The past week I have included a few design patent law updates on Patently-O. While on the topic, I should mention the new book edited by (and substantially authored by) Christopher Carani titled Design Rights: Functionality and Scope Protection ($200 from WK).
The book walks through design protection available the various global regions – US, Europe, Japan, China, India, S.America, etc – and is designed to help practitioners both understand the law and get started on strategy. From the book-blurb:
This book, while providing a solid foundation of the law regarding the protection and enforcement of design rights, focuses on the ever-present, and always contentious, issue of functionality in the context of design rights. While there is considerable harmonization on the fundamental principle that design rights regard aesthetic appearance and not underlying technical function, courts and legislatures the world over have long struggled with determining whether to permit, and how to interpret the scope of, design rights directed at products whose appearance may, partially or completely, be the result of functional consideration.
At 700 pages, the design-focused tome may also help sculpt your biceps as you read.
Today’s CAFC opinion in Amgen v. Sanofi represents another big nail pounded forcefully into the the already well-sealed coffin known as “the antibody exception” to the written description requirement.
That’s important for two reasons: (1) there are a ton of claims out there relying heavily on the exception for validity; and (2) antibody-based therapeutics is a bigger business now than ever before.
Everybody following along so far? Now pay attention to what happens next.
First, patent attorneys in this field aren’t going to run around crying about how nothing is patentable and nobody is going to make new antibodies and China is going to be the antibody leader etc.
Second, a skilled attorney is going to recognize that there is now only one major subject matter exception to the written description requirement and that is — as I have been telling everyone for years — (suprise!) software printed on a medium and computers that are claimed in functional terms (as opposed to claiming in structural terms, and distinguishing the art on that basis). And that exception rests on a much thinner foundation than the antibody exception (because antibodies, at least, are made of amino acids and there’s only about 20 of those; software instructions are just information and can be expressed in an infinite number of ways).
Read it and weep, logic patenteers:
By permitting a finding of adequate written description merely from a finding of ability to make and use, the challenged sentence of the jury instruction in this case ranwhat is perhaps the core ruling of Ariad
In other words, stop conflating enablement with written description. [and “conflation” is the worst thing ever, right, all you very serious people out there?]
We cannot say that this particular context, involving a “newly characterized antigen” and a functional genus claim to corresponding antibodies, is one in which the underlying science establishes that a finding of “make and use” (routine or conventional production) actually does equate to the required description of the claimed products.
Got that? The required description is a description that establishes at least that the claimed structure is different from the prior art structures, and also (for a functionally claimed genus) that sufficient species have been taught. Here it is again:
An adequate written description must contain enough information about the actual makeup of the claimed products —“a precise definition, such as by structure, formula, chemical name, physical properties, or other
properties, of species falling within the genus sufficient to distinguish the genus from other materials,” which may be present in “functional” terminology “when the art has established a correlation between structure and function.”
Note that there is ZERO established correlation between structure and function in the world of writing instructions that teach computers how to apply logic to information. If there’s any doubt about that, look at the following: 10100101011101010010010010110110110111101010100010101010010101010101001010100101010100001001001001111111000101001010
And tell me what it means (I know exactly what it means — surely there is an “expert” among you who can decipher that using the function/structure relationship that I’ve heard blog t r 0 ll s here insist is a real thing … so go ahead and tell me what it means).
Bottom line again: this is one half of the squeeze play. Logic patenting could be over in a month once lawyers start using their br @ ins for a change.
More good stuff:
Section 112 requires a “written description of the invention.” But this [rejected] test allows patentees to claim antibodies by describing something that is not the invention, i.e., the antigen
More accurately, the rejected test allowed patentees to claim allegedly new antibodies according to their function, i.e., their alleged ability to bind to a newly described antigen.
The test thus contradicts the statutory “quid pro quo” of the patent system <— ooooh, lookie there
where “one describes an invention, and, if the law’s other requirements are met, one obtains a patent. Indeed, we have generally eschewed judicial exceptions to the written description requirement based on the subject matter of the claims. <— hint hint hint See Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 925 (Fed. Cir. 2004) (noting that “the statute applies to all types of inventions”). <— OUCH
And Congress has not created a special written description requirement
for antibodies as it has, for example, for plant patents. <– sticking the knife in right there.
Careful readers of this blog will note that I have made every one of these arguments here already. This is going to be an awesome year.
