The heads of the Senate and House Intellectual Property Subcommittees recently released a draft bill focusing on reforming Section 101 of the Patent Act — the proposal is “intended to solicit feedback.” A number of hearings are beings scheduled over the course of the next month. What this means is that we have a substantial effort to make something happen.
The draft proposal:
Section 101:
(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any
new anduseful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.
Section 100 (Definitions):
(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.
Section 112
(f) Functional Claim Elements
Element in Claim for a Combination— An element in a claimfor a combination may beexpressed asa means or step for performinga specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.
The proposal also suggests further language be added to construe the statute “in favor of eligibility” and to expressly eliminate the non-statutory exceptions to eligibility.
I realize that the committee who drafted this statutory revision was really trying to address the (legitimately untoward) §101 consequences that have followed from Bilsk/Mayo/Myriad/Alice, so they can be forgiven for paying less attention to other problems that merit a statutory solution. Nevertheless, as long as they are evidently willing to take a pen to §112, I would suggest to them that much improvement could be made to the overall functioning of the patent system if they were to amend §112(b) to require that claims be presented in what is presently known as Jepson format.
“to require that claims be presented in what is presently known as Jepson format.”
So tell me Greg. how LOW is the current usage of that optional claim form?
How can you want a “tail of a flea wagging the dog” scenario to be played out because you feel (no doubt based on your limited art field experience) that THAT option should be mandated?
There’s a side benefit of a Jepson requirement worth noting: the PTO could cut the time allocated for examination (and thus cut fees or reduce pendency) by a significant percentage.
I would scarcely consider the improvement of the examination process a “side” benefit. This is one of the main benefits of the proposal. I suppose that improved examination will lead to a better quality of enforcement as well, because fewer invalid claims will slip through the PTO. Most of the benefits of the proposal come, however, as a function of the improved quality of examination that would result from the mandatory Jepson rule.
I am not really disagreeing with you, in other words. I just want to quibble with the word choice of describing this as a “side” benefit, as if it were a small thing.
From my perspective the point of the Jepson requirement would be to improve examination quality, and that any improvement in examination cost/pendency would be auxiliary. So “side benefit” still seems right to me, but I do see how it could be framed otherwise.
Ah, I see what you mean. Fair enough. I had misunderstood which benefit you were treating as the “side” benefit in 20.2
[T]he PTO could… cut fees or reduce pendency…
This might be a controversial assertion, but I think that the PTO should always set fees (or at least application and search fees) to maximize operating revenue. That is to say, the mere fact that they could run the office at a given quality level with fewer funds should never be a reason to lower the fees. Rather, the fees should (at least in part) serve as a disincentive against filing on frivolous claims, and if the fees go too low, they lose that disincentive character.
Reducing pendency, however, is self-evidently a good in itself. If the PTO can accelerate the rate and which patentable subject matter is identified in a given application at any given fee level, they should always try to achieve this accelerated process (consistent with the desired level of quality).
The Sport of Kings aspect of “Rather, the fees should (at least in part) serve as a disincentive against filing on frivolous claims, and if the fees go too low, they lose that disincentive character.” is precisely OPPOSITE of what the original Sovereign thinking was as to having a patent system.
Greg’s Big Pharma bias is showing through.
… at least application and search fees…
IPR fees as well. Once again, you want the fees to serve as a disincentive against frivolous or harrassing filings. Also, there should be no refund (even partial) when an IPR is not instituted.
Greggy McWeggy, down below: Certain on these boards (e.g., MM) believe that all functions executed on a processor are inherent in the processor itself.
