Framework for Statutory Reform of Section 101

A group of pro-patent senators and members of Congress have published what they are calling “a bipartisan, bicameral framework on Section 101 patent reform.”

Basics of the framework are to create a defined, closed list of subject matter category exclusions: Fundamental scientific principles; Products that exist solely and exclusively in nature; Pure mathematical formulas; Economic or commercial principles; Mental activities.  Under the framework, a patent would not be eligible based upon “simply reciting generic technical language or generic functional language.”  At the same time, the framework suggests that “practical applications” should be patent eligible.   Finally, the framework calls for a divide-and-conquer approach — making clear “that eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112.”

Sen Tillis Press Release.

109 thoughts on “Framework for Statutory Reform of Section 101

  1. 19

    This is how I would fix Section 101:

    Section 282(b)(2) of title 35 is amended to read as follows: “Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability other than Section 101.”

    Section 101 of title 35 is amended to read as follows:
    “(a) ELIGIBLE SUBJECT MATTER – Whoever invents or discovers any useful process, machine, manufacture, natural phenomena, law of nature, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
    (b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY – A claimed invention is ineligible under this section only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind and is incapable of any physical embodiment. All prior judicial exceptions to patentable subject matter are expressly overruled. This section should be interpreted broadly in favor of patentability.”
    (c) PRIVATE PROPERTY – A patent granted under this title is private property.

    1. 19.1

      …ad to your (c): The Supreme Court decision of Oil States is expressly overruled, and its reasoning is not in accord with this title.

      1. 19.1.1

        Good addition!

  2. 18

    Question: Will Abstract iDan admit that the so-called “printed matter doctrine” is, in fact, a subject matter eligibility test?

    Or will he stick his head in the sand and pretend that he was born yesterday?

    Place your bets, folks.

    And remember: the patent maximalists are the world’s biggest hypocrites. They run around the Internet screeching that only they “truly understand” the law. And yet they can’t wrap their heads around the fundamentals.

    The idea that an incoherent, internally contradictory “framework” like the one that is the subject of this post can somehow exist independently of the so-called “printed matter doctrine” (which is itself an incoherent mess), or is somehow intended to augment that doctrine, is beyond absurd.

    Grow up and address the issues, you sniveling entitled crybabies.

    1. 18.1

      Grow up and address the issues, you sniveling entitled crybabies

      Your Accuse Others is noted.

    2. 18.2

      Question: Will Abstract iDan admit that the so-called “printed matter doctrine” is, in fact, a subject matter eligibility test?

      Or will he stick his head in the sand and pretend that he was born yesterday?

      Place your bets, folks.

      I’ve got $100 bucks that says I will.

  3. 17

    Just to provide one example of the supreme ignorance and cluelessness that the patent maximalists bring to the table (courtesy of know-nothing echo chambers like Big Jeans place etc), we have a commenter down below who insists that 101 isn’t necessary because troublesome elements (eg non-obvious logic or information) can simply be ignored during the 102 and 103 analysis. Problem solved!

    If only there was a blog with a thoughtful professor who had some interest in educating his readers …

    1. 17.1

      If you’re referring to me, then again, I ask why you either don’t understand or disregard the printed matter doctrine.

      Bumping your comment to the top simply to avoid answering is c0wardly.

      1. 17.1.1

        Bumping your comment to the top simply to avoid answering is c0wardly.

        As I noted, Abstract iDan, Malcolm would run away from your question.

      2. 17.1.2

        The printed matter doctrine is an incoherent mess.

        Collins wrote in Semiotics 101: Taking the Printed Matter Doctrine Seriously, 85 Idiana U L.J. 1379 (2010):

        “The printed matter doctrine is not about information and its content, as the rhetoric of its contemporary judicial formulation suggests. Rather, it is about signs and their interpretants. The printed matter doctrine should therefore be reinterpreted in semiotic terms as the sign doctrine. The sign doctrine requires that claims to meaningful artifacts be held ineligible for patent protection if the nonobvious advance over the prior art resides solely in a representation (interpretant) in the mind of an interpreter. Judicial recognition of a semiotic framework for the printed matter doctrine would have two principal effects. First, the semiotic framework allows the printed matter doctrine to be taken seriously. It provides a conceptually coherent and statutorily justified explanation for the muddled and nonstatutory reasoning that courts and the PTO currently employ in core printed matter cases. Second, the semiotic framework suggests that the Federal Circuit should reconsider the routine patentability of newly invented computer models. When addressing computer models, the Federal Circuit today elides the sign-vehicle with the sign and therefore commits a classic semiotic error: it inappropriately reifies a newly invented semiotic meaning into a new intrinsic property of a tangible, extra-mental artifact. As a result, it sanctions a patent on a meaningful thing even when the only invention at issue resides in the mind of the person who understands the thing’s newly invented semiotic meaning. Claims to newly invented computer models literally describe a programmed computer (a sign-vehicle), yet the only inventive aspect of the claimed technology may be a new mental state in the mind of a computer user (an interpretant)”.

