The following excerpt comes from Dir. Iancu’s recent speech in Chicago where he discussed his proposal for expanding Section 101 patent eligibility. – DC
Remarks delivered at the Intellectual Property Owners Association 46th Annual Meeting by Director of the U.S. Patent and Trademark Office Andrei Iancu, September 24, 2018 (Chicago, Illinois)
As delivered
Good morning everyone, and thank you, Henry [Hadad] for that generous introduction. And thank you for inviting me. . . .
. . . A significant part of the growth in [trademark] applications has come from China. . . . This has presented increased issues with the unauthorized practice of law from individuals outside the U.S. In light of this and other issues, we are considering a possible notice of proposed rulemaking that would require foreign trademark applicants and registrants to be represented by a U.S. licensed attorney to file trademark documents with the USPTO.
. . . Now as to patents: . . . I’ll focus my remarks on a specific proposal for Section 101—patentable subject matter.
As many of you know, we recently issued to our examiners two new guidance memos on Section 101: the first dealing with the “conventionality” step in the Mayo/Alice framework, and the second on “methods of treatment” claims. Our data shows that these two memos have already improved the 101 analysis during examination.
But significantly more work needs to be done, especially on the “abstract idea” exception.
I know that IPO committees have been hard at work on a legislative fix to Section 101. Indeed, IPO and AIPLA have joined forces recently and proposed new statutory language. Should Congress be interested in moving forward with hearings or legislation, the USPTO would be very happy to help. As we all know, however, any legislative effort takes a long time, and the result is uncertain.
In the meantime, the USPTO cannot wait. We have thousands of examiners who struggle with these issues on a daily basis. Our examiners need additional guidance now. And so do patent applicants, patent owners, and the public. Whether through legislation or otherwise, there is a growing consensus that the issue must be promptly addressed.
In fact, several Federal Circuit judges have recently filed concurrences or dissents explaining the uncertain nature of the law and calling for change.
In order to “work its way out of what so many in the innovation field consider are §101 problems,” Judge Lourie—in an opinion joined by Judge Newman—appealed to a higher authority. “Resolution of patent-eligibility issues requires higher intervention, hopefully with ideas reflective of the best thinking that can be brought to bear on the subject.”
Judge Plager, in another case, noted that “the state of the law is such as to give little confidence that the outcome is necessarily correct.” He explained that, given current §101 jurisprudence, it is “near impossible to know with any certainty whether the invention is or is not patent eligible.” And he concluded that we currently have an “incoherent body of doctrine.”
And Judge Linn explained that the abstract idea test is “indeterminate and often leads to arbitrary results.”
I agree with all these sentiments.
Judge Giles Rich, an icon of patent law with an unparalleled understanding of—and impact on—our system, stated, in 1979, the crux of the problem with respect to §101 jurisprudence. He said at the time that problems can arise due to the “unfortunate … though clear commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of invention in §101 which may be patentable, and to the conditions for patentability demanded by the statute…”
This was almost 40 years ago! How perceptive and prescient Judge Rich was.
Let me put this in my own words: How can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an “inventive concept” and therefore fail 101? Or, how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101? How can something concrete be abstract?
These problems confound the most sophisticated practitioners in our patent system. People simply don’t know how to draw these distinctions. If something is not inventive, then invalidate it under 102 or 103. If something is indefinite, or too broad to be fully enabled or described, then invalidate it under 112.
We have decades of case law from the courts and millions of examinations at the PTO which guide us in our 102, 103, and 112 analyses. People know these standards and how to apply these well-defined statutory requirements.
The genius of the 1952 Patent Act, of which Judge Rich is widely viewed as a principal author, was that it categorized the bases for patentability. Our recent §101 case law mushes them all up again. As Judge Rich said, this “may lead to distorted legal conclusions.” And it has. And it must end.
So I propose that we go back and heed Judge Rich’s direction, and keep rejections in their own distinct lanes—as directed, in fact, by the 1952 Act. Let’s stop commingling the categories of invention on one hand, with the conditions for patentability on the other. Section 101 is about subject matter. It is meant to address categories of matter that are not ever eligible on their own, no matter how inventive or well-claimed they are.
Here is a hint: If the claims can be fixed by slightly different claiming, by narrower claiming, or by more definite claiming, this is likely a “conditions” problem—not a subject matter problem. A pure discovery of nature, like gravity for example, is not eligible no matter how new, how brilliant, and how carefully the claims are written. This is an example of a subject matter issue. The category itself is problematic.
Alright, but what are these problematic categories? I ask because I believe that we must define the categories for these exceptions clearly, lest—in Justice Clarence Thomas’s words—we “swallow all of patent law.” Because—again quoting Justice Thomas—“at some level, ‘all inventions…embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” Clearly, though, not all inventions are subject to a judicial exception. So what is the specific subject matter that is problematic and we must exclude? We must be clear, lest we perpetuate the current state. People should know up front. If nothing else, for the sake of a predictable ecosystem, let’s be transparent.
And in particular, the issue needing most attention is, what precisely is the meaning of the “abstract idea” exception? Section 101 itself lists four categories: process, machine, manufacture, and composition of matter. The judicial exceptions should likewise be clearly categorized. As Judge Rich explained, when we deal with §101, “the sole question…is whether the invention falls into a named category, not whether it is patentable…”
So at the USPTO we are contemplating revised guidance to help categorize the exceptions—and indeed to name them—and instruct examiners on how to apply them.
More specifically, the contemplated guidance would do two primary things: First, it would categorize the exceptions based on a synthesis of the case law to date. And second, if a claim does recite a categorized exception, we would instruct examiners to decide if it is “directed to” that exception by determining whether such exception is integrated into a practical application. These two clarifications would help drive more predictability back into the analysis while remaining true to the case law that gave rise to these judicial exceptions in the first place.
So first, what exactly should be captured by the judicial exceptions to §101? In essence, and because we no longer want to mush subject matter with the conditions of patentability, the exceptions should capture only those claims that the Supreme Court has said remain outside the categories of patent protection, despite being novel, nonobvious, and well-disclosed. And what are the categories of inventions that the court told us that we should not patent even where the applicant demonstrates full compliance with Sections 102, 103 and 112? The Supreme Court gave us the answer: the “basic tools of scientific and technological work.”
And what are these “basic tools?” I believe that the Supreme Court has also told us that, at least through their examples. For example, they certainly include pure discoveries of nature, such as gravity, electromagnetism, DNA, etc.—all natural and before human intervention. So, no matter how brilliant the discovery of a certain DNA sequence in nature might have been, the court said we should not issue a patent in the absence of more. The Myriad case is a recent example.
Also, fundamental mathematics like calculus, geometry, or arithmetic per se. That is, no matter how novel and well-described Newton’s calculus may have been, it is still not patentable by itself. It can be thought of as abstract no matter what. Perhaps “inherently” ineligible, some might say. The Benson case is an example.
