Alice and TRIPS Compliance

I asked Prof. Daniel H. Brean for this guest post that stems from his new paper on international patent law issues titled Business Methods, Technology, and Discrimination.  Brean is an assistant professor at Akron School of Law and Of Counsel at The Webb Law Firm. – DC

by Daniel H. Brean

The United States is obligated under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) treaty to make patent rights available and enjoyable without discrimination as to the “field of technology” of the invention.[i]  No specific areas of technology may be singled out for unjustified special treatment.

In a new paper (Business Methods, Technology, and Discrimination, 2018 Mich. St. L. Rev. __ (forthcoming), available at https://ssrn.com/abstract=3071000), I argue that the United States is doing just that with respect to computer-implemented business methods.  Doctrinally, such methods are subject to an especially high bar for patent eligibility.  Statutorily, patents on such methods may be challenged in invalidity proceedings that are exclusively available for so-called “covered business method patents.”  The law seems to reflect a skepticism that computer-implemented business methods should be broadly eligible for patenting, as well as a distaste for the aggressive enforcement of many such patents by patent assertion entities.  While these may be real problems and serious policy challenges, discrimination by technological field is not a TRIPS-compliant solution.

Discrimination can be de jure—where the law facially discriminates—or de facto.   De facto discrimination can be shown by evidence of the discriminatory effects of the law, as well as by showing that a discriminatory purpose can be inferred from the objective characteristics of the law.

From a doctrinal standpoint, Alice v. CLS Bank[ii] appears to have caused at least de facto discrimination against what the Court considered “mere” computerization of business methods. Though rooted in Mayo v. Prometheus’s[iii] field-neutral analysis, Alice fashioned a new rule against “generic computer implementation” of business practices.  The result is that the vast majority of challenged patents in the computer-implemented business method space have been rendered ineligible in district courts, in the Federal Circuit, and in the PTAB.  For applications still in prosecution, Alice rejections are disproportionately affecting the technology center that includes business method art units, with most rejections being applied in the e-commerce art units.

The upshot of the post-Alice landscape seems to be that improving computer technology per se is patent eligible, as is using computers to solve industrial or computer-centric problems, but using computer technology to facilitate a business process is not. When Alice purports to exclude generic computerization from patenting, it essentially draws a line between using technology and creating technology.  Alice calls the former non-technology when what it really means is non-inventive, which is beside the point. Many have criticized Alice for how the framework’s “search for an inventive concept” improperly blurs the line between § 101 and §§ 102-103, flying in the face of Diamond v. Diehr’s proclamation that the novelty of the components used or steps performed in a method should have “no relevance” to a § 101 determination.[iv]  TRIPS art. 27.1 itself expressly distinguishes the idea of being within a “field of technology” from the notion that patentable inventions must also be “new” and “involve an inventive step.” For Alice to exclude almost all computerized business methods from the patent system for these reasons, but on § 101 grounds, lacks coherence and appears at least de facto discriminatory.

By contrast, the Covered Business Method Review (“CBM”) program presents a fairly clear case of de jure discrimination. Alongside the creation of two other technology-neutral proceedings (inter partes review and post-grant reveiew), Congress created the CBM program, limited it to “covered business method patents,” and allowed for challenges on § 101 grounds to be made.[v]  Although Congress purported to exclude “technological inventions” from the program, the Federal Circuit and the USPTO have closely tied the reach of the CBM program to Alice, such that CBM patents are now largely coextensive with the computerized business methods that the courts, following Alice, deem ineligible.[vi]  As expected, patent claims that reach a final judgment in the CBM program are being invalidated at very high rates, especially on § 101 grounds. On top of that, the CBM program even includes two provisions that uniquely disadvantage the owners of CBM patents: (1) a narrow estoppel provision that gives petitioners broader abilities to challenge CBM patents in both the PTAB and district court;[vii] and (2) a rare right for interlocutory appeal of any decision denying a motion to stay parallel litigation—with even rarer de novo appellate review.[viii]

To be clear, not all differential treatment rises to the level of TRIPS-violating discrimination.  In the pharmaceutical context, for example, the inventions are subject to regulations and market restrictions that can justify some special accommodations.  A member country’s patent laws may properly extend the term of a drug patent to offset a lengthy regulatory review period, or may properly allow generic drug makers to begin seeking their own regulatory approval during the patent term.[ix]  But the United States’ handling of computer-implemented business methods seems to go beyond the kind of justifiable differential treatment that TRIPS tolerates. For computer-implemented business methods, the legal differences in treatment discussed above correspond to nothing unique about the subject matter, but arguably reflect broader problems in the United States patent system concerning patent examination quality and litigation abuse.

None of this discrimination is in violation of the treaty, of course, unless computer-implemented business methods are a “field of technology” under art. 27.1.  Congress and the USPTO have ostensibly assumed not, but there are several good reasons to interpret TRIPS as deeming such methods technological.  First, most definitions of “technology” encompass not only creation but also use of technological tools—a view that is consistent with Diehr’s proscription against novelty forming a part of the § 101 analysis.  Second, although business methods per se were not clearly patent eligible in the U.S. until 1998[x] (three years after TRIPS went into effect), many computerized processes had long been eligible for U.S. patent protection when TRIPS was negotiated.  Third, the U.S. has on ten separate occasions questioned, for TRIPS compliance purposes, whether the laws of other countries provided adequate protection for software and business methods.[xi]  Fourth, though the U.S. has been an outlier among TRIPS members in patenting non-computerized business methods, it is not alone.[xii]  Fifth, patenting computer-implemented business methods not only accords with the broad “useful arts” scope of patent systems historically,[xiii] but also reflects modern trends applying more scientific and technological rigor to business and financial practices.[xiv]

The fact that at least some computer-implemented business methods are patent eligible in the U.S. itself suggests that the field is technological, even if many methods in the field ultimately fall short on inventive merit.  Eligibility at the threshold is a long way from patentability, and what Alice would view as mere computerization of a well-known business process will rarely be inventive enough to be patented as a novel, nonobvious process.  But arranging and employing computers and software for practical business purposes is nonetheless a technological endeavor that brings such methods under TRIPS’ protections.