        Collins is obviously exactly correct here. In real life, courts and juries are not going to do a triadic sign analysis- but the result can be easily approximated by simply saying that people using information is not a patentable activity.

        1. 17.1.2.1

          Collins and “Semiotics” is itself an incoherent mess.

          He is obviously as c1ueless about patent law as you are in your willingness to engage on terrain that you simply do not understand.

          1. 17.1.2.1.1

            Collins and “Semiotics” is itself an incoherent mess.

            He is obviously as c1ueless about patent law

            ROTFLMAO

            Hey, I don’t agree with everything he says but, here on planet Earth, he was busy thinking and communicating relatively thoughtfully about this stuff while you and your s0 ckpuppet army were working overtime here to disrupt literally every serious conversation about the subject. As we all know, the only thing that has changed is you’ve stopped using s 0ck puppets …

            1. 17.1.2.1.1.1

              he was busy thinking and communicating relatively thoughtfully

              Except for the fact that you are absolutely wrong, you might have a point,

              As it is, you NOT ONLY do NOT have a point, your “run-away” from actually engaging on the merits of my work that is written in plain and direct English and directly on point from a patent perspective — and clearly NOT anything as you describe as “disruptive” — paints YOU as the one attempting to “disrupt” a clear understanding (one that you have made admissions against your interests concerning).

              Maybe try to be more on point and less wed to your propaganda.

              1. 17.1.2.1.1.1.1

                you are absolutely wrong

                LOL

                No, Bildo. You can’t re-write history. Your mental illness may keep you from remembering certain things but you can rest assured that I remember them. So does Dennis. So does Jason.

                And it’s well-documented. Better than you know.

                [shrugs]

                1. Your Accuse Others meme is being overworked Malcolm.

                  Not sure why you think you meme is effective (at all), but hey, it IS your number one meme.

        2. 17.1.2.2

          I have no idea what you just said.

      3. 17.1.3

        I ask why you either don’t understand or disregard the printed matter doctrine.

        LOL

        For the record, folks: Danny thinks that we should get rid of 101 and he believes that “102 and 103 can take of everything”. Then, as he attempts to defend that view, he invokes the so-called “printed matter doctrine” which is … a subject matter test.

        It would be hilarious except that this kind of apparently willful ignorance is rampant in certain segments of the online patent bar. Is it limited to just the smaller firms? Or do practicing patent attorneys at larger firms also struggle with the basics? My impression is that at the grown up patent firms it’s only the fresh engineering student graduates who are capable of being snowb@lled like iDan clearly has been.

        Do some reading and educate yourself:

        link to papers.ssrn.com

        Even the CAFC has managed to climb a couple rungs up the ladder with respect to this particular sub-issue.

        1. 17.1.3.1

          For the record, folks, I’ve never once said “we should get rid of 101,” nor did I say “102 and 103 can take care of *everything*”. As the record will show for anyone who can scroll down the thread, Mal obviously excepted, I said: “Why try to shoehorn in everything under 101 when 102 and 103 perfectly address *all of your concerns*?”

          There are valid reasons for applying 101. Mal’s reasons expressed below, however, are better addressed under 102 and 103.

          It would be hilarious that someone would so blatantly l1e about something that’s in black and white just a few posts down.

          1. 17.1.3.1.1

            LOLOLOLOLOLOLOLOL

            There are valid reasons for applying 101.?

            Thanks for the admission. Now tell everyone what those valid reasons are and be specific. Thanks.

            Mal’s reasons expressed below, however, are better addressed under 102 and 103.

            102 and 103 do not “address my reasons” for maintaining a sensible subject matter eligibility test within the US patent system. 102 and 103 are concerned with novelty and obviousness. As has already been pointed out, the so-called “printed matter doctrine” is a subject matter eligibility test that has no statutory basis within 102 and 103. It’s basis is in 101 (which is based, at least in part, on Constitutional concerns relating to the First Amendment). By asserting that “102 and 103” can take care of subject matter eligibility issues and THEN to invoke a judge-created printed matter doctrine which limits the application of 102 and 103 is to reveal yourself to be a very shallow thinker indeed.

            “Why try to shoehorn in everything under 101 when 102 and 103 perfectly address *all of your concerns*?”

            I never said that anybody should “try to shoehorn everything into 101”. So please top with your “blatant lies”, you sniveling little crybaby.

            1. 17.1.3.1.1.1

              There are valid reasons for applying 101.?

              Thanks for the admission. Now tell everyone what those valid reasons are and be specific. Thanks.

              Of course there are, and I’d be happy to do so as soon as you apologize for your l1e about what I said. Be specific. Thanks.

              1. 17.1.3.1.1.1.1

                as soon as you apologize for your l1e

                Poor widdle baby.

