The Senate Judiciary Committee’s Subcommittee on Intellectual Property is holding its third day of testimony on patent eligibility today, June 11, 2019. The State of Patent Eligibility in America: Part III. Hearing begin at 2:30 EST.
Today’s witnesses are primarily business leaders and in-house attorneys for large IP-focused businesses:
Panel I
- Manny Schecter, Chief Patent Counsel at IBM
- Laurie Self, Senior Vice-President and Counsel at Qualcomm
- Byron Holz, Senior Counsel at Nokia
- Kim Chotkowski, VP at InterDigital
- Sean Reilly, Associate General Counsel at The Clearing House Payments Company
Panel II
- Laurie Hill, VP for IP at Genentech
- Sean George, CEO at Invitae
- Gonzalo Merino, Chief IP Counsel at Regeneron Pharmaceuticals
- Peter O’Neill, Executive Director at Cleveland Clinic Innovations
- David Spetzler, President and Chief Scientific Officer at Caris Life Sciences
Panel III
- Michael Blankstein, Deputy GC at Scientific Games
- Corey Salsberg, Global Head IP Affairs at Novartis
- Nicolas Dupont CEO at Cyborg Inc.
- Robert Deberadine, Chief IP Counsel at Johnson & Johnson
- John D. Vandenberg, Partner at Klarquist Sparkman
Down below, Greg attempts to make a point vis a vis several distinct requirements in the law at 35 USC 112.
My reply is far better material to “bump up to the top,” so here it is:
Gregg: “that the full scope of a functional term might well be enabled. That does not mean that the full scope is described, or clear.”
Understanding full well that the requirements are each their own, how exactly is enablement actually met if what is merely purported to provide that enablement is NOT BOTH “described” and “clear?”
Something that is purported to enable, but is not describing, CANNOT enable. Lacking actually describing, what is IT that is being said to be enabled?
Something that is purported to enable, but is not clear, CANNOT enable. Lacking actual clarity, what is IT that is being said to be enabled?
Max: If [the US and UK] were to adopt the EPO’s elegant and brutally simple approach to obviousness, they would be free to defer the determination of the contribution until they start the enquiry whether the inventor has provided a non-obvious contribution to the art.
?
No idea what you’re talking about here. You were talking about being uncomfortable “conflating” the eligibility determination with the determination of inventive step. My point — and my only point — is that there is no “conflation”. The question as to whether there is anything “inventive” necessarily requires looking at the claim and determining what in the claim is “new” relative to the prior art. This is also the prequel to the determination of eligibility in many instances (most instances, in fact). Assuming something “new” is identified, the next step is simple: is the “new” subject matter eligible for patenting (i.e., is the new subject matter “non-abstract”). If so, the claim is eligible. If not, the claim is ineligible.
This analysis doesn’t work for correctly determining the eligibility of every possible claim that has been scrivened. But it works correctly for most claims. And there’s nothing particularly confusing or difficult about determining eligibility in those other classes of claims, either.
Writing data processing instructions for a computer in a language that computer can understand is no more “technical”, by the way, than writing instructions for a person in another language so that person can understand the instructions. It’s still just writing instructions. It doesn’t belong in the utility patent system. Never did. Never will. Patenting such instructions, or computer that carry out those instructions, is nothing more than an incredibly s t 0 0 p-id giveaway to the wealthy, so everyone else can continue shoveling money upwards through the hands of attorneys and their “investor” clients. The gaping, transparent problems with this set-up were recognized immediately by many, many people in the relevant “art” (most of whom still don’t support the current set-up for patenting software) and history has proven that those people were correct. For starters, we wouldn’t be having these farcical debates about “structure” where the term “structure” is plainly understood by software patent proponents to include “non-structure.”
YAWN
(Malcolm engaging in his “look at me, look at me” post on top gaming)
In reply, gentle readers, I copy in here my answer already given at 9 below:
“9.3.2.1.1.4
MaxDrei
June 13, 2019 at 5:14 pm
I’m disappointed, MM, that you have “no idea” what I am talking about here. But never mind. It takes more than a few lines here to get somebody who has “no idea” up to speed on the by now well-established approach the EPO takes to the enquiry into the contribution to the art and the allowability of any given claim. One can read it up, of course, if one has enough time and curiosity. Perhaps I should just say that the EPO “problem and solution approach” has the further merit of keeping enquiries into “technicality” out of the enquiry into novelty. Examination of the technicality of the contribution occurs once and once only, namely, as part of the enquiry whether an inventive step is present. This is because, as you know, at the EPO, under PSA, the only type of inventive step that “counts” towards patentability is the sort that employs a combination of technical features to solve a technical problem.”