That’s a very silly misrepresentation. What I believe is that an old processor that was designed for the purpose of carrying out instructions to perform logic operations on data does not become a “new machine” when it … receives and carries out the instructions that it was designed to receive and carry out. The logical operations themselves are ineligible on their own terms (nothing remotely controversial about that), for reasons that are well understood and admitted by intellectually honest people throughout the legal system (including Congress). The mere recitation of a ubiquitous prior art machine can not confer eligibility upon the instructions, nor can it confer eligibility upon the logical operations. What could confer eligibility upon those instructions or logical operations? Simple: the recitation of non-obvious objective physical structure, i.e., a legally inventive solution to the alleged problem being solved, as opposed to some vaporous handwaving about “configured to” functionality.
the better argument is that—just as not all materials are “inherently” disclosed by the disclosure of atomic elements from which such materials are constructed—so too, not all functions of a processor are inherently disclosed in the disclosure of a processor.
See above, Greg. This is, in fact, a terrible argument and there is literally no patent jurist anywhere on earth that will accept your argument once your opponent (i.e., me) points out to the world (for the zillionth time) that your analogy falls apart at the point where valid, eligible patent claims to “new materials” necessarily recite the non-obvious arrangement/amounts/configurations of ‘atomic elements’.
The only “exception” that ever existed to this rule was the so-called “antibody exception” (now completely eviscerated), which was never upheld by any court upon challenge. Note also that the antibody exception was admitted to be an exception to the rule. That alone sets it apart from the patenting of logic “on a computer” which is still treated as if it flows naturally from existing law when, in fact, the “on a computer” exception to the patenting of logic was created out of thin air by some incredibly short-sighted jurists.
By the way, has anybody noticed a massive decline in the production of novel antibodies after the complete evisceration of the antibody exception? Me neither. What about you, Greg?
“What could confer eligibility upon those instructions or logical operations? Simple: the recitation of non-obvious objective physical structure”
You do realize the p00r logic of your own reasoning when what you want is the elevation of a particular optional claim format to be NOT optional, right?
This has been pointed out to you only like a bajillion times.
Not only that, but this has been deconstructed with the fact that software COULD be claimed in your vaunted “objective physical structure” optional format, and be entirely equivalent to the other optional form that you appear to not to like.
Talk about analogies falling apart… (and yes, your Accuse Others meme is in play yet again).
Section 100(b) should read:
The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. The term “process” excludes any process which results in information consumed by human beings, excepting processes that improve information processing without regard to the particular content or meaning of the processed information”.
You still don’t grasp what utility entails.
… and more Malcolm expungements here…
“The term “process” excludes any process which results in information consumed by human beings,…
ALL processes that possess utility in the patent sense necessarily “results in” the mere capability of producing information consumable by humans. This is merely an aspect of what “utility” means.
“…excepting processes that improve information processing without regard to the particular content or meaning of the processed information”.”
Your bias is on display, and innovation protection simply has NO statutory tether to the particular constraint that you “think” to be some great “compromise.”
Such is simply neither necessary nor advisable — and readily seen to be so (if you ever bother to understand the terrain upon which you wish you to do battle).
innovation protection simply has NO statutory tether to the particular constraint that you “think” to be some great “compromise.”
“Derp derp gobbleydook word salad derp derp.”
ALL processes that possess utility in the patent sense necessarily “results in” the mere capability of producing information consumable by humans.
It’s easy to fix Martin’s language: The term “process” excludes any process whose primary purpose is to produce information intended for consumption by human beings, excepting processes that improve information processing without regard to the particular content or meaning of the processed information, and excepting processes which include non-obvious transformations of matter or which recite a non-obvious machine in objective structural terms.
Note that this language still confers eligibility upon a vast amount of logic carried out by a prior composition of matter (which I believe should remain ineligible). For that reason, I don’t support Martin’s “compromise”. That said, it’s undoubtedly a step in the right direction and would represent a huge improvement over the status quo.
And still, you have no tether to the actual law written by Congress.
How about traffic signal technology? Their can be no doubt that THAT is concerned with a primary purpose of providing information intended for consumption of human beings.
Even with your change to “primary purpose,” you simply do not “get” to change the law.
All you do is obfuscate between Useful Arts and Fine Arts – the latter being the type of “for human consumption” that is not intended to have the innovation protection of patents. Note here as well that methods of manufacture of devices that would have their primary purpose to be providing “information” intended for consumption of human beings ARE intended to be able to obtain innovation protection from patents (think manufacturing Stradivarius violins, as opposed to playing them).