As the United States considers more changes to the availability and enjoyment of patent rights, it should end this discrimination in favor of technology-neutral practices or reforms.[xv] Otherwise, it sets a precedent of singling out disfavored technologies for disadvantageous treatment on a country-by-country basis, which could undermine the international patent law harmony that TRIPS is intended to facilitate.

= = = = =

[i] TRIPS art. 27.1 (“[P]atents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. … [P]atents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.”).

[ii] Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

[iii] Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).

[iv] Diamond v. Diehr, 450 U.S. 175, 187-88 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. … It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”); cf. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”).

[v] AIA § 18(d)(1) (defining CBM patent generally as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service”).

[vi] See Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1327 (Fed. Cir. 2015) (“[E]ven if the invention required the use of a computer, the claim did not constitute a technological invention. As we are now instructed, the presence of a general purpose computer to facilitate operations through uninventive steps does not change the fundamental character of an invention.”) (citing Alice); Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012) (explaining that inventions are not shown to be “technological” by: (1) the “recitation of known technologies”; (2) “reciting the use of known prior art technology”; or (3) “combining prior art structures to achieve the normal, expected, or predictable result of that combination.”).

[vii] Compare AIA § 18(a)(1)(D) (applying estoppel only to arguments actually “raised” by the petitioner) with 35 U.S.C. §§ 315(e)(2), 325(e)(2) (applying estoppel to all arguments that the petitioner “raised or reasonably could have raised”).

[viii] AIA § 18(b)(2).

[ix] See Report of WTO Dispute Settlement Panel, Canada-Patent Protection of Pharmaceutical Products, WT/DS114/R (March 17, 2000), at 170-71 (“Article 27 does not prohibit bona fide exceptions to deal with problems that may exist only in certain product areas. … [Rather, Article 27 is concerned with] the unjustified imposition of differentially disadvantageous treatment.”); see also 35 U.S.C. § 156(c) (extending patent term to offset regulatory review); 35 U.S.C. § 271(e) (immunizing certain regulatory-approval activities from infringement liability).

[x] State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998) (holding patent eligible a business process involving share price calculations because it “produces a useful, concrete and tangible result”).

[xi] Stefania Fusco, TRIPS Non-Discrimination Principle: Are Alice and Bilski Really the End of NPEs?, 24 Tex. Intell. Prop. L.J. 131, 147, 150 (2016) (concluding that “the U.S. has consistently interpreted of Article 27(1) TRIPS as requiring WTO countries to provide protection to both software and business methods”).

[xii] See John R. Allison & Emerson H. Tiller, The Business Method Patent Myth, 18 Berkeley Tech. L.J. 987, 1022 (2003) (“[M]ost other countries do not recognize patents on business methods.”); Rajnish Kumar Rai & Srinath Jagannathan, Do Business Method Patents Encourage Innovation?, 2012 B.C. Intell. Prop. & Tech. F. 1, 5-6 (2012) (“Japan, Australia, Singapore and possibly Korea generally appear to follow the U.S., whereas the European Union (‘EU’), the United Kingdom (‘UK’), Canada and India are more conservative on the issue and do not favor BMPs.”).

[xiii] See generally Sean M. O’Connor, Finding the Lost “Art” of the Patent System, 2015 U. Ill. L. Rev. 1397, 1476 (2015) (explaining that “useful arts,” in its proper historical context, would include “any and all arts that involve the use of natural materials or forces for practical ends” that can be objectively measured, as opposed to measured only by taste or sentiment).

[xiv] John F. Duffy, Why Business Method Patents?, 63 Stan. L. Rev. 1247, 1263 (2011) (explaining that “[a]s early as the mid-twentieth century, engineers and physical scientists were already migrating into the academic realms of business, economics, and management”).

[xv] For example, avoiding the § 101 question and resolving such issues on other patentability grounds. See Dennis Crouch & Robert Merges, Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making, 25 Berk. Tech. L. J. 1673, 1686-87 (2010) (describing studies showing that 84-94% of claims rejected on Section 101 grounds in the USPTO are also rejected on other grounds, which “show[s] an exceptionally high rate of doctrinal overlap and lends credence to the idea that, by initially avoiding subject-matter-eligibility questions, many of those potential issues will be avoided”).

105 thoughts on “Alice and TRIPS Compliance

  1. It’s the process category that is the subject of discrimination. When examiners view a claim for a machine, article of manufacture, or chemical composition they do not apply the Alice two step test. But when a process claim is the subject matter they immediately start with Alice. Why should ‘process’ be treated differently than the other 3 categories?

      1. Still trying to peddle that non-law based mental master bation?

        1. Pedal indeed. many downloads. More to come, Winter season is upon us; I’ll be busy at the computer.

          1. I am so excited

            Maybe less time at your computer and more time understanding the basics…

  2. This article is nothing new; people have been arguing about compliance with TRIPS Article 27.1 since the days of State Street Bank.

    The issue is Article 27.1 of TRIPs which states that, subject to exceptions inapplicable here, “patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.” The “new” and “inventive step” correspond roughly to U.S. concepts of novelty and non-obviousness, respectively. The phrase “industrial application” encompasses “usefulness,” the subject matter eligibility analysis we associate with Section 101.

