Deferred Subject Matter Eligibility Response (DSMER) Pilot Program

Back in 2010, I wrote an article with Prof Rob Merges titled Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making.  We suggested that patent examiners often lack capacity to judge metaphysical questions centered around abstractness and laws of nature. In addition, we noted that many eligibility questions substantially overlap with bread-and-butter patent doctrines such as obviousness, enablement, and indefiniteness.  What that means is that delaying eligibility decisions can often result in entirely avoiding eligibility decisions.  In a 2019 article, Professor Chien provided more detailed guidance on how this could be accomplished.

The US Patent Office obviously did not follow our suggestions back in 2010, but did quickly recognize that Supreme Court’s eligibility jurisprudence was not really administrable by patent examiners.  The Office solution was to create its own narrowly tailored eligibility guidelines examiners can actually follow in a predictable way.  It turns out that patent applicants tend to like the PTO solution because the guidelines strategically err on the side of eligibility.  In many ways, the guidelines obviated the need for our ordering approach because the PTO created an administrable mechanism that does not push the boundaries or epistemology of abstractness.

Still, the patent office is going to try something of a deferred approach – and has recently published its Deferred Subject Matter Eligibility Response (DSMER) Pilot Program. To be clear, the examiner will still consider eligibility in the initial office action, but participants in the program permits the applicant to defer responding to the eligibility rejections in the initial office action response.

In a 2021 letter, to the PTO, Senators Tillis and Cotton has suggested a sequencing approach that followed the Crouch+Merges proposal with examiners delaying rejections until later.  The PTO Pilot is obviously different in that examiners are still making the rejections on record, and the Federal Register notice does not explain why the PTO did not follow the Tillis+Cotton or Crouch+Merges proposal.

The program is a test run and requests for participating is only via invitation.

122 thoughts on “Deferred Subject Matter Eligibility Response (DSMER) Pilot Program

  1. 11

    What does it mean that the utility of the invention arises in a human mind?

    It means that the result of a process is an item of information, and the utility of that information arises when a human being applies a meaning to the information in order to make a decision or perform an act.

    It does not mean an improved vehicle for the information- such as a computer or a…wait for it…better traffic light. It does not mean an item of information for a non-human actor to make a decision….wait for it…like a rubber press.

    Laws are political artifacts. Politics are about divisions of power and privilege, based on some philosophical construct. Morality is the fitness of philosophical constructs to one’s chosen ethical system, if any. There are philosophical constructs for the use of symbols, generally called semiotics.

    Data are symbols. Symbols have three parts: the vehicle, which is the means making the signal in the world. The referent, which is an agreement between the maker of the symbol and the user of the symbol as to what the symbol means, and the interpretant, which is the experience of the user.

    Vehicles and referents are potentially moral subjects of the patent system. Interpretants are not.

    1. 11.1

      I see that you still have not grasped the terrain as the example of the traffic light expressly works against your desired view point (seeing as ANY utility must come from your so called “referant” in the patent sense of the word — and, in fact, ALL utility in the patent sense must be processed and recognized in the human mind.

      As to you going WAY off the reservation and inserting some type of “moral” sense, it would be immoral to follow one who so clearly cannot be bothered with understanding the terrain.

  2. 10

    Wandering, not being sarcastic, although I certainly use that form often enough.

    Abstraction & Laws of Nature are just other words for “information”.

    I’m great with no infringing step being permitted in a human mind, but really, to solve the abstraction issue & organizing human activity issue it’s the same thing: it’s the nature of the utility provided by the invention.

    If the utility of an invention arises in a human mind, the invention ought not to be eligible. Simple enough.

    No human mind, no abstraction. Only a human mind can host an abstraction. A non human actor can gain utility via intangible means, but those means cannot be abstractions- they can only be components.

    I’d invite you to review this:

    link to papers.ssrn.com

    1. 10.1

      To clarify: if the result of the inventive process is some item of information, and the use of that information within a human mind achieves the utility of the invention, it should not be eligible.

      If the invention is a new way of processing information, or an improvement to an information processing machine, composition, or manufacture whereby the utility of the invention is not realized by the human meaning of the resulting information (which is always 100% abstract), the invention should be eligible.

    2. 10.2

      If the utility of an invention arises in a human mind, the invention ought not to be eligible.
      What does it mean that the utility of the invention arises in a human mind?

      Only a human mind can host an abstraction.
      Why are computer-implemented inventions being invalidated then?

  3. 9

    Wandering, I like this formulation very much and I take back everything I never said about you.

    The more I think of it, the more I like putting it in 35 USC 271 than 35 USC 101. If you put it in 35 USC 101, then there will always be arguments that some particular limitations is a mental step and the patent should be invalidated (or not allowed to issue) for that reason. By putting it in 35 USC 271, it’ll simply be a factual finding made by the Court: Is the infringement step performed by a computer or by a human mind? If performed by the human mind, then no infringement

    1. 9.1

      Wandering, I like this formulation very much and I take back everything I never said about you.

      Thank you [assuming you aren’t being sarcastic, which I am not at this point].

      Another thing I like about doing it this way is that it gives both “sides” something. The side that says “you cannot patent a mental process” gets the ability to never infringe anything so long as the step is being performed mentally. However, the side that says “computer operations should be patentable” gets that ability.

      Some other benefits, as I previously alluded to, is that this is a determination that doesn’t involve the validity/eligibility — and thus, it gets the USPTO entirely out of the picture.

      One of these days, I’m going to draft some proposed revisions to the statutes. I know how I want to handle 35 USC 101. There are some other changes to 35 USC 271 that I have in mind.

      The issue becomes if we are going to rewrite 35 USC 101 to basically eliminate the judicial exceptions, how do we address the current exceptions now.

      We have to deal with laws of nature, natural phenomena, and abstract ideas.

      Both laws of nature and natural phenomena deal with the natural world. My current idea is to address this is 102. Basically, the idea is to add anything found in the natural world (i.e., anything not made by made under the sun) as prior art. In this way, you cannot patent something that already exists in the world. You cannot patent E=Mc^2 [not that you could have realistically done so anyway]. My concern is about unnecessarily clamping down on biologics but I suspect that the vast majority of useful biologics are refinements of natural products and while the natural product itself cannot be patented, the refinement can be. There way be some 103 issues to be contemplated here but I’m not experienced enough in the area to know what those might be. For example, I know there is a concern about ‘people’s DNA getting patented.’ While I know that concern is overblown, how could that concern be addressed by statute while still allowing inventions using human DNA to be patentable?

      This leaves abstract ideas. If I’m working with the USPTO classification, that leaves: mental processes, mathematical concepts, and certain methods of organizing human activities. I’ve addressed the mental processes one. I don’t think mathematical concepts needs to be addressed any further beyond you cannot patent a natural phenomena like E=Mc^2. Serious question, what is the downside for allowing a patent on a mathematical concept that isn’t tied to the natural world?

      This leaves “certain methods of organizing human activities.” This is a catchall phrase that covers a lot of what has been previously described as business methods. I’m looking at all the examples cited by the USPTO in their 2019 Patent Eligibility Guidance document (specifically footnote 13) and what strikes me is that if the claims was solely directed to whatever they were classifying as being an abstract idea, then the claim should have been obvious under 35 USC 103. This is where I think 35 USC 101 is being used as a crutch to weed out patents that they think shouldn’t have been issued but are too lazy to actually find the prior art and/or construct a halfway decent obviousness rejection. Alternatively, this is where 35 USC 101 is being used by the courts to sua sponte determine what subject matter they think should be patentable (or not). It isn’t their business to do.

      Unless someone can explain why these activities need to be separately addressed, then I don’t think it is necessary. However, I’m toying around with the idea of making any action performed by a human (that does not involve a tool) of also not being an act of infringement.

      Your thoughts on any of this? Or anybody else’s thoughts? To be clear, constructive criticism/suggestions are welcome.