Maybe instead of baseless accusations, you might want to seek out some help for your cognitive dissonance.
anon you elide the distinction between a traffic light, which is a machine, and stopping a red light, which is a process.
Patent new and improved traffic lights to your heart’s content. In a sane legal regime, you cannot patent the idea of stopping at a red light.
It’s a very simple analysis.
Is it a process? Is the useful result of the process some species of information? Who uses that information?
A traffic light is not a process. A speedometer is not a process. Ladies’ Night at the local Cork & Bottle ain’t a process either.
I “elide” nothing and speak to the direct point at hand.
Yes, a traffic light is a machine – a machine that has a very direct purpose directly in point to the conversation.
You yourself are doing the “eliding” between a process and a result of a process.
Maybe instead of chiding me, you spend a little more time studying the terrain.
Sadly Marty, part of the reply to you was eliminated with the Malcolm expungements at the thread level parallel to this one.
112 needs work, since as is this will only invite more wrecklessness from the courts.
100 (k) should be stricken, as this constrains Utility from the greater Useful Arts to the subset of the Technical Arts.
A valid concern anon.
1. What does “specific” mean? And how “specific” must specific be in order to pass muster?
2. What does “practical” mean? And how “practical” must practical be in order to pass muster?
3. What is/are “technology” and “field of technology?” How are they defined? Can they even be defined? What do they include – and exclude?
4. What constitutes “human intervention?”
If not stricken, I’d at least modify 100(k) to read:
“The term “useful” means any invention or discovery that provides utility in any field through human involvement or intervention.”
For the word “useful” to have some impact, I think 112 must require that inventors disclose the evidence that they have for the utility of the invention. Disclosing this evidence seems to be the practice in the “unpredictable” arts, but every inventor should be treated equally. Just saying that one could use the invention for something would not count as a sufficient disclosure if there is no evidence backing it up.
You imbue a “must” where no such “must” exists.
The utility portion – even the entirety – of 101 was always intended to be a very low bar.
You need to put the Kool-aid away.
I am not convinced.
Utility has been an essential bar since the first patent act. The 1790 patent act stated thar the Sec. of State, the Sec. of War, and the Attorney General, or any two of them, shall cause letters patent to be issued if they deem the invention useful and important.
I agree that Examiners may not be able to contest utility, but they can check that the Applicant has provided evidence of utility (see MPEP 2107.01 III in particular for therapeutic pharmacological utility).
Before you get down to III, did you skip:
(3) If at any time during the examination, it becomes readily apparent that the claimed invention has a well-established utility, do not impose a rejection based on lack of utility. An invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or applications of a product or process), and (ii) the utility is specific, substantial, and credible.
?
As to “essential bar,” you introduce a strawman, confuse “essential” with “low,” or both. No one ever said NON-essential, but there is a world of difference between essential and “low” (or easily met).
As to:
“agree that Examiners may not be able to contest utility”
Are you an Examiner? Did you have the same (bad) training as Random? No one ever said that you could not challenge – in fact, you are still legally required TO challenge — but you again appear to not understand just what it means for a bar to be low.
Whether or not you are convinced is absolutely immaterial. And judging from the rest of your post, convincing you is absolutely unnecessary. Without snark, I suggest that you employ a little effort on your own to calibrate yourself (once you do that, then you may appreciate just why “convincing you” is just not a cogent point here.
I did not skip the part of the MPEP that your are citing. I just spend time trying to understand it. I suggest you do the same. See below a few guidelines.
Does establishing the utility of an invention means the same thing as merely disclosing how to use an invention? Hint: the statute has two sections 101 and 112a, why is that?
What does it mean to find that utility is credible? Hint: utility is a question of fact.
What does it mean that a requirement is easily met? Hint: at the USPTO, questions of fact are proven by a preponderance of the evidence.