Some basic “methods of organizing human activity,” such as fundamental economic practices like market hedging and escrow transactions, have also been excluded by the Supreme Court in Bilski and Alice.
And the court has also warned against pure mental processes such as forming a judgment or observation. Again, by itself, something performed solely in the human mind can be thought of as abstract no matter how it is claimed.
The Supreme Court has been interpreting this statute for the past 200 years or so, and throughout that time has given only a limited number of examples of these “basic tools of scientific and technological work”—and arguably they can all generally fit into the categories I just mentioned. So let’s turn now and ask in a bit more detail, what do the various exceptions articulated by the Supreme Court really encompass? There is less difficulty with understanding the categories for laws of nature and natural phenomena.
Folks can arguably identify things like gravity or DNA in a claim. Abstract ideas, on the other hand, have proven more challenging to define. But a thorough review of the relevant case law helps us draw more clear lines. At the USPTO we have undertaken just such a review and have studied every relevant case in detail.
And so, the proposed PTO guidance would synthesize “abstract ideas” as falling into the following three categories:
- Mathematical concepts like mathematical relationships, formulas, and calculations
- Certain methods of organizing human interactions, such as fundamental economic practices commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities
- Mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.
Under the first step of the proposed guidance, we would first look to see if the claims are within the four statutory categories: process, machine, manufacture, or composition of matter. This is not new—we always do this. If statutory, we would then check to see if the claims recite matter within one of the judicial exceptions, categorized as I just mentioned. This is the new approach.
If the claims at issue do not recite subject matter falling into one of these categories, then the 101 analysis is essentially concluded and the claim is eligible. This alone would resolve a significant number of cases currently confounding our system. If an examiner does not find matter within the disallowed categories, he or she can move on.
Now, on the other hand, if the claims do recite subject matter in one of the excluded categories, the Supreme Court has instructed that we need to do more analysis. Specifically, the court instructed us that in such cases we need to decide whether the claims are “directed to” those categories.
To that end, we must first understand what the line is that the court wants us to draw to decide whether the claim is “directed to” an excluded category or not. The proposed new guidance would explain that Supreme Court jurisprudence taken together effectively allows claims that include otherwise excluded matter as long as that matter is integrated into a practical application. The line, in other words, delineates mere principles, on one hand, from practical applications of such principles, on the other.
For example, in Le Roy v. Tathem, the court said in 1853 that “a new property discovered in matter, when practically applied in the construction of a useful article of commerce or manufacture, is patentable.” Then 128 years later, in Diamond v. Diehr, the court repeated that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” And recently, in Mayo, the court explained that “applications of such concepts to a new and useful end … remain eligible for patent protection.”
And so, if the claim integrates the exception into a practical application, then the claim is not “directed to” the prohibited matter. In such cases, the claim passes 101 and the eligibility analysis would conclude. Otherwise, we would move to step 2 of Alice, for example as explained in the office’s Berkheimer memo from earlier this year.
It is important to note that the first step of our analysis does not include questions about “conventionality,” which are addressed in Alice Step 2. That is, it does not matter if the “integration” steps are arguably “conventional”; as long as the integration is into a practical application, then the 101 analysis is concluded. This helps to ensure that there is a meaningful dividing line between 101 and 102/103 analysis. A fully “conventional” yet patent-eligible claim may still be unpatentable as obvious. But it is better to address such a claim with obviousness law that has been developed over 65 years of practice.
The analysis also does not deny claims as ineligible merely because they are broad or functionally-stated or result-oriented. I understand the concern with certain types of broad, functionally defined claims that do not have sufficient support in the specification. But for these cases, USPTO examiners know, and will receive further guidance and training on, how to apply well-defined Section 112 principles.
Put another way, the examination does not conclude merely because we overcome Section 101; we must still examine for patentability under sections 102, 103 and 112. And so for claims that pass 101 because they do not articulate matter in a defined category, or that integrate the matter into a practical application, we can rest assured that other sections of the code should still prevent a patent if the claim is not inventive or is merely on a non-enabled or undescribed or indefinite idea.
In sum, the proposed guidance for Section 101, which addresses step 1 of Alice, would explain that eligibility rejections are to be applied only to claims that recite subject matter within the defined categories of judicial exceptions. And even then, a rejection would only be applied if the claim does not integrate the recited exception into a practical application. This provides significantly more clarity for the great bulk of cases.
Sure, there will be a number of cases that would still be difficult to resolve when we ask whether a claim is within one of the excluded categories, or whether it is a practical application of it. But for the vast majority of cases in the big middle, I suspect that the proposed approach would be significantly simpler.
And we are certainly in need for some simplification.
For many claims right now, we have an option to reject or invalidate, for violations of patentability conditions, under either:
- A patentability condition such as 102, 103 or 112, or
- Section 101 subject matter.
Judge Rich was again perceptive, when he noted 40 years ago that “To provide the option of making such a rejection under either 101 or [a condition for patentability] is confusing and therefore bad law.” Just as Judge Rich warned, we have gotten ourselves into a rut when it comes to Section 101 analysis. With the proposed new guidance, the USPTO is trying to navigate our examiners out of that rut given the current statute and judicial precedent.
And I hope other authorities will join in helping us get out of the rut, at least by keeping rejections in their lane and by clearly categorizing the subject matter of any exception. Please note that if we are to issue such revised new guidance, it would take some time to finalize. During that time, I welcome your comments and thoughts on this and any other proposal.
In the end, we all have the same goal in mind. Born of our Constitution and steeped in an inspiring history of world-changing innovation, the American patent system is a crown jewel, a gold standard. Working together, we can ensure increased clarity in the patent system, and thus ensure that the United States will continue to lead the world in innovation and technological development.
Thank you again for the opportunity to be with you here today. I would be happy to answer any questions you might have.
If you just read the opinions and read the posts below, they all have the common theme of taking elements out of a claim and then contending that these elements are some abstraction that is made-up in the mind of the judge. And then some wa nk test is make-up and then some wa nk judge proclaims the result of the wa nk test.
Just. A. F’ing. Joke. No better than medieval thinking.
How many abstractions have these judges fabricated? A lot. And each of them is basically saying, I don’t like these claims so here is some pretense for me to invalidate the claims.
You have to love the ones that attack information processing and at the same time they are paid to do nothing but process information. And the ones that claim everything is so easy and you the wa nkers have never done a thing in their life outside of typing in their la me thoughts.
You have to love the ones that use their judgement over trained experts in science and technology because, well, they are the smartest little boy or girl . And they know the pharaoh did all of this thousands of years ago.
The best thing to do is stop appointing judges to the CAFC that have no science or technology background and make the ones retire that were trained with 19th century philosophy.
You cannot argue with a person that believes that information has an ethereal form and that they have a mind where the processing occurs in the spirit world (or that believe that all human thought and all thinking is just easy and all that is needed is you write down what you want and give it to a boy to make work.)
Medieval judges.
Iancu: It’s astounding…
Licenses are fleeting…
Alice, takes its toll.