Agree generally.
On software, they are claimed as steps in a method. So long as the steps themselves are clear and definite, and not claimed in terms of achieving a desired result, the written description of the method is sufficient.
On software, they are claimed as steps in a method.
What’s they? The machine? You’re claiming the structure of a machine as “steps in a method”?
That’s i n s @ n e.
the written description of the method is sufficient.
Legally, you’re absolutely wrong. Read this case. There’s no ambiguity there. None. There never was.
MM, the invention is the algorithm defined by the steps. Software code is not the invention, but its implementation.
Consider the circuit. One draws it on a piece of paper, describes it in a specification, and then claims it in a claim. Whether it is implemented as integrated circuit or using discrete components is substantially irrelevant. The invention is not the implementation; the invention is a circuit.
Stay away from d r u g s, kids.
The best part: the guy who wrote that irredeemable nonsense believes that we have to travel back in time before the country was founded and read the minds of 18th century Englishmen (operating under a radically different set of facts and presumptions) before we can enact reasonable laws that promote technological progress.
Yes, some people will do and say literally anything, even if it’s plainly false and easily demonstrated to be so.
the invention is the algorithm
Algorithms are not eligible subject matter. You are creating a word salad in a bowl made of vapor. And you’re not even being innovative about that.
Aren’t processes eligible subject matter? Why would they stop being eligible just because they are implemented with a computer processor? That’s the issue with your argument that I’ve never understood how you resolve.
Just because you can call something a “process” doesn’t make it eligible subject matter. Maybe you should think about it for a minute before you admit you don’t understand because it’s a pretty basic point. Either the statute blocks some processes or it doesn’t block anything.
Logic isn’t recited as eligible subject matter. It’s useful though. Somehow it got left off. Care to guess why?
“Logic isn’t recited as eligible subject matter.”
First, you are again dissembling about “logic.’
Second, your subject (purposefully dissembled) need not be explicitly “recited,” as it falls into at least one of the broad categories that 101 was intended to demark.
Third, take pretty much ANY explicit area of innovation, and you may notice that THAT explicit area is also not explicitly recited.
Your own “logic” is critically flawed.
MM,
You suggested that “[e]ither the statute blocks some processes or it doesn’t block anything.”
The plain text of the statute clearly doesn’t block any processes. What does block some processes? Well, that’s complicated. The simple answer under current jurisprudence is: a judicial exception. Is that the historically correct answer though?
The U.S. law on this point generally traces back to O’Reilly v. Morse. However, although Morse ran through similar issues, Morse was actually decided under something more closely resembling a written description rationale.
In particular, although the Morse Court did note that Morse “claims a patent for an effect produced by the use of electro-magnetism distinct, from the process or machinery necessary to produce it,” the Court went on to hold that “no patent can lawfully issue upon such a claim … [f]or he claims what he has not described in the manner required by law.” Morse, 56 US 62, 120 (1853).
The Court was concerned with pre-emption, but importantly the pre-emption concern was directly tied to an enablement/written description context. The Morse Court noted that Morse “prevents others from attempting to improve upon the manner and process which he has described in his specification,” and found that “[h]e can lawfully claim only what he has invented and described, and if he claims more, his patent is void.” Morse, 56 US at 120-21.
So in Morse the Court wasn’t saying that some processes aren’t patent eligible, the court was simply saying that Morse’s eighth claim claimed more than he had invented and described, and was thus invalid. In today’s terminology, this is a 112 issue (and one that I think you are in agreement with).
So how did we get to where we are today? It’s a really long story that I want to find the time to completely trace through, but I am not sure that the Court has ever really deviated from this original rationale: instead it seems that other actors have taken existing precedent out of context to try to shift the framework. Some of this is likely accidental, and some of this is likely driven by an agenda, but the end result is a large number of decisions that find little to no support in the original rationale for the line of precedent they are supposedly based on.
As to your second comment regarding logic not being recited as eligible subject matter, this is a red herring and you know it as well as I do. Processes are recited as eligible subject matter. The fact that logic isn’t recited as eligible subject matter has no direct bearing on the question of whether there is an exception for some processes. Quit trying to muddy the water for people who don’t have as much time to clearly think through these issues.
JCD,
It is the Court that has mashed the nose of wax after the Act of 1952 stripped from them the power of common law to set the meaning of the word “invention.”