                1. Ladies and gentlemen, we have here a fine example of the level of discourse that professional lobbyists bring to the table.

                2. Abstract iDan, trust me, you have not yet been the target of the “level of discourse” that Malcolm has consistently employed on the blog (and for which, he has had more posts expunged than all other posters combined).

                  This is barely Malcolm being Malcolm that you have seen.

                  And do not make the same mistake that Night Writer makes in thinking that someone actually pays Malcolm – any sane person advocating for the position that Malcolm wants would have long ago seen how Malcolm achieves the opposite effect that such payments would desire.

              2. 17.1.3.1.1.1.2

                Abstract iDan,

                Malcolm will continue to run away.

                That is what he does.

                And of course, while running away he will engage in his all time favorite number one meme of Accuse Others Of That Which Malcolm Does/Is.

                This has been noted for several years now.

            2. 17.1.3.1.1.2

              (which is based, at least in part, on Constitutional concerns relating to the First Amendment).

              Merely mouthing (again) “First Amendment” as you are so apt to do, while never actually providing a cogent First Amendment argument, is so NOT persuasive.

              Your typical Accuse Others of “very shallow thinker indeed” is almost humorless (except for the fact that you may actually believe your own propaganda and have become so lost in your own meme that you are just out of touch with reality).

        2. 17.1.3.2

          You too referring to Collins and “Semiotics” as some type of “education” is…

          … stultifying.

          You offer a crackp0t academic as some type of “voucher” for “even the CAFC has managed to climb a couple rungs” all the while refusing to even acknowledge the very direct, plain English, and easy to understand Set Theory explication that I provided to you.

          Beyond cowardly.
          Beyond unethical.

          1. 17.1.3.2.1

            a crackp0t academic

            As opposed to Bildo. And his new bff “Abstract iDan” who apparently had no clue that the so-called “printed matter doctrine” was, in fact, a subject matter eligibility test.

            1. 17.1.3.2.1.1

              …as opposed to your own “clued-in” admissions against interests concerning that very same “printed matter doctrine”…?

              Or perhaps as opposed to your refusal to BE “clued-in” with the simple and direct English explication that I provided regarding the exceptions to the judicial doctrine of printed matter….?

              Please, Malcolm, tell me more.

            2. 17.1.3.2.1.2

              And his new bff

              Your one-bucketing is noted.

  4. 16

    Ha- When Night Wiper and anon go after each other, it leaves them both friendless. What a classic thread.

    What would be interesting (and likely dispositive) is how the various lobbyists really feel about this.

    The patent bar wants more cases with longer dockets, since each docket entry on patent case is worth about ten thousand bucks.

    The pharma lobby wants to make sure they can evergreen their claims for as long has imagination allows, and they don’t much care about the diagnostic sellers, who are really mostly selling information; information that leads to drug sales with or without patents on the information.

    Big Tech does not mind paying modest litigation costs (in their scheme of things) to keep upstarts at bay, but does not want to risk major litigation and damages costs in zero-sum warfare among themselves, and they would prefer not to maintain major prosecution and maintenance budgets if those line items weren’t needed for MAD purposes.

    The courts don’t want a huge number of cases, but they don’t want zero cases either- not low enough to risk budgets or reputations- and the cases the do get, they want to be procedurally certain and relatively quick.

    Nobody cares what individual inventors or small business want or need.

    So what 101 language gets them there? The bar would be thrilled to see 12(b)6 go away. The courts would like a bright-line 101 test. Big Tech would like to see their subject matter out of the system , but with enough ambiguity left that they could intimidate newcomers. The pols would like to appear wise and be able to appease the very angry but numerically few people on the wrong end of the injustice of the current setup while not appearing to hinder the magic conjurers of modern miracles like self-driving cars and talking appliances.

    Everyone needs a creative, practical, political compromise that makes rational sense. Y’all know my answer already.

    link to papers.ssrn.com

    1. 16.1

      Friendless?

      Meh, this is not a “for friends” thing, and if you think it is, then you are in the wrong place.

      The better view Marty is that I am more than comfortable pointing out when someone is plain wrong – be that person a typical anti-patent person or be that person a typical pro-patent person.

      As it is, Night Writer is completely wrong on the particular point under discussion and I have no qualms taking him to task for that.

      As for being completely wrong, there is nothing new in your tr@sh that warrants you attempting to peddle that into the current thread – NOTHING in the Senate guidelines even remotely resembles your brainf@rt.

  5. 15

    So the proposal would be to (1) replace the abstract idea exception by a list consisting of pure mathematical formula, mental activities, economic and commercial principles, which are currently lumped under the abstract exception, and (2) replace the inventive concept test with a practical application test, neither of which is precisely defined. I hope the Senators will analyze in detail how this proposal changes the outcome of the Supreme Court cases on eligibility. Without the analysis, it is hard for me to appreciate what this proposal does.

