Patent Bar Groups Propose Legislation to Fix Patent Subject Matter Eligibility Problems

By Robert Stoll
July 25, 2017

Since the recent Supreme Court (SC) decisions in Mayo, Myriad and Alice, the patent community has been roiled by unclear guidance in the area of patent subject matter eligibility (35 USC 101), especially as it relates to software and biotech. It’s true that the sky hasn’t fallen on the patents crucial to these industries, but that hasn’t quashed the call for Congress to intervene. Furthermore, the application of these key SC cases by the lower courts has been inconsistent, and while the Court of Appeals for the Federal Circuit (CAFC) continues to offer helpful clarification, many in the patent community have run out of patience.

Over the past few months, several of the major intellectual property organizations have developed proposed legislative fixes to patent subject matter holdings by the courts. The American Bar Association/ Intellectual Property Law Section (ABA/IPL), the Intellectual Property Owners (IPO), and the American Intellectual Property Law Association (AIPLA) have all released proposals, which contain a few similarities. All remove the novelty requirement from 101 since it is already contained in 102. Each provides that an applicant be “entitled” to a patent as long as the requirements of 101 and the other sections of the statute are met.

These proposals offer thoughtful but distinctly different legislative options for legislative reform. Harkening back to original Congressional intent, the IPO and the AIPLA proposals define the types of inventions that are not eligible. To determine eligibility under the IPO proposal a person of ordinary skill in the relevant art must find that the claimed invention as a whole does not exist independently in nature or solely in the human mind. While this requirement is on the right track, it leaves an avenue for court interpretation that could reintroduce uncertainty – the very thing proponents wish to avoid.. The AIPLA doesn’t refer to a skill level and uses the “invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind” standard.

Meanwhile, the ABA/IP correctly points out that the recent SC decisions inject ambiguity into the 101 analysis by requiring an analysis of what is routine, something normally reviewed under other sections of the statute. The ABA/IP proposal addresses what it believes is the intended focus of the SC, namely the preemption of others from seeking to patent basic building blocks of science. However, the determination of what is basic can be parsed into small distinct areas that do not help to cure perceived ills.

A summary of the recent reform proposals include:

The ABA/IP 101 Proposal:

101(a) Eligible Subject Matter

Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, shall be entitled to obtain a patent on such invention or discovery, absent a finding that one or more conditions or requirements under this title have not been met.

101(b) Exception

A claim for a useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may be denied eligibility under this section 101 on the ground that the scope of the exclusive rights under such a claim would preempt the use by others of all practical applications of a law of nature, natural phenomenon, or abstract idea. Patent eligibility under this section shall not be negated when a practical application of a law of nature, natural phenomenon, or abstract idea is the subject matter of the claims upon consideration of those claims as a whole, whereby each and every limitation of the claims shall be fully considered and none ignored. Eligibility under this section 101 shall not be negated based on considerations of patentability as defined in Sections 102, 103 and 112, including whether the claims in whole or in part define an inventive concept.

The IPO 101 Proposal:

101(a) Eligible Subject Matter

Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

101(b) Sole Exception to Subject Matter Eligibility

A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

101(c) Sole Eligibility Standard

The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

The AIPLA 101 Proposal:

Eligible Subject Matter.

Whoever invents or discovers any useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

Sole Exceptions to Subject Matter Eligibility

A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

Sole Eligibility Standard

The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

Here are the three major problems with all of these proposals:

First, the biggest challenge faced by all three proposals is that they are perceived to expand patent eligibility to a scope that is as broad as – or perhaps broader than – any point in the nation’s history. In particular, the extension of patent protection to business and social methods and processes is likely to be a sticking point for many in the tech industry.

Secondly, this assortment of proposals that are similar, but not the same, complicates an already difficult job for lawmakers. Enacting legislation is a difficult process. With even those stakeholders in support of reform divided over the correct approach, both the beginning point in the debate and the path forward are clouded.

Finally, any attempt at sec. 101 reform must navigate divergent perspectives among the broader group of IP stakeholders. Patent eligibility reform, if forthcoming, is not likely to be considered in isolation from other patent issues. The resulting dynamic could make an already challenging debate even more complex.

The concern of some in the patent community over the unpredictability and uncertainty hanging over eligibility of patents crucial to some of our nation’s most innovative industries is genuine and understandable. But given the broader dynamic, perhaps a focus on promoting understanding of the issues, coupled with time and patience, represent the most prudent course of action for now.

The Author

Robert Stoll

Robert Stoll is a partner with Drinker Biddle and is co-chair of the Intellectual Property Practice Group.

Bob retired from the USPTO as Commissioner for Patents at the end of 2011 after a distinguished 34-year government career. He was instrumental in the passage of landmark patent legislation, the America Invents Act, and lauded for his efforts to reduce patent pendency and improve patent quality. Having risen from the rank of examiner to lead the 8,000-employee organization, he has spent his career improving the intellectual property system.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 62 Comments comments. Join the discussion.

  1. Tesia Thomas July 25, 2017 10:52 am

    Finally!

    More attorneys need to get into patent politics. Your jobs are on the line.

  2. Curious July 25, 2017 12:30 pm

    Some thoughts:

    The ABA/IP proposal is too wordy.

    The IPO proposal is better. While I don’t think 101(c) is necessary, I understand why the authors included this language based upon the Court’s established inability to separate the requirements/conditions of these various sections from the patent eligibility issue.