I should also have added that fixing what is “the contribution” is do-able under EPO-PSA but much harder in isolation, as part of an enquiry into eligibility. If you doubt me, just observe what sort of a dog’s dinner they make of it, in the specialist patents courts of England; a dog’s dinner that the UK’s PTO has to swallow, to apply it in its everyday work. The judges all end up limply averring that their approach is OK because, anyway, they get to the same outcome as the EPO. Those litigating cases before the Courts of England might benefit from closer acquaintance and practical experience with the way the EPO handles eligibility and obviousness.
“limply averring that their approach is OK because, anyway, they get to the same outcome as the EPO”
In other words, MaxDrei, do you feel that “the Ends do not justify the Means?”
Sorry, anon, you are too opaque for me. Don’t know what the answer is, to your question.
The UK is a signed up Member State of the EPC and its Supreme Court frequently avers that the established case law of the EPO is very influential on it. Indeed, it has aligned itself with that established case law on many aspects of patentability/validity, including Convention priority, novelty, added matter, enablement and sufficiency of disclosure. However, it struggles to fall in with the EPO’s line on eligibility and obviousness. That might be because (for historical reasons) it regards as unsound any judgement on obviousness that is reached without cross-examination of opposed party technical experts in open court.
That’s OK that you do not keep up with my jest at Malcolm.
In turn, however, I am not sure I glean your stand vis a vis what the UK is doing. You use terms like “struggle” and “dog’s dinner” as if to imply that what the UK is doing is improper, but then you also provide that the UK is doing so because “regards as unsound any judgement on obviousness that is reached without cross-examination of opposed party technical experts in open court” — which sounds in a justified position.
If justified, then is it really a “struggle” or a “dog’s dinner?”
If not justified, then why the reticence to say so directly (or the confusing implication that there IS justification)?
Until 1978, the UK Patent Office was not required or allowed to examine for obviousness. Such a difficult issue can only be adjudicated fairly in disputed inter Partes proceedings, it was always thought, with evidence tested under live cross-examination.
Then came the EPO and invented the “Problem and Solution Approach” to obviousness, which has revolutionized the enquiry. it is a kind of TSM, but much more focussed than US-style TSM. With PSA you can do it fairly, and economically, ex Parte. I find that nobody understands EPO-PSA except those who practise it daily. Many think they do, but they are wrong.
My point is that PSA not only revolutionizes the obviousness enquiry but also has “power to spare” and knock-on effects, not least in streamlining the eligibility enquiry. Regrettably, those who are not routinely litigating cases at the EPO have yet to “see the light”.
I should add, of course, that fact-finding under English law, with discovery and cross-examination, is the Rolls-Royce of fact-finding, and that there is nothing to stop the English Courts hearing as much cross-examination as it pleases, as part of the PSA obviousness enquiry. That process will indeed likely result in some patents issued by the EPO going down as obvious, in litigation in the Courts of England. Good so!
Does that help?
Not really.
I still cannot tell if you feel that the UK is deficient, merely different, or both different and better.
Your comment of “until 1978” seems to indicate that at that point any “lack” in the UK system was alleviated.
Granted, I too am attempting to “come up to speed” on history of different Sovereigns, and realize that such may not be easily obtained with some of the limited discussion on this forum (in other words, you won’t be getting any snark from my on this topic).
Don’t understand why it is of importance or significance to you, or anybody else here if I:
“…feel that the UK is deficient, merely different, or both different and better.”
Who cares what my feelings are?
The interesting thing today about the 38-Member State EPC land is that those with a patent dispute can shop around for a jurisdiction that is advantageous for them. The main contenders are England, Germany and The Netherlands. Each has its strengths. Matching the strengths and weaknesses of your Petition to the various different attributes of English or civil law fact-finding, speed to final decision, and style of decision-writing, is an interesting part of the work of patent advisers in Europe.
And, obviously, the different jurisdictions react, to a drift of lucrative work to the other jurisdictions, with determined efforts to make their own jurisdiction more attractive to litigators. Competition is a good thing, right?
Really? You do not understand?
Do you not realize how very much those feelings color ALL of your comments? How those feelings give context to ALL of your contributions?