Sorry PiKa but I am not convinced that you have any clue as to what you are talking about.
You say you did not skip the part I present (and say that you seek to understand it — by skipping it!), and you ask questions that show that YOU don’t understand it.
You ask the difference between merely how to use and utility, confuse and conflate 101 and 112, and “merely” ALSO ignore that 101 was ever meant to be a low hurdle.
When you ask “what does it mean for a requirement to be easily met?” – this just shows that you seem unwilling or unable to understand plain English. Being “easily met” means exactly what it sounds like to mean: easily met.
Whether or not this is a factual question (and the ensuing standard for factual questions) has absolutely nothing to do with this.
Or maybe you still think that you as an examiner cannot examine this requirement…?
You are quite clearly all over the place on this topic, so you suggesting that I should “learn more” is rather asinine.
I keep searching for a source explaining the meaning of your assertion that the utility requirement is easily met/low hurdle. I can’t find anything. I would appreciate that you provide one.
I thought that maybe you mean that the statute does not require a specific amount of utility, such as, the statute does not require that the invention is “life saving,” or useful to at least one fourth of the population in the United States, etc. If that is indeed what you mean, then I agree with you. There is not “minimal quantum” of utility requirement.
But it seems more likely that you believe that the inventors just need to make conclusory statements about a specific and substantial utility that is not incredible on its face. If that is what you believe, then I disagree with you, because utility is a requirement for obtaining a patent, because the utility requirement is different from the requirement of 112a of disclosing how to use the invention, and because utility must be established by evidence, as any other question of fact.
As for the examination of utility, my understanding of the portion of the MPEP that you are citing is that it instructs Examiners not to reject an application in which utility is established by the inventors, that is, the Examiners do not need to search for evidence that the invention lacks utility as they would otherwise search for evidence that the invention is anticipated/obvious. The Examiners are not given the tools to find such evidence anyway. This is what I meant by the Examiners not being able to contest utility. However, the Examiners can check that the evidence provided in the application is sufficient to establish the utility of the invention. I trust that some Examiners do that.
“But it seems more likely that you believe that the inventors just need to make conclusory statements about a specific and substantial utility that is not incredible on its face.
Exactly NOWHERE is there any indication from me as to this position.
“The Examiners are not given the tools to find such evidence anyway. This is what I meant by the Examiners not being able to contest utility.”
Gotcha – your focus is more on the capability (or having the Office having had provided you what you may deem as tools capable of fulfilling the task.
Whether or not that aspect is true; however, does not change the fact that as part of your examination of applications under the law, that you MUST examine this legal requirement.
This may go part and parcel with your error in wanting some very high degree of utility (even as here you reflect that “high” may indeed be not very high).
I suggest that you still have a bit of a conflated view as to what “utility” means. If you received training from those in the Office with a “Just say No” attitude, that may explain some of your (erroneous) reflex.
Section 101 and A Wish
101 is Interesting
101 introduces the term “invents” (and by implication “invention”) without defining it.
The section essentially says that a patent may be obtained, “subject to” conditions and requirements… by a person who “invents”. Arguably, the “invents” or “invention” are not ever defined, the conditions and requirements are for (more generally) the *obtaining* of a patent “therefor”, and not technically definitional of what “invent” (or “invention”) is.
This means that logically, there may exist “inventions” which a person “invents” for which the person may not obtain a patent, due to those conditions and requirements,. Furthermore, since the conditions and requirements do not technically define “invention”, as such, there is great latitude for “judicial interpretation” of the very term “invents” in 101. This results is a semi-contradictory middle ground… where “invention” does not equate to obtaining a patent, and things meeting all the conditions and requirements nonetheless may be deemed things which are not “inventions”.
Some would have WISHED the legislation to set out the conditions and requirements for what an invention IS, i.e. what “invents” means, and stipulate thereafter simply that patents may be obtained therefor. The Law of Excluded Middle would take care of the rest.