But listen closely…
Hirshfeld: Not for very much longer!
Iancu: I’ve got to, keep control…
Iancu: I remember, arguing the MoT test!
Drinking, those moments when,
The allowances would hit me…
Iancu and Hirshfeld: And the customers would be paying!
IPO Chorus: Let’s do the time-warp again!
Let’s do the time-warp again!
Iancu: It’s just a jump to Diehr’s precedent…
IPO Chorus: And then a step to Rich’s intent!
Iancu: With examiners hands tied…
IPO Chorus: You bring the grants up nice!
IPO Chorus: But it’s the functional claims…
That really drives SCotUS insane!
Let’s do the time-warp again!
Let’s do the time-warp again!
Iancu: With a bit of a mind flip…
Hirshfeld: You’re into the applied-integration test.
Iancu: And nothing, will ever be abstract again…
Hirshfeld: You’re spaced out during prosecution,
Iancu: Like you’re applying for registration!
IPO Chorus: Let’s do the time-warp again!
Let’s do the time-warp again!
As I recall it was under the overall supervision of Drew Hirshfed that the USPTO concluded that gunpowder was a natural product.
Stick to your ignorant, dark, sardonic comments, Ben.
Not everything Trump touches is tainted. Good on Director Iancu for identifying problems and proposing reasonable solutions. The uncertainty is forced upon us but must be managed as best as possible. The focus on practical application is a good start, although there are many decisions disparaging “by a computer” or other “practical application” language.
FWIW, it seems that what the courts have lost sight of is the notion that a patent is a communication between artisans. Sometimes the language of communication – in the form of patent claims – can appear abstract or obtuse to a judge or layperson, but to the intended audience a claim might be read as a concrete practical application with limited and comprehensible scope. Judges are cutting off the opportunity for claims to be interpreted as they would be by the intended audience.
The focus on practical application is a good start
Seems like a terrible start in view of the reams of reasonable decisions explaining that “applicability” is not a determinative issue for subject matter eligibility.
The money quote in Mayo v. Prometheus is that you absolutely CAN’T protect ineligible subject matter by reciting the subject matter and then saying “apply it” in some context. There has to be more than that. Most of us are comfortable with understanding that the “more than that” is more than a context and more than being more specific about the ineligible subject matter. What you need to do is transform matter in some unexpected or previously unknown fashion, or describe a non-obvious structure in structural terms. Everything else is inevitably going to be hand-waving and gobbledygook around abstraction. Basic logic dictates that. And this is not hard to understand. The ramifications are, admittedly, difficult for certain “players” to accept. Here’s my idea: screw those “players.” They’ll find another grift. Get the vapor blowing bros out of the patent system and bring the physical reality-based patent-worthy innovators back into the system. Better for everybody.
Also, why isn’t the usual crowd of screeching cheerleaders going batshirt over the “conflation” of utility with subject matter eligibility? Somehow “conflation” is not an issue when it makes patenting easier? Golly gee whiz it’s funny how that works. Thank goodness these screechers aren’t the world’s worst hypocrites …
Not everything Trump touches is tainted.
That remains to be seen. But congrats for implicitly acknowledging the truth about Mang0 H@irball’s touch.
You do realize that what you are preaching (Machine or Transformation) was rejected 9-0 as a legal requirement by the Supreme Court (and that’s even when they operate a broken scoreboard), eh?
After all these years, MM is still a baboon.
“Also, why isn’t the usual crowd of screeching cheerleaders going batshirt over the “conflation” of utility with subject matter eligibility?”
Utility is part of 101. Where is this conflation that you speak of?
The point in Mayo is very simple.
Two of the four claimed features were administering a thiopurine drug and analysing the patient’s blood for metabolites. These steps were known.
The remaining two features, on which alleged patentability were based, were the upper and lower thresholds of the therapeutic window. These features lacked eligibility because they were purely information not in themselves involving the hand of man nor of a transformative character. In themselves they were plainly not eligible under any of the four categories of Section 101.
The claimed process simply did not qualify for positive eligibility. It was unnecessary to invoke judicial exception, and insofar as that was done the decision was much narrower and more cautious than the profession proposed.
If you read the decision, you will see that the kind of analysis carried out by the EPO where non-qualifying features should be disregarded was rejected by the Supreme Court. Form this alien viewpoint, the disinclination to follow European precedent was unwise and unhelpful.
>>These features lacked eligibility because they were purely information not in themselves involving the hand of man nor of a transformative character.
This is nonsense. The fact is that it was a method and the steps were not “purely information” as the affected the other steps of the method.
Again, what we see is that judges split up the structure of the claim and then claim that some of the structure is some abstraction (here just information).
You have to love that too. Just information. The judges are paid to provide opinions that are just information.
Anyway…more nonsense.
With the utmost respect, the two claimed features were not a step anywhere. They were pure items of information. You could use them positively. Or you could disregard them utterly. Or any arbitrary position in between. It mattered not to the scope of the claim.
If you read the decision, this was the first substantive point seized on. The critical part of the decision reads:
“Prometheus’ patents set forth laws of nature—namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm. Claim 1, for example, states that if the levels of 6–TG in the blood (of a patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8×108 red blood cells, then the administered dose is likely to produce toxic side effects. While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation a natural law.”
This language shows that Justice Breyer cut straight to the chase and correctly identified the key shortcoming in the representative claim. If the claim had gone on to recite steps of selecting the dose for a patient and then administering the drug to the patient the outcome might well have been different. But that was NOT what was claimed, hence the outcome.
“The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. ”
Psst Paul: this line of thinking removes ALL PHARMA from patent eligibility.
I am only too aware of the danger.
Paul Cole: the two claimed features were not a step anywhere. They were pure items of information. You could use them positively. Or you could disregard them utterly. Or any arbitrary position in between. It mattered not to the scope of the claim.
Prometheus admitted during trial that in order to infringe the claim, someone needed to at least look at the data and understand the relationship of the data to the correlation (that step had to be present because otherwise the claim would be anticipated; the data gathering steps were also admitted to be old in the art). Prometheus also admitted that nothing further needed to be done beyond that appreciation (i.e., as you recognized above, nobody needed to be treated after the data was analyzed; the data could simply be thrown in the tr@sh and ignored after the analysis and there would still be infringement of the claim).
This is a key fact about the case that cannot be ignored when discussing what the case was about. There is a huge Constitutional issue staring the patent system and a bunch of whiny entitled ign0r amuses who otherwise never shut their f@t mouths about the Constitution decided to look the other way in hopes they could grab some more $$$$.
Or some none too bright (or merely greedy) patent attorneys not drafting claims that as a matter of substance fall within the “process” category of Section 101.
If you follow up the claim with an adjusted dosage regime and the steps of adjusting the dosage to the outcome of the test, not only is the claim then patent eligible but also the patentee (and possibly the testing organization) are prompted towards a potentially fruitful and lucrative collaboration with one of the producers of the thiopurine drugs. So not including a method of treatment claim was a double loss for the patentees.