(no snark)
btw, thank you for those last two paragraphs.
at the EPO, under PSA, the only type of inventive step that “counts” towards patentability is the sort that employs a combination of technical features to solve a technical problem.”
Again, this is the exact same analysis used in the US for determining eligibility of a claim. Abstractions (e.g., information and logic) are, by definition, “non-technical”. So if the only “new” feature in a claim is, say, a set of instructions printed on a piece of a paper, that claim is ineligible for patenting. Sure, you could engage in a pointless game and decide to “ignore the limitation” and declare the claim anticipated (because the limitation we’re discussing is the only new feature in the claim), or call it some form of obviousness. That’s actually more complicated.
I’ve no idea why you seek to make the analysis more difficult than it actually is, or why you pretend that the two analyses are distinguishable. They’re not. Give it up. They’re not distinguishable and it’s not surprising that they are the same because both the EPO and the PTO require claims to be written using words, but neither office requires the applicant to specify what is new relative to the prior art.
“Again, this is the exact same analysis used in the US”
Again, no it is not.
The Useful Arts contains mote than the technical arts.
(It really is that simple – not even close to “That’s actually more complicated.“).
“ but neither office requires the applicant to specify what is new relative to the prior art.”
LOL – but even Greg wants Jepson claiming to NOT be an option…
Once again, MM, you tell us that you have “no idea” why I urge the EPO approach. Nevertheless, you feel able to state categoricallly that it is “exact same” as in the USA.
It isn’t. Experience in the EPO amongst the more than thirty Technical Boards of Appeal, with more than a thousand cases a year, is that you do well to keep the novelty issue clear of considerations of technicality (or, if you will, eligibility). Otherwise, the debate about patentability turns into arm-waving. You write:
“if the only “new” feature in a claim is, say, a set of instructions printed on a piece of a paper, that claim is ineligible for patenting”
and exactly that is where the EPO Boards of Appeal, out of their experience over 30+ years and hundreds (if not by now thousands) of cases know by now leads you up a creek without a paddle.
Once again, the deadly simple EPO “problem and solution approach” to obviousness, properly executed, effortlessly subsumes the eligibility issue. Novelty you keep out of it. Instead, toggle between obviousness and ineligible lack of technicity, OK?
I grant you, any Patent Office that declines to examine for obviousness in the way the EPO does it (eg the USPTO) is forgoing the only clean, fair and efficient way to examine for eligibility.
As to the point (technical arts vs useful arts) from anon, it may well be that, in the absence in the Statute of anything in the nature of a “technological arts” test, eligibility gets complicated. However, what in the 18th Century was called “useful arts” is today known as “technological arts”. So, to my mind, the US Statute does include a mandatory technological arts filter. It is just that nobody, not even the Supreme Court, has any “idea” how to cope with it and administer it, and adjudicate it, so it ducks the question, whenever invited to rule on it. There’s a fine line between “judicial economy” and “wriggling out of responsibility”.
At the risk of conflating two very separate discussion points, the far-too-broad-brush painting of:
“I grant you, any Patent Office that declines to examine for obviousness in the way the EPO does it (eg the USPTO) is forgoing the only clean, fair and efficient way to examine for eligibility.”
is mistaken for multiple reasons.
First, examining for obviousness is simply separate from examining for eligibility.
Second, examining for obviousness in the manner chosen by the US Sovereign is NOT being respected.
As we have discussed (although you never seem able to grasp), the US Sovereign choice is TO BE respected. Not only is such a choice fully amenable to BEING a choice of the particular Sovereign, the US choice is nigh the only Sovereign choice that actually treats the concept of the legal fiction of a Person Having Ordinary Skill In the Art in a consistent manner (without confusing that legal person with effects of a real person for the different legal standards of novelty and obviousness).
As I have provided several times now, I “get” why Sovereigns may choose to BE inconsistent, and I have stated that THAT choice is fully a choice of the Sovereign – but there is no need for the presence of disrespect for this Sovereign based on our different (and more consistent) approach.
As to “ However, what in the 18th Century was called “useful arts” is today known as “technological arts”. ” – this is flat out false. That you (again) start with this falsehood is akin to you refusing to have a mind willing to understand. There is NO “ US Statute does include a mandatory technological arts filter.”
