Why Removing Section 101 Won’t be Enough

By Daniel Cole
August 7, 2016

IncompleteIn recent Bold IP blog posts I have talked about how Nobel Prize winning discoveries are currently unpatentable under US law, and how David Kappos is calling for the US congress to remove section 101 of the patent act.  To briefly review, a Chinese biochemist won a Nobel Prize for the discovery of Artemisinin since it is incredibly effective in treating malaria.  However since the drug was isolated from a natural source under current US patent law it would be unpatentable.

Taking a renewed interest in patent law the Supreme Court has made a mess of section 101 jurisprudence.  Section 101 states that both discoveries and inventions are patentable but under current Supreme Court jurisprudence discoveries are unpatentable.  They are either natural phenomena or abstract ideas.  Furthermore, despite years of trying, the court has been unable to define “abstract idea”.  In trying to do so and moving ever farther away from the dictionary definition of the phrase they have arguably conflated novelty, obviousness, and enabelment.  This led Kappos to call for the removal of section 101 from the patent law altogether.  Though I supported this call, I do not think it will have the revolutionary effect he hopes.

The issue lies in Supreme Court precedent.  Section 101 was adopted by congress as part of the recodification of the patent act in 1870 and amended in 1952.  The first cases adopting what would become the judicial exceptions to section 101 came before this date.  In O’Reilly v. Morse, which was decided in 1853, Morse was denied a patent on the use of electromagnetism in any form to make permanent marks upon a paper.  The question was presented even more directly in Le Roy v. Tatham where the defense argued that the fact that lead at a certain temperature and pressure would “recombine perfectly” was a principle of nature and thus not patentable.  The lower court had held that it was a principle of nature but this did not make it unpatentable.  The Supreme Court in 1852 stated directly “It is admitted that a principle is not patentable” and then went on to define principle as things such as steam power and electricity.  The “invention is not in discovering them but in applying them to useful objects”.  A principle by itself is not patentable only a specific use of the principle in a specific way to achieve a specific aim.  Le Roy v. Tatham was decided in 1852, and was relied on heavily in O’Reilly v. Morse.  The court held that the “principles herein stated were fully recognized” in Le Roy v. Tatham. Most importantly in holding that principles were unpatentable the Court cited no act of congress or aspect of the constitution.  As was the custom of the time it relied on “discovered” or “natural law”.

The court did state that allowing principles to be patented would “discourage arts and manufactures against the avowed policy of the patent laws”.  Though no cite to authority was given this could be said to rely on Article 1 Section 8 Clause 8 of the US Constitution which ties congresses power to grant patents and copyrights to the promotion of science and the useful arts.  Though the similar structure of the second amendment has been found not to limit the right to bear arms to militia service, the Supreme Court has consistently held that the Patent and Copyright clause grants only limited power.  If the patent system as set up by congress retards rather than promotes the progress of the useful arts and sciences, the system is unconstitutional.  In Graham v. John Deere Co. the Court held the patent and copyright system must promote “useful Arts”.  Founded in the Constitution congress is thus limited from enacting a patent system that inhibits “useful Arts” or promotes Arts that are not “useful”.  Though it has been argued this interpretation of the cases is fundamentally flawed, most convincingly by Robert R. Sachs, the Court has never taken these arguments seriously.

Where does this leave the removal of section 101?  Removing section 101 would remove the language granting patents only to processes, machines, manufactures, compositions of matter, or new and useful improvements thereof.  These categories however have only rarely been used to limit patentablity.  The Court has in fact described these terms as expansive.  Their removal would not suddenly make the inventions found unpatentable by the Court as abstract ideas or articles of nature patentable.  As shown by the discussion above, the judicial exceptions do not rest on a legal interpretation of section 101 in any of its forms.  They come from Supreme Court precedent established BEFORE section 101 existed.

Though section 101 is mentioned when the judicial exceptions are discussed it is not relied on as authority for the existence of the exceptions.  In Diamond v. Chakrabarty, Funk Brothers, Laboratory Corporations of America Holdings v. Metabolite Laboratories, Diamond v. Diehr, and Alice Bank; Le Roy v. Tatham and O’Reilly v. Morse are always mentioned.  If section 101 of the patent act is removed the Supreme Court is extremely likely to simply continue to rely on those two precedents and continue to find abstract ideas and natural phenomena unpatentable.  As the “broad language” of section 101 would also be removed the Supreme Court might even assume congress is giving it broad authority to enact further limitations on patentability.

The Author

Daniel Cole

Daniel Cole is a patent attorney with Bold IP, who loves helping inventors bring their ideas to life in the marketplace. With a degree in Chemistry from the University of North Carolina at Asheville, a degree in Biochemistry from Wake Forest, and experience in patenting simple mechanical inventions he brings a broad perspective to patenting your invention.

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 52 Comments comments.

  1. Anon August 7, 2016 8:59 am

    Jurisdiction stripping is the only answer.

    Patent appeals are not a matter of original jurisdiction for the Supreme Court.

    That answer contains the subpart of needing a new (untainted) Article III court (to preserve Marbury).