    The AIPLA proposal is similar to the IPO proposal. However, I like the IPO proposal better.

    First, the biggest challenge faced by all three proposals is that they are perceived to expand patent eligibility to a scope that is as broad as – or perhaps broader than – any point in the nation’s history
    I disagree. These proposals are directed to restoring the patent eligibility to patents that the Supreme Court did away with when they decided that they were going to re-write patent law.

    Secondly, this assortment of proposals that are similar, but not the same, complicates an already difficult job for lawmakers.
    Should the proposals be more different or more similar? You allege a problem but do not identify the preferred solution.

    Finally, any attempt at sec. 101 reform must navigate divergent perspectives among the broader group of IP stakeholders.
    You mean we should be taking the into the account the views of the patent infringement lobby? How is that going to help?

    Ultimately, your criticism falls flat because you do not offer any alternatives: either in proposed language or different approaches. You don’t give any guidance as to what you would do differently. If you are going to criticize, at least be constructive.

    For example, one bit of language I would like to add is the following:

    The eligibility of a claimed invention under subsections (a) and (b) is not a condition for patentability under section 282.

    Patent eligibility under 35 USC 101 was intended to embrace “anything under the sun that is made by man.” This shouldn’t be a difficult standard to administer and it should only be made by the USPTO. The USPTO should be the most competent authority to judge patent eligibility under 35 USC 101. As such, once a patent has been issued, and presuming that the statutory law has not been changed, there should be no need to re-litigate the issue. The alternative is the regime we are working under today – where Federal judges (at all levels) resort to 35 USC 101 as a quick and dirty way to resolve litigation (in favor of the infringer) – in so doing, they are constantly redrawing the line that separates patent eligible subject matter from patent ineligible subject matter.

    The Supreme Court, in Diamond v. Chakrabarty, characterized Thomas Jefferson’s philosophy as “ingenuity should receive a liberal encouragement.” That decision issued in 1980. However, the current court-made law regime that we are living does the opposite. There are probably many hundreds of thousands of currently-issued (and “presumed” valid) US patents that face being declared being patent ineligible if they were to go before a Federal judge. No one in their right mind is going to invest in this technology if the primary mechanism for protecting that technology (i.e., a patent) could disappear once the technology takes off and other entities deem it worth copying.

    I’m a patent attorney yet if a small inventor comes to me today and asks whether they should get a patent to protect their new technology, my painfully honest answer to them is “I could help you get a patent, but even if you were to get a patent, the decks is so stacked against you that a patent is not likely going to help you fend off a large competitor from stealing your technology.” Patent eligibility concerns aren’t the only thing that drives my advice, but it is a very large factor. It says a lot about the state of our current patent system that I cannot honestly recommend its use to anybody except large, sophisticated entities.

  3. JNG July 25, 2017 12:50 pm

    Per Curious’ comment: as I mentioned to Greg Aharonian awhile back, the main problem is the Courts getting involved and imposing 100 different interpretations of “eligibility.” 101 is not listed as a defense to infringement for a reason, it was not intended for that purpose.

    So one easy way to tame part of the beast is to simply change 101 to read:

    “Determinations of patent eligibility under this section shall rest solely within the province of the USPTO. It shall not be a defense to an infringement lawsuit that the patent does satisfy the requirements of 101.”

    Or words to that effect. Then we would have far fewer games from the massive infringer crowd.

  4. Anon July 25, 2017 1:24 pm

    I will add my usual caveat to this notion:

    While this requirement is on the right track, it leaves an avenue for court interpretation that could reintroduce uncertainty – the very thing proponents wish to avoid.

    The answer is (of course) jurisdiction stripping. And here is why: no matter what change Congress makes, the Supreme Court can still insert its views and rewrite whatever statutory law is out there under its guise of “interpretation.”

    The only viable long term solution is to simply remove the Supreme Court, as patent cases are not a matter of original jurisdiction of the Supreme Court.

    As to Tesia’s reintroduced attempt at FUD: “Your jobs are on the line

    Not really.

    That is not to say that impacts are not out there (there are NO such jobs out there that are immune to impacts).

    But whether or not the Congress listens to attorney views on suggested legislative changes is just not that all that much a driver as you would like it to be.

  5. Tesia Thomas July 25, 2017 1:28 pm

    Tell that to the attorneys being laid off Anon

  6. Tesia Thomas July 25, 2017 1:34 pm

    Obviously patent attorneys have to be complaining about something for the patent bar to be taking a stand.
    That means it’s affecting work/career. because the patent bar especially needs to be impartial.

  7. Curious July 25, 2017 1:39 pm

    the Supreme Court can still insert its views and rewrite whatever statutory law is out there under its guise of “interpretation.”
    I think the AIPLA/IPO proposal along with my addition regarding 101 not being a condition for patentability will keep the Supreme Court doing much with this section.

    As for jurisdiction stripping, you have also acknowledged that this requires a new patent court with new patent judges (your whole monkeys getting fire hosed spiel — btw, unless you continue to explain that genesis of that, most people newly reading that analogy won’t have any idea what you are talking about). This, IMHO, is a much larger legislative task than just addressing one section of 35 USC.

    It is going to be hard enough (if not impossible with Issa chairing the House IP committee) to get these changes to 101 through Congress. I just don’t see introducing a whole new court system as being remotely possible in today environment. Things will have to get a LOT worse than it is today before there will be enough impetus to make that kind of change. Moreover, given the headwind from the infringer’s lobby, I just don’t see it happening anytime in the near or even remote future.

