Legislative Changes to Eligibility

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 and useful 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 claim for a combination may be expressed as a means or step for performing 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.

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.

131 thoughts on “Legislative Changes to Eligibility

  1. 20

    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.

    1. 20.1

      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?

    2. 20.2

      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.

      1. 20.2.1

        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.

        1. 20.2.1.1

          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.

          1. 20.2.1.1.1

            Ah, I see what you mean. Fair enough. I had misunderstood which benefit you were treating as the “side” benefit in 20.2

      2. 20.2.2

        [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).

        1. 20.2.2.1

          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.

        2. 20.2.2.2

          … 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.

  2. 19

    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?

    1. 19.1

      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).

  3. 18

    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”.

    1. 18.1

      You still don’t grasp what utility entails.

      1. 18.1.1

        … and more Malcolm expungements here…

    2. 18.2

      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).

      1. 18.2.1

        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.

        1. 18.2.1.1

          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.

          1. 18.2.1.1.1

            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.

            1. 18.2.1.1.1.1

              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.

            2. 18.2.1.1.1.2

              Sadly Marty, part of the reply to you was eliminated with the Malcolm expungements at the thread level parallel to this one.

  4. 17

    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.

    1. 17.1

      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.”

  5. 16

    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.

    1. 16.1

      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.

      1. 16.1.1

        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).

        1. 16.1.1.1

          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.

          1. 16.1.1.1.1

            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.

            1. 16.1.1.1.1.1

              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.

              1. 16.1.1.1.1.1.1

                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.

                1. 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.

                2. 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.

  6. 15

    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…

  7. 14

    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.

    1. 14.1

      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.

      1. 14.1.1

        Seems like an idea worth considering, Greg.

        Does Congress have the constitutional (or other) right / power to do such a thing?

        1. 14.1.1.1

          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.

        2. 14.1.1.2

          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.

  8. 13

    “ 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.

    1. 13.1

      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.

      1. 13.1.1

        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.

        1. 13.1.1.1

          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.

          1. 13.1.1.1.1

            >>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.

            1. 13.1.1.1.1.1

              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.

            2. 13.1.1.1.1.2

              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.

              1. 13.1.1.1.1.2.1

                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.

      2. 13.1.2

        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.

  9. 12

    “ 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.

    1. 12.1

      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.

      1. 12.1.1

        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.

        1. 12.1.1.1

          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.

          1. 12.1.1.1.1

            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.

            1. 12.1.1.1.1.1

              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.

      2. 12.1.2

        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.

    2. 12.2

      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).

    3. 12.3

      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.

      1. 12.3.1

        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.

        1. 12.3.1.1

          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.

  10. 11

    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?

    1. 11.1

      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?

      1. 11.1.1

        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.

        1. 11.1.1.1

          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.

          1. 11.1.1.1.1

            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.

            1. 11.1.1.1.1.1

              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.

              1. 11.1.1.1.1.1.1

                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”?

        2. 11.1.1.2

          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?

        3. 11.1.1.3

          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).

      2. 11.1.2

        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…”

        1. 11.1.2.1

          “Invents” as a definitional term is not dependent on 102/103, and those sections of law still exist to serve their purposes.

          You seem to be still under the influence of drinking Kool-aid.

  11. 10

    Malcolm’s apoplectic rants are pretty rough and ham fisted.

    For all his crowing of “that will never be over-ruled” the language here is that very thing – ALL Supreme Court re-writing of eligibility Law is expressly abrogated and “over-ruled.”

    1. 10.1

      There is zero chance of this being passed.

      1. 10.1.1

        And yet, you rant on apoplecticly.

        You cannot hide the fact that you have been triggered.

  12. 9

    This proposal is pretty rough and ham-fisted.

    No one is talking about it, but the proposed change to section 112(f) could be very significant. There is still a pretty weighty burden to invoke 112(f) for claim terms that don’t expressly recite “means,” even after Williamson v. Citrix. This change would make it considerably easier to narrow functional claim limitations to the disclosures in the specification for limitations that do not expressly recite “means” or a plainly obvious nonce word. It might also open the door to applying “means-plus-function” analysis to method claims.