    1. 15.1

      PiKa,

      There is a larger point here to be recognized.

      With this Senate action, we have all three branches of the government going on record in being critical of the mess created by the Supreme Court (in various degrees).

      We have the Judicial Branch with multiple CAFC opinions commenting on the unworkable mess (and at the same time adding more and more layers to the Gordian Knot).

      We have the Executive Branch with Director Iancu explicitly stating that the new Common Law approach has created incompatible and inconsistent results (i.e., a Gordian Knot).

      We have had multiple Legislative Branch proposals now that point to the fact that 101 has to be reset from the current mess of Common Law written Knot.

      While the guidelines do not more critical thinking, we ALL should reflect that most everyone is recognizing that wha the Court has done is not only wrong, but egregiously wrong and needs to be fixed.

      Some are still in denial of that fact.

      1. 15.1.1

        Autocorrect strikes again.
        “While the guidelines do not more critical thinking,”

        Should read:

        “While the guidelines do need more critical thinking,”

        and let me add that the Iancu effort — while imperfect as it is — IS an attempt to not have the Executive Branch be complicit in adding more layers to the Gordian Knot of Common Law law writing with its multiple off-ramps.

        A critical element is that the Common Law law writing of statutory law must stop.

        Some of the comments so far have focused on the “and only these explicit exceptions” tone. Some have called for a more direct “the Court must apply strict statutory construction and not add any exceptions (mirroring Schein).

        And some (mostly me) have called for Congress to exercise its Constitutional power of jurisdiction stripping in an explicit manner.

        The unifying theme behind each of these paths though is the same — and is reflected in the other shear of the Kavanaugh Scissors (the oral arguments of California Franchise Tax Board v Hyatt), which provides the path for the Court to directly apply the holding of Schein and cut the Gordian Knot.

      2. 15.1.2

        Note that even if “new” is removed from 35 U.S.C. 101 it’s title still reads “Inventions patentable.” Does not the Sup. Ct. still get to determine what that “inventions” means and its scope to the extent not specifically defined by statute? Likewise the words “useful arts” “inventors” and”discoveries” in the patent provision of the Constitution?

        1. 15.1.2.1

          As to “inventions,” not since 1952.

          Did you really need to ask that?

          1. 15.1.2.1.1

            Please point out the specific “definition” of “invention” in the 1952 Patent Act, as I assume you are suggesting. It ain’t 103, as widely touted, since it only provides some of the “conditions” on “patentability” beyond 102.

            1. 15.1.2.1.1.1

              See Judge Rich’s well known commentary.

              (it’s only been around for more than 50 years)

              1. 15.1.2.1.1.1.1

                I don’t think anyone else here thinks Sup. Ct. decisions are overruled or controlled by mere commentary. Also Prof. Sarnoff’s blog comment above on this is interesting:
                “..we agree that the 1952 Act did not clearly overrule Funk Brothers. This is important so that people will not continue to argue that Giles Rich was correct in his later revisionist history (see link to books.google.com) that all questions of inventive creativity were placed in Section 103 by the 1952 Act, notwithstanding that P.J. Federico, who was the other principal co-author of the 1952 Act, argued the opposite – successfully – in the Application of Ducci case, 225 F.2d 683 (C.C.P.A. 1955) that Section 101’s “process” category (incorporating Section 100(b)’s definition of “process”) continued the “analogous use” test of inventive creativity requirement for claimed processes that the Supreme Court had articulated in Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U.S. 11 (1892)).”

                1. I saw this on the Sarnoff thread – and responded there.

                  For all of your “don’t think anyone else here thinks Sup. Ct. decisions are overruled or controlled by mere commentary” expressed view, I would much more highly bank on the commentary of a learned judge who had a direct hand in writing the particular section of law than I would with an academic with a predisposed bent to his own version of law.

    2. 15.2

      This proposal does nothing except give Bildo and Co a tiny hard-on so they have something to play with.

      Otherwise a big nothing burger. As soon as the adults get involved, this “framework” will just be another joke in the long sad story of patent grifting.

      1. 15.2.1

        Your 0bsess10n with things se x ua1 pervades your posts again.

        Have you not had enough of those types of posts expunged? Why is it that you thoughts are so bound to that mode?

      2. 15.2.2

        simultaneously sinking [ ] discourse generally further into the gutter (assuming that’s even possible in 2019).

  6. 14

    Perhaps inadvertent, but most definitely needing to be corrected, the article here states as a “must” what in the actual guidelines is ONLY a suggestion.

    To wit, here:

    Basics of the framework are to create a defined, closed list of subject matter category exclusions:

    Contrast with in the actual guidelines:

    The sole list of exclusions might include the following categories, for example:

    Tillis et al really need to have it emphasized that they should not include the very things that have mucked things up.

  7. 13

    Sounds awfully like: “we’re going to codify Alice, but it’ll be clear now.” Who is supposed to believe this?