  8. Night Writer July 25, 2017 2:19 pm

    @2 Curious: It says a lot about the state of our current patent system that I cannot honestly recommend its use to anybody except large, sophisticated entities.

    And if you read the CAFC opinions it is clear that they just Alice (invalidate) any claim they don’t like which is often from small companies suing big companies.

  9. Night Writer July 25, 2017 2:25 pm

    Issa chairing the committee: None of this will ever get out of committee. The Googles always target the chair of committees because you need them to move the legislation out of the committee. Never. Happen.

  10. Anon July 25, 2017 2:44 pm

    Tesia,

    I will tell it to the attorneys that we are hiring.

    Once again, you confuse what may happen to some attorneys with something that is negative to all.

    Your logic (and math, no doubt 😉 ) remain as it was, eh?

    Curious @ 7 – all good points. Sadly, what is the best thing to do is often the most difficult. And yes, Issa has no business in the position of authority that he holds (vis a vis patents).

    Nonetheless, when these type of discussions come up, the points I present (even if most extremely difficult in the political headwinds of the day) SHOULD be discussed because no matter how difficult, these suggestions ARE the best long term solutions.

    If I can apply your own “criticism” from your post at 2, instead of simply panning the suggestions and noting the difficulty, perhaps we could come up with some suggestions so as to ease that difficulty, eh?

  11. Tesia Thomas July 25, 2017 2:56 pm

    @Anon

    I never once said “all.” Again, I said attorneys.
    And, just because things are going well for you does not mean that others don’t have cause to worry.

    If I call the patent bar and complain, are they going to really care? No. I’m not their direct constituent. I didn’t spend thousands on law school, taking the bar, exam and otherwise becoming an attorney.

    So when I said “more attorneys speaking out…your jobs are on the line.” I was talking about the ones who must be complaining to their peers. Which is causing the patent bar to come fight for the patent attorneys being affected negatively by these laws.

    Stop misconstruing my words. You’re the PTAB of IPWatchdog.

  12. Curious July 25, 2017 3:17 pm

    If I can apply your own “criticism” from your post at 2, instead of simply panning the suggestions and noting the difficulty, perhaps we could come up with some suggestions so as to ease that difficulty
    Let’s see. A mass exodus of startups from the USA to elsewhere (e.g., China, India, Europe). A long run of recessionary years — after which the world acknowledges that the USA is no longer the premiere place to do business. A further erosion of intellectual property rights that the likes of Foxconn and Baidu muscle in on the likes of Apple and Google and they realize that they have no hope of competing because the IP rights they own themselves cannot protect them. Needless to say, this is all out of my control. However, this is the path we are down as intellectual property rights continue to be eroded by the Courts with an assist from the USPTO and AIA-like legislation.

    The problem with extolling the virtues of IP rights is that they are just part of the bundle of what makes the USA a great place to do business and it is difficult to show the uninitiated clear cause and effect between strong IP rights and a strong innovation environment.

  13. Night Writer July 25, 2017 6:32 pm

    @12 curious

    Even your scenario probably wouldn’t matter as long as Google and the like are profitable. Third world country.

  14. Edward Heller July 25, 2017 8:34 pm

    One has to ask the question first as to why there is a need, a pressing need, for “reform” of the statute that has stayed in its “present” form since 1624, when the Statute of Monopolies was passed by Parliament. That statute limited patents to “new” manufactures. It further limited patents to those that were not used in England by other than the first inventor. Both requirements existed in the statute the same time. They were incorporated in the first statutes of America. They were reenacted in 1952.

    I would think that if one wants to expand the subject matter of patents beyond manufactures, one should do so directly rather than indirectly. Ask Congress to authorize patents on computer programs. As Congress to authorize patents on newly discovered products in nature. Do this directly, but leave section 101 alone.

  15. Ternary July 26, 2017 12:07 am

    EH@14 I believe we had this discussion before. The issue is not particularly “computer programs” which SCOTUS says may or may not be patent eligible. The issue is “abstract idea” for which SCOTUS has no clear definition. Congress should solve this issue either in section 101 or in any other way.

    Formulas and modeling (computational learning, computer image processing, cryptography, virtual reality, signal processing, computational biology, virtual products and manufacturing, AI, work flow processing, supply chain management and all types of optimization processes) start to dominate revolutionary science and technology while the related claims are being rejected over Alice.

    You can take almost any recently issued patent on cryptography (say 9,716,590 issued today) and read the 101 rejections and the steps required to overcome the rejection. This is pure nonsense. The amendments to overcome Alice (mainly in the preamble) add nothing to the claimed invention, which is absolutely brilliant. The Examiner actually bends over backwards to get the case allowed. The 101 rejection is purely an annoyance that the ASSIGNEE (IBM) in this case can handle easily, but an independent inventor may give up on.

    Let me say it again: Alice makes no sense in this computer age wherein modelling plays such an important role. Alice is a yearning for inventions with gears and handles. It is not of this time.

  16. Edward Heller July 26, 2017 7:16 am

    Ternary, the problem is I see it is that the claims in Benson and Bilski were neither ideas nor where they abstract. But the problem with trying to legislate in this area is that repeal might be simple but replace is not. Thus I would do something like this:

    It is a sense of Congress that a programmed computer is neither an idea nor abstract. The following decisions of the Supreme Court are hereby overruled: Benson, Flook, Bilski and Alice.

