobials, which you seem to think that the world admits is a fertile ground for getting multiple new advancements, someone who invents there has no overbroad patent to fight against. The guy who showed his art that it was universally wrong is punished, the guy who just pursued discovery in an area the art thought was ripe for such a discovery is not?

                  And for what benefit? Is the fastener person any more prejudiced naming fasteners than the antimicrobial person is by naming antimicrobials? If the chemist can name his species, why is it unreasonable to force the mechanic to name his? Why create the “threat” of overbreadth on fasteners when the antimicrobial situation shows that the species disclosure works?

                  Morse‘s claim is just about as baldly pure-functional as one can get. Therefore, its application is very straightforward and un-nuanced. The claim at stake in Ariad was a mix of structure and function, and therefore the application of this same test will be less clear and more nuanced.

                  The difference in Lizardtech Claim 1 and Claim 21 (the invalid overbroad one) was not a functional language situation at all, but the *removal* of concrete structural steps. The fight in Abbvie was entirely functional. Regardless of what the situation was in Ariad (as I do not remember it well) your argument is clearly not representative of how all WD questions are being treated.

                  Regardless, you admit that What I am getting at, however, is that the evidence is the impression(or lack thereof) of those working in field X that field X is a thoroughly explored field of art.

                  I submit that is the difference right there. With the Supremes the question is not whether field X is thoroughly explored or not, the question is whether the patentee has proven he possesses the full scope. When the scope is directed to a field or to a function, he must prove possession of the field/function entirely. To do so, it is either (a) acceptable or (b) unacceptable to utilize inductive logic to do so. You, as well as the FC, clearly fall on the (a) side of the ledger – if the field feels they have a grasp on it, we can take the inductive leap to assume that the entirety of the field behaves like the manner we have seen (“We fully understand and have explored string tension, and we know string tension fires projectiles, therefore all machines that fire projectiles use string tension” which is a concrete example of the logical fallacy you want to rely upon). The Supremes clearly fall on the (b) side – the fact that something could exist is sufficient.

                  I see no reason, based on your argument, to conclude that
                  1) A functional scope in a well-trodden field cannot harm future invention (because inductive reasoning is not logical proof) and
                  2) A command to limit a claim to nominating known structures harms the current inventor (because you admit that this not only can but must be done for advancements in unexplored fields)

                  It’s risk for no benefit. There is no reason to over-reward the inventor who works in a well-developed field, nor is there a reason to punish the future inventor who shows his field there was more to it.

                  Wabash sets forward a rule that I think is simple and logical – Describing an advancement by the functional result of using it rather than the structure which performs the function is overbroad and impermissible except in the extremely rare (possibly nonexistent) circumstance where no structural disclosure is possible.

                  In other words, I am aware of only one situation where a functional novelty may be claimed – when the hisenberg uncertainty principle is in play. I know of no other situation in all of science where a structural description leading to the functional result simply does not exist. I can posit another situation where it would be proper because it is ineffective in causing a scope change – where one can prove deductively that no other solution can exist other than the one put forward in the specification. I suppose that functional language would be okay in that instance, but only because it is of the exact same scope that the structural disclosure would be.

                  But in any case we’ve come far afield – I assert that the WD test places a burden on the public to disprove (either through evidence of a competing species or through evidence that the field is “unexplored” as the term you’re using right now) an overbroad scope rather than on the patentee to prove a properly sized scope. I further assert that removing the judicial exceptions and stating a patent “shall” be granted pursuant to (among other things) the WD test creates a statutory scheme that requires the public to disprove the overbroad scope. I further assert that so long as the statutory scheme allows for that to be true, the scheme is unconstitutional, because it allows for the thing you cannot do – allow for a valid scope to issue on an overbroad claim. Our only disagreement appears to be on how bad the WD test is.

                  Let’s take a different tack, now that another thread here has reminded me: Assume a claim states: A method comprising [a series of conventional steps for drilling for oil]; wherein the location of the drilling is [novel, particular location X, where oil was discovered].

                  The claim is obviously not overbroad, nor unenabled, nor is it obvious (as the location of the oil was not previously known to the art). Under the judicial exceptions it would be ineligible subject matter.

                  1) Is the claim patentable under the revised 101 and statutory scheme above? and
                  2) If the claim is patentable, is issuing the patent an unconstitutional act?

            2. This is a small point, and irrelevant to our (much more interesting) discussion of written description, but I just want to put down a marker on a point related to constitutionality:

              Whether or not Art. I, §8, cl.8 permits Congress to issue patents on technologies that do not advance the state of the art, Art. I, §8, cl.3 gives Congress the power to issue patents on anything. In other words, Congress could issue letters patent on pepper, or playing cards, or cured ham (etc) under its Commerce Clause powers.

              In other words, discussion about whether the IPO/AIPLA revisions would violate Art. I, §8, cl.8 is purely theoretical. In practice, even if the Court were to find that this proposed revision runs afoul of the IP clause, it would still uphold the revised section as a legitimate exercise of the cl.3 Commerce clause powers.