    1. 13.1

      and who wants to codify the nonsense that is Alice.

  8. 12

    Good to see Sens. Coons and Tillis get the ball rolling on 101 reform. Very much needed.

  9. 11

    Practical applications all involve mental activities. Metal Activities must be stricken from the list.

  10. 10

    Kind of amazing that this needs to be explained to anyone with even the slightest knowledge of our patent system but if (e.g.) an infinitely broad term like “process” is intended to be a magic word for 101 satisfaction then you can’t prohibit “considering” the relationship of the other elements in the claim to the rest of the universe (eg the prior art).

    These derpwads seem to understand this at one point but what they provided here is an incoherent mess that reaches historical levels of hackitude and ignorance. This will be held up in their faces and their noses will be rubbed in it. Forever.

    1. 10.1

      Eligibility and patentability are distinct concepts.

      Stop playing the confuse and conflate game.

      1. 10.1.1

        You’re the one who is “confusing” things, Bildo.

        And we all know why we do it.

        [shrugs]

        1. 10.1.1.1

          Lol – darn spell correct. Should be why YOU do it, of course.

          1. 10.1.1.1.1

            From your 0bsess10ns to your Freudian slips, you are in the Oh So Malcolm mode today…

  11. 9

    Alice ties in the justification for invalidating the claims in Alice with the Constitutional need to promote. I think this may cause more trouble as the SCOTUS may just say that they don’t care about the statute at all and that this is a Constitutional issue.

    Also, Oil States should be overturned by Congress.

    1. 9.1

      I’d add that I think the odds of pro-patent reform happening are about –0– (ZERO).

    2. 9.2

      Your (oft-repeated) stance on “Court-Constitutional” ties has been thoroughly thrashed at that other blog.

      For every one “Constitutional” plank you advance, at least three counters exist.

      Do you really want to sm@ck yourself in the face three times like that?

      1. 9.2.1

        anon,

        Don’t be supercilious. You and one other person disagree with me and never addressed the substance of my argument. The only thing you proved is that you are incapable of understanding a Constitutional argument.

        1. 9.2.1.1

          LOL – never addressed? How about “ripped to shreds.”

          Try to get it right.

          incapable of understanding a Constitutional argument.

          Leave the Accuse Others meme to Malcolm. It is you that never answered the three-prong counter.

          1. 9.2.1.1.1

            anon, if I were “ripped to shreds” I am sure I would know it.

            You made no credible argument. That is my assessment of your efforts. Nice that you have proclaimed yourself victor in your own mind.

            1. 9.2.1.1.1.1

              Your “knowing” and your “assessment” are clearly out to lunch.

              Maybe instead of merely repeating yourself (and your rather lame falsehood that your points have not been addressed), you actually engage the counter points out to you and not just conclusory “declare” “not credible.” Maybe show why each point is not credible or where ANY weakness in the multi-prong rejoinder is? As of now, all that YOU have done is declared your position without showing any work on how you got there. The counter points STILL await your joining the conversation on the merits.

      2. 9.2.2

        You really can be offensive anon. You didn’t win any argument on the other blog but persisted in repeating the same thing over and over without addressing my arguments.

        1. 9.2.2.1

          Wrong Night Writer – your arguments were fully addressed. And the “repeat over and over” was merely attempting to get you to come to the table.

          Something you have yet to do.

          1. 9.2.2.1.1

            anon, dude you have been arguing with MM too long.

            1. 9.2.2.1.1.1

              and you have not yet begun to argue (seeing as you have not yet replied on the merits).

              The ball is STILL in your court, Night Writer. Please do not pretend otherwise.

        2. 9.2.2.2

          How have you not previously noticed this to be his modus operandi?

          1. 9.2.2.2.1

            Translation: “Wah, I cannot compete with what anon says so I will whine that he is not nice.”

            Feeling sad, Ben? Get a puppy. Don’t like the positions I advance? Try upping your game and responding on point instead of whining like a little girl.

  12. 8

    Any 101 reform will have to be accompanied by tightening 112, probably closer to Europe, but not as far as China.

    1. 8.1

      If done properly–not by the lowlife anti-patent judicial activists at the CAFC–tightening 112 would be a good idea.

    2. 8.2

      Same reply as prior is appropriate here, SOSitA – you must keep in mind the fact that patents are LEGAL documents.

      And I would also add here that the very actions of the courts (vis a vis Patent Profanity) is one of the reasons WHY these legal documents NEED NOT BE as “engineering intensive” as YOU might like them to be. When the Court strengthens PHOSITA, that strength is reflected in a lessening of what needs be in the legal document.

      1. 8.2.1

        Actually what the CAFC (not really a court as much as a hired mob) has done has made the PHOSITA (I will use for both cases) less knowledgeable for 112 and more knowledgeable for 103.

        Quite a feat. Thanks Obama. I hope all the money you got for that was worth it.

