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.
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.
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.
Yes, a newly dug hole in the ground only exists in the mind. OK
And you miss yet again — the utility of any of the hard goods items…
You can certainly drop a massive doohickey with blinky lights on your toe, but whether or not the patent sense of utility is met requires a human mind to evaluate.
When you go to the circus, do you shout at the clowns that their driving is unsafe?
If Greg is to be taken “at his word” that he does not (cannot) read my comments, then this type of “no-look” insult is of the very nature that he decries in others.
Your artificial separation between process category and the “hard goods” categories remain to be (at least one of) your downfalls.
Traffic lights (for example) being “hard good,” gets an unthinking “bye” from you, but the only utility of that “hard good” is of information generated in the human mind.
Without such, there was a no utility (of the patent sense) in any object with any combination of colors, light effects (sequence or blinking) or anything else. “Object” alone only meets the category — utility in the patent sense is outside of the category.
This is why you run away every time you are corrected (and to put it in a way that you might glom onto), this is why it appears that my “bluster” shuts you down.
An MPEG standard is a “soft” intangible good, as is improved encryption. They would eligible in my scheme.
A sharper knife has greater utility even if there is nothing to cut and nobody to cut for. Its axiomatic.
I have previously dispatched your ‘example’ of a sharper knife. (to wit, mere sharpness alone is not of utility in the patent sense, and by imposing “knife” you have alerted “the human mind” what the context of sharpness is in relation to — so the misnomer of “nothing to cut” does not cut it (itself).
Try to keep up.
Sure I’ll “keep up” with your nonsense.
I could present my rule and 100 sample claims on a poll, and there would be a massive correlation between different responders because the concept is easily distinguishable.
Meanwhile your assertion that all utility is equal doesn’t even meet a common sense sniff.
Another example: patenting games. Is entertainment a utility? People disagree with principle on the question. I say its useful, but should not be patent eligible because the utility arises within people’s minds. Your entertainment is my boredom, but a sharper knife or a hole in the ground is the same to all.
To answer Greg, dancing with a clow n can improve one’s step, if done in moderation.
“Meanwhile your assertion that all utility is equal doesn’t even meet a common sense sniff.”
Never made that assertion. What a horrible strawman.
Maybe address the actual points out to you.
(And please note that the two speaking about patenting of games were Greg and Wandering through, as opposed to me). You have also not answered Wandering through’s points.
As to games themselves, no one is attempting to patent the joy from playing.
My tidbit on entertainment patenting could be provided by considering the Stradivarius violin.
A method of making one is different from a method of playing one.
The method of making one STILL requires that any utility is that which is formed in the human mind.
[S]ancing with a clow n can improve one’s step, if done in moderation.
Fair enough, of course. I confess that I do not see the evidence of this assertion, but chacun à son goût.
“Sure I’ll “keep up” with your nonsense.”
See? that’s where you went off the rails again.
I do not have nonsense for you to keep up with, and you clearly are not keeping up with my legal points.
But you be you and run away again, only to propound your fantasy views on an upcoming thread so that we all can see you run away yet again when the counter points are presented.
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
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.
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?
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
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.”
I agree with nearly everything here. I just want to remark on the idea that
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.
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.
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.
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.
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.
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.
“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).
“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.
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.
§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.
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.
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.
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?
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.
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.
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.
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.
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).
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.
“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.
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.
Iancu certainly attempted to provide “off-ramps” to the Examiners such that the Gordian Knot could be avoided at the PTO level.
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 my friend.
Somehow this seems apropos. Don’t get between people and their dope.
link to prospect.org
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.
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.
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.
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.
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.
The “epistemology of abstractness” can be restated as “the treatment of information”.”
Have you bothered with the terrain of patent law yet?
Traffic Light
Yes, Marty, you need to come to grips with what those words mean in the patent law terrain.
You still have not done so.
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.
I feel that by removing the redundant repetitions of the refrain, you’ve ruined the song, Bamber.
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.
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.”
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.
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.
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.
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?
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.
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.
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?
STILL not understanding the terrain…
(patentable and patent eligible carry different connotations and simply are NOT as you indicate: “In a word, eligible.”
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.
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?
I love how marty is being defended by a
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The company you keep, marty.
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.
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.