    The 101 stuff is not ready for prime time. MM, I am not sure it’s worth your outrage at this point, let alone aspirin. But I’m interested what you guys think how the type of claims discussed in Alice would fare — take some everyday process (like intermediated settlements, maintaining a calendar of upcoming events, etc.), and put it on a generic computer. The real question is whether this type of claim, one that would clearly be invalid under the existing Alice/Mayo framework, is one that we think should be patentable under our patent system.

    I wonder if, under this new proposal, you’d have an argument for lack of eligibility. Does such a claim “provide[] specific and practical utility in any field of technology through human intervention,” under the proposed definition of “useful”?

    One way to read the statute to say “no,” using a generic computer to perform a real-world process (an “abstract idea” under existing law), does not provide any technological utility within an area of technology. It simply uses a generic computer to do something people would ordinarily do themselves, and does not improve or advance any area of technology.

    The other way to read the statute, and probably the way intended considering its source, says “yes” it is eligible; the invention simply has to provide specific and practical utility, regardless of the technological subject area. Under this reading, pretty much anything except “pure business method” claims (which recite human steps without accompanying technology) would be patentable.

    I suspect the biggest backers of this proposal will be Intellectual Ventures (IV) and other NPEs and aggregators, who are sitting on a large pile of broad and abstract technology patents. Many of them, like IV, spent decades scooping up existing portfolios and prosecuting continuation applications with deliberately broad and abstract claims to try to ensnare as many infringers as possible. Those companies suffered when the Alice/Mayo decisions came out.

    1. 9.1

      No one…?

      You have not been paying attention to my posts.

    2. 9.2

      Lode_Runner, it is interesting that people can even say things like you do.

      Part of the newspeak that the SCOTUS has created. You use the word abstract as an incantation of something that is bad and has this vague spiritual meaning.

      Disgusting. I feel like I am in medieval Europe.

      1. 9.2.1

        It’s not part of the “newspeak,” I use the word “abstract” to describe the broad swath of IV’s patent portfolio because IV has lost more 101 Alice challenges at the Federal Circuit than any other single litigant. Many of their patents are abstract because they’ve been adjudicated abstract under existing law. You may find existing law “disgusting,” but fortunately given your lack of intellectual rigor, you don’t make the law.

        1. 9.2.1.1

          LR,

          You think the mess of the Court-created Gordian Knot displays any type of intellectual rigor (to contrast your use of that term with Night Writer)?

          If so, I will appropriately downgrade the value of your posts.

    3. 9.3

      LR,

      I believe that you add in something not there when you state:

      does not provide any technological utility within an area of technology. It simply uses a generic computer to do something people would ordinarily do themselves, and does not improve or advance any area of technology.

      This is NOT “improve or advance an area of technology” in order to meet the (MUCH lower) threshold of having utility.

      The aspect that you may be missing is the fact that the word “promote” carries with it additional meanings beyond “advance” – think of the advertising word “promotion.”

      These varied meanings are to be taken in the alternative, and is part and parcel as to why the “bar” of 35 USC 101 had always been understood to have been meant to be a very low bar.

      Much like PiKa, you display the taint of Kool-Aid.

  13. 8

    I could maybe even live with that 112f change. Or just strike 112f.

    The 101 change is just tempting the supremes.

    1. 8.1

      The 101 change is just tempting the supremes

      If THIS 101 change goes through, the Supremes would not dare touch this (no matter how much you think there be temptation).

      Stevens LOST his career “bookend” because he wanted to go against the direct words of Congress and this nowhere near has the numbers or the gumption to come close to half of that audacity.

      1. 8.1.1

        …and this [Court] nowhere near…

  14. 7

    Came here for the MM implosion. Not disappointed. Looking forward to more!

    1. 7.1

      His implosion can be seen across several threads now.

    1. 6.1

      How so?

      1. 6.1.1

        I cannot agree with RandomGuy that this “kills” computer software claims, but this seems like a good place to try to answer your question from elsewhere about a “processor configured to (function),” in which you expect that “generic processor will be a recital of ‘structure … in support thereof’.”

        For sake of clarity, let us make your example just a bit more specific and concrete. The hypo claim to be considered claims “a method of transacting a bank transfer, the method comprising: (1) identifying a host account; (2) identifying a target accounts; and (3) executing, by a processor configured to effect bank transfers, a transfer from the host account to the target account.” Let us assume for the sake of the hypo that as of the filing date, interbank transfers are old in the art, but that these transfers have hitherto been effected by physical movements of cash and pencil/paper record ledgers, such that the “processor configured to effect” is the novel aspect of the claimed invention. Let us also assume that processors as such are also old in the art as of the filing date, but that no processors have ever been used for this particular application.