    (there is more to say about the Supreme Court writing its own patent law (after 1952): a violation of the separation of powers doctrine; along with concepts such as Void for Vagueness and how the Court necessarily reaches into a conjectural projection of what may happen, which violates the current case of controversy requirement of the exercise of their power)

  2. Edward Heller August 7, 2016 2:13 pm

    Daniel, 101, in current form, traces to the Patent Act of 1793, which, the Supreme Court in Pennock v. Dialogue, held to be based on the Statute of Monopolies and its interpreting common law cases.

    Le Roy v. Tatham and Morse were both based on interpreting and following these English cases. As well, Morse based its statutory authority on the then analog of 112.

    The Court in Morse heavily relied on Curtis, who himself heavily relied on the English cases.

    Effectively, US patent law goes back to at least the Statute of Monopolies and cases prior to that litigated in the courts of England. The Founding Fathers actually said, in Federal 43, that the forthcoming copyright and patent clause of the constitution was based on the common law, and the only issue really was whether patents or copyrights should be protected at the national or a the state level where they were protected both prior to and after the Constitution, state patents gradually dying out in favor of national patents.

    Daniel, you may or may not be right on you efforts to repeal 101. But many of us find no comfort in the fact that you do not know what you are talking about. Perhaps you might want to consult people who do.

  3. Anon August 7, 2016 3:17 pm

    With all due respect, those “knowing what they are talking about” does not include Mr. Heller.

  4. JNG August 7, 2016 3:53 pm

    Daniel, I agree with you 100% and have mentioned this before in this forum: the SCOTUS “abstract idea” rationale is untethered from 101 – removing it will make no difference whatsoever. BTW Ed, Morse is not an “abstract idea” case – at its heart it is a preemption case; the express exclusion of “abstract ideas” in SCOTUS jurisprudence is a recent “invention”, so WADR you are the one who is wrong here.

  5. Edward Heller August 7, 2016 6:25 pm

    JNG, actually, I think that Morse very much is case about “abstract” in the sense that Morse had a legitimate invention but attempted to claim it so broadly that the claim did not include within it any of the inventive means or methods by which signals were communicated at any distance. Thus, the Supreme Court reasoned, Morse was attempting to claim the principle in the abstract (that was what the dissent thought was the basis for these Supreme Court holding).

    But the Supreme Court in Bilski and Alice has been using the word “abstract” in a different sense than that used by the Supreme Court in Le Roy v. Tatham and O’Reilly v. Morse, effectively interpreting as nonstatutory fundamental economic practices being abstract when they are not abstract at all but rather are nonstatutory in the sense fundamental economic practices are not within the four classes. This goes back to the debate we had in Bilski between the majority that viewed the claims as abstract and the dissent viewed the claims as nonstatutory. Rather than agree with the dissent, the majority just used a test, known from the time of Tatham and Morse, in a way those cases did not intend, to effectively hold the claims ineligible on the same basis as argued by the dissent without formally agreeing with the dissent, and has cloaked its jurisprudence in a test from the 1850s.

    But the lower courts have gone further than the Supreme Court and are now using the abstract test in ways beyond that required by Bilski and by Alice.

    However on the plus side, the Federal Circuit has been recognizing that software directed to the improvement of the computer or computer system qua computer system is directed to patentable subject matter while continuing to object to software that is not, but rather is directed to business methods.

    Regarding discoveries of laws of nature, both Le Roy v. Tatham and O’Reilly v. Morse, very much stand for the principle that discoveries of laws of nature and phenomena of nature cannot be claimed as such, but must be applied in an inventive fashion to be patentable matter.

  6. JNG August 7, 2016 6:51 pm

    Right, well we may be saying the same thing here; the “abstract idea” exception we see now is a grotesque enlargement of a very different principle. I still agree with the earlier characterizations of Morse as really a failed written description case before that term came into vogue. I disagree entirely with Lemley and crew now suggesting it was an “abstract idea” case like the type we are seeing now. There is nothing abstract about using EM as a means of communication, its just the case that Morse tried to preempt all means of such. The CAFC is cautiously trying to inject new rational safe harbors into their recent rulings, but its a tiny effort compared to the dozens of ridiculous 101 rulings we have seen since Alice that are nothing more than judicial clearcutting of cases they don’t like. But getting back to the original premise, given the mutation of “abstract idea” I don’t think getting rid of 101 will help in the least – the Supremes have created a new exception that is statutory-proof IMO.

  7. Edward Heller August 7, 2016 7:20 pm

    Also, a simple repeal of 101 would effectively allow the patenting of anything and everything that was patentable under 102/103/112. But, the exclusions regarding laws of nature, products of nature, and principles in the abstract would still exist because they are there almost as a constitutional matter. Effectively, we would get nowhere very fast. So why waste the effort? Moreover, we would destabilized American patent law for generations.

    I think a more interesting question would be whether a statute expressly authorizing the patenting of newly discovered laws of nature or products of nature would be constitutional? I think most of us would agree that the Supreme Court would find such a statute unconstitutional.

  8. Benny August 8, 2016 5:17 am

    “If section 101 of the patent act is removed the Supreme Court is extremely likely to simply continue to…continue to find abstract ideas and natural phenomena unpatentable” But would patent examiners reject them, or would they have to go all the way to the supreme court? Without 101, on what basis would an examiner reject application 10/869082, for example ?

