Why E-mail & Word Processing Were Not Computer-Implemented Inventions: A Response to Alice v CLS Bank Oral Arguments

By Martin Goetz
May 6, 2014

This article tries to bring a little more clarity to what is a computer-implemented invention —and what is an obvious use of a computer —by reviewing some of the Alice v CLS Bank oral arguments.

Certain things are obvious. It was obvious in the oral arguments that it was a challenge for both the Supreme Court judges and the lawyers to distinguish between abstract ideas, ideas, computer programs, technological innovations, patentable subject matter, and inventions. (This confusion also showed up in the seven different written opinions of the judges in the Appeals Court review of this same case.)

In the oral arguments (P34-L17), Justice Sotomayor in response to a discussion on abstract ideas, inventive contributions and the Mayo test for technological innovation asked Mr. Perry, counsel for CLS Bank, the following…

Justice Sotomayor: “How about email and just word processing programs?”

Mr. Perry: “At a point in time in the past, I think both of those would have been technological advances that were patentable. . . . because they would have provided a technological solution to a then unmet problem. Today, reciting, and do it on a word processor is no different than and do it on a typewriter or [sic] — and do it on a calculator.”

Throughout the one hour oral discussion there were many references to e-mail and word processing and there was the general belief that sometime in the past both word processing and e-mail were inventions which deserved patent protection.

Mr. Perry was wrong about word processing and e-mail. Providing a “technical solution to a then unmet problem” and providing a “technological advance” often does not constitute making an invention. That’s because with computers you can often make a technical advance that is obvious.

Let me try and explain why it is not an invention by giving you a concrete example of my previous company’s experience developing and marketing both a word processing product and an e-mail product in the 1970’s and 80’s.

In the 1960’s Applied Data Research (ADR) developed a software product called Autoflow and needed technical documentation to support its use. So rather than use a standard typewriter or the several stand-alone word processors that were available (IBM’s Selectric Typewriter or Wang’s word processor) ADR had the idea, in the late 1960’s, to develop an in-house program on its IBM mainframe computer for creating and updating manuals. The program was quite flexible and included an automatic table of contents and an automatic one word index. Over the years it was used to produce manuals for all of ADR’s products. In 1974 we named it ETC (Extended Text Compositor) and began to market it as a new ADR product. With the advent of display terminals in the 1970’s the product was enhanced and became On-line ETC. We advertised it as follows “On-line ETC automates the preparation of any textual material from 1-page memos to 250 page user manuals”.

By the late 70’s ADR had expanded to eleven domestic offices and, for better internal communication, had dedicated leased lines to all of its offices. In 1981 we expanded On-line ETC so that ADR could replace its domestic TWX machines (which were tied to the leased lines) with a system for electronic mail transmission using IBM 3270 terminals. The ETC facilities were modified so that you could specify recipients by name, group, or function (like all sales managers or all people in one office). It was very functional and in 1982 ADR began marketing this in-house program as ADR/Email. Although ADR was the first company to market an Email product we did not invent electronic mail. In the 1970s IBM also had its own internal e-mail program for its employees on its own worldwide network and ARPA was using an e-mail system as it was developing  ARPAnet, the forerunner to the Internet.

Was using a computer to develop a word processing program an abstract idea or just an idea? Let’s agree that ADR had the idea to build a word processor system for its own use. And let’s agree ADR was the first company to license a word processing software product for mainframe computers. Yes, it was a technological advance. But did the ADR developers invent anything and was ADR remiss in not seeking patent protection. Absolutely not. The implementation of a word processor on a computer was obvious. It was not a flash of genius. It was simply filling an in-house need. While the Courts have used the term “abstract idea”  to differentiate that term from an “idea”, there are many in and out of the legal profession that believe it is only a play on words (see The Paradox Of “Abstract Ideas”). Ideas or abstract ideas, most agree, are not something that is patentable in of itself. So how do we get from an idea to a patentable invention?