[W]hat in the 18th Century was called “useful arts” is today known as “technological arts”. So, to my mind, the US Statute does include a mandatory technological arts filter. It is just that nobody, not even the Supreme Court, has any “idea” how to cope with it and administer it…
Well you are half-right. U.S. case law definitely acknowledges that “useful arts”=”technological arts.” In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979). As for a technological arts “filter,” it bears notice that the phrase “useful arts” never appears anywhere in any U.S. patent statute.
There have been a few abortive efforts to make the observation that “useful arts”=”technological arts” into a test for patentability, but that dog just does not hunt. In re Bilski, 545 F.3d 943, 964 (Fed. Cir. 2008) (“Neither the PTO nor the courts may pay short shrift to the machine-or-transformation test by using purported equivalents or shortcuts such as a ‘technological arts’ requirement”). Indeed, one of the two greatest jurists of U.S. patent law—the same one who most explicitly acknowledged that “useful arts”=”technological arts”—was quite explicit that it serves no useful purpose to try to make “technological arts” into a sort of patentability “filter.” In re Waldbaum, 457 F.2d 997, 1003 (C.C.P.A. 1972) (Rich, J., concurring) (“As the originator of that [technological arts] ‘test’ in… Musgrave,… I hereby express… [that t]he term ‘technological arts’ was selected in Musgrave as probably having a connotation in these times roughly equivalent to that which ‘useful arts’ had in the eighteenth century. No new legal concept was intended”).
“Well you are half-right. U.S. case law definitely acknowledges that “useful arts”=”technological arts.” In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979). ”
ONE court case does not make this so – especially as the same judge refuted the takeaway being attempted here.
Oh wait this is Gregg (and his “legendary” inte11ectual DIShonesty).
“ it bears notice that the phrase “useful arts” never appears anywhere in any U.S. patent statute.”
Sure – not in the Statutes, but “merely in the Constitutional clause…
But hey, “Greg” so he will state what he will regardless of any actual (binding) situation on what he discusses…
MD Once again, the deadly simple EPO “problem and solution approach” to obviousness, properly executed, effortlessly subsumes the eligibility issue.
Once again, whether you address the question of “inventive step over the prior art” by calling it “an eligibility question” or “an obviousness question” changes nothing. Nothing. These are just words used to describe a logical analysis. And the logical analysis is identical: you compare the claim to the prior art and determine what is recited in the claim that is different from the prior art. The different thing is the allegedly “new” thing. Then you evaluate whether that “new” thing falls into a permitted category and/or a prohibited category. The answer to those questions determines whether the claim is eligible (in the US, e.g., the so-called printed matter doctrine) or whether a “deeper” analysis of obviousness is needed (getting into unexpected results etc).
It’s true that the terms “technical” (in the UK) and the terms “useful” (in the US) are poorly defined. That definitely does not mean that those terms can not be more clearly defined. They definitely should be more clearly defined (along with the term “structure”).
“ These are just words used to describe a logical analysis.”
So very wrong – these are NOT “just words” and each provide a very DIFFERENT MEANS to whatever ENDS that you think that you want to get to.
“ is eligible (in the US, e.g., the so-called printed matter doctrine)”
LOL – wow, you went there? Have you forgotten just how much THAT burns your desired ENDS?
“They definitely should be more clearly defined ”
LOL – how about “Abstract?” “Sufficiently more?” “proper judicial authority?” “what the word ‘May’ provides?” or about a dozen other counter points that you perpetually run away from?
MM, I disagree with you when you write:
“the logical analysis is identical: you compare the claim to the prior art and determine what is recited in the claim that is different from the prior art. The different thing is the allegedly “new” thing. Then you evaluate whether that “new” thing falls into a permitted category and/or a prohibited category.”
At the EPO, the novelty enquiry consists in enquiring whether the claimed combination of features is found in the prior art. Yes or No. The claim is the “thing”. Anything less than the claim (ie one “feature” pulled out of it) is not a “thing”.
Think about letters and words. You use old letters to make new words. Suppose you invent a new word. It is irrelevant to the newness of the new word whether it is made up of entirely old letters or if it contains a new letter you also invented.
At the EPO, the only time you get to cleave off individual features of the combination is in the execution of the PSA obviousness enquiry. But this is NOT relative to “the prior art” but, rather, to just one single point of reference within the prior art, the “D1” reference. Any enquiry whether any particular feature of the claim in view is “old” or “new” is relative to the disclosure of D1 alone. Such an enquiry is do-able.