  17. Anon July 26, 2017 7:41 am

    It is a sense of Congress that a programmed computer is neither an idea nor abstract. The following decisions of the Supreme Court are hereby overruled: Benson, Flook, Bilski and Alice.

    Bilski was not a programmed computer case.

  18. Edward Heller July 26, 2017 7:43 am

    And, anon, the claims in Bilski were not abstract.

  19. Anon July 26, 2017 8:23 am

    Mr. Heller, your response is a non sequitur to my post correcting your post at 16.

    Did I say that the claims in Bilski were “abstract?”

    What did the Court (the Supreme Court – the Court you oh so typically defend above statutory law) say that “abstract” meant?

    Oh, that’s right – they refused to provide a definition.

  20. Edward Heller July 26, 2017 8:31 am

    anon, if Bilski is overturned, what difference does it make if they did not define abstract? Neither the PTO nor the courts can declare claims like Bilski’s ineligible because they are abstract.

  21. Anon July 26, 2017 9:03 am

    Mr. Heller,

    It makes a huge difference.

    Think about it for awhile. Left undefined, the Court may still engage in the denigration that they heaped on patent attorneys: scrivining.

    The only way to stop THEIR scrivining is jurisdiction stripping.

  22. Curious July 26, 2017 9:39 am

    One has to ask the question first as to why there is a need, a pressing need, for “reform” of the statute that has stayed in its “present” form since 1624
    If you are asking that question, then that likely means that you are part of the problem — not the solution. The problem is that there is a clear and present danger of a large portion of our TECHNOLOGY-BASED economy being cut off from patent protection because there are people in the judiciary who are stuck in the 1960s and feel that what was patentable fifty years ago should be the only things that are patentable today.

    Ask Congress to authorize patents on computer programs. As Congress to authorize patents on newly discovered products in nature. Do this directly, but leave section 101 alone.
    Ed — there is no need to ask Congress to authorize patents on computer programs. Method claims and machine claims already cover what needs to be covered in that field of technology.

    I have no problems preventing the patenting of naturally-occurring objects. I have no problems preventing the patenting of something that can be infringed by a human alone without any technology/tool. Outside of that, IMHO, everything is fair game.

  23. Curious July 26, 2017 9:48 am

    Think about it for awhile. Left undefined, the Court may still engage in the denigration that they heaped on patent attorneys: scrivining.
    Jurisdiction stripping only means that you replace the old set of judges with a new set of judges. As such, everything that was done by the Supreme Court can simply be replicated by the new set of judges.

    If we want to stop judicial scrivining, Congress needs to embrace their Constitutionally-mandated role of being the branch of government that gets to write patent law and make sure the the law they write doesn’t give the judiciary the wiggle room it currently has to muck things up.

    Ultimately, as can be gleaned by the questions asked by the Supreme Court during oral arguments, the Supreme Court is engaging in policy making. That’s not their job — that’s the job of the elected representatives in Congress.

  24. Anon July 26, 2017 10:15 am

    Curious,

    You (again) raise valid points.

    I will have to contemplate a suitable response for the “exchange of one set of jurists for another” comment. The only thing that quickly comes to mind is that the new set can be much more patent law dedicated, and will not carry the hubris of a Supreme Court that has grown into an entity that the founding fathers feared that it might.

  25. Ternary July 26, 2017 10:33 am

    EH: The issue is not what we believe an abstract idea is. It is about what SCOTUS, the Courts, and USPTO believe what an abstract idea is.

    I believe that if it only exists in the human mind, then it is an abstract idea. Numbers are an example of that. Humans are the only species that use countable numbers. Computers don’t. A computer does not know intrinsically that 1 1 1 1 0 1 1 1 is greater than 1 1 1 0 1 1 1 1 (or not). A machine routine is required for that.

    For instance the Benson claimed conversion includes signals and a shift register. A shift register is not an abstract idea. The case should not even be considered to be abstract.

    I do agree that as a minimum the Benson, Flook etc cases should be overruled by Congress. But there is nothing that prevents Scotus from using “abstract idea” again to invalidate patents on other inventions, most likely in AI. What would stop Scotus from invalidating the earlier mentioned 9,716,590 patent as “being directed to an abstract idea?” Currently nothing. The use of a mathematical formula or expression evaluated by a processor should by itself not be considered a marker for an abstract idea. The use of mathematics (as in the ‘590 patent, but also in MRI machine patents) requires now strange twists and turns in claim drafting that do not add anything but to create a defense against future Alice attacks.

    This issue requires an explicit action from Congress that goes beyond “invalidating” previous Scotus decisions.

  26. Night Writer July 26, 2017 12:04 pm

    @16 >It is a sense of Congress that a programmed computer is neither an idea nor abstract. The following decisions of the Supreme Court are hereby overruled: Benson, Flook, Bilski and Alice.

    Alice, as I have said and quoted from many times to illustrate, is based on the Constitution. I don’t think that Congress can overrule Alice.

    The holding in Alice is that the claims were unconstitutionally granted because they do not tend to promote.

    There are some good articles on Congress trying to legislate around Scotus holdings like this (you have to go back about 30 years. ) Don’t bother with new law journal articles. The professors are purchased people.

  27. Anon July 26, 2017 1:28 pm

    Night Writer,

    Your expression of “being based on the Constitution” itself involves a violation of the Constitution.