              1. In other words, Congress could issue letters patent on pepper, or playing cards, or cured ham (etc) under its Commerce Clause powers.

                Oh I don’t think that’s true. First, I suspect you would agree that not everything that is useful is commercial or, in the aggregate, would affect interstate commerce – i.e. the commerce clause would not embrace all patentable subject matter.

                Second, while the issue obviously has never been litigated, one would think that putting the patent power under its own section and limiting it would imply that the commerce power does not extend to the patent sphere. Expressio Unius Est Exclusio Alterius. If cl. 3 gave the right to issue patents, cl. 8 would be unnecessary, and general rules of construction prevent surplusage, so cl. 3 must not extend.

                Third, the commerce clause, like all other other powers, is subject to procedural due process. There needs to be, at a minimum, a rational basis for the act. If you’re violating cl. 8, you’re not promoting the arts (the rational basis for the patent power generally), so you need a rational basis to exclude everyone but one person from doing something. Traditionally this has only been upheld in exchange for price controls, etc. which are not present here. In other words, even under the commerce clause the ability to create a monopoly is not unbounded.

                So no I’m not sure that the commerce clause can function as a stand-in for the patent clause, and even if it could by its own terms it can’t reach as far at patents do, because patents extend to noncommercial activity, and even if it did reach its subject to attacks that the patent clause generally isn’t subject to.

                1. I suspect you would agree that not everything that is useful is commercial or, in the aggregate, would affect interstate commerce – i.e. the commerce clause would not embrace all patentable subject matter.

                  I neither agree nor disagree. I am too confused to be one or the other, yet. Could you posit a very concrete example of something that (1) could be patented under the IP clause but (2) could not be patented under the Commerce clause?

                2. Greg,

                  Perhaps bit pedantic, but nothing can be patented under the commerce clause.

                  Whatever you do under the commerce clause, it will not be a patent.

                3. Could you posit a very concrete example of something that (1) could be patented under the IP clause but (2) could not be patented under the Commerce clause?

                  A method of solving crime. A method of note/book keeping whenever it is not used in a business. A physical workout regimen. A method of modifying land. A non-commercial good. Any claim without a finding that it impacts interstate commerce.

                  The commerce clause does not reach all economic activity, nor is all activity writ-large something that impacts interstate.

                4. A method of solving crime. A method of note/book keeping whenever it is not used in a business…

                  At the risk of seeming pedantic, could you be even more specific. It is not clear to me that the examples you gave (any of them, although I only quoted two) are really problematic under the commerce clause. Could you write an actual claim that you believe could be sustained under the IP clause (assuming it is properly patentable under the broadest statute that the constitution permits), but could not be sustained under the Commerce clause? I gather that this seems clear and obvious to you, but it is not to me.

                5. Whatever you do under the commerce clause, it will not be a patent.

                  Obviously this case has never been presented to a court, so neither of us really know how it would turn out if the Congress were to authorize the issuance of “letters patent” on old-in-the-art items such as cured ham or gasoline. I guess, however, that I would be really surprised if the court were to say “you can issue a set of ‘letters patent’ on cured ham, but only so long as you do not call them ‘letters patent.'” That strikes me as a very strange point at which to locate a constitutional difficulty.

                6. Could you write an actual claim that you believe could be sustained under the IP clause (assuming it is properly patentable under the broadest statute that the constitution permits), but could not be sustained under the Commerce clause

                  The scientific method (a method comprising: construct a hypothesis, generate a procedure to test the hypothesis, perform the test, collect data, analyze the data, and modify the hypothesis) would be patentable under a non-judicial exception scheme under the patent power yet be unreachable under the commerce clause. The scientific method (assuming you invented it – it had novelty rather than being conventional) as applied to a particular question would be concrete and would survive 101 scrutiny even under the current law provided the steps were redrawn as particular steps.

                  Without knowing the exact procedures involved, I know police departments write procedure manuals. Those manuals describe a method which is useful and therefore would be patentable, but non-commercial.

        2. Promote DOES NOT mean “advance” as you are attempting to read it, Random.

          Or perhaps more accurately, it does not ONLY mean “advance.”

          It also carries the advertising notion of the word (as in, an advertising promotion).

          Try to be cognizant of the terrain you want to play on.

          Thanks

        3. “Congress has broad authority to set patent policy subject to the constitutional requirement that it advance the useful arts.”

          There is no such requirement. Just as there is no requirement that you be a member of a well organized malitia to bear arms.

          Advancing the useful arts is merely the declared purpose for the grant of authority. It is not a requirement of every individual patent.

          1. Excellent point Les – kudos.

          2. Graham specifically contradicts you

            1. The dicta in Graham is not controlling statutory patent law, Random.

            2. …and if you want to talk about “specifically contradict[ing],” you only have to look at the Supreme Court cases themselves.