Conversely, an enquiry into the novelty or otherwise of any isolated single feature of the claim, relative to the prior art universe in general, is not just a waste of energy but also, in relation to the claimed combinaton of features, liable to deliver the “wrong” result.
“ It is irrelevant to the newness of the new word whether it is made up of entirely old letters or if it contains a new letter you also invented.”
This directly translates to:
“It is irrelevant to the eligibility of the claim as a whole whether it is made up of entirely old elements or if it contains a new element which you also invented.”
Malcolm is ALWAYS trying to parse and apply eligibility improperly. This is why my smackdown of him with the Bog Box of Protons, Neutrons, and Electrons is so on point.
“not just a waste of energy but also, in relation to the claimed combinaton of features, liable to deliver the “wrong” result.”
Exactly the same here too.
the US Statute does include a mandatory technological arts filter. It is just that nobody, not even the Supreme Court, has any “idea” how to cope with it and administer it, and adjudicate it,
That’s because the judicial exceptions are baked into the statute. Abstractions aren’t technological. Mental steps aren’t technological. Products of nature aren’t technological.
The exception for software in the US rests on the w@cky created-out-of-thin-air fiction that data “is the essence of electronic structure” and so abstractions such as data processing and information are suddenly deemed to be not abstract. Because “essence of electronic structure.”
And the fact is that the Supreme Court actually does know how to “deal with it.” It’s this portion of the patent bar that doesn’t know how to “deal with it”, or simply refuses to “deal with it.”
“That’s because the judicial exceptions are baked into the statute.”
Come back to reality. They clearly are NOT baked into the statute, and hence, ARE Judicial Exceptions.
Well; regarding 112(f); I hope that we all can at least agree that — should any changes be made — that they be prospective, and not retrospective.
It would be unfair, unreasonable, and potentially unconstitutional to apply any such ex post facto change(s) to already-issued patents or already-filed applications.
If 112(f) be modified, we must start from a clean patent slate.
American companies, their counsel, and all inventors must know the rules of the game before the game begins.
You don’t change the rules of baseball once the game is in progress or has been concluded.
It would be unfair, unreasonable, and potentially unconstitutional to apply any such ex post facto change(s) to already-issued patents or already-filed applications.
Sure. Then you agree that it would be equally unfair, unreasonable and “potentially unconstitutional” (ROTFLMAO) to allow patents granted using an absurdly broad 101 statute to be used against anyone who was practicing the claimed method before the grant of the patent under that new statute.
I’m talking about who is presently making a correlation, using an existing detection method, or using a computer to process data. All those people should continue to be able to freely do those things — in any prior art context — without fear of infringing a patent in the future. Because that’s how it is now for anyone with an intelligent attorney.
translation:
Anyone who has ever used protons, neutrons, and electrons should be free of any patents that provide for items made of (or methods related to such) protons, neutrons, and electrons…
I hope that we all can at least agree that — should any changes be made — that they be prospective, and not retrospective.
Agreed. I favor the revisions, but only if they are made strictly prospective in application.
I hope that we all can at least agree that — should any changes be made — that they be prospective, and not retrospective.
Agreed. I support the proposed §112(f) revisions, but only for prospective application.
I hope that we all can at least agree that — should any changes be made — that they be prospective, and not retrospective.
Agreed. I support the proposed revisions to §112(f), but only for prospective application.
Totally off-topic, but I see that another run was made this month at the takings argument. This time Celgene made a hash of it, instead of Trading Tech making a hash of it, but it comes to the same thing (although without Judge Hughes on the panel this month, there were fewer fireworks).
Basically, what the arguments have revealed both last month and this month is that this argument cannot work for its intended purpose. Both Trading Tech and Celgene want the AIA to be declared unconstitutional, and their patents to be restored. However, the remedy for a taking is compensation, not statutory invalidation. Meanwhile, neither Trading Tech nor Celgene has even bothered to sue for compensation in the Court of Federal Claims, so the CAFC does not even have jurisdiction to decide these arguments, because neither is ripe yet.
What a clown show.
Given the hundreds of losing constitutional law assertions over the years in comments on this and Gene’s blogs re the AIA, it’s surprising that there are not even more of these half-baked Fed. Cir. arguments.
Do they ever consider what aggravating judges by making such arguments without even professional constitutional law expert help does to other, winnable, arguments their clients may have had, if any?