    The premise undergirding what you advance is a forward in time unprovable, combined with a subjective (and equally unprovable and lack of present case or controversy “MAY inhibit future advances.”

    While you say “ground in the Constitution,” all that THAT is a phrase plucked from the Constitution. Look closer – that phrase cannot hold what it is supposed to hold. Such is ultra vires and beyond what the Court has power to do.

  28. Anon July 26, 2017 1:37 pm

    I will also add (with the caveat that I have heard your complaints), that on the Ethics section “of that other blog,” there have been fruitful exchanges concerning just how often Supreme Court overrides by Legislative action have taken place – and it happens far more often than most people realize!

    (I am going by memory on this, as the conversations were now some four years ago or so)

  29. Edward Heller July 26, 2017 1:49 pm

    Most of us here understand that the Supreme Court was following the so-called judicial exceptions rather than statute in Benson, Flook, Bilski and Diehr. However, when a series of steps is reduced to a series of concrete physical actions as in Bilski, or when mathematics or other such concepts or reduced to software, they are simply not abstract.

    I do not think we should attempt say that we can claim principles in the abstract because that does implicate the Constitution as Night suggests. Any such legislation that authorizes such has a high risk of being declared unconstitutional.

  30. Night Writer July 26, 2017 2:37 pm

    @27, 28, 29
    Anon: All that can be true and the Justices can be doing what I said.

    Edward: “I do not think we should attempt say that we can claim principles in the abstract because that does implicate the Constitution as Night suggests.”

    We cannot stop them from invalidating claims based on the Constitution. Alice was based on the Constitution. They said ‘exceptions’ , but if you read Alice you see they based it on the Constitution, which means that Alice can live through anything the Congress does.

    This is such an obvious point that I am surprised that I even have to bring this up.

  31. Night Writer July 26, 2017 2:38 pm

    What do you guys think the so-called exceptions are based on?

  32. Anon July 26, 2017 3:04 pm

    Night Writer – all statutory law that is patent law “can be traced to” the Constitution.

    Your phrase is meaningless as a point of law.

    You simply cannot rest your analysis on “the Supreme Court referenced the Constitution.”

    You need more.

    And it when you pursue that more, then you may realize the impact of my reply to you.

    Rest, as you do, on the banal and almost “Beavis and Bu tt head” snicker of “they said constitutional” and you will miss the driving issues as to what the Constitutional phrase does and does not provide.

    Sadly, the Supreme Court in its addiction of wax of nose mashing has failed to grasp even the basics of the patent constitutional clause.

  33. Curious July 26, 2017 3:14 pm

    Alice, as I have said and quoted from many times to illustrate, is based on the Constitution.
    As I’ve said many times before, I believe your arguments are misplaced. The Supreme Court’s only mention of the Constitution in Alice is the following:
    “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___ (slip op., at 2); see U. S. Const., Art. I, §8, cl. 8 (Congress “shall have Power . . . To promote the Progress of Science and useful Arts”).

    As we have noted before, the Supreme Court’s finding of “might tend to impend innovation more than it would tend to promote it” has no basis in the record. This is a finding that needs to be made by Congress — not sua sponte presented by the Supreme Court. In essence, the Supreme Court is making s&^t up to support their position. Regardless, the “tools” referred to by SCOTUS is “the basic tools of scientific and technological work” — yet nearly 100% of the patents being invalidated under 35 USC 101 are not directed to the basic tools of scientific and technological work.

    Ultimately, the Constitution that CONGRESS has the power to make patent laws — not the Supreme Court. If Congress states that these are the only exceptions to statutory eligibility, then Supreme Court needs to be hands off.

    The Supreme Court explicitly declined to define what is an “abstract idea.” They punted on the issue, so they shouldn’t complain if Congress defines it for them (i.e., “if the claimed invention as a whole … can be performed solely in the human mind”). While you may not think so, there are limits to the Supreme Court’s reach, and those limits can be created with well-crafted laws.

    I do not think we should attempt say that we can claim principles in the abstract
    No one has made that claim to the best of my knowledge. However, if you are asserting that claiming principles in the abstract to mean ‘broadly written claims’ — then that isn’t a 101 issue. That’s the problem with Benson — Douglas was essentially engaging in a 112 enablement analysis (e.g., “[h]ere the ‘process’ claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion.”) but putting it under 35 USC 101.

    One criticism of Benson, which is till apt, is that this logic can apply to any method, machine, manufacture for which there are known uses and unknown uses. Just because someone comes along and uses your method, machine, manufacture in a manner different than you intended (but still falling within the scope of the claim), this should not render it unpatenable under 35 USC 101. However, that is the logic employed by Douglas.

    SCOTUS has screwed up 35 USC 101 since Benson and they continually to double-down on a poorly-reasoned analysis almost every time. The Supreme Court has gone from banning “a scientific truth, or the mathematical expression of it,” “[a] principle in the abstract,” “mental processes, and abstract intellectual concepts,” “basic tools of scientific and technological work” to banning inventions that could not be described as any of these.

    If Congress doesn’t put a stop to the Supreme Court’s ever-expanding definition of what is patent ineligible, then no one will (stare decisis will see to that).