“Features” never lack “eligibility” because it is the claim — as a whole — that is or is not eligible.
Going the path of “features” yields two things:
Parse (divide and conquer) which does not treat the claim as a whole.
The Big Box of Protons, Neutrons and Electrons “philosophy” (ALL physical items can be rewritten as configurations of piece part items — that in and of themselves — are not patent eligible.
Going down that path logically results in nothing (solid) is patent eligible: the exceptions really do swallow the rules.
Dear Paul Cole,
You lost Sequenom and the reasons you lost were explained to you before and after the case. Meanwhile, scientific discovery and research continues to move on even as you stand on your rock weeping and pretending not to understand the fundamental considerations underlying the decision and the decision in Prometheus v. Mayo.
We argued that the Mayo/Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field.
This is gibberish. There is no “playing field”. The law recognizes patentable inventions and non-patentable non- inventions. Every advance is “incremental” but that doesn’t mean that every advance is patent worthy.
We further argued that the panel opinion should have considered whether the claimed method falls as a matter of substance and not mere outward appearance within 35 USC §101 before considering judicial exceptions. Thus, Sequenom’s method claims were eligible as a matter of substance under the “process” category of 35 USC §101
Nobody was confused about whether Sequenom’s claims were a “process”, Paul. That wasn’t the issue.
and were neither “directed to” matter that is naturally occurring
Fetal DNA is naturally occurring. Fetal DNA in maternal serum is naturally occurring. Detecting DNA in everything where detectable DNA exists was conventional technology at the time the application was filed.
nor lacking in transformative additional features.
This was your best argument. But you lost the case because (1) you and the other lawyers for Sequenom weren’t as skilled as presenting your arguments as the other side and (2) you told falsehoods that were easily demonstrated to be falsehood (see upthread, where you repeated the same nonsense to everyone here and I highlighted the nonsense for everyone). In other words, the other side won and you lost for legitimate defensible reasons. [shrugs]. Let’s remind everyone (again) why your argument failed to carry the day. First, here’s your argument:
[1] 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. [2]Amplifying nucleic acid of the specified provenance was also not a well-understood, routine, conventional activity previously engaged in by researchers in the field of non-invasive prenatal detection.
These two sentences are duplicative so I won’t address them separately. There are two counterpoints which are very problematic for this argument. Everyone was well aware of the counterpoints because I and others presented them here.
First, your line of reasoning would allow anyone to re-patent a prior art detection method in any naturally occurring (or prior art) context. In other words, Scientist invents a new method for detecting really small amounts of verboglotten. Then Paul Cole and his army of lawyers begin filing methods of detecting verboglotten in everything. Find a new tree frog in the rainforest? Well, file a patent on detecting verboglotten in the new tree frog (by definition, that’s “unconventional” because that tree frog was never known to exist before! — see how that works, Paul? Of course you do).
This is a “basic tools” problem. This is exactly what the Supreme Court was concerned about in Mayo v. Prometheus, i.e., if you allow people to re-patent prior art research tools merely by appending ineligible subject matter (e.g., descriptions of correlations or newly discovered “targets” for detection tools) to a recitation of the research tools, then the tools become tied up and their use turns into a liability long after the patents (if any) on the tools is expired. Note that this isn’t just a liability for actors in the marketplace but also a liability for scientists conducting basic research. Note again: liability, not progress. Get it?
What was sorely absent from Sequenom’s claims was any detailed recitation of the specific technical solution to the problem of detecting fetal DNA in maternal serum. Sequenom wanted to monopolize that discovery. They were blocked from doing that. Everybody benefits. Great decision! Oh but wait! Some mediocre patent lawyers found their jobs got a little harder and maybe they lost a client. Boo hoo hoo!
For the sake of saving space and not embarassing you further, Paul, I’m leaving out a detailed discussion of the obviousness of Sequenom’s claims in view of the prior art. Because those claims were certainly obvious. Fetal cells were known to be floating around in maternal serum. Nobody in their right mind at that time would ever suggest that, given that indisputable fact, it would be impossible to detect fetal DNA in that same serum. Nobody. Of course it would be possible. The commercial problem was whether you could do it accurately and cheaply without drawing gallons of blood from the mother. The solution to that problem was sadly completely absent from the claims, Paul. As you know. As everyone here knows. We discussed this case into the ground.
There is a sad flaw in the reasoning here. The amplified DNA in Ariosa was a synthetic construct, being derived from individual nucleotides by an essentially enzymatic synthesis. The amplified DNA was present in an abundance of 1000 to 1000000 times that of the original as appears on the face of Judge Reyna’s decision. It is uncommon to find a judicial quantifiably wrong, but Judge Reyna’s decision was wrong by precisely that factor.
There may have been a 103 case (but I doubt it). However, the case was on 101 not 103, and in my considered and settled opinion it was wrong.
And the claimed subject matter was a process clearly falling within the eligible category of 101. If so, then the doctrine of separation of powers clearly prevents judicial exception from removing it from the scope of eligibility on which Congress has decided. If I made an error in the two briefs that I lead authored, it was in making the point subtly and believing that the clerks in the Supreme Court would have figured it out, it being possibly impolite for a non-US commentator to point out the contradiction. I now appreciate that it should have been pointed out in gross terms for the technically and especially legally illiterate audience for whom I was writing.
Incidentally, my comments on Ariosa were not a solo effort. Just look at the portfolio of amicus briefs, many written by commentators more distinguished than myself, and most of an extraordinarily high standard, especially the briefs by the law professors. It is remarkable that the Supreme Court decided not to hear the appeal.
Incidentally, streptomycin is also a natural product, being a bacterial metabolite. Your arguments would invalidate the patent on streptomycin. Good-bye much of the pharmaceutical industry.
PC The amplified DNA in Ariosa was a synthetic construct, being derived from individual nucleotides by an essentially enzymatic synthesis. The amplified DNA was present in an abundance of 1000 to 1000000 times that of the original
Right. That’s how PCR works. PCR was prior art and it’s ability to detect tiny amounts of DNA wherever that DNA happens to exist (e.g., in maternal serum, where detectable fetal CELLS were known to exist) was well-known when the app was filed.
There is a sad flaw in the reasoning here.
No flaw in my reasoning. The flaw is in your failure to reason, Paul. As you know.
the claimed subject matter was a process clearly falling within the eligible category of 101.
The claim in Prometheus v. Mayo was also a process claim. Nobody is disputing the nature of the claim, and nobody is disputing that 101 says that “processes” are eligible. Additionally, very very few people out there who have thought for more than five seconds about the issue will dispute that if 101 is to have any meaning at all, it can’t be the case that you can recite some useful prior art context and claim any process within that context, regardless of whether the process is a process of thinking about how much you love your m0 mmy or whether some collected data “correlates” with some “meaning” that you identified.
Just look at the portfolio of amicus briefs, many written by commentators more distinguished than myself, and most of an extraordinarily high standard, especially the briefs by the law professors.