        1. 8.2.1.1

          less knowledgeable for 112 and more knowledgeable for 103.

          Not.
          Possible.

          Further, this is NOT so attributable to the CAFC (even though you would rather focus there, and yes, they TOO are to blame, but they are simply not the root cause).

          And that is simply part and parcel of the problem.

        2. 8.2.1.2

          Oh, look, the conspiracy theories are back.

          1. 8.2.1.2.1

            ?

            What is it that you think is “conspiracy” that is being discussed here?

        3. 8.2.1.3

          Dear Night Writer,

          You’re “thanking” the wrong president. link to en.wikipedia.org

          Also, you all remind me why it’s a bad idea to read the comments section.

          Sincerely,

          Working Patent Prosecutor

      2. 8.2.2

        While you may be correct from a standpoint of ennoblement, written description is the requirement that needs to be tightened. You should have to describe precisely what it is you have invented. Have you invented a specific method of using kiosks to book vacations using a set of predetermined questions and prompts? Good for you, but this does not mean you invented the foundations of e-commerce on websites.

        1. 8.2.2.1

          Again, from a legal standpoint, what you seem to want is already there. What you seem to want is instead an engineering viewpoint, of which the legal document is simply not the right vehicle for what you want.

          This is why I keep on stressing the fact that you need to recognize the context of the item at hand.

          1. 8.2.2.1.1

            It may be there, but it certainly isn’t being enforced to the level it should. I want a legal document that spells out what the inventor actually invented and claims that are only directly traceable to that exact invention.

            1. 8.2.2.1.1.1

              Yet again – your desire for “exactness” is not reflecting the legal view.

              You are just out of context with what you want.

              May I suggest that you try to understand the legal context – maybe read Slusky’s Invention Analysis and Claiming.

  13. 7

    I wait with great anticipation to see the actual wording of the proposed legislation that clearly, without ambiguity, layout these principles.

    1. 7.1

      MUCH LIKE the problem with Director Iancu’s new eligibility protocols**, there is a very real “inherited” problem with any solution that starts with accepting as a premise that what the Supreme Court has done is anything but a Gordian Knot.

      While at least here, the correct branch of the government is contemplating the changes, there still needs be critical thinking and a rejection of the ham-fisted scrivining from the Bench that — unfortunately — STILL sees too much traction in these guidelines.

      One thing to be fearful of is that this becomes a half-measure that removes the pressure (but does not provide a full solution) to the mess that the Supreme Court has made.

      There are times to “play nice,” and there are times when “playing nice” is the absolute worst thing to do. While the current guidelines likely do not slide to either end of that spectrum, fundamentals and root cause analysis (which should ring bells with the technical side of all patent attorneys) DO scream out for more care with these guidelines.

      **See my first posts on this topic – some of the very first thoughtful views shared with the blogosphere.

    2. 7.2

      And when that “clarity” and coherency arrives the patent maximalists will whine like even bigger entitled babies.

  14. 6

    Definitely OT, but far more likely to soon impact more patent attorneys:
    “Anheuser-Busch InBev SA and Heineken NV [two huge brewers] are fighting over who invented key parts of a new way to deliver draft beer that allows for smaller batches and eliminates the need for traditional steel kegs, which use compressed air and can degrade flavor over time.
    The companies started the first of two patent-infringement trials on Tuesday over the technology at the U.S. International Trade Commission in Washington. AB InBev says it developed the beer canisters, while Heineken — whose case goes first — contends it invented the dispenser equipment. Each is trying to keep the other out of the U.S. market to provide draft beer to smaller pubs and homes.”

  15. 5

    Though well-intentioned; as commentators and posters explain on IPWatchdog; this approach Will. Not. Work:

    link to ipwatchdog.com

    link to ipwatchdog.com

    The only certain way to protect American innovation is to abolish 101.

    Second best is Sherry Knowles’ excellent, elegantly quick, easy, and simple re-codifying of 101:

    “Whoever invents or applies a discovery which results in 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. Judicial exceptions to this statute are expressly prohibited, and instead, the Court is required to carry out strict statutory construction.”

    Confusion ended. Problem solved. American innovation preserved.

    Forever.

    1. 5.1

      I like the “any” because IMHO current analysis tends to apply 102 reasoning to the “new” part of “new and useful.” With the “any” it seems any new and useful elements additional to a purported underlying discovery renders the claims patent-eligible. I.e., that once some analysis identifies the discovery in a given claim, anything more is sufficient as long as it is useful. That is, “new” relative to the discovery, not the prior art.

      So if I understand the above correctly, Morse would have been patent-eligible because modulating an EM signal is new and useful over the discovery of EM signals or codification of some medium (whichever one is considered the ‘discovery’ as the starting point). But I think most would say Morse was not novel because modulating an EM signal had already been described in a printed publication (e.g., fire signaling).