        Here is how I think that this claim would/should be construed under the proposed statutory text. The statue speaks of “[a]n element…. expressed as a specified function without the recital of structure… in support thereof… .” The hypo claim recites “a processor configured to effect bank transfers… .” I would say that “processor configured” is an element, and “effect bank transfers” is a separate element. If you think that the reasoning behind this particular parsing needs more elucidation, please let me know.

        Once we have those two elements (among many) in front of us, we ask (pursuant to the statutory command) “do either of these elements speak of a function?” Clearly one of the elements (“effect a bank transfer”) does speak of a function. The next question in the analysis, then, is “is this function ‘support’ed by a recitation of structure?”

        Here is the real meat of the question. Clearly, the claim recites some structure (“a processor configured”), but does this structure “support” the function. Certain on these boards (e.g., MM) believe that all functions executed on a processor are inherent in the processor itself. I think, however, that 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. Therefore, the “processor configured” language in the claim is not, by itself, enough to “support” the functional element. Therefore, the statutory language requires us to look to specification to see what “corresponding structure” is “described in the specification,” and then we “construe[ the ‘processor configured’] to cover the corresponding structure… and equivalents thereof.”

        At this point there are two possible outcomes:

        (1) The spec really does disclose a corresponding structure (e.g., a circuit board sufficient to execute such a network protocol). Well, in that case, the applicant really did invent a concrete solution to the problem, and it is wholly unobjectionable (from the standpoint of the philosophy justifying a patent system) that the inventor should receive a valid claim covering that solution and its “equivalents.”

        (2) The spec does not disclose a corresponding structure, but relies instead on the lazy assertion that the “one skilled in the art would identify structure from the description in the written description” (Biomedino LLC v. Waters Tech., 490 F.3d 946, 951 (Fed. Cir. 2007)). We know how that argument ends: “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.” Id. at 950. In other words, in this case, the applicant has really attempted to claim the problem, rather than claiming the solution, and thus the applicant gets nothing.

        In other words, I believe that—when properly construed—this statutory language ensures that real inventors get valid patents, while those who simply name the problem and assert that “one skilled in the art” knows how to write the code to solve it end up with nothing.

        1. 6.1.1.1

          I am a bit perplexed by your framing that “processor” and “function” are separate elements. But as you appear to push those elements together again for the 112f analysis in paragraph 5 (“Clearly, the claim recites some structure …”), it doesn’t seem like a critical point.

          I largely agree with you how these claims should be interpreted. What I don’t see is how any of this flows from the proposed 112f. The “without recital of structure…” language is the same as before. Why will either the PTO or the CAFC change what qualifies as “sufficient structure” for avoiding the invocation of 112f?

          If the analysis you describe in 6.1.1 is correct, it should be implemented under present day 112f. But it’s not. And the proposed 112f is not so explicit as to push either the PTO or the CAFC to use the 6.1.1 analysis.

          1. 6.1.1.1.1

            If the analysis you describe in 6.1.1 is correct, it should be implemented under present day 112f.

            This is a good point, but my response to this objection gets at the point I was making over on the other thread about the “means” presumption.

            Right now, the CAFC (following the CCPA) treats §112(f) as something optional, where a patentee can choose to invoke §112(f) by using the word “means,” or can choose not to invoke §112(f). This means that before one even gets into question of what sort of supporting structure is disclosed in the spec, one must first determine whether §112(f) is even invoked. This requires the parties to an enforcement suit to spend time and resources arguing about this preliminary question of §112(f) invocation before the question of disclosed structure comes into it, which in turn means that the question of disclosed structure is (1) frequently forestalled, and (2) can be avoided by a judge who does not care to get into it.

            In other words, right now, §112(f) creates a heavy lift for the judge, and a lot of subsequent case law consists of parsing the statute in a way that gets the judge (if s/he wants) off the hook from doing that hard work. By doing away with the “means” language in §112(f), this proposed revision forces all functional claim language into a look-at-the-disclosed-structure analysis, regardless of any question about “means.” No longer can the judge avoid the analysis by shifting a presumption based on the “means” or absence thereof.