  9. Edward Heller August 8, 2016 7:23 am

    Benny, while would not be a statutory basis, but the patent office would apply Alice/Bilski and Myriad/Mayo because those cases are really independent of 101. In fact, the Supreme Court has often said that they interpret 101 to be consistent with these fundamental principles that were first first laid down in Le Roy v. Tatham and O’Reilly v. Morse.

  10. Curious August 8, 2016 7:53 am

    Old language:

    Inventions patentable. 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.

    New proposed language:
    Inventions patentable. Without exception, 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. For purposes of section 282, compliance with section 101 is not a condition for patentability.


  11. Curious August 8, 2016 8:01 am

    Daniel, I agree with you 100% and have mentioned this before in this forum: the SCOTUS “abstract idea” rationale is untethered from 101 – removing it will make no difference whatsoever.
    While I agree that the rationale underlying SCOTUS’s analysis is untethered to 101, the courts need to tether it to 101 and the defenses under 282. By tethering this “abstract idea” jurisprudence to 101 & 282, the court can “justify” invalidating a patent based upon the existing statutory scheme.

    Granted, the court can still invalidate a patent outside of the statutory scheme. If so, then we have a SERIOUS separation of powers issue. Right now, the courts get around that criticism by tying their analysis to 101 & 282.

    Jurisdiction stripping is the only answer.
    It is an answer that relies upon the new Court (Federal Circuit?) being better than the old Court — I’m not sure that the Federal Circuit is any better than SCOTUS these days. In fact, I’m inclined to think that the Federal Circuit is worse, in some respect, than SCOTUS in dealing with patent matters.

  12. Edward Heller August 8, 2016 8:21 am

    Curious, I think that if Kappos and crew actually want to achieve their objective, they have to carefully craft legislation that does not allow patenting laws of nature in the abstract, or products of nature.

    The statute simply should repeat the constitution — any invention within the useful Arts…. That is as broad a grant of power as there is. I also think it deals with the law of nature and product of nature issues.

  13. Benny August 8, 2016 8:27 am

    Edward Heller,
    All this time I laboured under the impression that patent examiners had a background in the subject material of the application before them, and examined the applications according to the directions laid out in the MPEP. Here you are telling me that they rely on legal precedent instead. Where the MPEP is at odds with previous court decisions, who calls trumps?

  14. Night Writer August 8, 2016 8:47 am

    Lots of nonsense from Heller again. First, please exhibit some claims that would cause a problem if 101 was repealed. I have asked you to do this for year.

    Second, the U.S.A. used English common law at the start and technically it is still good law, but it is preempted by the Constitution, federal common law, and statutes. But, it is a good point that oddly English common law is still technically good law. The U.S.A. incorporated it all into our laws at the start.

    And again —————-scope of enablement ———————– along with ability to lose your claims if you claim too broadly and something non-obvious is invented within the scope of your claims

    Very simple. No problems.

  15. Edward Heller August 8, 2016 9:00 am

    Benny, the MPEP are directions to examiners, and the directions tell examiner what is patentable and what is not. The directions will not change at all if 101 is repealed for the reasons stated by the author above.

  16. Edward Heller August 8, 2016 9:10 am

    Night, there is the matter of the constitution. The Framers did not give Congress a blank check. Congress has the power to

    Secure (for limited times)

    to inventors

    The exclusive rights (the capitalization emphasizes that the right of inventors in their inventions exists at common law — and that Congress is to “secure” them as opposed to “create” them)

    in their Writings and Discoveries

    to promote progress in the useful Arts.

    Now the Framers thought that inventions were the common law property of their inventors. Thus, what inventions are protectable is really a matter of the common law — and that can be a very broad topic indeed, but with the caveat that they must promote the useful Arts. What this meant is fairly codified in our initial patent laws of 1790 and 1793 — today’s 101.

  17. Bob Hodges August 8, 2016 10:16 am


    I like it.

    But we may need some explicit statement in the enactment of the change indicating Congress’ intention to retain decision making authority over policyand stating that whether a given patent claim promotes the progress of useful arts is a fact dependent policy questions to be see by Congress by law.

  18. Curious August 8, 2016 10:20 am

    they have to carefully craft legislation that does not allow patenting laws of nature in the abstract, or products of nature
    I’m not even sure how one can patent a “law of nature,” in the abstract while having it fall under a process, machine, manufacture, or composition of matter. As for a “product of nature,” you can add a definition in 35 USC 100 that requires that a manufacture and composition must be “man made.”

    The directions will not change at all if 101 is repealed for the reasons stated by the author above.
    The directions are based upon the case law and the case law is based upon the statute. Hence, the directions MUST change if the statute changes.

    The Framers did not give Congress a blank check.
    I’ve made this point before, and it is worth repeating. Congress can do a lot under the Commerce Clause. If the patent clause didn’t exist, Congress could still enact a statutory patent scheme under the Commerce Clause.

  19. Edward Heller August 8, 2016 1:26 pm

    Curious, I think you misunderstand. The SC says it is interpreting 101 to be consistent with the “exclusions.” Deleting 101 will not affect Alice, Mayo or Myriad. I agree with the OP on this.