  16. 4

    Under the framework, a patent would not be eligible based upon “simply reciting generic technical language or generic functional language.”

    And just like that, software patents are gone.

    1. 4.1

      Right, except that “eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112.”

      It’s anybody’s guess, of course, how one is supposed to determine if an element is “generic technical language” or “generic functional language” without engaging in a “consideration” that is a “consideration properly addressed by 102”.

      It’s almost as if these silly Congresspeople were just handed a bunch of debunked unworkable nonsense crayoned by greedy self-interested hacks who are unhappy that they have to (OMG) compete in the marketplace without monopolies on basic logic, correlations and observable scientific phenomena. But that would never happen. The patent community is too serious and mature to allow that to happen.

      1. 4.1.1

        It’s anybody’s guess, of course, how one is supposed to determine if an element is “generic technical language” or “generic functional language” without engaging in a “consideration” that is a “consideration properly addressed by 102″ or a “consideration properly addressed by 112.”

        Fixed for completeness.

        Also, what about a claim that describes ineligible non-obvious subject matter but adds non-generic but otherwise totally obvious “technical language”? That sails through? Why on earth should that be the case?

        1. 4.1.1.1

          Your cognitive dissonance is noted.

    2. 4.2

      And just like that, Random is absolutely wrong.

      Again.

    3. 4.3

      and just what functional language is generic and what functional language is not?

  17. 3

    I wish Congressional well in attempts to address the confusions over the Sup. Ct. exceptions to present 101. But how will such legislation satisfy those who want more, or want less, or who want a “bright line” test w/o new ambiguities? Also, I thought this proposal was also going to remove the “new” requirement from 101? That could be even more controversial.
    In medical diagnostics, and software enabled patents, such potential changes are of particular interest. The previous significant lobbying influence in the medical products industry has been impacted by the bad publicity from certain enhanced medical costs. Meanwhile, the now huge software and computer products companies have greatly increased their lobbying budgets in recent years. The two different industries lobbying efforts seem to often be on opposing sides.
    In short, I do not see how this kind of legislation will be easy to enact?

    1. 3.1

      “In short, I do not see how this kind of legislation will be easy to enact?”

      It wouldn’t be, if that was the point. No matter the outcome, it’ll give these legislators something to talk about in a stalled congress. It’s a dog and pony show.

      1. 3.1.1

        You may well be correct here, and staking out the “high ground” that what the Court has done is the cause of loss of world-wide innovation leadership is quite likely a posture that those opposing any such moves will be hard pressed to defend.

        But it IS very much a political gambit.

  18. 2

    The blowback for every Congressperson who signs on to this disgusting bull cr @p is going to be so extreme they won’t know what hit them. It’s a thinly disguised giveaway to the same b0 tt0m feeding cre eps and their water-carriers
    (e.g., Gene Quinn and Kevin Noonan and his Patent Crocks) who have been l y in g to the public about Prometheus v. Mayo for years.

    eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112

    LOL

    What does it mean to “consider each and every element of the claim” and to simultaneously ignore how those elements relate to the prior art? How does that work unless the idea is to turn 101 into a kindergarten-grade drafting requirement?

    And what is this magical “practical application test”? How does it work? How does it differ from the existing utility requirement? For some mysterious reason, they don’t provide any details at all.

    create a defined, closed list of subject matter category exclusions: Fundamental scientific principles; Products that exist solely and exclusively in nature; Pure mathematical formulas; Economic or commercial principles; Mental activities.

    Must be a j0 ke, right?

    So I can patent a method of drinking a glass of milk and thinking about a non-obvious correlation? Because “drinking milk” is not a “mental activity” and drinking milk is good for my body and I can’t consider the fact that drinking milk is in the prior art because that’s not allowed.

    This is hackery. Nice job, Dennis, of publishing this cr @p as if it’s something other than cr @p. Are you getting paid to do that?

    1. 2.1

      Lol.

      “B-b-but how is this done?”

      Already answered: to simply NOT engage in “conflation and confusion.”

      You are welcome.

      1. 2.1.1

        “B-b-but how is this done?”

        I’m not the one who is “confused” by the basics of subject matter eligibility, Bildo. That would be you and your cohorts.

        I’m also not the one who thinks that information (e.g., correlations) and logic should be protectable using a utility patent. That’s also a “you” problem.

        Lastly, throwing around the term “conflation” as if it means something is a pretty silly way to address a straightforward hypothetical that reveals this “proposal” to be a pile of vapid hooey.

        1. 2.1.1.1

          How goes that copyright project on “just logic?”

    2. 2.2

      “…the idea is to turn 101 into a kindergarten-grade drafting requirement?”

      Exactly. And thereby eliminate subjective opinions over what is and is not patent eligible. We would do well as a country if understanding the requirements for patent eligibility were made to be understandable… even by a kindergartner.