    The big problems with the TRIPs argument is that a “computer-implemented business method” is not a “field of technology.” Sorry, Professor, it isn’t, and you have not made a good case that it is.

    Computer-implemented compression, encryption, data storage, graphics, compilers, and even user interfaces (human/computer interaction), among others, are more akin to “fields of technology.” People specialize and study in those fields; they write papers and textbooks about them; they teach courses about them in Universities; they hold conferences and symposia to talk about developments on those areas. These are “fields of technology” in a clear sense of the word, and the case law on Section 101 does not “discriminate” against any of them, or any other area of technology. An properly written claim in any one of these fields can easily clear the hurdle of patentability under Alice.

    But “business methods” are not like any of those legitimate technology fields. The term “business method” that you use, in fact, has meaning only to lawyers; it has no value of classification in any technological field whatsoever. It is simply a rough a classification that cuts across countless fields and businesses. No one would argue that computer-based intermediated settlements, in Alice, is actually a recognized “field of technology.” The structure and language of TRIPs indicates that “field of technology” is something more akin to a recognized technological discipline or sub-specialty.

    Business methods, far from being a “field of technology,” are actually used to describe inventions that are not inherently technological, such as something that can performed in the human mind, or an abstract idea of any kind implemented using generic computer equipment.

    1. You could not be more wrong LodeRunner – from top to bottom.

      1. The “new” and “inventive step” correspond roughly to U.S. concepts of novelty and non-obviousness,…

        In the EPO, the inventive step requires the solution of a technological problem, effectively bringing in 101. Thus, considering the differences in US law, the phrase is not limited to new and non obvious, but should read, new or improved (one of the four categories) that is also non obvious.

        1. In the EPO, the inventive step requires the solution of a technological problem, effectively bringing in 101.

          Also effectively bringing the prior art into the 101 analysis because for the typical claim it’s impossible to determine what the “inventive step” is without knowing what the prior art is. maxdrei will be happy to confirm this.

          1. MaxDrei would also (unhappily, it appears) remind you that eligibility is NOT TIME DEPENDENT – and thus there is NO need for any view of “prior art” when looking at eligibility.

            Malcolm, your feelings are hopelessly conflated on these concepts.

          2. Malcolm, sometimes I wonder about your grasp of EPO law. The EPO does not bring the prior art into its analysis of eligibility (Art 52). To be eligible, the subject matter of a claim must find itself in a field of technology. To be inventive (Art 56) the contribution must be in a field of technology.

            In the USA (and England) it is assessed already under eligibility whether the contribution is in a field of technology.

            They started with that approach at the EPO. But then they found how hard it is, under the eligibility examination, how difficult it is to put one’s finger on what is the contribution. Under the EPO approach to obviousness, it is relatively easy to include the “field of technology” check when testing for non-obviousness.

          3. Don’t understand you Malcolm. But see my 91112 below.

    2. Computer-implemented compression, encryption, data storage, graphics, compilers, and even user interfaces (human/computer interaction), among others, are more akin to “fields of technology.” People specialize and study in those fields; they write papers and textbooks about them; they teach courses about them in Universities; they hold conferences and symposia to talk about developments on those areas. These are “fields of technology” in a clear sense of the word, and the case law on Section 101 does not “discriminate” against any of them, or any other area of technology. An properly written claim in any one of these fields can easily clear the hurdle of patentability under Alice.

      Folks, this is what “drinking the kool-aid” looks like. If you’re attorney is telling you things like this, he/she should be fired.

      1. But not if he/she is a European patent attorney, I would add.

      2. You do realize that without encryption many of the things you do, such as ordering over the Internet, wouldn’t be possible or would be a lot more dangerous, don’t you? Or maybe you don’t.

      3. If your attorney is like MM, and cannot overcome a 101 rejection in a well recognized field of technology, that person should be fired.

        Amazing how comments can reveal lack of competence.

    3. What’s important here is that the process category is not being treated fairly. When Alice is used for processes but not machines, compositions, or articles of manufacture it is clearly discrimination.

      1. Alice DID take out manufacture claims.

        Its progeny DOES take out manufacture claims.

        The concern here is misplaced.

  3. TRIPS wasn’t intended to usurp a nation’s determination of patent eligibility. It is not at all clear that the language of TRIPS makes it clear that computer assistance of old business methods would be patent eligible.

    1. J, how could it be when neither Alappat nor State Street Bank had been decided, and Benson remained controlling law?

      1. I’m not sure “whether it could” is a relevant question, Ned. Will you elaborate on your point?

        1. J, a nation cannot discriminate against technology that everyone agreed was technology at the time of signing of TRIPS. But the problem is, at the time of signing of TRIPS, no one considered business methods to be patentable subject matter but alone technology.

          To be clear, at the time of signing, the article even admits that business methods were not generally accepted to be patentable subject matter in United States. See note X. In point of fact, Hotel Security was considered to be controlling law and it provided that business methods were ineligible, and that any claim that included a business method must also include underlying technology, the means, that itself was inventive. That is Alice today. Thus the state of law at the time of signing of TRIPS, just as it is today, was that business methods were not patentable “technology” even when tied to computer implementation in the United States. Furthermore, to the extent that dicta in Alappat suggested that program computers were categorically patentable subject matter, that idea, which was always radically inconsistent with Benson, was squelched by the Supreme Court in Alice.

          What is baffling to me is that the author seems to assume that business methods are categorically patentable subject matter simply because they are not categorically excluded. Nothing could be further from the truth. While they are not categorically excluded, the test used to exclude abstract ideas is a broader and a more encompassing version of Hotel Security. Clearly, and unmistakably, business methods are not categorically patentable subject matter.