    Expressed commands that allow the patenting of newly discovered laws of nature, products of nature, etc., would be required. But the court would rule these unconstitutional.

  20. Gene Quinn August 8, 2016 1:58 pm

    Edward Heller-

    Not sure how SCOTUS could honestly rule discoveries unconstitutional since they are already patent eligible according to the express terms of 101 and the statute has never been ruled unconstitutional. If discoveries are not patent eligible that means that drugs are no longer patent eligible since it is the discovery that is the innovative step, not the reduction to practice of the discovery. Indeed, drugs are probably already no longer patentable if the USPTO and any court were ever to faithfully apply KSR and the lead compound cases.

    I any event, I wouldn’t put anything past the patent hating supreme Court. Of course, if they did reach such a ruling as you suggest it would be without any legal support and beyond their authority. It would almost certainly result in Congress curtailing the Supreme Court’s jurisdiction. After all, if there is going to be that kind of reform to the patent statute that means there is broad based buy-in across all industries that the Supreme Court has gone too far, which of course they have.


  21. step back August 8, 2016 2:17 pm

    Hi Gene,

    I came across one podcast that may be of interest.

    It argues that nations succeed when they give their individual citizens incentives and opportunities to improve the nation’s welfare and their own. Nations fail when they do the opposite.

    Our Supreme Court is making sure we do the opposite.


  22. Curious August 8, 2016 2:27 pm

    The SC says it is interpreting 101 to be consistent with the “exclusions.”
    The “exclusions” cannot exist outside of 35 USC 101 and 282. Otherwise, the Court has no jurisdiction to consider a challenge to the claims.

    But the court would rule these unconstitutional.
    On what basis? In Mayo, they wrote “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Did you notice the “might tend to impede.” That isn’t a finding of unconstitutionality — that is pure speculation not tied to any findings of fact. SCOTUS is being very cagey when writing what they have. They have to justify their extra-statutory forays, but they don’t have any evidence to go on that these patents do, IN FACT, impede progress. In Bilski, they criticized the Federal Circuit — asserting that “Courts ‘should not read into the patent laws limitations and conditions which the legislature has no expressed” yet they are doing exactly that themselves.

    The unfortunate problem is that few are willing to tell the emperor(s), to their face(s), that they have no clothes.

  23. Daniel Cole August 8, 2016 3:33 pm

    Mr. Heller

    Author article here. The English cases were mentioned in the cases I mentioned yes, but as far as I know American law comes from the American constitution not another countries law. The federalist is a historical document that can be used to interpret the constitution but the ultimate repository is the Constitution itself. 101 as a separate part of the law as far as I know did not come about until the dates I cited. I certainly could be wrong and I invite you to write a blog response showing how I am. I spent a good amount of time in Law School (which I graduated from just last year) looking at the constitutional basis for patent law and the recent 101 cases – since they were being decided while I was in school. Certainly though I could be wrong. I think good arguments could be made that Morse was about other things and the Supreme Court in later cases used dictum from those cases to make law. The rub is of course that the Supreme Court can do this and has throughout its history (the commerce clause cases come to mind). I am sorry if my disagreeing with you disturbs you, though lets try to keep things professional and academic ok? I certainly admit I could be wrong and I am willing to be taught.

    To Anon – sorry you don’t feel safe to use your name. I disagree that jurisdictional stripping is the answer or even possible as interpretation of the constitution is the main Supreme Court power. There is an answer I think though and I am currently working on a blog post talking about what I think it is.

  24. Edward Heller August 8, 2016 3:41 pm

    Gene, and Curious, the SC reads the requirement for invention into “inventor.” They have consistently said that invention requires the creation of something new.

    Now, if Congress removes the requirement that there be an invention or that patents can be awarded to other than an inventor, then such a statute may have problems with the Constitution.

  25. Daniel Cole August 8, 2016 3:43 pm

    Edward Heller – I agree they would call them unconstitutional based on their understanding of the patent clause saying that it would not promote the progress of science which is what the original cases are about as I say above in the original post. I think you are wrong here Gene and need to look at the cases I mention more closely. The supreme court has ruled that constitutional discoveries are not the same thing as inventions and are NOT inventions and that the constitution requires inventions since it says inventors. Yes this goes against the use of the word discoveries in 101 but without saying so directly the court HAS said that inclusion is unconstitutional and meaningless.

    Yes this is terrible for drugs which is why drug patents are now really use patents. The use of a compound to treat a certain disease or for compounds not based on natural products (which is why we have no natural product research in the United States) this is terrible and something the drug industry has been fighting hard recently to no avail.

    I think there is an answer other than jurisdiction stripping – it lies in the fact that the constitution has other clauses that give power other than just the patent clause… more to come on that in a few weeks.

    Glad to see my posts are generating so much interest though!