            It is the cutting away of this avoidance mechanism that I expect to make the difference. The current statute gives the judge a way out of the disclosed-structure analysis, but the proposed statutory text removes that way out.

            1. 6.1.1.1.1.1

              Let’s see the reasoning for bifurcating the single “under consideration” means plus element into two elements (and then explain how such does not lead to a “turtles all the way” necessary outcome.

            2. 6.1.1.1.1.2

              Thanks for taking the time to explain that.

              The proposed law removes only one of two paths for avoiding 112(f). There remains the “structure, material, or acts in support thereof” path for avoiding 112(f). With the judicial incentives unchanged, and nothing expressly curtailing the second path in the proposed law, it seems far more likely that the CAFC would extensively use this off-ramp rather than upend the whole sphere of software patents.

              1. 6.1.1.1.1.2.1

                The proposed law removes only one of two paths for avoiding 112(f)… With the judicial incentives unchanged,… it seems far more likely that the CAFC would extensively use th[e other] off-ramp rather than upend the whole sphere of software patents.

                Thanks for your thoughtful reply. A few thoughts in response:

                (1) You are quite right that this new statutory language does not absolutely force the outcome that I am predicting (and cheering). If this revision should be enacted, we would have to wait and see how it actually gets applied in practice, and your skepticism is perfectly sensible. There are, however, two reasons why I believe that the outcome that I predict is more likely than the outcome that you predict.

                (2) First, the court’s principle directive (and I get the sense that they really take this seriously) is to give effect to the expressed will of Congress. Currently, the statute reads “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function…” (emphasis added). The “may” indicates that Congress intends for this to be an option of which the patentee might avail himself or herself. The court does not want to treat as mandatory that which the Congress has explicitly made optional, so a body of case law has developed around making sure that this remains optional. Indeed, I would say that the court has such a respect for this Congressionally intended optionality that it has actually developed a sort of “tie goes to not m+f” rule.

                If Congress were to enact the revision above, however, the whole logic would change. The above language is clearly intended to make the disclosed-structure+equivalents (“ds+e”) analysis not optional when construing functional claims. Because the court is trying to give effect to the expressed will of Congress, the change in language should logically lead to a change in approach, especially as it applies to the willingness of a tribunal to apply the ds+e analysis in claim construction.

                (3) Second, there is already case law about what qualifies as a “sufficient structure.” In order to use “sufficient structure” as an “off ramp” out of the ds+e analysis, the CAFC would first have to take one or more cases en banc to reverse this case law. The Supreme Court is much more likely to take cert to a CAFC case when it is decided en banc. Therefore, the CAFC would have to think long and hard about whether it thinks that the SCotUS would sanction the use of “sufficient structure” as an “off-ramp” away from the ds+e analysis before it actually turn this into a usable “off ramp.” It is vanishingly unlikely that—if actually confronted with the question—the SCotUS would sanction using “sufficient structure” as a mechanism for avoiding ds+e.

                1. Regarding your second point, at least for “processor”, I am under the impression that you’re incorrect.

                  I couch that as an “impression” because I recognize that I am not an attorney and that much of my understanding of this is shaped by the MPEP/OPLA.

                  The only caselaw that the PTO provides us (examiners) with that is directly relevant to whether a “processor” is sufficient structure to avoid invoking 112(f) is the CAFC’s Mass. Inst. of Tech, where some generic “circuitry” was sufficient structure. In my own limited independent research, I’ve found no other directlt relevant CAFC precedents and several DCs going either way regarding “processor” being sufficient structure. Based on the above, I don’t see a 3 judge panel struggling to call a processor “sufficient structure” for invocation purposes.

          2. 6.1.1.1.2

            I am a bit perplexed by your framing that “processor” and “function” are separate elements. But as you appear to push those elements together again for the 112f analysis in paragraph 5 (“Clearly, the claim recites some structure …”), it doesn’t seem like a critical point.

            The “structure” that avoids 112f is a structure that is known to be sufficient for performing the function. A processor recites structure, but not sufficient structure for performing functionality. (Were that true, every software claim would be anticipated by citation to a processor)

            Consequently, every processor performing a function would invoke means plus, and virtually every means-plus invocation (as currently written) is indefinite. Further, even if it wasn’t indefinite, the scope would be so tight so as to make the claim economically worthless.