              …as has been noted previously.

        4. Random, the point from Graham about enlarging the monopoly is worth understanding given the following discussions with Greg.

          I think the general principle is that a patent that covers more than the inventor has a right to cover given his disclosure is void. This would include patents that read on the prior art as well as reading on the spec. This would include patents that actually claim equivalents of the invention disclosed.

          We have a fairly good understanding of the limitations imposed by the prior art. We used to have a good understanding of the latter point as well until the patent system was turned over to the CCPA in creating the Federal Circuit. As we have discussed, the Federal Circuit seem to permit extensive use of functional claiming of the novel subject matter without substantial objection; and without applying 112(f).

          With Alice, those days are over.

  25. There’s a bunch of h00haw in the AIPLA “explanation” for this travesty about “confusion and uncertainty” resulting from the Supreme Court’s decision.

    It’s really not all that confusing for most of us. It’s actually quite straightforward and the issues are fairly easy to deal with — certainly far easier than trying to unravel the excessively scrivened “logic on a computer” claims floating out there.

    What’s really going on is that certain patent attorneys don’t like the fact that logic patents are extremely difficult to defend, relatively speaking. Their work product isn’t worth much. That means the vacation home in Tahoe or Aspen might be a little harder to afford. Maybe the third vintage motorcycle will need to be sold. It’s really a s@d, s@d story!

    Put another way: there is literally no “logic on a computer” “invention” claim out there that a competent attorney can’t attack with a solid 95% chance of success if you are willing to take it all the way. You just have to make the right arguments. Those arguments were always out there, and their not that difficult to make once you blow past the excessive scrivening that’s used to inject “special meaning” into what is invariably just a vanilla “if – then” statement.

    This is a feature of the US patent system, by the way, and not a bug. There’s no “risk” involved with writing instructions for a computer. Patents are completely unnecessary — at best — to promote “progress” in the “art” of instruction-writing.

    1. Your feelings are noted.

    2. MM, recall, a lot of these folks went apoplectic about Sequenom. But the claim in that case was directed to amplifying paternal DNA in maternal plasma. The amplification process was entirely conventional.

      The trick was isolating paternal DNA from maternal DNA in maternal plasma that it could be amplified. This process was arguably new, although, I will let you be the judge of that. But such was not claimed that I know of, and perhaps was not even described, thus the claims were not even enabled.

      The object of this game is to get such claims allowed when they amount to vastly over-claiming any invention that was actually made.

      Ditto claiming in the abstract — claims so broad as to claim principles, results. Nothing in such claims is new but the new results, so the claim claims the result and not the means or methods to achieve the result. Such claims have routinely been condemned from 1795. See, e.g., of Boulton v. Bull, (2 Hen. 31, 463, involving the validity of Watts’s patent. Also, Wyeth v. Stone, 1 Story 273, 30 F. Cas. 723 – 1840

      Now the argument is made that these cases can be handled under 102/103/112. But clearly, such provisions were in place during the same time as the PTO issues hundreds of thousands, if not millions of patents, that are clearly abstract, or that claim principles of nature or products of nature and thus have proven wholly inadequate for the job.

      The idea that Funk Bros. through Alice introduces something new into the patent laws must fall on deaf ears because the exceptions have been with us since at least 1795. What is new is a judge who insisted that every validity grounds be tied to a statutory provision or he personally would not recognize it. For example, look how this jurist trashed Hotel Security (business method exception) in State Street Bank by criticizing the origin of the doctrine (that business methods were abstract) as somehow being part of some discredited theory of “invention.”

      The arrogance of this jurist in overturning well establish precedent by a stroke of his quick pen is well understood at this point in time. But it now looks like the folks behind this effort are as arrogant, as foolish and as imprudent as that legendary jurist.

      1. Ned the Ed >Nothing in such claims is new but the new results

        Now how could that be? So, new results are generated by the same machine. OK. I think new structure is there to get that new result.

        The fact is that you want to ignore the fact that information processing machine have structure and you don’t get new results without new structure anymore than you do with a mechanical machine.

        Same nonsense for 12 years. Actually since the source of all ev1l Benson.

        1. Now how could that be? So, new results are generated by the same machine.

          As I have repeatedly reminded Ned and Malcolm, the proper patent doctrine that appears to be aimed for (but never seemingly reached by either) is inherency.

          This too has been demonstrated with the simple example of three resistors.

          Configure the resistors in series => one result
          Configure the resistors in parallel => a different result

          They seem to think that once they see three resistors, they have seen it all.

          Now multiply the three resistors by a million.

          And they STILL want to think that they have seen it all.

          This too mirrors the fallacy of the Big Box of Protons, Neutrons, and Electrons.

          And yet, they persist in their wayward thinking because of “Windmills.”

          1. Nobody has any clue what you’re talking about, “anon.”

            Wake me up when applicants regularly recite the novel structural configuration of a million resistors in a patent claim. Then I’ll know that reality has caught up with your bizarre fantasy world.