  26. Daniel Cole August 8, 2016 4:41 pm

    Edward Heller – I am sorry you don’t seem to think I know what I am talking about. But lets try to keep things professional and academic. I invite you to write a blog post pointing out my mistakes in detail. Yes the cases I cite mentioned English cases heavily but those are at most persuasive precedent – they have no fundamental precedential value. The US constitution is the basis of our laws not the cases or constitutions of any other country. Entertainingly I agree with you and you make the point I was trying to make (and thought I had). The Supreme Court has read the clause about promoting the progress of science to mean that discoveries are not patentable constitutionally. They have all but said directly that the inclusion of discoveries in section 101 is unconstitutional. I don’t think they have ever said directly that the use of the word inventions causes discoveries are not patentable (case cite if you have one EH would be great) but it comes to the same thing.

    There is an answer for this and it doesn’t require stripping the Supreme Court of jurisdiction (which I don’t think would even be possible – they get to say what is Constitutional and what is not). It relies on the fact that Congress has power other than in the patent clause.

    I would read the historical cases closer Gene. They are important and constitutional law is incredibly important to patent law and it can not be safely ignored. To many patent lawyers seem to do so though. One thing I love about UNC I had a great 4 hour constitutional law course.

  27. Night Writer August 8, 2016 5:12 pm

    @23: I have made the point you are making before. I think the holding of Alice is that it is unconstitutional to have granted the claims, which means I agree with you Edward.

    In fact, I think a plain reading of Alice brings you to that holding. I don’t even think it is close.

    I have said this many times that no legislation can change Alice.

    But—there are implications to this. Consider that I believe you can always raise a Constitutional question in an administrative hearing. So, I think 101 can be raised in IPRs.

  28. Curious August 8, 2016 6:01 pm

    I think the holding of Alice is that it is unconstitutional to have granted the claims
    That’s what you may think, but it isn’t based upon the language of the decision.

    I have said this many times that no legislation can change Alice.
    Sure it can. Things were worse in 1952 than they are now, and the 1952 legislation certainly changed things (for the better)

  29. Night Writer August 8, 2016 9:40 pm

    @25 Curious: I don’t have time to dig out the Alice language again that shows that the holding in Alice is that it was unconstitutional to grant the claims, but it is there along with a finding of fact that the claims would not promote.

    The logic of Alice : finding claims do not promote; Constitution says to promote; therefore, unconstitutional to grant the claims.

    There is NO other basis offered for invalidating the claims that has a Constitutional basis.

  30. Anon August 8, 2016 10:53 pm

    There is NO other basis offered for invalidating the claims that has a Constitutional basis.

    You are assuming that hte Court had to have a Constitutional basis.

    They do not.

    Read again all the modern era 101 cases (those cases that can actually discuss 101, and thus ONLY those cases that came after 1952).

    Place any reference to pre-1952 law in abeyance. Since that law is not controlling law, it can have only ultra vires effect.

    The Court has done a very intricate weave and dance in order to give the illusion that it is NOT writing patent law (which would be a clear violation of the separation of powers and in itself would be unconstitutional). To avoid that, they MUST be able to ground their decision in the law that Congress has written.

    One must remember that the patent clause is ONLY a grant of power TO write patent law – it is NOT patent law in and of itself. If you feel strongly that the Court is relying then on the Constitution, then any such reliance is only proof that the Court has overstepped its own jurisdictional (read that as Constitutional) powers.

  31. step back August 9, 2016 3:02 am

    Anon @27,

    There is nothing intricate or elegant about what the SCOTEs did in Alice/Mayo.

    It’s more like a barrel of clowns jumping out of their circus car, throwing confetti all about the ring and honking their red noses proud and audacious like while flashing mirrored lights into the eyes of the audience.

    Alice means you can point your “directed to” ray gun at any physical object or any physical process and make it “go away” simply by pressing the abstractinating trigger button.

    As one presidential candidate boasts, heck the SCOTEs can even stand in the middle of Paris, point their “directed to” ray gun at the Eiffel Tower and make it go away with a click of the finger because it is directed to the abstract idea of something tourists can take photographs of and thus cause those pictures to be depictions of the existentialist idea of “this is not a tower or a pipe”. Hugh? Well that makes about as much sense as the jaberwhacky in Alice and Mayo. Actually, more sense.

    Make it go away:

  32. Anon August 9, 2016 7:15 am

    step back @28,

    Alice did not happen in a vacuum, and the lineage of the clothiers “dressing” the Emperors in basically nothing but their naked power grab can easily be traced back to Benson (and even to some of the dicta in Deere).

    Yes, there was a swing back towards moderation in Diehr and Chakrabarty – and if you recall my pre-Alice posts here, I was hoping for a similar moderation in that case – but as you note, instead Alice fully took us down the rabbit hole with undefined notions of “directed to” (or gist), “abstract,” and even “sufficiently more.” As has also been noted, this was done on the lack of a present controversy in the guise of what may subjectively and only in conjecture of what MAY happen or what MAY TEND to happen.

    We have gone from “implicit” to “explicit” and the lure of the power of legislating from the bench has not abated (hence the lack of bright lines so that cases will necessarily have to come back up to the Supreme Court for further “scrivining.”

    Enough is enough. Patent appeals are not a part of their original jurisdiction and we – the Royal We of Congress needs to stop feeding the addict.

  33. Night Writer August 9, 2016 7:39 am

    Anon, stepback>>Place any reference to pre-1952 law in abeyance. Since that law is not controlling law, it can have only ultra vires effect.