As it turns out, the statute is written as it is, and even if the intention were to have the statute define what qualifies as an invention, the effect is that it leaves very much open to interpretation.
IMHO any non-fixed reference to “invent” or “invention” should be removed from 101.
The Wish
Section 101:
(a) A person may obtain a patent under this title, subject only to the conditions and requirements of sections X,Y,… Z, of this title.
(b) Anything for which a person may obtain a patent under this title as stipulated in section 101(a) and as subject only to the conditions and requirements of sections X,Y,… Z, of this title, shall be deemed an “invention” under this title.
All the rest would have to be included in the detail of the conditions and requirements (and definitions) of sections X, Y, … Z, which themselves would not refer to “invention” (to avoid circular reasoning and the problems described above). This would include sections crafted with care about: authorship, subject matter, novelty, non-obviousness, utility, etc. i.e. 102, 103, 112 etc. and would be tightly controlled by the strict wording of congress.
Further sections could then refer to “invention” if and as needed.
Only a wish…
The Court said that the invention in Alice was abstract, even though everyone knows that it wasn’t. Inserting “practical utility” without defining the terms will allow the Court to preserve all of their “abstract idea” case law by saying that Alice because Alice was abstract Alice had no practical utility. The wording of 101 is an invitation to the Court to actually say that the new statute codified Alice and its progeny.
The real solution to that problem is to amend the judiciary act at the same time to remove the CAFC from SCotUS’ appellate jurisdiction. Once the SCotUS is out of the picture, the CAFC’s saner precedents will be safe from SCotUS squib-tossing.
Seems like an idea worth considering, Greg.
Does Congress have the constitutional (or other) right / power to do such a thing?
A comment tasking Greg to be a bit more “inte11ectually honest” about just whom initiated the view that he comments upon is caught in the filter.
I don’t think you could do that without a constitutional amendment. Say Congress passes such a law, saying CAFC decisions are outside SCOTUS jurisdiction? Who would hear a challenge to that law? (Go ahead, you can say it.)
One way it could be done – without passing an amendment – would be to elevate CAFC judges to SCOTUS, but designate a portion of the court to only hear patent appeals. Nothing in the constitution dictates SCOTUS structure.
“ An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
I just want to emphasize how bad this is. Consider something as simple as a hinge. Let’s say you disclose one hinge in the specification and it has a type of attaching to the door and the mount in a typical fashion to the mount. You don’t think much about hinges as they are well known. You then claim a door attached to the wall as part of a bigger invention in functional terms of course as the hinge is not important and how can you possible claim all the known ways to attach a door to the mount without functional language. What can happen is that your attachment can then be limited to only the hinge you disclosed plus its equivalents and not —-not—all the different types of hinges and their equivalents that were known at the time of the filing of patent application.
What the proposed language above would mean is that a patent application would have to mention all the different types of known hinges in order to get have the claim construed to cover all the known hinges at the time of the filing and their equivalents.
The use of the proposed language makes me feel that this is not a legitimate attempt at reform and that SV has moles that have inserted language to burn the patent system down.
Let me emphasize that this is a known problem with that interpretation and has been for 40 years.
Also, note that the narrative about functional language is part of the anti-patent judicial activists arsenal. Functional language is used in all fields of technology and used to cover all known solutions. I have posted references to books used in engineering at MIT that explicitly say this and explicitly explain that functional language is necessary to describe engineering solutions because of all the known solutions to subproblems.
Any judge on the CAFC that says different than what I wrote above should be impeached. I get the feeling this is not a legitimate effort for reform based on the proposed language above.
Consider something as simple as a hinge… What the proposed language above would mean is that a patent application would have to mention all the different types of known hinges in order to get have the claim construed to cover all the known hinges at the time of the filing and their equivalents.
Two responses:
1) I am not convinced that one really need to disclose all known types of hinges to have the claims construed to cover all known types of hinges. The statutory language explicitly provides for “and equivalents” (emphasis added). I expect that in the real world, courts will generally find a 2:3 hinge to be an “equivalent” to a 3:4 hinge, or suchlike.