It is a worthy question Paul. One does one’s client no great favors by standing up to make embarrassingly inadequate arguments. Come to that, the lawyers making these arguments do no great favors for their own professional reputations.
People like Greg and Paul who are too ch1ckensh1t to actually engage on the merits of Constitutional law discussions should not snipe from the sidelines and should just shut the F up.
Speak up my friends AFTER you actually try to engage on the merits.
One cannot rationally “engage on the merits” with someone who has insistently argued that mere personal opinions of what the Sup. Ct. should decide on Constitutional issues is superior to and more important than anything actually decided by unanimous or nearly unanimous decisions of the Sup. Ct.
In any event, the “merits” of this “issue” (one has to use both terms losely, given the clownish nature of the argument) are that “the section 282 presumption, which represents a procedure created by statute to govern litigation, [is not] a property right subject to the protection of the Constitution.” Patlex Corp. v. Mossinghoff, 758 F.2d 594, 605 (Fed. Cir. 1985). One can—of course—hope that the Supreme Court sees this issue differently than the CAFC, but this is a distinctly long shot hope. There is really no basis in either law or custom to make the nonsense class of arguments that Trading Tech, Celgene, and others are advancing.
More sniping from the guy who whines about those that are “too rough” with his views…
Enjoy bathing in that duplicity much, Greg?
Your statement makes no sense, as it is a mischaracterization of provided positions.
Perhaps you just do not understand what it means to discuss law (and that you can only “discuss” cases already decided).
For all of that, you do not feel restrained from taking mindless ad hominem shots at those who not only are willing to hold actual discussions, but who can formulate and advance legal theory (something you apparently lack the capability of doing).
Your statement makes no sense, as it is a mischaracterization of provided positions.
The thing is, Bildo, this is where a normal person would respond with an “accurate” version of the “provided position”, written plainly, and addressing specifically the inaccuracies in the comment being responded to.
You have great difficulty with that, and you always have. A lot of times it seems that you don’t have any real “position” at all, at least not one based on any coherent, consistent principles (of course, this is something that you have in common with Greg ….).
LOL – like you EVER engage in such a manner as being inte11ectaully honest and even bothering to note counter points or even respond with a lucent or accurate reply to any such counter points.
Here, Malcolm, I invite you to lead by example.
“You have a great difficulty with that”
Your feelings are noted, as wrong as they are. Choice of how I respond is NO indicator of difficulty. My accurate and written plainly positions are provided at the first instance. That you merely feel that I have no real position at all is just that: your feelings. Those feelings simply do not accord with reality.
I invite you to lead by example
Well, that’s been done a thousand times over, including examples in this very thread. By myself and others.
It’s not like I’m the first person to point this out to you. But go ahead and keep digging. The dirt suits you.
[shrug]
“Well, that’s been done a thousand times over”
Another pure falsehood.
Either you do not understand the meaning, your cognitive dissonance is again overtaking you, or both.
“But go ahead and keep digging”
Says the guy clutching the shovel…
That Accuse Others meme of your is in play (yet again).
Finally had a chance to give it a listen, and “make a hash of it” is a fair assessment. That attorney for Celgene composed his argument in an extremely p00r manner.
For that matter, the other side appeared equally inept.
IPO reports that this 3d round opened with this from the Senate Committee Chair: “Chairman Tillis opened the hearing by summarizing four main issues with the draft proposal that were discussed in previous hearings: (1) that a new definition of “utility” is needed, (2) that there are concerns with the proposed amendment to section 112(f), (3) that there is a desire to add an enhanced experimental use and research exemption, and (4) that the draft proposal is not intended to lead to human gene patenting. Ranking Member Coons expressed concern that uncertainty surrounding patent eligibility law has weakened the U.S.’s international standing.
[and that]
Tillis concluded the hearing by saying that the Subcommittee will further refine the proposal and aim to introduce a final bill sometime after the July 4th recess. A recording of the hearing and witnesses’ written statements are available on the Senate Judiciary Committee’s website.”
In other words, tune in for the next exciting episode of “Proposed Revisions to §§ 101 & 112.” Goofy as it might seem, I really enjoyed these hearings. I feel like we are making progress toward improvement in the law.
Compared to how the AIA was handled, this cannot be said to be “goofy” by any stretch of the imagination.