    Acutally, the SCOTUS says that that is not true. They say, see Bilski, that the 1952 act merely codified their laws.

    Also, the counter argument to what I said that is probably the best one is this. The SCOTUS invented the concept of abstract, laws of nature, physical phenomena. It like the invented concept of right to privacy. Once, they then tack on non-textual concept to the Constitution then they are free to have them mean whatever they please as there is no text to directly support the invention.

    Actually, Bork goes explains this very well at his confirmation hearing with Biden as the chairman and executioner. So, I think what we are seeing is nothing but the same game they play with other parts of the Constitution.

    Below is their rationale for the exceptions: (Note other parts support my findings of fact and held not to promote.)

    Section 101 of the Patent Act defines the subject matter eligible for patent protection. It provides:

    “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.” 35 U.S.C. § 101.
    “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) (internal quotation marks and brackets omitted). We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. Bilski, supra, at 601-602, 130 S.Ct. 3218; see also O’Reilly v. Morse, 15 How. 62, 112-120, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853).

  34. Night Writer August 9, 2016 7:43 am

    So, you see the other line of argument is that they have added words to the Constitution with the “implicit exception”. And notice that they say for 150 years.

    So—if even you do not take my interpretation, the other interpretation also is based on the Constitution and not 101. So, no law is going to change Alice.

    Actually, on that blog invested with paid bloggers, I posted an academic article explaining all the different possible ways of getting around this problem, in general.

  35. Night Writer August 9, 2016 8:36 am

    There are some good papers published in law journals about this topic from the 1950’s to about 1980’s before the unethical group of law professors like Lemley put judicial activism as the number one goal above the law and science.

    Basically, the papers look at what can be done when the SCOTUS does do statutory interpretation, but pulls in the Constitution and the Congress wants to change the law.

    (Stay away from anything published by one of the modern judicial activists like Lemley. They have bad sites. They select only what they want to tell. Propaganda. Lemley should be sanctioned. )

  36. Curious August 9, 2016 12:14 pm

    if even you do not take my interpretation, the other interpretation also is based on the Constitution and not 101. So, no law is going to change Alice
    So tell me, if the law is changed (let’s use my proposal from changing 35 USC 101 for this hypothetical), how is the Patent Office going to “reject” a patent application for being “unconstitutional”? The code does not permit the USPTO to do such a thing. While the Patent Office would love to, they just cannot make sh&t up to formulate a rejection. Rejections are based upon the Code — not the Constitution.

    The Courts, on the other hand, are in the business of determining whether something is unconstitutional or not. However, how is a defendant going to plead it? It wouldn’t be a defense under 35 USC 282. Assuming, for sake of argument, that the Court does take up the issue of whether the patent is unconstitutional, wouldn’t you have to make a showing that the patent itself does not promote the progress of science and the useful arts? How would that be accomplished? What kind of evidence would be submitted?

    The Courts get around all these messy issues by saying that the “abstract idea” exception is already built into 35 USC 101. However, if 35 USC 101 is written to expressly exclude the exceptions, then the Courts have to directly address whether the patent at hand (as opposed to some hypothetical situation) indeed violates the Constitution.

  37. Edward Heller August 9, 2016 3:23 pm

    Daniel Cole,

    1. Read Curtis. https://books.google.com/books?id=XmcNAQAAMAAJ&printsec=frontcover&dq=curtis,+treatise&hl=en&sa=X&ved=0ahUKEwii16ywg7XOAhVN9GMKHfELBUsQ6AEIIzAB

    2. Pennock v. Dialogue, esp. at in reference to the St. of Monopolies. https://scholar.google.com/scholar_case?case=4334704542048968620&q=pennock+v.+dialogue&hl=en&as_sdt=2006

    3. Compare the statutes of 1790 to 1793. “Discovery” was dropped, while “new” and “composition” added. Clearly, the framers did not want to allow the patenting of “discovered” compositions.

    4. Read, Bracha, Oren. Owning ideas: A history of Anglo-American intellectual property. Diss. Harvard Law School Cambridge, Massachusetts, 2005. This provides a complete history of the development of English-American patent law. Note that the states prior to the creation of the American Constitution granted patents to inventors. This practice continued for decades after the United States was formed. One can see from this history that the states thought it better that a patent system be at the national level as opposed to, or in addition to, the state level.

    Because the American patent system was patterned on the English patent system, it is clear that the framers and the initial congresses intended to protect invention of new manufacturers, just like in England. But as the English law had, by the 1790s, recognized that new manufacturers included machines and compositions, these are separately enumerated. “Art” was also included because the English law had at that time recognized that the art of making something could be patented independent of the tools or the manufacture.

    Note also the words of the Constitution use “secure.” The use of this term becomes clear when you look at Federalist 43 which acknowledges that the protection of an invention with exclusive rights was a common law right just as much as the protection of the right to publish a work of authorship. In other words, when Congress grants a patent to inventor, they are not creating new rights, but securing existing rights, common-law rights.

    This is one of the fundamental reasons why Americans have always thought that patents were property – they were common law rights protectable in the common law courts just as any other common law right.