  4. Assume everything in the article is true; the USPTO’s rejection of my application is intentionally discriminatory and therefore the US is not TRIPS-compliant. As an individual applicant, don’t I have zero remedy? Consequently, why does this matter? Does the author really think some other nation is going to file a WTO complaint against the US on the basis that that nation’s applicants are subject to technology discrimination?

  5. “While these may be real problems and serious policy challenges, discrimination by technological field is not a TRIPS-compliant solution.”

    Sure it is. Even the EPO scriminate’s agin non-technical solutions or whatever.

    1. I think that you confused yourself here 6.

      The point is not that “discrimination” may not happen under a TRIPS-compliant solution.

      “Discrimination” may “rightfully” still occur (and thus the lead in of “Even the EPO scriminate’s” seems on the mark.

      What is off the mark is the TYPE of “discrimination.”

      To put it simply: the thrust of the article is that certain types of “discrimination” are simply not TRIPS-compliant, and the TYPE being identified as being applied here in the US is one of those types. Thus, your sentence beginning with Even the EPO scriminate’s” is NOT on the mark for the thrust of THIS article.

    2. The way I understood the professor is as follows:

      1) Under TRIPS, one can (indeed must) discriminate between contributions to the art that are in a “field of technology” and those contributions that are outside of technology.

      2) But, within the Technology Zone, it is not right to discriminate between one field of technology and another.

      Is that, 6, how you see it too?

    3. dis·crim·i·na·tion
      dəˌskriməˈnāSH(ə)n/

      noun
      1.
      the unjust or prejudicial treatment of different categories of people or things, especially on the grounds of race, age, or sex.

      synonyms: prejudice, bias, bigotry, intolerance, narrow-mindedness, unfairness, inequity, favoritism, one-sidedness, partisanship; More
      2.
      recognition and understanding of the difference between one thing and another.

      Quite a gulf between 1. and 2, most especially in a legal setting.

      1. You gotta remember, Martin, that “anon” thinks he’s being discriminated against when I call him a worthless pile of shirt and the comment isn’t deleted as fast as “anon” likes.

        He’s a sniveling low-functioning worm who prides himself on defending the rich and powerful at every turn because (wait for it) “classism is worse.” Meanwhile

        One transition official at the time said Kushner called Flynn to tell him he needed to get every foreign minister or ambassador from a country on the U.N. Security Council to delay or vote against the resolution. So Kushner was pushing his own foreign policy, in opposition to the government in office, with Flynn as his mouthpiece.

        But Hillary gave a speech to Goldman Sachs so they’re all the same. <– according to "anon" and his glibertarian cohorts

        1. Your Accuse Others meme in action ( and rather missing the actual points of this thread)

          I know – shockers.

        2. MM, gotta love the constitutional crisis brewing where the incoming PE is prosecuted for telling foreign governments what his policy is going to be.

          1. You’re not going to love anything about what’s going to happen next, Ned.

          2. If Emperor Cheetobreath isn’t impeached, he will be assassinated and we’ll all have a big party. You can buy the champagne, Ned, and you can also s— my d—.

            And if he’s not impeached and he’s not assassinated, then there’s no really no point to having a country anymore. At least not this one.

            1. “If Emperor Cheetobreath isn’t impeached, he will be assassinated and we’ll all have a big party. You can buy the champagne, Ned, and you can also s— my d—.

              And if he’s not impeached and he’s not assassinated, then there’s no really no point to having a country anymore. At least not this one.”

              Lulz. Neither of those is going to happen, so why don’t you just leave the country and let the white cis hetero christian patriarchs et al. have it? You have your own explicit ethnostate to retreat to, so why not just go ahead and head over there? They will let you in. You worried about Iran and Hezbollah or something? Or are you worried that your glorious ethnostate is even more repressive, and certainly oppressive to minorities in the ethnostate, than the US is?

              In either event, you definitely need to leave the bar, or be disbarred. You’re not even the least bit loyal to the gubmit.

              1. You have your own explicit ethnostate to retreat to

                ?

                Which one would that be?

                1. That can’t be mentioned anon, such mentioning is RAYCYST. It’s a secrit from whitey. But while there are many states that protect their ethnic makeup by various means (mexico, japan etc. etc.) there’s only one explicit ethnostate in the world. Hezbollah and Iran ha te it. I’m sure you can figure it out with the help of your interbuts.

  6. Patent law in the “EU” is mentioned at Footnote xii of the Paper. I must say though, I’m a bit surprised that the author seems not to have grasped the logic of the long-established jurisprudence of the EPO. I’m also very surprised that any professor of patent law could suppose that you can get into the “useful arts” zone, the zone that the Constitution sanctions as patentable, simply by including in your claim a requirement that at least one of its method steps be performed on a computer (as opposed, I suppose, to pencil and paper).

    Before anybody jumps in to tell me that “on a computer” suffices for eligibility at the EPO, let me add that at the EPO, the eligibility test is not done relative to the state of the art. Eligibility is a time-invariant absolute test “technical character Y/N”. Pencil and paper, if recited in the claim, serves just as well as a computer to establish “technical character. Novelty and non-obviousness are examined, by contrast, relative to the prior art on the relevant date. Patentability (non-obviousness) at the EPO is contingent on the claim using technical means to solve a technical problem. That the claimed method is performed on a computer or using pencil and paper is nothing to do with solving a problem in technology. The stumbling block for most US-originating business method claims is that the “problem” on which patentability is predicated is not a problem in technology.

    Did the Constitution sanction patenting any clever new enabled business method, but only so long as it is, as claimed, performed on a computer (because the recital of a computer in the claim puts it into the ambit of the useful arts)? I suggest not.

    1. Please Pardon Potential (re)Post:

      Your comment is muddled.