There is no clear legal definition of “invention”. The USPTO defines “inventions patentable” as “whoever invents or discovers…”. Certainly, ADR did not discover word processing or E-mail. This is true about most uses of general purpose computers, be it mainframe computers or PCs. It was absurd for Amazon to argue that in 1997 they discovered the one-click computer processing for which it received a patent. It was an obvious use of a computer. Since the early days of computers  storing customer information and reusing the same information was the way most applications were programmed. Unfortunately there have been thousands of patents issued where there was no invention; just an idea to do something different or new on a computer. Another good example of a good idea, but obvious, is Apple’s slide-to-unlock patent which is currently being contested in court.

No wonder there is such apathy for computer implemented inventions. As I wrote in my previous IPwatchdog article Misnomers, Myths, Misunderstandings and Misconceptions about Software Patents  “Much of this negativism is based on the poor job the US patent examiners have done in weeding out those many patent applications where the so-called invention is just one of the almost infinite, but obvious, ways one can automate a manual or semi-automatic process or procedure.” While the Courts have in the past tried to define obviousness (see Supreme Court: Current Test of Obviousness is “Gobbledygook”), not much has yet changed.

But there are thousands of valid computer-implemented inventions where the entire patent is based on using a computer to solve a previously unsolved problem. A good example is Microsoft’s research labs development of  instant English-Chinese translation which lets  English speakers talk in Mandarin in a user’s own voice. This is a software-only development that certainly is not obvious, probably required lots of research and testing, and could be a breakthrough in real time voice translation between different languages.

Another computer-implemented invention, but where the computer is used in a very obvious way, is the Argus II Retinal Visual Prosthesis  invention. The invention was awarded a special patent #8,000,000 by the USPTO and Time Inc. named the Argus II artificial retina one of the best 25 inventions of 2013. Here the software, which  analyzes video input, is only a small part of the invention. It’s an outstanding and important invention, but it falls under the classification of a computer-implemented invention. Would one want the Court to deny patent protection for these computer implemented inventions?

In the past, the Court has recognized that the use of a computer in implementing a new discovery is no basis for denying the patentability of  an invention. Let us hope the  Court will continue to recognize the importance of  computer-implemented  inventions — since virtually every major industry depends on the US Patent System to protect their computer-implemented  inventions.

The Author

Martin Goetz

Martin Goetz is a pioneer in the development of the commercial software industry, and is known within the industry as “the Father of Third Party Software.” He is also widely regarded as the inventor on the first software patent ever granted by the United States Patent and Trademark Office, U.S. Patent No. 3,380,029.

PBS Digital Studios profiled Goetz and his pursuit of the first software patent in the YouTube video below.

In 2007, Goetz was the “Unsung Innovator” of the computer industry by ComputerWorld. Goetz is also a member of the Mainframe Hall of Fame.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 48 Comments comments.

  1. American Cowboy May 6, 2014 10:50 am

    Sorry, Martin, but you have not convinced me that Microsoft’s research labs development of instant English-Chinese translation is patentable if ADR’s word processor is not.

    You denigrate the ADR development by saying “But did the ADR developers invent anything and was ADR remiss in not seeking patent protection. Absolutely not. The implementation of a word processor on a computer was obvious. It was not a flash of genius. It was simply filling an in-house need.”

    Was not the Chinese translator filling a need too? Your explanation would make it sound like the distinction is whether the needy person is an employee of the company doing the development instead of a customer of the company. Sounds too weird!

  2. Mark Nowotarski May 6, 2014 1:31 pm

    “probably required … testing”

    It seems to me that one of the hallmarks of a not-obvious invention is that it requires testing.

  3. American Cowboy May 6, 2014 1:45 pm

    Even obvious developments require testing. Chefs who make the same dish using the same recipe as they have in the past do taste tests to make sure the food tastes right. Nothing non-obvious there.

  4. Paul Morinville May 6, 2014 3:10 pm

    Once done, everything is obvious. This is the third time in a few weeks that I have read someone tell me that the Apple swipe to unlock is obvious. Seems to me not obvious at all that a finger can sweep across a sheet of glass and unlock a phone. Perhaps I am just too dull.

  5. step back May 6, 2014 4:04 pm

    Gene: I need a release from spam jail please. (For some strange reason, Mr. Goetz’s posting may have caused me to use phraseology which your spam catcher finds objectionable.) Thanks.