      Oh, and to pull my original suggestion back up to the top, this is my suggestion:
      amend 35 USC 271 to define that “it shall not be an act of infringement if an element of a claim is performed in the human mind.”

      1. 9.1.1

        I agree with nearly everything here. I just want to remark on the idea that

        Both laws of nature and natural phenomena deal with the natural world. My current idea is to address this is 102. Basically, the idea is to add anything found in the natural world (i.e., anything not made by made under the sun) as prior art.

        I do not think that you need to add anything to §102 to achieve this outcome. The laws and products of nature are already in public use, which is an existing §102 category. Regrettably, the Court has chosen to deal with this point by shoehorning it into the “new” requirement of §101, rather than dealing with it under the more practical terms of §102. That does not mean, however, that §102 is not already fit for purpose, as-is.

        I also want to foot stomp agreement with the assertion that “35 USC 101 is being used as a crutch to weed out patents that they think shouldn’t have been issued but are too lazy to actually find the prior art and/or construct a halfway decent obviousness rejection.” Every now and again one encounters a claim that really, properly, should only fail under §101 (e.g., In re Smith, 815 F.3d 816 (Fed. Cir. 2016)). The overwhelming majority of so-called §101 defects, however, are really more properly §103 or §112(a) defects under the straight-forward terms of the statutory text.

        1. 9.1.1.1

          The laws and products of nature are already in public use, which is an existing §102 category.
          Public knowledge (once they are discovered) — but not necessarily public use. Regardless, a little clarity would allow this to be addressed as prior art instead of as a judicial exception.

          Every now and again one encounters a claim that really, properly, should only fail under §101 (e.g., In re Smith, 815 F.3d 816 (Fed. Cir. 2016)).
          In re Smith is directed to a blackjack variation. Games have been patented in the past, and this is, in essence, a particular process that uses playing cards. Frankly, I do not see a good policy argument as to why new games couldn’t be patentable. These are not “the basic tools of scientific and technological work.” Again, I see no legitimate policy reasoning to muddy up statutory law to address inventions such as this. That being said, I’ll certainly consider arguments to the contrary.

          The overwhelming majority of so-called §101 defects, however, are really more properly §103 or §112(a) defects under the straight-forward terms of the statutory text.
          Agree 100%. 35 USC 101 is a tool for lazy examiner/judges.

          1. 9.1.1.1.1

            Stating something “is to be deemed to be” prior art when it is not in fact prior art would only encourage the type of behavior from the bench that is at the root of the current problems.

          2. 9.1.1.1.2

            As to “laws of nature,” I would remind you of phlogiston, the aether, and other such things that should remind you that “the map is not the land,” (and if the “map” itself is in the form of a claim that falls to one of the statutory categories and has utility of the proper legal nature (that is, of the Useful Arts), then any attempt to constrain or deny patent protection should be scorned.

          3. 9.1.1.1.3

            Public knowledge (once they are discovered) — but not necessarily public use.

            Sorry, I am not quite following you. Trees have been photosynthesizing out in public for millennia, and they never made any of us sign an NDA. While the chemistry of photosynthesis may not have been known until the last century, it was in “public use” well before that, and thus unpatentable as anticipated. Just because no one but the authors read a given 2000-published thesis until 2007 does not mean that it is not prior art to an app filed in 2005. Same goes for natural workings in public use.

            1. 9.1.1.1.3.1

              it was in “public use” well before that
              I am interpreting the term “public” to refer to people (i.e., humans). Trees, as best as I know, are not part of the public. Hence, no “public” use of photosynthesis unless you can show me some green-skinned humans having chlorophyll contained therein.

              1. 9.1.1.1.3.1.1

                “Public use” does not mean that the public is using the invention. It means that the invention is being used where the public can inspect it. If Henry Ford were to drive his motor car around on the streets before filing, that is “public use” even though only the inventor gets to drive the car.

                You do not need to let the “public” actually press the buttons or pull the levers in order for “public use” to come into play. So long as the invention gets used in a manner where the public has access to inspect and learn how to reverse engineer, that is “public use” (even if no member of the public actually takes advantage of the opportunity to inspect).

                1. “Public use” does not mean that the public is using the invention. It means that the invention is being used where the public can inspect it.
                  I don’t read “public use” that way. Regardless, we agree on the same goal.

          4. 9.1.1.1.4

            In re Smith is directed to a blackjack variation… I do not see a good policy argument as to why new games couldn’t be patentable.

            I agree that the policy arguments on which the court purports to sustain the §101 rejection do not make a lot of sense. In the straightforward sense of statutory interpretation, however, §101 requires that the claimed invention be “useful,” and wagering games do not satisfy that requirement. Games of chance are not part of the “useful arts” that Title 35 is meant to promote.

            1. 9.1.1.1.4.1

              §101 requires that the claimed invention be “useful,” and wagering games do not satisfy that requirement
              Utility has long been an exceptionally easy requirement to meet.

              Games have utility as entertainment.

              1. 9.1.1.1.4.1.1

                Entertainment is protected by copyright, not patents. I agree that utility is a low bar to clear, but it is still a bar. Cases like Smith (i.e., cases where the straightforward, textual sense of §101 really is implicated) are rare, but if someone really is so pig-headed as to try to patent new games, or new plotlines for t.v. shows, or new religious rituals, that is the sort of thing that “useful” is there in §101 to exclude.

                1. Entertainment is protected by copyright, not patents.
                  Not if the entertainment is something not protectable by copyright — such as a machine that provides entertainment. Board games have been patented: 5226655, 5301953, 5435565. Why shouldn’t a game with cards be patentable?

                  New plotlines for TV shows is not a process.

                2. One can define plot lines as processes if one wishes (“a method comprising: providing a character designated as a princess; providing a character designated as a farm hand; portraying a scene in which the princess expresses romantic interest in the farm hand…” etc).

                  Meanwhile, the fact that the PTO has granted utility patents on various board games proves rather little. The PTO grants thousands of invalid patents each year. If you are aware of an instance of a court upholding such a patent when challenged, that would prove something, but I am not aware of any such cases. Do you know any?

                3. Greg – outside of his selective choice of when and when not to follow the law, does appear to bring up a good point as to RECENT cases of courts upholding enforcement of patents on board games.

                  Would absence of evidence be evidence of absence?

                  Plenty of “anti” in the news of Patents AND board games, but the closest I could find in a quick search was a federal case in New Orleans in which Michael Larson and his patented game of Khet prevailed over MGA, Wal-Mart Stores and TOysR Us (back in November 2012).

                  I also did uncover an academic article (by Risch – one who is not objectively anti-patent): link to PAPERS.SSRN.COM

                  A Surprisingly Useful Requirement
                  For 220 years, the Patent Act has required patentable inventions to be “new and useful.” For almost as long, cou…

                  But the pickings are slim – a veritable absence. But is this because these types are not enforced? Could it be that to actually fall into a zone of enforcement, sufficient detail and particularity would arise to make fighting the patent a no-go (or perhaps just as likely – a candidate for Big Game companies to simply buy out the patent holder)? After all, the type of innovator for board games is not likely the type to say “no” to even a modest buy-out.

        2. 9.1.1.2

          Ugh

          This type of fallacy need be quashed:

          shoehorning it into the “new” requirement of §101,

          The PHRASE is “new and useful,” and it is a term of art. In the plain words of the text, there is NO such requirement in 101 from the mere presence of the word.

          IF you want to push this as some type of requirement, then you should immediately note a Void for Vagueness problem, given that there is exactly zero in Section 101 (from Congress) detailing what this supposed requirement is to be.

          STOP trying to conflate 102/103 into 101.

      2. 9.1.2

        The idea to parse a claim and remove coverage only on a single part of the claim (mental step or otherwise) is simply a bad idea that should be trounced immediately.

        Abstract – if the Supreme Court ever actually set out a definition, would likely be tied to a claim ENTIRELY in the mind.