      You start out with EU this and EPO that, back track (quickly) to a defensive “eligibility is time-invariant (as it is here, – as those who understand the law will tell you) side step, then back to a “computer establishes technical character” then turn around with some odd criticism of “computer” or “problem is not in technology” – ALL the while missing the point – so very often put to you that you surely must know it by know that Useful Arts is NOT synonymous with “Technical Arts.”

      You want to indicate “a stumbling block” for us here in our sovereign when you simply show no understanding of what our sovereign is about.

      Heck, you seem confused as to what passes in your own backyard.

    2. MD at the EPO, the eligibility test is not done relative to the state of the art

      Complete b.s. The inventive step needs to be “technical” in character. The only way to determine the inventive step is look at the state of the art.

      We’ve been through this before. The difference between the US and EP approach, in general, is purely semantic. The only distinction between the two is the different flavors of bullcr@p the jurisdictions pull out of their b-h0les to justify whatever they want to justify as patent-protectable subject matter.

      Please don’t encourage the i di 0cy, MD. You know you have the tendency. We’ve been through this before, dozens of times. Stop it.

      1. MM I realise I’m boring you, that you understand the difference in the way the EPO and the USPTO filter out subject matter that isn’t fit to patent, and that the USPTO uses the eligibility filter to block a whole raft of subject matter that the EPO doesn’t get to filter out till it gets further down the line, to a consideration of the obviousness issue.

        But others seem not to be able to grasp the distinction and that annoys me. I want them to understand the distinction.

        The distinction is not trivial and not bs. The patents judges in England have mounted a sustained attack on what they dub the “intellectually dishonest” EPO approach. Instead, when it concerns eligibility, they decide on the basis of the perceived “contribution” that the claimed subject matter makes to the art. I think your position is that of the UK judges. Even in these columns, there is fierce argument between the two approaches, mirroring that on the other side of the Atlantic, between London and Munich.

        As you surely know, in the past the EPO too was long-time wedded to the “contribution” approach which you espouse, but then found a better way, its current approach. The EPO Boards of Appeal handle about a thousand patentability cases per year, the English judges maybe 20 or so. The EPO judges listen to advocates from all over the world, the English judges only to barristers from Oxford and Cambridge.

        But above, you also write: “The inventive step needs to be “technical” in character.” When I read that, I blinked. I agree with it, of course, for that is the EPO approach.

        Could it be, that this is now how it is, in the USA too? If so, what would you say, please, is the case that makes this clear?

        1. There is no “Technical Arts” case.

          Here in the US, Useful Arts is not a synonym for Technical Arts.

          Leastwise, how our Congress – the only duly authorized branch of our Sovereign able to write patent law in the first instance has decreed.

          Separately, in your hurry to agree with Malcolm, you “blinked” at the first part of a two sentence statement (“The inventive step needs to be “technical” in character. The only way to determine the inventive step is look at the state of the art.“), but you left out any comment on the second part of that statement – and THAT part is the part seemingly at odds with your views.

          So I am curious, MaxDrei, do you agree with Malcolm that “the only way to determine inventive step is to look at the state of the art”…?

          Are you able to grasp the distinction that THAT second part of the statement imposes?

        2. Please Pardon Potential (re)Post:

          Your comment is awaiting moderation.

          December 1, 2017 at 8:36 am

          There is no “Technical Arts” case.

          Here in the US, Useful Arts is not a synonym for Technical Arts.

          Leastwise, how our Congress – the only duly authorized branch of our Sovereign able to write patent law in the first instance has decreed.

          Separately, in your hurry to agree with Malcolm, you “blinked” at the first part of a two sentence statement (“The inventive step needs to be “technical” in character. The only way to determine the inventive step is look at the state of the art.“), but you left out any comment on the second part of that statement – and THAT part is the part seemingly at odds with your views.

          So I am curious, MaxDrei, do you agree with Malcolm that “the only way to determine inventive step is to look at the state of the art”…?

          Are you able to grasp the distinction that THAT second part of the statement imposes?

          1. Alice tells us to examine for an inventive concept, even while assessing eligibility. By contrast, the EPO approach is to defer examination for an inventive concept until commencement of the examination under the obviousness (not the eligibility) provision of the EPC. As I understand MM, he (like the patent judges in England) disapproves of any such deferral

            1. Alice this and EPO that – neither of which answers my questions.

              Do you agree with Malcolm on that second part of his statement?

              And why does it seem that you want to dodge that question?

              1. MM wrote:

                “The only way to determine the inventive step is look at the state of the art.”

                I am asked if I agree with that statement. I would amend it to read that the only way to determine the inventive step is relative to the closest prior art.

                When eligibility in the USA or England is assessed, there are references to the inventive concept. But how is that assessed? By reference to the PHOSITA’s common general knowledge (textbooks and the like) I suppose.

                When MM refers to the state of the art, what does he mean? Common general knowledge? Or the entirety of what has been made available to members of the public? Or even more than that? I don’t know. Hence my inability to agree or disagree with MM’s statement.

                1. Malcolm clearly pushes the eligibility question as being dependent on “state of the art.”

                  This clearly disagrees with your statements that eligibility is a timeless consideration.

                  I find it amusing how much dancing is going on by you in order to avoid presenting a sense of conflict on the matter.

            2. Maxdrei, I think you read too much into “inventive step”/”conventional element” as used in the Supreme Court. If you look at Diehr (which is still cited as good law), the invention did involve specific engineering design choices, such as a thermocouple (instead of any thermometer), the measurement of the temperature at the surface of the mold (instead of anywhere in the mold), the iterative use of the Arrhenius equation (instead of any use), and the automatic opening of the mold. I doubt that none of these elements was in the prior art at the time. But all these elements distinguish Diehr from a generic application of the Ahrrenius equation. This is in contrast with feeble attempts to make a claim appear to be linked to a machine by saying “compute … using a computer,” “measure temperature … using a thermometer,” etc… So, “inventive concept” is not meant to imply an obviousness analysis, but it means design choices that are sufficiently meaningful. And, “conventional element” is not meant to imply a novelty analysis, but it means a generic solution that is insuffiently applied to the problem.