  6. MaxDrei May 6, 2014 4:11 pm

    To be fair to inventors, when determining what was “obvious” on date X, one must exclude ex post facto analysis.

    The only way I know to do this is to do it with a TSM test.

    To be fair to both Inventors and their competitors, in fact, everybody who is trying to write a useful FTO opinion, you have to do obviousness objectively, not subjectively.

    The only way I know, how to do this, is with correct dispassionate rigorous use the EPO’s verson of the TSM test.

    Interesting to note the SCOTUS interest in “technical”, which is of course the fundamental basis of obviousness enquiries at the EPO.

    For those who have taken the trouble to master EPO-PSA, what’s not to like about it? Tell me again, will you?

  7. babylanon5 May 6, 2014 4:38 pm

    “Seems to me not obvious at all that a finger can sweep across a sheet of glass and unlock a phone.”

    It seems to me that once the “glass” that detects finger movement was invented (prior to Apple’s “invention”), the downstream uses for the created signal are obvious per se once we ackowledge that such signals can be received and acted upon by a computer. In short, the signal can be defined to mean anything to the computerized device to which is it connected: lock a phone, unlock a phone, unlock a steering wheel, lock a door, unlock a cabinet, lock a gun trigger, turn on a stereo, turn off a faucet, turn on a light, flush a toilet, turn off a fan, turn on an alarm, launch a rocket, deactivate a ticking time bomb, instruct a robot to cook a steak, tell my computer to send a message to my uncle Billy that his cat needs to be fed, activate my credit card account, etc., etc., etc. None of that junk is patentworthy. The novel structure of the device that detects the movement? Totally patent-worthy.

    It’s odd that we see things differently. It’s probably just because I wasn’t born yesterday and I understand how technology and patents work.

  8. Anon May 6, 2014 4:52 pm


    As I understand those that criticize the EPO-PSA, it is that there is a false sense of objectivity associated with the method. You do not escape from subjectivity so easily. There is subjectivity in how the problems are defined, and in how the “most on point” reference is selected and characterized.

    In no small degree, I think that this is inescapable and has more to do with language itself simply being an imperfect tool, necessarily reflecting a human imperfect process.

  9. MaxDrei May 6, 2014 5:23 pm

    I just posted but nothing appeared. Foolishly, I failed to save my text. Unless Gene digs it out of the Spam trap, it’s gone. Sorry.

  10. Gene Quinn May 6, 2014 6:41 pm


    You say: “It’s odd that we see things differently. It’s probably just because I wasn’t born yesterday and I understand how technology and patents work.”

    Actually, it seems more likely that you don’t understand why that would be non-obvious because you don’t understand the history of the innovation. If you were familiar with those type of finger commands you would know that they took many, many years to develop. The fact that they took many years to develop more or less conclusively proves that they are not obvious, at least if you are going to concern yourself with reality. Thankfully secondary considerations still cares about reality.

  11. step back May 6, 2014 7:06 pm

    Gene, spam catch release. Please?

  12. MaxDrei May 7, 2014 3:03 am

    In reply to Anon at 8, perhaps he would do me the favour of explaining how those who criticise EPO-PSA suppose that the “prior art starting point” is selected. They suppose that subjectivity creeps in, during that process. How’s that then?

    Until then, I will suppose that they haven’t yet understood how to “do” EPO-PSA correctly.

    My post caught in the spam filter explains it.

  13. Benny May 7, 2014 7:39 am

    Gene, (at 10)
    Babylanon5 has a valid point. Designing a capacitive touch sensor switch is definitely an innovation. Activating a known function using the new switch instead of the old push-button type is just a case of plugging one invention into another. It’s novel, I personally might not have found it obvious, but the requirement (at least in the EU) for inventive step is lacking.

  14. Anon May 7, 2014 7:55 am


    I will await your post being released so that I can more fully understand your concerns. Until then, I will offer that at any time you involve human judgement in the selection of meaning that you necessarily involve subjectivity.

  15. MaxDrei May 7, 2014 8:14 am

    Ah-ha. Operative word “necessarily” eh?

    So in your eyes the EPO approach to obviousness is rubbish because it is an approach practised by members of the human race.