            1. .,.but yet again you seek to mis state an OPTIONAL claim format as somehow being more than a mere option….

      2. Plus, abstract? That has no place in patent law. Is it enabled? You deserve the scope of enablement.

        The abstract nonsense is absurd. Inventions have to do with enablement and arguably written description. Patent law has plenty of ways to police overly broad claims.

      3. Ned, I am dumbfounded that you seem to think that there was something “fishy” about the claims in Sequenom.

        Let’s recap on Claim 1 of the case in question:
        “A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises:
        amplifying a paternally inherited nucleic acid from the serum or plasma sample; and
        detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample”.

        The discovery underlying the invention is that fetal DNA exists in maternal serum or plasma (something that, prior to the invention, had not been considered as a possibility). What was actually claimed was a (new and useful) practical application of that discovery, namely a method for detecting the fetal DNA (using conventional – and hence fully enabled – methods).

        Now, you may question whether it is “useful” to merely detect the fetal DNA. However, it appears to me that it is not hard to see how detecting such DNA might be “useful” for a number of different reasons (e.g. as a useful, albeit expensive, way of determining / confirming pregnancy). Also, there are clearly a plethora of useful methods falling under the umbrella of Claim 1 that include additional steps involving more detailed analyses of the fetal DNA.

        What is CLAIMED in Sequenom is clearly not a natural phenomenon. It is a method that absolutely requires the hand of man. Sure, the claims might encompass many of the downstream applications of the underlying discovery – but is that not the entire purpose of patent law? The patentee’s discovery and insight has opened up an entirely new field, and so, in return for their disclosure of the invention, should they not be entitled to have a say (for a limited time) about how their contribution to that field is exploited commercially?

        To be frank, SCOTUS’ theory of “pre-emption” is utter hogwash and nothing more than “judicial activism”. This is because they have lost sight of the difference between what is disclosed (e.g. an underlying discovery) and what is claimed (i.e. practical applications of that discovery). It is only if the claims are formulated so broadly as to read on to the mere discovery that there is a problem. Words such as “amplifying” and “detecting” in Sequenom make it plain that this was not a concern in that case.

        SCOTUS’ problem may well be rooted in a failure to realise that English law precedents such as Neilson v Harford are no longer relevant – primarily because, in 1841 in the UK, there was no clear distinction between what was disclosed and what was monopolised. The handy innovation that we now call “patent claims” (which, amongst other things, must relate to “useful” or “industrially applicable” subject matter) came decades later. Methinks that it is time for SCOTUS to modernise their thinking, including starting to consider “radical” concepts such as how or whether the provisions of TRIPS might be binding upon them…

        1. ALL claims pre-empt.

          That is what they do.

          On purpose.

          1. But not all claims preempt an abstract idear, naturalie phenom, or lawl of naturalness.

            1. Are your concerns for such not addressed by the suggested statutory changes?

              1. Not as far as I can see. Looks like they narrowed down the exceptions waaaaay too far. Although they do touch on 2x of the “worst offenders” they don’t address the other gazillions of concerns.

                1. Can you flesh that out a little more 6?

                  How is what they propose “waaay too far?”

                  Do you have an example of something that the proposal would not stop, that you consider still falling into your categories at 5.2.3.1.1?

                  An example would help to see if you indeed understand your own categories and how the proposed language would actually work.

                2. Well anon I would think that like 99% of the patents being invalidated currently under Alice would survive under the newly proposed lawl. Take your pick of district court invalidated 101 Alice decisions of late.

                  “An example would help to see if you indeed understand your own categories and how the proposed language would actually work.”

                  Oh I understand them just fine brosefupolous, and your desire to “test” me as a form of social control is mmmm, shall we say less than appealing to me to jump into as it is socially destructive behavior.

                3. 6,

                  I don’t want to play that “take your pick” game.

                  You made a statement, now please back it up.

                  This is clearly not any type of “Oh I understand them just fine brosefupolous, and your desire to “test” me as a form of social control is mmmm, shall we say less than appealing to me to jump into as it is socially destructive behavior.

                  It is merely calling you out for the B$ that you appear to want to spew.

                  I have NO PROBLEM with you having an opinion on anything, and voicing that opinion. But you really should be able to substantiate your hyperbolic hand-waving.

                  Otherwise, it is a fair observation that you were hyperventilating and simply are grossly mistaken.

        2. Confused, see my post at 5.2.4.1.

          As claimed, claim 1 is not even novel under traditional law because it claims an old process applied to a new material where the process itself is unaltered.

          There was a patentable and patent eligible process disclosed for isolating paternal DNA from maternal plasma. But that process was not apparently claimed — or at least, it was not at issue in the case if claimed.

          1. Ned, you and I clearly have different ideas about the meaning of “new” (or “novel”). In this respect, I fully endorse Paul Cole’s comments.