        Such a claim would be directly handled by the statutory categories (no change required) — and if other portions of a claim (as would be present to be categorized into one of the statutory categories) are present to move the claim as a whole and as an ordered combination, then the “concern” is removed, as “totally in the mind” could not be reached.

        1. 9.1.2.1

          The idea to parse a claim and remove coverage only on a single part of the claim (mental step or otherwise) is simply a bad idea that should be trounced immediately.
          Why is compromise a bad idea?

          Abstract – if the Supreme Court ever actually set out a definition, would likely be tied to a claim ENTIRELY in the mind.
          Waiting for the Supreme Court to define “abstract” — now that is a bad idea. We’ll all be dead by the time that happens.

          Such a claim would be directly handled by the statutory categories (no change required) — and if other portions of a claim (as would be present to be categorized into one of the statutory categories) are present to move the claim as a whole and as an ordered combination, then the “concern” is removed, as “totally in the mind” could not be reached.
          An argument to return to the past. Good luck with that happening.

          1. 9.1.2.1.1

            Compromise is a bad idea because compromise is not needed for the protection of innovation AND you entertain Trojan Horses at your own peril (the so-called compromises at the last senate round on 101 were p01s0n pill NON-starters).

  4. 8

    I guess I don’t get it.

    I suspect that my clients would like the opposite. Actually I know they would.

    They would like a program where the 101 issue is addressed first.

    Why waste money on 112/102/103 if you can’t get by the magical 101 where there is no law but policy implemented by the fact finder in pretty much anyway they want.

    1. 8.1

      “It turns out that patent applicants tend to like the PTO solution because the guidelines strategically err on the side of eligibility. ”

      I guess this is a fair statement but I’d say that the 101 jurisprudence is so vague that the only way to fairly deal with applications is to err on the side of eligibility.

      1. 8.1.1

        It’s vague at the court level, but fairly clear at the PTO level. Or at least a lot clearer than the opaque reasoning in the CAFC.

        1. 8.1.1.1

          Iancu certainly attempted to provide “off-ramps” to the Examiners such that the Gordian Knot could be avoided at the PTO level.

    2. 8.2

      Night Writer,

      Before you get to your statement of “They would like a program where the 101 issue is addressed first.” please do read what the Tillis letter actually asks for.

      And perhaps more importantly, note why.

      It is in Tillis view that when an examiner actually understands the claims (as would be the case in understanding any rebuttals under 102/103/112), that it would be quite clear that an eligible practical application would be present, and the “conjuring” phantom work of 101 would need not be all that complicated.

      This in fact could be made to align with the “Off-Ramps” in Iancu’s 2019 Patent Eligibility Guidance.

      By recognizing that an invention is enabled (possessed/described) and distinguishes from prior art (thus both showing ‘something more’ as well as alleviating any “pre-empt entire fields” concerns, one deflates and removes much of the hand waving of 101, and one can treat 101 properly as the low bar that it was meant to be treated, clearing two tasks:

      1) is the innovation claimed in at least one statutory category? and

      2) does the claimed innovation provide utility within the Useful Arts?

      1. 8.2.1

        +1 my friend.

    1. 7.1

      That’s astonishing, Martin. Michael Pollan’s book “How to Change your Mind” on psilocybin was published some years ago. I should have realised when I read it (like Peter Thiel has done, it seems) how much money is there to be made, given a big enough patent portfolio.

      1. 7.1.1

        MaxDrei: the epitome of a mind NOT wiling to understand.

        Everything goes through the same filter and all inputs end up looking like the same output.

  5. 6

    One has to smile. The uproar over 101 arises because it has come to be used as a cut-out, to finesse out of the gruesome business of debating the obviousness question. And so it is, that the outcome is that the business of debating eligibility at the PTO has become so gruesome that it is proposed to put it off until after the obviousness enquiry has been completed.

  6. 5

    I suspect that the reason for not delaying the rejections under 101 is in 37 cfr 1.104(b):

    (b) Completeness of examiner’s action. The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.

  7. 4

    This seems to get it entirely bass-akwards. The plain meaning of the word:

    eligible adjective
    el·​i·​gi·​ble | \ ˈe-li-jə-bəl \
    : qualified to be chosen, to participate, or to receive

    Eligibility should precede all other considerations. You don’t fully process a loan to a borrower with bad credit. You don’t enroll students in law school who can’t read or write. You shouldn’t examine putative inventions upon which the patent laws to not apply.

    The “epistemology of abstractness” can be restated as “the treatment of information”.

    If I were an applicant facing a likely 101 rejection, I would jump all over this, just like I would if I were a deadbeat seeking a loan.

    1. 4.1

      The “epistemology of abstractness” can be restated as “the treatment of information”.

      Have you bothered with the terrain of patent law yet?

        1. 4.1.1.1

          Yes, Marty, you need to come to grips with what those words mean in the patent law terrain.

          You still have not done so.

        2. 4.1.1.2

          I like traffic lights, no matter where they’ve been.
          I like traffic lights, but only when they’re green.
          I like traffic lights, that is what I’ve said.
          I like traffic lights, but not when they are red.

          1. 4.1.1.2.1

            I feel that by removing the redundant repetitions of the refrain, you’ve ruined the song, Bamber.

    2. 4.2

      Eligibility should precede all other considerations.
      Can you please show me where “eligibility” is found in the patent statutes.

      Patent eligibility is judge-made law. The fact that they used the term “eligibility” shouldn’t endow it with some magical requirement as it pertains to patent examination.

      Sometimes it is worthwhile to re-read a statute — even one that you’ve read dozens and dozens of times before.
      Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
      A person can obtain a patent on any new and useful process, machine, manufacture, or composition of matter. The term “any” really sticks out. The statute doesn’t read:
      Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [or judicial exceptions]
      or read:
      Whoever invents or discovers [those eligible] new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title

      This point has been made thousands of times before — the Supreme Court has violated the basic principle of statutory interpretation that Courts “should not read into the patent laws limitations and conditions which the legislature has not expressed.”

      Patent eligibility is little more than an ‘I know it when I see it‘ test. The USPTO, with all of its institutional expertise, cannot guarantee that a patent issued after examination will survive a post-grant challenge under 35 USC 101. Supposedly, 35 USC 101 has been unchanged since 1952. 70 years later and the USPTO cannot give reasonable assurances that patents issued today are valid under 35 USC 101. If the USPTO doesn’t know with reasonable certainty what is “patent eligible,” how can applicants?

      Under Article I, Section 8, Clause 8 of the US Constitution, Congress shall have power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” How can the progress of science and useful arts be promoted when the system itself is so broken that those who partake in it have little confidence that an issued patent is a valid patent?

      Getting back to the ‘I know it when I see it‘ test, patent eligibility/validity is now in the eye of the beholder (i.e., the person doing the “I see it”). Get Dyk and Prost, for example, on your panel and I’ll give you 20-1 odds that your patent is invalid. Those odds will vary significantly based upon other panel compositions. The case law that has been developed by the Federal Circuit is little more than fig leaves to cover their preordained conclusion as to the patentability (or not) of a particular patent. The case law is so inconsistent and so irreconcilable with itself that a panel can pick and choose whatever case law they need to arrive at the conclusion they arrive at — regardless of the conclusion. Patents invalid — pick this set of fig leaves. Patents valid — pick this other set of fig leaves.

      1. 4.2.1

        Two words that I have provided:

        Gordian Knot.

        I would point out however, that the main culprit (and thus primary body to blame) is not the CAFC (although you do not err in pointing out that they certainly add to the Gordian Knot), but instead is the fingers-in-the-wax-nose-addicted Supreme Court.

        I will note as well that there is only one guaranteed resolution path, and one “self-aware” alternative path:

        The alternative path is by way of the Supreme Court itself recognizing the damage that they have done legislating from the bench and they themselves applying the Kavanaugh Scissors to the Gordian Knot.

        The guaranteed path would be for Congress to employ their Constitutional power of jurisdiction stripping of the non-original jurisdiction of patent case from the Supreme Court and reset an Article III court (and eliminate the brow-beaten CAFC) in order to preserve Marbury.