2) To the extent that the effect really is to require patent drafters to disclose a variety of known structures, what of it? For the most part, you will write a couple of paragraphs that you will cut-&-paste among a variety of applications (updating periodically as necessary). This is really not that arduous. It would be unfair to apply this retroactively—to applications drafted before the rule was in place—but if applied only prospectively, the effect on the system will be all to the good.
Greg,
The equivalents are only of the structures found in the specification. You seem to be arguing that “equivalents” may be broadly interpreted. There is no reason to believe this.
>>To the extent that the effect really is to require patent drafters to disclose a variety of known structures, what of it?
This is the kind of statement that sets me off. There can be hundreds of different ways to solve known problems. The point of a patent application is to disclose what is new (the invention) not to provide a laundry list of what is known.
The point of a patent application is to disclose what is new (the invention) not to provide a laundry list of what is known.
The point of the patent application is to support a valid claim. If supporting a valid claim requires more verbiage, then we will all learn to add the additional verbiage. Such is a small price to pay to buy more clarity for the patent system overall.
So far, much of this thread reads to me like the sort of responses I get from my teenager when I ask him to do some chore that he has never previously had to do. I see far more evidence of laziness than of impracticality or untoward effect.
>>I see far more evidence of laziness than of impracticality or untoward effect.
?? Greg, what are you talking about? The point of a patent application to disclose what is new. A person skilled in the art does not need known solutions put in a patent application.
Greg’s “all grown up” world of Big Pharma does not have so many items “already known” for elements (and sub-elements), so Greg really has no clue what he is talking about.
It’s like him whining about people with bad eyesight that refuse to wear his own glasses to correct their vision, and him not understanding why they tell him no.
The point of a patent application to disclose what is new.
Not really. Patents are really wretched sources of information when considered as actual means of dispersing information. Journal articles are much more efficient, and actual products sold into the market more efficient still. The most you can say about a patent—considered as a means for “disclos[ing] what is new—is that they have a legal mechanism to force the discloser to cough up all of the relevant details. Even then, however, no “person of ordinary skill” reads them unless forced to.
No, the real purpose of a patent application is not to “disclose what is new.” Rather, the purpose of a patent disclosure is to support a valid patent claim. You will put into it whatever the law requires you to put so as to support the valid claim. If you choose to define your claim functionally, and if the law is amended to require such functional terms to be supported with particular corresponding structures, then you will put in such particular corresponding structures. This is more tedious than difficult, and the world will keep spinning on its axis—unperturbed—once you have done that.
A person skilled in the art does not need known solutions put in a patent application.
O.k., I agree. For the most part, the person of ordinary skill does not need anything that you put into the patent application—new or old. As I said, the persons of ordinary skill do not actually read these things. It is other lawyers who actually read them. These lawyers would gain clarity when trying to construe claims if the above proposed §112(f) were enacted, and therefore—on balance—the above proposed §112(f) is a good thing.
“Not really.”
No. Really.
Greg, you are acting like there is no such thing as patent profanity and that the legal documents that are patents should be — instead — engineering documents. What you want to pass off as merely tedious, is simply more insidious than that.
That you want to compare the different vehicles of journal documents displays your lack of appreciation for what a patent actually is.
Further, you seem to want to confuse actual people with the legal construct of Person Having Ordinary Skill In The Art. Again, this lowers your patent law credibility and weakens, rather than strengthens the position that you want to advocate.
“What of it” is a horrid trap.
Applications are not meant to be some type of and everything that is known is___” type of thing.
That is even worse than the de facto defunct Jepson claims.
“ An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
What if a functional term is used and it is not defined in the specification? The way it is supposed to work is this “functional term” is supposed to be construed by one skilled in the art. If a claim term included a hinge and no disclosure of a hinge in the specification, would the claim then be invalid?
The fact is that the phrase above is a known way of construing the claims and is considered to be very restrictive.