  38. step back August 9, 2016 3:31 pm

    Curious @36

    As it is, the PTO violates the code all the time. For example 35 USC 112 says that it is the inventor who determines that which is to be regarded as the invention. Yet when making an Alice 101 rejection, the PTO ignores 112 and tells the inventor, we tell YOU what your invention is. (Hint, it’s abstract and naturally organic)

    Code? Who needs code when you have Alice power?

  39. Night Writer August 9, 2016 4:10 pm

    @36 curious: I am not sure what the PTO would do. I think they could just quote Alice. Not sure what an agency does in this case. The agency does have to follow case law, so I think they could just reject the patent based on Alice. Kind of interesting actually as it illustrates that Alice really is new law created by the SCOTUS.

    ” wouldn’t you have to make a showing that the patent itself does not promote the progress of science and the useful arts?”

    I think that Alice’s giant leap is saying that we have made a finding of fact that anything that fits the Alice two part test does not promote. That is what the SCOTUS held. Pretty outrageous when you think about it.

    But, each time an application is rejected or claims invalidated that is what is really happening. The SCOTUS said that anything that fits the two part test does not promote; therefore, it was unconstitutional to grant the claims.

    In all cases, though, they aren’t really saying Alice is part of 101, but the Constitution. It is not statutory interpretation. They are saying that any 101 has to have Alice. Therefore, even if there is no 101, the patent act has Alice.

  40. Anon August 9, 2016 5:02 pm

    Just a quick couple of points in general for now (more detailed points to follow in the next few days after an upcoming deadline is met)

    It bears repeating: the Article I Constitutional clause is not “law” in and of itself, but rather it is the delegation of authority TO WRITE actual law to a specific branch of the government.

    All of the conversation here which ends up in the “logical position” that the Court itself has written a law that simply is disassociated from 35 USC et al simply shows that THAT law is ultra vires.

    Just because the Supreme Court says something does NOT mean that what they say IS law (yes, even the Supreme Court includes dicta). One only has to look at how Judge Rich chose (correctly) to ignore the dicta in Benson, and went unchallenged because he knew the difference between the law as signed off by Congress (and written in part by him) and what the Court was attempting to re-scriven.

  41. Curious August 9, 2016 5:50 pm

    they aren’t really saying Alice is part of 101, but the Constitution.
    Anon raises an excellent part. The Constitution is not the “law.” Rather the Constitution is a document that delegates authority. Congress is the one that writes the law, and the Courts interpret the law.

  42. Daniel Cole August 9, 2016 5:58 pm

    Um wow – Anon – wow. The constitution is not the law? This is very incorrect. The constitution IS the law. The constitution sets limits to what the legislature can do. The pre 1952 cases are very much NOT in abeyance when they are about what the constitution says the patent clause can allow. Calling laws unconstitutional is something the supreme court has done since the founding of the country and is its job. I repeat what I said before – many patent lawyers need to retake constitutional law. Here from the heritage foundation – someone not interested in patent law really but VERY interested in constitutional law.


  43. Edward Heller August 9, 2016 6:14 pm

    Daniel, anon has been making enough of such statements over the years that many of us think that he is just a patent agent, at best.

    Still, he and I have had some good discussions, especially about Pennock v. Dialogue.

  44. Night Writer August 9, 2016 8:37 pm

    @41: I agree about what you said about the Constitution. But, let’s not forget that the justices are supposed to be bound by the Constitution too. I think it is quite a stretch for the justices to make a finding of fact in Alice and say that all claims that fit a two part test do not promote and therefore it was unconstitutional to grant the claims.

    Creating such a broad rule and making findings of fact are –I think–outside the authority of the justices.

  45. Anon August 10, 2016 6:23 am


    “Wow” right back at you. I thought you wanted this to be civil.

    Perhaps you did not read what I wrote carefully enough. Yes the Constitution is law, but you mistake law of delegation for substantive law.

    Did you miss the part about the clause being one of delegation of authority to write the substantive law?

    Also, did you not study the Constitution in the part concerning jurisdiction stripping? Or did you not understand Marbury correctly in that it was “judicial review” – and not only “judicial review by the Supreme Court”…?

    Your “view” eviscerates the entire notion of jurisdiction stripping as all law – as it must – leads back to the Constitution. Why then did that very Constitution contain jurisdiction stripping power for the legislative branch if in your view the Court could merely declare by fiat that the Supremes themselves must have jurisdiction over all law? Did you not learn that the Supreme Court has some areas of original jurisdiction and some areas are not considered original jurisdiction? Your view makes that distinction a nullity.

    I suggest that you consider that all three branches of the government are subject to separation of powers and checks and balances. You seem to have forgotten these concepts.

  46. Anon August 10, 2016 6:30 am

    Night Writer,

    Read carefully what the Supremes said: note the conjecture and future tense of their words: “may” and “might tend to.”

    It is even worse than mere “fact finding.”

  47. Anon August 10, 2016 6:49 am

    Mr. Heller, Read the Heritage link provided by Mr. Cole. Let’s see how quickly you disagree with the tone and substance of that particular academic’s view on the topic (remembering as with copyright, so too – here in the US – goes patents).

    You are quick to be condescending – but I will point out that it is you that refuses to fully engage in our discussions. And we both know why that is, do we not?