              1. Pika, almost. The “inventive” aspects of the claim must also be directed to a new or improved “manufacture” (the four classes.) The inventive concept must be related on an otherwise patentable application.

                Think Hotel Security plus Morse. You applied only Morse.

                1. I do not find that Hotel Security Checking Co v Lorraine Co, 160 F 467 (2d Cir 1908) is particularly illuminating.

                  The patent in question claims a sheet with a list of names, and a collection of slips each with one of the names in the list.

                  “1. The herein-described improved means for securing hotel or restaurant proprietors or others from losses by the peculations of waiters, cashiers or other employes, which consists of a sheet provided with separate spaces, having suitable headings, substantially as described, said headings being designatory of the several waiters to whom the several spaces on the sheet are individually appropriated, in conjunction with separate slips, each so marked as to indicate the waiter using it, whereby the selling price of all the articles sold may be entered in duplicate, once upon the slip of the waiter making the sale, and once upon his allotted space upon the main sheet, substantially as and for the purpose specified.”

                  To me, the holding is: “[i]t cannot be maintained that the physical means described by Hicks, — the sheet and the slips, — apart from the manner of their use, present any new and useful feature.” It is mentioned that “the manner of their use” is mere abstraction, but since this is not what was claimed in the patent, it is just dicta.

                2. Pika, the case addresses claims that mix patentable and unpatentable subject matter together in a claim: the novelty (invention) must be in the means (read manufacture). While you quote claim 1, whose means is indeed old, you failed to report claim 2 that reads,

                  “2. The herein-described improvement in the art of securing hotel or restaurant proprietors and others from losses by the peculations of walters, cashiers or other employes, which consists in providing separate slips for the waiters, each so marked as to indicate the waiter using it, and in entering upon the rdip belonging to each waiter the amount of each sale that he makes, and also in providing a main sheet having separate spaces for the different waiters and suitably marked to correspond with the numbers of the waiters and of their slips, and in entering upon said main sheet all the amounts marked upon the waiters’ slips so that there may thus be a duplication of the entries, substantially in the manner and for the purpose specified.”

                  Here the court observed, “A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of the term, an art.”

                  You will recognize that Mayo and Alice both adopt the holding of Hotel Security (without saying that that is what they are doing) and generalize its structure to search for an inventive application in the “means.”

                3. Hotel Security was NEVER controlling law.

                  The Act of 1952 set out “process” – and purposefully states that it means more than you try to make it mean, Ned.

                  FURTHER – both Prof. Crouch and David Stein (in detail) have told you point blank that your attempts to elevate Hotel Security is simply not in accord with law.

      2. MM, there are some differences between the US and the EP. When the claims are directed to a technical problem that is solved by using generic technology involving a new algorithm or a new physical phenomenon, my experience is that the EPO is much easier to deal with.

  7. Using a programmable computer to carry out logic isn’t “technology.”

    It’s logic.

    Got anything else? No? Thanks for playing.

    1. Math
      Applied math
      MathS

      You err (repeatedly) in not understanding. The differences in those terms.

      You ask for “something more” and leap to the conclusion that there is not something more.

      Your error.

      It’s logic

      No. Also your error. Why is it that you persist with something so easily distinguished? All that I have to do is remind you that one may not obtain copyright on logic, and yet copyright is obtainable on aspects of software – just like patents are obtainable on other aspects of software.

      Your dissembling is

      1. Why is it that you persist with something so easily distinguished

        LOL Keep clicking the heels of those ruby slippers, “anon.” You look fabulous!

  8. Why is not the longstanding EPO technology requirement subject to similar criticism, especially for not-computer-limited business method claims like those in Bilski?
    Also, Alice 101 rejections are for claiming “abstractions,” not for claiming business methods, which a Sup. Ct. majority refused to declare unpatentable subject matter.

    1. Criticism? Paul, can you flesh your EPO caselaw question out a bit?

      I mean, how could it not be TRIPS-compliant? At the EPO, eligibility depends on the claimed subject matter having technical character. You know, like, a computer. Non-obviousness is also assessed within the rubric “all fields of technology” in that patentability depends on the claimed subject matter’s capability to solve a technical problem with technological means (such as a computer).

      It’s when the problem solved is not a technical one, that business method claims most frequently hit the buffers at the EPO. Is this what you want to see criticised?

      1. Max, I thought “not-computer-limited business method claims like those in Bilski?” was pretty clear. Are you suggesting that the EPO would allow a business method claim with no mention of any computern or any specific software, or other technology?

        1. Are you suggesting that the EPO would allow a business method claim with no mention of a ball point pen or a calculator, or other technology?

          Fixed to drive the point home.

        2. Am I suggesting? No. At the EPO, and claimed subject matter is required to define the candidate invention in terms of technical features. And obviousness is explored by reference to the problem (dubbed the “objective technical problem”) that the claimed subject matter plausibly solves.

          I thought you were suggesting that the EPO approach is susceptible to the criticism that it is not TRIPS-compliant. Are you so suggesting?

          1. Max, the question is simple. I will rephrase it: How can this Author’s argument that the U.S. is not TRIPS-compliant for business method claims not make the EPO even less TRIPS-compliant than the U.S.?

            1. Paul, help me here.

              1. How can the US be in non compliance with TRIPS with respect to subject matter that was not patentable subject matter at the time the treaty was signed?