The key to winning these cases is to (1) acknowledge the fundamental Constitution-driven importance of the judicial exceptions; (2) avoid making assumptions; (3) focus on the claims and not on the actual technology (which is not what is being litigated); (4) don’t attack we ird0 strawman arguments that your opponent isn’t making; and (5) do not kick up silly dust clouds about what won’t get innovated if you don’t get your way — patents are not as important as the judicial exceptions. Not even close.
streptomycin is also a natural product, being a bacterial metabolite. Your arguments would invalidate the patent on streptomycin.
The patent on streptomycin is expired. If that patent covered streptomycin as found in nature, it should never have been granted in the first place. But it’s not “my arguments” that lead to that result (at least, no argument that I’ve made in this thread). Heck, I’m very much on the record as having been opposed to using subject matter eligibility to take down Myriad’s junk claims. That said, eliminating claims to isolated naturally occurring chemicals (not just DNA) from the patent system would hardly be the end of the world for pharma patenting. Pharma is doing just fine without, e.g., isolated naturally occuring DNA patents, as I and many other professionals knew that it would be. The last time I checked people were still very busy looking for correlations between gene sequences and disease, too (how shocking!).
The jurisprudence of 101 has introduced several differences in degree (“sufficiently applied,” “significantly more,” “markedly different,” and even “fundamental”) that do not have commonly accepted standards, and the jurisprudence has not offered guidance for selecting standards. Director Iancu seems to emphasize the “sufficiently applied” test to avoid step 2b and its associated “significantly more” test, but that change looks to me more rhetorical than substantial, and it does not address the lack of standard.
Also, the faith that Director Iancu has in the ability for the PTO to make sensible 112 rejection is misplaced. I have had to argue rejections based on unclaimed essential feature (presumably stemming from the enabling requirement), and I found the position of the Examiner systematically poorly explained.
Good points.
Director Iancu… does not address the lack of standard.
I agree with this. I also think that Director Iancu is more generous than is merited in his discernment of a pattern that differentiates “recites” from “directed to.” If you look at Sequenom, for instance, the court moved rhetorical mountains to characterize those claims as “directed to” the natural DNA, instead of a method that uses the natural DNA as a mere raw material.
Mind you, it could be that the Director is merely trying to flatter the courts on the way to getting them to adopt his guidelines as law. If so, I am wholly on board with it. I am not holding my breath, however, that the court will agree to go along with this ruse.
the court moved rhetorical mountains to characterize those claims as “directed to” the natural DNA, instead of a method that uses the natural DNA as a mere raw material.
“Raw material”? LOL
Like Sequenom was mining fetal DNA from maternal serum?
Do you know how PCR works, Greg?
I guess sea gulls are “raw material” for my binoculars in the magical world of patent lawls.
PiKi Director Iancu seems to emphasize the “sufficiently applied” test to avoid step 2b and its associated “significantly more” test, but that change looks to me more rhetorical than substantial, and it does not address the lack of standard.
That’s exactly what he’s doing. It’s the same old game.
Shorter Iancu: “The term ‘abstract’ is so vague and it’s impossible to comprehend what ‘significantly more’ is supposed to mean because it might mean that logic patents are ineligible which is the third rail. So let’s just create a new standard and crank out more ineligible junk until the Supreme Court tells us to stop. Thank you, everyone! I accept credit cards, cash, checks, gold, jewelry, whatever you got.”
The rich entitled class gets more. Everyone else gets the shaft. So s u c k it, scientists and everyone who uses a computer. You have to pay the patentistas. They are The Most Important People Ever and those Texas courthouses don’t air condition themselves.
“The rich entitled class gets more. Everyone else gets the shaft.”
…Malcolm’s STILL unexplained dichotomy of why he is most fervently anti-patent for the type of innovation MOST accessible by NON-wealthy innovators…
Still odd.
Is the Rich that Iancu speaks of the State Street Bank Rich, or the Principles of Patentability Rich who felt that inventive Diaper Services and inventive techniques for teaching Russian were not patentable under 101?
Iancu is referring to the Judge Rich whose name, when spoken in an obsequious manner, immediately confers credibility upon the speaker.
Occasionally some worshipful background music played on a pipe organ helps to seal the deal.
Principles of Patentability Rich who felt that inventive Diaper Services and inventive techniques for teaching Russian were not patentable under 101?
Clearly those weren’t integrated practical applications of the otherwise ineligible subject matter. Please don’t confuse people! Iancu has made this very easy and now you’re trying to ruin everything. Why do you h@ te patents???????????
LOL
Seriously, I am already enjoying the smell of burning toast coming out of the PTO. A Trumpist PTO Director is going to re-write reality in the hopes that the Supreme Court will crank up the patent machine to 11 and hand out more power to the extremely wealthy and entitled classes?
Bring. It. On.
Extremely wealthy…
Who cares if Malcolm’s meme’s are contradictory…
All the matters to Malcolm is that he repeats them often enough, some smch uck might start believing them.
Hopefully the more mature and experienced Rich of State Street Bank…
Judge Rich’s remarks to the Rochester Patent Law Association were good, but his thoughts in State Street Bank were even better and wiser.
Impressive speech by Iancu. And yes, PTO has a critical role to play when SCOTUS cuts the moorings. Good luck Director! #MAGA. How much of this is the fault of J. Thomas? and/or the lower courts not following the HOLDING of the case but the concurrence ?
I do not think that only following holdings saves you as the Court has scrivined their way into a charley foxtrot Gordian Knot.
While there is plenty of blame to pass around, the blame MUST start with the scrivining of the Supremes.
They are the ones that are supposed to be the Watchdogs of the Constitution, as they themselves write statutory law that expressly belongs to another branch (separation of powers violation), do so without defining multiple key words (Void for Vagueness violation), and do so under the guise of what merely MAY happen (lack of present case and controversy authority — ALL of their “authority” is premised on a subjective, conjectural, someday MAY happen [and the word “may” necessarily includes the meaning “may not”]).
Congress acted once before in direct response to a Court that had become so anti-patent that Justices themselves stated: “the only valid patent is one that has not yet appeared before us.”
We continue to repeat history because we have not learned the lessons from history.
Record numbers of patents are being granted and licensed and applied for every day.
Which incenses you to no end.
As we are all witnesses to your cognitive dissonance.
They are the ones that are supposed to be the Watchdogs of the Constitution, as they themselves write statutory law that expressly belongs to another branch (separation of powers violation), do so without defining multiple key words (Void for Vagueness violation), and do so under the guise of what merely MAY happen
Staw away from drugs, kids.
The way to think about 101 is very easy. There is structure to the claims. Any test that adds a new abstract word (abstract, etc.) and then applies some made-up test to see if your claims are the abstract word (directed to, the same as, etc.) is nonsense.
Very simple.
It is simpler than that.
101 is meant to be a very low hurdle and welcoming gate.