  48. Edward Heller August 10, 2016 7:56 pm

    anon, the Heritage article is wrong. Moreover, Curtis provided a strong argument that inventions are protectable under the common law, and they eventually were, through the development of the common law protection of trade secrets — actually known since the Roman Empire. Also see Feltner v. Columbia Pictures where the Supreme Court said this:

    “By the middle of the 17th century, the common law recognized an author’s right to prevent the unauthorized publication of his manuscript. See, e. g., Stationers Co. v. Patentees, Carter’s Rep. 89, 124 Eng. Rep. 842 (C. P. 1666). This protection derived from the principle that the manuscript was the product of intellectual labor and was as much the author’s property as the material on which it was written. See Millar v. Taylor, 4 Burr. 2303, 2398, 98 Eng. Rep. 201, 252 (K. B. 1769) (opinion of Mansfield, C. J.) (common-law copyright derived from principle that “it is just, that an Author should reap the pecuniary Profits of his own ingenuity and Labour”); 1 W. Patry, Copyright Law and Practice 3 (1994). Actions seeking damages for infringement of common-law copyright, like actions seeking damages for invasions of other property rights, were tried in courts of law in actions on the case. See Millar v. Taylor, supra, at 2396— 2397, 98 Eng. Rep., at 251. Actions on the case, like other actions at law, were tried before juries. See McClenachan v. McCarty, 1 Dall. 375, 378 (C. P. Phila. Cty. 1788); 5 J. Moore, Moore’s Federal Practice ¶38.11[5] (2d ed. 1996); 1 J. Chitty, Treatise on Pleading and Parties to Actions 164 (1892).

    In 1710, the first English copyright statute, the Statute of Anne, was enacted to protect published books. 8 Anne ch. 19 (1710). Under the Statute of Anne, damages for infringement were set at “one Penny for every Sheet which shall be found in [the infringer’s] custody, either printed or printing, published, or exposed to Sale,” half (“one Moiety”) to go to the Crown and half to the copyright owner, and were “to be recovered . . . by Action of Debt, Bill, Plaint, or Information.” § 1. Like the earlier practice with regard to common-law copyright claims for damages, actions seeking damages under the Statute of Anne were tried in courts of law. See
    *350 Beckford v. Hood, 7 T. R. 621, 627, 101 Eng. Rep. 1164, 1167 (K. B. 1798) (opinion of Kenyon, C. J.) (“[T]he statute having vested that right in the author, the common law gives the remedy by action on the case for the violation of it”).”


    Clearly, inventions are the product of intellectual labor just as much as works of authorship. Obviously, the Heritage Foundation and Mr. Cole are not entirely up to speed on either history or the law. Madison’s views, however, have prevailed.

  49. Anon August 10, 2016 11:06 pm

    Madison’s views included a healthy “curb” of the judicial branch – something that both you and Mr. Cole need to develop.

  50. Anon August 12, 2016 6:19 pm

    The silence, while not surprising, is deafening.

  51. Daniel Cole August 29, 2016 2:22 pm

    The common law has been overturned by the constitution and the patent law made by congress. English common law especially is not followed in America without changes. Our law is based first and foremost on the constitution – nothing else.

    All that said I am glad people are looking at the Heritage article and understanding it does apply not just to copyright but patents – as some have missed that.

    My last article on this topic was not posted here as I had the audacity to harmonize the Supreme Court cases not in a new way but in a way that was not agreed with by the powers that be.

    Let me note I disagree with the Supreme Court – abstract ideas and natural product patenting do not limit the progress of science. But any intellectually honest reading of Supreme Court precedent has to come to the conclusion that is what the Supreme Court believes. There is however still a way forward which can be found here:


  52. Gene Quinn August 29, 2016 3:36 pm


    Your last article was not posted on IPWatchdog.com because it did not meet our standards. The draft of the article you submitted for publication erroneously stated that the patenting of discoveries would be unconstitutional because the patenting of discoveries would not forward the constitutional objective of promoting science or the useful arts.

    The example I gave you via e-mail to demonstrate that your blanket statement is erroneous is one that is well known. There has been a discovery of a naturally occurring substance that can kill antibiotic resistant strains of bacteria. The USPTO has denied patents, which means that will NEVER make it to market because no company is ever going to spend the $1 to $12 billion required to get through the FDA process only to have it be available to generics the minute it is approved by the FDA. So there is an example of a situation where the refusal to patent a discovery based on the natural law judicial exception is affirmatively and undeniably standing in the way of great benefit to society, as well as preventing the progress of science and useful arts.

    Furthermore, the draft you submitted said this:

    “Patenting discoveries, since it would limit rather than promote the progress of science, would be unconstitutional under the patent clause.”

    You cited to Heritage linking “unconstitutional under the patent clause,” implying that the patenting of discoveries would in the view of Heritage be unconstitutional. As I explained numerous times, the Heritage article did NOT mention or in any way address the patenting of discoveries. That type of egregiously misleading citation is inappropriate on any level and well beneath the standards for publication on IPWatchdog.com.

    As a novice attorney you have much to learn. You would do well not to make factually erroneous and over blown claims. The citation to a source that does not even address what you purport to offer it for is appalling.