            To use an example I always use – a claim to a processor performing the function of determining the most efficient driving route is practically unpatentable. Nobody has actually invented the full scope of the function, but nobody actually challenges that under 112a. However, if one were to put the function into means plus, either the specification would contain no algorithm and the claim would be indefinite, or the specification would contain an algorithm that could be designed around. Even assuming that the algorithm truly created the optimal route, people would be more willing to use a sub-optimal route for free rather than pay licensing for the optimal route. Consequently, a patent on the optimal route calculation is not economically feasible and a patent on all route calculations (which is what is currently given) is overbroad.

            That’s actually as it should be, because the point of patent law is to force the disclosure of each solution to the problem rather than the abstract act of solving (which is what a claim to the function not limited by an algorithm is). But because the office wants money and the applicant wants a piece of paper, both sides lie to each other to generate an invalid scope. The proposed legislation removes the fig leaf, because it puts the means-plus issue front and center and forces a disclosed algorithm in the spec, and even if no rejection is made, it limits the scope to similar results achieved in a similar way, which is easily designed around.

            The problem with the processor for patents is that it has made logically designing around a problem easy, which makes patents that rely upon processor logic worthless, but both sides have an interest in ignoring the worthlessness of the patent application.

        2. 6.1.1.2

          Certain on these boards (e.g., MM) believe that all functions executed on a processor are inherent in the processor itself.

          This is known as the House/Morse fallacy, and has been easily disposed of under the Grand Hall experiment.

          Those still attempting to advance such a view are simply inte11ectually dishonest.

  15. 5

    “and all cases establishing or
    interpreting those exceptions to eligibility are hereby abrogated.”

    That would be some wonderful legislative clarity.

    1. 5.1

      “and all cases establishing or
      interpreting those exceptions to eligibility are hereby abrogated.”

      That would be some wonderful legislative clarity.

      Would that make Alice’s patent valid? I think there needs to be something regarding retroactivity or lack thereof.

  16. 4

    The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

    Does a human communicating a non-obvious fact related to a “technical” field satisfy this requirement? If not, why not?

    Better question: who are the D U M B F – C K S who wrote this cr @p?

    1. 4.1

      The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

      Does a human communicating a non-obvious fact related to a “technical” field satisfy this requirement? If not, why not?

      No, because merely communicating the fact doesn’t accomplish any practical utility. Doing something with the communicated fact would.

      1. 4.1.1

        No, because merely communicating the fact doesn’t accomplish any practical utility. Doing something with the communicated fact would.

        That’s not a commonly accepted notion of practical utility. By your logic a scale isn’t eligible because it merely conveys an output of weight.

        1. 4.1.1.1

          A scale wouldn’t be a human. And if you had a claim that was just “telling someone that a test weight weighs a kilogram”, I think that would be ineligible.

          1. 4.1.1.1.1

            A commuter is not a human either, and yet:

            anthropomorphication

            and the continual attemtps at Zombie Reanimation of the mental steps doctrine.

      2. 4.1.2

        communicating [a non-obvious] fact doesn’t accomplish any practical utility.

        Really? And where do you find support for that conclusion in this statute? Or did that come from the magical library of self-evident conclusions that you keep locked up in your majestic colon?

    2. 4.2

      No. A human talking is not technology. “(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of TECHNOLOGY.”

      1. 4.2.1

        A human talking is not technology

        First, you need to define “technology” (for patent law purposes) in a positive sense. You can’t simply eliminate subject matter that disrupts your miserable statute by invoking “technology” for subject matter you don’t “feel” belongs in the statute. Remember: this statute is supposed to SOLVE the problems that make patent law oh so terribly “confusing” for you and Bildo. It’s not supposed to perpetuate those problems, or shift the same issues over to some other context.

        Secondly (and perhaps more importantly for you), the issue isn’t whether “talking” is “technology.” The issue is whether communicating a fact is “useful” within the meaning of the statute, i.e., the question is whether the communication of facts “provides a specific and practical utility in any field of technology.” Seems to me the plain answer to that question is “yes”. What field of technology can you think of where communicating a specific fact is not practical and useful? Communicating facts is how things get done in the useful arts.