            BTW, I also agree with Paul regarding the fact that the breadth of Seqenom’s claim may well give rise to various enablement issues. However, this just illustrates the point that the courts have picked (or, more accurately, been forced to pick by SCOTUS’ bogus “logic” in Myriad ) the wrong tool to “fix” any problems that they may have perceived with Sequenom’s claim.

            1. Well, Curious, we have a process known to be useful to amplify DNA. Applying it to a particular DNA cannot be new, and must be at least per se obvious.

              Where the DNA comes from is functionally distinct from the process itself and should given no weight.

              The information derived from the process is also not patentable subject matter and should be discounted.

              There, is that better?

              1. Applying it to a particular DNA cannot be new, and must be at least per se obvious.

                Contrast, if you will, with 35 USC 100(b) (emphasis added):

                (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.

                Ned – you have become removed from the law as written by Congress in 1952 because of your Windmill Chases.

              2. Curious, summarizing a number of cases, Curtis (67ed) said this at Secton 66:

                “In all the cases which have heretofore been cited; in which the objection of a double use has prevailed, it is to be observed that the new occasion or purpose to which an old contrivance, device, or method of operation has been applied, without any alteration of the agent itself, there has been no new effect produced, or no new development of properties of matter heretofore unknown, or no application of the agent to any uses that were not strictly analogous to the former ones. It may therefore be practicable to
                state a rule which will furnish a safe general principle in the following terms: viz., that in order to escape the objection of a double use, it is necessary that the new occasion or purpose to which the use of a known thing is applied should not be merely analogous to the former occasions or purposes to which the same thing has been applied.”

        3. It is only if the claims are formulated so broadly as to read on to the mere discovery that there is a problem. Words such as “amplifying” and “detecting” in Sequenom make it plain that this was not a concern in that case.

          Actually just the opposite because “amplifying” was a well-known prior art method of discovering whether a tiny tiny tiny amount of DNA was present in a given sample. And that’s all that’s recited in the claim.

          That’s the problem with Sequenom’s claims. Also, of course, there is the obviousness issue.

          By the way, people are still working very hard on making better and more accurate prenatal diagnostic tests in the wake of Sequenom. <— think about what that means for a moment

          1. By the way, people are still working very hard on making better and more accurate prenatal diagnostic tests in the wake of Sequenom. <— think about what that means for a moment

            It means that you do not understand the contours of the debate.

            Whether or not we endow NIH and NSF grants, there will be some amount of scientific research. If Sen. K were to proposed totally defunding the NIH, and were to advocate for this proposal by saying

            People have been doing scientific research for centuries. There was scientific research before the NIH was founded, and there will still be research after the NIH is dismantled…

            I expect that you would be able to spot the fallacy in that argument.

            In the same way, whether or not we reward inventors of useful technologies with patents, there will be some amount of scientific research—on literally every manner of subject amenable to scientific research. Michael Farraday, for example, managed to get himself taken on as the valet of a wealthy nobleman with a hobbyist’s interest in chemistry, in order that Farraday might have access to the nobleman’s laboratory equipment to pursue Farraday’s own research interests. In other words, sure, somebody is going to do research to find better diagnostics, patents or no.

            The question is whether we expect more such diagnostics with or without patents?

            Also, the mere existence of diagnostic know-how is actually of fairly limited use. If we expect work-a-day physicians to self-educate themselves on the latest diagnostic know-how, there is going to be a fairly slow rate of dissemination of this know-how. What we really want is easy-to-use kits that turn this know-how into something easy in practice to employ.

            Do we expect more of commercialization to deliver these desired kits with or without patents?

            1. ALL of Malcolm’s “feelings” simply come down to his being anti-patent.

              Sure, he targets certain types of innovation (notably the types of innovation most accessible by the non-wealthy), but his ad hominem laden rants simply lack a cogent legal basis and thus do apply across the board to patents in general.

              Greg, your rephrasing here merely makes more clear what is inherent and has been present in Malcolm’s “feelings” these past 11 years.

      4. @ Ned Heller

        If you were to read the CIPA brief in Sequenom, downloadable from

        link to scotusblog.com

        you would be in a position to discuss the case through your mouth and not through the opposite end of your alimentary canal. And if you looked at the patent you could form a more informed view of enablement.

        1. Paul Cole, thanks for you polite comments. (I thought you were English.)

          I recall having read your brief before, but doing so again further confirms my views.

          First let me say that the process of isolating paternal DNA from maternal plasma was described in the examples. From all I know, that process was entirely new and was directed to patentable subject matter.

          For these reasons, I entirely support you main headline at page 21, “Deriving a paternally inherited nucleic acid from the maternal serum or plasma of a pregnant female was a transformation or reduction of that nucleic acid to a different state or thing and was neither a well-understood, routine, conventional activity previously engaged in by researchers in the relevant field nor a mere recitation of a law of nature.”