Given how the draft was revised (favorably) to criticisms of trying to include mention of the Judicially scrivined categories, one may hold out hope that the Trojan Horse of the proposed 112 and the needlessly limited reduction from Useful Arts to “Technical Arts” in the proposed 100 sections will be changed as the majority of witnesses testified.
The reality is that the people that are advocating for the changes to 112(f) are simply not being intellectually honest. They do not address the arguments presented.
The reality is that those that are against the changes to 101 (reform) are not being intellectually honest. They do not address the arguments presented.
The anti-patent crowd are at a par with climate change deniers and flat Earthers in their level of denial of reality.
I think Death over at the other blog has called it. The 101 changes are for Pharma and will help them a lot. The 112(f) changes are to hamstring software and are for SV.
[T]he people that are advocating for the changes to 112(f)… do not address the arguments presented.
The “arguments” presented to date are that the proposed changes would:
(1) make it very difficult to draft a claim that cannot easily be designed around; and
(2) encourage drafting really long specifications.
I (a person advocating the §112(f) revisions) have indeed responded to these arguments, although I gather that you do not like my responses.
Regarding the first “argument” I cheerfully concede your assertion. From a public policy perspective, it is a feature—not a bug—if claims are easily designed around, so your objection actually constitutes an argument in favor of the proposed changes, not against them.
Regarding the second, my response is an insouciant shrug. I grant that—all else being equal—shorter applications are better than longer ones. As noted above, however, all else is not equal. Long applications are a small price to pay for the consumer surplus generated by the enhancement to market competition.
Greg, your position is ridiculous. You are not addressing scope of enablement for claim construction. Additionally, stating that a specification must enumerate all known solutions is ridiculous on its face.
You are not addressing scope of enablement for claim construction.
Naturally, I acknowledge that a patentee is and should be entitled to claim as much useful, novel, and nonobvious scope as s/he has enabled. The onus, however, is on the patentee actually to do so. The patentee is the master of her claims, just as the offeror is the master of her offer.
If the patentee wants a given measure of claim scope, she should trouble herself to draft a claim to cover it solidly. There is no useful public policy purpose served, however, by enacting a rule that the court should do the work to extend the claim scope to the outer limit of what is enabled if the patentee does not trouble to write the claim in a manner that unambiguously reaches that outer scope.
Additionally, stating that a specification must enumerate all known solutions is ridiculous on its face.
Naturally, I defer to your expertise on this point. Your long history as a practitioner of the facially ridiculous is known and celebrated on these boards.
You are not addressing scope of enablement for claim construction.
I cheerfully acknowledge the patentee’s right to claim as much useful, novel, and nonobvious subject matter as s/he has enabled. The onus is on the patentee actually to do so, however.
A patentee is always free to claim less than the full scope of what s/he has enabled (dedication to the public). If the patentee wishes to claim the full scope, then s/he needs to write the claims in a manner that makes unambiguously clear that s/he means to claim the full scope.
There is no good public policy purpose served by asking the court to extend the claim to reach the full scope of enablement when the patentee has not made clear where that boundary ends. If the patentee cannot be troubled to delineate that boundary with precision, then the claim simply fails, and devil take the hindmost.
Additionally, stating that a specification must enumerate all known solutions is ridiculous on its face.
Naturally I defer to your considered expertise on this point. Your long history of work on the facially ridiculous is known and celebrated on these boards.
Oh my, such snideness from a person who refuses to engage with people who have treated him “roughly.”
What a Fn inte11ectual coward.
>>>I cheerfully acknowledge the patentee’s right to claim as much useful, novel, and nonobvious subject matter as s/he has enabled.
>There is no good public policy purpose served by asking the court >to extend the claim to reach the full scope of enablement when >the patentee has not made clear where that boundary ends
These statements contradict one another. The patentee has made it very clear since 112 states enable anyone skilled in the art.
Just really ridiculous statements. I guess you can just push propaganda and ignore obvious truths. Post fact world.
Basically, Greg (dozens) position is that he enablement should only apply to exactly what is disclosed in the specification.
So enablement of anyone skilled in the art would no longer apply. The words should be changed to:
“anyone skilled in the art based on the embodiments and their equivalents disclosed in the specification” to …..
That is the skinny of it. But I am sure reality will continue to be ignored.
Basically, Greg (dozens) position is that he enablement should only apply to exactly what is disclosed in the specification.
No, that is not my position. Enablement is enablement, and written description is written description, and clarity is clarity. You cannot satisfy the written description rejection based on enablement, any more than you can satisfy the nonobviousness requirement based on novelty.