  34. Night Writer July 26, 2017 3:31 pm

    @32 Anon: don’t be ridiculous. I was not so simplistic. I said the holding was that the claims were invalid because they were unconstitutionally granted because they do not tend to support. That is the holding. You cannot change that holding with legislation. The holding of Alice has nothing to do with legislation. It is all based on the Constitution. Plus, I have quoted Alice a number of times. I don’t feel like it again.

  35. Edward Heller July 26, 2017 3:32 pm

    Curious, I largely agree with your post, but I am very wary about trying to define new law by legislation instead of by the common law method. I have cataloged the numerous unforeseen and adverse consequence from the ’52 that resulted from the new 103, from including in 102 both bars and prior art, and from 271(a)-(c). I fear the worse.

    A simple repeal of Benson->Alice would be sufficient.

  36. Night Writer July 26, 2017 3:38 pm

    @33 Curious: In general, I agree with most of what you wrote. But, so what. The question is if any of these 101’s is passed into law would it prevent the Scotus from another Alice. The answer is clearly no.

    Believe it or not I understand what both you and Anon are saying. But, why you refuse to understand that all that matters is what the Scotus can do is beyond me.

  37. Anon July 26, 2017 3:44 pm

    Night Writer,

    If I may speak for Curious (and please correct me if I am in error my friend), we speak as we do because both of us recognize the legal flaw of treating the Supreme Court as if they themselves were above the Constitution.

    They.
    Are.
    Not.

  38. Anon July 26, 2017 4:49 pm

    Mr. Heller @ 35,

    Your comment of “ but I am very wary about trying to define new law by legislation instead of by the common law method.” is most telling – and not in a good way.

    You do realize that patent law is explicitly “by legislation” unless otherwise shared (properly) by the legislators with another branch?

    Given your past adoration of the Royal Nine, coupled with the fact that the Royal Nine are the MAIN REASON why patent law is do eff’ed up, your positions on either patent law or fixing the problems that run rampant today must be taken with a rather large grain of salt.

  39. Curious July 26, 2017 6:57 pm

    I am very wary about trying to define new law by legislation instead of by the common law method.
    The Constitution tasks Congress to make patent law, so that is where it stands (I just realized that Anon said something similar @38).

    The question is if any of these 101’s is passed into law would it prevent the Scotus from another Alice
    It would prevent SCOTUS for the same reason that we no longer have a flash of genius test (BTW — Douglas wrote Cuno Engineering, which formalized that test — another sign of Douglas’s hostility towards patents). Albeit still imperfectly, SCOTUS probably has a firmer grasp of their role than the other branches of government. As such, they do realize that while they are permitted to fill in the gaps, they cannot simply ignore the plain language of the statute outside of declaring it unconstitutional, which is something I highly doubt they would be able to do.

    A simple repeal of Benson->Alice would be sufficient.
    I doubt it. While it would improve things in the short term, the Courts will start to chip away a little bit at a time. Regardless, how does Congress “repeal” a decision without doing it by statute and what would such a statute look like? Cuno Engineering was “repealed” by the 1952 Patent Act with the language added to 35 USC 103 (i.e., “Patentability shall not be negatived by the manner in which the invention was made”). Congress would have to do something similar to 35 USC 101 — wouldn’t they?

  40. AlexO July 26, 2017 10:30 pm

    Under the current rules, neither software systems nor business methods are patent eligible. Software operations can be performed by thoughts alone and business methods do not contain technology. In addition, receiving, processing and sending information is an abstract idea. As such, neither category is eligible for patent protection.

  41. Anon July 27, 2017 11:55 am

    AlexO,

    Software is not the thought of software.

    Machines that send, receive and process are NOT engaged in abstract thinking, as machines cannot think (abstractly or otherwise).

    Sorry but your far too simplistic views have no real merit.

    You though would probably greatly benefit from understanding the rise and fall of the original Mental Steps doctrine.

  42. AlexO July 27, 2017 12:23 pm

    Dear Anon, your view contradicts the PTO position. In the Final Office Action regarding my application 14/027820, the Examiner specifically stated that “the combination of operations automates a mental process that could be performed by a “human analog.” For example, a human being can purchase a discounted gift card from a merchant.” If buying gift cards can be done by thought alone, any computer method can be seeing as merely imitating human brain. Further, the Examiner stated that “the steps disclose a sequence of operations that include obtaining information, transferring information, and receiving information.” Isn’t it what all software systems do? The Examiner finished the evaluation by pointing out that “the Examiner respectfully notes that the needed “improvement” in terms of patent eligibility is not one resulting from programming a generic processor to perform a different (or even improved) function, but rather a specific and actual improvement to the machine itself is needed.”
    You may cite McRO, Amdocs, even Alice and Bilski, but the Examiner simply has several templates for rejection and just wants to play golf, so the arguments simply don’t matter. It is not possible to make a persuasive objection if, for example, the Examiner says that gift card processing (or gift cards in general) is not a technology, as all the references will be just ignored.
    Alice simply gave the PTO an excuse to reject the max number of application in the min time. For example, as Gene can confirm, an MRI machine is an abstract idea. So, unless the PTO culture is changed, it is irrelevant whether a statutory amendment is made or whether an applicant understands the Mental Steps doctrine.
    Sincerely, -Alex

  43. Anon July 27, 2017 1:37 pm

    The PTO decision is wrong.

    I have never seen anyone buy anything by mere thought alone.

    There is a phrase that fits this situation (albeit cold comfort to those., like yourself have to deal with the outcome of such): The scoreboard is broken.