ALL that it is meant to be is summed up in two — and only two — requirements:
1) Utility. Is the innovation useful within the Useful Arts (as contrasted with the Fine Arts).
2) Statutory Category. Can the innovation be portrayed in at least one of the statutory categories.
It is not an accident that “at least one of” is the operative phrase, as OFTEN an innovation may take the form of multiple statutory categories (and is one of the reasons why multiple independent claims are permitted.
I do wonder what percentage of granted patents have their multiple independent claims in different statutory categories. 70%? 80%? Over 90%?
An innovation even reaches multiple statutory categories because of just what innovation m and and how that meaning is captured with the Ladders of Abstraction.
The sAme ones here (the same anti-patent ones) heap denigration on “scriviners” and want to “celebrate” broken scoreboards of the Judicial Branch scrivining that is far worse than any scrivining by applicant’s representatives.
Yes anon that is another way to think about it.
Hey Mooney: stick it where the sun don’t shine.
The problem with the anti-patent movement is that they had all their successes through the courts. So all the destruction other than the AIA occurred by judicial activism, which means that eBay, Alice, KSR, can all be overturned by the court. It is a lot like abortion where rather than a Constitutional amendment for women’s rights, we had the SCOTUS proclaim it which means that other justices can un-proclaim it or proclaim the opposite.
The Ends do not justify the Means.
The problem with the anti-patent movement is that they had all their successes through the courts.
LOLOLOLOLOLOLOLOLOLOLOLOLOLOL
“It is a lot like abortion where rather than a Constitutional amendment for women’s rights”
The ERA failed because literally just one white cis hetero christian capitalist patriarchess decided she didn’t want it.
Get reckt.
This is an outstanding, thoughtful and positive work of analysis and wearng my Professorial hat deserves ***** mark and a merit citation.
Many of the themes are common to a brief for the Chartered Institute of Patent that I lead authored in the Ariosa Diagnostics case, see link to scotusblog.com.
We argued that the Mayo/Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field. We further argued that the panel opinion should have considered whether the claimed method falls as a matter of substance and not mere outward appearance within 35 USC §101 before considering judicial exceptions. Thus, Sequenom’s method claims were eligible as a matter of substance under the “process” category of 35 USC §101 and were neither “directed to” matter that is naturally occurring nor lacking in transformative additional features.
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. Amplifying nucleic acid of the specified provenance was also not a well-understood, routine, conventional activity previously engaged in by researchers in the field of non-invasive prenatal detection. The panel opinion confused what was conventional in that field with what was conventional in different scientific fields, for example the cancer detection. Its finding that the product of amplification was a mere natural phenomenon was both a legal and a factual misclassification. The detection step which is the third element of the claimed method also makes a hitherto unacknowledged contribution to process-eligibility, and on the Iancu analysis brings the overall process firmly into the real world divorced from the natural product or phenomenon of nature exception.
We further argued that the panel opinion erred in discounting the new utility of the ordered combination of claimed elements considered as affirmative evidence of eligibility and, instead, erroneously concluded that the claimed method of detecting paternally inherited cffDNA is not new and useful, citing Evans v Eaton, 20 US 356, 399 (1822), Webster Loom Co. v. Higgins, 105 U.S. at 591 and subsequent cases including KSR, where the Supreme Court said of the Adams invention: “The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.” This line of argument parallels Iancu’s direction not to confuse Sections 101, 102 and 103.
It is to be hoped that in suitable cases we will see amicus briefs from the USPTO to guide the CAFC and the lower courts into more realistic and positive applications of the Mayo/Alice test to the benefit of US applicants and those from other countries. Director Iancu is completely correct that the USPTO has the resources and collectively the knowledge to arrive at the most correct and legally useful interpretion of Supreme Court opinions on Section 101, and his determination to see that through should be welcomed by our entire profession. As also argued in the brief, some regard should also be paid to parallel developments internationally since the USPTO is a member of and in fact instituted the TRIPS agreement.
Don’t completely agree with you Paul, but at least you are on a rational plane and not in the spirit world and fabricating new words with private definitions that depend on whatever the finder of fact decides.
>>We argued that the Mayo/Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field.
This, though, is just more crxpola. We don’t need another test for “pioneering breakthrough” (sniff—good patent) vs. an incremental invention (sniff–bad patent).
We DO NOT need another test where a judge gets to decide based on their private little thinking whether a patent is a good patent or a bad patent.
The wrong way. This is no different than Alice where any patent can be invalidated where a judge gets a warm towel and goes into their chambers and decides whether the claims meet the Alice test. And then brings the towel out and exhibits their deed.
We do not need another one of these tests.
The analysis also does not deny claims as ineligible merely because they are broad or functionally-stated or result-oriented. I understand the concern with certain types of broad, functionally defined claims that do not have sufficient support in the specification. But for these cases, USPTO examiners know, and will receive further guidance and training on, how to apply well-defined Section 112 principles.
Of course, the fact is that the office does not know how to apply 112 to overbroad functional claims. That is a huge problem in and of itself. It is true that a lot of the same problems 101 acts upon would be defeated if the office correctly applied 112 to, e.g., computer software.
But I take issue with the first sentence. The Supreme Court has not categorically ruled out functional novelty UNDER 101. But the Supreme Court precedent sets out a 101/112b dichotomy which solved issues in the past and has not solved issues since then, and does not do so now because 112b has been corrupted.
The underlying issue is this – The system needs to reject Morse-style claims out of hand. In other words, when someone enters a new field and claims to be the last word on the field, the office is not equipped to properly judge the claim, and allowance creates a chilling effect. 103 does not solve the issue because it is a new field/function. 112a does not solve the issue because it places the burden on the office to counter-invent to create a rejection. 112b no longer solves the problem because “point out and particularly claim” has lost all meaning. Thus, 101 is necessary, and applicable.
Let’s take a concrete situation. Place the patent office long in the past, at the time when someone first invented the bow. (For purposes of this example, a bow will be the first device to fire a projectile). The actual physical description of the bow – the wood and string, will be a low dependent claim. The actual independent claim will be functionally defined – a machine that fires a projectile. 102/103 will not apply, as no other machine fires a projectile. 112a will not apply because the office is incapable of inventing the gun to prove the overbreadth. 112b will not apply because “a machine that fires a projectile” is precisely the scope that the applicant means to claim. Consequently, the independent claim will issue.
Yet it’s exceedingly clear from all the 101 cases that the outcome the court does not want is that “a machine that fires a projectile” based on the disclosure of a bow can issue. The reason is not because the gun will be later invented, but because the applicant has failed to disprove that the gun could exist. That is the logic of Morse – Morse requires the patent applicant to disprove that the functional scope contains embodiments dissimilar from the bow. 112a requires the office to point to a dissimilar embodiment as evidentiary support to show that the functional scope lacks descriptive support over its entire range.