JCD, the original case to discuss claiming principles in the abstract/results was Boulton & Watt v. Bull, 2 H. Bl. 463, 126 Eng. Rep. 651 (Kings Bench 1795). The case split 2-2. But it was discussed extensively in Le Roy v. Tatham but cited only in by the dissent. The two views of the competing sides in Bull formed the basis of the divide.
The majority said,
The dissent would have allowed the scope of the patent to extend to all methods for achieving the new effect or result, having disclosed one.
Obviously, the court in Morse followed the majority in Tatham.
The judicial doctrine of written description never included an antibody exception.
You are confused.
The judicial doctrine of written description
LOL
Remember, folks: “judicial activism” is the worst thing ever. Separation of powders! Rule of law! Or so “anon” has been screeching here for eternity. But now he wants to have his cake and eat it, too. Go figure. It’s almost like he’s a total hypocrite. But that can’t be! He’s a very serious person, after all.
For all of your squawking here, most experienced readers already know that I repeatedly attempted to have you engage – on the merits – with the judicial doctrine of printed matter and the exceptions to said doctrine. As you surely recall, I elucidated all of this with a Simple Set theory explanation, to which I have provided numerous links as well as more than one reprint.
You refuse to engage on the merits, and insist on baseless ad hominem.
Mind you, there is nothing wrong with discourse that include sharp language. But you are not there. You need to have the discourse part. All that you seem capable of is the sharp language part.
a Simple Set theory explanation
And now we are squarely back in Silly World once again. Notice the big shoes, kids! Just wait until he climbs into that tiny car with twenty of his friends.
Mindless and empty ad hominem…
Shockers.
I’ll bite. Can I get a link so I can read over your discussion re printed matter?
On the Hricik side of the blog (originally) – I will see if I can the link this weekend…
Not the link that I was directly looking for – but one that repeats some of the attacks and defenses of the patentability of software:
link to patentlyo.com
You may want to copy the items and resort into a timeframe in order to follow the “dialogues”
Note that at 8 (among other places), I provide a link and a restatement.
I see that I mistyped here (but clarified on the thread actually covering this topic).
“judicial doctrine of written description” should read “judicial doctrine of written matter”
Mea culpa for any inadvertent confusion.
In the past, I had pondered Beauregard claims from the point of view of Section 101, not in terms of written description.
It always seemed to me that a manufacture, to be claimed as a manufacture, should be defined by the physical structure of that manufacture.
Suppose that I have an optical disk with code that, when loaded into a computer running under Linux with a whole software stack on top of that. Chances are that, if I insert it into a PC running under Microsoft Windows, the PC will do diddly squat. By analogy the optical disk is a key that, when inserted into the lock that the key was designed for, may allow something useful to happen, like opening a door, or turning on a lighting system. The Beauregard claim is a claim to a key to open a door, where, I would presume in the majority of cases, the lock that matches the key, is not specified. Presumably, given any key, a lock could be designed that would open the door, or turn on the lighting system. Thus any key could be claimed as a key for which a lock could in theory be designed so that, when inserted into that lock, the key would open a particular door etc. But, unless there is adequate description of the structure of the lock, how can the key be considered to have an adequate specification if all that is specified is that, if inserted into some unspecified lock, it will open that door.
“Defined by physical structure” in the claim is an optional claim format.
Once you grasp that, you can stop trying to force an optional claim format into being NOT an option.
“Defined by physical structure” in the claim is an optional claim format.
No, it’s not, unless you are making a banal point about what “in the claim” means and pretending that it is a very important point.
Which is exactly what you’re doing because you’re a disgusting piece of shit.
Your statement here is incorrect – and clearly so.
Your feelings, reflected in that clearly incorrect statement, are noted.
It always seemed to me that a manufacture, to be claimed as a manufacture, should be defined by the physical structure of that manufacture.
That’s the law.
Except – as we both KNOW – it is not.
The same analogy was made during the course of rejecting the so-called “antibody exception.” The important thing to keep in mind is that the number of key configurations for an antibody could be in the millions (as noted by the court). The number of different configurations of zeros and ones that can be used to represent some “meaning” to an instructable computer is infinite, especially given the lack of any other meaningful structural limitations in the typical junk computer claim.