    The background to the phrase is that in its original use, when discussing a situation with someone, and that person is not correct, a working scoreboard would reflect the actuality of the situation, no matter the protests of the person being incorrect. In such situations, one could listen until the protestor has said their piece, exhausted their opinions, and then (with a slight smile or without), merely point to a scoreboard. This analogy is borrowed from days in sports, and the easy way to deal with a trash-talking opponent.

    However, this analogy breaks down when the system is not operating correctly. It would be like the other person being incorrect, the scoreboard though – being broken – showing that they were “winning,” when the reality of the situation (real law, or law properly applied) is not reflected in the broken scoreboard.

    The state of current patent law reflects a very broken scoreboard.

  44. This is NOT legal advice July 27, 2017 2:35 pm

    regarding my application 14/027820
    This is NOT legal advice.

    Your patent is being examined in 3681 — the worse of the worse in the business method group. Absent a change in the law, I doubt you (or just about anybody else) will get a patent issued from this group.

    You are representing yourself — never a good idea at the patent office. You don’t even know the mistakes you are making.

  45. AlexO July 27, 2017 5:58 pm

    Yes, I know the reputation of this group (and the entire TC 3600). I have to say it is well-deserved. Did you have a chance to read (on this site) that the director of this TC re-opened prosecution of several applications that were approved by the PTAB?

    I don’t think a change in the law would change anything. If examiners do not want to bother with an application, nothing prevents them from using a template to robo-reject it, whether or not the template is applicable to this specific application. To put it bluntly, the PTO is above the law. Have you ever tried to sue an examiner? (I had; no law firm would take a case).

    It is different for large companies. If you search my name from the application on the USPTO site, you will see that I authored/co-authored several granted patents for my employer. I remember that the patent lawyer that was hired by my employer once (excitingly) called me to let me know that during his lunch with the examiner he was told that my application met the quota and will be allowed. This is exactly what the job of a patent examiner is all about: free lunches with IP lawyers and golf (plus $150+K base salary and benefits if you are an SPE).

  46. Anon July 27, 2017 8:26 pm

    AlexO,

    Took a look at your image file wrapper….

    What a mess. Something like more than 800 pages of responses from you (so far) – nearly twenty times the size of your original application in total.

    While I certainly admire your tenacity, I do have to wonder if you would have been more than just a little better off investing in some professional assistance.

    PS, there are web sites (free ones at that) which enable you to view the history of your examiner.

    Miss Shorter shows very little experience in her role (only six completed examinations: 1 allowance and 5 abandonments; and an additional 39 applications pending). First Supervisor Jamisue Plucinski fared a little better with 236 completed examinations (and has an even “generous” 108 allowances versus 128 abandons, with 43 still in process). Which may explain why she was replaced – and forget about it with the current Supervisor Fonya Long, who has 143 completed examinations with a mere 9 (yes, single digit) allowances against 134 abandons, and 42 still in process.

  47. Alexander Ocher July 27, 2017 9:38 pm

    Dear Anon,

    Perhaps you are right. However, I have a pending application that is filed through my employer, and it does not fare any better so far: the patent lawyer repeats the same arguments (although on just three pages), and the Examiner repeats the same rejections. So, I’m not confident that professional assistance would make a difference. And it is very expensive: I was quoted anywhere from $8K to $15K, and it stops before RCE (so, no appeal either). I cannot help but think that most of the rejected applications you’ve mentioned above were also probably prepared by IP professionals.

    I have an additional problem of not being a native speaker, but I’ve been in this country long enough to get my points across. And being a pro se inventor may be beneficial in some ways: for example, I contacted my Senator to help me get answers from the PTO. I also have some ideas for post-appeal (assuming that the PTAB sides with the examiner), like contacting those companies and organizations that have issues with Alice and ask for some cooperation: unlike patent lawyers, I have no allegiance to the PTO and don’t really care if I piss them off, so I can say something that you guys would never say to them. Finally, I am entertaining an idea of going public by sending an article to some national newspapers about super-smart patent examiners that can buy gift cards in their heads (and other things the general population has no idea about). It may degenerate into a personal case, but I’d feel somewhat better if I could get at the examiner and PTO in any way.

    Also, I filed a petition to the TC director to have the finality withdrawn because the Examiner completely changed the abstract idea in the final, which should qualify as a new ground. Not holding my breath though. And, just for fun, I’ve sent an email to our friend Joe (Matal), requesting some disciplinary action against the examiner who obviously lied by stating that gift cards can be bought by thoughts. Again, just a little personal touch (18 U.S.C. § 1001) …

    Sorry for the long vent.

    Thanks,
    -Alex

  48. Night Writer July 28, 2017 8:32 am

    I need to dig up an old law journal article about the interaction of legislation and the Constitution. You guys just don’t get it. The Scotus held that the claims in Alice were invalid because they were unconstitionally granted.

    I guess you can try legislation and maybe the Scotus will follow. But, Curious and Anon you two are the ones that don’t get it. You have never answered my question as to on what basis you believe the Scotus held the Alice claims invalid?

    There are not that many options. Federal common law? Constitution? Statutory interpretation?

  49. Night Writer July 28, 2017 8:33 am

    Although, you have a good point about flash of genius. That was similar to Alice and the legislation did shut the foul group of nine up.

  50. Anon July 28, 2017 9:05 am

    Night Writer,

    It is not us that does not get it.