The purpose of the judicial exceptions is to put the burden on the patentee. That is what they do. A scope of “a machine that fires a projectile” can only be issued on the disclosure of “a bow” when the patent applicant proves that the only manner of firing a projectile is in manners similar to a bow (e.g. string tension). As a practical matter that can never be done, so as a practical matter the functional scope can never issue. To place the burden upon the office is to allow the patentee to claim the abstract field (ranged weaponry) based upon a disclosure that does not show he invented everything in the field simply because the office lacks the ability to discover controlled chemical explosion (as opposed to string tension) on its own. If the claim issues it impinges upon future innovation. Nobody will invent the gun when the bow patentee controls the ability of the researcher to recoup his money.
I’ve used this example before and nobody has ever come up with any answer to it, let alone an even mildly satisfactory one. Assume that the function of the judicial exceptions are, just as the court has repeatedly said, an effort to prevent someone from claiming the entire field. Then ask how that practically will be prevented without 101. The only manner would be the engage in the same kind of “speculative” reasoning that applies in 101 analysis – having the patent examiner have an unimpeachable conclusion that what is put forward does not meet one of the standards of the statutory scheme. If you invent the bow, someone would either have to speculate that a gun may exist and reject you under 112a, which is 101 logic, or you would have to change the law under 112b to simply ignore the functional language in the specification and force a person to claim only structure, and if you did that it’s still subject to the examiner’s whim of when enough structure is “good enough” to be sufficiently limited. How is “the claim is directed to the physics of propulsion” somehow less threatening to a hopeful patentee than “the claim fails to prove that the applicant possesses the full breadth of the scope because I am not satisfied you have shown that there is no other manner of achieving the result beyond the manners you have disclosed”?
Your version of 112, Random, is NOT in accord with the law as written by Congress.
We’ve been over this many times, so your posting of “112b no longer solves the problem because “point out and particularly claim” has lost all meaning. Thus, 101 is necessary, and applicable.” only shows that you understand neither.
IF you did understand either, you would immediately recognize that you cannot interchange them just to arrive at an Ends that you feel that you want.
Stick to your case cite. Morse basically claimed “means for electromagnetic communication” and enabled the hardwire, dry contact, and symbols (dash and dot) of the telegraph. And then read the claim on AM radio. It could have been resolved under “means” claiming under 112. Which was another concept codified under the ’52 Act. Also under the reverse doctrine of equivalents?
The logic of the case was broader than the situation you suggest, and the AM radio logic is the point. The office shouldn’t have to invent AM radio in order to reject telegraph.
The so-called “chilling effect” is actually the opposite:
Necessity is the mother of invention.
It is WHEN you are blocked that you then apply the creativity to get around the blocks.
All of this namby-pamby “but that pre-empts” [psst: ALL claims pre-empt as that is what claims do] is nothing more than a judicial activist finger in the wax nose against patents that some may feel are ‘not worthy.’
Further, even the notion of “must protect building blocks” is misguided. If one applies even a shred of critical thinking as to why we even have a patent system, one realizes that patents themselves are meant to be the building blocks of tomorrow.
We want innovation to be built on other innovation.
That’s how innovation works.
This “fear” of “stifling building blocks” being realized in NOT allowing patents then is ultimately self-defeating, as by dissuading patents, one dissuades innovation.
Sure, innovation may happen without a patent system. But we HAVE a patent system in order to have innovation happen faster. In any sane society (and for any of the anti-patentists out there, let me renew an unanswered call for examples of a modern society without a patent system), one WANTS patents. Hiding behind the denigrations of “maximalist” are but two philosophies: “no patents at all” (patents are e v i l) or “no patents for you” (and there is more than one path to this End: there is the path of “Flash of Genius” or patents only for the “really deserving” sniff tested items; and there is the path of “patents for others are not good, but I should have patents for me (for a variety of reasons)).
Critical thinking.
When that is employed and the mindless ad hominem is dispelled, when the means to the Ends are thoughtfully reflected upon, the differences between strong patents and what the Court has scrivined the system into is remarkably clear.
It is WHEN you are blocked that you then apply the creativity to get around the blocks.
That’s the point of 101, you can’t get around the block. When you invent the bow and the claim is properly sized to the bow, you can invent the gun. When you invent the bow and then use broad functional language to encompass all ranged weaponry, you can’t invent the gun.
RG That’s the point of 101, you can’t get around the block.
I will grant that this arguably one of the points of 101. But it definitely isn’t the only point and the far more insidious problem (relative to the issuance of a few claims with conceptually enormous scope) is the granting of zillions of patents premised on the idea that the recitation of ineligible subject matter (e.g., non-structural content descriptors, or a correlation, or a natural phenomenon) can somehow convert a prior art tech context into a patentable “innovation.”
That problem is not a 103 problem. It’s a 101 problem precisely because it’s the recitation of the ineligible subject matter that provides the distinction over the prior art.
Who says what is it is not possible in the future?
Your “point” about not getting around is merely a projected, conjectural and ungrounded supposition.
And THAT is part of the “broken scoreboard.”
Your problem Random (or at least one of your problems) is that you think that all Ladders of Abstraction have at most two rungs.
Your view of 112 is simply too crabbed for reality.
I am with you Random, section 112 requires “particularly claiming [the invention]” and to me, that language was meant to restrict how far an applicant can generalize the embodiments of the invention in the claims. If the jurisprudence evolves such that section 101 is not used to disqualify claims that are too general, section 112 could be used instead: we just need good cases to show to the courts how it can be done, and the PTO will follow whatever the courts develop.
PiKa,
Ever hear of the Ladders of Abstraction?
(also, 101 is NOT a simple “gimmie” interchange-with-whatever-law-in-order-to-get-to-a-desired-Ends type of thing. THAT is where the adage of “nose of wax” comes in (and hint: that is not a good thing).
we just need good cases to show to the courts how it can be done, and the PTO will follow whatever the courts develop.
But it actually has been done, that’s what the law was prior to a post-52 case that said that the 52 act changed the law despite the language being virtually identical to previous forms.
Other than you being completely wrong, you might have had a point there, Random.
Two brief replies:
(1) Squeezing §101 to do work that you acknowledge should be done by §112 is like squeezing a balloon because you do not like how it is puffed out at one end. You are just going to introduce a new set of distortions elsewhere in the law with this approach.
(2) I can only take your word for it that the computer art units do not know how to use §112 to deal with the sort of problematic claims that you describe. I can assure you, however, that it is not the case that “the office does not know how to apply 112 to overbroad functional claims.” The 1600s art units routinely make §112 rejections in these circumstances. Talk, for instance, to David Steadman in 1656, and I am sure that he will be able to furnish you with a dozen office actions that reject claims of the sort you describe.
(1) Squeezing §101 to do work that you acknowledge should be done by §112 is like squeezing a balloon because you do not like how it is puffed out at one end. You are just going to introduce a new set of distortions elsewhere in the law with this approach.