Not sure that “lock and key” works, as an analogy for a Beauregard claim.
There was an English patent case, about a hundred years ago. The claim was to (in effect) a pentode valve. It was attacked as indefinite, over-broad, ineligible (or whatever) with the argument that it lacked any means to impose on the various electrodes the various electrical potentials that would make the valve work. Those potentials are (of course) the key to unlock the new and useful valve function.
But these days, a bog standard computer is no more special than the equipment that (back then) set up the various electrical potentials on the electrodes of a pentode valve.
The claim to the new and useful pentode valve was judged good. So, by analogy, why not a claim to a CD carrying an inventive program that, when executed on a bog standard computer, solves a hard technical problem, that is to say, delivers a new and useful technical effect?
…solves a hard technical problem, that is to say, delivers a new and useful technical effect?
You mean, do what computers have always done, compute new numbers from old numbers?
Where is the new technical effect? Is the computer improved? No. Are numbers technical? No. It is what one does with the numbers that perhaps could provide a technical effect.
Ned, I had in mind a new and inventive process of something like image enhancement, facial recognition, encryption. I see these as technical fields, where progress comes no longer from better glass lens grinding but, rather, from better computer programs.
It is indeed as you say, what ought to be decisive to eligibility is:
“…what one does with the numbers….”
The EPC has it (in ist Article 52) that programs for computers are ineligible per se. Nevertheless the EPO routinely issues claims in Beauregard form, whenever the claimed invention uses technical means to solve, inventively, an objective technical problem. To me, that makes sense, in that it i) positively uses the grant of patent rights as a tool to promote progress in the useful arts and ii) denies patents for inventive contributions to arts (like math or economics or selling) that are outside the ambit of the “useful arts” of today, where patents obstruct rather than promote progress.
Alappat in the US had the use in the claim — but in the preamble.
so…. that particular preamble breathed life into the claim then, eh?
Two propositions for you Ned:
I: What Alappat contributed to the art, and disclosed enablingly in the patent application, was a combination of technical features that inventively solved an objective technical problem (the very definition of patentability, at least in Europe)
II Given that contribution to the art, Alappat’s M+F claim was not too wide.
So Rich was right to uphold it!
Now, if you disagree, Ned, would you care to tell me why.
Max, the issue was not breadth.
I have no disagreement with the holding of Alappat.
Ned,
You have never (properly) reflected on the fact that there is more than one holding in Alappat.
“You mean, do what computers have always done, compute new numbers from old numbers?”
Ned meets the Bog Box of Protons, Neutrons, and Electrons….
(as well as the House/Morse fallacy)
Ned,
I think that one of the best examples right now is the tech sector’s unicorn: self-driving vehicles. The hardware is sufficient. The software is really, really, really difficult to write. It would seem strange if a new mousetrap is patent eligible while processes for automatically driving a vehicle aren’t.
To me, this example also helps to get at the real issue that many people seem to have with many software patents. Software for a self-driving vehicle certainly seems to be non-obvious. All of the secondary considerations point to this result. On the flip side, many software patents are focused on processes that seem like an obvious application of software to a particular use case.
101 shouldn’t be used as a shortcut to obviate the necessity of going through a 103 analysis, because the precedent and framework that is used to dismiss obvious processes can also be applied to non-obvious processes. In order to countervail this, an inquiry regarding conventionality has now been baked into 101 analysis, but this just serves to further emphasize the silliness of the current path.
103 can be used to dispose of much of the issue. 112 can similarly be used to dispose of much of the issue. There may be edge cases where a judicial exception is warranted (I’m not ready to get into Morse right now), but these should be edge cases, not an exception that swallows the rule.
The other really obvious example is AI, but that one has its own issues that I also don’t want to get into.
Just to be sure, JCD, I have no objections to claims to an improved car where the novel subject matter is in software.
Ned,
Thanks for the clarification. That was my understanding, but it never hurts to be clear. Would that everyone on here took the same care.
I was mostly offering the example because I’ve found it to be a useful example in discussing the issue because it’s readily appreciable to a layperson but very technically difficult to achieve. It’s also an interesting example from a 103 standpoint because the functional ends may seem obvious to a lay person, but the technical solution is actually very difficult.
Have a great weekend!
But beware any conversations on such that include “Point of Novelty” (because Ned’s “clarification” falls apart).
Comments are closed.