    You continue to overread a flippant – and legally unsupportable (for reasons I have repeatedly supplied) – scrivening of the Court.

    Somehow, you think that the Court saying “Constitutional” is a magic inoculation. Clearly, you are unfamiliar with just how often what the Supreme Court says has in the past been removed or altered. You also seem to forget what remedial power the Court has when it comes to statutory law, and the fact that the area of patent law under focus is NOT open to common law rewriting.

  51. Night Writer July 28, 2017 10:29 am

    @49: Anon: then what is your answer to my question?

    And, why do you think patent law isn’t open to federal common law? I know what the Constitution says, but there is an interplay between common law and legislation that does not preclude federal common law.

  52. Anon July 28, 2017 11:00 am

    Q: “as to on what basis you believe the Scotus held the Alice claims invalid?

    A: an improper basis of legislating from the bench in order to achieve an (rather undefined) Ends, that, at the least, says “no patent for you” to the particular entity in front of the court, but because of the “I-know-it-(be it “abstract” or “pornographic”)-when-I-see-it” judicial “legislation,” is not something that can be – with any degree of certainty – applied to future cases.

    As to “And, why do you think patent law isn’t open to federal common law?” you should find your own answer to that by looking to understand the difference between common law and statutory law. The Constitution does not allocate law writing authority to any other branch but the legislative branch. The concept of separation of powers is strongest in these very types of circumstances.

    I do not wish to be condescending, but these are fundamentals that should be at the basis of every practicing attorney’s understanding of the law.

  53. Night Writer July 28, 2017 11:15 am

    Actually, Anon I think that fundamental in any analysis of the Scotus is what was the basis for the power to decide the issue. I think that many people say the judicial exceptions arises from Federal Common law. If so, then the legislation could overrule it. But, the holding in Alice is the claims are invalid because they were unconstitutionally granted because they may tend not to promote. You may be right that that is not a valid holding by the Scotus. But that is the holding.

    And of course federal common law exists.

  54. Anon July 28, 2017 11:48 am

    I think that many people say the judicial exceptions arises from Federal Common law

    The judicial exceptions arise from a time in which the Legislative Branch has shared its authority with the judicial branch for setting the meaning of the term “invention.”

    That power was revoked in 1952 with the carving up of the prior single paragraph into 101/102/103, wherein 103 was explicitly chosen instead of attempting any more tomfoolery with “invention.”

    As to “because they may tend not to promote” – I have now several times shown you why this will not – and cannot – fly.

    As to “But that is the holding” – then that holding is ultra vires. Even the Supreme Court must obey the Constitution and is NOT above the Constitution.

    As to “And of course federal common law exists.” – at best a non sequitur, and more so an impediment to you understanding the difference between statutory law and common law (impacting your ability to recognize a separation of powers issue).

  55. Anon July 28, 2017 1:29 pm

    Alex,

    Your point about others not being successful (and likely not being successful with professional assistance) is a valid counter point.

    Clearly, the problem is MUCH bigger than your single case.

    At 6%, (single digit 9 out of 143), I can readily imagine that many have been unjustly deprived (and thus by the SPE who is directing the work of others).

    There is a colorable argument that malfeasance, perhaps even criminal malfeasance, is afoot.

    Perhaps Issa should look into this instead of padding his dog and pony shows.

    On the personal side though, there is simply no way that I am going to slog through 800 plus pages to even begin to try to help you.

  56. AlexO July 28, 2017 1:56 pm

    Dear Anon,

    I was not actually expecting help from you, especially on the public forum and for free! But I want to thank you for your kind words.

    Best regards,
    -Alex

  57. Night Writer July 28, 2017 2:20 pm

    Alexo>And, just for fun, I’ve sent an email to our friend Joe (Matal), requesting some disciplinary action against the examiner who obviously lied by stating that gift cards can be bought by thoughts. Again, just a little personal touch (18 U.S.C. § 1001) …

    I am sure this isn’t going to help your cause.

  58. AlexO July 28, 2017 2:30 pm

    Night Writer,

    Unfortunately, I do not believe that _anything_ I can say to the Examiner or to her management can help my case. I believe that an appeal to the PTAB is the only option that _may_ help. As I mentioned above, I filed a petition to the TC director to have the finality withdrawn because the Examiner completely changed the abstract idea in the final, which should qualify as a new ground; however, I do not know what are my chances for its success.

    Thanks,
    -Alex

  59. Anon July 28, 2017 3:01 pm

    And thank you, Alex, for prompting me to use the tool for evaluating examiners (including SPE’s). I did find it interesting to see your particular circumstance, with a rather inexperienced examiner being no doubt under the thrall of a SPE with a seriously horrendous record.

    That tool is https://examiner.ninja/

    It may help to recognize that the people with whom you are trying to reason with simply will not reason. It may also help with any or your petitions to be able to show such “hard numbers.”

    Of course, the “petition path” has been labeled a “black hole” for quite some time….

  60. AlexO July 28, 2017 4:39 pm

    Thank you, Anon (btw, are you the same Anon as the person with the same nickname on Patently-o? I love reading conversations between MM, Anon, “6” and others over there). Yes, I have much more hope for appeal than for petition …

  61. Anon July 29, 2017 7:57 am

    AlexO,

    There is a huge difference between I and the “anon” of that other blog.

    I use a capital “A.”

    😉

  62. AlexO July 29, 2017 10:48 am

    🙂

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