        One should remember that the ‘original’ lower level patent court did have the Supreme Court “out of the loop.”

        1. 4.2.1.1

          I would point out however, that the main culprit (and thus primary body to blame) is not the CAFC (although you do not err in pointing out that they certainly add to the Gordian Knot), but instead is the fingers-in-the-wax-nose-addicted Supreme Court.
          Both the CAFC and Supreme Court are to blame. The Supreme Court started the problem, but it is the CAFC that added gasoline to the fire. Regardless, I see little value is trying parse out the blame.

          The alternative path is by way of the Supreme Court itself recognizing the damage that they have done legislating from the bench and they themselves applying the Kavanaugh Scissors to the Gordian Knot.
          The bigger the ego, the harder it is to admit that one is wrong. One would be hard pressed to find a group of 9 with bigger egos. While this solution might only require 5 people to implement, I have my serious doubts that this will ever occur.

          The guaranteed path would be for Congress to employ their Constitutional power of jurisdiction stripping of the non-original jurisdiction of patent case from the Supreme Court and reset an Article III court (and eliminate the brow-beaten CAFC) in order to preserve Marbury.
          I see little value advocating for something that has a 0.001% chance of happening. A statutory fix to 101 is far easier and far safer (who is to guarantee that a new court will be any better?). Regardless, I would put the odds of a 101 being amended over the next decade at just 1 in 10. Your proposed fix might have some hope of happening if ALL THE STAKEHOLDERS involved were advocating for such a change. That is NEVER going to happen because a very politically-connected (i.e., money speaks loudly in Congress) subset (i.e., ‘infringers’r’us’ — oftentimes associated with FAANG) of the stakeholders is very, very, very happy with the status quo.

          1. 4.2.1.1.1

            I do not disagree with your feelings, and see why you feel that way, but I would simply choose to advocate for the system that would be best for innovators and innovation protection.

            1. 4.2.1.1.1.1

              I would simply choose to advocate for the system that would be best for innovators and innovation protection.
              Those are your feelings. You presume that a new set of judges will be any different than the old set of judges.

              Regardless, even if I thought it would be the best thing in the world to win Friday’s $325M jackpot, I’m not going to spend a whole lot of time worrying about it because I am far more likely to die from a lightning strike than to win. Similarly, I’m not going to spend a lot of time contemplating a court composition/setup that isn’t going to happen in my lifetime. There is far too much money happy with the status quo for that to ever happen.

              It may be a fascinating intellectual exercise but that is all it will ever be.

              1. 4.2.1.1.1.1.1

                Yes, I do – but the new set will not have the “Firehosed-Simian-In-A-Cage” effect from the Supreme Court.

                That is a huge difference.

                There is far too much money happy with the status quo for that to ever happen.

                Only if one does not illustrate WHY that ‘money happy with the status quo’ is bad – which is exactly why I post.

                But if you are indeed so forlorn, why do YOU post?

                1. Yes, I do – but the new set will not have the “Firehosed-Simian-In-A-Cage” effect from the Supreme Court.
                  You presume far too much. A substantial portion of the Federal Circuit probably thinks the Supreme Court goes too easy on patents — as is evident by their taking of the narrow holding of Alice and expanding it well beyond what any reasonable person would have thought when the Alice decision was first issued.

                  But if you are indeed so forlorn, why do YOU post?
                  I post in the hopes that someone who might have some real world impact on the issue reads my stuff and says — hey, he has a point.

                2. Sorry but no, Wt, as the firehose training started long ago and results in the condition that you note. Starting afresh – with judges suitably inclined (read that as technically competent and recognizing the value of protecting innovation), without the threat of the Supreme Court — would not be “presuming too far.”

                  I can remember (only a little bit before my time, but within my training window) Judge Rich pushing back against the likes of Flook (and resulting in Diehr).

                  And I chuckle at your provided reasoning — as your reasoning applies every bit to my dissertations.

      2. 4.2.2

        Wandering, because the heading “Inventions Patentable” has a plain meaning of “qualified to be chosen, to participate, or to receive”

        In a word, eligible.

        Yes, it’s currently a “they know it when they see it” situation, which is intolerable. But the alternative- a whole bunch of absolute shite patents, is also intolerable.

        The problem remains, and will remain, as the Professor stated it, the “epistemology of abstractness” and as I restated it as “the treatment of information”

        Information as utility intrinsic to an invention, and extrinsic information in claims that define and inform PHOSITA.

        The words of the statue are useless because anything people do can be characterized as a “process”, and if anything people can do may be patented, there is no need for a statue headed “Inventions Patentable” since everything people do would be patentable.

        How would you rewrite 101 to solve that problem? Or would you abolish 101 and just assume, maximalist style, that every human activity should be subject to the patent laws?

        1. 4.2.2.1

          STILL not understanding the terrain…

          (patentable and patent eligible carry different connotations and simply are NOT as you indicate: “In a word, eligible.

          1. 4.2.2.1.1

            Sometimes I wonder if you actually read each word or just start typing….click…whirrr with your usual nonsense.

            The heading in the statute is “Inventions Patentable” The Section 101 is considered the eligibility statue, unless that “terrain” you keep muttering about says otherwise.

            After years of this discussion, for you to imagine that I don’t understand the basic interplay of the various sections of the Patent Act is simply mo or onic, or worse.

            Your little guild ain’t all that impenetrable. Stop flattering yourself- lord knows that nobody else around here does.

            1. 4.2.2.1.1.1

              Sometimes I wonder if you actually read each word or just start typing….click…whirrr with your usual nonsense.

              Surely by now you do not still wonder on that point, do you?

              1. 4.2.2.1.1.1.1

                I love how marty is being defended by a

                C
                O
                W
                A
                R
                D

                and a

                L
                I
                A
                R

                The company you keep, marty.

        2. 4.2.2.2

          Wandering, because the heading “Inventions Patentable” has a plain meaning of “qualified to be chosen, to participate, or to receive”

          [Sigh] — You continue to overlook the word “any” contained in 35 USC 101 . You also appear to overlook that Sections 102 and 103 refer to “Conditions for patentability” (i.e., your qualifications). You also appear to overlook that the qualifications under 35 USC 101 is “subject to the conditions and requirements of this title.” You did notice the “this title” part, did you not? The “this title” refers to the statute — not judge-made gobbledygook.

          Information as utility intrinsic to an invention, and extrinsic information in claims that define and inform PHOSITA.
          Keep tilting at that windmill. I know its a lonely endeavor, but that hasn’t stopped you yet.

          The words of the statue are useless because anything people do can be characterized as a “process”, and if anything people can do may be patented, there is no need for a statue headed “Inventions Patentable” since everything people do would be patentable.
          Is “everything people do” a process? If so, then it is patentable under the PLAIN LANGUAGE of 35 USC 101.

          and if anything people can do may be patented, there is no need for a statue headed “Inventions Patentable” since everything people do would be patentable.
          No. Read the Frederico commentary. They replaced “art” with “process” because the meaning of process is “more rapidly grasped.”

          In referring to the definition of “process” in 35 USC 100, it is written “The reference to the new use of a known machine or manufacture in the definition merely means that processes may utilize old machines or manufactures.” It seems to me that using a computer (i.e., a known machine) to perform a new process clearly falls within the scope of what is patentable.

          How would you rewrite 101 to solve that problem?
          What problem? If it is made by man, then it should be patentable. And processes are made by man.

          If one reads the contemporaneous writings associated with the Patent Act of 1952, it becomes painfully clear that the drafters spent a lot of effort covering everything. There was no stone left unturned. However, the Supreme Court case law would have us believe that 35 USC 101 contains hidden requirements that the drafters of the Patent Action of 1952 completely overlooked. Not a single word (that I’m aware of) was spent on these exceptions. These “judicial exceptions,” once unleased by the Supreme Court and the Federal Circuit, threaten to swallow all of patent law. I can take, for example, the (il)logic of American Axle and use it to invalidate just about any mechanical device. There are a whole host of laws/principles that underlie any mechanical invention. Under American Axle, none of the laws/principles need even be claimed. However, we are led to believe that these exceptions somehow slipped the mind of the drafters of the Patent Act of 1952. Peddle your fantasy story elsewhere.