    Bit of a problem, that. Don’t know how to cure that defect. Do you?

    The post in the filter explained how the prior art starting point falls out automatically, from a comparison of the application as filed with the prior art. There is no room for the Examiner to take any other line. The Examiner can’t change the appln or the art.

    The assessment the Inventor and application drafter take to what is the inventive concept that they seek to protect and to define/describe in mere words is a subjective assessment, of course. They are stuck with that, of course, but at the EPO they do get full faith and credit for what they chose.

  16. MaxDrei May 7, 2014 8:16 am

    I give up. Again my post got caught in the spam filter. This is a waste of time. Goodbye.

  17. American Cowboy May 7, 2014 9:06 am

    Babalony and Benny, as Max and Anon are bantering about, there is always subjectivity in the obviousness determination, so there will be differing viewpoints on it, particularly when financial interests encourage bias one way or the other. We in the patent profession deal with that on a daily, if not hourly, basis.

    The problem we have with attacks on software patents is the assertion that software inherently is not patentable because it is the wrong kind of subject matter, leading to rulings of invalidity under section 101. If the powers that be want to say the claimed invention is unpatentable for obviousness under section 103, that can be a defensible position. To say it is unpatentable simply because it is software is not.

    Of course, we’ll still have arguments about obviousness, as I have posted above at 1 and 3 in response to the original blogarticle.

  18. Tom May 7, 2014 10:30 am


    I can’t believe you got a patent for system for sorting data or records. People had been sorting data by hand for years prior to your “invention”. Seems to me that, based upon your article, it would be obvious to us a computer to sort data and that, thus, this “invention” would not be patentable.

  19. Gene May 7, 2014 12:27 pm

    good god. does aggregating 40 or 50 conclusory statements about obviousness amount to “analysis”, “logic”, or “rationality”? no, it does not.

  20. Gene Quinn May 7, 2014 12:28 pm


    Just curious. Did you look at the date on Martin’s patent before you commented?


  21. babylanon5 May 7, 2014 12:43 pm

    “those type of finger commands you would know that they took many, many years to develop”

    In fact, Gene, finger commands of all kinds are ancient and pre-date computers by many many years. People have been using their fingers to signal all kinds of activities for pretty much as long as people have had fingers.

    The alleged “invention” we are discussing merely takes (1) an old device that recognizes signals created by fingers and (2) assigns a meaning to that signal (i.e., recites a “function”). Assigning that function to that signal did not take “many many years to develop.” It took five seconds and was motivated by the similarly old and well-understood fact that people find it convenient to lock or unlock (or sleep or awaken) their electronic devices. As proof of that, review my comment above, drafted in a little bit under a minute, where I “innovated” a dozen other functions for those same old signals. I am happy to provide many more such functions for you if you like. Of course, that disclosure might adversely affect some applications you are presently working on.

  22. Gene Quinn May 7, 2014 1:13 pm

    I have made further changes to the spam filter in hope of fewer false positives. I realize this can be a pain, but we get many thousands of spam comments every day. Without an aggressive spam filter there would simply be no way to have any kind of useful discussion.

    If you have a message caught in spam let me know. The best way is to send me an e-mail through the contact form, which someone monitors every day. See:


    I’ve also changed the spam setting so messages caught in the spam filter should be kept for 3 days instead of being deleted at midnight.



  23. Anon May 7, 2014 1:39 pm

    Gene @ 22 (and everybody),

    I try to either write my note in a separate word processing document, or highlight and copy my entry before hitting the “Submit Comment” key (the filter is not the only thing that will mess up the transmission/post process).

    I do not always succeed in this – especially for the shorter comments, which tend to be more on the fly and concern topics I am intimately familiar with.

    Nice tip on the notice to you path.

  24. Paul Morinville May 7, 2014 1:49 pm

    babaloney at 21. You can’t seriously mean that the fact that people pointed a finger in ancient times means that finger pointing is prior art to a finger swipe on a piece of glass that unlocks a phone. Is that what you are saying?