The fact is that I’ve posted references to textbooks that are used at MIT that state expressly that functional language is used in engineering to capture all known solutions to a problem and that this is necessary because there are so many known solutions to problems.
This point is another one of the anti-patent judicial activists issues where they try to confuse this point.
Not just textbooks, Night. Everywhere else in the world, outside the USA, patent courts and Patent Offices construe M+F language just the same as in your textbooks.
The instinct within the USA to carve out a path that is exceptional can sometimes rebound. For example, in patent drafting, when US drafters of PCT applications (and their associated priority filings at the USPTO one year earlier) deliberately eschew M+F language in the claims, only to discover, years later, that they have forfeited the chance to obtain broad protection for the invention, everywhere else in the world, outside the USA.
When that happens, cross your fingers and hope that the patent owner doesn’t then realise that a once and for all opportunity was blown, to protect the full width of the invention, everywhere in the world outside the USA.
IDK, I used to work for one those infamous NPEs and they enforced their patents all over the world from claims I got allowed (from applications I wrote) and they didn’t want me to use mean plus function.
I dare say you did. Good for you! I can only speak from my experience, receiving cases drafted in the USA and carrying them through to issue in Europe.
I handle mech eng cases, not chem/bio, not E-Tech. I suspect you are more active in the EE than the mech eng space.
Claim drafting skills for mech eng are challenging in a different and special way, because of the hindsight (anybody could have thought of that) problem lying in the way of taking to issue the broadest claim gettable.
You are right that it was computer type of stuff.
I agree that mechanical claims are challenging. Actually, come to think of it I used to have a client that was a huge international company where I wrote applications for mechanical work. They were based in Europe and wanted means plus function in the PCT application.
I agree that mechanical claims are tricky and to my mind as hard as any type of claim.
I’ve posted references to textbooks that are used at MIT that state expressly that functional language is used in engineering to capture all known solutions to a problem and that this is necessary because there are so many known solutions to problems.
Er, o.k. What of it? Patents are not engineering documents, so I am not clear as to why you think that engineering textbooks are particularly relevant to the matter at hand.
What if a functional term is used and it is not defined in the specification?
By “defined,” do you mean “supported by disclosure of corresponding structure”? We already know what happens then. Under present law, if you write a “means+function” claim and fail to disclose corresponding structure, then the claim fails as indefinite. The same would happen under the revised §112(f).
The proposed 112 language, by removing the “for a combination” language, would seem to permit the “single means” claim covering every conceivable means for achieving the stated result. This is pure functional claiming that recites an invention as a whole by what it does rather than by what it is, and the claim scope becomes inherently indefinite. I don’t believe the “shall be construed” language helps all that much in this instance. It simply resorts to hunting through the specification to identify some supposed corresponding structure, material, or acts, not for some particular element in a combination, but for the whole invention itself. The “equivalents” then also apply to the invention as a whole and not to one or another element, which is basically identifying the “gist” of the invention. Why have a claim at all if this is going to be permitted? This is essentially pre-1836 language.
The statutory language says that “[a]n element… shall be construed… .” Clearly the “equivalents thereof” refers to the element, not to the claim as a whole. I think that you are just inventing problems here.
I agree, however, that the new §112(f) language no longer forecloses the possibility of a single means claim so completely as does the status quo text. To my mind, §112(a) takes care of that problem even without §112(f)’s help, so I am not overly concerned about this alleged return to XIX century claim wording.
This is an interesting development in Greg’s view of 112:
“To my mind, §112(a) takes care of that problem even without §112(f)’s help”
This caught my attention because previously Greg had resisted my statements on the law that are ALSO reflected in a cross-paragraph manner: that of using terms sounding in function such that THAT use is not constrained or limited to the optional and “pure functional claiming” as provided by the single subsection of 112(f).
In those discussions, Greg (and others) had attempted to ignore the coined term of “The Vast Middle Ground of such use as provided in the Act of 1952 (attempting to constrain the abrogation of Halliburton to somehow only pertaining to that optional choice).