I agree that it is possible—in view of the art—that the full scope of a functional term might well be enabled. That does not mean that the full scope is described, or clear. Clarity and written description are their own requirements, and must be satisfied for a claim to be sustained, even if the claim really is enabled over its whole scope.
“that the full scope of a functional term might well be enabled. That does not mean that the full scope is described, or clear.”
Understanding full well that the requirements are each their own, how exactly is enablement actually met if what is merely purported to provide that enablement is NOT BOTH “described” and “clear?”
Something that is purported to enable, but is not describing, CANNOT enable. Lacking actually describing, what is IT that is being said to be enabled?
Something that is purported to enable, but is not clear, CANNOT enable. Lacking actual clarity, what is IT that is being said to be enabled?
I think you two are arguing over different things bruhs. NWPA, of course 112 says you have to enable your invention, but it doesn’t say that you have to go out of your way to set forth in clear language where the boundary of what you are enabling is. And most people don’t go that extra mile, like 99.9+% don’t. The poster above you wants them to for some reason. I don’t know why he wants them to, but he does. The reason he wants them to seems to be related to a court needing to know this info for some reason and him feeling that a court shouldn’t have to figure it out (likely because they are not equipped to do so.
The poster above you wants them to for some reason.
Actually, I do not care whether patentees make explicit where the scopes of their enablement end. My point is that it is perfectly fair that one’s claim scope should not be allowed to extend beyond what one has described in the specification.
In many instances, it works no untoward effect if that description floats at a totally functional level (pH buffer, lubricant, pressure sensor, etc). In some circumstances, however, the description really cannot be merely functional. In those circumstances, there is no substitute for structural description.
In a happier world, full of better people, it would be fine to use functional descriptions where they are appropriate and structural descriptions where functional descriptions are inappropriate. In the real world, however, too many people abuse this common sense approach and—instead of investing resources into providing adequate descriptions—invest their resources into litigating whether a given claim term really requires structural description support.
In a world where such a dynamic prevails, the best practically obtainable outcome is the one envisioned by the proposed §112(f) revisions.
Greg,
You really have no clue as to what you are ranting about.
Stick to your Big Pharma and leave the rest alone.
If you are looking for detailed legal analysis and criticisms of specific language in this draft legislation by an experienced patent litigator in software-related technologies [unlike other witnesses focusing on the pharma and medical diagnostic industries] see the paper from the last witness. It should be good for more heated commentary here:*
link to judiciary.senate.gov
*[Although my experience has been that most patent attorneys ignore pending patent legislation [even as massive as the AIA] and only publicly complain about it after it is enacted and they run into it.]
Patent litigators (even experiences ones) are often NOT real patent attorneys (leastwise with a focus on obtaining innovation protection).
In fact, some of the WORST comments come from litigators out to defeat innovation protection.
Thanks, Paul. That was an interesting read. I suppose it will come as no surprise that I disagree with a great deal of Mr. Vandenberg’s comments (although he has some suggestions that I consider worthwhile).
Probably the most egregious theme running through his comments is the idea that China will exploit these reforms to get patents that block U.S. innovators. I suppose that it is only fair—after the more feeble-minded on my side of the argument have used China as a boogyman to argue for reform—that those on the other side should advert to equally specious arguments about China patenting all of the good technologies and leaving our U.S. company with nothing but crumbs.
The pro-Alice version of this argument is every bit as vacuous as the anti-Alice version, but lacks the the “noble lie” justification that is the only redeeming virtue of the anti-Alice version of the the “oh no, China will eat our lunch” argument. If I might be excused for belaboring the obvious, the Chinese put their pants on one leg at a time, just like us Americans. It is vanishingly unlikely that any reform we make to our patent system—for weal or woe—will advantage Chinese over Americans (or Americans over Chinese) in any meaningful fashion. It is just gammon and spinach to talk of such outcomes.
dozens, you have no idea what you are talking about. A total wan k getting on here and spouting the anti-patent crxp with no substance to your arguments and no ability to respond to substantive responses to your wa nkdom shxt.
The common thread through “dozens” (Greg’s) view is that of a “One World Order” in which any particular place of Sovereignty is immaterial to a “general” sense of advancement.
Of course, this stems at least in part from his Big Pharma mindset.
dozens, you have no idea what you are talking about.
Duly noted.