Well just so we’re clear, the logical leap that everyone hates about 101 still has to exist, so I don’t know why anyone is upset whether you attach it to 101 or 112. The point is that the burden has to be on the applicant to show that they actually invented the entire field, which they cannot do, which means the scope is invalid. Whether you want to call that a categorical failure of invention under 101 or just a series of (always occurring) individual failures under scope of enablement/description is just handwaving. The complaint – “you’re rejecting me because you don’t like the scope and have absolute freedom to say when I’m ‘good enough’ to be valid or not and I have no mechanism to fight back” is going to be a problem either way.
(2) I can only take your word for it that the computer art units do not know how to use §112 to deal with the sort of problematic claims that you describe. I can assure you, however, that it is not the case that “the office does not know how to apply 112 to overbroad functional claims.”
Perhaps this is true. However, you need only look at the number of computer software cases all dealing with the same invalid subject matter (take in information and make a decision on X, without particular limitation as to how the decision is made) that are recently coming out (i.e. not patents from pre-Alice days) to know that the software arts don’t do it.
you need only look at the number of computer software cases all dealing with the same invalid subject matter (take in information and make a decision on X, without particular limitation as to how the decision is made) that are recently coming out (i.e. not patents from pre-Alice days) to know that the software arts don’t do it.
Right. These are worthless pieces of paper. They are a blight on the system and they’ve been corroding the system and the credibility of the system for decades. But it’s exactly these types of junk claims that the maximalists want more badly than anything in the whole wide world.
RG Whether you want to call that a categorical failure of invention under 101 or just a series of (always occurring) individual failures under scope of enablement/description is just handwaving.
This is a valid point. The caveat, of course, is that the CAFC has spent years coming up with ways to dull the fangs of 112 particularly in the context of “new” logic implemented by programmable computers. They are still struggling with how to convincingly dull the fangs in the 101 context (and they will always be struggling because …. logic is ineligible subject matter).
That’s why 112 is “better” than 101 in the minds of people who support logic patents. If 112 becomes worse than 101, these same people will be turning around and crying that “101 is the proper way to deal with logic on a computer claims, not 112!” That’s how they roll.
Take it to the bank.
You really need to try to understand the concept of the Ladders of Abstraction (and that more than two rungs make up such Ladders)
It makes me wonder if you have ever allowed any claim whatsoever (as even any picture claim can fall to your “but not all scope is described” ‘mentality’).
“Well just so we’re clear, the logical leap that everyone hates about 101 still has to exist”
That is decidedly UNclear.
“burden has to be on the applicant to show that they actually invented the entire field”
You want too much. Another post is caught in the “do not have a dialogue” count filter, but the essence is that even for painstakingly picture claims, there is always “more” (the analogue to your “entire field”).
There are more than two rungs to the Ladders of Abstraction — what you want is an unobtainable granularity — while pretending that there ARE only two rungs.
The problem (for you) is that scope means more than an exacting “mirror” of any claim. I can only imagine how apoplectic you get if you see the word “comprising” in a claim, or (gasp) you are ever faced with a doctrine of equivalents issue.
And as to your “penchant” with software, you really should venture out to the Slashdot/Techdirt arenas and pick up some the Math(S) philosophy about just how equivalent all of these “disparate” things are. Look up writings by PoIR .
I don’t know why anyone is upset whether you attach it to 101 or 112.
Two reasons:
(1) When a claim that is legitimately not supported by adequate description fails for lack of written description under §112, that is intuitively fair. I am sure that the applicant does not like it, but the rest of us can look at the transaction and intuit the justice of it.
When, by contrast, the claim fails because of nothing in the statute, but rather because of some unintelligible, extra-statutory distinction between claims that “recite” an abstract idea, and claims that are “directed to” an abstract idea, the intuitive fairness of the transaction is rather less than totally clear.
It is important to a rule-of-law system that the outcomes be fairly connected to the inputs. It is also important that the logic of justice running through that connection be intuitively clear. Tanking these claims under §112 honors that principle of justice. Tanking them under §101 obscures that principle. The end result is not, in other words, the only thing that matters. It also matters how one gets there.
(2) I expect that 9 out of 10 of these claims that fail the post-Bilski §101 test we can agree deserve to fail. The one tenth about which we disagree, however, strike me as really important. Sequenom made a really brilliant discovery. Their claim did not deserve to fail §112, and in a sane world it did not deserve to fail §101. When §101 turns, however, around a totally incoherent distinction between claims that “recite” a natural product and claims that are “directed to” a natural product, one is setting oneself up for arbitrary acts of injustice masquerading as “law.”
“ The end result is not, in other words, the only thing that matters. It also matters how one gets there.”
I have heard that stated on this very topic before.
(1) When a claim that is legitimately not supported by adequate description fails for lack of written description under §112, that is intuitively fair. I am sure that the applicant does not like it, but the rest of us can look at the transaction and intuit the justice of it.
But isn’t it also just as fair to say that Congress was never empowered to allow for scopes which would fail to promote the progress of the arts, and we have identified some such situations, and here is one? See to put it in the context of 112 suggests that congress could “fix” the issue (from the standpoint of “let’s patent everything” people) when in fact they cannot. That is the “outcome fairly connected to input” that actually applies.
Sequenom made a really brilliant discovery. Their claim did not deserve to fail §112, and in a sane world it did not deserve to fail §101.
Indeed we do disagree. Because discovering a previously unknown fact about the human body is not patent-logically distinct from discovering a previously unknown fact about the earth, and I reject the outcome that Congress was granted the power to tie up, e.g., the oil under a persons land just because some other person discovered that oil, paired it with a conventional drilling operation, and petitioned the federal government for a claim. Similarly, I reject the notion that one could engage in what we call journalism, and have the disclosure of previously-unknown-to-the-public fact surpass all the statutory hurdles congress put in place. The same people that prevented congress from being able to restrict the press did not give them the power to fashion any system they want that would control dissemination of journalistic fact. I think there is simply a qualitative difference in how the pro-101 and anti-101 people view the constitution’s grant of power to congress. Virtually all new information is useful in some manner, and I don’t think the intent of the constitution was to allow congress to control the flow of “new” information. To me, the fact that fetal dna exists in the mother (or whatever the teaching was) is simply not the kind of “discovery” that was meant by the constitution’s patent clause.
It’s not that I don’t think Sequenom’s disclosure is useful, or that it shouldn’t be encouraged. But I will say a similar thing here that I say in interviews – I never tell people they can’t do something, I just tell people they can’t have a patent for it. Similarly, I don’t think Congress is foreclosed from encouraging the research or the disclosure, I simply think that they are foreclosed from doing so by a grant of exclusive use.
RG I never tell people they can’t do something, I just tell people they can’t have a patent for it.
“But … but … but… nobody will ever bother to discover anything if the government doesn’t grant a monopoly on the discovery first!”
Question: But scientists have been discovering things for centuries without a promise of monopolies or riches.
“But that was before I and my fellow screeching maximalists voted to shrink the awful government and end support for scientific research! That’s why we need the government to hand out patents.”
Question: What the heck did your parents do to you to make you this way?