  25. Anon May 7, 2014 2:20 pm


    It is clear that babaloney lacks the appreciation of what “obvious” means in law. Critical to that appreciation is knowing that the world of prior art that can be used in an obviousness analysis is NOT all the prior art that ever existed. Prior art in an obviousness analysis is much more limited.

  26. step back May 7, 2014 4:49 pm

    @Gene #22

    If everything is oh so obvious,

    why don’t the patent detractors here show us how to implement via a computer, an artificially intelligent spam filter that truly knows how to separate the chaff from the wheat?

  27. Benny May 8, 2014 2:17 am

    Step back,
    If we revealed to you exactly how the spam filter works we would also be implicitly revealing how to defeat it. Some things, it appears, are better kept trade secret. ( I worked with electronic warfare systems when I was younger – the strength of those systems lay in what the other side didn’t know about them).

  28. step back May 8, 2014 4:35 am


    Part of the “oh it’s so obvious” game is that you have come up with a design so clever (and yet obvious) that even when you reveal its basic structures and functions, it still cannot be cracked.

    Indeed within the cyber security realm it is a requirement that your architecture be transparent so that others can test it and verify its worthiness. See generally Schneier on Security: http://en.wikipedia.org/wiki/Bruce_Schneier

  29. Benny May 8, 2014 5:09 am

    Spam filter and security algorithms are a long way from obvious. However, if a system is purely rule based, rather than key based (as in encryption systems), knowledge of the rules allows you to outwit it.

  30. MaxDrei May 8, 2014 6:59 am

    Gene I see you dug one of mine out of the filter, and let it through to the thread. Many thanks for that.

  31. Anon May 8, 2014 7:54 am


    You (again) are wearing your technical hat when you need both a technical hat and a legal hat.

  32. Anon May 8, 2014 7:59 am

    Thanks for pointing that out MaxDrei.

    This allows me to point out that you presume too much in your counterpoint.

    Specifically at your post of May 7th, 2014 8:14 am, “So in your eyes the EPO approach to obviousness is rubbish because it is an approach practised by members of the human race.” is far too much a jump in judgement.

    I did not say “rubbish.” I did say that you cannot remove subjectivity. There is a clear difference. It appears that you seek not to address my point by going too far to the extreme and just throwing up your hands, Your counterpoint rests on too-feeble logic my friend.

  33. MaxDrei May 8, 2014 8:17 am

    Anon tells us that, for some people, the particular EPO approach to obviousness won’t do, because it is tainted with “subjectivity”.

    What’s that then, I ask. Reply: subjectivity is “necessarily” present whenever the human mind is involved.

    Ladies and gentlemen, I ask you. Is there an approach to obviousness that the EPO can use, that would avoid this taint of “subjectivity”? An Approach that involves no use of the human mind. I don’t know of one. Does Anon?

    Meanwhile, until we have such a subjectivity-free approach, the EPO Approach stands free of all meaningful criticism. That’s nice, isn’t it?

  34. Benny May 8, 2014 8:25 am

    I don’t see why I “need” a legal hat to comment here. I’m fairly confident some readers might find the purely technical side – i.e, the content – of patents interesting. For the same reason, perhaps, that I , with a technical but no legal background, find the legal articles and comments interesting.

  35. Paul Morinville May 8, 2014 8:48 am

    MaxDrie at 33. 1+1=2. I did that in my mind and it is not subjective.

  36. MaxDrei May 8, 2014 9:09 am

    Great Post Paul. Thank you. I mean, can we also say 2 – 1 = 1? If so, we have proved that EPO Problem and Solution Approach is NOT subjective.

    What EPO PSA does is to take as its reference point the Applicant’s own announcement of the Invention, in words of his/her own choosing, in the patent application as filed (P). Applicant gets to fix the Technical Field. Applicant gets to fix the contribution to the art, within that specified Field.

    Strictly based on that very reference point, giving the Inventor full faith and credit, the PHOSITA’s best “Prior art starting point” (D1) is fixed, based exclusively on what is written in P and D1. So, no room for subjectivity there.

    Subtracting D1 from P exposes what the alleged patentable contribution is, seen objectively. and thereby sets up the remainder of the obviousness analysis,objective, arguing from what is written in P and D1, and toggling between the technical features recited in the claim and the technical effects they deliver, according to P.