Here, he notes that very same optionality as a mechanism to expand what otherwise he would not expand.
As part of those earlier discussions, I provided case law (the child-seat case) that clearly shows that my view prevails – a view that Greg now moves to here.
If you remove the word “new” then do you not need a definition of “invents”? I mean, suppose the claim in view, directed to what I claim just now to have “invented” is “A digital computer”. Does that pass the proposed amended 101 filter because nobody can dispute that I am the “Whoever” that just “invented” it.
I mean, that claimed subject matter is indubitably a machine with practical utility in a field of technology.
What public policy objective is served by recognising as an invention, eligible for a patent, a claim to a useful machine that is recognised by everybody as being notoriously and indisputably old?
There is eligibility and there is patentability.
Did you think that these proposed changes to 101 come along with the removal of 102 and 103?
Did I? No. Of course you need, in addition to an eligibility enquiry, an enquiry into novelty, utility, enablement, clarity (definiteness), written description, non-obviousness/inventive activity.
Frankly, I had in mind how the EPO cut the Gordian knot of eligibility/patentability, namely with the scissors of the “objective technical problem”. This is its approach to the obviousness debate. At the EPO, the only kind of non-obviousness that counts towards patentability is that which manifests itself (in a claim) as a combination of technical features that truly solves an objective technical (accent on “technical”) problem. In other words, no amount of non-obviousness outside the ambit of the useful arts can do anything for patentability.
To the untutored mind, it sounds like pie in the sky hocus-pocus. But to those (all over the world) who run it, day in and day out, it is all deadly simple and clear.
Max — serious question:
Does the EPO (or?) have a (an accepted) definition of “technical,” “technology,” and/or “technological field / field of technology?”
I don’t operate outside the U.S.
Thanks.
Well that’s the thing, isn’t it? Does the USA have yet a definition of “useful arts” or “obvious” or “invention”?
In a civil law jurisdiction, such as the EPO, there is no binding precedent. Chaos, one would think. But no. With the EPO issuing more than a thousand final decisions per year on eligibility/patentability, these past 30+ years, we know by now what “technical” means. Ask any gnarled EPO practitioner. By contrast, a Supreme Court definition of “technical” would be out of date 5 minutes after it is handed down.
Thanks Max.
Boy — so (if I understand you correctly) even the Europeans are unable to define these terms …
I wonder how China defines / handles this conundrum.
Unable? Not the point. Unwise. The UK Patents Act of 1949, for example, deliberately refrains from defining “invention”. No need. Counter-productive. Unhelpful. As we all know, any definition that one attempts is immediately out of date, so formidable is the march of technological progress.
China? Where’s the problem, in a jurisdiction that has no conception what is meant by “The Rule of Law”?
Your “of course” answer here is the answer then to your lead-in question above.
Or where you purposefully conflating matters with some other intent?
Just caught how MaxDrei has — in a ham-fisted attempt — tried to co-opt not one but two of my adages.
“Frankly, I had in mind how the EPO cut the Gordian knot of eligibility/patentability, namely with the scissors of the “objective technical problem”. ”
The mere presence of the two different aspects of patent law in patent eligibility and patentability has nothing to do with any type of Gordian Knot. Hence, your “forced” scissors approach is inapposite.
And yet again, you disrespect our Sovereign and its choice by attempting to equate our Useful Arts with the mere subset of Technical Arts, by trying to pass off the “objective technical problem” approach as if that were any type of answer to a larger allowed set of material under the Useful Arts.
It’s not as if you have not been corrected before on this purposeful obfuscation. To continue to advocate so is plainly unethical (it’s probably a good thing that you are not an attorney).
I think the bill is trying to remove considerations of novelty or obviousness from the eligibility analysis. To make this clear, 101 cannot contain the word “new” from 101, which has been removed, but it should not contain the words “invents or discovers.” Otherwise, it seems that 101 could still rely on a 102/103 analysis. The statute could say “whoever claims…”