          The problem was, that process was not claimed. The claim under scrutiny was directed to amplifying paternal DNA using an utterly conventional process. The old process cannot be re-patented simply because it is applied to a particular source material. The claim is anticipated under conventional theories. (You might want to read the Government brief in Mayo for more on traditional tools under 102/103/112 for addressing claims where some non functional element is added to a old process, or a new property discovered in an existing composition.)

          So let us sum up: a patentable and patent eligible invention was disclosed and not claimed. Instead, the applicant claimed an old process acting on a new source material that changes nothing about the old process. Such is not even novel.

          The patent attorney involved (or whole sets of patent attorneys doing the same thing) are far too aggressive in their claiming techniques. Rather than claiming the new process they invented, they claimed an old process with a new source material that is not patentable under any number of patent law theories. They have only themselves to blame.

          Furthermore, the USPTO should be utterly ashamed for issuing such patents — patents on results, not on the inventions disclosed, using way overbroad, claiming inventions in the abstract.

          1. @ Ned Heller

            Apologies for the impoliteness.

            My drafting criteria for a new combination is a single new feature.

            So in terms of the process, the use of a new starting material should have sufficed. I disagree with your statement that an old process cannot be re-patented simply because it is applied to a particular source material because the particular source material has never been subjected to the remaining steps. Doubly so if the the end is a new result – replacing intrusive amniocentesis by a simple blood test.

            On the whole, I think that the claim was (just) on the eligible side of the line. The Mayo claim, I think, was not.

            But I completely agree with you about undue breadth. I am, I believe, the first proponent of the Viagra criterion: will the claim not just get through the patent office but also stand up in court? As readers will know, the Viagra claim stood up neither in the UK nor in Canada. As you say, excessive aggression in claim drafting is a recurrent problem in many of the patents that have given rise to these troublesome decisions.

            In Ariosa, amplifying by how much? By what process? Using what materials? For what purpose (e.g. to make the sequence detectable by fluorescence or radiologically)? Amplifying what portion of the DNA? Detecting for what purpose? Male/female detection? Preeclampsia detection? Downs syndrome detection? And when was the blood sample to be collected. As I recall the patent 7 weeks onwards, so starting with a blood sample from a pregnant female at 7-15 weeks gestation would add credibility to at least a significant dependent claim.

            1. So in terms of the process, the use of a new starting material should have sufficed. I disagree with your statement that an old process cannot be re-patented simply because it is applied to a particular source material because the particular source material has never been subjected to the remaining steps.

              So you have a flashlight. The flashlight illuminates things you shine it on. Every time something new is invented, you get to re-patent the flashlight shining on it?

              You have a car battery. The car battery provides electricity to the car. Every new make/model of car allows one to re-patent the battery? The end result is that that battery never falls to the public, because new cars are coming out every year and cars rarely last to be 20 years old.

              No, when you have a process and it interacts with a new thing in the same way it interacts with the old thing, the process cannot be re-patented. The process amplified DNA. Applying it to different DNA is not patentable unless the result is that it does not amplify the DNA.

              Doubly so if the the end is a new result – replacing intrusive amniocentesis by a simple blood test.

              It’s not a new result. The process does the same thing it always does – it amplifies the DNA. There is a special benefit to the system, (i.e. it certainly has a lot of utility) but that’s because of the natural quality (which the patentee didn’t invent) of the subject, not because the process interacts with this subject in a new way.

              I’m just curious – if drilling for oil is a known process, do you think you can monopolize the oil in the world by finding out where the oil is located and claiming drilling for the oil in [specific location X] despite the fact that you neither invented the oil, nor put it there, nor invented the drilling used to get it out? That is conveying the same type of information Sequenom does.

              If disseminating information via newspaper type or internet communication is known, can one discover a new fact about the world and patent the known process applied to the new fact? If so, the newspapers are really doing themselves a disservice by allowing people to compete with them when they could patent disseminating the fact.

              You can see where this is going, right? Nobody gets to re-patent a process that interacts with a “new” subject in the same way it interacts with old subjects. You can patent the process if it interacts in some unique way, but not if it does the same thing it has always been doing. Otherwise what you’re really getting a patent on is the discovery of the natural law or fact or idea.

              1. …try a different example wherein the aspect of “functionally related” is present (and please remember to take the claim as a whole).

                1. The aspect of functionally related isn’t present in Sequenom. If you drill for oil and there’s no oil you get nothing. If you perform the same drilling process in a place where you know to have oil you’ll end up with oil. It’s the same thing with the DNA amplification – if you try to amplify something that isn’t there you’ll get nothing, if you amplify something that is present it will stand out. There’s no functional relationship because the process is performed the same for the same outcomes either way. The thing that is changing is a quality of the input, not the function.

              2. ps, and what you really need to apply is the patent doctrine of inherency.

              3. If the application of an old process to a new input that is not different in kind, is the rejection under 102 or under 103?