          1. 4.2.2.2.1

            Wandering you aren’t going to bluster past me like anon wishes she could.

            As the actual statue is written The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material . Everyone knows that’s is a tautology. Me and you are just nobody Internet commenters, but Supreme Court justices have made that exact point:

            BILSKI v. KAPPOS

            STEVENS, J., concurring in judgment

            But, this definition is not especially helpful, given that it also uses the term “process” and is therefore somewhat circular.

            But §100(b) defines the term “process” by using the term “process,” as
            well as several other general terms. This is not a case,
            then, in which we must either “follow” a definition, ante, at
            7, or rely on neighboring words to understand the scope of
            an ambiguous term. The definition itself contains the very
            ambiguous term that we must define
            .

            Fine, you want to patent every new and useful human activity. That’s a lovely philosophy, but it simply cannot and will not ever, ever happen. The result is what we see, and those results are not hypothetical.

            You have no reasoned solution to this problem, or you would have stated it and not simply denied the problem, regardless of its decades-long manifestation.

            You got nothing. Like most everyone else.

            1. 4.2.2.2.1.1

              Marty, your choice betrays you, as you choose the known dissent dressed as concurrence of the person who LOST the majority decision writing role in his “bookend” case because he wanted TOO MUCH to legislate from the bench and go against direct words of Congress.

              This has been explained many times now. Just because you want to 1g n0re it yet again, does not make you any less incorrect.

            2. 4.2.2.2.1.2

              Everyone knows that’s is a tautology

              Except it is not — as I have ALSO explained.

            3. 4.2.2.2.1.3

              Wandering you aren’t going to bluster past me like anon wishes she could.

              First, I identify as a male.

              Second, I do not “bluster past you,” and the fact that you STILL think that what I do is “bluster” only shows that you have YET to understand the terrain upon which you would choose to do battle.

              Third, Wt wrecks you, as would be expected.

            4. 4.2.2.2.1.4

              Supreme Court justices have made that exact point
              You cite Justice Stevens — probably the Supreme Court’s leading advocate for destroying patent rights who is no longer on the court. And how is this relevant to the current Court (that leans far, far to the right of Stevens)?

              Fine, you want to patent every new and useful human activity. That’s a lovely philosophy, but it simply cannot and will not ever, ever happen.
              You confuse what I want with what the statute says. Many here (and I’m including you) interpret the statute based upon their own predisposed positions as to what should or should not be patentable. As for me, I don’t want anything more (or less) than what the statute authorizes. If Congress authorizes something to be patentable, then that’s the decision they made. If Congress wants to invalidate software or “information” patents (whatever those happen to be — give me a good definition for that), then that is totally on them and they are free to do so. However, the Courts shouldn’t read into the statute something that isn’t there so the Courts can bootstrap themselves into a position to decide what is (or isn’t) patentable.

              You have no reasoned solution to this problem, or you would have stated it and not simply denied the problem, regardless of its decades-long manifestation.
              I asked you “[w]hat problem?” I don’t recall seeing an answer.
              Once you define the specific problem and explain why it is a problem, then perhaps I can suggest a reasoned solution.

              You got nothing. Like most everyone else.
              I have the statute. You have your personal feelings.

              1. 4.2.2.2.1.4.1

                +1

                (Marty has an aversion to understanding the terrain, likely because that terrain just does not match his feelings)

              2. 4.2.2.2.1.4.2

                If Congress wants to invalidate software or “information” patents (whatever those happen to be — give me a good definition for that)

                An information invention is one where the utility of the invention arises from the use of some species of information, rather than a chemical or mechanical change in the world. Congress does not WANT to invalidate all software patents- but Congress, and many other stakeholders, have a revulsion to patenting ideas, scientific discoveries, or aspects of human behavior, among other things.

                Once you define the specific problem and explain why it is a problem, then perhaps I can suggest a reasoned solution

                The problem is that the patent laws must end at the frontier of the human mind. It cannot be an infringement to think about something and then act upon that thought, if the act itself is not protected by the patent.

                Such things as diagnostic correlations and methods of organizing human activity (e.g ladies night at the local pub, or the rules of a lottery game, or knowing to stop at a red traffic light, or drawing a graphed function) cannot be restricted by patents, as that would be an infringement on liberty.

                My reasoned solution is simple and effective: if the utility of an item of information occurs in a human mind, the method is not an eligible process. If the utility of an item of information is realized by a non-human actor, the method should be eligible, subject to the balance of the patent laws.

                I would rewrite 100(b)

                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 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.

                1. reply nabbed by filter – which one is a mystery.

                  Long story short; you still just do not appreciate what utility means in the patent sense — and how necessarily any such utility would be recognized.

                2. 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
                  That would be a fun one to construe.

                  First fight would be over what is meant by “primary purpose.” The courts would have a field day over determining whether information is the primary purpose rather than a secondary purpose. That’s a nice nose-of-wax that would be repurposed to determine what is patentable versus what is not.

                  “intended for consumption.” Now you’ve added some mens rea element to the claim. “But judge, I didn’t intend for the information to be consumed by a human.” What happens if the information, as claimed, is not consumed by the human but the invention, as practiced, involves consumption by a human?

                  “improve information processing” What the heck does that mean? There are fights at the USPTO about what does it mean to ‘improve computer technology.’

                  as that would be an infringement on liberty
                  Every patent that incidentally involves a human involves some type of infringement on the liberty of the human to take part of the infringing activity.

                  The problem is that the patent laws must end at the frontier of the human mind.
                  There are easier ways to do that than what you put together — perhaps amend 35 USC 271 to define that “it shall not be an act of infringement if an element of a claim is performed in the human mind.” In this way, if a computer performs the element, then it can be part of the act of infringement. However, if a human mind performs the element, then it cannot be part of the act of infringement.

                  The more I think of it, the more I like putting it in 35 USC 271 than 35 USC 101. If you put it in 35 USC 101, then there will always be arguments that some particular limitations is a mental step and the patent should be invalidated (or not allowed to issue) for that reason. By putting it in 35 USC 271, it’ll simply be a factual finding made by the Court: Is the infringement step performed by a computer or by a human mind? If performed by the human mind, then no infringement.

                  ladies night at the local pub, or the rules of a lottery game, or knowing to stop at a red traffic light, or drawing a graphed function
                  Try using realistic examples. It makes for more reasonable analysis.

      3. 4.2.3

        Well said.

      4. 4.2.4

        “The USPTO, with all of its institutional expertise, cannot guarantee that a patent issued after examination will survive a post-grant challenge under 35 USC 101. Supposedly, 35 USC 101 has been unchanged since 1952. 70 years later and the USPTO cannot give reasonable assurances that patents issued today are valid under 35 USC 101.”

        The PTO hasn’t ever tried to make such a guarantee. The last director, a patent prosecutor, implemented policies which surely caused more ineligible claims to be allowed. I suspect we could produce a guarnteed eligible product, but the patent bar would find the resulting allowance rates unacceptable.

        Also I’m not sure why you think this guarentee thing is relevant. The PTO doesn’t guarantee that an issued patent will survive a post-grant 103 challenge either.

        1. 4.2.4.1

          Ben,

          Not my point, but I would modify the statement and instead emphasize the “reasonable assurance” portion — noting that such IS present [by law — see 35 USC 282].

          And I would also point out that your denigration of Iancu’s 2019 Patent Eligibility Guidance likely could get you in trouble as an Examiner (and, as not an Examiner, you likely are not qualified to make that statement).

          Quite frankly, your personal view of what would be eligible is neither material nor relevant to anything. And is likely simply wrong to boot.