    So no subjectivity (or ex post facto argumentation) there either.

    As i always say, EPO-PSA is like riding a bike. Until you can do it without thinking about it, it’s impossible. But once you’ve cracked it, you enjoy it, and wonder why you ever had a problem with it.

    Trouble is, so many patent experts can’t ride the EPO-PSA bike and can’t see any point is going to the trouble to learn how to ride.

    I can tell you one thing though: once you are effortlessly riding the EPO-PSA bike,you use it instinctively, to test obviousness and find it very hard to see how another jurisdiction can “do” obviousness properly without recourse to EPO-PSA.

  37. Anon May 8, 2014 10:24 am


    AGAIN you misrepresent what I have said with “because it is tainted with “subjectivity”.

    Please stop posting in such manner.

  38. Anon May 8, 2014 10:26 am


    The need for the legal hat should be understood to mean that you know and understand the legal context – as opposed to being a certified lawyer.

    The need should be self evident. Would you accept technical results from someone clearly unqualified to give them?

  39. Gene Quinn May 8, 2014 11:10 am


    No problem on fishing your comment out. Thanks for continuing to try despite our over active spam filter, which hopefully will be less problematic now.


  40. American Cowboy May 8, 2014 1:20 pm

    Max, I find this statement of yours a bit perplexing: “Strictly based on that very reference point, giving the Inventor full faith and credit, the PHOSITA’s best “Prior art starting point” (D1) is fixed, based exclusively on what is written in P and D1. So, no room for subjectivity there.”

    I have seen many a case where there were several ways to determine what the prior art starting point was, so picking what D1 is becomes arbitrary (subjective??). To use the iPhone swipe unlock example, is D1 a reference that shows a capacitive touch sensor switch? Is it an earlier phone that turned on a different way? Is it some software that says we can interpret data input from the screen to activate a whatever, such as a touchscreen ATM? How does one choose?

  41. MaxDrei May 9, 2014 2:32 am

    AC: fair question, thanks.

    The name of the game is the claim. You claim a capacitative switch and you fix that as the technical field. You claim a phone and you anchor yourself in a different technical field. Or you could anchor yourself in the general field of touch screen devices. Wide or narrow, the choice is yours, but you have to live with the consequences..

    Mind you, you need to choose early. As you know, amending the claims during prosecution at the EPO is set about with snags. Changing horses mid EPO stream is a delicate operation. Tip: work out before you file, what field you want to be in, and what you think you have contributed in that field. In First to File country, you will be held to that.

    That said, every party is free to announce their favoured D1, and argue from that, to suit their purposes. As Applicant/Patent Owner, it helps to know the EPO law and argue confidently from that basis. That will put to flight any dodgy defective D1 starting point positions. OK?

  42. Anon May 9, 2014 7:54 am

    I had to chuckle this morning as I read MaxDrei’s response of “That will put to flight any dodgy defective D1 starting point positions. OK?

    I liken his misrepresentations of my offered criticism of the EPO-PSA (see my comments 8, 14, and 32 and MaxDrie’s related “responses”) as those dodgy defective starting point positions being put to flight. The criticism would seem to remain valid and the thought that EPO-PSA is subjective-free is again ‘put to flight.’


  43. American Cowboy May 9, 2014 9:39 am

    So Max, since you commit to a D1 early in the game, I gather that very extensive searching for prior art must go on before filing, so that the best candidate for D1 can be selected and the claim then crafted to yield EPO agreement with that D1 choice.
    Assuming that is correct, how much pre-filing searching would you say is typical for filings that originate in EPO countries?
    Are there any particular search tools you find most useful?

  44. MaxDrei May 9, 2014 10:27 am

    To AC at #43:

    What I urge is that you explore with the Inventor the Technical Field and the problem the Inventor thinks she has solved, and write about that. It is not about pinning to a single Prior publication out of the multitude.

    Find out what is the contribution the Inventor feels she has made, and stay faithful to that.

    Is the Invention “Slide per se” or “Slide to Unlock”? Was the Slide idea a contribution to capacitative switching, a contriibution to the field of Touch Screen Devices, or to the field of unlocking computing devices for use? Frame your claim accordingly.