  17. 3

    Man, the cr @p truly flows uphill in the swamp, doesn’t it?

    (b) Eligibility [of any useful process] under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

    This is dead in the water. For starters, it’s unconstitutional on its face. It makes a method of taking aspirin or drinking coffee while thinking about a non-obvious fact eligible for patenting.

    Which Senator is going to put his/her name behind this? Step forward, please.

    we have a substantial effort to make something happen

    And what role are you going to play in that effort, Dennis? Continually shoving g@r bage like this in people’s faces without noting the obvious flaws?

    1. 3.1

      It makes a method of taking aspirin or drinking coffee while thinking about a non-obvious fact eligible for patenting.

      Not necessarily… What’s the “specific and practical utility in any field of technology through human intervention” gained through taking aspirin or drinking coffee while thinking about a non-obvious fact?

      1. 3.1.1

        Thank you, iDan, for proving to everyone that incredible denseness and st 00 pity is rampant in this race-to-the-bottom “profession.”

        Let’s look at your question again:

        What’s the “specific and practical utility in any field of technology through human intervention” gained through taking aspirin

        Do I need to continue? Or do have the minimum brainpower required to understand the problem with your asinine question? And I say asinine because it was and is asinine. It reflects a complete unwillingness or inability to consider the simplest of facts: (1) the term “new” is deleted from the statute and (2) the statute doesn’t allow you to consider the relationship of the claim to the prior art. That means that if you recite in your claimed “invention” any “practical” or “useful” step in any field of “technology” (like administering a nutrient, or any other “useful” chemical) then you sail through.

        The incredible D U M B F – C K S who wrote this statute knew about these issues when they wrote the statute. That makes not only D U M B F – C K S about also a- h0 les.

        Also, please cue up Bildo to screech about the statute being “void for vagueness.” After all, it refers to “technology” which (according to Bildo) is impossible to define.

        1. 3.1.1.1

          Let’s look at your question again:

          What’s the “specific and practical utility in any field of technology through human intervention” gained through taking aspirin

          Do I need to continue?

          Please do, because in all your blathering about “incredible D U M B F – C K S” and ” incredible denseness and st 00 pity” and showing why DC really needs to hire a few moderators rather than relying on regex filtering, you forgot to actually answer the question.

          That means that if you recite in your claimed “invention” any “practical” or “useful” step in any field of “technology” (like administering a nutrient, or any other “useful” chemical) then you sail through.

          Administering a nutrient is not “thinking about a fact”, and already sails through eligibility – see, e.g., Vanda.

          1. 3.1.1.1.1

            DC really needs to hire a few moderators

            Why? Because you need to be treated like you know what you are talking about when you are plainly utterly clu e less? Because without that coddling you get what’s actually coming to you? Give us a break already and crawl back under your rock.

            see, e.g., Vanda.

            See, e.g., you’re a D – MB F – CK and citing some case law without any reasoning other than some dust-kicking totally-missing-the-point irrelevant nonsense is pretty much about all we can expect from you. Get a life and stop tr0 lling. You stink.

            1. 3.1.1.1.1.1

              Your Accuse Others is noted, Malcolm.

      2. 3.1.2

        Seems like it would have at least the same utility as taking asprin.

        I don’t think any of us want to get into the game of ‘is the utility of the sum greater than the utility of the individual parts’.

        1. 3.1.2.1

          Seems like it would have at least the same utility as taking asprin.

          Well, the statute expressly requires that all parts of the claim be considered, and I don’t see how thinking about some fact contributes anything to the utility of taking aspirin, but maybe Mal has some new age holistic reason to contribute.

          1. 3.1.2.1.1

            Saying “A+B” lacks utility because “B” doesn’t do anything despite an apparent utility of “A” seems to be dissecting the claim rather than considering every element.

            1. 3.1.2.1.1.1

              I’d go the other way, and say that all of the elements of the claim have to contribute to the utility, or else they should be removed. This also addresses claims like “[known machine] wherein a surface of the machine is painted blue,” unless painting it blue provides some sort of practical advantage.

              1. 3.1.2.1.1.1.1

                I’d go the other way, and say that all of the elements of the claim have to contribute to the utility, or else they should be removed.