          1. 4.2.4.1.1

            Additionally (and more of a retort to Greg, who found delight in using the somewhat archaic term of Public Franchise – no doubt reflecting the wayward Supreme Court use in the Oil States case, but both Greg and the Supreme Court need recognize that the “benefit” to the patent office of being able to “recall” items that it can under its power of FranchisOR necessarily implicates duties to the FranchisEE.

            As my Uncle Ben has said, with great power comes great responsibility.

        2. 4.2.4.2

          The PTO hasn’t ever tried to make such a guarantee.

          Correct

          The last director, a patent prosecutor…

          Iancu was a litigator. He has a reg. no., and his firm bio says that he “was involved in… IP… prosecution…,” but I am not sure that this makes him a patent prosecutor. I am frequently “involved in” litigation, but I would never describe myself as a litigator.

          …implemented policies which surely caused more ineligible claims to be allowed.

          Darn straight, and the same patent bar that bemoans the number of granted patents that fail under §101 cheered him on as he did so.

          I suspect we could produce a guarnteed eligible product, but the patent bar would find the resulting allowance rates unacceptable.

          Yep. Everyone wants to go to heaven, but no one wants to die. That is a common failing among all human beings, and by no means unique to the patent bar.

          1. 4.2.4.2.1

            Whoops. Mea culpa.

            1. 4.2.4.2.1.1

              Nice patticake.

      5. 4.2.5

        All true Wandering.

        Thanks to the SCOTUS-CAFC tag team . . . when it comes to eligibility . . . the Rule of Law . . . is nowhere to be found.

        While Congress conducts their dog and pony shows on the deck of the Titanic.

      6. 4.2.6

        Supposedly, 35 USC 101 has been unchanged since 1952. 70 years later and the USPTO cannot give reasonable assurances that patents issued today are valid under 35 USC 101… How can the progress of science and useful arts be promoted when the system itself is so broken that those who partake in it have little confidence that an issued patent is a valid patent?

        Folks can have as much confidence as they want. I agree that the jurisprudence around edge cases is a confusing mess, but no one is obliged to do their R&D in the areas that exist on the edge. Even if they do R&D in those areas, they are not obliged to file patents.

        Patents are really necessary for a workable biotech or pharma industry business model. By and large, the boundaries of §101 compliance in those art spaces is fairly clear. If you lose your claims on §101 grounds in biotech or pharma, it is because you choose to push your luck.

        The borderline between eligible and ineligible in software is murkier, but the murkiness is a wholly avoidable problem. Patent enforcement is not really necessary to software industry business models, so the way to avoid the problem is simply not to file in the first place.

        I know that most investors want to see a patent (more fool them, in many instances), so maybe you have to file, but even then there is no one forcing you actually to sue. If one does not wish to be dragged into the murky morass of unintelligible §101 precedents, then the solution is to treat the granted software patent like the wall ornament that it really is. If one does not try to enforce such patents, then one need not deal with the confusing case law.

        1. 4.2.6.1

          What an arse.

          Folks can have as much confidence as they want.

          And Greg’s credibility continues to plummet.

        2. 4.2.6.2

          … Big Pharma, What Me Worry, let them eat cake, asinine claptrap.

        3. 4.2.6.3

          Patent enforcement is not really necessary to software industry business models, so the way to avoid the problem is simply not to file in the first place.
          You have no clue what you are talking about. This is the one thing I really dislike about your writings. You are a biotech guy but you continue to opine about things (e.g., software) that you know little about. Seriously, it diminishes your credibility when you do so.

          1. 4.2.6.3.1

            Fine. Now is your chance to put me in my place. Point to the example where a successful software company achieved a useful outcome in their business history by asserting patents. This is a really easy exercise in the biotech and pharmaceutical industries, but the examples of “Microsoft v. ______” or “Google v. ______” are really thin on the ground.

            Is it that I do not know what I am talking about, or you simply do not want to hear it. No is your chance to shut my mouth in embarrassment.

            1. 4.2.6.3.1.1

              Point to the example where a successful software company achieved a useful outcome in their business history by asserting patents.
              Amazon’s 1-click patent was successfully asserted.
              From 1996-2020, IBM has generated $27B in IP income.
              Microsoft and Samsung had a huge cross-licensing deal for patents associated with Android. The exact specifics are unknown, but it is at least a 10 figure amount.
              Nortel sold their patent portfolio for $4.5B to a consortium of Apple, Microsoft, Sony, and RIM.

              the examples of “Microsoft v. ______” or “Google v. ______” are really thin on the ground.
              This exemplifies why you are misinformed. You think all patents are successfully asserted via a lawsuit?

              Software is a very different animal than biotech. How many patents are asserted on a given product in biotech? Maybe a handful? In software, however, because of the far greater complexity involved, there could be hundreds or even thousands of patents asserted. Asserting that many patents via the legal system is unwieldy. What oftentimes happens is that the large corporations engage in cross-licensing agreements, and those with the biggest amount of patents are the winners (i.e., in these cross-licensing agreements, one side usually pays the other side despite both getting licenses for the other’s patents).

              There is a reason why IBM and Samsung continually lead in obtaining patents year after year. In 2021, it was 8540 and 8517 patents, respectively. IBM earns considerable revenue from their patent portfolio. Samsung has learned their lessons about how cross-licensing deals work.

              A reasonable guess as to what IBM or Samsung spends on their patent acquisition budgets is about $200M/year +/- $50M. If IBM is generating about $1B in revenue (not counting the money they save by not having to pay licensing fees to other companies as part of cross-licensing deals), that is a significant “useful outcome.” You really think that these companies are spending this amount of patent acquisition if they aren’t getting a return on your money? This is why your positions are silly on their face.

              What gets lost in all the megadeals is the smaller companies that were acquired by the likes of Facebook and Google in the first decade of this century. However, because of the changed patent eligibility landscape, there is little need for these acquisitions of smaller companies. It is cheaper to simply copy the technology and invalidate whatever patents they have in court.

              The whole patent eligibility issue is something created by the larger companies to cheapen the acquisition cost of the technology of smaller companies. This doesn’t change the dynamics when it comes to cross-licensing between large corporations because it is impossible/impracticable to invalidate thousands of patents.

              The changes in patent eligibility championed by the likes of Google, Facebook, et al., has always been about making it easier on big companies and harder on smaller competitors.

              No is your chance to shut my mouth in embarrassment
              Your acquiescence will be gratefully accepted now.

              1. 4.2.6.3.1.1.1

                Your acquiescence will be gratefully accepted now.

                Greg has shown that he is just not capable of climbing down from his peak of Mount S.

                That is a part of the reason why I continue to give him the john Maynard Keynes treatment. And while he (continues) to profess that he does not read my posts, his recent choice of words (reflecting a phrase only used by yours truly in the patent blogosphere) confirms that he does in fact read my posts.

              2. 4.2.6.3.1.1.2

                Licensing is not “asserting.” We both know that it is entirely possible to license a patent without ever putting its validity at issue. Those are some weak (embarrassingly weak) answers, and I dare say that you know it. I take your hopelessly unresponsive reply as a tacit concession of my point.

                1. Licensing is not “asserting.”
                  Wow. You are truly far, far out in the woods. Litigation (i.e., assertion) goes hand-in-hand with a licensing campaign. Absent an injunction, licensing is the typical result of a successful litigation. As for a licensing campaign, it is the threat of litigation that brings people to the table. Maybe one could get away without litigation 15 years ago in a licensing campaign, but not today. If I’m general counsel for a company, and I get a request to license a particular technology, there is a very high change that I’m going to simply ignore it. You really do live out in the boondocks.

                  While it is possible to have licensing without litigation and litigation without licensing, those are far more the exceptions than the rule.

                  We both know that it is entirely possible to license a patent without ever putting its validity at issue
                  And why does that matter? It is also entirely possible to have a patent’s validity contested without it ever being litigated.