    It is not so much to fix as D1 a single document out of the multitude of prior publications all over the world. Rather, it is to box the Examiner in, to limit the Examiner’s choice of D1 to that sub-set of publications that address the Inventor’s specified technical problem in the technical field specified by the Inventor.

    Any touch screen is sensitive to touch. So a Slide to Unlock Invention is not an improvement in touch screens per se. So what is it an improvement in: data Input or unlock rituals? Which one of those you choose will determine D1 and might determine whether the “Slide” Invention was obvious.

    Can you see that for the Independent Claim (say to the “slide per se” Invention) a particular prior publication might be a fair D1 but for a dependent claim, say one that adds the “to Unlock” feature, Claim 1’s D1 is no longer a fair starting point for testing obviousness under EPO-PSA. To repeat, the name of the game is the claim.

    In my experience, Inventors already know the closest art. If it turns out there is something closer, well that’s what dependent claims are for, aren’t they?

    That said, of course searching helps, proportionate to the budget. Let not the tail wag the dog, eh?

  45. Anon May 9, 2014 10:39 am

    American Cowboy,

    Your note presents a fallacy to the position being advocated as a de facto standard.

    The law simply does not require ANY searching.


    Of course, it is my practice to advocate to my clients the apparent benefits of the most thorough search possible.

    But one must keep in mind that any such decision belongs totally and fully with the client. Additionally, for better or for worse, the client’s interests of merely obtaining patents in gross – regardless of any sense of ‘breakthroughness’ (read that as Flash of Genius if you like), future actual use, or even any direct sense of prior use (I have commented before that I deal with clients that have strict No-Look policies for their inventors for fear of treble damages) – will color thier directives to me, regardless of any advice that I may give them.

    I would also add that the change to “First Inventor To File” methodology in the AIA makes this file first quickly en mass thought pattern even more prevalent. Yes, I would hurry to point out to those such as MaxDrie who caution against “that you are stuck with what you file,” that filing in a hurry does close your application to new matter, but I would also point out that there is no limit to similar filings – en gross – with ‘cheap’ (far too cheap, both in cost and time of preparation in my mind) provisionals. As many patent professionals in this country warned (I am thinking specifically of Ron Katznelson), the AIA promotes a more reckless race from the gold standard that we previously enjoyed.

  46. MaxDrei May 9, 2014 10:46 am

    Does First to File encourage premature filings? Not where I sit. In FtF country, premature filing is the worst of all options in that it is good enough to present the Invention to the world but not good enough to protect it.

    Those of us in First to File country have been preoccupied since the year dot with settling with our individual clients what specific filing moment is the compromise that is optimal for the client’s business purposes.

    Meanwhile, readers, be under no illusionthat FtF forces filing too early. The reality is, if anything, the opposite.

  47. Anon May 9, 2014 11:13 am

    Alas, MaxDrei, since you have been in your system since year dot, you fail to recognize the differences and lost benefits (and yes, the fears even as the scope of those fears may be larger in the mind), that we here in the states are familiar with.

    The phrase “cold comfort” applies to your (glib) comment.

  48. Daniel Cole May 9, 2014 12:46 pm

    Interesting – though your use of flash of genius and new shows where you fall and I fall on a different place. The change in the law to include obviousness was to get rid of the flash of genius test, and if something is new it is usually patentable. I would contrast using a computer to type something and print it with the automatic table of contents, the automatic one word indexing. These were computer only inventions that would have been impossible on earlier technology aka a typewriter. I agree simply doing something on a computer you were doing before on other technology should be checked for obviousness very carefully. But obviousness has to be looked at in each case and different people are going to have different views on what is obvious. Much like obscenity I think the only test is the I know it when I see it – though I hope someone can come up with a better one.

    Don’t have time to read the abstract idea/idea article but the word abstract does have meaning, so a simple dictionary should give a definition.

    I don’t know enough about the one click ordering, the swipe to open, to have a comment but it is in the courts which is where it should be. As mushy as obviousness is those close to the line will likely end up in court the cost of a non mushy test of stifling innovation – the lifeblood of our and the worlds economy – is to high.