              2. Same question, but also add that was not patentable subject matter at the time the treaty was signed in Europe.

              3. Same question, but also add everywhere else in the world to boot.

              4. Considering the situation of number 3 above be the situation at the time of signing of GATT, how does the subsequent change in the law that occurred in the United States in State Street Bank by the panel of a lower court effect US compliance with GATT when that lower court panel is subsequently overruled by the en banc court, and also by the US Supreme Court?

              1. Your last point assumes a conclusion (as hinted at as you dare) that is sinply false.

            2. Oh, now I see. Thanks.

              Under the EPC, methods of doing business are excluded by Article 52 but only “as such” and that exclusion of eligibility is construed narrowly. Not all business method-type claims are ineligible.

              Inventions in all fields of technology remain eligible and patentable, whenever the claim corresponds to the use of technical means to solve a technical problem in a way that wasn’t obvious.

              Of course, if the author asserts that all business methods (no exceptions) are in a field of technology and therefore instantly eligible, it follows that Art 52 EPC is not TRIPS-compliant.

  9. I’m sorry, but is the author aware that until State Street Bank in 1998, it was firmly established in the United States that business methods were not patentable subject matter – not being a machine, manufacture, composition or traditional process for making a manufacture. However, inventive machines or software that enables or makes a more efficient conventional business methods are entirely patentable subject matter as improvements to machines. The problem is when the of novelty is in the business method and the software or computer is merely recited at a very high level of abstraction.

    No matter how you argue your case, I cannot see how Alice discriminates at all against any historically legitimate technology. After all, State Street Bank was decided well after GATT TRIPS was negotiated. At the time the treaty was negotiated, business methods were not patentable subject matter in the United States and perhaps the rest of the world.

    Methinks that there is something afoot here – where the tail of the treaty is trying to wag the dog of 101.

    1. Ned – you jump right in with your obvious error of law as to trying to constrain “Process” to be a mere handmaiden category of patent eligibility (“not being a machine, manufacture, composition or traditional process for making a manufacture.”).

      You continue to ignore what Congress did in the Act of 1952.

      Further, your statement is simply not correct, as Prof. Crouch way back when had a guest post whose author showed that business method patents (as they would be called today) were granted throughout the history of the Office.

      1. (I will further note that such provides ample support for business method patents based on the Act itself and long before State Street (as I have in the past emphasized to Ned that my position does not depend on the State Street case itself.)

    2. >The problem is when the of novelty is in the business method and the software or computer is merely recited at a very high level of abstraction.

      Ned, again you are trying to bring back a point of novelty test. Wrong.

      Ned, again you are saying business methods were not patentable which is wrong.

      Ned, again you are missing that even if a business method was not patentable absent a machine, with the machine it clearly is. One can no longer separate out the “business method” from the machine. Not possible.

      1. Ned, again you are trying to bring back a point of novelty test.

        The “point of novelty test” never left the system. It’s inherent and essential and it’s never going away.

        1. Lol – trace it back please to the proper statutory text.

          Thanks.

          Heck, even square it with the Supreme Court statements on not allowed to dissect claims (claims as a whole).

          Bottom line is that the “Point of Novelty” concept as attempted to be applied in the 101 context is a canard at best, and an improper overreach of the judicial branch rewriting the law of 101 at worst.

          But you already knew that, eh?

          1. the “Point of Novelty” concept as attempted to be applied in the 101 context is a canard at best

            It’s common sense and it’s never, ever going away unless the practice of claim drafting is replaced by something that you and your maximalist friends will enjoy far, far less than the status quo.

      2. For example, I’m not aware of anyone arguing that that cash registers, a machine specifically designed to carry out one or more “business methods,” were patent eligible. In fact, USPTO Class 235-Registers has dozens of sub-classes that include patents machines for implementing business methods:

        link to uspto.gov

        1. Correction: I’m not aware of anyone arguing that that cash registers, a machine specifically designed to carry out one or more “business methods,” were NOT patent eligible.

          1. ARP, that’s because patents on cash registers were claiming specific mechanisms and/or electrical circuits, not broadly claiming a business method.
            If instead someone had tried to get a cash register claim like this they should not have been successful: ” I claim entering sequential individual purchase amounts in a [any] data storage system having an external display of said individual purchases and internally storing a cumulative total of said sequential purchase amounts.”

            1. PFM, you only are only arguing that some business method claims should fail under 35 USC 112 as not being enabled. You provide no basis for rejecting business method claims under 35 USC 101 as not being patent eligible.

              1. Paul Morgan’s deception here mirrors the long tried deceptions of Ned Heller.

                The attempt is to treat the category itself as “off limits” with but perhaps a single example.

                There exists NO area allowed by patent law that would pass THAT type of chicanery.

                For example, NO medical methods would be allowed under 101 if one were to apply the trick that Paul is playing following the Mayo case.

                This type of inte11ectual dishonesty has been pointed out time and again (and again and again and again).

                These anti-patent people f00l NO ONE.

              2. RP, in the rational world, pure business method claims are now getting 101 rejected under the Sup. Ct. authority of Bilski or Alice all the time. Whether we personally don’t like that “basis” or not is completely irrelevant. Yes, many of them should also be 112 rejected for non-enablement or for insufficient enablement examples to support such generic claims.

                1. PFM,

                  In a “rational world”, Bilski and Alice don’t exist, because they are examples of the Supreme Court exceeding its authority of legislating from the bench.

                  If the Supreme Court decided that people named “Paul F. Morgan” should be denied the right to post on Internet patent blogs based on the 1st Amendment, that would not make the decision rational.