                  Those are some weak (embarrassingly weak) answers, and I dare say that you know it.
                  LOL. I love conclusory statements without explanations. I get them all the time from examiners and it is the best sign that my arguments are prevailing. They want to disagree but they have no basis to do so — consequently, they don’t bother with explanations.

                  “$27B in IP income” is apparently an embarrassingly weak answer? Did someone hijack your account? You might want to use that as an excuse.

                  I take your hopelessly unresponsive reply as a tacit concession of my point.
                  Project much?

                2. We both know that it is entirely possible to license a patent without ever putting its validity at issue
                  And why does that matter?

                  I wonder if we are talking past each other. At the tedious risk of belaboring the obvious, allow me to retrace the thread of this (putative) conversation.

                  You complained (#4.2) that “the USPTO cannot give reasonable assurances that patents issued today are valid under 35 USC 101.”

                  I responded (#4.2.6) that “the jurisprudence around edge cases is a confusing mess, but… the murkiness is a wholly avoidable problem [because p]atent enforcement is not really necessary to software industry business models… .” In other word, my contention is that software businesses can avoid the tedious and sloppy business of sorting out §101 precedents by simply not enforcing software patents.

                  You took umbrage at this suggestion (#4.2.6.3), and I invited (#4.2.6.3.1) you to prove the inanity of my suggestion by citing to actual incidences where actual software businesses (i.e., businesses that provide software, not PAEs) have achieved a business outcome by asserting their patents (i.e., putting them in a position in which §101 case-law—the ostensible origin of this conversation—becomes a relevant consideration).

                  Instead, you come back with a bunch of licensing deals. Does that help to clarify the disconnect between the assertion that you originally challenged and the point that you appear to be making now?

                3. allow me to retrace the thread of this (putative) conversation
                  Your retracing is about as bad as your takes on software. This is the specific question that I addressed:
                  Point to the example where a successful software company achieved a useful outcome in their business history by asserting patents.
                  You wanted examples of useful outcomes via the assertion of patents. I provided examples. The best example (of which I am aware) is IBM generating $27B in revenue from its licensing. And BTW, IBM does sue people.

                  businesses that provide software, not PAEs
                  Hmmm. IBM does not provide software? That is news to me. But go ahead, keep throwing credibility down the drain. Everyone likes watching a train wreck in slow motion.

                  by asserting their patents (i.e., putting them in a position in which §101 case-law—the ostensible origin of this conversation—becomes a relevant consideration)
                  Some fancy goal post moving there. Asserting does not mean “putting them in a position in which §101 case law … becomes a relevant consideration.” And another BTW, there are other software companies that sue on their software. Just off the top of my head, Thales Visionx v. US is a recent Federal Circuit case involving 101 issues, and Thales Visionx is an operating company that creates software along with their hardware products.

                  Instead, you come back with a bunch of licensing deals
                  You really don’t know how a modern licensing campaign works, do you? I, on the other hand, have a bit of experience with a modern licensing campaign and have talked to other attorneys who have as well — going back well over a decade now. In today’s environment, unless you litigate, very few companies are going to take you seriously. Please, for your own sake, I urge you not to opine on things for which you are just shooting from the hip on. You do have some good takes on certain other things, but when you venture into areas in which your experience is limited and/or in which you are relying upon anecdotal information from your best friend, you are losing credibility.

                  For these reasons, you will very, very rarely see me comment on biotech-related issues in patent law. I’m not qualified to opine on those issues, and as Dirty Harry once said, “[a] good man always knows his limitations.”

                4. I urge you not to opine on things for which you are just shooting from the hip on.

                  Always sage advice. Consider my assertion that “[p]atent enforcement is not really necessary to software industry business models” withdrawn.

                  Now, let us instead consider the assertion of a v.c., documented downstream, that “[i]n software start ups… [patents are] only… a ‘comfort blanket,’… for hesitant investors to clutch, who lack experience in what it is that actually delivers success in the software space.” What is the explanation about how this venture capitalist does not know what he is talking about?

                5. Consider my assertion that “[p]atent enforcement is not really necessary to software industry business models” withdrawn.

                  Hardly the apology requested (and doubly so, as you then attempt to get to the same point with regards to the anecdote of a single vc.

                  Maybe actually pay attention Greg and heed the advice of:

                  Please, for your own sake, I urge you not to opine on things for which you are just shooting from the hip on…. you are losing credibility.

                  Or not – and continue to provide me fun opportunities to highlight you inanity.

                6. Now, let us instead consider the assertion of a v.c., documented downstream, that “[i]n software start ups… [patents are] only… a ‘comfort blanket,’… for hesitant investors to clutch, who lack experience in what it is that actually delivers success in the software space.” What is the explanation about how this venture capitalist does not know what he is talking about?
                  First off, let’s recognize that you’ve quoted a single VC. As with anything, people’s past experiences color their current perceptions. For this particular VC, he/she doesn’t think patents are worth much. However, this isn’t the only VC out there, and they have different experiences when it comes to patents.

                  However, even in this statement, the VC admits — albeit in a backhanded manner — that there is a value for patents. The comfort blanket for hesitant investors has a real value. If I’m a startup looking for a cash infusion, I would rather be able to give out that comfort blanket and get an investment than not have the comfort blanket and lose out on the investment (or perhaps having to resort to getting an investment on worse terms ).

                  On a meta level, obtaining patent protection for one’s product/service/whatever demonstrates a level of sophistication in a startup that is higher than the level of sophistication in a startup that hasn’t looked to obtain patent protection. As an investor, that would show me that the whomever is running the startup has engaged in next-level thinking and planning, which is attractive.

                  Let’s say I’m Google, and I really like this particular startup companies product. It is easier to justify spending $XX million on obtaining the company when they have a decent patent portfolio (say 10-20 patents) than if they had nothing. You are actually getting something when you pay that amount. However, if there are no patents, all you are getting is the people and some code, but what happens if the people move? Maybe the code is incompatible with what you currently have and have to redo most of it. At that point, it becomes attractive just to reverse engineer the product (because you employ LOTS of engineers). Without any patent protection, there is NOTHING to stop mega-tech from squashing the startup.

                7. The comfort blanket for hesitant investors has a real value. If I’m a startup looking for a cash infusion, I would rather be able to give out that comfort blanket and get an investment than not have the comfort blanket and lose out on the investment…

                  Right. I agree. That is why I said two day ago in 4.2.6 that

                  I know that most investors want to see a patent (more fool them, in many instances), so maybe you have to file, but even then there is no one forcing you actually to sue. If one does not wish to be dragged into the murky morass of unintelligible §101 precedents, then the solution is to treat the granted software patent like the wall ornament that it really is.

                  Are we even disagreeing?

            2. 4.2.6.3.1.2

              Please Pardon Potential rePeat (filters again)…

              or you simply do not want to hear it.

              The irony is delicious.

          2. 4.2.6.3.2

            Incidentally, my best friend is a serial software entrepreneur. I may not know how to code, or how to design a circuit board, but I know more than you might think about which sorts of IP are actually critical to a successful software business.

            1. 4.2.6.3.2.1

              as YOU yourself have said in the past, anecdotes are not evidence.

              You cling to that peak of Mount S – even as you continue to plummet in credibility.

              1. 4.2.6.3.2.1.1

                … if your “best friend” is one of those Slashdot Lemmings, that would explain quite a bit.

            2. 4.2.6.3.2.2

              I know more than you might think about which sorts of IP are actually critical to a successful software business.
              You might know something about a single business. However, knowledge about a single business cannot be imputed to knowledge about an industry.

          3. 4.2.6.3.3

            Martin, you actually work in this industry (not as a patent lawyer, but as an actual business lead). Do you care to speak to the issue of what role patent enforcement plays for successful businesses in your industry? You are well positioned to adjudicate this dispute with real-world knowledge.

            1. 4.2.6.3.3.1

              Marty is exactly the type of anecdotal view that is most UNhelpful.

              Don’t you recall that he had his hands slapped in a patent suit and carries from that a vibrant bias?