    3. 2.3

      “How does that work unless the idea is to turn 101 into a kindergarten-grade drafting requirement?”

      That’s the basic idea bruh.

      1. 2.3.1

        Malcolm does not handle basic ideas very well.

  19. 1

    Need a correction for:

    Finally, the framework calls for a divide-and-conquer approach

    As the proposed approach is an ANTI-“divide and conquer”

    1. 1.1

      …in the sense that current Common Law approaches DO resemble a “divide and conquer” approach by attempts to parse claims and not (legitimately) take the claim as a whole.

      In a different sense of “divide” 101 from the other aspects of 102/103/112, some MIGHT call this “divide and conquer,” but the more appropriate term would be to simply NOT engage in “conflation and confusion.”

      1. 1.1.1

        A manufacture, comprising a blank piece of paper and printed words, wherein the printed words communicate [insert non-obvious correlation.]

        Under current law, this is ineligible because the only novel feature of the claim is the ineligible subject matter (i.e., information). Put another way, the claim is ineligible because, in the context of the prior art which exists for storing information, the claim prevents the public from accessing information in that prior art context without liability. In other words, the claim protects ineligible subject matter in that prior art context.

        What is “confusing” about this? Where is the “conflation”? The answer is that there isn’t any conflation and nothing about it is confusing at all.

        Are you confused, Dennis? If so, let everyone know what confuses you about the application of basic reason and logic and Supreme Court case law to a straightforward ineligible claim like this one. Start from the basics and work from there.

        This is how intellectually honest people approach the problem, by the way. Pick your side.

        1. 1.1.1.1

          How goes your even attempting to understand the simple set theory explication of the exceptions to the judicial doctrine of printed matter?

          THAT would require YOU to be inte11ectually honest.

          We both know that refuse to engage on the merits and we both know why.

          Put your Accuse Others meme to rest.

          1. 1.1.1.1.1

            I usually just read and don’t chime in; but anon, I hope you realize how badly you repeatedly get worked over by MM. You say he refuses to engage, yet you complete ignore his “manufacture” example that would somehow be eligible under the proposed congressional test.

        2. 1.1.1.2

          A manufacture, comprising a blank piece of paper and printed words, wherein the printed words communicate [insert non-obvious correlation.]

          Under current law, this is ineligible because the only novel feature of the claim is the ineligible subject matter (i.e., information).

          Under current law, this is directed to an eligible article of manufacture under 101, but one that’s anticipated under 102 as the printed matter is given no patentable weight, and the remaining portions of the claim are in the prior art and have been for millennia. See MPEP 2111.05 and note that cases in which printed matter included non-obvious information were found invalid over prior art, not merely directed to ineligible subject matter.

          Why try to shoehorn in everything under 101 when 102 and 103 perfectly address all of your concerns?

          1. 1.1.1.2.1

            Just out of curiosity: where did they idea that “printed matter” elements can be ignored when determining 102 and 103 come from? Tell everyone the source of that “sleight of hand” which you believe “solves” (lol) the “problem” (lololol) with 101.

            1. 1.1.1.2.1.1

              See, e.g., In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015); In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); etc.

          2. 1.1.1.2.2

            … and note that cases in which printed matter included non-obvious information were found invalid over prior art, not merely directed to ineligible subject matter.

            Why try to shoehorn in everything under 101 when 102 and 103 perfectly address all of your concerns?

            Why indeed.

            I might be tempted to offer that Malcolm is merely confused. That as a purported attorney, that he would know that it was unethical to advocate in a knowing manner in a way that purposefully (regardless of his purpose) maltreated and was DISHONEST as to controlling law and the background to that law (and yes, his advocacy ‘merely on a blog’ is STILL advocacy).

            But everyone following along knows better.

            A few years back now, in a discussion with David Stein, Malcolm made the admission against his interests that he not only knew the controlling law at point, he understood it to be exactly as you point out here, Abstract iDan.

            His admission makes his continuing tired and trite propaganda efforts outright unethical.

            He has run the gamut from outright denial of his admission to simply ignoring the consequence of his admission.

            Further, in a direct manner and using simple and easy to understand English, I outlined for Malcolm the background to the very point that you explicate here – the exceptions to the judicial doctrine of printed matter – in a Simple Set theory explication, and invited – without snark – Malcolm to join the conversation and point out any flaws or errors or even just his ‘feelings” on that direct and simple explication.

            He ran away.

            He ran away from the direct and repeated invitation.
            He ran away from the hyperlinks to the invitation.
            He ran away from the reposting of the invitation.

            You ask “why?” and that is a fair question.

            It is also a question that Malcolm will just run away from.

            He really is NOT interested in any actual discussion on the merits. For that, he would have to recognize the illegitimacy of his tactics – and he would have admit that it is merely his feelings that he is parading about with.

            He only has his feelings to pound.
            He does not have the law to pound.
            He does not have facts to pound.

            Why indeed.

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