                  A lawless Supreme Court decision is a lawless Supreme Court decision and, therefore, not rational.

                  The “basis” for decisions matters, or there is no “legal system”, just Star Chambers, Kangaroo Courts and “might makes right.”

                2. in the rational world, pure business method claims are now getting 101 rejected under the Sup. Ct. authority of Bilski or Alice all the time

                  That is not the rational world.

                  The real world is hardly rational.

                3. The lawless court is the court whose “panel” overturned precedent that has stood for a century. Where in the effin’ world does such a court assume it has such authority?

                4. NH,

                  “The lawless court is the court whose “panel” overturned precedent that has stood for a century. Where in the effin’ world does such a court assume it has such authority?”

                  What part of 35 USC, i.e., the patent statute, states that business methods are not patent eligible?

                  35 USC 101 in its entirety:

                  Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

                  I’m not seeing any “business method exception” in the text.

                5. Rat, Hotel Security called business methods “abstract” and not within 101 for that reason.

                  Judicial exception or not within 101, take your pick. It was longstanding judicial precedent that a

                  panel

                  of the Federal Circuit felt it had the authority to ignore. Now “that” is judicial lawlessness, of which the Federal Circuit has a well-deserved international reputation.

                6. Ned is once again trying to incorrectly broaden a district court handwaiving into some type of precedent – without (of course) understanding what Congress did in 1952 – as well as understanding that “business method patents” have been granted throughout the entire history of the US patent system (as has been exemplified with a guest post on this very blog some time ago).

                  Those just do not line up with the Windmills that Ned wants to tilt at.

                7. Ned,

                  Let me remind you that you are attempting (once again) to INCORRECTLY mix “abstract” and “business method.”

                  We went round and round so many times on this point in the aftermath of Bilski that you are STILL spinning in circles.

                8. anon, you share the same arrogance and disregard of the law as did the Federal Circuit in that 1998 decision.

                9. Ned,

                  You mistake my certainty with being correct for arrogance.

                  I simply am firm in telling you how things really are. That you think this arrogance is a YOU problem.

  10. I still await an academic’s treatment of the US rise, fall, and attempted reanimation of the Mental Steps Doctrine.

    Treating machines as a proxy for the human mind (hint: anthropomorphication) is the zombie white elephant in the room.

    Machines do not think.

    (It really is as simple as that – despite the chicanery of the “directed to” nonsense, the “anti-scriviner” attitude, and the unlimited weapon of the “Gist/Abstract” sword.

    1. Do you think the following is patent eligible, anon:

      A sheet of paper containing instructions that, if followed by a human, cause the human to assemble a car.

      But if the sheet of paper is “memory” and it contains instructions that “if executed by a computing device” cause the “computer” to assemble a car, then is it eligible?

      1. anthropomorphication

        There really is a difference between a machine and human.

        BTW, a method claim of a human doing something may or may not be patent eligible all on its own.

        1. a method claim of a human doing something may or may not be patent eligible all on its own.

          Sometimes the sun is in the sky. Sometimes the moon.

          Deep deep stuff.

          1. The Poker tell of “deep stuff” with nothing more, Malcolm you (once again) reveal that you have NO meaningful reply on the merits.

      2. Beauregard claims are a weird anomaly. They don’t really make sense except as an agreed upon construct. But a method for assembling a car is almost certainly patent eligible. It may not be novel, but it’s still eligible.

        The confusion you are trying to highlight stretches the other way as well. There are many who would like to characterize an eligible method as ineligible simply because it is implemented with a computer.

        A computer implemented method for assembling a car certainly feels like it should be eligible. If a particular strategy for applying an analytical framework deems assembling a car “abstract” simply because a computer is involved, then it might be necessary to question that application.

        Note that I am not ascribing to you any position, and in fact I have no idea what your position is vis-a-vis many of these issues (I’m not even sure what my own position is in some respects), but I thought your post was an interested jumping off point for framing this issue.

        JCD

        1. There are many who would like to characterize an eligible method as ineligible simply because it is implemented with a computer.

          I’m not aware of anyone who has ever advocated this.

          Are you high?

          1. You cannot be serious Malcolm as this is your standard motif.

            1. this is your standard motif.

              And once again we need to ask: are the maximalists unable to read, or are they habitual l i a rs, or a combination of both?

              I have never suggested that an eligible method becomes ineligible when it’s limited to being carried out by computer.

              I have expressly stated the opposite hundreds and hundreds of times.

              Seriously, you need to get some help.

              1. You suggest it every time you crack a “logic arts” comment in relation to software.

                1. …and you do not even have to leave this page to see it – just look up at your comment 4.

                  Or are you still trying to dissemble that software is ONLY logic?

                  If so, please square the fact that one may not obtain copyright on logic, and yet aspects of software fully earn copyright.

                  You know, the response from me to your usual dissembling that you never seem able to answer…

                  (yeah, that’s what I thought)

    2. Machines do not think.

      Please define the term “think”. Along with your definition, please provide two of the simplest examples of “thinking”.

      Because you’re a very serious person! You really are. A very important person just filled with deep, deep thoughts.

      1. Human cognition.

        Do you really need examples? (I grant that this area may be largely unexplored territory for you).

        1. Whoa, that got circular realy fast. Please provide two of the simplest possible examples of “human cognition” (LOL) for everyone.

          Go ahead.

          [note that “anon” apparently believes that monkeys don’t “think” — that explains a lot about his family]

          1. You want to confuse and conflate machines, monkeys and humans?

            You do realize the context here, right?

            Maybe you should read again post 1. Read slowly. Read it all. Let me know which item you disagree with. Please be specific with your disagreement.

            Unless you want to cut to the chase and simply state that you think that machines really do think. (You do not even need ad hominem for that).

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