              Keep digging there Greg.

            2. 4.2.6.3.3.2

              We settled our case, and I can’t speak to the terms of the settlement, but I don’t think its a violation of the confidentiality of the agreement to suggest that it wasn’t our hands that were slapped. The docket is a public record.

              Beyond our brushes with the patent system, I don’t know of a single software company that has succeeded on the basis of a patent-protected method.

              Wandering’s invocation of IBM as proof that software patents are a viable means of making money is a stretch, because IBM is not strictly a software company & the line between software and hardware fuzzy.

              I have never, ever known of a developer to read patent disclosures for R&D or any other purposes. The only business success I am aware of in the industry regarding patents is that described above- moving VC hearts and minds to get funding, or via patents that don’t reflect software innovation, but rather some kind of jacked-up business methods.

              Wandering cites the 1-click patent is some kind of good thing, when its actually the example in the industry of the futility and rank rent-seeking associated with software patents as they worked in the early aughts.

              1. 4.2.6.3.3.2.1

                Thanks, Martin. For those keeping score at home, we have on one side of this debate a v.c. whose meat & bread depends on understanding the realities of the industry, a Cornell-educated computer scientist and C-suite officer of multiple software companies, and me (an admitted ignoramus).

                We have on the other side of the argument a peanut gallery of anonymous internet participants who all purport to depend on the patronage of software patent hopefuls for their daily crusts. Their perspectives in this discussion are (by their own implicit admission) subject to the subtle tug of self-interest.

                Whose perspective should seem more objectively reliable? I leave that to the disinterested reader to weigh and judge.

                1. More spin – and your characterizations are overblown, fraught with caveats and some downright false.

                  But you keep on being you, Mr. “I Use My Real Name” fallacy.

                2. Greg its certainly true enough that our existential encounter with the patent system radicalized me on the topic. The amount of money that has changed hands for essentially unjust reasons in the past 25 years must be astronomical.

                  Nonetheless, the topic of eligibility is a fascinating legal and philosophical question and the goal of positive change an engaging and many-faceted pursuit. Dic kin g around on widely read patent blogs is probably the least useful, but the most fun. There are academic, legal, and practical angles to be played, and I am playing them.

                  As you well know by now, I do think that some aspects of software may benefit from patent protection and that there is a reasonable distinction to be found as to which ones. I’d be fine with a blanket prohibition, or something along the lines of my concept, but certainly not with what we have today.

                  My brother is a prolific (and extremely clever) developer, so we identified one of his recent innovations and crafted a patent application around it- with the direct intention of working it up the chain if we catch a 101 rejection.

                  We expect our first office action any month now, so that should be interesting. The application should be published shortly too- if I understand how that works.

                  Our prosecutor is a well experienced firm so they may just score the grant without the fun part, but we have a few other things in dev right now that could be worth a shot.

                  Also, it’s pretty amazing how small amounts of money get politician’s attention. One of the unsung bargains in our inflated economy.

                3. I… think that some aspects of software may benefit from patent protection…

                  As do I. I think that patents should be available for software on exactly the same terms that patents are available for any other technologies.

                  For some reason, however, if one details what this means in practice, software patent prosecutors totally lose their cool. The replies around here usually go straight for rebuttals ad hominem. I am never really sure how my interlocutors in these discussions purport to know about my level of experience in the software industry, but I am willing to stipulate that it is quite limited. My info is all second-hand, but from trusted sources. I am trying to establish that even if one thinks that I lack the necessary experience to opine on this subject, I am not saying anything different from that which is said by people who definitely do have the sort of expertise that qualifies them to opine (at least on equal footing with a bunch of anonymous internet randos).

                4. As do I. I think that patents should be available for software on exactly the same terms that patents are available for any other technologies.

                  For some reason, however, if one details what this means in practice, software patent prosecutors totally lose their cool

                  Just not so – and very much has to do with the FACT (admitted) that Greg does not know what he is talking about when he opines on software.

                  It is NOT our “totally losing our cool” at “detail,” but rather at you ham-fisted and inane view of “details.”

                5. Greg, again discounting all the anonymous posters.

                  I guess I don’t discount anonymous posters because I know why they are anonymous and I can their level of education based on their comments.

                  The school I went to for computer science has a higher rating than Cornell’s rating.

                  I still think Martin that you have some blame for not doing a freedom to operate search prior to performing the work. At least as I understand it.

                  Also, another point is that I have worked with many software developers that read patents and get a lot out of them. But again–this game that patents are the only place the information is disclosed–when the function of the patent is to open up the information for disclosure in many forums.

                  Anyway…too busy today –actually with two 101 problems–to deal with you lot.

                6. Greg, again discounting all the anonymous posters.

                  “Discount” is probably the right word. A “discount” clothing brand is not worthless, but it is worth less. So too, anonymous contributions are not to be ignored, but prudence dictates that they should be taken with a larger grain of salt.

                7. Obviously, I am not totally ruling anonymous contributors out of court, as evident from the fact that I invited (anonymous) Wt to respond to the hearsay account of an anonymous v.c., as related to us by (pseudonymous) Max.

              2. 4.2.6.3.3.2.2

                I don’t agree Martin.

                In fact I work with start-ups. It is hard for them to get funding without patents. I’ve had been the early patent attorney for several successful start-ups. The early patents got them through a few hoops and I think it keep the Microsofts at bay.

        4. 4.2.6.4

          Don’t know about “wall ornament”. About ten years ago I attended a talk given by a physicist turned venture capitalist to a conference of patent attorneys. How important are patents, was the issue. Answer: In chem/bio, all-important. In software start ups, almost as important, but only as a “comfort blanket”, something for hesitant investors to clutch, who lack experience in what it is that actually delivers success in the software space.

          But hey, if the comfort blanket is artistic enough, why not adorn the wall with it and in that way make good use of it to add to the joy of life.

          1. 4.2.6.4.1

            You are proving my point, Max. I am grateful, of course, for the support.

            1. 4.2.6.4.1.1

              LOL – the company you keep – support from MaxDrei will not improve your diminishing credibility.

      7. 4.2.7

        Well said Wandering.

  8. 3

    Eligibility is “difficult” in the same way that deciding whether to get a Covid vaccine is difficult.

    Heckuva job, Dennis.

    1. 3.1

      How is your Peak of Mount S doing for you there, Malcolm?

  9. 2

    The key issue is that under this pilot program any response to a final action must address any 101 rejection. Assuming no second non-final actions and the 101 being maintained after first response, this pilot program just allows applicant to skip a single 101 response. That will at best amount to minimal time savings across both applicant and examiner. And I suspect that for applicants the time saving could be consumed entirely just deciding whether to accept the examiner’s invitation.

    1. 2.1

      This is worse than a nothingburger.

      This is a nothingburger that pretends to be something, that pretends to be responsive to an inquiry from the Legislative branch, and provides traps for the unwary.

      Much like the Executive Branch NON response to Legislative Branch COVID IP (and worth stressing — not just patent) waiver, this amounts to (another) big ‘ol F you.

      And this is when the same party controls both of those branches…

    2. 2.2

      >he time saving could be consumed entirely just deciding whether to accept the examiner’s invitation.

      Relatedly, do you get another cycle of response–>after-final–>advisory action for the 101 question? Or will this just push you immediately into a RCE?

      1. 2.2.1

        >do you get another cycle of response–>after-final–>advisory action for the 101 question?

        Nothing additional to standard prosecution. Your after final arguments or RCE filing must address the 101 issue.

        1. 2.2.1.1

          As I stated: This is worse than a nothingburger.

          The Executive Branch flipping off the Legislative Branch.

    3. 2.3

      Exactly. So you had better have submitted any proposed amendments to address the 101 rejection before then. I did not see any indication that such amendments after final would enjoy entry as a matter of right.

    4. 2.4

      Don’t disagree with any of this.

  10. 1

    As I have already noted, this version by the Office does NOT follow the thrust of the Tillis letter.

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