          2. Lack of novelty does not rise to change a process (the non-novel one) into a patent ineligible one.

            If anything else is clear here Ned, it is the obfuscation into 101 of other sections of law.

            1. No doubt here, anon. The issue is whether the claims of the type in Sequenom are even patentable under 102/103. Historically, they were not. It is a wonder how they were allowed by the patent office in this case.

              1. Are you still searching for your “business methods are not patent eligible” Windmill?

    3. > It’s really not all that confusing for most of us. It’s actually quite
      > straightforward and the issues are fairly easy to deal with…

      Yeah, the argument that 101 needs to be reformed because of “uncertainty” in the law is utter nonsense. It’s about outcomes, not uncertainty, and anyone suggesting otherwise is lying. The law on 101 is actually easier to apply and more straightforward than, for example, the convoluted law of claim construction, means-plus-function, obviousness, enablement, etc.

      AIPLA’s membership is disproportionately tipped in favor of patent owners/trolls, so I am not surprised their proposals and IPOs would look the same. They no doubt coordinated in drafting their proposals but made them look slightly different to make it look like it all wasn’t coming from one source.

      1. Yeah, the argument that 101 needs to be reformed because of “uncertainty” in the law is utter nonsense.

        So you foresaw—simply by looking at the claims—that Versata and TLI would take it in the teeth but Enfish would come through o.k.? If so, you are truly a marvel.

        I know a lot of folks who claimed to know that Versata was going to win all along, but are sure that the CAFC got it wrong in Enfish. I know a lot of folks who regard Enfish as fine and intelligible, but see Versata as some sort of aberration. I know precious few, however, who can see a clear rule that explains Versata and Enfish and TLI.

        “Abstract idea” is the new “pornography.” It is impossible to define, but the CAFC just knows it when they see it. The rest of us must make recourse to the magic 8 ball.

        1. that Versata was going to win all along…

          Sorry, “that Versata was going to lose all along…”

        2. The rest of us must make recourse to the magic 8 ball.

          Another point that you and I agree on Greg.

          I wonder if David has rethought his waywardness with the “Void for Vagueness ONLY applies to criminal law matters,” as clearly, what the Supreme Court itself has scrivened is flawed even to a Constitutional level.

        3. Versata was decided early in the process of adjusting to Alice. I think it would be decided differently today, particularly after Enfish.

          There is no doubt that Versata got reamed. But recall, it was the little guy and the party on the other side was one of biggest software companies in the world. Just considering that factor, the outcome was highly predictable.

          1. Versata was a precedential decision, Ned. It is no good saying that if the CAFC had it as a fresh do-over today, they would decide it differently. Versata is the law, and Enfish is the law, simultaneously. Any new (not en banc) decisions going forward have to comply with all of Versata, TLI, and Enfish.

            That is my point, in response to Lode Runner’s bizarre assertion that the law is clear and easy to follow now. Maybe Alice was easy to follow (I do not believe that for a minute, but I can pretend for purposes of discussion), but already the effort to apply Alice has created a thicket of mutually incompatible precedents that are (supposedly) all applicable law. It took less than two years after Alice for the follow-on cases to melt down into total bedlam.

            The law is a mess. It is past time for Congress to step in. Law is supposed to provide predictable guidance ex ante. Instead we have a situation where a ouija board is more use than an experienced lawyer in figuring out whether a given set of claims are valid.

            1. My pod brother is exactly right here.

          2. …if anything Ned, the mere statement of such assurance should ring fire alarms to your sense of due process…

        4. I don’t think there’s any confusion/disagreement on Enfish’s logic, just its facts. I’m not aware of anyone who thinks that if the claims recite a specific novel series of steps and that the results of using those steps is that a computer will perform its read function more quickly that that is not eligible subject matter. I think there are a lot of people who dispute that Enfish’s claim actually falls into that group; the court essentially adopted wholesale the selfserving statements of the Specification. The complaint about Enfish is not a legal theory complaint, its a basic factfinding complaint. I can name a few obviousness cases that have terrible factfinding, that doesn’t mean Obviousness is a convoluted legal standard.

          1. Well Ned –
            Attempting to draw a line that makes improvements in read speed eligible but adding entirely new features not eligible is absurd.

            Or, do you agree that adding a series of steps to the list of things a computer does that result in the computer being able to output correct and corresponding text in a document in response to the spoken word is and eligible improvement to the machine?

            1. Les, new or improved. New OR improved.

              I am drawing a line between improved and not improved.

            2. Or, do you agree that adding a series of steps to the list of things a computer does that result in the computer being able to output correct and corresponding text in a document in response to the spoken word is and eligible improvement to the machine?

              “adding” to “the things a computer does” is not an eligible act if it is just re-trodding what already exists. I have a flashlight. The flashlight illuminates things. It illuminates things whether it is done in an old house or a new house or a newly discovered cave. The flashlight doesn’t become repatentable because you place it into a new context. A logical processing method doesn’t become repatentable just because its a processor doing it instead of a human.