                “Derp derp derp derp derp derp me want more patent rights! me entitled! me make up anything sound good! derp derp derp”

                How about you just admit that this proposed statute is a pile of impossibly st 00p i t d og sh i t? And that you really don’t know what the F – CK you are talking about?

                1. I think Mal is having a stroke. DC, you have his info, can you call in a wellness check?

                  It’s sad to see a previously prolific commenter collapse into:
                  “Derp derp derp derp derp derp… st 00p i t d og sh i t… don’t know what the F – CK”

                2. There appear to be 2 camps when it comes to US Patent Eligibility:

                  Camp 1) Expand eligibility as far and wide as possible. Let the market decide which ones are actually commercially viable.

                  Camp 2) Restrict Patent eligibility as far and as narrowly as possible. Limit the number of Patents that make it into the market.

                  I believe that the Pros of Camp 1 (maximizing the incentives for disclosing life improving advancements) far outweigh the Cons (tons of commercially useless Patents being issued / bad actors taking advantage of the system to “hold up” large and small companies with questionable Patents).

                  MM, you appear to fall into Camp 2. Can it be assumed that you believe the opposite?

                3. Malcolm responds — and yet again reveals his cognitive dissonance of being anti-patent, yet (supposedly) a patent attorney charged with obtaining the very thing he so detests.

              2. 3.1.2.1.1.1.2

                You could go that way, but that’s not what the law is, so that’s kind of irrelevant.

                Utility is a non-limitation. If you gave patent examiners the power to reject something because they thought the utility didn’t exist you’d have a bigger problem than you do right now, if for no other reason than utility for one side of a tool is often negative utility for another side of the tool.

                Does advertising help producers of content? Yes. Does advertising help consumers of content? No, it’s detrimental. Does Ultramerical v. Hulu have utility under your standard?

                1. Utility is a non-limitation. If you gave patent examiners the power to reject something because they thought the utility didn’t exist you’d have a bigger problem than you do right now,

                  How the F are you an Examiner?

                  Claims DO require utility.

                  Examiners DO have the power (and the responsibility) for rejecting for lack of utility.

              3. 3.1.2.1.1.1.3

                I’d… say that all of the elements of the claim have to contribute to the utility, or else they should be removed.

                Where do you see that in the statutory text. Ben seems to have the much better reading here. You are—by your own admission—trying to strike out elements to reach the conclusion that you think that you are supposed to reach, despite the fact that section 101(b) explicitly rules out such dissection.

              4. 3.1.2.1.1.1.4

                unless painting it blue provides some sort of practical advantage.

                Maybe someone should try to start a meaningful dialogue on that aspect – like setting up a hypothetical for which the color of an object does provide for a practical advantage, say, for example, a blue racquetball.

                Oh wait, that was recently done.

                Guess what the result of that attempt was.

                (hint: the lack of meaningful replies to the hypothetical was entirely predictable along the lines of the anti-patent bias so evident in the several groups of regular posters)

        2. 3.1.2.2

          You’re mistaken, Ben. This is nothing but a “game” and rest assured that there are plenty of people already very deep “into it.”

          Most of these people are F – C K HEADS, of course. And incredibly ign 0r ant glibertarian @ h 0 l es on top of that. But I digress.

          1. 3.1.2.2.1

            You rant.

            There’s a big difference.

            1. 3.1.2.2.2.1

              SVG,

              Not sure if you were holding up a sarcasm sign, but since some have have advanced the idea of Malcolm being a paid mouthpiece, I would advance that there is NO WAY that Malcolm is a paid mouthpiece.

              His “swagger” is SO ineffective that anyone actually paying him would have long ago fired his arse.

  18. 2

    Hazzah!

    Great job — thank you Senators and Representatives for restoring American innovation leadership!

    If we can get these reforms through, we won’t end up being a Chinamerica after all!

    1. 2.1

      If we can get these reforms through

      Some strong reefer going around the block this week. Watch out, kids.

      1. 2.1.1

        …as opposed to the reefer that you have been peddling for some 14 years now?

  19. 1

    If the above were to be adopted, something like the following amendment to 112(a) should also be adopted (I only took a quick 5 minute stab at the language, but it expresses what I mean):

    The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to (i) enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and (ii) demonstrate that the inventors contemplated the invention as claimed; and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

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