              A human can take in speech and write it down. Speech to text does not become patentable again just because you have a processor doing it. However, an algorithm for the computer that has the effect of taking in audio signals and producing text is both eligible and patentable (assuming a non-obvious algorithm) if the claim claims *the algorithm* and not *the functional result of transcribing speech* because the algorithm is a computer-only act that deals with signal interpretation.

      2. LR,

        You trot out the “Tr011” b00geyman and get the “The law on 101 is actually easier to apply and more straightforward than,..” wrong in the sense that while in fact easy, it is the Court that has made a mess of it.

        . It’s about outcomes,

        Yes, but not in the way that you may be thinking – the mess is because the Court is aiming for an outcome that is quite simply not appropriate for the Court to aim for.

        Until a particular solution is enacted, the Court – by its presence alone – is a destabilizing factor for US patent law.

  26. I am glad to see the IPO and the AIPLA coming together on this one. Their respective proposals used to be fairly different, as I recall. It would have been a shame if they had made the perfect to the enemy of the good by backing two different submissions. Hopefully this united front will make it more likely that something passes basically along the proposed lines.

    1. Hopefully this united front will make it more likely that something passes basically along the proposed lines.

      In fact, it just makes it that much easier to sh00t it down.

      1. I will give it a try..,

        Can you provide any cogent legal (sans ad hominem) reasoning as to what sections would be shot down with what said reasoning?

        (I am not holding my breath, but maybe you have something actually meritous and on point to add to the dialogue)…

      2. In the world of logic and reason and that is good MM, your shooter is a straw and spit ball aiming at a Boeing Dreamliner flying at 40,000 feet.

    2. I like these. At least they’re somewhat reasonable, without arbitrary lines no one can understand.

      By the way, the highlighting is confusing. Sometimes it seems the highlighting shows differences between the two proposals; other times, the highlighting seems to mark parts that are the same.

      Any takers on how many posts MM will make denigrating these? 25? 50? 100? I’m guessing 100+ by the time all is said and done.

    3. Don’t you feel a bit unclean endorsing the work of used car salesmen?

        1. You know, anon, the kind of people who are completely honest about what they are selling you. Completely honest, that you can trust everything they say?

          Not.

          1. Sounds like you are talking about the Supreme Court there Ned.

          2. Completely honest about what they’re selling you – you mean like the people who sold us the AIA?

          3. Ned the Ed’s true feelings about Benson surface again.

  27. What does the phrase “solely in the human mind” mean?

    1. It means that a claim to a process of determining something using just your mind and nothing else is ineligible.

      Using a pencil and paper in addition to your mind? Eligible.

      Drinking a cup of coffee and thinking about something “non-obvious”? Eligible.

      And remember: people who consider themselves “experts” wrote this. Highly paid attorneys.

      They’re hacks and cl 0wns. Any attorney who backs this silly revisioned up should be ashamed of his or herself. Heck, just get down on your hand and knees and lick the concrete. Maybe you’ll find a penny there.

      1. The Accuse Others runs deep…

        Or maybe you want to pretend (again) the well understood difference as exemplified by the exceptions to the judicial doctrine of printed matter…

        You do recognize the parallel, right?

        1. the judicial doctrine of printed matter…

          LOLOLOLOLOLOLOLOLOLOLOLOL

          Notably completely absent from the AIPLA “explanation.”

          But these are very serious people! Totally not self-dealing hacks.

        2. Go ahead and answer Ordinary Squirrel’s question yourself, “anon.”

          LOL

        3. What does the phrase “sole exception to subject matter eligibility” mean?

          Maybe “anon” can explain that to everyone when he lectures us all about the so-called “exceptions to the printed matter doctrine” — which is very important and serious! And totally not some vague result-driven judicial activist stuff which is, of course, the Worst Thing Ever.

          Go ahead, “anon.” Impress everybody!

          LOL

          What a bunch of incredible hacks. They had YEARS to come up with something. This is what they came up with? Seriously?

          Wow.

          1. Why should I bother with something that you volunteered an admission as to knowing and understanding?

            Or are you going to try (again) to pretend that that did not happen?

          2. The pendulum is swinging back toward sanity. I think we can expect a lot of these rants.

      2. Thinking of a new line of work. Would the following be patent-eligible under the proposed 101?

        A method of transforming patent attorney tears into money, the method comprising:

        identifying a commercially successful software product having copyright protection;

        determining functionality of said commercially successful software product that is not protected by said copyright protection but that is protected by one or more patents;

        ignoring said one or more patents;

        creating, using a generic computer and conventional software coding techniques while drinking a latte, a competing software product that does not infringe said copyright protection and that implements any of said functionality which would not improve said generic computer when executed;

        offering said competing software for sale at a bargain price significantly lower than a sale price of said commercially successful software product;

        downloading said competing software product to millions of client devices in exchange for a combination of bit coins and coffee shop reward points; and

        profit.